Substantive Examination of Applications
When an applicant applies to register a product's design, product packaging, color, or other trade dress for goods or services, the examining attorney must consider two issues: (1) functionality; and (2) distinctiveness.
In general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.
Before October 30, 1998, there was no specific statutory reference to functionality as a ground for refusal, and functionality refusals were thus issued as failure-to-function refusals under §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127.
Effective October 30, 1998, the Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, §201, 112 Stat. 3064, 3069, amended the Trademark Act to expressly prohibit registration on either the Principal or Supplemental Register of functional matter:
These amendments codified case law and the longstanding Office practice of refusing registration of functional matter.
The functionality doctrine, which prohibits registration of functional product features, is intended to encourage legitimate competition by maintaining the proper balance between trademark law and patent law. As the Supreme Court explained, in Qualitex Co. v. Jacobson Products Co., Inc., (1995):
The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. §§154, 173, after which competitors are free to use the innovation. If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).
In other words, the functionality doctrine ensures that protection for utilitarian product features be properly sought through a limited-duration utility patent, and not through the potentially unlimited protection of a trademark registration. Upon expiration of a utility patent, the invention covered by the patent enters the public domain, and the functional features disclosed in the patent may then be copied by others – thus encouraging advances in product design and manufacture. In TrafFix Devices, Inc. v. Marketing Displays, Inc., the Supreme Court reiterated this rationale, also noting that the functionality doctrine is not affected by evidence of acquired distinctiveness.
Thus, even where the evidence establishes that consumers have come to associate a functional product feature with a single source, trademark protection will not be granted in light of the public policy reasons stated. Id.
Functional matter cannot be protected as trade dress or a trademark. 15 U.S.C. §§1052(e)(5) and (f), 1091(c), 1064(3), and 1115(b). A feature is functional as a matter of law if it is "essential to the use or purpose of the product or if it affects the cost or quality of the product."
While some courts had developed a definition of functionality that focused solely on "competitive need" – thus finding a particular product feature functional only if competitors needed to copy that design in order to compete effectively – the Supreme Court held that this "was incorrect as a comprehensive definition" of functionality. TrafFix, 532 U.S. at 33, 58 USPQ2d at 1006. The Court emphasized that where a product feature meets the traditional functionality definition – that is, it is essential to the use or purpose of the product or affects its cost or quality – then the feature is functional, regardless of the availability to competitors of other alternatives. Id.; see also Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1277, 61 USPQ2d 1422, 1428 (Fed. Cir. 2002) ("Rather, we conclude that the [TrafFix] Court merely noted that once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available" (footnote omitted).)
However, since the preservation of competition is an important policy underlying the functionality doctrine, competitive need, although not determinative, remains a significant consideration in functionality determinations.
The determination that a proposed mark is functional constitutes, for public policy reasons, an absolute bar to registration on either the Principal Register or the Supplemental Register, regardless of evidence showing that the proposed mark has acquired distinctiveness.
SeeTMEP §§1202.02(a)(v) et seq. regarding evidentiary considerations pertaining to functionality refusals.
Prior to 2002, the Office used the terms "de facto" and "de jure" in assessing whether "subject matter" (usually a product feature or the configuration of the goods) presented for registration was functional. This distinction originated with the Court of Customs and Patent Appeals' Morton-Norwich decision, which was discussed by the Federal Circuit in Valu Engineering, Inc. v. Rexnord Corp. (Fed. Cir. 2002):
Our decisions distinguish de facto functional features, which may be entitled to trademark protection, from de jure functional features, which are not. 'In essence, de facto functional means that the design of a product has a function, i.e., a bottle of any design holds fluid.' De facto functionality does not necessarily defeat registrability. Morton-Norwich, 671 F.2d [1332,] at 1337, 213 USPQ  at 13 [(C.C.P.A. 1982)] (A design that is de facto functional, i.e., 'functional' in the lay sense ... may be legally recognized as an indication of source.'). De jure functionality means that the product has a particular shape 'because it works better in this shape.'
However, in three Supreme Court decisions involving functionality – Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d 1161 (1995), Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000), and TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001) – the Court did not use the "de facto/de jure" distinction. Nor were these terms used when the Trademark Act was amended to expressly prohibit registration of matter that is "functional." Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, §201, 112 Stat. 3064, 3069 (1998). Accordingly, in general, examining attorneys no longer make this distinction in Office actions that refuse registration based on functionality.
De facto functionality is not a ground for refusal.
The examining attorney must establish a prima facie case that the design sought to be registered is functional. The burden then shifts to the applicant to present sufficient evidence to rebut the examining attorney's prima facie case of functionality.
The functionality determination is a question of fact, and depends on the totality of the evidence presented in each particular case. While there is no set amount of evidence that an examining attorney must present to establish a prima facie case of functionality, it is clear that there must be evidentiary support for the refusal in the record.
If the design sought to be registered as a mark is the subject of a utility patent that discloses the feature's utilitarian advantages, then the applicant bears an especially "heavy burden of overcoming the strong evidentiary inference of functionality." See TMEP §1202.02(a)(v)(A).
