Monday, August 21, 2017

Precedential No. 22: Breast Cast Design Fails to Function as a Mark for Cancer Awareness Services

The TTAB affirmed three refusals to register the design shown below, comprising a "three-dimensional cylindrical cast of female breasts and torso," for associational, educational, and fund-raising services related to breast cancer awareness, finding that (1) applicant's specimens of use fail to show the applied-for-mark in use with the recited services, (2) the design fails to function as a service mark, and (3) assuming arguendo that the first two refusals were overcome, it constitutes nondistinctive trade dress that lacks acquired distinctiveness. In re Keep A Breast Foundation, Serial No. 85316199 (August 7, 2017) [precedential] (Opinion by Judge Peter W. Cataldo).


Specimens of Use: "A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage." In re DSM Pharm., Inc., 87 USPQ2d 1623, 1624 (TTAB 2008). Applicant's original specimen of use, shown immediately below, gave no indication of the services involved.


Its first substitute specimen, shown in part immediately below, does not display the breast cast depicted in the application drawing, but rather six different breast casts. Applicant's own promotional materials state that these breast casts are "one-of-a-kind plaster forms of the female torso ... given to the castee to document a specific point in their breast cancer journey." The casts are individual works that lack uniformity and thus they fail to depict a "substantially exact representation of the mark." See Rule 2.51.


Furthermore, although this specimen refers to the services, it appears to identify the services by the more traditional word mark "The Keep A Breast Foundation:" i.e., the presence of other readily perceived source identifiers "makes in impossible to conclude that the public would perceive the casts themselves as source identifiers."


A second substitute specimen (above) displays five breast casts of different sizes and shapes on a table with other paraphernalia. Again there is no mention of or association with the recited services. This specimen neither depicts the design shown in the application drawing, nor does it associate the supposed mark with any services such that the breast casts would be perceived as a source indicator.

And so the Board affirmed the refusal on the ground that applicant's specimens fail to show use of the applied-for designation as a source indicator for the recited services.

Failure to Function: The USPTO is statutorily constrained, by Section 1, 2, 3, and 45 of the Trademark Act, "to register matter on the Principal Register only if its functions as a mark." The critical determination is how the proposed mark is perceived by relevant consumers.

The Board agreed with Examining Attorney Marlene Bell that applicant's proposed mark fails to function as a service mark. The specimens of use fail to associate the design with the services, "thus making it unlikely that the relevant consumers will perceive the casts as indicating source."

If anything, the applied-for mark appears to be created as part of the educational and associational services offered under the designation “Keep A Breast Foundation Treasured Chest Program.” As stated in Applicant’s pamphlet, "The Keep A Breast Foundation’s Treasured Chest Program strives to gives women that are newly diagnosed with breast cancer a unique opportunity to document their body and their feelings at a specific time in their treatment by turning their casted torso into a beautiful piece of art."

The evidence also showed that other charitable organizations similarly make breast/torso casts as part of their support services. The Board concluded that the cast will be perceived as part of applicant's services rather than as a source indicator.

Acquired Distinctiveness: If a term or design fails to function as a mark, no amount of evidence of acquired distinctiveness can overcome such a refusal. [Seems like a nonsequitur - ed.]. Nonetheless, for the sake of completeness, and assuming arguendo that the design serves as a source indicator and that the specimens of use are acceptable, the Board considered applicant's Section 2(f) claim.

Given that the alleged mark is not Applicant’s main identifier (Keep A Breast Foundation is), and given that it is in the form of a product, which consumers do not tend to view as marks but as what they are (products), we find Applicant’s use since April 2000 is insufficient, in itself, to demonstrate that consumers perceive the breast/torso cast as an indicator of source.

Applicant pointed to more than $1 million dollars in donations and $100,000 spent on advertising for its services, but that evidence was of minimal probative value because applicant failed to indicate what amounts were raised and spent in connection with the mark at issue. Applicant displays its breast/torso casts along with other potential source identifiers, and promotes its services under the name "Treasured Chest Program." Thus the Board could not infer that, from applicant's advertising, consumers will infer that the breast/torso cast is a source identifier.

