TrackFin GmbH

This Opinion Is Not a
Precedent of the TTAB

Mailed: June 17, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re TrackFin GmbH
_____

Application Serial No. 86175623
_____

Holby M. Abern of Neal, Gerber & Eisenberg, LLP.
for TrackFin GmbH.

April A. Hesik, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
_____

Before Bergsman, Ritchie and Lynch, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

TrackFin GmbH (“Applicant”) seeks registration on the Principal Register, under

Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), of the design reproduced below

for

Machines, namely, snow groomers for maintaining snow
pistes, cross country skiing tracks and cross country races,
in Class 7; and
Serial No. 86175623

Tracked utility vehicles for grooming snow and sand, in
Class 12.1

The description of the mark reads as follows:

The mark consists of a three-dimensional trade dress
including a repeating pattern appearing in groomed snow
or groomed sand. The pattern includes ten substantially
equidistant grooves that each have a substantially pointed
bottom, the ten substantially equidistant grooves being
offset on both sides by a thicker groove having a
substantially flat bottom. The matter shown in broken
lines is not part of the mark and serves only to show the
position of the mark.

The Examining Attorney refused registration on the following grounds:

The subject matter sought to be registered is a functional
feature of the goods pursuant to Trademark Act Section
2(e)(5), 15 U.S.C. § 1052(e)(5);

The subject matter sought to be registered consists of a
non-distinctive product design under Trademark Act
Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052 and 1127;

1 Application Serial No. 86175623, filed January 27, 2014, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1052(a), based on Applicant’s claim of first use anywhere and
first use in commerce on January 1, 1993 for the goods in both classes.
On January 24, 2019, Applicant recorded a “change of registered address from the
Netherlands (B.V.) to Austria (GmbH)” (i.e., Trackfin B.V., a limited liability company of the
Netherlands, to TrackFin GmbH, an Austrian limited liability company) at reel 6535, frame
0318.

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Serial No. 86175623

The subject matter sought to be registered fails to function
as a trademark pursuant to Trademark Act Sections 1, 2,
and 45, 15 U.S.C. §§ 1051, 1052 and 1127; and

The specimens showing use of the subject matter sought to
be registered fail to show the applied-for mark in commerce
pursuant to Trademark Act Sections 1 and 45, 15 U.S.C. §§
1051and 1127.

I. Background

Snow Grooming

Snow grooming or piste bashing is the process to
manipulate snow for recreational uses, usually using a
snow groomer or piste basher vehicle (colloquially
sometimes referred to as a “piste beastie”). This can be a
tractor, snowmobile, truck or snowcat towing specialized
equipment to move and manipulate snow. The process used
to maintain ski hills, cross country ski trails and
snowmobile trails by grooming (moving, flattening,
rototilling, or compacting) the snow on them.

* * *

Process

A groomer will usually go out to pack the snow and improve
skiing and snowboarding and snowmobile trail conditions.
The resulting pattern on the snow is known as corduroy in
ski and snowboard slang, and is widely regarded as a good
surface on which to ski or ride.2

“Corduroy” is defined as “the finely ridged surface of the snow after a snowcat has

groomed a ski trail.”3 “The function of the corduroy ridges is to provide resistance to

2 Snow Grooming, Wikipedia.org attached to the May 8, 2014 Office Action (TSDR 6).
Citations to the examination record refer to the Trademark Office’s online Trademark Status
and Document retrieval system (TSDR), by page number, from the downloadable .pdf format.
3 Skiing, About.com attached to the May 8, 2014 Office Action (TSDR 8); see also Corduroy,
Digital Nomad, National Geographic (digitalnomad.nationalgeograhic.com) (TSDR 12) (“The
lined furrows are called ‘corduroy’ because the groomed snow and ice looks just like the fabric
of the same name.”) attached to the May 8, 2014 Office Action; Ski.com/ski-glossary (TSDR
579) (“Corduroy: Named for the ridges in the snow caused by grooming machines, corduroy
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Serial No. 86175623

the ski edge so as to minimize lateral ski motion (slippage).”4 “Fresh corduroy is

generally smooth and predictable, so it is a favorite of skiers who like to ski fast or

‘rip corduroy.’”5 Corduroy “is widely regarded as a good surface on which to ski or

ride”6 because “processed snow is ideal for carving turns.”7 In this regard, Applicant

states that “the pattern of groomed snow that constitutes Applicant’s Trade Dress is

one of many equally feasible, efficient competitive designs.”8 A photograph of a

representative “corduroy” snow design is reproduced below.9

is another word for groomer or groomed slope.”) attached to the January 17, 2018 Office
Action.
4Patent Application Publication No. 2013/0264797 [0004] attached to the January 17, 2018
Office Action (TSDR 501).
5Liftopia.com (September 18, 2014) attached to the January 17, 2018 Office Action (TSDR
516).
6 Snow Grooming, Like2Do.com attached to the January 17, 2018 Office Action (TSDR 566).
7Bedeviling Gravity (November 2, 2008), SunValleyMag.com attached to the January 17,
2018 Office Action (TSDR 571).
8 November 6, 2014 Response to an Office Action (TSDR 16).
9 Corduroy, Digital Nomad, National Geographic (digitalnomad.nationalgeograhic.com)
(TSDR 13) attached to the May 8, 2014 Office Action.

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Serial No. 86175623

Finally, “[t]here are many other things – besides corduroy – that indicate if a run is

groomed well. A well-groomed run is flat, has a good fall line, and does not have thin

spots.”10

Applicant is not claiming rights in the corduroy design per se; rather Applicant is

seeking to register a corduroy design consisting of a repeating pattern of ten

substantially equidistant grooves that each have a substantially pointed bottom, the

ten substantially equidistant grooves being offset on both sides by a thicker groove

having a substantially flat bottom. In its November 6, 2014 Response to an Office

Action, Applicant presented a side-by-side comparison of Applicant’s snow pattern

and the snow pattern created by PistenBully, a competitor, thus, distinguishing

Applicant’s purported mark from other snow tracks.11 The comparison is reproduced

below:

10 Id. at 573.
11 November 6, 2014 Response to an Office Action (TSDR 17-18).

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Serial No. 86175623

II. Whether the specimens show use of the subject matter sought to be
registered?

A trademark application filed under Section 1(a) of the Trademark Act, 15 U.S.C.

§ 1051(a), must include one specimen for each class, showing use of the mark in

commerce on or in connection with the goods. Section 45 of the Trademark Act states

that a mark is deemed to be in use in commerce

(1) on goods when—

(A) it is placed in any manner on the goods or their
containers or the displays associated therewith or on the
tags or labels affixed thereto, or if the nature of the goods
makes such placement impracticable, then on documents
associated with the goods or their sale, and

(B) the goods are sold or transported in commerce.

Trademark Rule 2.56(b)(1), 37 C.F.R. § 2.56(b)(1) provides:

A trademark specimen is a label, tag, or container for the
goods, or a display associated with the goods. The Office
may accept another document related to the goods or the
sale of the goods when it is impracticable to place the mark
on the goods or packaging for the goods.