Trade dress is functional if it is essential to the use or purpose of a product or if it affects the cost or quality of the product.
A determination of functionality 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.
Since relevant technical information is often more readily available to an applicant, the applicant will often be the source of most of the evidence relied upon by the examining attorney in establishing a prima facie case of functionality in an ex parte case. Therefore, when there is reason to believe that the proposed mark may be functional, in the first Office action, the examining attorney should require the applicant to provide information necessary to permit an informed determination concerning the registrability of the proposed mark, pursuant to 37 C.F.R. §2.61(b). See In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (registration properly refused where applicant failed to comply with examining attorney's request for copies of patent applications and other patent information). Accordingly, the examining attorney should: (1) ask the applicant to provide copies of any patent(s) or any pending or abandoned patent application(s); (2) ask the applicant to provide any available advertising, promotional or explanatory material concerning the goods/services, particularly any material specifically related to the features embodied in the proposed mark; (3) inquire of the applicant whether alternative designs are available; and (4) inquire whether the feature makes the product easier or cheaper to manufacture. The examining attorney should also examine the specimen(s) for information relevant to the Morton-Norwich factors, and conduct independent research to find advertising or promotional material.
It is not necessary to consider all the Morton-Norwich factors in every case. The Supreme Court held that "[w]here the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature." Moreover, there is no requirement that all four of the Morton-Norwich factors weigh in favor of functionality to support a refusal. See Valu Engineering, 278 F.3d at 1276, 61 USPQ2d at 1427 ("once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs"); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (orange flavor found functional based on applicant's touting of the utilitarian advantages of the flavor and the lack of evidence of acceptable alternatives, even though the mark was not the subject of a patent or patent application and there was no evidence that the flavor affected the cost of the product); In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) (where there was no utility patent, and no evidence that applicant's guitar configuration resulted from a simpler or cheaper method of manufacture, these factors did not weigh in Board's decision).
Evidence that the proposed mark is the subject of a utility patent that discloses the utilitarian advantages of the configuration at issue can be sufficient in itself to support a functionality refusal. TrafFix, 532 U.S. at 33, 58 USPQ2d at 1007 ("There is no need, furthermore, to engage ... in speculation about other design possibilities); In re Howard Leight Industries, LLC, 80 USPQ2d 1507, 1515 (TTAB 2006) ("[W]e find that applicant's expired utility patent, which specifically discloses and claims the utilitarian advantages of applicant's earplug configuration and which clearly shows that the shape at issue 'affects the . . . quality of the device,' is a sufficient basis in itself for finding that the configuration is functional, given the strong weight to be accorded such patent evidence under TrafFix.") See TMEP §1202.02(a)(v)(A) for further discussion of utility patents.
It is important that the functionality inquiry focus on the utility of the feature or combination of features claimed as protectable trade dress. Generally, dissecting the design into its individual features and analyzing the utility of each separate feature does not establish that the overall design is functional. However, it is sometimes helpful to analyze the design from the standpoint of its various features. See Elmer v. ICC Fabricating Inc., 67 F.3d 1571, 1579-80, 36 USPQ2d 1417, 1422-23 (Fed. Cir. 1995) (rejecting the argument that the combination of individually functional features in the configuration resulted in an overall nonfunctional product design); In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 2 (Fed. Cir. 1984) (affirming the functionality determination, where the Board had initially considered the six individual features of the design, and then had concluded that the design as a whole was functional); In re Controls Corp. of America, 46 USPQ2d 1308, 1312 (TTAB 1998) (finding the entire configuration at issue functional because it consisted of several individual features, each of which was functional in nature).
Where the evidence shows that the overall design is functional, the inclusion of a few arbitrary or otherwise nonfunctional features in the design will not change the result.
Utility patents cover the invention or discovery of a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. 35 U.S.C. §101.
In TrafFix Devices, Inc. v. Marketing Displays, Inc. (2001), the Supreme Court resolved a circuit split regarding the proper weight to be afforded a utility patent in the functionality determination, stating:
A utility patent is strong evidence that the features claimed therein are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.
The Court in TrafFix went on to hold that where the evidence includes a utility patent that claims the product features at issue, it is unnecessary to consider evidence relating to the availability of alternative designs:
There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose. Here, the functionality of the spring design means that competitors need not explore whether other spring juxtapositions might be used. The dual-spring design is not an arbitrary flourish in the configuration of MDI's product; it is the reason the device works. Other designs need not be attempted.
Therefore, in those instances where the examining attorney is presented with facts similar to those in TrafFix (i.e., where there is a utility patent establishing the utilitarian nature of the product design at issue), the examining attorney may properly issue a final functionality refusal based primarily on the utility patent. Where functionality appears to be an issue, in the first Office action, the examining attorney should ask the applicant to provide copies of any patent(s) or any pending or abandoned patent application(s). 37 C.F.R. §2.61(b). See Valu Engineering, 278 F.3d at 1279, 61 USPQ2d at 1429 (Fed. Cir. 2002) ("We agree with the Board that an abandoned patent application should be considered under the first Morton-Norwich factor, because an applied-for utility patent that never issued has evidentiary significance for the statements and claims made in the patent application concerning the utilitarian advantages, just as an issued patent has evidentiary significance.").