Applicant provided declarations attesting that the 1,500 breast casts it has developed include those of numerous celebrities, musicians, and professional athletes, and that media outlets have published stories about "The Keep A Breast Foundation's Breast Casts and the organization's services associated with the Breast Cast campaigns." But there was no indication that the breast cast was displayed or discussed as a source indicator, for example, by way of "look for" advertising. Moreover, the fact that the breast casts differ from one another make it more unlikely that applicant could show that such individualized casts serve as a mark.

In addition, Section 2(f) requires that an applicant's use of a proposed mark be "substantially exclusive." The fact that third parties offer breast casting as part of breast cancer awareness programs "strongly undercuts Applicant's claim that it is making substantially exclusive use of its proposed breast cast configuration as a service mark or trade dress." Therefore, applicant's claim of acquired distinctiveness fails on that basis also.

Conclusion: The Board affirmed the three refusals to register.

Read comments and post your comment here.

TTABlog comment: WYHA? Is this like a phantom mark? Is it an attempt to register an idea (breast casting) as a service mark? Applicant called it "akin to packaging," but isn't it some "tertium quid" that is neither product shape nor packaging?

Text Copyright John L. Welch 2017.

Friday, August 18, 2017

TTAB Test: Is UHAI (Swahili) Confusable with LIFE FOR HAIR & Design for Hair Care Products?

The USPTO refused registration of the mark UHAI for "Hair care products, namely, shampoo, conditioner, oil, gel, foam, spray, styling custard, hair regrowth kits comprised primarily non-medicated exfoliating scrub, scalp serum and temple balm for promoting hair growth," finding the mark likely to cause confusion with the registered mark LIFE FOR HAIR & Design (shown below), for "hair care product, namely, shampoo used to strengthen the hair [HAIR disclaimed]." Applicant contended that the Examining Attorney failed to prove that Swahili is a "common modern" language in this country, and thus failed to show that customers are likely to be confused as to the source of Applicant’s goods under Section 2(d). How do you think this came out? In re S Squared Ventures, LLC, Serial No. 86813357 (August 16, 2017) [not precedential] (Opinion by Judge Linda A. Kuczma).


Since the goods overlap, the Board presumed that they travel through the same, normal channels of trade to the same classes of customers.

Turning to the marks, Applicant translated its mark from the Swahili to English as the word "life." Under the doctrine of foreign equivalents, a mark in a foreign language may be found confusingly similar to a mark that is its English equivalent. The doctrine applies when an ordinary American purchaser would "stop and translate" the foreign term into its English equivalent. The ordinary American purchaser includes all purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.

Applicant did not dispute that the Swahili language is spoken by people in the United States, but it argued that the USPTO's evidence did not show that Swahili is a "common modern" language in this country such that consumers are likely to be confused.

The Examining Attorney relied on evidence that Swahili, also called Kiswahili, is a "lingua france" and is the primary or secondary language of approximately 80-100 million people around the world. Major universities in this United States offer classes and programs covering the Swahili language, and several have student Swahili clubs. Numerous media excerpts referred to Swahili broadcasts, religious gatherings, cultural awareness, and education.

Nonetheless, applicant, pointing to a survey showing that 88,685 individuals speak Swahili at home, contended that it is unlikely that purchasers would stop and translate the mark. [Seems like a nonsequitur to me - ed.. The Board pointed out, however, that people may speak English at home but still may have studied another language in school; others may immigrate to a home where English is spoken. None of these people would be included in applicant's data.

The Board concluded that Swahili is not dead, obscure, or unusual. It is a common modern language for purposes of applying the doctrine of equivalents.

Because UHAI directly translates to the word "life" in English, it is similar to Registrant's mark, and this factor favors a likelihood of confusion.