See also In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009) (“the test

for an acceptable … specimen, is simply that it must in some way evince that the

mark is ‘associated’ with the goods and serves as an indicator of source”); In re

Marriott, 459 F.2d 525, 173 USPQ 799, 800 (CCPA 1972) (“the menu is a display of

appellant’s offering directly associated with appellant’s goods. It is from this word or

pictorial depiction of the sandwich that the customer makes his selection, and his

selection is not indicated on the check by the specific ingredients of its composition

but by the mark TEEN TWIST.”).

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Serial No. 86175623

The TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) (2018) explains that

a qualifying “display” will essentially comprise “point-of-sale material such as

banners, shelf-talkers, window displays, menus, and similar devices.” TMEP

§ 904.03(g). “[T]he mere inclusion of a phone number, Internet address and/or mailing

address on an advertisement describing the product is not in itself sufficient to meet

the criteria for a display associated with the goods. There must be an offer to accept

orders or instructions on how to place an order.” Id. See also In re Siny Corp., 920 F.3d

1331, 2019 USPQ2d 11362**4 (Fed. Cir. 2019) (affirming rejection of “specimen [that]

did not cross the line from mere advertising to an acceptable display associated with

the goods”); In re MediaShare Corp., 43 USPQ2d 1304, 1306 (TTAB 1997) (fact sheets,

catalogs, or brochures submitted as specimens were not displays associated with the

goods, in part, because they did not include any information as to how to order the

products or the terms and conditions under which the software was available for

license).

The specimens of use filed with the application are four photographs, each

described only as “photo,” and for which Applicant provided no additional

explanation. A representative photographic specimen is reproduced below:

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Serial No. 86175623

These specimens are not acceptable because they do not show the applied-for mark

on the products, packaging for the products, or as displays used in association with

the products (i.e., point-of-sale materials).

In its October 20, 2015 Response to an Office Action, Applicant submitted a copy

of an Operator’s Guide. The cover of the Operator’s Guide is reproduced below:12

12 TSDR 49.

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Serial No. 86175623

Instruction manuals per se, such as an Operator’s Guide, can be acceptable

specimens. See In re Ultraflight Inc., 221 USPQ 903, 906 (TTAB 1984) (“We believe

the instruction manual is as much a part of applicant’s goods as are the various parts

that are used to build the gliders. Application of the mark to the manual of assembly

instructions, then, must be considered affixation to the goods.”).

However, the Examining Attorney argues that Applicant’s Operator’s Guide is not

an acceptable specimen because it does not display the subject matter sought to be

registered.

[T]he operator’s guide, which is a printed booklet, does not
depict the mark—that is, the actual tracks left in snow or
sand—in connection with the goods. Rather, the specimen
presented to the consumer of the goods a two-dimensional
printed image of snow tracks, not tracks left in the snow or
sand. Furthermore, the picture of groomed snow printed on
the operator’s guide depicts a series of grooved lines, but
does not depict the repeating pattern of thin and thick
grooved lines shown in the drawing of the mark. Thus, the
image does not depict a substantially exact representation
of the mark, which is a requirement for an acceptable
specimen.13

Trademark Rule 2.56(a), 37 C.F.R. § 2.56(a), provides, in relevant part, that the

specimen must show the mark as used on or in connection with the goods or services.

TMEP § 807.12 (2018) summarizes the requirements for the mark in the drawing as

compared to the mark in the specimen.

For applications under §1 of the Trademark Act, the
drawing must always be compared to the specimen of
record to determine whether they match. See 37 C.F.R.
§2.51(a-(b) [sic]. The first step is to analyze whether the

13 Examining Attorney’s Brief (21 TTABVUE 23-24).

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Serial No. 86175623

mark in the drawing is a substantially exact
representation of the mark shown on the specimen.

In this case, the mark sought to be registered is a three-dimensional repeating

pattern of ten substantially equidistant grooves appearing in groomed snow or

groomed sand, offset on both sides by a thicker groove having a substantially flat

bottom. The Operator’s Guide does not display a three-dimensional repeating pattern

appearing in groomed snow or groomed sand. Thus, the Operator’s Guide does not

display the applied-for mark.14

In its October 20, 2015 Response to an Office Action, Applicant also submitted a

photograph of its exhibit at a trade show.15 The most legible photograph of Applicant’s

trade show exhibit is reproduced below:16

14 Applicant does not dispute that the photograph as part of the Operator’s Guide is not a
repeating pattern of ten substantially equidistant grooves appearing in groomed snow or
groomed sand, offset on both sides by a thicker groove having a substantially flat bottom;
rather, Applicant contends that it is “a sufficient representation.” Applicant’s Brief, p. 20 (7
TTABVUE 21). However, Applicant’s “sufficient representation” is merely the presentation
of a corduroy design which Applicant has acknowledged is used by competitors. See the
Introduction; see also the declaration of Jean-Claude Perreault, Applicant’s Vice President of
Sales, who testified that over his 10 years of experience working for Applicant, he is unaware
of any other company whose vehicles leave the snow track sought to be registered. Jean-
Claude Perreault Decl. ¶20, November 6, 2014 Response to Office Action (TSDR 24).
Moreover, Applicant argued that because its mark is the repeating pattern of ten
substantially equidistant grooves, a repeating pattern of, inter alia, five substantially
equidistant grooves would be an alternative design for snow or sand. Applicant’s July 17,
2017 Response to an Office Action (TSDR 8). Accordingly, Applicant must show use of the
subject matter described in the application and not an allegedly “sufficient representation.”
15 TSDR 118.
16 Photographs should be clear and legible. Trademark Rule 2.126(a)(2), 37 C.F.R.
§ 2.126(a)(2) (“Exhibits pertaining to an electronic submission must be made electronically
as an attachment to the submission and must be clear and legible.”); see also TMEP
§ 904.02(b) cf. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750,
1753 n.6 (TTAB 2013)(citing Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404
(TTAB 1998) (“It is reasonable to assume that it is opposer’s responsibility to review the
documents it submits as evidence to ensure that such submissions meet certain basic
requirements, such as that they are legible….”)), aff’d, 565 F. App’x 900 (Fed. Cir. 2014)
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Serial No. 86175623

In other cases, the Board has found that the prominent display of the trademark

on a trade-show booth where product literature is distributed and orders for the goods

are taken is a display associated with the goods, In re Shipley Co. Inc., 230 USPQ 691

(TTAB 1986), and that informational fliers or leaflets clearly depicting the mark and

presented on the goods at trade show exhibits are acceptable displays associated with

the goods. In re Ancha Elec. Inc., 1 USPQ2d 1318 (TTAB 1986).

In Shipley, the Board found based on Applicant’s declaration, “applicant’s trade

show booths are more than sites for the distribution of advertising literature; these

booths are also sales counters for applicant’s products, including the chemicals for

use in fabrication of printed circuit boards.” 230 USPQ at 693. Accordingly, the Board

(mem.); Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1351-52 (TTAB
2014) (duty of the party making submissions to the Board via ESTTA to ensure that they
have been entered into the trial record), appeal dismissed per stipulation, No. 14-1461 (Fed.
Cir. Oct. 10, 2014).

