The Board affirmed a refusal to register the product configuration shown below, comprising the arrangement of various components on a portable interface unit for "hot bonders," finding the purported mark to be functional under Section 23(c). The Board concluded that the "overall design of Applicant's configuration is 'essential to the use or purpose of the article'" [TrafFix
] and therefore that the configuration as a whole is functional and not registrable. In re Heatcon, Inc.
, Serial No. 85281360 (September 29, 2015) [precedential].
Heatcon sought registration of the design on the Supplemental Register, for "equipment for controlling and recording the application of heat and pressure in a process for fabricating bonded composite materials, namely, woven glass, aramid fibers and carbon fabric, and adhesives bonds to composite or metallic components." It described the mark as a "three dimensional configuration of the arrangement of the HCS9200M Composite Repair Set's (Hot Bonder's) user interface components."
Section 23(c) permits registration on the Supplemental Register, of a mark that "may consist of any ... configuration of goods ... that as a whole is not functional ... but such mark must be capable of distinguishing the applicant's goods or services." However, the Board observed, "the case law applying Section 2(e)(5) and addressing functionality prior to the 1998 amendments to the Trademark Act, which added Section 2(e)(5) and amended Section 23(c), remains equally applicable because the issue, functionality, is the same."
The Board applied that old favorite, the CCPA's Morton-Norwich
test, in assessing functionality.
Under the first Morton-Norwich
factor, a utility patent that claims the features of a product design is "strong evidence that those features claimed therein are functional." Third-party patents may be relied on as evidence; ownership of the patent is irrelevant. [i.e.
, no hearsay problem. But why not? - ed.
]. Examining Attorney Tracy Cross cited a third-party utility patent for a "Portable Curing System for Use with Vacuum Bag Repairs and the Like," which claimed a carrying case and various components. She pointed out that both the patented device and Heatcon's unit locate "the display screen and printer opposite the power input port and vacuum connector ports [so that] [t]operator can connect cords, cables and/or wires away from the user and avoid entangling the connections or hindering access to the other sensors, buttons and components of the panel."
Heatcon argued that the utility patent was irrelevant because the patent claims did not reference the arrangement of the components, and the patent figures showed "one possible arrangement of a virtually infinite number of possible arrangements." However, the Federal Circuit has pointed out that a utility patent may be relevant even though it does not claim
"the exact configuration for which trademark protection is sought." A patent's specification
"illuminating the purpose served by a design may constitute equally strong evidence of functionality." Citing In re Becton, Dickinson and Co.
. [See comment below]. Here, the specification of the cited patent explained the utilitarian advantages of the particular arrangement of the features.
Figure from cited patent
The Board therefore found that the cited patent "discloses the utilitarian advantages of the various parts ... of an interface for a portable hot bonder. In view of the "strong weight" to be accorded patent evidence under TrafFix
, the Board found the cited patent to be sufficient to establish a prima facie
case of functionality. [Utility patent = game over - ed.
As to the second Morton-Norwich
factor, Heatcon's advertising references to "ergonomic design," "convenient hook up," and "circuit breakers on front panel" were probative as to the functionality of Heatcon's applied-for mark. Third parties touted Heatcon's display, and competitor's promoted the convenience of similar arrangements. The Board concluded that the advertising evidence supported a finding of functionality.
Turning to the third Morton-Norwich
factor, Heatcon submitted several third party products as evidence of alternative designs. The examining attorney pointed out, however, that these designs do not necessarily provide the same utilitarian benefits of Heatcon's design: hot bonders lacking a raised display are not alternatives for hot bonders with a raised display, and single zone bonders that have a display screen on the side are not dual zone hot bonders. The examining attorney also pointed out that industry and safety standards play a roll in the arrangement of the components for Heatcon's product.
Noting that there is no need to consider alternative designs if functionality is found based on other considerations, the Board concluded that the alternative examples proffered by Heatcon did not support a finding of non-functionality.
As to the fourth Morton-Norwich
factor, there was insufficient evidence for the Board to make a determination as to the comparative costs of different designs. In any case, even if Heatcon's interface is not comparatively simple or inexpensive to manufacture (as Heatcon asserted), that does not mean that the design is not functional.
Heatcon argued that, although the arrangement of its interface is composed completely of functional parts, the arrangement by itself is not functional. Not so, said the Board.
[T]he functional features far outweigh any nonfunctional aspect of the arrangement which is incidental and hardly discernible as a separate element from the functional parts. While we do not foreclose the possibility, it is difficult to imagine a situation where the sum of a configuration’s entirely functional parts adds up to a design capable of indicating the source of the product. In any event, the case before us presents no such exception.
Moreover, the Board observed, even if it did not weigh the functional features against the asserted non-functional arrangement, the record established that "the arrangement of significant functional features is directed by utilitarian concerns to make the device easier, safer, and more efficient."
The Board concluded that the examining attorney satisfied her burden to make out a prima
case. Heatcon failed to submit sufficient evidence to overcome that prima facie
case by a preponderance of the evidence. It found that the "overall design of Applicant's configuration is "essential to the use or purpose of the article" [TrafFix
and therefore the configuration as a whole is functional and not registrable.
The Board also affirmed a refusal to register on the ground of Applicant Heatcon's failure to comply with the examining attorney' requirement for a new drawing. Although the finding of functionality rendered the drawing issue moot, the Board chose to discuss the issue. It agreed with the examining attorney that, "in view of the functionality of the individual components, the requirement to depict them in broken lines is appropriate." It disagreed with Heatcon's assertion that such a depiction would be "unclear."
[t]o the extent it would be “unclear” the requirement to insert a statement in the description of the mark identifying these elements and declaring that these elements are not part of the mark and that they serve only to show the position of the mark on the goods is also appropriate.
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Quite a job by Examining Attorney Tracy Cross in gathering evidence, don't you think?
The Board noted that, according to the TMEP, the terms de jure
functional and de facto
functional were "retired" at the USPTO in 2002. Apparently the CAFC did not get the message, since it used those terms, and explained the differences, in In re Becton, Dickinson and Co.
, 102 USPQ2d 1372 (Fed. Cir. 2012). I found those two terms useful in this March 2015 TTABlog
posting entitled "Some Thoughts on de facto and de jure Functionality
Text Copyright John L. Welch 2015.