Saturday, November 27, 2004

TTAB Nixes Baby Carrier Shape As Functional

In In re Baby Bjorn AB, Serial No. 75751554 (November 18, 2004) [not citable], another product configuration failed to clear the de jure functionality hurdle. Baby Bjorn sought to register the configuration shown here for "soft baby carriers worn on the body," but the Board affirmed the Section 2(e)(5) refusal to register. The Board's functionality analysis, however, left something to be desired.

Applicant described its mark as follows:
"The mark comprises the configuration of a flared, kite-shaped outside front panel of a baby carrier and two vertical stripes placed thereon. The portions of the drawing shown in dotted lines are not part of the mark but are merely intended to show the position of the mark."
After reviewing the applicable law, the Board concluded, in a rather perfunctory analysis, that "the flap design sought to be registered is functional as a whole."
"The curved top of the flap is clearly designed for and promoted as providing support for the baby's head. In addition, the openings near the top of the flap are intended to be used as arm openings for the baby. These openings are clearly functional. Because the flap narrow near the bottom, the baby's legs may easily be placed on either side of the flap."
As to the vertical stripes, even if they are merely ornamental, incidental, or arbitrary, "registration on this application cannot be permitted" because Applicant sought to register the entire flap configuration.

The Board noted the existence of alternative designs for baby carriers, but declared:
"In view of the evidence establishing the functionality of applicant's flap design, these alternative designs do not show that applicant's flap design is not functional."
But did the evidence show anything more that the de facto functionality of the design features? No doubt, the arm and leg openings perform a function, as does the curved top of the flap, but that doesn't mean the design is de jure functional. The question should be whether these particular design features are "essential to the use or purpose of the article or . . . affect[] the cost or quality of the article." TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001). Couldn't these same functions be performed just as well by a baby carrier having a different shape -- e.g., the other carriers on the market?

In my view, the issue should not be whether the design features in question perform a function, but whether Applicant's design performs the functions better than the alternative designs. The Board so indicated at page 7 of its decision:
"The question is not whether there are alternative designs that perform the same basic function, but whether these designs work 'equally well.' Valu Engineering Inc. v. Rexnord Corp., 61 USPQ2d 1422, 1427 (Fed. Cir. 2002), quoting, 1 McCarthy on Trademarks and Unfair Competition, Sec. 7:75, 7-180-1 (4th ed. 2001)."
Unfortunately, the Board failed to analyze whether the features of the Baby Bjorn design perform their functions better than the alternative designs of record. Instead, this Board panel seemed to equate de facto functionality with de jure functionality rather than apply the proper test.

[For the sake of completeness, the Board also considered Baby Bjorn's claim of acquired distinctiveness. It found Baby Bjorn's proofs (12 years of use, over 1 million units sold, and $2 million in advertising expenditures) insufficient, noting that Applicant's advertisements "do not contain any indication that it has promoted the asserted product designs as trademarks, and we have no evidence that consumers have come to recognize applicant's designs as indications of origin.' M-5 Steel Mfg. Co. v. O'Hagin's Inc., 61 USPQ2d 1086, 1098 (TTAB 2001)."]


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