1202.16 Model or Grade Designations
Model designations appear in connection with a wide variety of products, such as retaining rings, hand tools, and pens, to identify a specific style, type, or design of a product within a particular line of goods. See In re Petersen Mfg. Co., 229 USPQ 466 (TTAB 1986) (noting that the following alphanumeric designations served as model numbers on the specimens, but finding the evidence of acquired distinctiveness under §2(f) sufficient for registration: 18R for a C clamp; 6LN for a locking plier with elongated jaw; 9LN for a locking plier with elongated jaw; 7CR for a locking plier with curved jaw; 6R for a C clamp; 20R for a chain clamp; 10CR for a locking plier with curved jaw; 7R for a locking plier with straight jaw; 10WR for a locking plier with wire cutter; 7WR for a locking plier with wire cutter; 5WR for a locking plier with wire cutter; RR for a locking specialty tool, namely, a pinch-off tool; 10R for a locking plier with straight jaw; 9R for a locking specialty tool, namely, a welding clamp; 8R for locking specialty tools, namely, metal clamping tools; and 11R for a C clamp); In re Waldes Kohinoor, Inc., 124 USPQ 471 (TTAB 1960) (holding that 5131, 5000, and 5100 for retaining rings functioned only to differentiate one type of the applicant’s retaining rings from its other types and did not function as a trademark to distinguish the applicant’s goods from those of others); Ex parte Esterbrook Pen Co., 109 USPQ 368 (Comm’r Pats. 1956) (holding that 2668 for pen points did not function as a mark because it was merely a style number for a particular pen point used to differentiate one pen point from other points in the product line).
Model designations also are commonly used to distinguish between different types of automobile parts within a single product line. See In re Dana Corp., 12 USPQ2d 1748 (TTAB 1989) (holding that the following alphanumeric designations used in connection with vehicle parts functioned only as part numbers and not as trademarks: 5-469X; 5-438X; 5-510X; 5-515X; 5-407X; 5-279X; and 5-281X). In addition, model designations may serve the purpose of providing users with product compatibility information between goods and parts, accessories, and/or fittings for the goods. See In re Otis Eng’g Corp., 218 USPQ 959, 960 (TTAB 1983) (noting that the fact that various pieces of applicant’s "X" equipment for oil wells are compatible with each other tends to support the position that "X" is a style or model designation, but finding that the specimens, advertising brochures, and affidavits when considered together demonstrate that "X" also functions as a trademark). They also facilitate ordering and tracking of goods. Id. (noting that the use of the same designation on various goods that work together would enable purchasers to order compatible equipment).
Grade designations are used to denote that a product has a certain level of quality within a defined range. They may also indicate that a product has a certain classification, size, weight, type, degree, or mode of manufacturing. Mere grade designations are often used by competitors within an industry, or by the general public, and do not indicate origin from a single source because their principal function is to provide information about the product to a consumer. See 1 Anne Gilson LaLonde, Gilson on Trademarks §2.03(4)(a) (Matthew Bender 2011). (Note: the use of a grade designation in the context of a certification mark is not discussed herein.)
For example, the fuel industry utilizes grade designations in the form of particular numbers to delineate different octane ratings of fuel. See In re Union Oil Co., 33 USPQ 43 (C.C.P.A. 1937) (affirming the decision of the Commissioner of Patents refusing to register 76 for gasoline because the term functioned merely as a grade or quality mark to indicate either the octane rating or the Baume gravity rating and did not indicate origin). Grade designations have also been used to signify the composition or strength of various types of steel. See Jones & Laughlin Steel Corp. v. Armco Steel Corp., 139 USPQ 132 (TTAB 1963) (holding that the terms 17-4PH and 17-7PH originally served only as a grade designation for stainless steel based on the composition of chromium and nickel, but finding the evidence of secondary meaning sufficient for registration). The United States Department of Agriculture (USDA) assigns grades in connection with butter to delineate between different quality levels based on flavor, aroma, and texture. See Agric. Mktg. Serv., U.S. Dep’t of Agric., How to Buy Butter (Feb. 1995), http://www.ams.usda.gov/AMSv1.0/getfile?dDocName=STELDEV3002487. The USDA also assigns grades to other food products, such as eggs, meat, and poultry. See Agric. Mktg. Serv., U.S. Dep’t of Agric., Egg-Grading Manual (July 2000), http://www.ams.usda.gov/AMSv1.0/getfile?dDocName=STELDEV3004502; Inspection & Grading of Meat and Poultry: What Are the Differences?, U.S. Dep’t of Agric. (Aug. 22, 2008), http://www.fsis.usda.gov/Fact_Sheets/Inspection_&_Grading/index.asp.