The absence of "FOR HAIR" in applicant's mark does not create a separate and distinguishable commercial impression from Registrant's mark, since that phrase is descriptive of the goods. Moreover, that wording is displayed in smaller and less stylized letters.

The Board noted that applicant's standard character mark could be displayed in the same manner as the registered mark. The leaf design in the registrant mark is minimal and does not distinguish the marks.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: When I first saw the registered mark, I thought it featured the letters LHE.

Text Copyright John L. Welch 2017.

Thursday, August 17, 2017

TTAB Test: Is BON BON & Design Confusable With BON O BON for Candy?

Arcor S.A.I.C. opposed an application to register the mark BON BON in the design form shown below, for "Confectionery made of sugar, namely, candy, sweets, caramels" [BON BON disclaimed] in view of its registered mark BON O BON in standard character form, for "Chocolates, pastries filled with sweet fillings, alfojores, and wafers." Applicant "ROT FRONT" argued that consumers will distinguish the marks due to the "extreme weakness of the term 'BON BON.'" How do you think this came out? Arcor S.A.I.C. v. "ROT FRONT" Open-Type Joint Stock Co., Opposition No. 91222153 (August 15, 2017) [not precedential]. (Opinion by Judge Peter W. Cataldo).


After the Board denied cross-motions for summary judgment, the parties agreed to proceed under the ACR regime, streamlining procedures and stipulating to certain facts: that the goods are closely related and travel through similar channels of trade. Applicant introduced dictionary definitions of "bon bon" as candy, third-party registrations for candy with BON BON disclaimed, and screenshots of various websites advertising candies identified as "bonbons" or "bon bons." Opposer submitted third-party registrations and website pages showing the use of purple backgrounds in packaging and advertisements for candy.

The Board had no doubt that "bonbon" or "bon bon" is, at best, highly descriptive of the involved goods, if not generic. Thus the wording "BON BON" in applicant's mark has little, if any, source-identifying significance. The evidence showed that the highly descriptive term BON BON, combined with a purple background, is "quite weak."

Opposer's mark BON O BON has no recognized meaning, other than a suggestion of "good." Applicant pointed to ten registrations and numerous third-party uses of BON BON in connection with candies. In particular BON BON BON for chocolates is quite similar to opposer's mark. Accordingly, the Board found, BON O BON is entitled to "a narrower scope of protection than would be accorded an arbitrary mark."

As to the marks, the Board found that, because BON BON is at least highly descriptive of the goods, consumers are likely to look to the stylized font and the purple background as the distinguishing features of applicant's mark.

Since opposer's standard character mark could be displayed in a fond identical to that of applicant's mark, the Board considered the marks to be similar in appearance. The meaning of applicant's mark is a chocolate-covered candy, while BOB O BON has no known meaning, but it suggests that the goods are "good." Thus the marks differ in connotation.

"[W]hile there are similarities between the marks, differences in appearance and connotation leads the marks to convey overall commercial impressions that are more dissimilar than similar." Therefore the Board found that confusion is not likely between the involved marks, and it dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: What do you think? Should Arcor have opposed on the ground of mere descriptiveness?

Text Copyright John L. Welch 2017.

Wednesday, August 16, 2017

GOLDEN DOODLE Merely Descriptive of Retail Gifts Shops, Says TTAB

In a six-page opinion, the Board affirmed a Section 2(e)(1) refusal of GOLDEN DOODLE, finding the proposed mark merely descriptive of "On-line retail gift shops; On-line retail store services featuring apparel and accessories; Retail store services featuring apparel, accessories and gifts." Applicant acknowledged that among the many dogs represented in its designs is the "goldendoodle," a cross between poodle and a golden retriever. In re GoldenDoodle LLC, Serial No. 86717500 (August 11, 2017) [not precedential] (Opinion by Judge Albert Zervas).


