Second attempt to register design fails on res judicata grounds

In In re Bose Corporation, the US Court of Appeals for the Federal Circuit has, for the second time, upheld the US Patent and Trademark Office's Trademark Trial and Appeal Board's (TTAB) refusal to register Bose Corporation's design of a 'loudspeaker system' as a trademark. The Federal Circuit agreed with the TTAB's conclusion that Bose's present application (Serial 74/734,496) was barred under the doctrine of res judicata in light of its 1977 application to register the same loudspeaker design. The prior application (Serial 73/127,803) was refused registration because of the functional nature of the claimed design (In re Bose Corporation, 772 F 2d 866 (Fed Cir 1985) (Bose I)).

The loudspeaker system design mark for which Bose sought protection was described by Bose as:

"an enclosure and its image of substantially pentagonal cross-section with a substantially pentagonal-shaped top with a bowed edge parallel to a substantially pentagonal-shaped bottom end."

In attempting to overcome the examining attorney's refusal to register the mark, Bose argued before the TTAB that res judicata was inappropriate for three reasons:

• the Bose I court had not considered the bowed or curved nature of the design;
  
  
• the intervening Supreme Court decision in TrafFix Devices Inc v Marketing Displays Inc, which, according to Bose, set forth additional considerations relevant to the functionality analysis; and
  
  
• new Bose promotional materials that refrained from touting the functional aspects of the curved edge panels of the design.

Neither the TTAB nor the Federal Circuit on appeal was persuaded.

Specifically, the TTAB found all necessary res judicata elements present:

• the same applicant as in Bose I;
  
  
• a court of competent jurisdiction had rendered a final judgment on the merits of the case, namely, on the issue of functionality; and
  
  
• no conditions, facts or circumstances of consequence had changed since the decision on the prior application.
  

The Federal Circuit Court agreed with the TTAB's analysis and discounted each of Bose's assertions. First, the court rejected Bose's contention that the curved or bowed front edge of the loudspeaker system design had not been considered in the Bose I functionality analysis. The court cited to where, in its prior opinion, it had discussed the curved nature of the front of the loudspeaker design, and dismissed as semantics Bose's argument that the terms 'curved' and 'bowed' had different meanings. The shape claimed in the two applications was the same and the fact that Bose was describing the shape using slightly different language did not alter the conclusion that the issue of functionality had already been decided. With respect to the TrafFix decision, the Federal Circuit concluded that TrafFix did not change the functionality analysis applied in Bose I, but rather supported a finding that Bose's expired utility patent on the loudspeaker design provided "strong evidence that the features claimed therein are functional". Turning to Bose's last contention, the court dismissed the significance of Bose's new promotional materials that now did not tout the utilitarian advantages of the curved front edge, concluding that the mark at issue was not the "curved front edge" but rather the entire design - which was clearly promoted in Bose's advertising as functional.

Timothy J Kelly and Andrea Pelaez, Fitzpatrick Cella Harper & Scinto, New York