This Opinion Is Not a
`Precedent of the TTAB
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`Precedent of the TTAB
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`Mailed: March 29, 2024
`PrePrecedent of the TTAB
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`Chris W. Taylor Jr.
`v.
`Three Frog, LLC
`_____
`
`
`
`
`
`
`Opposition No. 91255161
`_____
`
`J. Curtis Edmondson of Law Offices of J. Curtis Edmondson, LLC dba Edmondson
`IP Law, for Chris W. Taylor Jr.
`
`
`Stephen McArthur of The McArthur Law Firm PC,
` for Three Frog, LLC.
`
`_____
`
`
`Before Lynch, Acting Deputy Chief Administrative Trademark Judge,
`
`Zervas and Dunn, Administrative Trademark Judges.
`
`Opinion by Dunn, Administrative Trademark Judge:1
`
`
`1 As part of an internal Board pilot citation program on broadening acceptable forms of legal
`citation in Board cases, citations in this decision differ from the citation form recommended
`in the Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 101.03 (June 2023).
`This decision cites decisions of the U.S. Court of Appeals for the Federal Circuit and the U.S.
`Court of Customs and Patent Appeals by the page(s) on which they appear in the Federal
`Reporter (e.g., F.2d, F.3d, or F.4th). For decisions of the Board, this decision employs citations
`to the LEXIS legal database and cites only precedential decisions. Until further notice,
`however, practitioners should continue to adhere to the practice set forth in TBMP § 101.03.
`
`Precedential decisions of the Board, and precedential decisions of the Federal Circuit
`involving Board decisions that issued January 1, 2008 or after may be viewed in TTABVUE
`by entering the proceeding number, application number, registration number,
`expungement/reexamination number, mark, party, or correspondent. Many precedential
`Board decisions that issued from 1996 to 2008 are available online from the TTAB reading
`
`

`

`Opposition No. 91255161
`
`
`Three Frog, LLC (Applicant) seeks registration on the Principal Register, with a
`
`claim of acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C.
`
`§ 1052(f), of the following configuration:
`
`
`
`for “dice boxes, namely, boxes specially adapted for storing dice; wooden boxes
`
`specially adapted for storing board game components or dice; board game and
`
`tabletop game accessories, namely, accessories in the nature of boxes specially
`
`adapted for storing board game components or dice,” in International Class 28. 2 The
`
`application states:
`
`The mark consists of a three-dimensional configuration of the interior of a hex
`shaped box with a honeycomb configuration of seven interior hexagonal
`indentations on the bottom of the box and the design of a six point star, having
`flat points, on the top of the box. The broken lines depicting circular magnets
`indicate placement of the mark on the goods and are not part of the mark.
`
`Color is not claimed as a feature of the mark.
`
`
`
`room by entering the same information. Most TTAB decisions that issued prior to 1996 are
`not available in USPTO databases.
`
`2 Application Serial No. 88125640 filed September 20, 2018 under Section 1(a) of the
`Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
`in commerce since at least as early as October 2, 2014. The application claims ownership of
`Registration No. 5390970 for the word mark HEX CHEST (CHEST disclaimed) for “wood
`boxes.”
`
`Citations to the application file refer to the USPTO’s Trademark Status & Document
`Retrieval (TSDR) system and identify the documents by date, and page in the downloadable
`.pdf version. Otherwise, citations refer to the Board’s TTABVUE online docket system.
`
`
`
`- 2 -
`
`

