January 2011 Issue

TTAB Cases

In re Van Valkenburgh,
App. Ser. No. 77025789 (TTAB Jan. 7, 2011)

ABSTRACT
The TTAB affirmed the refusal to register Applicant’s product-design mark, finding that there was sufficient evidence of the product design’s functionality, including a utility patent, advertising materials touting utilitarian advantages, and evidence of a hindrance to competitors.  The TTAB also held that, despite Applicant’s sixteen years of use of the proposed mark, there was no evidence that consumers had come to perceive Applicant’s product design as a trademark, and thus no acquired distinctiveness.

CASE SUMMARY

FACTS
Applicant filed an application to register the mark shown below for “motorcycle stands” in Class 12. 

The application included the following description:  “The mark consists of the three dimensional configuration and associated trade dress of a motorcycle stand.  The material shown in the dotted lines serves to show the position of the mark on the goods and is not claimed as part of the mark.”  Applicant sought registration of the proposed mark on the Principal Register under Section 2(f).  The Examining Attorney refused registration under Section 2(e)(5) on the ground that the proposed mark was functional and, alternatively, on the ground that the proposed mark had not acquired distinctiveness.

ANALYSIS
On appeal, the TTAB applied the following Morton-Norwich factors to determine whether the proposed mark was functional:  (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) factors indicating the design results in a comparatively simple or cheap method of manufacturing the product.  First, the TTAB reviewed Applicant’s patent for a motorcycle stand and found that the drawing of the invention in the patent incorporated the proposed mark, the detailed description of the invention in the patent described the proposed mark, and one of the claims of the patent claimed the proposed mark as part of the subject matter of Applicant’s invention.  Accordingly, the TTAB found that the patent constituted prima facie evidence that the proposed mark was functional.  In reaching this conclusion, the TTAB noted, among other things, that the fact that the proposed mark comprised less than the entirety of the invention claimed in the patent was not dispositive because it adopted a significant portion of the invention disclosed.

Second, the TTAB considered whether there were advertising materials in which Applicant touted the motorcycle stand’s utilitarian advantages.  Prior to publishing his website, Applicant had not created any advertising, promotional, and/or explanatory materials concerning the configuration for which the registration was sought.  Accordingly, the Examining Attorney had looked at promotional materials published by Applicant’s competitors touting functional features of motorcycle stands that incorporated the design of the proposed mark.  The TTAB dismissed Applicant’s argument that the advertising did not describe, explain, or reference any utilitarian aspects or advantages of the proposed mark.  It found that statements such as “designed to allow a superb sturdy, non-flex performance,” “[e]xtended arm provide (sic) extra leverage,” “[l]ow effort one hand lift,” “extraordinarily easy to use,” “[t]he whole system is so strong, and its geometry so correct, that a bike can easily be rolled around while on the stand,” and “[u]niversal design to fit all standard swing arm sportbikes” all related specifically to the design of the supporting base incorporated into Applicant’s proposed mark.  Accordingly, the TTAB found that the competitors’ advertisements touted the utilitarian advantages of motorcycle stands similar, if not identical, in design to the proposed mark in more than just generalized statements.

Third, the TTAB determined whether functionally equivalent designs for motorcycle stands were available to Applicant’s competitors.  Although Applicant submitted photographs of what it claimed were more than eighty-five alternative designs for motorcycle stands, the TTAB noted that the availability of alternative designs could not convert a functional design to a nonfunctional design.  The TTAB further explained that “a handle connected perpendicularly to a transverse member rigidly connected to horizontally disposed members on a supporting base” was not an arbitrary flourish on Applicant’s motorcycle stand.  Accordingly, the TTAB held that registration of the proposed mark could hinder competitors who would not know if the features that they used in the supporting bases of their motorcycle stands could subject them to a trademark-infringement lawsuit.

Fourth, the TTAB considered whether Applicant’s product design resulted in a comparatively simple or cheap method of manufacturing the product.  Based on the testimony of Applicant’s expert, the TTAB concluded that the alternative designs would have “similar costs for materials, labor, shipping, warehousing and handling.”  Accordingly, the TTAB found that the cost and complexity of manufacturing Applicant’s product design was comparable to some of his competitors.

In sum, having reviewed the Morton-Norwich functionality factors, the TTAB found that the proposed mark had an efficient and superior design for the supporting base of a motorcycle stand and that it was thus functional.

Turning to the alternative issue of acquired distinctiveness, the TTAB found that: Applicant’s sixteen years of use was substantial, but not conclusive or persuasive, considering that its mark was a product design; the product’s alleged position as an industry leader demonstrated the popularity or commercial success of the motorcycle stand, but it did not demonstrate that the purchasing public recognized the product design as a source indicator; Applicant had not produced evidence of substantial sales or significant market share; Applicant failed to provide advertising figures or evidence of advertising materials other than its website; Applicant did not offer any evidence of unsolicited publicity; Applicant’s alleged survey evidence was not supported by scientific evidence; the survey evidence (which the TTAB treated as declaration evidence) was insufficient to show consumers had come to recognize Applicant’s product design as a trademark; Applicant failed to show that the alleged incidents of copying of its product design were due to the copier attempting to confuse consumers rather than exploit a particular product design; and Applicant’s evidence submitted in its reply brief for the first time that it owned a registration for a similar product design for motorcycle stands in the colors gold and red was untimely (the record in an application must be complete prior to filing the notice of appeal), and the registered mark was for the colors gold and red, not for the product configuration of the motorcycle stand.  Accordingly, the TTAB affirmed the alternative refusal of registration on the ground that the product design sought to be registered had not acquired distinctiveness under Section 2(f).

CONCLUSION
If a party seeks to register a product design and owns a utility patent covering a feature of that product design, the party will be forced to bear the heavy burden of showing that the feature is not functional.  The TTAB may also look to see whether an applicant’s competitors have advertised similar products touting the design’s utilitarian advantages, even if the applicant itself has not done so.