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Serial No. 86175623

held that “[a] purchaser, upon seeing such literature describing applicant’s chemicals

for use in the fabrication of printed circuit boards and being provided with the

opportunity to buy these products at the trade show booths would, we think, associate

the mark that is prominently displayed on that booth with such goods.” 230 USPQ at

694. See also Ancha Elec., 1 USPQ2d at 1319 (applicant’s declaration supported

applicant’s argument that specimens at trade show were point of sale materials).

In this case, John Swartz, a sales representative for Applicant, testified that

Applicant’s snow grooming vehicles and related equipment are routinely marketed

and sold at trade shows.17 Although the photograph displays a repeating snow track,

the snow track does not appear to show the pattern sought to be registered (i.e.,

display a repeating pattern of ten substantially equidistant grooves, offset on both

sides by a thicker groove having a substantially flat bottom, appearing in groomed

snow).18 Thus, this specimen is not acceptable because it does not display the applied-

for mark.19

17Swartz Decl. ¶¶4-5 attached to Applicant’s May 20, 2016 Request for Reconsideration (4
TTABVUE 41).
18 As explained in note 15, it is incumbent on Applicant to submit evidence that is clear,
legible, and displays what Applicant asserts that its displays.
19 Even if the photograph clearly displayed the subject matter sought to be registered,
photographs such as those at the trade show displaying the products and the results of using
those products (i.e., photographs of groomed snow) are commonplace. May 8, 2014 Office
Action (TSDR 8-9, 17); November 6, 2014 Response to an Office Action (TSDR 17, 18, 32, 34-
43); May 20, 2016 Response to an Office Action (TSDR 16, 22, 26, 29, 44, 116, 119); October
30, 2016 Office Action (TSDR 6, 11, 14, 20, 32); January 17, 2018 Office Action (TSDR 562,
571, 613, 618-637, 640-644, 648, 651-653, 658, 670, 675, 682, 687, 694-696, 699-700, 715, 717,
719-721, 736-743). As set forth in the specimen, the photograph of groomed snow would be
viewed by prospective customers as no more than an informational depiction of the results of
using Applicant’s machinery and not as a trademark for the goods. Thus, the trade show
photographs do not show use of the applied-for matter as a mark, as indicated in the
Examining Attorney’s failure to function refusal. However, given our determination below
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Serial No. 86175623

Applicant also submitted video evidence as specimens. Although Applicant failed

to provide evidence that the videos are point-of-sale materials, we consider their

effectiveness. The videos are identified as “promotional videos.”20 Because the URL

for videos is , we assume the videos are posted and available for

viewing on the Youtube website.21 Mr. Swartz, Applicant’s sales representative,

testified that materials such as “catalogs, operator’s guides, and pricing sheets are

distributed to potential buyers at such trade shows.”22 Because he did not mention

the videos at this point-of-sale venue, we lack evidence to treat them as displays used

in association with the goods.23

In addition, the first video only shows the applied-for mark in passing, if it is even

noticed at all.24 Through no stretch of the imagination could the first video be

considered as displaying a mark. A second video focuses on creating a good snow pack,

not the track.25 The video informs the viewer that the tiller creates the pattern that

that the subject matter sought to be registered consists of a non-distinctive trade dress, we
need not reach the failure to function refusal.
20 October 20, 2015 Office Action (TSDR 5, 7, 10, 18).
21 October 20, 2015 Office Action (TSDR 19).
22 Swartz Decl. ¶¶4-5 attached to Applicant’s May 20, 2016 Request for Reconsideration
(4 TTABVUE 41).
23We cannot treat the videos submitted with the May 20, 2016 Request for Reconsideration
as substitute specimens because they are not supported by a declaration that they were in
use as of the filing date of the application. Trademark Rule 2.59(a), 37 C.F.R. § 2.59(a).
Nevertheless, we will consider them in connection with determining whether the subject
matter sought to be registered has acquired distinctiveness.
24 October 20, 2015 Office Action (Document 25 and 27).
25 Document 26 and 28.

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Serial No. 86175623

the skier skies on. The most prominent display of the track in the second video does

not show the repeating pattern or the repeating pattern could not be perceived.26

Because the specimens are not acceptable, the refusal to register on the ground

that the specimens do not show use of the subject matter sought to be registered is

affirmed.

III. Whether the subject matter sought to be registered consists of a non-
distinctive product design?

The Examining Attorney refused to register the applied-for mark on the grounds

that it does not function as a trademark and that it is a product design that has not

acquired distinctiveness.27 We find, however, that the applied-for mark is not a

product design. The subject matter sought to be registered is not the shape,

configuration, or other product design feature of a snow groomer (Class 7) or a tracked

utility vehicle for grooming snow and sand (Class 12). The subject matter sought to

be registered is the groomed snow or sand; the result of having used the product

identified in the description of goods.28

26Further, like the photograph of Applicant’s booth at the trade show, to the extent that the
videos display groomed snow, the groomed snow would be viewed by prospective customers
as no more than part of Applicant’s marketing strategy to show the results of using its
equipment and would not be perceived as a trademark for the snow grooming machinery
being promoted in the videos. Thus, the videos do not display the subject matter sought to be
registered as a trademark because consumers will not perceive it as a source indicator as
presented in the videos, as indicated in the Examining Attorney’s failure to function refusal.
However, given our determination below that the subject matter sought to be registered
consists of a non-distinctive trade dress, we need not reach the failure to function refusal.
27 Examining Attorney’s Brief (21 TTABVUE 17).
28The subject matter sought to be registered is not product packaging because it is not a
combination or arrangement of design elements that make up the product’s packaging,
graphics, layout, or color.

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Serial No. 86175623

Nevertheless, “[i]t is the source-distinguishing ability of a mark—not its

ontological status as color, shape, fragrance, word, or sign—that permits it to serve

these basic purposes [source indication].” Qualitex Co. v. Jacobson Prods. Co., Inc.,

514 U.S. 159, 34 USPQ2d 1161, 1163 (1995).

But, over time, customers may come to treat a particular
color on a product or its packaging (say, a color that in
[****1163] context seems unusual, such as pink on a firm’s
insulating material or red on the head of a large industrial
bolt) as signifying a brand. And, if so, that color would have
come to identify and distinguish the goods–i.e., “to
indicate” their “source”–much in the way that descriptive
words on a product (say, “Trim” on nail clippers or “Car-
Freshner” on deodorizer) can come to indicate a product’s
origin. See, e. g., J. Wiss & Sons Co. v. W. E. Bassett Co.,
59 C. C. P. A. 1269, 1271 (Pat.), 462 F.2d 567, 569 (1972);
Car-Freshner Corp. v. Turtle Wax, Inc., 268 F. Supp. 162,
164 (SDNY 1967). In this circumstance, trademark law
says that the word (e. g., “Trim”), although not inherently
distinctive, has developed “secondary meaning.” See
Inwood Laboratories, Inc. v. Ives Laboratories, Inc.,
456 U.S. 844, 851, n. 11 (1982) (“[S]econdary meaning” is
acquired when “in the minds of the public, the primary
significance of a product feature . . . is to identify the source
of the product rather than the product itself”). Again, one
might ask, if trademark law permits a descriptive word
with secondary meaning to act as a mark, why would it not
permit a color, under similar circumstances, to do the
same?