`

`Opposition No. 91255161
`
`
`Chris W. Taylor Jr. (Opposer) filed a notice of opposition that he subsequently
`
`amended to plead that the configuration is a functional design for the goods under
`
`Section 2(e)(5) of the Act, 15 U.S.C. § 1052(e)(5), and is non-distinctive product design
`
`trade dress lacking acquired distinctiveness under Sections 1, 2, and 45 of the Act, 15
`
`U.S.C. §§ 1051-1052, 1127.3 Applicant’s answer largely denies the salient allegations
`
`of the operative notice of opposition, but admits the following:
`
`3. (in relevant part) Applicant admits that the 20-sided icosahedron die is an
`iconic Dungeons & Dragons (“D&D”) die.
`
`10. (in relevant part) Applicant admits that “Mr. Rouseau”, a hobbyist,
`released a video in December 2014 showing a design that was explicitly based
`off of Applicant’s Honeycomb Design4 that Applicant had publicized months
`earlier on Kickstarter and Reddit.
`
`23. and 26. (in relevant part) Applicant admits that it filed an intellectual
`property complaint with Thingiverse.com5 against Opposer for distributing
`unauthorized counterfeits of Applicant’s original Honeycomb Design.6
`
`
`3 16 TTABVUE.
`
`
`
`4 The answer defines “Applicant’s Honeycomb Design” as “the dice box design described in
`Application number 8812564[0]” (17 TTABVUE 2) and as stated above the application
`describes the mark in part as a “honeycomb configuration.”
`
`5 As indicated below, Thingiverse.com is an online community that facilitates the sharing of
`designs for 3D-printable objects.
`
`6 26 TTABVUE. Applicant pleaded the equitable affirmative defenses of acquiescence, laches,
`estoppel, waiver, and unclean hands in its Answer but did not pursue them in its final brief,
`so they are forfeited or waived. CBC Mortg. Agency v. TMRR, LLC, 2022 TTAB LEXIS 295,
`*3-4 (TTAB 2022). Applicant also asserted that its mark has acquired distinctiveness or is
`inherently distinctive and that the notice of opposition fails to state a claim upon which relief
`can be granted. The former is not an affirmative defense but merely amplifies Applicant’s
`denials in the answer, and the latter was made moot by the Board’s February 28, 2022 order
`granting in part and denying in part the cross -motions for summary judgment after
`examining the sufficiency of the amended notice of opposition. 23 TTABVUE.
`
`
`
`- 3 -
`
`

`

`Opposition No. 91255161
`
`
`I. The Record
`
`The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37
`
`C.F.R. § 2.122(b), the file of the opposed application.
`
`Opposer submitted:
`
`• Unsworn statement by Opposer Chris W. Taylor, Jr.;7
`
`• The August 26, 2021 declaration by Opposer submitted in support of his motion
`for summary judgment;8
`
`
`Notices of reliance with attachments:
`
`
`• Excerpts from the subject application file;9
`
`• Complaint and exhibits from the district court action brought by Applicant
`against a third party;10
`
`• Excerpts from U.S. Copyright Office records pertaining to Applicant ’s
`copyright claim for the configuration that is the subject of this proceeding;11
`
`• Excerpts from USPTO records pertaining to a third-party patent application
`for a dice box;12
`
`• January 14, 2019 DMCA notice to Thingiverse from Applicant alleging
`infringement of “Copyright (case number 1-6886106851) and Trade Dress
`(serial number 8812564[0]) for hex shaped dice boxes with beehive interior
`designs;”13
`
`
`
`7 27 TTABVUE 235-36.
`
`8 27 TTABVUE 233-34.
`
`9 27 TTABVUE 4-165.
`
`10 27 TTABVUE 207-27.
`
`11 27 TTABVUE 167-96.
`
`12 27 TTABVUE 198-205.
`
`13 27 TTABVUE 231. We take judicial notice of the U.S. Copyright Office webpage explaining
`that the Digital Millennium Copyright Act (DMCA), 17 U.S.C. §. 512, amended U.S. copyright
`law to, inter alia, create the notice-and-takedown system, which allows copyright owners to
`inform online service providers about infringing material so it can be taken down , failing
`which online service providers may have monetary liability for copyright infringement based
`on the actions of their users. See The Digital Millennium Copyright Act at
`
`
`
`- 4 -
`
`