1202.16(a) Examination of Marks with Model and Grade Designations
A trademark comprises a word, name, symbol, device, or combination thereof that is used to identify the goods of an applicant, to distinguish them from the goods of others, and to indicate the source of the goods. Trademark Act §§1-2, 45, 15 U.S.C §§1051 -1052, 1127; see TMEP §1202. Similar to a trademark, a model or grade designation is generally comprised of numbers or letters, or a combination thereof. However, the manner of use, and resulting commercial impression imparted by the matter, differentiate a mere model or grade designation from that of a trademark (or a dual-purpose mark that is both a model or grade designation and a trademark). While letters, numbers, or alphanumeric matter may serve as both a trademark and a model or grade designation, matter used merely as a model or grade designation serves only to differentiate between different products within a product line or delineate levels of quality, and does not indicate source. See Eastman Kodak Co. v. Bell & Howell Document Mgmt. Prods. Co., 994 F.2d 1569, 1576, 26 USPQ2d 1912, 1919 (Fed. Cir. 1993); Neapco Inc. v. Dana Corp., 12 USPQ2d 1746, 1748 (TTAB 1989); 1 Anne Gilson LaLonde, Gilson on Trademarks §2.03(4)(a) (Matthew Bender 2011); J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §11.36 (4th ed. 2011).
Even though a model or grade designation seems "arbitrary" in the sense that the combination of letters, numbers, or both does not immediately describe the goods, it often does not function as a trademark. See Gilson LaLonde, supra, §2.03(4)(a). Where the model or grade designation fails to distinguish the applicant’s goods from those of others or to identify the applicant as the source, the proposed mark must be refused registration on the Principal Register under §§1, 2, and 45 for failure to function as a trademark. 15 U.S.C. §§1051 -1052, 1127. However, if the mark both identifies a model or grade designation and serves as a trademark, no failure-to-function refusal should issue. See Ex parte Eastman Kodak Co., 55 USPQ 361, 362 (Comm’r Pats. 1942) ("The fundamental question is not whether or not the mark as used by applicant serves to indicate grade or quality but rather whether it is or is not so used that purchasers and the public will recognize the mark as indicating the source of origin of the goods.").
In addition, the examining attorney must also consider whether the proposed mark is merely descriptive, or even generic. Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1). Grade designations often become synonymous with (and thus merely descriptive of) a classification, value, size, weight, type, degree, mode of manufacturing, or level of quality of the goods. And, more infrequently, model designations can be used in a merely descriptive manner. See Textron, Inc. v. Omark Indus., Inc., 208 USPQ 524, 527-28 (TTAB 1980) (holding that model numbers which have been used in the same manner by competitors for indicating the size of the saw chains as to pitch and gauge are merely descriptive and not registrable).
1202.16(b) Identifying Model and Grade Designations in Marks
1202.16(b)(i) Model Designations
Determining whether a proposed mark is used merely as a model designation is a question of fact. See In re Petersen Mfg. Co., 229 USPQ 466 (TTAB 1986) (finding that purchasers recognized the designations as trademarks in addition to functioning as model designations based on the ex parte record presented). The factual finding focuses on whether the proposed mark, as used on the specimen (and any other evidence of record), also identifies the applicant as the source of the goods or distinguishes the applicant’s goods from the goods of others. Extrinsic evidence may also aid in determining whether the proposed mark functions as a source indicator. The following three considerations comprise guidelines for determining whether a proposed mark, as used on a specimen, serves merely as a model designation or whether it also functions as a source indicator.
1202.16(b)(i)(A) Stylization of Display
The stylization of display refers to the visual presentation or "look" of a proposed mark on the specimen, and takes into consideration such elements as font style and color as well as design features. In some cases, the stylization creates an impression separate and apart from that of a model designation, thereby making the designation more likely to be perceived as a trademark. In analyzing stylization of display, the examining attorney should consider whether the font or stylization of lettering in the proposed mark is unusual or relatively ordinary, and should also consider the degree of stylization. Where the stylization is minimal, the proposed mark may be more likely to be perceived as merely a model designation.
