Finding Circular Shape for Beach Towel to be Functional, Chicago Federal Court Rules Registered Trademark Invalid

The United Stated District Court for the Northern District of Illinois held invalid the product configuration mark shown immediately below, for beach towels, finding the circular shape to be functional. [The mark is the subject of a 20-year old trademark registration (Reg. No. 1,502,261)]. Franek v. Walmart Stores, Inc., Civil Action No. 08-CV-0058 (N.D. Ill. March 13, 2009).


Judge Robert M. Dow, Jr. applied the "multi-factored test used by many courts in determining whether a produce feature is functional."

"(i) the existence of a utility patent, expired or unexpired, that involves or describes the functionality of an item's design element; (ii) the utilitarian properties of the item's unpatented design elements; (iii) advertising of the item that touts the utilitarian advantages of the item's design elements; (iv) the dearth of, or difficulty in creating, alternative designs for the item's purpose; and (v) the effect of the design feature on an item’s quality or cost."

The court found that the existence of a third-party utility patent that claimed a circular beach towel constituted "strong evidence" of functionality, and therefore that Plaintiff Clemens E. Franek "must carry the heavy burden" to show the the circular shape of the beach towel is not functional.

Franek's advertisements touting a utilitarian advantage of the round towel -- it permits sunbathers "to reposition their bodies in order to get direct tanning exposure from the sun without having to move the towel" -- supported a finding of functionality.

Franek argued that, if the towel is large enough, a sunbather would not have to reposition the towel no matter what the shape. However, expert testimony indicated that a circular towel is the most efficient shape to serve the purpose since it "uses the least amount of area to achieve the function."

Therefore, the court concluded that Franek's circular configuration for a beach towel is functional and its mark is invalid.

Franek's renewal specimen of use
TTABlog comment: Note that, although the registration had been made incontestable, that did not immunize the mark from a functionality attack. See Sections 14(3) and 15 of the Trademark Act.

Text Copyright John L. Welch 2009.