`

`Opposition No. 91255161
`
`
`
`Applicant submitted:
`
`• Testimony declaration by Quentin Weir, co-founder and managing partner of
`Applicant dba Elderwood Academy, and exhibits;14
`
`• Testimony declarations by Mike Cameron,15 Doug Johnson,16 Justus Hughes,17
`Ken Gruhl,18 and Matt Colville,19 third-parties working in the field of tabletop
`games, including dice games.
`
`Notices of reliance with attachments:
`
`• Deposition of Opposer Chris W. Taylor, Jr.;20
`
`• Opposer’s responses to Applicant’s requests for admission;21
`
`• Internet materials, namely online Reddit posts.22
`
`Opposer chose not to cross-examine Applicant’s witnesses or submit rebuttal
`
`testimony or evidence. Because Opposer’s trial brief was untimely and therefore not
`
`
`https://www.copyright.gov/dmca/. In re Int’l Fruit Genetics, LLC, 2022 TTAB LEXIS 403, *4
`(TTAB 2022) (“We therefore take judicial notice of the text of the 1991 Act of the
`[International Union for the Protection of New Varieties of Plants] Convention and its
`Explanatory Notes, as well as the publicly available facts on the UPOV website at
`https://www.upov.int about the Convention and its administration.”).
`
`14 36 TTABVUE. The answer uses Three Frog, LLC interchangeably with Applicant and
`Elderwood (26 TTABVUE 2).
`
`15 31 TTABVUE.
`
`16 32 TTABVUE.
`
`17 33 TTABVUE.
`
`18 34 TTABVUE.
`
`19 35 TTABVUE.
`
`20 29 TTABVUE.
`
`21 30 TTABVUE.
`
`22 37 TTABVUE.
`
`
`
`- 5 -
`
`

`

`Opposition No. 91255161
`
`
`considered,23 and Opposer chose not to file a rebuttal brief, Applicant’s trial brief is
`
`the only brief of record.
`
`We dismiss the opposition.
`
`II. Evidentiary Matters
`
`Applicant objects to consideration of Opposer ’s two statements submitted as
`
`testimony on the grounds that one is unsworn and the other untimely.24 With respect
`
`to the requirements for a sworn statement, Trademark Rule 2.2(n), 37 C.F.R. § 2.2(n),
`
`provides (emphasis in original):
`
`The term verified statement, and the terms verify, verified, or
`verification as used in this part refers to a statement that is sworn to, made
`under oath or in an affidavit, or supported by a declaration under § 2.20 or 28
`U.S.C. 1746, and signed in accordance with the requirements of § 2.193.
`
`28 U.S.C. 1746 provides (emphasis added):
`
`Wherever, under any law of the United States or under any rule, regulation,
`order, or requirement made pursuant to law, any matter is required or
`permitted to be supported, evidenced, established, or proved by the sworn
`declaration, verification, certificate, statement, oath, or affidavit, in writing of
`the person making the same (other than a deposition, or an oath of office, or an
`oath required to be taken before a specified official other than a notary public),
`such matter may, with like force and effect, be supported, evidenced,
`established, or proved by the unsworn declaration, certificate,
`verification, or statement, in writing of such person which is
`subscribed by him, as true under penalty of perjury, and dated, in
`substantially the following form:
`(1) If executed without the United States: “I declare (or certify, verify, or state)
`under penalty of perjury under the laws of the United States of America
`that the foregoing is true and correct. Executed on (date).
`(Signature)”.
`
`(2) If executed within the United States, its territories, p ossessions, or
`commonwealths: “I declare (or certify, verify, or state) under penalty of
`perjury that the foregoing is true and correct. Executed on (date).
`
`23 42 TTABVUE.
`
`24 43 TTABVUE 13-15.
`
`
`
`
`
`- 6 -
`
`

