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Federal Circuit Affirms TTAB Decision Finding Design of a Closure Cap for Blood Collection Tubes Functional and Not Entitled to Registration

April 12, 2012

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Last Month at the Federal Circuit - May 2012

Judges: Bryson, Clevenger (author), Linn (dissenting)

[Appealed from: TTAB]

In In re Becton, Dickinson & Co., No. 11-1111 (Fed. Cir. Apr. 12, 2012), the Federal Circuit affirmed the TTAB’s finding that Becton, Dickinson and Company’s (“BD”) design of a closure cap for blood collection tubes (“BD Mark”) was functional and thus not entitled to registration. The Court did not reach the issue of acquired distinctiveness (which BD had also appealed) because, even if the BD Mark had acquired distinctiveness, it would still be barred registration on the ground that it was functional.

BD applied to register the BD Mark for “closures for medical collection tubes,” shown below, claiming acquired distinctiveness under 15 U.S.C. § 1052(f).

The Examining Attorney refused registration on the ground that the cap design was functional and, even assuming it was not functional, the cap design was a nondistinctive configuration. Further, she found that BD’s declaration was insufficient to establish acquired distinctiveness. Considering the four
Morton-Norwich factors, the TTAB concluded that the cap design, considered in its entirety, was functional. In its analysis, the TTAB gave less weight to less prominent features of the BD Mark, such as the exact spacing or shape of the ribs, because it found them to be incidental to the overall adoption of those features and hardly discernible when viewing the mark. The TTAB relied on Federal Circuit precedent, finding that the presence of nonfunctional features in a mark would not affect the functionality decision where the evidence showed the overall design to be functional. The TTAB also concluded that even if the cap design was not functional, BD had not established acquired distinctiveness.

On appeal, the Court found that one objective of the Morton-Norwich inquiry was to weigh the elements of the mark against one another to develop an understanding of whether the mark as a whole is functional and thus nonregistrable. The Court explained that whenever a proposed mark includes both functional and nonfunctional features, the critical question is the degree of utility present in the overall design of the mark. The Court noted that the Morton-Norwich decision stated the importance of the “degree of utility” proposition and explained how the distinction between de facto and de jure functionality gives shape to the Court’s inquiry into the mark’s degree of utility. De facto functionality simply means that a design has a function, like the closure cap in this case. Such functionality is irrelevant to the question of whether the mark as a whole is functional as to be ineligible for trademark protection. De jure functionality, on the other hand, means that the product is in its particular shape because it works better that way. And where a mark is composed of functional and nonfunctional features, whether an 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. A mark with significant functional features should not qualify for trademark protection where insignificant elements of the design are nonfunctional. Thus, the Court held that the TTAB had not committed legal error by weighing the functional and nonfunctional features of the BD Mark against each other.

The Federal Circuit then turned to the TTAB’s functionality assessment under the Morton-Norwich factors, namely, (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) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

The Federal Circuit found that the TTAB did not err in finding that the first factor weighed in favor of a finding of functionality. The Court agreed that one of the claims in BD’s utility patent showed the utilitarian nature of at least two prominent features of the BD Mark: (1) the two concentric circles at the top of the closure cap, which allow a needle to be inserted; and (2) the ribs, which serve as a gripping surface. BD argued that these features, while disclosed in the patent, were not themselves claimed in the patent. But the Federal Circuit held that there need not be a patent claim for the exact configuration for which trademark protection is sought to undermine an applicant’s assertion that an applied-for mark is not functional. Rather, statements in a patent’s specification illuminating the purpose served by a design may constitute equally strong evidence of functionality. Accordingly, the Court found that the TTAB correctly read the patent to indicate that at least two of the important elements of the proposed mark were functional.

Regarding the second Morton-Norwich factor, the Federal Circuit agreed that BD’s advertisements touted the utilitarian features of the BD Mark. BD argued that the designs shown in the ads are not exactly the same type as the BD Mark, but the Court rejected this contention, finding that it was a distinction without a difference. The Court explained that although the spire-like tops of the ribs may not be shown in the ads, the arrangement of the ribs along the side of the top and the same of the opening were sufficiently like the features of the claimed mark to show an identity of functionality between the articles shown in the advertising and the BD Mark’s prominent features. BD also argued that the ads were “look for” ads that were not intended to tout particular features, but rather to cause the viewer to look at one part of the design in particular. But the Federal Circuit found that nothing in the text of the advertisements supported this “look for” concept, and rejected BD’s argument.

As to the third factor, the Federal Circuit noted that if functionality is found based on other considerations, there is “no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available.” Slip op. at 15 (quoting Valu Eng’g v. Rexnord Grp., 278 F.3d 1268, 1276 (Fed. Cir. 2002)). Thus, since the patent and advertising evidence established functionality, the Board did not even need to analyze whether alternative designs existed. Nonetheless, the Board did conduct this analysis and found that one of the proposed designs was irrelevant and the other two could not be characterized as alterative designs because they shared the same utilitarian features of the BD Mark.

Finally, regarding the fourth factor, there was little record evidence before the TTAB to determine whether the cap design resulted from a comparatively simple or inexpensive method of manufacture. The only evidence on this factor consisted of the declarations of two BD witnesses, who both averred that the design features did not lower the cost of manufacture. Because of this scarce evidence, the Court found that the TTAB did not err in refusing to weigh the fourth factor in its analysis. And the Court correctly found that the Morton-Norwich factors supported a finding of functionality.

In sum, because the Board committed no legal error in its assessment of the functionality of the BD Mark, and because substantial evidence supported the TTAB’s findings of fact under the Morton-Norwich factors, the Federal Circuit affirmed the TTAB’s decision.

In dissent, Judge Linn disagreed that substantial evidence supported the TTAB’s conclusion of functionality under the Morton-Norwich factors. In his view, although certain features of the BD Mark were functional, the evidence fell short of supporting a finding that the BD Mark, as a whole, was functional. Judge Linn noted that de jure functionality is directed to the appearance of the design (not the thing itself) and is concerned with whether the appearance is dictated by function. While agreeing with the majority that the degree of design utility must be considered in determining de jure functionality, Judge Linn disagreed with the majority’s approval of the TTAB’s weighing the elements of a mark against one another to develop an understanding of whether the mark as a whole is functional. The proper inquiry, according to Judge Linn, is to examine the degree to which the mark as a whole is dictated by utilitarian considerations or is arbitrary. He found that in focusing on the functional attributes of the individual components, the TTAB and the majority overlooked the arbitrary nature of the overall design of the BD Mark.
Further, because the Board’s analysis of distinctiveness was influenced in material respects by its legally erroneous finding of functionality, Judge Linn also indicated that he would vacate that portion of the TTAB’s opinion and remand for reconsideration.

Summary authored by Stephanie H. Bald, Esq.