Id. at 1162-63.29 Thus, we first analyze whether the subject matter sought to be

registered has acquired distinctiveness, because if it has not, we need not reach the

failure to function refusal.

29 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1070 (2000),
holds
To the extent there are close cases, we believe that courts should
err on the side of caution and classify ambiguous trade dress as
product design, thereby requiring secondary meaning. The very
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Serial No. 86175623

Because Applicant amended its application to register the subject matter sought

to be registered under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), the

Trademark Act “accepts a lack of inherent distinctiveness as an established fact.”

Yamaha Int’l Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005

(Fed. Cir. 1988). The kind and amount of evidence necessary to establish that a mark

has acquired distinctiveness in relation to goods or services depends on the nature of

the mark and the circumstances surrounding the use of the mark in each case. Royal

Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1047 (Fed. Cir. 2018)

(“We have long held that ‘the applicant’s burden of showing acquired distinctiveness

increases with the level of descriptiveness; a more descriptive term requires more

evidence of secondary meaning.’”); Yamaha Int’l Corp., 6 USPQ2d at 1008; Roux

Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (CCPA 1970); In re

Hehr Mfg. Co., 279 F.2d 526, 528, 126 USPQ 381, 383 (C.C.P.A. 1960); In re Capital

Formation Counselors, Inc., 219 USPQ 916, 918 (TTAB 1983). In this appeal,

Applicant has a heavy burden because the repeating pattern of ten substantially

equidistant grooves appearing in groomed snow or groomed sand is a nontraditional

mark. See Yamaha, 6 USPQ2d at 1008 (evidence required to show acquired

closeness will suggest the existence of relatively small utility in
adopting an inherent-distinctiveness principle, and relatively
great consumer benefit in requiring a demonstration of
secondary meaning.

Likewise, in this application, the consumer predisposition to equate the subject matter
sought to be registered in this case does not exist and, therefore, evidence of acquired
distinctiveness is required.

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Serial No. 86175623

distinctiveness is directly proportional to the degree of non-distinctiveness of the

mark at issue); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417

(Fed. Cir. 1985) (analogizing color with ornamentation and holding “convincing

evidence must be forthcoming to prove that in fact the purchasing public does

recognize the design as a trademark which identifies the source of the goods.”)

(quoting In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1, 2 (CCPA 1961); In re

Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1052 (TTAB 2013) (finding that

peppermint scent mark for “pharmaceutical formulations of nitroglycerin” failed to

function as a mark by noting the insufficiency of applicant’s evidence of acquired

distinctiveness in light of evidence that the use of peppermint scent by others in the

relevant marketplace (i.e., pharmaceuticals) tends to show that such scents are more

likely to be perceived as attributes of ingestible products than as indicators of source);

In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1283 (TTAB 2000) (product

configurations face a heavy burden to establish secondary meaning).

To establish acquired distinctiveness, an applicant must demonstrate that the

subject matter sought to be registered is perceived by relevant consumers not just as

the result of using the product or a feature of the product, but as identifying the

producer or source of the product. See Wal-Mart Stores, 54 USPQ2d at 1068 (acquired

distinctiveness exists “when, in the minds of the public, the primary significance of a

[mark] is to identify the source of the product rather than the product itself”) (citation

and internal quotation marks omitted); Stuart Spector Designs Ltd. v. Fender Musical

Instruments Corp., 94 USPQ2d 1549, 1554 (TTAB 2009) (“An applicant must show

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Serial No. 86175623

that the primary significance of the product configuration in the minds of consumers

is not the product but the source of that product in order to establish acquired

distinctiveness.”). This may be shown by direct or circumstantial evidence. Schlafly

v. Saint Louis Brewery, LLC, 909 F.3d 420, 128 USPQ2d 1739, 1743 (Fed. Cir. 2018)

(“The Board and courts have recognized that both direct and circumstantial evidence

may show secondary meaning.”) (citation omitted); In re Ennco Display Sys.,

56 USPQ2d at 1283. Direct evidence includes actual testimony, declarations or

surveys of consumers as to their state of mind. Id. Circumstantial evidence, on the

other hand, is evidence from which consumer association might be inferred, such as

years of use, prior registrations, extensive amount of sales and advertising,

unsolicited media coverage, and any similar evidence showing wide exposure of the

mark to consumers. Id.; see also Tone Bros. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d

1321 (Fed. Cir. 1994) (listing, as examples of circumstantial evidence, advertising,

sales figures, and intentional copying by competitors). In particular, the Court of

Appeals for the Federal Circuit set out factors to consider in assessing whether a

mark has acquired distinctiveness, stating as follows:

Today we clarify that the considerations to be assessed in
determining whether a mark has acquired secondary
meaning can be described by the following six factors:
(1) association of the trade dress with a particular source
by actual purchasers (typically measured by customer
surveys); (2) length, degree, and exclusivity of use;
(3) amount and manner of advertising; (4) amount of sales
and number of customers; (5) intentional copying; and
(6) unsolicited media coverage of the product embodying
the mark.

– 18 –
Serial No. 86175623

Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed.

Cir. 2018); see also In re SnoWizard, Inc., 129 USPQ2d 1001, 1004-05 (TTAB 2018).

A. Association of the subject matter sought to be registered with a particular
source by actual purchasers.

Applicant submitted declarations from six persons in the snow grooming industry,

each of whom testified to the following (emphasis added): 30

Having worked in this industry for X years, I have become
familiar with the different design impressions that are
created in the freshly groomed snow by the various
manufacturers’ snow grooming vehicles.

Specifically, I have seen the distinctive [corduroy,
corduroy profile, pattern, superior, “single,
oversized raised ridge,” or segmented] design
impression that is created by [Applicant’s] snow grooming
vehicles on a multitude of occasions.

Consequently, upon encountering the distinctive
[corduroy, corduroy profile, pattern, superior,
“single, oversized raised ridge,” or segmented] design
impression found in the snow that has been freshly
groomed, the primary significance to me is that it

30 November 6, 2014 Response to Office Action (TSDR 51-52, 57-61, and 66-73).
We do not consider the declarations of Luc Boulanger, Operation Manager of Mont Sutton in
Quebec, Canada (November 6, 2014 Response to Office Action (TSDR 45)), Mike Tanner,
Director, Venues, of Winsport, Canada Olympic Park ((November 6, 2014 Response to Office
Action (TSDR 48)), Patrick Founier, Manager of Lake Louise Ski Resort in Alberta, Canada
(November 6, 2014 Response to Office Action (TSDR 54)), Steven Wall, Vehicle Maintenance
Manager of Fernie Alpine Resort in British Columbia, Canada (November 6, 2014 Response
to Office Action (TSDR 63)) because they are Canadian citizens working at Canadian ski
resorts. See Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612-
13 (TTAB 1991) (“Information concerning applicant’s foreign activities, including foreign
trademark applications and/or registrations, is not relevant to the issues in an opposition
proceeding.”); Oland’s Breweries [1971] Ltd. v. Miller Brewing Co., 189 USPQ481, 489 n.7
(TTAB 1975) (use or promotion of a mark confined to a foreign country, including Canada, is
immaterial to ownership and registration in U.S.), aff’d, Miller Brewing Co. v. Oland’s
Breweries, 548F.2d 349, 192 USPQ 266 (CCPA 1976); Johnson & Johnson v. Salve S.A., 183
USPQ 375, 376 (TTAB 1974) (foreign use of mark creates no rights in mark in U.S.).

