Trademark Protection in Pentagonal-Shaped Speaker Design Barred by Doctrine of Res Judicata
February 08, 2007
Last Month at the Federal Circuit - March 2007
Judges: Lourie (author), Rader, Schall
[Appealed from: TTAB]
In In re Bose Corp., No. 06-1173 (Fed. Cir. Feb. 8, 2007) (“Bose II”), the Federal Circuit affirmed the TTAB’s denial of trademark registration of BoseCorporation’s (“Bose”) proposed speaker design. Bose filed an application to register its pentagonalshaped speaker design as a trademark. In In re Bose Corp., 772 F.2d 866 (Fed. Cir. 1985) (“Bose I”), the Federal Circuit previously considered registration of the identical mark and held that it was functional and, therefore, not entitled to trademark registration. The Court held that there was a functional reason for the speaker design.
When presented with the identical mark in a later application on appeal, the TTAB affirmed the examiner’s refusal to register the proposed mark, holding that the appeal was barred by the doctrine of res judicata. The TTAB determined that Bose was the same applicant, the Federal Circuit rendered a final judgment, and no conditions, facts, or circumstances had changed.
Bose appealed, conceding that the applicant and the mark in Bose II were identical to the applicant and mark in Bose I, but arguing that the facts and circumstances had changed since Bose I so as to prevent application of the doctrine of res judicata.
In addressing Bose’s first argument that the “curved front edge” of the speaker in Bose II, which was not at issue in Bose I, was neither litigated nor decided in Bose I, the Federal Circuit explained that the Court did address the “curved front edge” as part of the functionality analysis of the Bose design in Bose I. The Court explained that in a footnote in Bose I, it acknowledged that its characterization of Bose’s design as “substantially pentagonal” was not exactly accurate because the “front edge of the subject design is bowed.” Bose I, 772 F.2d at 870 n.3. The Court rejected Bose’s argument that “bowed” had a different meaning than “curved” and explained that the picture in the design from Bose I showed the same curved edge as in Bose II.
The Federal Circuit also rejected Bose’s second argument that an intervening Supreme Court decision altered the functionality analysis. Bose cited to a passage from TrafFix Devices v. Marketing Displays, 532 U.S. 23, 34 (2001), stating that “where a manufacturer seeks to protect arbitrary, incidental, or ornamental aspects of features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, a different result might obtain. There the manufacturer could perhaps provide that those aspects do not serve a purpose within the terms of the utility patent.” Bose argued that the language from TrafFix supported registration of the pentagonal-shaped design because of its “arbitrary” curved front edge. The Court disagreed and held that because Bose had not sought to register solely the curved front edge of the design, and instead sought to register the entire pentagonal-shaped design as the source indicator, the language of TrafFix was inapplicable.
Finally, the Federal Circuit rejected Bose’s third argument that because its promotional materials did not “tout” any utilitarian advantage of the curved front edges, there had been a change in circumstances that should bar application of res judicata. The Court explained that Bose’s design was not just the curved front edge, but was the pentagonal-shaped speaker design, and therefore, promotional materials that discuss the curved front edge alone are not relevant to the functionality of the design as a whole. As discussed in Bose I, the promotional advertisements cited by Bose did discuss the functional reasoning for the overall design of the speaker.
Thus, the Federal Circuit affirmed the TTAB’s decision to bar the registration of Bose’s mark due to the doctrine of res judicata in view of Bose I.