Spray nozzle design configuration deemed to be functional

United States of America
In In re UDOR USA Inc (Case 78867933, March 4 2009), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has upheld a decision of the trademark examining attorney of the US Patent and Trademark Office in which the latter had refused registration on the Principal Register of a mark which embodied the product configuration of UDOR USA Inc's patented metal spray nozzle.

The trademark examining attorney refused registration of the mark on the grounds that such a three-dimensional product design configuration was both:
  • functional for the goods covered (ie, metal spray nozzles) under Section 2(e)(5) of the Lanham Act (15 USC § 1051); and
  • non-distinctive and incapable of functioning as a trademark under Sections 1, 2 and 45 of the act. 
To determine whether the mark was functional, the TTAB applied the four-factor functionality analysis enunciated by the Court of Customs and Patents Appeals in In re Morton-Norwich Products Inc (671 F2d 1332 [1982]). Under this analysis, the TTAB must consider whether:
  • a utility patent exists which discloses the utilitarian advantages of the design that the applicant seeks to register as a trademark;
  • the applicant touts the utilitarian advantages of this design;
  • feasible and fungible alternative designs are available and/or used by competitors; and
  • the applicant’s design results from a comparatively simple or inexpensive method of manufacture and is essential to the use, purpose, cost or quality of the branded product. 
The TTAB held that the trademark examining attorney had failed to demonstrate that the mark was functional under the first two factors. However, it found that the record established a prima facie case of functionality under the third and fourth factors. As UDOR was unable to rebut this prima facie case with appropriate evidence, the TTAB found that the mark was functional within the meaning of Section 2(e)(5). The TTAB noted that it had to consider whether granting exclusive rights to the mark “would put competitors at a significant non-reputation based disadvantage”.

The TTAB also reviewed the trademark examining attorney’s decision that the mark was non-distinctive and had not acquired distinctiveness. Although this question would be moot (unless the functionality decision were ever successfully appealed), the TTAB held that the mark failed to function as a source identifier. In reaching this decision, the TTAB compared commonly used designs to highly descriptive terms and noted that both may acquire distinctiveness through use, but neither could be registered as a mark unless the applicant made a substantial showing that the design or term had acquired distinctiveness among consumers (eg, mere use for five years was not necessarily enough). 

Specifically, the TTAB indicated that an applicant for a common design would need to provide evidence that the ultimate purchaser of its product (not industry intermediaries such as manufacturers or distributors) actually recognized its design as a source identifier. Further, the TTAB stated that providing evidence of advertising (even 'look for' advertising, which is helpful), in the absence of evidence that the advertising has been effective, was not sufficient.
Ron N Dreben and Dana S Gross, Morgan Lewis, Washington DC

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