TTAB Affirms Eight Functionality Refusals for Elevator Roller Guide Configurations

In a 38-page opinion addressing eight consolidated appeals, the Board affirmed refusals to register eight proposed product configuration marks (one of which is shown below) for "elevator roller guides," finding the designs to be de jure functional under Section 2(e)(5), and if not functional, lacking in acquired distinctiveness. In re Elevator Safety Co., Serial Nos. 76507505 (February 21, 2007) [not precedential].


Functionality: Applying the Morton-Norwich factors (In re Morton-Norwich Prods., Inc., 213 USPQ 9 (CCPA 1982)), the Board began by considering several third-party utility patents. It noted that, under TrafFix Devices, Inc. v. Marketing Displays Inc., 523 U.S. 23, 58 USPQ2d 1001 (2001), the existence of a utility patent is "strong evidence that the features claimed therein are functional," and that one who seeks trade press protection "must carry the heavy burden of showing that the feature is not functional."

Rolling through the various patents of record, the Board found the patent evidence supportive of a finding of functionality. [The TTABlogger shall not bore you or himself with a detailed review of the patents].

Applicant Elsco also rolled over its own foot by touting the utilitarian advantages of the various features discussed in the patents.

Elsco asserted that alternative designs are available, but the mere availability of alternatives cannot avoid a functionality ruling based on other considerations. Moreover, Elsco did not explain why its designs "are not superior to these other designs." Nor did it adequately prove that its designs were not comparatively simple or cheap to manufactures.

In sum, "[b]ecause all or substantially all of applicant's overall designs are dictated by the function they perform," the Board affirmed the functionality refusals.


Acquired Distinctiveness: Of course, once a design is found to be functional, "acquired distinctiveness cannot transform it into a trademark." But for the sake of completeness, the Board considered Elsco's 2(f) evidence. [Reminder: under Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000), a product shape cannot be inherently distinctive, and proof of acquired distinctiveness is required for registrability.]

Elsco's evidence again fell short. Its sales figures and advertising expenditures "are not probative of purchaser reception of the configuration as an indicator of source." Nothing in the record showed that Elsco promoted the alleged marks as source indicators. Two identical, conclusory consumer declarations were "not particularly persuasive" and a supplier agreement that acknowledged Elsco's claim of trademark rights was likewise unpersuasive.

Therefore, the Board ruled that, even if the subject designs were not functional, Applicant Elsco failed to prove acquired distinctiveness.

TTABlog Note: For an outstandingly brilliant discussion of TTAB trade dress law, see this article. [Caveat: I wrote it].

Text Copyright John L. Welch 2007.