`

`Opposition No. 91255161
`
`
`(Signature)”.
`
`
`
`The statement by Opposer Chris W. Taylor, Jr. begins “I, Chris W. Taylor, Jr.,
`
`pursuant to 28 U.S.C. § 1746 declare as follows” and is subscribed and dated, but fails
`
`to state that the statement is true under penalty of perjury.25
`
`On its face, 28 U.S.C. 1746 provides no leeway to treat a statement that omits the
`
`reference to “true under penalty of perjury” as compliant with its requirements.
`
`Instead, as shown above, the statute requires the statement to be “in substantially”
`
`the same form as the listed examples including that language. The required language
`
`being absent from Opposer’s statement, and a mere reference to the statute being
`
`insufficient, we agree that Opposer’s statement is unsworn and cannot be considered
`
`as testimony. See M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd., 2019
`
`TTAB LEXIS 95 (TTAB 2019) (Declaration given no consideration because “Neither
`
`the original declaration nor the substitute declaration substantially complies with 28
`
`U.S.C. § 1746 due to the absence of the wording ‘under the laws of the United States’
`
`or its substantial equivalent.”); In re Dermahose Inc., 2007 TTAB LEXIS 25, *13-14
`
`(TTAB 2007) (“In effect, the common feature of oaths, sworn statements, unsworn
`
`declarations under penalty of perjury, and declarations under Rule 2.20 is that the
`
`person making the statement is subjecting himself or herself to criminal penalties for
`
`making statements that the person knows are not true.”).26
`
`25 27 TTABVUE 235-36.
`
`
`
`26 Because this statement largely reiterates the statements made in Opposer’s August 26,
`2021 declaration regarding his interest
`in producing hexagonal boxes and his
`communications with Applicant, we find that excluding the statement does not affect the
`disposition of this proceeding.
`
`
`
`- 7 -
`
`

`

`Opposition No. 91255161
`
`
`We come to a different result with respect to the sworn statement executed prior
`
`to Opposer’s trial period. With respect to the requirements for a timely testimony
`
`statement, Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a), provides, in relevant part:
`
`The Trademark Trial and Appeal Board will issue a trial order setting a
`deadline for each party’s required pretrial disclosures and assigning to each
`party its time for taking testimony and presenting evidence (“testimony
`period”). No testimony shall be taken or evidence presented except during the
`times assigned, unless by stipulation of the parties approved by the B oard, or
`upon motion granted by the Board, or by order of the Board.
`
`Opposer’s thirty-day trial period closed October 3, 2022. The declaration by
`
`Opposer Chris W. Taylor, Jr. submitted under notice of reliance was executed August
`
`26, 2021, and so the testimony was not taken during Opposer’s trial period.27
`
`However, the submission of a stale declaration is an error that can be corrected on
`
`seasonable objection by timely re-execution of the declaration. See Int’l Dairy Foods
`
`Ass’n v. Interprofession du Gruyère, 2020 TTAB LEXIS 268, *3 n.12 (TTAB 2020),
`
`aff’d, Interprofession du Gruyère v. U.S. Dairy Exp. Council, 575 F. Supp. 3d 627 (E.D.
`
`Va. 2021), aff’d, Interprofession du Gruyère v. U.S. Dairy Exp. Council, 61 F.4th 407
`
`(4th Cir. 2023). Because Applicant waited until filing its brief to object to the stale
`
`declaration instead of raising the defect when the declaration was filed (which would
`
`have afforded Opposer the opportunity to cure), Applicant waived or forfeited its
`
`objection. Moke Am. LLC v. Moke USA, LLC, 2020 TTAB LEXIS 18, *19 (TTAB 2020)
`
`(“we find that Applicant waived its objection to the admissibility of the Mini Mania
`
`sales records because Applicant failed to assert its objection promptly after Opposer
`
`27 27 TTABVUE 233-34.
`
`
`
`
`
`- 8 -
`
`

`

`Opposition No. 91255161
`
`
`introduced the Todd Rome declaration into evidence ”), reversed on other grounds, 671
`
`F. Supp.3d 670 (E.D. Va. May 3, 2023); cf. Of Counsel Inc. v. Strictly of Counsel
`
`Chartered, 1991 TTAB LEXIS 38, *2 n.2 (TTAB 1991) (“[A]pplicant waived its
`
`objection to the premature taking of the trial deposition, which could have been
`
`corrected upon seasonable objection”).
`
`III.
`
`Opposer’s Entitlement to a Statutory Cause of Action
`
`Entitlement to a statutory cause of action must be established in every inter
`
`partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d
`
`1370, 1373 (Fed. Cir. 2020), (citing Lexmark Int’l, Inc. v. Static Control Components,
`
`Inc., 572 U.S. 118, 125-26 (2014)). A party in the position of plaintiff may oppose
`
`registration of a mark when such opposition is within the zone of interests protected
`
`by the statute and the plaintiff has a reasonable belief in damage that is proximately
`
`caused by registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,
`
`1303 (Fed. Cir. 2020). Demonstrating “a real interest in [preventing the registration
`
`of] a trademark under [Trademark Act Sec.] 1064 [and 1063]” satisfies the zone-of-
`
`interests requirement, and demonstrating “a reasonable belief of damage by the
`
`registration of a trademark” satisfies the proximate causation requirement. Id. at
`
`1306.
`
`Here, as set forth above, Applicant’s answer states “Applicant admits that it filed
`
`an intellectual property complaint [with] Thingiverse.com against Opposer for
`
`distributing unauthorized counterfeits of Applicant’s original Honeycomb Design.”28
`
`28 17 TTABVUE 9-10.
`
`
`
`
`
`- 9 -
`
`

