November 07 2016
In another chapter chronicling the relationship between functionality and trademarks, the Trademark Trial and Appeal Board (TTAB) has found that an application claiming a motion mark depicting a specific product configuration was functional, thereby making the mark unregistrable.
Loggerhead Tools, LLC filed an application to register a mark for "hand tools, namely, gripping tools in the nature of wrenches and wire crimpers for sale through mass merchandisers to retail consumers". The mark was as follows:
In its application Loggerhead described its mark as "a motion mark depicting the product configuration of a hand tool in which six rectangular-shaped jaw-like elements of the circular head of a hand tool radially move in and out". The motion was described as "symmetrical" and "a mechanical iris-type motion". The examiner refused registration of the mark under Section 2(e)(5) of the Trademark Act, on the grounds that the mark was functional.
On appeal the TTAB agreed with the examiner and affirmed the refusal to register the mark.
The TTAB initially noted that under the Supreme Court's decision in TrafFix Devices Inc v Marketing Displays Inc,(1) "a product feature is functional…if 'it is essential to the use or purpose of the article or if it affects the cost or quality of the article'". A functional feature is ineligible for trademark registration; that is the domain of patent law.
The TTAB then turned to the four-factor test put forward by the Federal Circuit in In re Morton-Norwich Products, Inc,(2) noting that – although Morton-Norwich came before TrafFix and other Supreme Court cases dealing with trademark functionality – "the Federal Circuit has since determined that the four factors continue to be availing in a functionality analysis". The factors are:
In regards to the first Morton-Norwich factor, Loggerhead owned a US utility patent for an "Adjustable Gripping Tool". The patent disclosed "six gripping elements" and the background of the patent discussed the tool's "symmetrical" movement as espoused by Loggerhead's trademark application. The TTAB found that such a patent was "strong evidence" of functionality. Although Loggerhead argued that the motion disclosed in its trademark application was not claimed in the utility patent, the TTAB pointed out that the Supreme Court in TrafFix found that evidence of functionality need not be specifically in the claims; statements in the specification can be equally compelling.
To counter the issue raised by the utility patent, Loggerhead argued that the design of its wrench was actually covered by US Patent D618,974 – a design patent for a "Hydrant Tool" – thus emphasising non-functionality of the design. The TTAB was not persuaded. Relying on Federal Circuit precedent from In re Becton, Dickinson & Co(3) the TTAB found that "the fact that a device is or was the subject of a design patent does not, without more, bestow upon said device the aura of distinctiveness or recognition as a trademark". Moreover, the TTAB noted that the asserted design patent featured only five gripping elements, not the six shown in both the utility patent and the applied-for mark. Further still, the design patent did not discuss the motion of the wrench, unlike the trademark application and the utility patent. Thus the design patent was insufficient evidence to overcome the conclusion warranted by the utility patent that the applied-for design was functional.
Turning to the second Morton-Norwich factor, the examiner had drawn attention to the various instances in Loggerhead's submitted advertising where the utilitarian aspects of its wrench were publicised. Several examples were given, including a statement to the effect that "[t]hese tools combine the functionality of an adjustable wrench and pliers to automatically size and grip fasteners". The TTAB agreed with the examiner that the advertising materials submitted by Loggerhead strongly supported a finding of functionality.
Although the TTAB noted that the findings for the first two factors were sufficient to find functionality of Loggerhead's design, it considered the third and fourth Morton-Norwich factors in the interest of completeness. In analysing availability of alternative designs, Loggerhead's experts had testified to the existence of several alternatives to an adjustable tool which had "very different aesthetic appearances". The expert declarations also referenced various examples of adjustable wrenches. While Loggerhead referred to this evidence as "overwhelming", the TTAB found that neither the expert testimony nor the proffered examples referenced the "iris-type motion" set forth in Loggerhead's application, instead discussing a "general motion of adjustability". Between this evidence and Loggerhead's own assertion that its design was among the best, the TTAB was unpersuaded that viable alternative designs were available.
The fourth and final Morton-Norwich factor – how the claimed feature affects the cost or quality of the article – once again weighed for a finding of functionality. The TTAB considered testimony of Loggerhead's president stating that the design of the wrench was "not the most cost-effective combination" available, but noted that it had already found the design to affect the quality and was likewise unpersuaded that the design was not otherwise cost effective.
Finally, the TTAB considered Loggerhead's other arguments, including that the design had acquired distinctiveness and thus functioned as a trademark capable of registration on the Principal Register. While the TTAB recognised that Loggerhead was claiming acquired distinctiveness, it noted that, under the Lanham Act, refusal for functionality excludes the mark from a Section 2(f) acquired distinctiveness claim.
While the range of things that can (and often do) function as trademarks – including words, images and sounds – is vast, it is nonetheless reined in by doctrines such as functionality. When preparing and filing applications for non-traditional trademarks, trademark practitioners should ensure that the appropriate questions relating to issues such as functionality have been asked and answered.
For further information on this topic please contact Timothy J Kelly or Kathryn E Easterling by telephone (+1 212 218 2100) or email (firstname.lastname@example.org or email@example.com). The Fitzpatrick, Cella, Harper & Scinto website can be accessed at www.fitzpatrickcella.com.
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Timothy J Kelly