TTAB Finds Design of "MOI" Putter Head Functional Under Section 2(e)(5)

I gave up golf years ago out of frustration: I simply could not get through the windmill! That's when I turned to patent law for excitement. The Board took up both patent law and golf in a somewhat frustrating decision affirming a Section 2(e)(5) refusal to register the product configuration mark shown below for "golf clubs," finding the design to be functional. Relying mainly on several utility patents owned by Applicant Karsten, the Board ruled that the design of the putter head "increases the moment of inertia of the putter head, thereby rendering the design functional." In re Karsten Manufacturing Corporation, Serial No. 77170356 (April 15, 2009) [not precedential].


The Board applied the standard functionality analysis set forth by the CCPA in In re Morton-Norwich Products, Inc., 213 USPQ 9 (CCPA 1982). It first considered the utility patents owned by Karsten, since

[a] prior patent ... has vital significance in resolving the trade dress claim. A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental or arbitrary aspect of the device. TrafFix Devices Inc. V. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1005 (2001).

Karsten did not dispute that its patent claims "recite features of the configuration for which registration is sought," but it argued that the particular shape of its putter head was arbitrary:

[T]he arms of applicant’s golf club head are functional because they have mass and are located away from the club face for increased perimeter weighting (MOI), but the recurved shape, taper and step in the arms is arbitrary. Likewise the through-holes of applicant’s golf club head are functional because they have no mass and therefore allow the mass that would have been present to be redistributed to other parts of the club head for increased perimeter weighting. The through-holes are, however, arbitrarily shaped, and therefore non-functional for the purpose of trademark registration.

Karsten contended out that "nothing in the patent suggests that the arms must be curved just so or that the through-holes must be a particular size or shape to accomplish the claimed improvement."

The Board, however, sweepingly asserted that the utility patent claims cover "the very same functional features of the new putter head that, as set forth in the description, comprise the applied for mark." [That's debatable - ed.]


The Board also relied on third-party advertisements regarding MOI [Moment of Inertia] putters, but Karsten contended that those advertisements contain only "generalized statements concerning the geometric shape and the perimeter weighting" that are "descriptive of the function on any MOI putter."

Karsten provided 18 alternative designs for MOI putters, but the Board tossed them aside: "Although this evidence shows a variety of designs that are specifically different, all are similar in design and involve the same utilitarian features: perimeter weighting accomplished by through-holes to increase moment of inertia." Moreover, according to the Board, "the number of alternatives is relatively limited." [Not a very compelling argument by the Board, I think. The alternative designs may perform the same function, but that's a different question than whether the designs are functional in a trademark sense - ed.]

And so, the Board concluded that Karsten's design is functional under Section 2(e)(5) and hence unregistrable as a trademark.

three alternative designs

TTABlog comment: I initially found the Board's decision unconvincing, and was prepared to bloviate about de facto versus de jure functionality: i.e., just because the claims of a utility patent cover (or "read on") a product does not mean that every different design or configuration of the product is functional for trademark purposes.

Then I looked at Karsten's U.S. Patent 7,052,411, entitled "Golf Putter Head With A Visual Alignment Aid And An Increased Moment of Inertia." Claim 13 of the patent is of particular interest [emphasis and numerals added]:

• A golf putter head comprising:
• a face member [12] having a heel end [14], a toe end [16], and a front surface [18] arranged for impacting a golf ball;
• a first arm [32]extending substantially rearwardly from the heel end of said face member;
  
• a second arm [34] extending substantially rearwardly from the toe end of said face member;
• a central member extending rearwardly from said face member intermediate the heel and toe ends thereof, said central member including first and second wings [38, 40] connected to said first and second arms, respectively, rearwardly of said face member;
• said central member [36] and said first arm defining a first opening therebetween adjacent the heel end of said face member;
• said central member, and said second arm defining a second opening therebetween adjacent the toe end of said face member;
• said first and second arms each having an outer generally convex edge and an inner generally concave edge;
• said first and second wings each having an outer generally concave edge;
• the outer generally convex edge of said first arm [32] merging with the outer generally concave edge of said first wing [38] and forming a first outwardly projecting portion located rearwardly of the heel end of said first face member;
• the outer generally convex edge of said second arm [35] merging with the outer generally concave edge of said second wing [40] and forming a second outwardly projecting portion located rearwardly of the toe end of said first face member;
• the inner generally concave edges of said first and second arms defining portions of said first and second openings.

In short, the language of claim 13 defines to a significant extent the shape of Karsten's putter head, including the concave/convex shape of the outer edges and the shape of at least a large part of the through-holes. The applied-for design incorporates those shapes. So I changed my mind and concluded that the Board reached the right result after all. Do you agree?


TTABlog sidebar: By the way, I'm working on a patent application on my new invention: a method for stroking a stationary round object with the flat face of a hand-held implement to cause said object to roll unobstructedly through an opening periodically blocked by rotating obstacles, comprising (1) measuring the distance between said sitting round object and said opening; (2) dividing said distance by the speed of the round object when stroked to determine the amount of time the object will travel before reaching the opening; (3) measuring the amount of time that elapses between a first rotating obstacle blocking the opening and the next rotating obstacle blocking the opening; and (4) determining from said times an appropriate moment to stroke the round object so that it reaches the opening when an obstacle is not blocking the opening. [I'm still refining the language of step 4 but I wonder, am I just tilting at a windmill?]

Text Copyright John L. Welch 2009.