1202.16(b)(i)(B) Size of Proposed Mark
Size refers to the relative dimension of the proposed mark. If the proposed mark appears large in relation to any other matter, it may immediately catch the eye and make the proposed mark the focal point on the specimen. Therefore, the proposed mark would be less likely to be perceived as a mere model designation. If the proposed mark is smaller than the other matter surrounding it, however, consumers would be more likely to perceive it as merely a model designation.
1202.16(b)(i)(C) Physical Location
The physical location refers to the actual position of the proposed mark on a specimen. Although there is no prescribed location on a specimen where the proposed mark must be placed to qualify as a trademark, the physical location of matter on a specimen suggests how the mark would be perceived by consumers and whether such matter serves as a trademark or is merely a model designation. The display of a proposed mark in a prominent location on the goods themselves, or on the packaging or label, is a factor that may contribute to finding that it serves as a trademark. A proposed mark that appears in close proximity to generic or informational matter (such as the common or class name for the goods, net weight, bar code, or country of origin) is less likely to be perceived as a mark because it will be viewed together with the generic or informational matter as merely conveying information about the model of a particular product line.
1202.16(b)(ii) Grade Designations
A grade designation often indicates a standard that is common to producers or manufacturers within an industry. Determining whether a proposed mark is used merely as a grade designation is a question of fact. See In re Flintkote Co., 132 USPQ 295, 296 (TTAB 1961) (citing Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 111 USPQ 105 (C.C.P.A. 1956)); J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §11.36 (4th ed. 2011). Thus, the examining attorney must supplement consideration of the application content (i.e., the drawing, the description of the mark, the identification of goods or services, and the specimen, if any), with independent research of the applicant’s and competitors’ websites, the Internet, and databases such as LexisNexis® to determine how the designation is used in the industry. Such research will assist in determining whether the proposed mark is used by others to convey a specific characteristic of the goods (such as value, size, type, degree, or level of quality) and, as such, has a publicly recognized meaning. For example, if the evidence shows that A, B, C, and D, or 1, 2, 3, and 4, are commonly used in an industry to represent a hierarchy of quality, a mark consisting of such a letter or number likely would not indicate source in any one producer or manufacturer. See Shaw Stocking Co. v. Mack, 12 F. 707, 711 (C.C.N.D.N.Y. 1882) ("It is very clear that no manufacturer would have the right exclusively to appropriate the figures 1, 2, 3, and 4, or the letters A, B, C, and D, to distinguish the first, second, third and fourth quality of his goods, respectively. Why? Because the general signification and common use of these letters and figures are such, that no man is permitted to assign a personal and private meaning to that which has by long usage and universal acceptation acquired a public and generic meaning."); 1 Anne Gilson LaLonde, Gilson on Trademarks §2.03(4)(a) (Matthew Bender 2011).
Where extrinsic evidence shows that matter in the proposed mark is used by competitors or members of the public to convey the same type of designation of quality, the resulting commercial impression is merely that of a grade designation with no source-identifying capability. The examining attorney should also analyze the specimen using the same considerations for model designations (i.e., stylization of display on the specimen, size of matter on the specimen, physical location on the specimen) to bolster a refusal based on a failure to function as a mark. A lack of extrinsic evidence of usage of the proposed mark as a grade designation does not necessarily foreclose a refusal, where the nature of applicant’s use and the same considerations for model designations (i.e., stylization of display on the specimen, size of matter on the specimen, physical location on the specimen) indicate a grade designation.
1202.16(c) Procedures for Handling Marks with Model and Grade Designations
1202.16(c)(i) Evidentiary Considerations when Issuing Model or Grade Designation Refusals
1202.16(c)(i)(A) Model Designations
To support a refusal to register a model designation for failure to function as a mark, the examining attorney must use the applicant’s specimen, along with any other relevant evidence in the application, such as the identification of goods and mark description. If available, the examining attorney should also provide additional evidence that shows that the proposed mark would be perceived merely as a model designation, such as consumers referring to the applicant’s proposed mark as a model or part number when ordering the goods. Evidence that other manufacturers use similar numbering systems to identify model numbers for their goods may be submitted to show that consumers are familiar with the use of alphanumeric designations as model numbers and are consequently less likely to perceive the applicant’s use of the mark as source indicating.
