Federal Circuit decision illustrates when a design is functional

United States of America

The recent case of In re Becton, Dickinson and Company (CAFC No 2011-1111, April 12 2012) illustrates when a design is functional and therefore not enforceable or registrable as a brand. Brands that are entitled to registration may last forever if properly maintained.

In 2007 Becton, Dickinson and Company applied to register the configuration mark pictured below based on use in commerce since 1989 and a claim of acquired distinctiveness under Section 2(f) on the Principal Register for “closures for medical collection tubes”:

The description of the mark reads:

"The mark consists of the configuration of a closure cap that has an overall streamlined exterior wherein the top of the cap is slimmer than at the bottom and the cap features vertically elongated ribs set out in combination sets of numerous slim ribs bordered by fatter ribs around most of the cap circumference, where a smooth area separates sets of ribs. The slim ribs taper at their top to form triangular shapes which intersect and blend together at a point where a smooth surface area rings the top of the cap above the ribs, thus extending the cap's vertical profile. At the bottom, a flanged lip rings the cap and protrudes from the sides in two circumferential segments with the bottom-most segment having a slightly curved contour. The matter in dotted lines is not claimed as a feature of the mark, but shows the tube on which the closure is positioned."

In response to the examiner’s requirements, the applicant submitted advertising samples for the closure cap for which it sought registration, several of its utility and design patents for caps, samples of advertising materials, and copies of website printouts showing medical closure caps manufactured by other entities, declarations from two of its product designers plus its chief IP counsel with exhibits and 11 customer declarations in support of its argument that the cap design had acquired distinctiveness. The examining attorney considered all of the evidence and refused registration of this mark on the basis that:

  • the cap design was functional;
  • even if non-functional, the cap design was a non-distinctive configuration of the goods; and 
  • the acquired distinctiveness evidence was insufficient.   

In an ex parte appeal, the Trademark Trial and Appeal Board (TTAB) affirmed, holding that the product’s feature was functional and could not serve as a trademark, since it was essential to the use or purpose of the article or affected the cost or quality of the article. Additionally, the acquired distinctiveness evidence was not persuasive in light of the holding on functionality. The applicant appealed to the Court of Appeals for the Federal Circuit on the record.

The Federal Circuit noted that the functionality of a proposed mark is a question of fact. On appeal, all factual findings of the TTAB are upheld unless they are unsupported by substantial evidence. The possibility that two inconsistent conclusions may be drawn from the evidence does not preclude a TTAB finding from being supported by substantial evidence. Rather, where contradictory conclusions may reasonably be drawn from the evidence, the decision of the TTAB favouring one conclusion over the other is the type of finding that must be sustained as supported by substantial evidence. 

Here, the applicant alleged that the TTAB had erred in its determination that:

  • certain features of the mark, which were admittedly non-functional, would not serve to remove the mark as a whole from the realm of functionality; and
  • the mark had not acquired distinctiveness. 

With regard to the second allegation of error, the Federal Circuit noted that a determination by the USPTO that a proposed mark is functional constitutes, for public policy reasons, an absolute bar to registration on either the Principal or the Supplemental Register, regardless of evidence showing that the proposed mark has acquired distinctiveness. Therefore, the issue was whether the cap configuration was functional.

The Federal Circuit reviewed the TTAB’s consideration of the following four factors for functionality:

  • the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
  • advertising by the applicant that touts the utilitarian advantages of the design;
  • facts pertaining to the availability of alternative designs; and
  • facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

It found that the TTAB had properly reviewed and weighed each factor and then concluded that the examiner was correct in holding the mark to be functional. The applicant did not, for example, contest that the ribs on the cap themselves were functional, as was the opening in the top of the closure cap. These prominent and important functional features of the cap, which are common to the closure caps made by competitors, led the TTAB to properly conclude that admitted non-functional features could not save the cap mark from being deemed overall functional. 

The contention that the TTAB had committed reversible error by discounting the significance of the non-functional elements failed, according to the Federal Circuit, to recognise that one object of the Morton-Norwich inquiry "is to weigh the elements of a mark against one another to develop an understanding of whether the mark as a whole is essentially functional" and thus non-registrable. Whenever a proposed mark includes both functional and non-functional features, the critical question is the degree of utility present in the overall design of the mark. De facto functionality simply means that a design has a function, like the closure cap in this case. Such functionality is irrelevant to the question of whether a mark as a whole is functional so as to be ineligible for trademark protection. De jure functionality “means that the product is in its particular shape because it works better in this shape”. A mark possessing significant functional features such as in this case should not qualify for trademark protection where insignificant elements of the design are non-functional. 

Finding no legal error by the TTAB in weighing the functional and non-functional features of the mark against each other or in its assessment of the functionality of the proposed mark, and because substantial evidence supported the TTAB's findings of fact under the Morton–Norwich factors, the Federal Circuit affirmed the final decision of the TTAB.

Brian Edward Banner, H & A Intellectual Property Law PLLC, Alexandria

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