`

`Opposition No. 91255161
`
`
`Because Applicant’s answer also states “Elderwood is the original creator of the dice
`
`box design described in Application number 88125640 (the “Honeycomb Design”),29
`
`on its face, the admission establishes that Opposer distributes dice boxes highly
`
`similar to the “Honeycomb Design” dice box design that Applicant seeks to register,
`
`and Applicant has taken action to stop Opposer’s distribution. See Kellogg Co. v.
`
`Pack’Em Enters. Inc., 1990 TTAB LEXIS 3, 10 n.9 (TTAB 1990) (pleadings “have
`
`evidentiary value to the extent that they define the issues and contain admissions ”),
`
`aff’d, 951 F.2d 330 (Fed. Cir. 1991). Opposer’s August 26, 2021 declaration
`
`corroborates the admissions, averring that Opposer has “designed hexagonal boxes
`
`in the past and [] printed hexagonal boxes using 3D printers,” and that Opposer
`
`received the take-down notice from Applicant.30
`
`In short, we find that the admissions and declaration establish Opposer’s interest
`
`in preventing registration of Applicant’s dice box configuration on the grounds
`
`asserted and Opposer’s reasonable belief that he would be damaged by registration
`
`of Applicant’s dice box configuration. See Int’l Dairy Foods Ass’n, 2020 TTAB LEXIS
`
`268, *34 (entitlement based in part on defendant sending plaintiff a cease -and-desist
`
`letter).31
`
`29 17 TTABVUE 2.
`
`30 27 TTABVUE 233-34.
`
`
`
`31 Opposer may not rely on Applicant’s July 1, 2020 complaint and exhibits in a district
`court action against a third party “to support claims that Opposer has an expectation of a
`lawsuit.” Three Frog, LLC v. Metallic Dice Games, LLC, et al, Case 4:20-cv-11789-SDD-DRG
`(USDC-ED-MI), 27 TTABVUE 3. In that complaint Applicant pleaded its rights to its
`registered HEX CHEST word mark, and not the specific dice box configuration at issue here.
`27 TTABVUE 207-27. The reference to the purported infringing use of HEX CHEST on
`“copycat wooden boxes” and attached exhibits with photographs of the third party’s alleged
`
`
`
`- 10 -
`
`

`

`Opposition No. 91255161
`
`
`We are not persuaded by Applicant’s arguments that Opposer lacks entitlement
`
`to its statutory claim because Opposer is not in the business of selling dice boxes, did
`
`not create the 3D print file for a hexagonal dice box that was the original basis for
`
`Applicant’s copyright infringement complaint to Thingiverse, and is a mere
`
`intermeddler.32 While the first two arguments are accurate in some respects, they
`
`lack the context of Opposer’s digital business model, and so do not support Applicant’s
`
`conclusion that Opposer is a mere intermeddler.
`
`As shown below, while Opposer does not sell dice boxes directly or exclusively, he
`
`has a commercial interest in the dice box configuration being available to use because
`
`he has designed dice boxes in the past for his website and the videos from which he
`
`derives income. As also shown below, while Opposer did not create the 3D print file
`
`for a hexagonal dice box that was the basis for Applicant’s take down notice submitted
`
`to Thingiverse, Opposer did not merely upload a 3D print file but modified it, and
`
`uploaded his own version to Thingiverse, resulting in Applicant’s notice.
`
`In the discovery deposition submitted by Applicant, Opposer testified:
`
`Q. What kind of design is involved in your business?
`A. 3D models. It’s directly related to the 3D printing.
`Q. And what kind of 3D models do you make?
`A. Literally anything from retention rings for model rocket engines, nose cones,
`small boxes, aesthetic artistic models. Pretty much anything.
`Q. And do you sell those?
`A. I sell them, but not in the sense that you think. So yes.
`Q. In what sense do you sell them?
`
`
`similar configuration is insufficient to demonstrate that Applicant also was enforcing its
`rights to the configuration. The parties settled the case and there were no findings by the
`court. On September 15, 2020, plaintiff/Applicant filed a dismissal with prejudice. 24
`TTABVUE.
`
`32 43 TTABVUE 15-21.
`
`
`
`- 11 -
`
`