– 19 –
Serial No. 86175623

represents snow that has been freshly groomed by
[Applicant’s] vehicle.

Subsequently, Applicant submitted three more declarations from people in the

snow grooming industry, each of whom testified to the following (emphasis added):31

Having worked in this industry for X years, I have become
familiar with the different design impressions that are
created in the freshly groomed snow by the various
manufacturers’ snow grooming vehicles.

I have seen the distinctive snow design impression that is
created by [Applicant’s] snow grooming vehicles on a
multitude of occasions, and when I see that distinctive
design impression in freshly groomed snow, I associate the
character and quality of the snow grooming vehicles with
[Applicant].

None of the declarations included or referenced a depiction of the applied-for

mark. Instead, the nine declarants vaguely described the purportedly distinctive

design of the subject matter sought to be registered six different ways. While they

refer to a design produced by Applicant’s products, the persuasiveness of the

declarations is seriously undermined because they lack clarity as to the specific

features they recognize. None of the declarants described the purportedly distinctive

design as including a repeating pattern, let alone a repeating pattern of ten

equidistant groves, offset on both sides by a thicker groove having a substantially flat

bottom, although two declarants referred to a corduroy design. The declarations have

little, if any, probative value because it is not clear that the declarants recognize the

subject matter sought to be registered as the design impression found in the snow.

31 May 20, 2016 Response to Office Action (TSDR 9-14).

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Serial No. 86175623

Further, in its November 6, 2014 Response to an Office Action, Applicant contends

that its customers often feature images of the subject matter sought to be registered

and “tout the distinctive quality of Applicant’s Trade Dress as it pertains to

Applicant’s BR530 model snow groomer creating Applicant’s distinctive pattern of

groomed snow.”32 Contrary to Applicant’s contention, the purportedly representative

ski resort webpage refers to the resort’s commitment to quality grooming by providing

“a smooth carpet of corduroy.” The resort does not refer to a repeating pattern of ten

substantially equidistant grooves that each have a substantially pointed bottom, the

ten substantially equidistant grooves being offset on both sides by a thicker groove

having a substantially flat bottom. The resort does not differentiate between

Applicant’s corduroy pattern and any other pattern of groomed snow. The resort only

refers to its “crisp corduroy.” Applicant has failed to show that its customers perceive

the subject matter sought to be registered as a source indicator.33

B. Length, degree, and exclusivity of use.

Applicant has been using its applied-for mark, via tracks left in the snow by its

vehicles, for at least 20 years.34 Nevertheless, it is well settled that an applicant’s use

of a term or design for a long time does not necessarily establish that the subject

matter sought to be registered has acquired distinctiveness as a mark. See, e.g.,

32 November 6, 2014 Response to an Office Action (TSDR 14-15).
33 In Applicant’s brochure for the BR 350, Applicant advertises that its “Posiflex Tiller
provides perfect grooming and that the vehicle has extraordinary climbing ability, it operates
in the toughest conditions, the cabin is designed for operator comfort, and it is designed for
performance and economy. Id. at TSDR 40-43. Applicant fails to refer to its purportedly
distinctive corduroy pattern.
34 Jean-Claude Perreault Decl. ¶12, November 6, 2014 Response to Office Action (TSDR 22).

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Serial No. 86175623

Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 176 (TTAB

2013), aff’d mem., 565 Fed. Appx. 900 (Fed. Cir. 2014) (“Given the highly descriptive

nature of registrant’s mark, continuous use alone since 1992 would not be sufficient

to establish acquired distinctiveness.”); Target Brands, Inc. v. Hughes, 85 USPQ2d

1676, 1681 (TTAB 2007) (“Applicant’s continuous use since 1992 is a fairly lengthy

period, but not necessarily conclusive or persuasive on the Section 2(f) showing.”); In

re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984) (use of mark for

sixteen years deemed “a substantial period but not necessarily conclusive or

persuasive on the Section 2(f) showing”); In re The Interstate Folding Box Co., 167

USPQ 241, 245 (TTAB 1970).

Jean-Claude Perreault, Applicant’s Vice President of Sales, testified that over his

10 years of experience working for Applicant, he is unaware of any other company

whose vehicles leave the snow track sought to be registered (i.e., a repeating pattern

of ten substantially equidistant grooves that each have a substantially pointed

bottom, the ten substantially equidistant grooves being offset on both sides by a

thicker groove having a substantially flat bottom).35 However, Applicant

acknowledged that “the Examining Attorney identified in her own internet searches

other patterns of groomed snow, including those with equally sized and spaced

‘corduroy’ designs by Applicant’s competitors, including at least the following:”36

35 Jean-Claude Perreault Decl. ¶20, November 6, 2014 Response to Office Action (TSDR 24).
36 November 6, 2014 Response to Office Action (TSDR 17).

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Serial No. 86175623

Due to the similarity of these corduroy snow pattern to the pattern that Applicant

seeks to register, we find that the applied-for mark is not substantially exclusive to

Applicant’s snow grooming vehicles.

C. Amount and manner of advertising.

In the last five years, Applicant has spent in excess of $500,000 in advertising its

snow grooming vehicles and equipment that leave the track design sought to be

registered,37 primarily at trade shows and conferences.38 However, Applicant also

advertises in trade journals and periodicals “that cater to the snow grooming

industry.”39 Applicant submitted five representative advertisements which

purportedly “prominently feature[] the Subject Mark.”40 However, we disagree that

most of the advertisements prominently feature Applicant’s mark, and the

advertisement reproduced below is the only advertisement that appears to feature

the “Subject Mark.”

37 Jean-Claude Perreault Decl. ¶13, November 6, 2014 Response to Office Action (TSDR 22).
38Jean-Claude Perreault Decl. ¶¶14 and 15, November 6, 2014 Response to Office Action
(TSDR 23).
39 Jean-Claude Perreault Decl. ¶17, November 6, 2014 Response to Office Action (TSDR 23).
40Jean-Claude Perreault Decl. ¶17 and Exhibit B, November 6, 2014 Response to Office
Action (TSDR 23-24 and 27-31).

– 23 –
Serial No. 86175623

While the advertisement displays the subject matter sought to be registered, the

advertisement focuses on how Applicant’s snow grooming machine is

environmentally friendly and cost efficient; it does not draw the consumers’ attention

to the snow track design.