The evidence submitted by Examining Attorney Tracy Whittaker-Brown established that the goods offered in applicant's retail stores may feature goods with images, slogans or information regarding the goldendoodle breed. The Board therefore agreed that the proposed mark merely describes a feature of applicant's services.

Applicant GoldenDoodle argued that GOLDEN DOODLE does not convey an immediate idea of the qualities or characteristics of its services with any degree of particularity because "goldendoodle" is only one of 56 breeds found at its website. The Board found that applicant's argument had more bark than bite. The Board noted that it considers the proposed mark in view of the services for which registration is sought, regardless of how applicant actually uses its proposed mark.

Applicant has crafted its recitation of services in a manner to allow for retail services offering apparel, accessories and gifts that feature wording or images pertaining to goldendoodles, even to the exclusion of other dog breeds.

Applicant pointed out that the USPTO has published for opposition a divisional application for goods [e.g., clothing, bumper stickers] that were divided out from this application but the Board pointed out once again that it is not bound by decisions of examining attorneys.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? WYHA not? BTW, where did the second "d" in "goldendoodle" come from? Should it be "goldenoodle?" Or does that look too much like "golden noodle?" On the other hand, who cares?

Text Copyright John L. Welch 2017.

Tuesday, August 15, 2017

TTAB Rejects Shape of Printed Label as a Phantom Mark

The Board affirmed a refusal to register, on the Supplemental Register, the product configuration mark shown below, for "printed paper labels; paper identification tags; printed paper labels; adhesive labels; paper die cut shapes; paper labels; paper tags; placards of paper or cardboard; printed paper labels; coupons," finding that "the changeable elements in Applicant’s proposed mark result in multiple marks that cannot be protected in a single registration." In re MPT, Inc., Serial No. 86316207 (August 9, 2017) [not precedential] (Opinion by Judge Cynthia C. Lynch).


The supposed mark consists of "four rounded, convex corners and the call-out indicator of a generally rectangular speech bubble, with the call-out indicator located at the bottom of the speech bubble and formed by an extended pointed portion connected to the lower right corner by a concave line and connected to the lower left corner by a sloped line. The broken lines in the drawing are used to show the placement of the mark and are not part of the mark." During prosecution, applicant explained that "These unclaimed portions comprise portions of the straight walls at the four sides of the label that would fix their length."

A “phantom” trademark “is one in which an integral portion of the mark isgenerally represented by a blank or dashed line acting as a placeholder for a genericterm or symbol that changes, depending on the use of the mark.” In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513, 1515 n.1 (Fed. Cir. 1999).

A trademark application may seek to register only one mark, and a phantom mark is more than one mark. Phantom marks encompass too many possibilities to make effective searching possible, and thus do not provide proper notice to others.

Here, significantly different shapes could be created by varying the lengths and widths of the sides of this shape, demonstrating the unacceptable phantom nature of the proposed mark. (See examples below).



While Applicant’s proposed variations all may be talk bubbles, with three-dimensional configurations of the goods such as these, the form and shape of them are the essence of the mark, and Applicant’s proposed forms and shapes could diverge too much to be considered the same mark. *** More importantly, under the circumstances, Applicant’s use of broken lines in this drawing impermissibly opens the door to multiple marks, regardless of Applicant’s extraneous assurances to the contrary.

The Board also affirmed a requirement that the applicant submit a proper drawing and description of the proposed mark, because both encompass more than one mark.


Read comments and post your comment here.

TTABlog comment: WYHA? Did applicant stand a ghost of a chance here?

Text Copyright John L. Welch 2017.

Monday, August 14, 2017

Reversing a Surname Refusal, TTAB Finds BROE (Stylized) Has Acquired Distinctiveness

Although finding that the term BROE is primarily a surname, and that the stylization shown below does not make the mark inherently distinctive, the Board reversed this Section 2(e)(4) refusal because applicant established acquired distinctiveness under Section 2(f). In re Broe Management Company, LLC d/b/a The Broe Group, Serial No. 86715987 (August 11, 2017) [not precedential] (Opinion by Judge Michael B. Adlin).


