Friday, August 06, 2010

TTAB Affirms Refusal of "Closure Cap Configuration Mark" on Functionality and Nondistinctiveness Grounds

In an instructive 29-page decision, the Board affirmed a Section 2(e)(5) refusal to register the product configuration mark shown below (the "closure cap configuration mark") for "closures for medical collection tubes," finding it to be functional. In the alternative the Board found that the proposed mark lacks acquired distinctiveness. In re Becton, Dickinson & Company, Serial No. 77254637 (July 27, 2010) [not precedential].

Functionality: The Board applied the CCPA's Morton-Norwich factors in determining functionality.

(1) A utility patent owned by Applicant indicated that "several features of the closure cap configuration mark are indeed guided by utilitarian concerns." The circular opening in the top allows for a needle to puncture the cap and the ribs on the side provide a gripping surface. [What if the ribs had an unusual shape, like lightning bolts or waves? -ed.] This factor weighed in favor of functionality.

(2) Certain passages in Becton, Dickinson's advertising extolled the utilitarian advantages of several of the design features: the ridges, the special closure design that discourages use of a "thumb roll" opening technique; and the hooded closure. This factor, too, weighed in favor of functionality.

(3) There was no evidence on the factor of whether the design results from a comparatively simple or inexpensive method of manufacture, and so this factor was neutral.

(4) Applicant BD submitted evidence of three alternative designs, but the Board was not impressed. One design had ribs and a lip at the bottom of the cap that were similar in appearance to Applicant's proposed mark. The second was for a product that served a different purpose and so was irrelevant. And the third had many more similarities to BD's design than distinguishing features, and one would be "hard pressed" to characterize it as an alternative design. This evidence showed that:

collection tube closure caps are likely to have ribs or ridges on the side (to allow for a better grip) as well as an opening on the top of the cap (for insertion of a needle to access the specimen through the stopper). These features, as previously explained, are clearly utilitarian. Any variation thereof, e.g. the spacing or shape of the ridges, size of the lip, at least with respect to applicant’s closure cap configuration mark, appears to only be incidental to the overall adoption of those features.

And so the Board found this fourth factor to favor functionality.

The Board concluded that the overall design of the subject configuration "is dictated by utilitarian concerns." Any design features are "incidental" and are "hardly noticeable" in the overall composite.

Acquired Distinctiveness: Of course, a functional configuration is unregistrable, and it is not necessary to consider the issue of acquired distinctiveness, but the Board did so for the sake of completeness.

Applicant bore a "heavy burden" in this case because there was "no evidence to suggest that the configuration of collection tube closure caps (or any other types of caps) are frequently - or ever - used as source identifiers in the relevant industry." Moreover the features of the proposed mark, even if not de jure functional, do perform a function, "and thus consumers may be more inclined to perceive [them] as utilitarian in nature and not as a source identifier."

BD averred that it has used the subject design substantially exclusively and continuously since 1989, that sales have exceeded $80 million, that its annual advertising exceeds $1.5 million, that it features the cap prominently in advertising, and that the cap has won a design award. It also submitted declarations from eleven customers and users.

The Board, however, agreed with the Examining Attorney that this evidence "does not establish that the public views the product configuration as identifying the source of the product rather than the product itself." Long use is not necessarily probative, nor are sales figures without the context of market share. Nor do large sales figures mean that customers recognize the design as a source indicator.

Moreover, the Board noted that lack of "look for" evidence, which is an important consideration with regard to product configuration marks. In fact, none of BD's advertisements display the cap "in such a manner whereby consumers would regard the closure cap configuration as a source indicator." As to the design award, there was little information on which to reach a conclusion as to its significance.

Finally, as to the eleven declarations, they did not provide the shot in the arm that Applicant needed. "[N]early all of the declarations are identical in their relevant substantive paragraphs and do not appear to have been prepared in the signer's own words." [So what? Does the Board realize how hard it is, in the real world, to get anyone to sign a declaration, let alone get that someone to put it in his or her "own words." - ed.] While the declarations were considered, the Board found them insufficient to satisfy BD's high burden of proof.

And so the Board, in the alternative, found that the proposed mark has not acquired distinctiveness under Section 2(f).

TTABlog comment: This is one of many product configuration marks shot down by the Board. I think the Board did a better job than usual in keeping clear the distinction between de facto and de jure functionality.

Text Copyright John L. Welch 2010.


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