US Navy's colour pixilated patterns for military clothing deemed not functional

In the non-precedential decision In re Navy Exchange Service Command (Serial Nos 77160754, 77160783, 77324266 and 77324270, September 29 2012), the Trademark Trial and Appeal Board (TTAB) has reversed the USPTO’s refusal of four trademark applications for colour pixilated patterns for military clothing and merchandise, deeming them to be non-functional under Section 2(e)(5) of the Trademark Act. The TTAB determined that the examining attorneys had failed to offer sufficient evidentiary support to demonstrate a prima facie case that the marks applied for were functional.

The Navy Exchange Service Command applied for four marks consisting of, or including, pixilated designs claiming the colours black, deck grey, light grey and navy blue as a feature of the marks for uniforms and fabrics to be used in the manufacture of merchandise, not limited to clothes. 

The examining attorneys refused the registration of each mark on the grounds of functionality.

On the one hand, the examining attorneys contended that the “the applicant’s colour patterned marks are functional because they mask stains and wear-and-tear, and thereby, the colour pattern design is essential to [the] applicant’s requirements for a neat and clean uniform”. In response, the applicant pointed out that the colour patterns are not intended to serve as camouflage; no further argument was made on that basis. 

On the other hand, the applicant argued that the advantages of hiding stains or wear-and-tear provided by the colour patterns are merely incidental and common to any type of patterned materials. Additionally, the applicant contended that “its applied-for marks are neither necessary nor indispensable to the purpose of these goods, and that ‘the plethora’ of alternative patterns available and the absence of a competitive need to adopt any particular colour or design” show that the marks are not functional.

The TTAB based its decision on tests from two landmark functionality cases. Under TrafFix, the design or trade dress of a product 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 (TrafFix Devices Inc v Marketing Displays Inc (532 US 23, 58 USPQ2d 1001 (2001))). The TTAB also specifically applied the Morton-Norwich four-factor test for determining whether a product design is functional:

• the existence of a utility patent disclosing the utilitarian advantages of the design;
• advertising material in which the originator of the design touts the utilitarian advantages of the design;
• the availability to competitors of alternative designs; and
• facts indicating that the design results in a relatively simple or cheap method of manufacturing the product (In re Morton-Norwich Products Inc (671 F2d 1332, 213 USPQ 9 (CCPA 1982))).

The first factor did not weigh against the applicant because the record did not show any utility patent referencing utilitarian advantages of its colour marks.

With regard to the second - and more controversial - factor, the TTAB concluded that the statements made in the US Navy Regulation Policies, press releases and websites regarding the Navy’s uniform cleaning and durability requirements were not persuasive enough to show that the applicant’s multi-coloured pattern was superior to any other pattern. Moreover, the TTAB concluded that the patterned design’s ability to hide stains and wear-and-tear were merely “incidental” and thus, not essential to the applied-for goods. The TTAB further recognised that a “neat and clean uniform” was just one of many requirements of the uniform that were not associated with fabric design (eg, durability, cost, ease of maintenance, storage space and style).

For the third factor, the applicant’s submission of alternative camouflage patterns convinced the TTAB of the sufficient availability to competitors of other colour pattern designs which could be used to “perform the same functions as well as” the applicant’s marks. Therefore, competition would not be affected by granting trademark rights to the applicant.

As to the fourth factor regarding cost and quality, the applicant presented the TTAB with a contractor’s declaration which stated that printing the Navy’s pattern was “no less expensive of a process than would be involved for any other digital or camouflage pattern in any other colours”. The TTAB found that this showing was neutral and weighed neither in favour of the applicant nor the examining attorneys, as the evidence showed only that the applicant’s colour pattern was made by common manufacturing methods, which were not cheaper than other processes.

The TTAB concluded that:

“while the colour pattern design in [the] applicant’s marks may perform the incidental function of masking stains and wear and tear on the fabric and clothing items identified in the applications, it need not be devoid of any function in order to be registrable as a trademark.” 

Gerardo Flórez and Stacy Wu, Ladas & Parry LLP, New York