Surname?: The evidence established that applicant is named for its founder and chief executive officer, Pat Broe. On its website, applicant describes itself as a "family-owned business." Negative dictionary evidence indicated that "broe" has no non-surname meaning and a Wikipedia entry for "broe" states that the word is a surname. Other evidence identified individuals with the surname BROE, and the namesite.com website list 1,250 persons with that surname.

Even though BROE is a rare surname, the record evidence established that it is still primarily a surname. In re Eximius Coffee, LLC, 120 USPQ2d 1276 (TTAB 2016) (finding ALDECOA primarily merely a surname).

Stylization?: As to the distinctiveness of of applicant's stylized version of BROE, the Board noted that surnames are typically displayed with an initial upper case letter. Neither the particular font nor the green letter "o" alters the primary significance of BROE given the other evidence in the record. Cf. In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995) (stating that were it not for the marks “highly stylized” form, “we would find that the service mark BENTHIN … would be perceived as primarily merely a surname,” based on highly similar evidence to that presented here and in Eximius Coffee).


In short, the record leaves no doubt that when the purchasing public considers [the applied-for mark] in relation to Applicant’s investment and financial asset disposition services, it will primarily signify a surname, specifically that of Pat Broe whose family owns Broe Management Company d/b/a The Broe Group.

Acquired Distinctiveness? Although the applied-for mark had been in use for significantly less than five years, Applicant claimed acquired distinctiveness as to the word BROE, without regard to font or stylization, which mark had been in use for substantially more than five years (in fact, for more than forty years).

The Board observed that the USPTO has "a longstanding practice of allowing registration of surnames under Section 2(f) upon a showing of substantially exclusive and continuous use for five years. In re Adlon Brand GmbH & Co., KG, 120 USPQ2d 1717, 1722 n.33 (TTAB 2016). The Board found no reason not to follow that practice here, since it had already found that the applied-for mark creates the same commercial impression as the word BROE.

Judge Massielo, in the briefest of concurring opinions, agreed with the result but he would have found the stylization alone sufficient to avoid the surname refusal.

Read comments and post your comment here.

TTABlog comment: Since the stylization does not change the pronunciation or meaning of the term, I side with Judge Adlin.

Text Copyright John L. Welch 2017.

Friday, August 11, 2017

CAFC Affirms TTAB: In Context, FIRST TUESDAY Merely Descriptive of Lottery Services

In an eight-page opinion, the CAFC upheld the TTAB's decision in In re North Carolina Lottery, Serial No. 86411401 (July 12, 2016) [TTABlogged here], finding the mark FIRST TUESDAY to be merely descriptive of "lottery cards; scratch cars for playing lottery games" and of "lottery services." The court ruled that the Board did not err in considering the explanatory text appearing on applicant's specimens of use (see below) in determining the issue of descriptiveness. In re North Carolina Lottery, Appeal No. 2016-2558 (Fed Cir. August 10, 2017) [precedential].


North Carolina's specimens of use included explanatory text such as "[n]ew scratch-offs the first Tuesday of every month." The examining attorney found that, in the context of applicant's promotional materials, the mark "merely describes a feature of [its] goods and services, namely, new versions of the goods and services are offered the first Tuesday of every month." The Board agreed, concluding that "[n]o mental thought or multi-step reasoning is required to reach a conclusion as to the nature of the involved goods and services."

North Carolina argued that that the Board's reliance on the explanatory text of the specimens to supplement the meaning of the mark was improper, and that the inquiry should be limited to what a consumer with "only general knowledge" of the goods and services, and without additional context from the explanatory text, would immediately understand the mark to mean. Accordingly, the applicant maintained, the mark is merely suggestive because nothing in the mark itself conveys the understanding that the USPTO assigns to the mark, and therefore some imagination is needed to connect the mark to the goods and services.

