Motorcycle stand design held to be functional

United States of America
A functional design is not properly the subject of a trademark registration in the United States. While it is possible for a product design to serve as a trademark once it has been established that the consuming public has come to view the mark as a source identifier (ie, once it has acquired distinctiveness), where the mark itself is functional, no showing of acquired distinctiveness will permit the applicant to claim exclusivity from a trademark perspective. That right is reserved for patents. In In re Van Valkenburgh (Serial No 77025789, January 7 2011), the Trademark Trial and Appeal Board (TTAB) affirmed the examining attorney’s refusal to register as a trademark the design of a motorcycle stand because of the functional nature of the design.
Charles Van Valkenburgh applied to register the design of a stand used to hold a motorcycle in an upright position (for use, for example, when maintenance is being performed). The design was described as consisting of “the three-dimensional configuration and associated trade dress of a motorcycle stand”. The applicant also relied on the following depiction of the mark, wherein the material shown in dotted lines was disclaimed:
Importantly, the mark in question was the subject of a utility patent which claimed the features depicted in the design. The applicant argued that, while a utility patent did, in fact, exist, the patent did not describe the mark for which registration was sought, and, even if it was described, the patent did not disclose any utilitarian advantages of the proposed mark.
The TTAB began its analysis by reviewing the law as it relates to functionality. Under 15 USC § 1052(e), Lanham Act § 2(e)(5), a mark is not registrable if it comprises matter that, as a whole, is functional. The functionality determination is one of fact, and, in general terms, a product feature is functional if it is essential to the use or purpose of the article, or if it affects the cost or quality of the article. In considering the question of functionality, the following four factors (known as the Morton-Norwich factors) are examined: 
  • the existence of a utility patent disclosing the utilitarian advantages of the design;
  • advertising materials which tout the design’s utilitarian advantages;
  • the availability to competitors of functionally equivalent designs; and
  • facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product. 
In the case of the motorcycle stand, the evidence supported the examining attorney’s conclusion that the proposed mark was functional and not registrable. 
Most significantly, the examining attorney found (and the TTAB agreed) that the patent owned by the applicant “incorporate[d] the proposed mark and [that] the configuration of the proposed mark [was] a necessary element of the invention...”. It was not determinative that the proposed mark comprised less than the entirety of the invention claimed in the patent. The proposed mark was necessary to the operation of the motorcycle stand, especially in light of the fact that the proposed mark was identified as the best mode for carrying out the invention claimed in the patent. Such a showing by the examiner, the TTAB concluded, was sufficient to establish the patent as prima facie evidence that the proposed mark was functional. As such, the burden shifted to the applicant to provide a convincing rebuttal for why the patent did not disclose the utilitarian advantages of the proposed mark, something the applicant was unable to do.
Turning to the other Morton-Norwich factors, the TTAB found that the examiner’s review of third-party advertising and promotional materials touting the utilitarian advantages of designs similar to the claimed design was appropriate where the applicant failed to provide any such materials of its own and, indeed, claimed that no such materials had ever been created. These third-party materials focused on the functional features of stands having similar constructions to the stand design at issue and, although not the applicant’s materials, they functioned to communicate to consumers that product features of the type offered by the applicant under the alleged mark were utilitarian in nature.
In support of its registration, the applicant submitted photographs of more than 80 allegedly alternative motorcycle stand designs, which the applicant argued amounted to evidence that competition would not be hindered if it were permitted to obtain a trademark registration for its design. Again, the TTAB was not persuaded, concluding that the mere availability of alternative designs does not convert a functional design into a non-functional one. In the case of the applicant’s stand, which delineated and claimed essentially functional features, the TTAB agreed with the examining attorney that the features sought to be protected may well hinder competitors, if for no other reason than because such competitors whose stands contain similar features would not know if the construction of their stands would subject them to a claim for trademark infringement.
