Friday, February 09, 2007

CAFC Affirms TTAB's Res Judicata Ruling re Functionality of Bose Speaker Design

Bose Corporation lost again at the CAFC in its attempt to register as a trademark the configuration shown below for "speaker systems." The appellate court affirmed the TTAB's July 2005 ruling that Bose's application was barred by res judicata in light of Bose's earlier failed attempt to register the same mark for the same goods. In re Bose Corp., 81 USPQ2d 1748 (Fed. Cir. 2007) [precedential]. [The TTAB's decision was discussed here at the TTABlog].

Bose contended that "three facts and circumstances have changed and were not considered in the prior proceeding such that application of res judicata in this appeal" would be inappropriate:

  1. In its earlier decision (in 1985) finding the design to be functional and unregistrable, the CAFC did not explicitly consider the 'curved front edge' of the design in its analysis.

  2. The Supreme Court's intervening decision in TrafFix changed the law and "sets forth additional requirements in a functionality analysis."

  3. The Board disregarded additional evidence submitted by Bose, such as the "absence of promotional material that 'touts' the utilitarian aspects of the mark."

The CAFC, however, did not agree. First, the court noted that in its prior ruling, it acknowledged that the Bose design included a "bowed front edge." The "curved" edge that Bose now refers to is that same edge that the court considered.

As to the second point, TrafFix does not affect the prior functionality analysis and, in fact, "provides further support for finding Bose's design functional." Under TrafFix, Bose's expired utility patent provides "strong evidence" of functionality.

Thirdly, while Bose's promotional materials do not tout the advantages of the curved front edge, it is the overall design that is at issue here, and the promotional materials "do clearly promote the functional reason for the overall design."

Three strikes and Bose was out. The CAFC affirmed the Board's application of res judicata.

Text Copyright John L. Welch 2007.


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