North Carolina conceded that the USPTO is allowed to consider the specimens of use to discern how a mark is used, but it argued that explanatory text on the specimens cannot supply additional meaning when the mark itself does not convey that meaning." When pressed, North Carolina "had difficulty articulating the significance of the explanatory text in this case if not to serve as evidence of the significance of FIRST TUESDAY in the commercial context." The court declined to "carve out" explanatory text from the USPTO's consideration of the commercial context in which a mark is used.

That is not to say, however, that the use of explanatory text with a mark necessarily renders that mark merely descriptive. “Placement of a term on the continuum [of distinctiveness] is a question of fact.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001). The distinctiveness of a mark in the context of explanatory text remains a case-specific analysis. As a legal matter, however, the TTAB did not err by considering the explanatory text of the specimens in the descriptiveness inquiry.

North Carolina further argued that the fact that it had to explain the meaning of the mark showed that the mark is not descriptive. The court, distinguishing several decisions from other circuits, found that the connection between the explanatory text, the mark, and the goods/services was not complicated: "That text simply uses the same two words as the mark—'first Tuesday'—along with words like 'new' and 'every month' to describe the relevant feature or characteristic of N.C. Lottery’s scratch-off lottery games."

The commercial context here demonstrates that a consumer would immediately understand the intended meaning of FIRST TUESDAY. In other words, the evidence shows that the mark is less an identifier of the source of goods or services and more a description of a feature or characteristic of those goods or services. Substantial evidence therefore supports the TTAB’s finding that FIRST TUESDAY is a merely descriptive mark.

And so the CAFC affirmed the Board's decision.

Read comments and post your comment here.

TTABlog comment: Would you categorize this as a "failure-to-function" case?

Text Copyright John L. Welch 2016.

Thursday, August 10, 2017

CAFC Affirms TTAB: Limitation of Goods to Those Associated with "will.i.am" Found Meaningless

The CAFC affirmed the TTAB's decision in In re i.am.symbolic, llc, 116 USPQ2d 1406 (TTAB 2015) [TTABlogged here], affirming Section 2(d) refusals to register the mark I AM for cosmetics and personal care products, sunglasses, and jewelry “all associated with William Adams, professionally known as will.i.am,” in view of the the mark I AM, registered in standard character and stylized form, for the same or related products. The Board correctly concluded that the "will.i.am" restriction "does not impose a meaningful limitation in this case for purposes of likelihood of confusion. In re I.Am Symbolic, LLC, Appeals Nos. 2016-1507, 2016-1508, 2015-1509 (Fed. Cir. August 8, 2017) [precedential].


The Board found that William Adams is the well-known front man for the music group, The Black-Eyed Peas, and is known as "will.i.am." The Board also found that the evidence failed to establish that Adams is well known as "i.am" or that "i.am" and "will.i.am" are used interchangeably.

Symbolic argued that the Board erred by deeming the "will.i.am" restriction" to be "precatory" and "meaningless;" by ignoring third party use and registration of other I AM marks; and by finding a likelihood of reverse confusion.

The restriction: The CAFC ruled that the Board correctly determined that the first du Pont factor weighed heavily in favor of a likelihood of confusion: the involved marks are legally identical in appearance, identical in pronunciation, have the same meaning, and engender the same overall commercial impression. Nothing in the record indicated that the "will.i.am" restriction changed that.

As to the second, third, and fourth du Pont factors, Symbolic maintained that the restriction fundamentally changes its goods and channels of trade. According to Symbolic, consumers purchase goods associated with celebrities in order to associate themselves with the celebrity. The CAFC, however, concluded that the Board did not err in holding that the restriction does not limit the goods with regard to trade channels or classes of purchasers, alter the nature of the goods, or represent that the goods will be marketed in any particular, limited way. In the absence of meaningful limitations in the application or cited registrations, the Board was correct in presuming that the goods travel through all usual channels of trade to the usual classes of consumers.