An advertisement for Applicant’s SNOWLICIOUS “professional kitchen installed

on a Prinoth snow groomer” features groomed corduroy. An excerpt from the

advertisement is reproduced below.41

41 May 20, 2016 Request for Reconsideration (TSDR 143).

– 24 –
Serial No. 86175623

The advertisement features an alternative corduroy pattern; not the subject matter

sought to be registered. We infer from this advertisement that little differentiates the

subject matter sought to be registered from other corduroy patterns.

Finally, Applicant has submitted promotional videos used at trade shows that

“depict demonstrations of Applicant’s goods – – and which highlight the distinctive

snow design impression that is created by Applicant’s vehicles.”42 These videos

promote the subject matter sought to be registered.

D. Amount of sales and number of customers.

Over the last five years, Applicant has sold in excess of $365,000,000 worth of

snow grooming vehicles in the United States that leave the track design sought to be

registered.43 Applicant’s snow grooming vehicles are used in hundreds of ski resorts

in the United States.44 This evidence demonstrates that Applicant’s snow grooming

vehicles are commercially successful products but does not provide any information

as to whether consumers perceive the snow track produced by the machines as a

trademark. See Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196

USPQ 289, 291 (Fed. Cir. 1977) (“[sales volume] is not necessarily indicative of

recognition of the mark by purchasers as an indication of source of the goods”).

E. Intentional copying.

There is no evidence of copying.

42 Id. at TSDR 5.
43 Jean-Claude Perreault Decl. ¶13, November 6, 2014 Response to Office Action (TSDR 22).
44 Jean-Claude Perreault Decl. ¶10, November 6, 2014 Response to Office Action (TSDR 22).

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Serial No. 86175623

F. Unsolicited media coverage of the subject matter sought to be registered.

Applicant asserts that it has been recognized in various media reports and

journals which purportedly note that Applicant is an industry leader.45 Applicant

attached two articles to the Perreault declaration. The articles are barely legible, they

do not refer to Applicant as “an industry leader,” and they do not depict the subject

matter sought to be registered in any significant way.

In its May 20, 2016 Request for Reconsideration, Applicant submitted “a

compilation of third party articles and media between Applicant’s Mark and its

applied for goods.”46 None of the articles refer to the subject matter sought to be

registered. Although, in “Mountain groomers offer a Beastly ride,” Idaho Mountain

Express (December 26, 2012) (archives.metexpress.com), the article quotes Jack

Seagraves, a snowcat operator, as follows:

“We’re laying down some corduroy now,” he said proudly as
he put the Beast in forward gear and began to creep up
Lower River Run at about 5 mph. …

“The goal is to get the corduroy to line up straight when
you’re connecting your passes,” he said.47

Since we have established that the “corduroy” pattern is neither exclusive to

Applicant’s machinery, nor is it the exact description of Applicant’s applied-for mark,

45Jean-Claude Perreault Decl. ¶19 and Exhibit C, November 6, 2014 Response to Office
Action (TSDR 23 and 32-38).
46TSDR 1-2 and 16-32. We do not consider the article “The Pride and the Groom” in The
Jasper Local (thejasperlocal.com) because it is a publication located in Jasper, Alberta,
Canada.
47 May 20, 2016 Request for Reconsideration (TSDR 27).

– 26 –
Serial No. 86175623

we do not find this article to be availing as to the subject matter sought to be

registered.

“Prinoth: Moving Mountains,” an article by Snow Grooming Magazine

(snowgroomingmag.com) (August 22, 2014) provides the following information about

slope quality:

Additionally, the Posiflex tiller delivers unrivaled slope
quality by combining key-features such as: Motor Speed
Sensor that allows the operator to respond immediately to
an overload, also resulting in better fuel efficiency; Active
Posiflex Pressure Tuning that allows control over the
pressure exerted on the ground so that any snow condition
is managed properly. As featured in SKI Magazine, the
proven efficiency of Prinoth’s Posiflex Tiller Technology
has been behind vehicles grooming nine out of ten of the
best groomed resorts last season.48

There is no mention of the subject matter sought to be registered.

Finally, the photographs of the subject matter sought to be registered that appear

in the articles are not so closely associated with the products that customers and

potential customers will necessarily associate the track pattern with Applicant.

Contrary to Applicant’s assertions, these materials do not constitute evidence that

the subject matter sought to be registered has garnered unsolicited publicity in the

media (i.e. from newspapers, magazines) and renown in the snow grooming field.

G. Conclusion as to lack of acquired distinctiveness

While Applicant’s snow grooming vehicles have been making snow tracks at

hundreds of ski resorts in the United States over the past twenty years, Applicant

48 Id. at TSDR 23.

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Serial No. 86175623

has failed to prove that consumers perceive the applied-for snow tracks as a

trademark for Applicant’s snow grooming vehicles. With the exception of the videos

submitted with Applicant’s May 20, 2016 Request for Reconsideration, Applicant’s

advertising, marketing and promotional materials fail to focus on, or point to, the

applied-for snow track as a trademark (e.g., there is no look for advertising focusing

a reader’s attention to the snow track). Rather, they depict the snow track as the

result of using Applicant’s goods. Especially in light of the fact that the subject matter

sought to be registered is so similar to the tracks made by competitors’ snow grooming

vehicles, consumers are not likely to perceive the snow track to be anything other

than a non-source-identifying design the grooming vehicle leaves behind.

Applicant has failed to prove that the subject matter sought to be registered has

acquired distinctiveness.49

IV. Whether the subject matter sought to be registered is a functional feature of
the goods?

Trade dress is considered functional, and cannot serve as a trademark, if a feature

of that trade dress is “essential to the use or purpose of the article or if it affects the

cost or quality of the article.” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165,

34 USPQ2d 1161, 1163-64 (1995) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456

U.S. 844, 850, n.10, 214 USPQ 1, 4 n.10 (1982)). A determination of functionality

49Because the record fails to show that the subject matter sought to be registered has
acquired distinctiveness, we have no need to further discuss whether the subject matter
sought to be registered functions as a trademark.

– 28 –
Serial No. 86175623

normally involves consideration of one or more of the following factors, commonly

known as the “Morton-Norwich factors”:

(1) the existence of a utility patent that discloses the utilitarian advantages of

the design sought to be registered;

(2) advertising by the applicant that touts the utilitarian advantages of the

design;

(3) facts pertaining to the availability of alternative designs; and

(4) facts pertaining to whether the design results from a comparatively simple

or inexpensive method of manufacture.

In re Becton, Dickinson & Co., 675 F.3d 1368, 1374-75, 102 USPQ2d 1372, 1377 (Fed.

Cir. 2012); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-1341, 213 USPQ

9, 15-16 (C.C.P.A. 1982).

A. Whether there are any utility patents that disclose the utilitarian advantages
of the design sought to be registered?

Applicant explains that the tiller and mats that create the subject matter sought

to be registered when the snow is groomed are not the subject of any utility patents,

and neither is the subject matter sought to be registered.50 Conceding that there are

some patents that display the subject matter sought to be registered or describe the

mat assembly in conjunction with other claims, Applicant contends that the claims of

those patents are not directed to the subject matter sought to be registered.51

50Applicant’s Supplemental Brief, p. 8 (19 TTABVUE 9); Applicant’s July 12, 2017 Response
to Office Action (TSDR 5).
51 Id.