1202.16(c)(i)(B) Grade Designations
A refusal or requirement (such as a disclaimer requirement) on the basis that a mark comprises or includes a grade designation must be supported by relevant evidence. Where extrinsic evidence is available to show that a proposed grade designation is used by competitors within an industry and/or members of the public to convey the same meaning, the examining attorney must attach the evidence to the Office action and explain its relevance to the refusal. For example, evidence demonstrating that other manufacturers use the same or similar grading systems to identify quality levels of their own goods may be submitted with an explanation that such evidence shows that the proposed mark does not indicate origin from a single source. If no extrinsic evidence is available, the examining attorney must use the applicant’s specimen, along with any other relevant evidence of record, to support a grade designation refusal for failure to function as a mark. In such situations, the examining attorney must also issue a request for relevant information (such as fact sheets, instruction manuals, and/or advertisements depicting the applicant’s use of the proposed mark, and evidence of any industry use of this designation or similar designations) pursuant to 37 C.F.R. §2.61(b).
1202.16(c)(ii) Entire Mark Consists of Model or Grade Designation in §1(a) Applications
If the evidence shows that a proposed mark consists entirely of a mere model or grade designation, the examining attorney must refuse registration on the Principal Register under §§1, 2, and 45 because the proposed mark does not function as a trademark to identify and distinguish the applicant’s goods from those of others and indicate the source of the goods. 15 U.S.C. §§1051 -1052, 1127.
For such refusals, where appropriate, the examining attorney should advise the applicant of the various response options: (1) submitting a substitute specimen that shows the proposed mark being used as a trademark for the identified goods; (2) claiming acquired distinctiveness under §2(f) with actual evidence of distinctiveness that establishes recognition of the proposed mark as a trademark for the goods; or (3) amending the application to seek registration on the Supplemental Register. See Trademark Act §23, 15 U.S.C. §1091; In re Petersen Mfg. Co., 229 USPQ 466, 468 (TTAB 1986) (finding letter-number combinations registrable under §2(f) for locking hand tools and stating, "there is no question that such model designations can, through use and promotion, be perceived as marks indicating origin in addition to functioning as model designations."); 37 C.F.R. §2.59(a); TMEP §904.05.
For marks comprising grade designations, the examining attorney must determine whether to make an additional refusal on the grounds that the mark is also merely descriptive of the goods. Trademark Act §2(e)(1), 15 U.S.C. §§1052(e)(1). Grade designations can often become synonymous with (and thus merely descriptive of) a classification, value, size, weight, type, degree, mode of manufacturing, or level of quality of the goods. Grade designations that are also the generic name of the goods are not eligible for registration on the Principal Register under §2(f) or on the Supplemental Register because they are not capable of indicating the source of the goods and must remain available to identify the relevant characteristic possessed by goods meeting such criteria. In such cases, if the applicant responds by amending the application to seek registration on the Supplemental Register, the examining attorney must issue a generic refusal under §23. In the rare situation where the applicant is the sole user of a grade designation and where the mark appears capable, the applicant should be provided with the same response options identified above for applicable model designations.
1202.16(c)(iii) Composite Mark with Model or Grade Designation in §1(a) Applications
Composite marks may comprise matter that is used as a model or grade designation in addition to other wording and/or design features. Such marks must be evaluated as a whole to determine whether they are registrable.
1202.16(c)(iii)(A) Model or Grade Designations with Arbitrary and/or Suggestive Matter
Terms used as model or grade designations that are combined with arbitrary and/or suggestive matter are generally not refused registration under Trademark Act §§1, 2, and 45, if the additional matter imparts trademark significance to the mark as a whole. Generally, no disclaimer of a portion that is a model designation need be required (unless there is evidence of descriptive or generic usage) because the composite mark creates a single unitary commercial impression and there is no need to preserve the availability of the applicant’s model designation for others. However, the portion of a mark that is a grade designation must generally be disclaimed in cases where there is evidence of descriptive or generic use, to clarify the availability of the grade designation for use by others in the industry. Standard USPTO disclaimer practices would apply in such cases, including considerations of unitariness. See TMEP §§1213-1213.08(d).