It is not necessary that the utility patent be owned by the applicant; a third-party utility patent is also relevant to the functionality determination, if the patent claims the features in the product design sought to be registered. Therefore, the examining attorney may also search the Office's patent records to see if there are utility patents owned by third parties that disclose the functional advantages of the product design that the applicant seeks to register.
It is important to read the patent to determine whether the patent actually claims the features presented in the proposed mark. If it does not, or if the features are referenced in the patent, but only as arbitrary or incidental features, then the probative value of the patent as evidence of functionality is substantially diminished or negated entirely. TrafFix, 532 U.S. at 34, 58 USPQ2d at 1007 (where a manufacturer seeks to protect arbitrary, incidental or ornamental aspects or features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, functionality will not be established if the manufacturer can prove that those aspects do not serve a purpose within the terms of utility patent); see also Black & Decker Inc. v. Hoover Service Ctr., 886 F.2d 1285, 12 USPQ2d 1250 (Fed. Cir. 1989); In re Zippo Mfg. Co., 50 USPQ2d 1852 (TTAB 1999); In re Weber-Stephen Products Co., 3 USPQ2d 1659 (TTAB 1987). Where a utility patent claims more than what is sought to be registered, this fact does not establish the non-functionality of the product design, if the patent shows that the part claimed as a trademark is an essential or integral part of the invention and has utilitarian advantages.
The examining attorney should consider both the numbered claims and the disclosure in the written description, drawings, and abstract of the patent. In Leight, the Board found functionality based on both the claims and the disclosure. The Board rejected the applicant's argument that the examining attorney erred in looking to the claims made in applicant's patent, noting that the Supreme Court in TrafFix repeatedly referred to a patent's claims as evidence of functionality.
Statements regarding utilitarian advantages of the design made in the course of the prosecution of the patent application can also be very strong evidence of functionality. TrafFix, 532 U.S. at 32, 58 USPQ2d at 1006 ("These statements [regarding specific functional advantages of the product design] made in the patent applications and in the course of procuring the patents demonstrate the functionality of the design. MDI does not assert that any of these representations are mistaken or inaccurate, and this is further strong evidence of the functionality of the dual-spring design.").
The fact that the proposed mark is not the subject of a utility patent does not establish that the product feature is nonfunctional.
Design patents cover the invention of a new, original, and ornamental design for an article of manufacture. 35 U.S.C. §171. A design patent is a factor that weighs against a finding of functionality, because design patents by definition protect only ornamental and nonfunctional features. However, ownership of a design patent does not in itself establish that a product feature is nonfunctional, and can be outweighed by other evidence supporting the functionality determination.
The applicant's own advertising touting the utilitarian aspects of its design is often strong evidence supporting a functionality refusal.
An applicant will often assert that statements in its promotional materials touting the utilitarian advantages of the product feature are mere "puffery" and thus entitled to little weight in the functionality analysis. However, where the advertising statements clearly emphasize specific utilitarian features of the design claimed as a mark, the Board will reject such assertions of "puffing."
In Gibson Guitar, the Board found the design of a guitar body to be functional, noting that applicant's literature clearly indicated that the shape of applicant's guitar produced a better musical sound. Applicant's advertisements stated that "[t]his unique body shape creates a sound which is much more balanced and less 'muddy' than other ordinary dreadnought acoustics."
Where functionality appears to be an issue, in the first Office action, the examining attorney should ask the applicant to provide any available advertising, promotional or explanatory material concerning the goods/services, particularly any material specifically related to the features embodied in the proposed mark. 37 C.F.R. §2.61(b). The examining attorney should also examine the specimen(s), and check to see if the applicant has a website on which the product is advertised or described.
The examining attorney may also check trade publications and computer databases to determine whether others have written about the applicant's design and its functional features or characteristics. In Gibson Guitar, the record included an advertisement obtained from the website of a competitor whose guitar appeared to be identical in shape to applicant's configuration, touting the acoustical advantages of the shape of the guitar.
An applicant attempting to rebut a prima facie case of functionality will often submit evidence of alternative designs to demonstrate that there is no "competitive need" in the industry for the applicant's particular product design. See TMEP §1202.02(a)(iii)(A). In order to be probative, the alternative design evidence must pertain to the same category of goods as the applicant's goods.
However, in TrafFix Devices, Inc. v. Marketing Displays, Inc., the Supreme Court clearly indicated that if the record shows that a design is essential to the use or purpose of a product, or if it affects the cost or quality of the product, it is unnecessary to consider whether there is a competitive need for the product feature. The Court explained:
[W]e have said "in general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Expanding upon the meaning of this phrase, we have observed that a functional feature is one the "exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage." The Court of Appeals in the instant case seemed to interpret this language to mean that a necessary test for functionality is "whether the particular product configuration is a competitive necessity." . . . This was incorrect as a comprehensive definition. As explained in Qualitex and Inwood, a feature is also functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device . . . Where the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature.
