Monday, July 20, 2009

Precedential No. 28: TTAB Affirms 2(e)(5) Functionality Refusal of Bicycle Spoke Design

After an exhaustive analysis, including a review of several pertinent utility patents, the Board affirmed a Section 2(e)(5) refusal of the product configuration mark shown below for "bicycle wheels," finding the design to be functional. In re Rolf Dietrich, 91 USPQ2d 1622 (TTAB 2009) [precedential].

Applicant Dietrich described his alleged mark as follows:

The mark consists of a spoke pattern in a bicycle wheel comprising a hub, shown in phantom lines in the center of the drawing, and a rim, shown in phantom line around the perimeter of the drawing, as viewed from the side along the axis of rotation of the wheel. The spoke pattern appears to consist of a first set of pairs and a second set of pairs of parallel spokes that are spaced apart, wherein each pair of spokes from the first set appears to intersect an adjacent pair of spokes from the second set to define diamond shaped regions between the rim and the hub of the wheel.

The Board began its functionality analysis by observing that a product feature is functional and cannot serve as a trademark "if the feature is essential to the use or purpose of the article or if it affects the cost or quality of the article." TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001), citing Qualitex Co. v. Jacobson Products, Inc., 514 U.S. 159, 34 USPQ2d 1161 (1995), quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982).

Once again, the Board turned to the approach of In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982), which set forth four factors to be considered in determining whether a product design is functional:

(1) the existence of a utility patent that discloses the utilitarian advantages of the design;
(2) the touting by the originator of the design in advertising material of the utilitarian advantages of the design;
(3) facts showing the unavailability to competitors of alternative designs; and
(4) facts indicating that the design results from a relatively simple or cheap method of manufacturing the product.

Utility Patents: In response to Examining Attorney Angela Micheli's request for information, Dietrich submitted 10 utility patents relating to paired-spoke bicycle wheels.

The Board pointed out that it is proper, or purposes of determining functionality, to look not only at the utility patent claims but to the specification or disclosure as well. Third-party patents may provide evidence as well.

After a 15-page, detailed discussion of the patents and of spoked-wheel construction, the Board found it clear that " each of the features which combine to produce the design of the applied-for wheel design, in particular, offset, tangentially laced, paired spokes, and paired flange holes, are covered by one or more utility patents, and that these features clearly 'affect...the quality' of applicant's bicycle wheel." In fact, Mr. Dietrich admitted that the subject spoke pattern "is within the scope of his patents."

Nevertheless, Dietrich contended that the subject design constitutes an "arbitrary flourish" on the wheel design: "arranging the spokes so that, when the wheel is viewed from the side, '...[t]he spoke pattern appears to consist of a first set of pairs and a second set of pairs of parallel spokes that are spaced apart...' is not essential to anything having to do with building a wheel for a bicycle or to how that wheel will perform."

The Board, however, disagreed with Applicant's approach: "The question is not whether the design when viewed from a particular angle causes the wheel to work, but rather whether the arrangement of the spokes that produces or results in the design when viewed at that angle causes the wheel to work."

The applied-for design is dictated by the underlying functional aspects of the physical design of applicant’s wheels, which clearly 'affect the quality' of applicant's bicycle wheels. The spokes in the wheel are laced that way because the wheel works better that way, notwithstanding that the resulting pattern when viewed from a certain angle may also happen to have visual symmetry or appeal.

In light of the "strong weight" to be accorded to utility patent evidence under TrafFix, the Board found the patents sufficient to establish a prima facie case that the subject design is functional.

Touting: Dietrich's website and advertising "specifically touts applicant's paired spoking technology, regardless of the particular pattern used." Moreover, there was no evidence of record that applicant or anyone else promotes the spoking pattern of a bicycle wheel for its visual appeal. The Board concluded that this factor is either neutral or it supports a finding of functionality.

Alternative Designs: The Board pointed out that the existence of other designs "does not detract from the functional character of applicant's particular spoking design." In any case, Dietrich's design is patented and "apparently performs better;" moreover, his advertising suggests that his "wheel designs" perform better than other wheel designs." Finally, many of the third-party designs may be functional as well.

Simple or Cheap Method of Manufacture: The Board noted the statement in one of applicant's patents that a wheel embodying the subject design, i.e., with offset pairing, "is much easier to produce" than a wheel with exact pairing. In any case, even if Dietrich's design were more costly to produce, it still affects the "quality" of the design. And, as stated in TrafFix, a product feature is functional "when it affects the cost or quality of the article."

And so the Board concluded that the purported mark is functional and unregistrable under Section 2(e)(5).

TTABlog comment: I was going to take a bike ride this afternoon, but reading this decision sapped all my energy.

You will remember the golf putter head decision of a few months ago (TTABlogged here). It seems clear that, once a product is covered by a utility patent, a trademark applicant is going to have a heck of a time convincing the Board that the product design somehow qualifies for a trademark registration.

Text Copyright John L. Welch 2009.


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