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Serial No. 86175623

That is, while Applicant’s Mark may be used as an example
of a snow pattern illustrated in the drawings of certain U.S.
patents and U.S. patent applications (which is completely
logical considering how, over time this example snow
pattern became the distinctive trade dress of Applicant’s
snow grooming machines), the claims of these patents
(which describe the metes and bounds of the invention of
such patents) are not directed to the implement that makes
the subject mark in snow or sand. Consequently, the mat
assembly / grooming method of Applicant’s grooming snow
and sand grooming machines are irrelevant to the
functionality analysis here and are not germane to this
case.52

Applicant concludes that while the tiller and mats of the grooming vehicles function

to groom snow evenly, the subject matter sought to be registered is not itself

“functional” because it provides no functionality other than what any other pattern

of groomed snow would provide.53

The Examining Attorney disagrees and, in her January 17, 2018 and August 15,

2018 Office Actions, she submitted numerous patents and patent applications

purportedly to show “features of snow grooming machines and vehicles.”54 In her

brief, the Examining Attorney referred only to three patents and patent

applications.55

52 Id. at pp. 8-9 (19 TTABVUE 9-10).
53 Applicant’s July 12, 2017 Response to an Office Action (TSDR 7-8).
54 Examining Attorney’s Brief (21 TTABVUE 8).
55Although the Examining Attorney submitted numerous patents and patent applications,
as noted in the body of the decision, she only referred to three; presumably the most
probative. “The Board frowns equally upon an applicant or examining attorney submitting
hundreds of pages of evidence in the hope that as the Board wades through it we will find
something that is probative. When they believe that it is necessary to submit a significant
amount of such material, it is incumbent on the applicant and the examining attorney to
specify in their briefs those pieces of evidence that they believe are most persuasive of their
respective positions, so that the Board can consider that evidence in particular.” In re Max
– 30 –
Serial No. 86175623

1. Patent No. 6810609 for a “Snow Groomer Having an Improved Variable
Geometry Tiller Assembly.”56

This patent states that: “This invention relates to tillers for use with snow

grooming vehicles for ski slopes.” The “Background” discussion further states:57

Snow tillers are frequently equipped with a drum formed
as a rotating blade and a finishing member that trails
behind the rotator. … The finishing member is usually a
flexible mat or mats having grooved finishing elements
provided at the rear of the tiller assembly to provide final
snow surface conditioning by smoothing or, alternatively,
to provide a “corduroy” texture to the surface of the tilled
snow.58

The invention, in part, allows the tiller to be operated in a floating or releasable

locked mode to prevent damage to the tiller and return it to the preselected

orientation to provide a consistent snow profile in differing snow conditions on the

same hill on the same day and it provides the means to create a variety of snow

profiles.59 Although the patent mentions the creation of a “corduroy” surface, it does

not demonstrate or discuss whether there is any utilitarian advantage to the creation

of such corduroy pattern in general, much less Applicant’s design in particular by a

snow grooming machine. Thus, the invention does not refer the utilitarian

advantages of the snow track design sought to be registered.

Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010). Although, we considered all the
evidence of record, in this decision we refer only to the three patents the Examining Attorney
found most probative.
56 August 15, 2018 Office Action (TSDR 2-16).
57 Id. at Field of Invention, Column 1 (TSDR 13).
58 Id. at Background of the Invention, Column 1 (TSDR 13).
59Id. at Summary of Invention, Column 2 (TSDR 13) and Detailed Description of
Embodiments of the Invention, Column 9 (TSDR 17).

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Serial No. 86175623

2. Patent Application Publication No. 2016/0318423 for a “Snow Groomer or
Other Tracked Vehicle and Systems Therefor.”60

“The invention relates to tracked vehicles such as snow groomers and other off-

road vehicles.”61 The invention refers to the components of the snow groomer or other

tracked vehicle, including a mat for smoothing snow processed by a tiller.62 Each mat

may generate a portion of the ridges and grooves forming the snow track while other

portions of the ridges and grooves may be formed by the interconnection of the mats.63

The mat assembly that is towed over the snow may be assembled in such a way as to

leave a pattern “comprising a plurality of ridges and a plurality of grooves between

the ridges.”64 “This creates a distinctive and pleasing appearance to the snow being

groomed.”65 This implies that the snow track pattern of ridges and grooves is

aesthetically pleasing as opposed to having utilitarian advantages. We note that the

patent application does not refer to the utilitarian advantages of the snow track

design sought to be registered.

60 January 17, 2018 Office Action (TSDR 257-314).
61 Id. at Field [0002] (TSDR 294).
Id. at Summary of Invention [0008-0046] (TSDR 294-298) and at Detailed Description of
62

Embodiments [0209-0221] (TSDR 311-313).
63 Id. at Detailed Description of Embodiments [0220] (TSDR 312).
64 Id. at Detailed Description of Embodiments [0218] (TSDR 312).
65 Id. The utilitarian advantage of the invention is that it may produce an aesthetically
pleasing snow track pattern, not that the snow track pattern itself has a utilitarian
advantage.

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Serial No. 86175623

3. Patent Application Publication No. 2011/0083347 for a “Towed Piste
Processing Implement.”66

This invention relates, in part, to a snow grooming vehicle with a “finisher

arrangement” that forms a “profile pattern” in the snow during towing operations.67

The invention creates a pattern very similar, if not identical, to the claimed

design. See Figs. 4, 5, and 6 in the patent application.68 The patent states that an

“object of the invention” is to make “it easy to see where the piste surface has already

been processed” and “permits good utilization of the processed piste surface,”69

including a “processed piste surface which is provided with the profile pattern that

can be easily traversed.”70 The profile pattern described in the patent application is

“channel-shaped.”71 The patent application teaches that the utilitarian advantage of

the invention is that it can groom snow and that the groomed surface is easily

identifiable and traversable. There is nothing in particular about this patent that

refers to a specific utilitarian advantage to the snow pattern sought to be registered.

See Goodyear Tire and Rubber Co. v. Interco Tire Co., 49 USPQ2d 1705, 1716 (TTAB

1998) (subject matter sought to be registered has not been shown to be a superior

design because, in part, the design is not any more functional than any other tire

66 January 17, 2018 Office Action (TSDR 315-320). Patent 8443529 B2 issued May 21, 2013.
67 Id. at Towed Piste Processing Element [0001] (TSDR 319).
68 Id. at TSDR 316-317.
69Id. at Towed Piste Processing Element [0004] (TSDR 319) (makes it easy to see the
processed surface and permits good utilization of the processed surface).
70Id. at Towed Piste Processing Element [0010] (TSDR 319) (“the processed piste surface
which is provided with the profile pattern can be easily traversed over by skiers and
snowboarders.”).
71 Id. at Towed Piste Processing Element [0003] (TSDR 319).

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Serial No. 86175623

tread design). In sum, there are no utility patents that disclose the utilitarian

advantages of the specific pattern sought to be registered.