* * *
There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose. Here, the functionality of the spring design means that competitors need not explore whether other spring juxtapositions might be used. The dual-spring design is not an arbitrary flourish in the configuration of MDI's product; it is the reason the device works. Other designs need not be attempted (emphasis added).
Nonetheless, since the preservation of competition is an important policy underlying the functionality doctrine, competitive need generally remains an important factor in a functionality determination. See Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1277, 61 USPQ2d 1422, 1428 (Fed. Cir. 2002) ("[I]n determining 'functionality,' the Board must assess the effect registration of a mark would have on competition.").
Accordingly, examining attorneys should request information about alternative designs in the initial Office action, pursuant to 37 C.F.R. §2.61(b), i.e., inquire whether alternative designs are available for the feature embodied in the proposed mark, and whether the alternatives are more costly to produce.
Where the evidence indicates that the applicant's configuration is the best or one of a few superior designs available, then this evidence will strongly support a finding of functionality. See, e.g., In re N.V. Organon, 79 USPQ2d 1639, 1645 (TTAB 2006) ("The question is not whether there are alternative flavors that would perform the same basic function, but whether these flavors work 'equally well.'"); In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) (Board found that the applicant had not shown that there were alternative guitar shapes that could produce the same sound as applicant's configuration, noting that the record contained an advertisement obtained from the website of a competitor whose guitar appeared to be identical in shape to applicant's configuration, stating that the shape of the guitar produces a better sound).
A configuration of a product or its packaging that embodies a superior design feature and provides a competitive advantage to the user is functional. In N.V. Organon, the Board found that by masking the unpleasant taste of the medicinal ingredients in pharmaceuticals, "flavor performs a utilitarian function that cannot be monopolized without hindering competition in the pharmaceutical trade. To allow registration of 'an orange flavor' as a trademark would give applicant potentially perpetual protection for this flavor, resulting in hindrance of competition."
Functionality may be established by a single competitively significant application in the recited identification of goods, even if there is no anticompetitive effect in other areas of use, since competitors in that single area could be adversely affected. Valu Engineering, 278 F.3d at 1278, 61 USPQ2d at 1428 ("[I]f the Board identifies any competitively significant single use in the recited identification of goods for which the mark as a whole is functional, the Board should deny registration.").
A product feature is functional if it is essential to the use or purpose of the product or if it affects the cost or quality of the product. Therefore, a showing that a design results from a comparatively simple or inexpensive method of manufacture will support a finding that the design is functional.
In many cases, there is little or no evidence pertaining to this factor. However, the examining attorney should still ask the applicant for information as to whether the subject design makes the product simpler or less costly to manufacture, since evidence on this issue weighs strongly in favor of a finding of functionality. 37 C.F.R. §2.61(b). Statements pertaining to the cost or ease of manufacture may sometimes also be found in informational or advertising materials. See M-5 Steel Mfg., Inc. v. O'Hagin's Inc., 61 USPQ2d 1086, 1097 (TTAB 2001) (statements in promotional material that applicant's design results in reduced installation costs found to be evidence of the functionality of applicant's configurations of metal ventilating ducts and vents for tile or concrete roofs).
While evidence showing that the product feature results from a comparatively simple or inexpensive method of manufacture supports a finding that the design is functional, the opposite is not necessarily the case. That is, assertions by the applicant that its design is more expensive or more difficult to make, or that the design does not affect the cost, will not establish that the configuration is not functional.
"Aesthetic functionality" refers to situations where the feature may not provide a truly utilitarian advantage in terms of product performance, but provides other competitive advantages. For example, in Brunswick Corp. v. British Seagull Ltd., the Federal Circuit affirmed the Board's determination that the color black for outboard motors was functional because, while it had no utilitarian effect on the mechanical working of the engines, it nevertheless provided other identifiable competitive advantages – i.e., ease of coordination with a variety of boat colors and reduction in the apparent size of the engines.
The concept of "aesthetic functionality" (as opposed to "utilitarian functionality") has for many years been the subject of much confusion. While the Court of Customs and Patent Appeals (the predecessor to the Court of Appeals for the Federal Circuit) appeared to reject the doctrine of aesthetic functionality in In re DC Comics, Inc., the Supreme Court later referred to aesthetic functionality as a valid legal concept in TrafFix Devices, Inc. v. Marketing Displays, Inc. The confusion regarding aesthetic functionality stems in part from widespread misuse of the term "aesthetic functionality" in cases involving ornamentation issues, with some courts having mistakenly expanded the category of "functional" marks to include matter that is solely ornamental, essentially on the theory that such matter serves an "aesthetic function" or "ornamentation function." It is this incorrect use of the term "aesthetic functionality" in connection with ornamentation cases that was rejected by the Court of Customs and Patent Appeals. See In re DC Comics, Inc., 689 F.2d 1042, 215 USPQ 394, 397, 399-401 (C.C.P.A. 1982) (majority opinion and Rich, J., concurring) (holding, in a case involving features of toy dolls, that the Board had improperly "intermingled the concepts of utilitarian functionality and what has been termed 'aesthetic functionality;'" and rejecting the concept of aesthetic functionality where it is used as a substitute for "the more traditional source identification principles of trademark law," such as the ornamentation and functionality doctrines).