As to the final Morton-Norwich factor, neither the examining attorney nor the TTAB were persuaded that the applicant’s stand was the result of a more expensive or complex manufacturing process. In any event, even if a case could be made to support such a conclusion, the test is whether the claimed feature affects the cost or quality of the article (emphasis in original). Here, even if the applicant's stand was the result of a higher manufacturing cost, that higher cost would not detract from the functional nature of the design.
Given that the TTAB agreed with the examining attorney that the proposed mark was functional and thus not registrable, the TTAB was not required to analyse the applicant’s argument that the mark had become distinctive as a result of its alleged use of the mark in commerce, because a finding of functionality “bars registration regardless of any showing of acquired distinctiveness”. Nonetheless, the TTAB briefly examined the applicant's proofs on the issue of acquired distinctiveness before concluding that even that evidence was lacking. 
Product designs – if they are not functional – are registrable as trademarks, but only where it can be shown that the design has, through use, become distinctive of the goods or services. In reaching a decision on whether a product design mark has acquired distinctiveness, the examining attorney (or, on review, the TTAB) will examine a variety of indicia designed to demonstrate that consumers have come to recognise the alleged mark as a source indicator and not merely as the design of a product. Among the types of evidence to be considered are:
  • the length, manner and exclusivity of the mark owner’s use;
  • direct consumer testimony as to the distinctiveness of the mark;
  • survey evidence tending to demonstrate that the relevant public views the mark as a source-identifier;
  • evidence that the mark has come to be known in the marketplace as a source identifier; and
  • where available, proof that the mark has been the subject of intentional copying.
In the case of the motorcycle stand, the evidence put forth in support of the design’s alleged acquired distinctiveness did not sway the examining attorney or the TTAB. In reviewing such evidence, it is not necessarily the type or quantity of the evidence that matters. Rather, it is whether that evidence demonstrates that consumers have come to view the design as a trademark and not merely as a product design. In the present case, while some evidence was submitted as to long-term use (16 years), such evidence was not persuasive in light of the nature of the mark. Similarly, while the product designated by the design mark was touted by the applicant as “an industry leader”, such testimonial evidence did not convince the TTAB because commercial success, in and of itself, does not demonstrate that the purchasing public recognises the design as a trademark. There may be many reasons why a particular product is a market leader, none of which may relate to the allegedly distinctive nature of the trademark under which the product is sold. In the present case, the applicant faced an uphill battle in light of the functional nature of its trademark and did not help its cause by refusing to disclose sales and advertising figures (due to their allegedly confidential nature). In the absence of such evidence, and in the absence of any evidence as to market share or unsolicited publicity, there was no way for the examining attorney (or the TTAB) to conclude that the applicant's efforts had been successful in making the public aware of the source-indicating nature of the design mark. 
Moreover, while the applicant submitted evidence purporting to be surveys documenting public perception of the mark, such surveys were unaccompanied by the procedural and statistical support necessary to render them reliable. In an appropriate case, the TTAB is more than happy to entertain survey evidence to show that a mark has become distinctive, but such evidence must be based on scientifically valid principals. The survey evidence submitted by the applicant (essentially, third-party testimony from 16 purported consumers) did not have the level of reliability necessary to permit the TTAB to conclude that the consuming public had come to associate the design of the applicant's motorcycle stand as a unique source indicator.   
Finally, the applicant’s arguments in support of its registration included allegations that third parties had copied the design and that such copying was evidence that the design had acquired distinctiveness. While the TTAB acknowledged that copying can, generally, be evidence of secondary meaning or acquired distinctiveness, such evidence is less persuasive in a product design situation. In such a case, the copier, by adopting the mark, may not be attempting to trade upon the trademark owner’s goodwill in that mark. Rather, “where the proposed mark is a product design, the copier may be attempting to exploit a desirable product feature, rather than seeking to confuse consumers as to the source of the product”. 

Thus, while the presence of the utility patent claiming the essential portions of the applicant's design mark was sufficient in the TTAB's eyes to refuse registration of mark, the additional evidence submitted by the applicant in support of its claim of acquired distinctiveness was fundamentally flawed and thus would not have helped the applicant overcome the refusal to register, even absent the patent.

Timothy J Kelly, Fitzpatrick Cella Harper & Scinto, New York

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