Other I AM marks: The court agreed with the TTAB that, because there is no evidence of extensive or voluminous third-party use or registration of I AM marks for the same or related goods, the Jack Wolfskin and Juice Generation decisions are inapposite. Those two cases involved oppositions to marks that were not identical to the opposers' marks. Based on evidence showing the frequency of use of certain components of the applied-for marks, the CAFC there concluded that the Board had not adequately considered the weakness of registrant's marks in the likelihood of confusion analysis.

In sharp contrast, this case involves identical word marks. Symbolic's evidence of third-party use of I AM for the same or similar goods fell short of the "ubiquitous" or "considerable" use of the mark components in the two cited cases. .

Reverse confusion: "Reverse confusion" refers to a situation in which a significantly larger or prominent newcomer "saturates the market" with a mark that is confusingly similar to a smaller, senior registrant for related goods or services.

The Board suggested in a footnote that, to the extent that Adams or the I AM mark are famous, such a finding would not support registration of the mark because "when confusion is likely, it is the prior Registrant which must prevail." But the Board did not make a finding of fame, and it did not make a finding of reverse confusion.

The court concluded that the Board's factual findings were supported by substantial evidence and its legal conclusions were not erroneous. Therefore, the court affirmed the Board's decision.

Read comments and post your comment here.

TTABlog comment:  The Board gave a similar nod to the possibility of "reverse confusion" in a footnote in a "celebrity" case involving the legendary Ringo Starr, TTABlogged here.

Text Copyright John L. Welch 2017.

Wednesday, August 09, 2017

Republished from 2015: Some Thoughts on de facto and de jure Functionality

Section 2(e)(5) of the Lanham Act bars registration of a proposed mark that “comprises any matter that, as a whole, is functional.” The shape of a product or a feature of a product may have a function – i.e., it may have utility – but still be registrable as a trademark. In other words, the product or feature may be de facto (in fact) functional but not de jure (in law) functional.

Confusion over these concepts sometime arises when, in considering the registrability of a product shape, the TTAB or a court encounters design patents or utility patents that are related to the product. Utility patents, as the name indicates, concern things that have utility: “any new and useful process, machine, manufacture, or composition of matter.” Design patents concern the ornamental features of useful objects: the way things look rather than the way they work. Thus both utility and design patents are directed to things that are useful (or de facto functional).

A particular device may be the subject of a both a utility patent, because it incorporates a useful invention – say, a corkscrew that operates in a new way – as well as a design patent, because the device has a novel and nonobvious shape – suppose the corkscrew is shaped like a kangaroo.

In the trademark realm under Section 2(e)(5), when one considers whether a product configuration or feature may be registrable as a trademark, one must first determine whether it has utility – i.e., whether it is de facto functional. A purely ornamental feature (i.e., purely non-functional) – such as the decorations on a monster truck (for entertainment services) – by definition has no utility and is therefore eligible for registration as a trademark.


What about a shape or feature that does have utility? For example, in our corkscrew, the tail of the kangaroo, which functions as the handle or lever that operates the corkscrew? It has utility, it performs a function, and therefore it is de facto functional in a trademark sense. But is it de jure functional and therefor unregistrable? That’s where the Inwood and Morton-Norwich decisions come in play.

One approach to assessing the registrability of product shape or feature is to ask the following questions:

1. Does the configuration or feature have utility? If yes, proceed to the next question. If no, the feature is ornamental and may be registrable. A showing of acquired distinctiveness is required, says Wal-Mart, unless the feature may be considered product packaging (or, as in the recent monster truck case, trade dress for services). Product packaging and other trade dress may be inherently distinctive, but first it must pass the Seabrook test.