Where the issue presented is whether the proposed mark is ornamental in nature, it is improper to refer to "aesthetic functionality," because the doctrine of "functionality" is inapplicable to such cases. The proper refusal is that the matter is ornamental and thus does not function as a mark under §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127. See TMEP §§1202.03 et seq. regarding ornamentation.
The Supreme Court's use of the term "aesthetic functionality" in the TrafFix case appears limited to cases where the issue is one of actual functionality, but where the nature of the proposed mark makes it difficult to evaluate the functionality issue from a purely utilitarian standpoint. This is the case with color marks and product features that enhance the attractiveness of the product. The color or feature does not normally give the product a truly utilitarian advantage (in terms of making the product actually perform better), but may still be found to be functional because it provides other real and significant competitive advantages and thus should remain in the public domain. See Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-1164 (1995) (stating that a product color might be considered functional if its exclusive use "would put competitors at a significant non-reputation-related disadvantage," even where the color was not functional in the utilitarian sense).
In M-5 Steel Mfg., Inc. v. O'Hagin's Inc., the Board considered the proper use of the aesthetic functionality doctrine in connection with product designs for metal ventilating ducts and vents for tile or concrete roofs:
This case seems to involve elements of both utilitarian and aesthetic functionality. Here, for example, there is evidence of utility in applicant's patent application, as well as statements touting the superiority of applicant's design in applicant's promotional literature, and statements that applicant's design results in reduced costs of installation. On the other hand, there is no question that applicant's roof designs which match the appearance of surrounding roof tiles are more pleasing in appearance because the venting tiles in each case are unobtrusive.
Citing extensively from the TrafFix, Qualitex and Brunswick cases, the Board concluded that the product designs were functional for a combination of utilitarian and aesthetic reasons.
Note that this type of functionality determination – while employed in connection with a normally "aesthetic" feature such as color – is a proper use of the functionality doctrine, necessitating a §2(e)(5) refusal where the evidence establishes that a color or other matter at issue provides identifiable competitive advantages and thus should remain in the public domain. This is the opposite of an ornamentation refusal, where the matter at issue serves no identifiable purpose other than that of pure decoration.
Generally speaking, examining attorneys should exercise caution in the use of the term "aesthetic functionality," in light of the confusion that historically has surrounded this issue. In most situations, reference to aesthetic functionality will be unnecessary, since a determination that the matter sought to be registered is purely ornamental in nature will result in an ornamentation refusal under §§1, 2 and 45, and a determination that the matter sought to be registered is functional will result in a functionality refusal under §2(e)(5). Use of the term "aesthetic functionality" may be appropriate in limited circumstances where the proposed mark presents issues similar to those involved in the M-5 Steel and Brunswick cases – i.e., where the issue is one of true functionality under §2(e)(5), but where the nature of the mark makes the functionality determination turn on evidence of particular competitive advantages that are not necessarily categorized as "utilitarian" in nature. Any such use of the term "aesthetic functionality" should be closely tied to a discussion of specific competitive advantages resulting from use of the proposed mark at issue, so that it is clear that the refusal is properly based on the functionality doctrine and not on an incorrect use of "aesthetic functionality" to mean ornamentation.
See TMEP §§1202.05 and 1202.05(b) for additional discussion and case references regarding the functionality issue in connection with color marks.
Although rare in the context of service mark applications, examining attorneys are not foreclosed from refusing registration based on functionality. In Duramax Marine, LLC v. R.W. Fernstrum & Co., the Board held that a two-dimensional design of a marine heat exchanger (commonly known as a "keel cooler"), was not functional for "manufacture of marine heat exchangers to the order and specification of others." It found "a significant difference between an application to register trade dress in the nature of product design as a mark for the product itself ... and an application to register a two-dimensional drawing that may look very much like such a product, but is used on labels, catalogs, brochures, and in various other ways as a mark for services;" and stated that "[t]he inquiry regarding functionality may need to be decidedly different" in cases involving a service mark.
The record showed that the keel cooler depicted in the proposed mark was "identical, or nearly so" to the depiction of a keel cooler in applicant's expired patent; that opposer and at least one other party had been marketing keel coolers very similar to the proposed mark; and that the design sought to be registered appeared in applicant's catalog of pre-manufactured keel coolers. The Board framed the question at issue as "whether any manufacturer of the formerly patented item should be free to utilize, in advertising its goods for sale, a realistic depiction of the item," and stated that:
[W]e must balance against opposer's argument for the extension of existing case law on functionality [to] what is shown by the record to be long use of the keel cooler depiction by applicant in the manner of a logo. Further, opposer has not discussed whether, when custom manufacturing services are involved, we should still apply the TrafFix test for functionality (a three-dimensional product design is functional if it is "essential to the use or purpose of the product or if it affects the cost or quality of the product") to the product that results from purchasing the services, or whether the test should be adapted and focus on whether use of the two-dimensional design to be registered is essential to anyone who would provide the same service, or would, if unavailable, affect the cost or quality of the service.
