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By Tony Dutra
A trademark cannot be registered with the Patent and Trademark Office if its main features are functional and only “insignificant elements of the design are non-functional,” the U.S. Court of Appeals for the Federal Circuit ruled in a split decision April 12 (In re Becton, Dickinson and Co., Fed. Cir., No. 2011-1111, 4/12/12).
The court affirmed a ruling by the Trademark Trial and Appeal Board denying Becton, Dickinson & Co.'s registration for trademark on a test tube cap design.
A dissenting opinion faulted the court for focusing on the individual elements of the design and failing to look for functionality in the design as a whole.
Becton owns utility patents (4,741,446; 4,991,104; and 6,602,206) and design patents (D356,643; D357,985; and D445,908) related to its Vacutainer test tubes and Hemogard test tube cap.
Becton applied for a trademark registration (77/254,637) depicting a medical test tube cap. A trademark examining attorney refused registration on the basis that the cap design was functional.
The TTAB affirmed the decision, relying on a four-factor test for functionality in In re Morton-Norwich Products Inc., 671 F.2d 1331 (C.C.P.A. 1982). One factor considers the “availability to competitors of functionally equivalent designs.”
The board found that a ribbed design--for better grip--and opening on the top--to insert a syringe--were utilitarian features incorporated not only in Becton's claimed mark but also in alternative designs proposed by Becton. It ruled that other nonfunctional features did not save the mark from being deemed overall functional.
Senior Judge Raymond C. Clevenger III first distinguished de facto and de jure functionality.
“De facto functionality simply means that a design has a function, like the closure cap in this case,” the court said, adding that such functionality is irrelevant to whether the mark as a whole is functional.
De jure functionality, on the other hand, applies to the overall design and whether “the product is in its particular shape because it works better in this shape,” the court said, quoting Textron Inc. v. U.S. International Trade Commission, 753 F.2d 1019, 224 USPQ 625 (Fed. Cir. 1985). The court said:
[W]here a mark is composed of functional and non-functional features, whether “overall design is functional should be based on the superiority of the design as a whole, rather than on whether each design feature is 'useful' or 'serves a utilitarian purpose.' ” 753 F.2d at 1026. Textron cited as an example the Coca-Cola® bottle, noting that the bottle's significant overall non-functional shape would not lose trademark protection simply because “the shape of an insignificant element of the design, such as the lip of the bottle, is arguably functional.” Id. at 1027. Likewise, a mark possessed of significant functional features should not qualify for trademark protection where insignificant elements of the design are non-functional.
Accordingly, it was no error for the TTAB to “weigh the functional and non-functional features of [Becton]'s mark against each other,” the majority said, and “conduct such an assessment as part of its determination of whether a mark in its entirety is overall de jure functional.”
The court then assessed Becton's mark in accordance with the four Morton-Norwich factors.
• Prior patents: Quoting TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23 31, 58 USPQ2d 1001 (U.S. 2001), the court said, “the disclosure of a feature in the claims of a utility patent constitutes strong evidence of functionality.”
To counter Becton's argument that the proposed mark was not claimed in a prior utility patent, the majority asserted that TrafFix did not require that the claims map to the applied-for mark, but rather also allowed that “statements in a patent's specification illuminating the purpose served by a design may constitute equally strong evidence of functionality.”
Finally, the court further acknowledged that, though “a design patent may be some evidence of non-functionality …, [a]bsent identity between the design patent and the proposed mark, the presumption loses force.” Becton's proposed mark did not match exactly any of the figures in its design patents.
• Advertising: The court agreed with the TTAB that the bulk of Becton's advertising touted the utilitarian advantages of its test tubes and caps, a factor against registration in Morton-Norwich.
The court rejected Becton's argument that the advertised products where not exactly the same as the mark's design, saying, “For purposes of an overall functionality assessment, this distinction is without a difference.”
• Alternative designs: The majority temporarily ignored the factor on “the availability to competitors of functionally equivalent designs.” It said that the functionality found in the other considerations left no need to consider alternative designs, per Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422 (Fed. Cir. 2002).
• Manufacturing impact: The last Morton-Norwich factor weighs against registration if the design lowers the cost of manufacture. The court deferred to the board's decision refusing to weigh declarations by two Becton witnesses on the issue.
Finally, the court identified the public policy underlying the doctrine. “[T]he rule that de jure functional designs cannot be protected as trademarks is 'not the right to slavishly copy articles which are not protected by patent or copyright, but the need to copy those articles, which is more properly termed the right to compete effectively,” the court said, quoting Morton-Norwich.
Pointing to competitors' use of “ribs for sure gripping and similar functional openings on their products,” the court concluded that Becton “failed to establish that there are meaningful alternative designs for collection tube closure caps.”
The court affirmed the final decision of the board.
Judge William Curtis Bryson joined the opinion.
In dissent, Judge Richard Linn argued for a different interpretation of Morton-Norwich. Quoting from that opinion, he said, “de jure functionality is directed to the appearance of the design (not the thing itself) and is concerned with whether the design is 'made in the form it must be made if it is to accomplish its purpose'--in other words, whether the appearance is dictated by function.”
He faulted the board and majority for comparing elements of the design. “The presence of functional features may be relevant, but not in the sense of comparing dissociated functional features against non-functional features,” Linn said. “Weighing individual elements of a mark against each other is analytically contrary to the consideration of the mark as a whole.”
He said that, consequently, the functional features on which the majority focused relate to the de facto functionality inquiry, “and not the de jure functionality of the overall design--whether the design as a whole must look this way to serve some identified function.”
Linn then conducted the same four-factor analysis as had the majority and arrived at different conclusions on all four.
In particular, he criticized the majority's view of the alternative designs, as he noted that Becton had three distinct design patents and the competitors were, in fact, selling products “with similar functionality, yet differing designs.”
Accordingly, he addressed the majority's policy basis by countering, “Any concern that [Becton] will unfairly assert its mark against these competitors rings hollow when [Becton], in seeking protection of this mark, has already distinguished those designs of its competitors.”
Richard Z. Lehv of Fross, Zelnivk, Lehrman & Zissu, New York, represented Becton. PTO Associate Solicitor Christina J. Hieber represented the agency.
By Tony Dutra
Opinion at http://pub.bna.com/ptcj/111111Apr12.pdf
For an analysis of de facto and de jure functionality in the design patent context, see a BNA Insight article by Perry J. Saidman, “Functionality and the Test for Design Patent Infringement: Rarely the Twain Should Meet” (77 PTCJ 201, 12/19/08).
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