`

`Opposition No. 91255161
`
`
`A. My business is an indirect sales model. So I don’t take this and sell it to you.
`I take this, I make it available, and I profit from that action.
`Q. How do you profit from making a 3D printed model available?
`A. PayPal, Patreon. It’s my primary source of income.33
`
` …
`
`
`
`
`A. …I make content, and they reward me with money. Or they use my --
`Q. Sorry. Say that again, please.
`A. Or they’ll use my affiliate links on my content, and that will also pay me. So
`all of my income is very indirect.
`Q. And so, like, in a case with a 3D model, where would you include affiliate
`links?
`A. Everywhere. In the model site. On my primary website. On the video.
`Q. And what would those links be to?
`A. Usually Amazon. That’s my primary income source.
`Q. Affiliate links to Amazon?
`A. Correct.34
`
` …
`
`
`A. I do edited videos of particular content. For example, relevance to case in
`point, people were interested in boxes. So I designed and printed a box. I
`showed people how to design and print a box, and I showed people how to model
`it. I showed people how to successfully print it, how to make the machines, do
`what they’re supposed to do.35
`
`….
`
`Q. How many videos on dice boxes have you done?
`A. I think two. You have links for them. We sent them during the questionings.
`Q. Sure. And I want to know what you remember. So if you remember, you can
`say so. If you don’t remember, you can say so. That’s -- I don’t want you to
`guess, but if you --
`A. I’ve made approximately -- I’ve made approximately 2,000 videos. So exact
`remembrance is not going to happen. It’s approximate. I believe it was
`approximately two. Possibly three. They’re all available online.
`Q. What was the date of your first dice box video?
`A. Two years ago.· November of 2019.· November of 2018. The date will be on
`the video.
`
`
`
`33 29 TTABVUE 7.
`
`34 29 TTABVUE 8.
`
`35 29 TTABVUE 8.
`
`
`
`- 12 -
`
`