The Board held that opposer had failed to justify an extension of existing law to cover the circumstances of this case, but stated that its decision "does not foreclose the extension of TrafFix to service marks if circumstances in a future case warrant such an extension."
The functionality doctrine has been applied to non-traditional proposed marks, such as color and flavor. See, e.g., Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532, 32 USPQ2d 1120, 1123 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995) (the color black for outboard motors deemed functional because it provided competitive advantages such as ease of coordination with a variety of boat colors and reduction in the apparent size of the engines); In re N.V. Organon, 79 USPQ2d 1639, 1645 (TTAB 2006) (the flavor orange deemed functional for pharmaceuticals, where the evidence showed that the flavor served to mask the otherwise unpleasant taste of the medicine flavor); see also Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-1164 (1995) (stating that a product color might be considered functional if its exclusive use "would put competitors at a significant non-reputation-related disadvantage," even where the color was not functional in the utilitarian sense); TMEP §1202.02(a)(vi) (regarding aesthetic functionality and color marks). Examining attorneys should also consider the functionality doctrine in relation to other types of non-traditional marks, such as scent and sound. For example, an application to register scent for an air freshener or an application to register the sound of a ring tone for downloadable ring tones must be refused as functional, as the proposed marks are essential to the use or purpose of the goods.
In Wal-Mart Stores, Inc. v Samara Brothers, Inc. (2000), the Supreme Court distinguished between two types of trade dress – product design and product packaging. If the trade dress falls within the category of "product design," it can never be inherently distinctive. Moreover, the Court held that in close cases in which it is difficult to determine whether the trade dress at issue is product packaging or product design, "courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning."
The statutory basis for refusal of registration on the Principal Register on the ground that the trade dress is nondistinctive is 15 U.S.C. §§1051, 1052, and 1127.
In addition to determining whether a proposed mark is functional, the examining attorney must refuse to register, on the Principal Register, any mark that consists of a product design, unless the applicant establishes that the mark has acquired distinctiveness under §2(f). Features of a product's design can never be inherently distinctive and are registrable only upon a showing of secondary meaning. The Supreme Court noted that product design almost invariably serves purposes other than source identification, and that consumers are aware that even the most unusual product design (such as a cocktail shaker shaped like a penguin) is intended not to identify the source, but to render the product itself more useful or appealing.
The examining attorney must refuse registration on the ground that the proposed mark is not inherently distinctive in all applications seeking registration of a product design, unless the applicant claims that the mark has acquired distinctiveness under §2(f) and includes sufficient evidence to show that the mark has acquired distinctiveness. The ground for refusal is that the proposed mark consists of a nondistinctive product design, and thus does not function as a mark under §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127. If the product design is not functional, the mark may be registered on the Supplemental Register, or, if the applicant shows that the product design has acquired distinctiveness, on the Principal Register under §2(f). See TMEP §1202.02(a) regarding functionality, TMEP §§815 and 816 et seq. regarding the Supplemental Register, and TMEP §§1212 et seq. regarding acquired distinctiveness.
In distinguishing between product packaging and product design trade dress, Wal-Mart instructs that in "close cases" courts should classify the trade dress as product design. In addition, product design can consist of design features incorporated into products and need not implicate the entire product. See Wal-Mart, 529 U.S. at 207, 213, 54 USPQ2d at 1069 (a "cocktail shaker shaped like a penguin" is product design, as is "a line of spring/summer one-piece seersucker outfits decorated with appliqués of hearts, flowers, fruits, and the like"); In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006) (trade dress for clothing consisting of a label with the words "FLASH DARE!" in a V-shaped background and cut-out areas located on each side of the label with the cut-out areas consisting of a hole in a garment and a flap attached to the garment with a closure device, held to be product design).
Applicants face a heavy burden in establishing the distinctiveness in an application to register trade dress. A mere statement of five years' use is generally not sufficient. In re Ennco Display Systems Inc., 56 USPQ2d 1279, 1284 (TTAB 2000).
For applications based on §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the examining attorney must issue the refusal even if the applicant has not filed an amendment to allege use or statement of use. See TMEP §1202.02(e) regarding intent-to-use applications.
Where a proposed mark consists of product packaging trade dress for goods or services, the examining attorney must determine whether the proposed mark is inherently distinctive. If it is not inherently distinctive, the examining attorney must refuse registration on the Principal Register on the ground that the proposed mark is nondistinctive trade dress under §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127, for trademark applications; or §§1, 2, 3 and 45 of the Act, 15 U.S.C. §§1051, 1052, 1053 and 1127, for service mark applications.
In Wal-Mart, the Supreme Court discussed the distinction between the trade dress at issue in Two Pesos, Inc. v. Taco Cabana, Inc. and the product design trade dress (designs for children's clothing) under consideration in Wal-Mart:
Two Pesos unquestionably establishes the legal principle that trade dress can be inherently distinctive, but it does not establish that product design trade dress can be. Two Pesos is inapposite to our holding here because the trade dress at issue, the decor of a restaurant, seems to us not to constitute product design. It was either product packaging – which, as we have discussed, normally is taken by the consumer to indicate origin – or else some tertium quid that is akin to product packaging.