B. Whether Applicant’s advertising touts the utilitarian advantages of the
design?

Applicant’s advertising does not tout the utilitarian advantages of the subject

matter sought to be registered. For example, while Applicant’s website promotes the

ability of its vehicles to provide “perfectly prepared snow cover and guarantees the

perfect slope” and “the best corduroy in the world,” Applicant does not refer to the

subject matter sought to be registered, let alone the advantages that the Applicant’s

snow pattern offers.72 Terms such as “perfectly prepared snow,” “the perfect slope,”

and “the best corduroy in the world” are advertising puffery, not specific statements

of utilitarian advantages of the applied-for mark, itself. Compare TMEP

§ 1202.02(a)(v)(B) (“where the advertising statements clearly emphasize specific

utilitarian features of the design claimed as a mark, the Board will reject such

assertions of ‘puffing.’”) (citing In re Gibson Guitar Corp., 61 USPQ2d 1948, 1951

(TTAB 2001) (“the clear import of the advertisement is that the shape of the guitar is

what produces a better musical sound.”); Goodyear Tire and Rubber Co. v. Interco

Tire Corp., 49 USPQ2d at 1716-17 (specific statements of functional superiority may

not be dismissed as mere puffery); In re Bio-Medicus Inc., 31 USPQ2d 1254, 1260

(TTAB 1993) (applicant touts the utilitarian advantages of its product configuration

72January 17, 2018 Office Action (TSDR 750-754). Although the website attached to the
Office Action does not display the URL, the Examining Attorney provided it in the Office
Action (pinroth.com/en/snow-groomers/products/additional-devices/detail/476/posiflex-tiller-
33/) (TSDR 24).

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Serial No. 86175623

which demonstrates its superior design); In re Witco Corp., 14 USPQ2d 1557, 1559-

60 (TTAB 1989) (specific statements touting functional advantages of the

configuration sought to be registered may not be dismissed as puffery). Further, as

noted above, with the exception of one advertisement, the advertising attached to the

Jean-Claude Perrault declaration does not display the subject matter sought to be

registered in a discernable way and none of the advertisements refer to the

advantages that the Applicant’s design offers.73

Finally, the Examining Attorney contends that Applicant’s videos promote the fact

that Applicant’s “signature” “create[s] relief and increase[s] the visibility of the

skiers.”74 However, as noted in the discussion of utility patents, the advantage of

grooming a slope and creating a corduroy design is to improve visibility and the

ability to traverse the slope. Accordingly, Applicant is doing nothing more than

touting the advantage of a corduroy snow pattern. There is nothing in Applicant’s

advertising to explain why the specific subject matter sought to be registered is better

than any other corduroy pattern.

C. Whether there are alternative designs?

Applicant concedes that there are few alternative designs.75 Those that do exist

include corduroy that does not incorporate ten equidistant grooves in a repeating

pattern discussed above. In this regard, Applicant, asserts that a repeating pattern

73Jean-Claude Perrault declaration attached to the November 6, 2014 Office Action (TSDR
27-31).
74 Examining Attorney’s Brief (21 TTABVUE 12).
Applicant’s Supplemental Brief, p. 11 (13 TTABVUE 14); Applicant’s Reply Brief, p. 6-7 (22
75

TTABVUE 8-9).

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Serial No. 86175623

of, inter alia, five substantially equidistant grooves would be an alternative design

for snow or sand.76 Thus, according to Applicant’s logic, any corduroy pattern

comprising anything other than ten equidistant repeating grooves is a potential

alternative design.

Alternative groomed snow patterns are reproduced below:

77

78

76 Applicant’s July 17, 2017 Response to an Office Action (TSDR 8).
77 January 17, 2018 Office Action (TSDR 624).
78 Id. at TSDR 637.

– 36 –
Serial No. 86175623

79

80

79 Id. at TSDR 696.
80 November 6, 2014 Response to Office Action (TSDR 17).

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Serial No. 86175623

81

. Because there are only a few alternative designs and because, based on the visual

depictions in the record, the different corduroy designs are difficult to distinguish

from one another, this factor weighs in favor of finding that the subject matter sought

to be registered is functional.

D. Whether the design results from a comparatively simple or inexpensive
method of manufacture?

Applicant asserts that it is unable to attribute a specific cost to the subject matter

sought to be registered because the cost of its vehicles is dependent on the features

that a customer orders, while the subject matter sought to be registered is a

consistent result of the use of its vehicles.82 However, Applicant contends that its mat

assembly which creates the subject matter sought to be registered is a plurality of

81 Id.
82Applicant’s Supplemental Brief, pp. 11-12 (13 TTABVUE 14-15); Applicant’s Supplemental
Brief, pp. 6-7 (19 TTABVUE 7-8). We note that this is attorney argument which is not
supported by any evidence in the record.

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Serial No. 86175623

mats which may be more expensive to make because multiple mats may cost more to

assemble than one large mat.83

Applicant states that a mat assembly comprising a
plurality of mat section is neither a comparatively simple
or inexpensive method of manufacture in relation to
alternative mat assembly designs. In fact, it may actually
be a more expensive method of manufacture in that, for
example, multiple mats may cost more to assemble/join
together than one large mat.84

The Examining Attorney argues that “to the extent that it would be more

expensive or complicated to manufacture the mat assembly without the gap [the

space between the plurality of mats], the product design results from a simpler or less

expensive method of manufacture.”85 Despite Applicant’s assertion that it may be

more expensive to manufacture grooming vehicles with multiple mats to produce the

subject matter sought to be registered, the Examining Attorney points out that a

simpler or less expensive method of manufacturing is not, in and of itself, dispositive

of whether a mark is functional. See In re Rolf Dietrich, 91 USPQ2d 1622, 1637 (TTAB

2009) (“Nevertheless, even if applicant’s wheels with this design are more costly to

produce, and while a lower manufacturing cost may be indicative of the functionality

of a product feature, a higher cost does not detract from the functionality of that

feature.”) (citing TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58

USPQ2d 1001, 1006 (2001)).

83 Applicant’s Reply Brief, p. 7 (22 TTABVUE 9).
84 Applicant’s July 12, 2017 Response to an Office Action (TSDR 6-7).
85 Examining Attorney’s Brief (21 TTABVUE 15).

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There is no evidence that the design sought to be registered results from a

comparatively simple or inexpensive method of manufacture that gives Applicant a

competitive advantage.

E. Summary of the Morton-Norwich factors.

The evidence shows that groomed snow is easier to see and easier to traverse.

There is no evidence that snow that is groomed in the pattern of the subject matter

sought to be registered offers any benefit other than what any other pattern of

groomed snow offers. Accordingly, we find that the evidence of record is insufficient

to prove that the subject matter sought to be registered is functional.

Decision: The refusal to register the subject matter sought to registered on the

ground that the specimens do not show use of the applied-for mark is affirmed.

The refusal to register the subject matter sought to be registered on the ground

that it has not acquired distinctiveness is affirmed.

The refusal to register the subject matter sought to be registered on the ground

that it is functional is reversed.

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