`

`Opposition No. 91255161
`
`
`Q. Okay. And you included affiliate links in those videos?
`A. Yes. All the --
`Q. Is that right?
`A. -- videos include a standard set of links that go up with every single video.
`Q. And are those links to Amazon?
`A. Amazon, eBay, Gearbest, AliExpress. You can look at one of my videos.
`You’ll see there’s two dozen links in there.36
`…
`
`Q. So you wouldn’t recall selling 10,000 dice boxes?
`A. I think there’s a confusion on your part about how I sell dice boxes. I make
`them available online. Sometimes custom orders. People then download them
`and manufacture them themselves on their own machines. So you could go to
`Thingiverse right now, download my dice box, print it, send me a tip, and I
`would never know you actually printed one. I would never know if you printed
`ten or a hundred. That’s just not how my indirect medium works. I don’t have
`a order receipt for a dice box, and then I ship a dice box. That’s not how my
`medium works. It’s all digital.
`Q. Have you ever manufactured a dice box yourself and then sold it?
`A. Indirectly, yes. I would print some out, bring them to shows and give them
`to my loyal viewers who pay me.37
`
` …
`
`
`
`
`Q. The hex box that you printed in 2018, what kind of file did you print that
`from?
`A. STL. That’s a stereolithographic file.
`·Q. Is that a standard file for 3D printing?
`A. Yes, it is. It’s a -- well, standard file for 3D modeling.38
`
`…
`
`
`Q. So the STL file, did you create that?
`A. The initial one, no. I copied it.
`Q. From where?
`A. The -- what was the guy’s name? He posted it to Thingiverse. Agrif --
`Q. Aaron Griffith?
`
`36 29 TTABVUE 9.
`
`
`
`37 29 TTABVUE 9. Opposer’s discovery responses corroborate the testimony that while
`Opposer has no direct sales, he makes dice boxes similar to Applicant’s dice box and has given
`them away. 30 TTABVUE 7-9.
`
`38 29 TTABVUE 11.
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`Opposition No. 91255161
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`A. Yes. He posted files to Thingiverse. I download the file, like any other
`Thingiverse file, and said, “I like this. I want to make my own version.” So I
`did.39
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`The excerpts from his deposition make clear that Opposer has a commercial interest
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`in dice box configurations and that Opposer modified and posted the dice box design
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`which Applicant alleged was a violation of his rights in the configuration, and which
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`Applicant now seeks to register.40
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`Finally, the record includes excerpts from a Reddit subreddit (or user-created
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`online message board) devoted to 3D printing that includes Opposer’s negative
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`comments about Applicant’s complaints to third parties about the use of dice box
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`configurations alleged to infringe Applicant’s rights, and Opposer’s expressed
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`willingness to contest Applicant’s assertion of rights in the configuration.41 We
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`disagree that these comments undermine or negate the evidence of Opposer’s
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`commercial interest in dice box configurations; any assertions by Opposer that the
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`opposition serves the interests of others does not affect our finding that the opposition
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`serves Opposer’s commercial interest.
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`The record supports Opposer’s entitlement to bring his statutory claims.
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`IV. Claim that the Configuration is Functional
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`With respect to this claim, Opposer pleaded:
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`39 29 TTABVUE 11. Opposer’s discovery responses corroborate that Opposer did not merely
`upload a third party’s dice box design. 30 TTABVUE 14.
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`40 Contrary to Applicant’ argument (43 TTABVUE 17) that it lodged only a copyright
`complaint against Opposer, as stated above Applicant’s DCMA alleged infringement of both
`Applicant’s copyright and the “trade dress” that is the subject of the opposed application.
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`41 30 TTABVUE 11 (Opposer authenticating his Reddit posts); 37 TTABVUE 1-14 (Reddit
`posts).
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`Opposition No. 91255161
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`31. The product design depicted in the ‘640 Application contains several key
`features which are merely functional or aesthetically functional, including a)
`the use of exactly seven (7) slots to hold the seven (7) dice used for D&D play,
`b) hexagonal-shaped slots to accommodate the D20 and other polygonal dice
`used in D&D play, and c) an overall configuration of seven (7) hexagonal -
`shaped slots that form a hexagonal tessellation.42
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`
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` Section 2(e)(5) of the Trademark Act prohibits registration of “a mark which . . .
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`comprises any matter that, as a whole, is functional.” 15 U.S.C. § 1052(e)(5). Under
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`the statute, functional matter is unregistrable on the Principal and Supplemental
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`Registers. 15 U.S.C. § 1052(e)(5); 15 U.S.C. § 1091(c). Where, as here, Opposer pleads
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`both utilitarian functionality and aesthetic functionality, we consider functionality
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`under two tests.
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`Under the first test, matter is functional in the utilitarian sense if “it is essential
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`to the use or purpose of the article or if it affects the cost or quality of the article.”
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`TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 24 (2001) (citation omitted).
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`In making our determination of functionality under this test, relying on In re Morton
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`Norwich Prods., Inc., 671 F.2d 1332 (CCPA 1982), we consider (1) the existence of a
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`utility patent disclosing the utilitarian advantages of the design; (2) advertising
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`materials in which the originator of the design touts the design’s utilitarian
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`advantages; (3) the availability to competitors of functionally equivalent designs; and
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`(4) facts indicating that the design results in a comparatively simple or cheap method