Thus, unlike product design trade dress, trade dress constituting product packaging may be inherently distinctive for goods or services and registrable on the Principal Register without a showing of acquired distinctiveness. However, the examining attorney should be mindful of the Supreme Court's admonishment that where there are close cases, trade dress should be classified as product design for which secondary meaning is always required.
"[A] mark is inherently distinctive if '[its] intrinsic nature serves to identify a particular source.'" The test for determining inherent distinctiveness set forth in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd. (C.C.P.A. 1977), although not applicable to product design trade dress, is still viable in the examination of product packaging trade dress. The examining attorney should consider the following "Seabrook" factors – whether the proposed mark is:
(1) a "common" basic shape or design;
(2) unique or unusual in the field in which it is used;
(3) a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods;
(4) capable of creating a commercial impression distinct from the accompanying words.
Id. See also Yankee Candle Co. v. Bridgewater Candle Co., LLC, 259 F.3d 25, 59 USPQ2d 1720 (1st Cir. 2001) (trade dress for common elements of candle labels was nondistinctive product packaging for which insufficient evidence of acquired distinctiveness was shown; and evidence of acquired distinctiveness for trade dress comprised of label elements, candle holders, display systems, and candle containers was deemed insufficient); Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1205, 31 USPQ2d 1321, 1331 (Fed. Cir. 1994) (citing Seabrook); In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996), aff'd per curiam, 114 F.3d 1207 (Fed. Cir. 1997) ("[f]or the 'blue motif' of a retail store to be registrable on the Principal Register without resort to Section 2(f), the trade dress would have to be immediately recognizable as a distinctive way of identifying the source of the store services."); In re File, 48 USPQ2d 1363, 1367 (TTAB 1998) (novel tubular lights used in connection with bowling alley services would be perceived by customers as "simply a refinement of the commonplace decorative or ornamental lighting ... and would not be inherently regarded as a source indicator."); In re J. Kinderman & Sons Inc., 46 USPQ2d 1253, 1255 (TTAB 1998) ("... while the designs applicant seeks to register [the packaging for electric lights for Christmas trees] may be unique in the sense that we have no evidence that anyone else is using designs which are identical to them, they are nonetheless not inherently distinctive.").
Unlike §1(b) applications for product design trade dress, §1(b) applications for product packaging trade dress generally will not be refused registration on the ground of nondistinctiveness until the applicant has filed an amendment to allege use or a statement of use. See TMEP §1202.02(e).
Regardless of the bases for filing, if a proposed mark is inherently distinctive, it may be registered on the Principal Register. See In re Creative Beauty Innovations, Inc., 56 USPQ2d 1203 (TTAB 2000) (bottle configuration found inherently distinctive); In re Fre-Mar Industries, Inc., 158 USPQ 364, 367 (TTAB 1968) ("[A]lthough the particular shape is a commonplace one for flashlights, it is nevertheless so unique and arbitrary as a container in the tire repair field that it may be inherently distinctive and, therefore, by reason of its shape alone, serve to identify applicant's goods and distinguish them from like goods of others."); In re International Playtex Corp., 153 USPQ 377 (TTAB 1967) (container configuration having the appearance of an ice cream cone found inherently distinctive as a trademark for baby pants).
If a proposed mark is not inherently distinctive, the mark may be registered on either the Principal Register under §2(f) or on the Supplemental Register. Secondary meaning is acquired when the public views its primary significance as identifying the source of the product rather than the product itself. In the following cases, the applicant's evidence was found to be sufficient to support a claim of acquired distinctiveness: In re World's Finest Chocolate, Inc., 474 F.2d 1012, 177 USPQ 205 (C.C.P.A. 1973) (package design found to identify applicant's candy bars and distinguish them from those of others); Ex parte Haig & Haig Ltd., 118 USPQ 229, 230 (Comm'r Pats. 1958) ("[The decree] recited that because of the original, distinctive and peculiar appearance of the 'Pinched Decanter' the brand of whiskey in such bottles had come to be known and recognized by the public, by dealers and by consumers; and that the whiskey contained in such bottles had come to be identified with the 'Pinched Decanter' in the minds of the public generally.")
In In re Usher, S.A., 219 USPQ 920, 921 (TTAB 1983), the evidence of secondary meaning was insufficient. (The configuration of a package for mint candies was not functional but the package design was not shown to possess secondary meaning).
The examining attorney must establish a prima facie case that the trade dress is not inherently distinctive. To meet this burden, the examining attorney must at a minimum, set forth a "'reasonable predicate' for its position of no inherent distinctiveness." The USPTO is an agency of limited resources, and as such, it cannot be expected to shoulder the burden of conducting market research. In re Pacer Technology, 338 F.3d 1348, 1351-1352, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003) (design patents showing other adhesive container cap designs found sufficient to establish prima facie case that applicant's adhesive container cap was not inherently distinctive).
See TMEP §§1212 et seq. regarding acquired distinctiveness and TMEP §§815 816 et seq. regarding the Supplemental Register.