1202.16(c)(iii)(B) Model or Grade Designations with Descriptive, Generic, and/or Informational Matter
Terms used merely as model or grade designations that are combined with descriptive, generic, and/or informational matter are generally refused registration under Trademark Act §§1, 2, and 45 because this type of additional matter does not diminish the mark’s model or grade designation significance. In most instances involving model designations, claims of acquired distinctiveness under §2(f) and amendments to the Supplemental Register may be permissible. Additionally, in rare cases where there is no evidence of generic usage for grade designations, claims of acquired distinctiveness under §2(f) and amendments to the Supplemental Register may be permissible. In such cases, the examiner must consider standard USPTO disclaimer practice to determine whether a disclaimer of the generic and/or informational matter may be necessary. See TMEP §§1213-1213.08(d).
1202.16(c)(iv) Drawing and Specimen Agreement Issues in §1(a) Applications
Occasionally, the specimen will show a possible model or grade designation that is not included on the drawing and thus, the mark on the drawing and specimen will appear to disagree. See TMEP §807.12(d). When it is unclear whether the additional matter is a model or grade designation, the examining attorney must refuse registration under §§1 and 45 on the ground that the specimen does not show the applied-for mark in use in commerce. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). If the matter is not part of the mark and is merely used as a model or grade designation, the applicant may respond to the refusal by submitting the following: (1) a statement that the matter is merely a model or grade designation and (2) evidence showing use of the proposed mark with other similar notations or evidence clearly showing that the matter is merely a model or grade designation. See 37 C.F.R. §2.61(b); In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989) (holding the mark TINEL-LOCK on the drawing to agree with the wording TR06AI-TINEL-LOCK-RING appearing on the specimen where the notation TR06AI was merely a part or stock number, as supported by a submitted brochure that explained that each letter and number in the notation represented a specific type, size, and feature of the part, and the term RING was generic for the goods); In re Sansui Elec. Co., 194 USPQ 202, 203 (TTAB 1977) (holding the marks "QSE" and "QSD" on the drawing to agree with the wording "QSE-4" and "QSD-4" appearing on the specimens, where the notation "4" was merely a model number and the additional specimens showed use of the mark with various changing model numbers used to designate successive generations of equipment). In the alternative, the applicant may provide a substitute specimen showing the proposed mark depicted on the drawing. See 37 C.F.R. §2.59(a); TMEP §904.05. In cases where the record clearly indicates that the notation on the specimen is a model or grade designation, no specimen refusal should issue. See In re Raychem Corp., 12 USPQ2d at 1400.
1202.16(c)(v) Model or Grade Designation in §1(b), §44, or §66(a) Applications
1202.16(c)(v)(A) Model Designations
Generally, the failure-to-function refusal is a specimen-based refusal. TMEP §1202. In §1(b), 44, or 66(a) applications, marks that appear to be merely model designations (either wholly comprising the mark or used with descriptive/generic/informational matter) may be refused registration for failure to function as a mark only where the drawing and mark description are dispositive of the mark’s failure to function, or the record clearly and unequivocally indicates that the entire mark identifies only a model designation. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (affirming a failure-to-function ornamentation refusal in a §66(a) application despite the lack of a specimen since the mark was decorative or ornamental on its face as depicted on the drawing page and described in the application). For those rare cases where a refusal issues in a §66(a) application, the examining attorney must not offer an amendment to the Supplemental Register. Applications filed under §66(a) are not eligible for registration on the Supplemental Register. 37 C.F.R. §§2.47(c), 2.75(c); TMEP §816.01; see also 15 U.S.C. §1141h(a)(4). Otherwise, because of the lack of specimen of use, a failure-to-function refusal is inappropriate.
If upon initial examination of a §1(b) application, an examining attorney must issue an Office action for other reasons, and the proposed mark appears to be used or intended to be used merely as a model designation, the examining attorney should include a model designation failure-to-function advisory as a courtesy to the applicant. See TMEP §1102.01. Regardless of whether an examining attorney issues an initial advisory before the applicant files an allegation of use, the examining attorney must issue a refusal based on failure to function as a mark after the allegation of use is filed, if supported by the evidence of record. Id.
1202.16(c)(v)(B) Grade Designations
The examining attorney must refuse registration based on a failure to function as a mark for a mark merely comprising a grade designation (or a grade designation with descriptive/generic/informational matter) in a §1(b), 44, or 66(a) application where the evidence shows the mark is used in the industry or by the public in such a way as to clearly and unequivocally show use merely to identify a specific quality or feature of the goods. For more information about evidence, see TMEP §1202.16(c)(i)(B). If the examining attorney can find no extrinsic evidence of such use, the procedures outlined for model designations in TMEP §1202.16(c)(v)(A) must be followed.