2. If the configuration or feature has utility (for example, the kangaroo tail), is the shape the only one that will work? No it is not, for the kangaroo tail. The handle of the corkscrew, and the corkscrew itself, could take on many shapes. What, then, is an example of a design that can be useful in only one shape? Patent attorneys point to a case involving the blade or shank (the business end) of a key, which had to be in the particular shape in order to operate the corresponding lock. So that design patent was held to be invalid because the shape was "functional" in a design patent sense, not ornamental. If question 2 is answered yes, then the configuration or feature is not eligible for a design patent (or a trademark registration).

3. If the answer to question 2 is no, then a design patent is available. An invention is functional in the design patent sense only if the design is the only one that will work: think key blade. But functionality for trademarks requires a different standard. Even if there are alternative designs that will work, a product configuration or feature may be unregistrable as a trademark – i.e., de jure functional – if the design meets the Inwood test: if it is "essential to the use or purpose of the device or ... affects the cost or quality of the device." The CCPA’s Morton-Norwich factors are meant to assist in the determination of trademark functionality. In the recent "bladeless" fan decision, the Board found that the shape of the product met the Inwood test.
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The Board and the courts sometimes go astray when utility patents are involved. It is tempting to conclude that any feature discussed in a utility patent must ipso facto be de jure functional and therefore unregistrable as a trademark. But the Supreme Court in TrafFix was careful to limit the effect of utility patents as follows: it said that if a feature is claimed in a patent (not merely discussed in the specification), that is strong evidence that the feature is de jure functional. Not conclusive evidence, but strong. That is because even if a feature is claimed in a patent (for example, the lever on the cork screw), it still may be possible to design that element in a number of shapes that work equally well (the kangaroo tail being one).

Some of these principles were discussed in two recent TTAB decisions: the monster truck case, in which the Board found the decorations on a monster truck to be ornamental trade dress that was inherently distinctive under Seabrook, and the “bladeless” fan case, in which the Board applied Inwood and Morton-Norwich in affirming a Section 2(e)(5) functionality refusal of the shape of the fan elements.


The next time you read a decision in a product configuration case or trade dress case, look closely to see how the court or the Board applies these principles and makes these distinctions. Of course, if you don't agree with my understanding, let me know.

Read comments and post your comment here

Text Copyright John L. Welch 2015.

Tuesday, August 08, 2017

TTAB Test: Which of These Four Section 2(d) Refusals Were Reversed?

It has been said that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Presented for your contemplation are four recent TTAB decisions in Section 2(d) appeals. At least one was reversed. What do you think? [Answer in first comment].


In re Inca Tea, LLC, Serial No. 85886579 (August 3, 2017) [not precedential] (Opinion by Judge Anthony R. Masiello). [Section 2(d) refusal to register the mark shown below left, for "Teas comprised of purple corn; tea blends comprised of purple corn" [TEA, 100% ALL NATURAL INGREDIENTS, and ORIGINAL disclaimed] in view of the registered mark shown below right for "teas, namely, linden and chamomile" [FOOD disclaimed]].


In re A.H.C.S., Inc., Serial No. 86782221 (August 3, 2017) [not precedential] (Opinion by Judge Karen Kuhlke) [Section 2(d) refusal of the mark GWYN'S for "Restaurant services; Restaurant services featuring fine dining on ski area mountain," in view of the registered mark GWIN’S LODGE for "Resort lodging services"].


In re Adrenalin Gaming, LLC, Serial No. 86877784 (August 4, 2017) [not precedential] (Opinion by Judge Peter W. Cataldo). [Section 2(d) refusal of the mark ADRENALIN ATTRACTIONS for "amusement part rides" [ATTRACTIONS disclaimed] in view of the registered mark ADRENALIM for "amusement park rides and water park rides"].


In re Primary Investments Grp. Ltd., Serial No. 86732652 (August 4, 2017) [not precedential] (Opinion by Judge Peter W. Cataldo). [Refusal to register MULTI-FIBER COLON CLEANSE on the Supplemental Register, for "vitamins and nutritional supplements," in view of the registered mark COLON CLEANSE for "bulk forming fiber laxative"].


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Text Copyright John L. Welch 2017.