As stated in TMEP §1202.02, in an application for trade dress, distinctiveness and functionality are two separate issues, both of which must be considered by the examining attorney.
In many cases, registration is refused on both grounds. In any case where a product design or product packaging is refused because it is functional, registration should also be refused on the ground that the proposed mark is nondistinctive.
In appropriate cases, the issues of functionality and acquired distinctiveness should be argued in the alternative. For example, if the examining attorney has determined that a mark is functional and the applicant has made a claim of acquired distinctiveness, the examining attorney must determine whether the showing of acquired distinctiveness would be sufficient to warrant registration if the examining attorney's decision on the functionality issue is reversed. Of course, if the mark is ultimately determined to be functional, evidence of acquired distinctiveness is irrelevant and registration will be refused. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1007 (2001).
In an application to register a mark with three-dimensional features, the applicant must submit a drawing that depicts the mark in a single rendition. 37 C.F.R. §2.52(b)(2). See TMEP §807.10. If the mark comprises the design of only a portion of a product or container, broken lines should be used in the drawing to indicate that portion of the product or container that is not claimed as part of the mark. 37 C.F.R. §2.52(b)(4). See TMEP §807.08. The matter that is shown in broken (dotted) lines does not have to be disclaimed, because it does not form part of the mark. If the drawing does not meet the requirements of 37 C.F.R. §2.52, the examining attorney should require the applicant to submit a substitute drawing.
If an acceptable statement describing the mark is not in the record, the examining attorney must require the applicant to submit a description to clarify what the applicant seeks to register. The description of the mark should include a statement that the matter shown in broken lines is not part of the mark. See 37 C.F.R. §2.52(b)(4); TMEP §§808 et seq. The description is printed in the Official Gazette and on the registration certificate. Examples of acceptable language are, "The mark consists of the design of the blade portion of a flyswatter," and "The mark consists of the design of a perfume or cologne bottle and cap therefor, both having a 'V' shape as viewed from above." The description must adequately describe the mark, with unnecessary matter kept to a minimum. If applicable, the description must clearly indicate the portion of the product or container that the mark comprises. An example of acceptable language for this purpose is: "The mark consists of a red button positioned on the lower front area of a shirt. The dotted outline of the shirt is not part of the mark but is merely intended to show the position of the mark." As in this example, the description should make it clear what the dotted lines represent. The examining attorney should ensure that the description statement has been entered into the Trademark Reporting and Monitoring ("TRAM") database, so that it will be printed in the Official Gazette and on the certificate of registration. See TMEP §817.
See TMEP §1202.05(d)(i) and (d)(ii) regarding drawings in applications for color marks consisting solely of one or more colors.
Distinctiveness and Product Design
A product design trademark can never be inherently distinctive and is registrable only upon a showing of secondary meaning. TMEP §1202.02(b)(i). Therefore, if the mark is comprised of a product design, the examining attorney will refuse registration on the Principal Register on the ground that the proposed mark consists of a nondistinctive product design under 15 U.S.C. §§1051, 1052 and 1127. The examining attorney must make this refusal even in an intent-to-use application under 15 U.S.C. §1051(b) for which no statement of use or amendment to allege use has been filed.
Distinctiveness and Product Packaging
If the mark comprises product packaging trade dress for goods or services, the examining attorney must determine whether the mark is inherently distinctive. This requires consideration of the context in which the mark is used and the impression it would make on purchasers. Generally, no refusal based on lack of inherent distinctiveness will be issued in an intent-to-use application until the applicant has submitted specimen(s) with an amendment to allege use or a statement of use. However, if appropriate, the examining attorney has discretion to issue this refusal before a specimen is submitted.
To determine whether a proposed mark is functional, the examining attorney must consider how the asserted mark is used. Generally, in a §1(b) application, the examining attorney will not issue a refusal on the ground that the mark is functional until the applicant has filed either an amendment to allege use under §1(c), or a statement of use under §1(d), 15 U.S.C. §§1051(c) or (d).
In a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal based on functionality or nondistinctive trade dress will be made, the potential refusal should be brought to the applicant's attention in the first action issued by the Office. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the Office is not precluded from refusing registration on this basis.
Distinctiveness and Product Design
A product design trademark can never be inherently distinctive and is registrable only upon a showing of secondary meaning. TMEP §1202.02(b)(i). Therefore, if the proposed mark is comprised of a product design, the examining attorney must refuse registration on the Principal Register on the ground that the proposed mark consists of a nondistinctive product design under 15 U.S.C. §§1051, 1052 and 1127.
Distinctiveness and Product Packaging
If the mark comprises product packaging trade dress for goods or services, the examining attorney must determine whether the mark is inherently distinctive. See TMEP §§1202.02(b) et seq. regarding distinctiveness of trade dress.
If the record indicates that the proposed mark is functional, the examining attorney should issue a refusal of registration on the Principal Register under §2(f), or on the Supplemental Register. See TMEP §§1202.02(a) et seq. regarding functionality. NOTE: A mark in a §66(a) application cannot be registered on the Supplemental Register under any circumstances. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).