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`of manufacturing. Id. at 1340-41. It is not required that all four factors be proven in
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`every case, and the factors are not exclusive because functionality “depends upon the
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`42 16 TTABVUE 11.
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`Opposition No. 91255161
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`totality of the evidence.” Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 1273 (Fed.
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`Cir. 2002).
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`Here, there is no utility patent of record that discloses the utilitarian features of
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`Applicant’s dice box configuration. Opposer submitted utility Patent No. 4648602 for
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`a “dice game apparatus” comprising in part a hexagonal dice box:43
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`While Applicant’s dice box configuration has an overall hexagonal shape, it does not
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`resemble the patented dice game apparatus, either as to its honeycomb side or its six
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`
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`point star side:
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`“Simply dissecting appellant’s alleged trademark into its design features and
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`attributing to each a proven or commonly known utility is not, without more,
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`
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`43 27 TTABVUE 198-205. The patent describes the utility of the hexagon shape as “The
`number of sidewalls and rim portions are selected in accordance with the maximum number
`of players which can use the apparatus to participate in a game and are formed from a
`material which can be written upon and erased, such as slate.” 27 TTABVUE 198. This utility
`is not shared by Applicant’s hexagon configuration, which does not include a rim for writing
`and is not a game apparatus but a box for dice.
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`Opposition No. 91255161
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`conclusive that the design, considered as a whole, is de jure functional and not
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`registrable.” In re Teledyne Indus., Inc., 696 F.2d 968, 971 (Fed. Cir. 1982).
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`With respect to the second and fourth factors, there is no record evidence of
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`Applicant touting the utilitarian advantages of its dice box design44 or the dice box
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`configuration resulting
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`in a comparatively simple or cheap method of
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`manufacturing.45
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`With respect to the third factor, whether there is evidence that alternative designs
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`are available to competitors, in his response to Applicant’s requests for admission
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`Nos. 28 and 29, Opposer admits:46
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`In a Dice Container containing inner compartments for holding dice, the inner
`compartments could be shaped like a circle, square, or triangle, or a different
`polygonal shape other than a hexagon.
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`The outer profile of a Dice Container could be shaped like a circle, square, or
`triangle, or a different polygonal shape other than a hexagon.
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`In addition, the record includes dozens of alternate configurations for a dice box,
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`with a representative sampling shown below:
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`
`
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`44 We have considered the third-party statements submitted by Applicant in support of its
`claim of acquired distinctiveness that describe Applicant’s dice box configuration as including
`“hex spaces that keep your dice from rolling around” (27 TTABVUE 63) and “the standard
`array of seven [dice] you need to play most RPGs fits well inside the carved out honeycomb
`of holders.” (27 TTABVUE 99). Because the record shows that all dice boxes are variations of
`open designs that hold many dice, or compartmentalized designs that hold a limited number
`of dice separately, we do not regard this as touting an advantage of Applicant’s particular
`configuration.
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`45 The articles and reviews discussing Applicant’s goods emphasize the craftsmanship of
`choosing, sanding, and polishing the wood to make the box, but do not link any aspect of the
`dice box design to its manufacturing process. 27 TTABVUE 30, 35, 40, 48, 57 -58, 73.
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`46 30 TTABVUE 14-15.
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`Opposition No. 91255161
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`47
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`48
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`49
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`50
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`47 27 TTABVUE 33.
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`48 27 TTABVUE 34.
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`49 27 TTABVUE.
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`50 Application, December 4, 2018 Office Action TSDR 8.
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`54
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`51 33 TTABVUE 5.
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`52 31 TTABVUE 10.
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`53 31 TTABVUE 5.
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`54 35 TTABVUE 8.
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`51
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`52
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`Opposition No. 91255161
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`55
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`56
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`57
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`55 35 TTABVUE 16.
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`56 35 TTABVUE 23.
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`57 35 TTABVUE 24.
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`Opposition No. 91255161
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`58
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`As noted above, the Morton Norwich factors are not exclusive, and we address the
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`59
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`U.S. Copyright Office’s file regarding Applicant’s claim for copyright registration of
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`the work HEX CHEST. The file comprises an acknowledgement of Appli