Precedential No. 2: TTAB Cancels Supplemental Registration for Shape of Culvert Unit Due To Functionality

In a 57-page decision that seemed even longer, the Board granted a petition for cancellation of a Supplemental Registration for the product configuration shown below for "precast concrete bridge unit for constructing a bridge or culvert," finding the design to be de jure functional under Sections 2(e)(5) and 23(c). The Board gave "heavy weight" to five utility patents that showed "the functionality of each of the features claimed to be respondent's trademark," and little weight to "respondent's evidence and speculation about other alternative designs." Kistner Concrete Products, Inc. v. Contech Arch Technologies, Inc., 97 USPQ2d 1912 (TTAB 2011) [precedential].


According to the challenged registration, "[t]he mark consists of the configuration of a one-piece open bottom bridge unit, with parallel spaced vertical side walls connected by an arched top wall and having sharp outside corners and a width substantially greater than its length." The Board noted that Respondent obtained its trademark registration shortly before its patents expired.


The Board plowed through the Morton-Norwich factors, concluding that they "weigh decidedly in favor of a finding that the registered trademark is functional."

First, the Board observed that a utility patent is "strong evidence that the features therein claimed are functional." It found that "each of the elements comprising the trademark is a essential element of the ['314] patent," and that Respondent failed to show that "any element of its described trademark is ornamental, incidental, or arbitrary."

The fact that Respondent also obtained design patents for designs very similar to the registered trademark was "insufficient to counter the significant probative value accorded to the utility patents."

Furthermore, Respondent's advertising and other materials touted the utilitarian benefits of the specific configuration of its bridge units: for example, the arch shape provides an economy of materials for an initial lower cost, it carries heavy loads at low stress levels, its curved top sheds water and slats, it provides large waterway openings with minimum headroom and compact shape, and so forth.

As to alternative designs, the Board saw no need to consider them in light of the heavy probative weight to be given the utility patents. Nonetheless, the Board declared that, even if it did consider alternative designs, it would not rule in Respondent's favor. It then took a stab at explaining away Respondent's testimony regarding the availability of alternative designs.

The Board pointed out that the question is not whether there are alternative designs, but whether there are alternative designs that perform "equally well." The parties submitted much testimony on this factor, "detailing geometric ratios and other numeric values." The Board found Respondent's highly technical expert testimony from a patent lawyer to be "not helpful," and it gave little weight to respondent's "evidence and speculation about other design alternatives."

Respondent pointed to the fact that the utility patent claims recite specific geometric ratios, arguing that there are designs that fall within the scope of the trademark that are not covered by the patent claims. The Board was not impressed:

While the patent claims specific geometric ratios, this fact does not establish the non-functionality of the trademark that lacks the same specificity, because the patent shows that the features claimed as respondent’s trademark are essential or integral parts of the invention and have utilitarian advantages. *** Simply put, respondent’s trademark comprises functional features as set forth in the patent, minus the mathematical ratios (except to the extent that one might view “a width substantially greater than its length” as a substitution for the ratios in a very general sense).

Finally, the Board found that Respondent's design, "due to its structural efficiencies, is less expensive to produce than other less efficient designs that may require more concrete and/or reinforcing materials."

The Board concluded that the design is de jure functional, and it granted the petition for cancellation.

patent drawing left; trademark right
TTABlog comment: Utility patent claims are typically more detailed in defining (claiming) an invention, than is the general description provided in a trademark application for a product shape. But if even one version of the product that falls within the scope of the trademark also falls within the scope of the claims, then that should be enough for de jure functionality. So if one wants to prove functionality of a product design, how about getting an admission that a particular product made according to the patent claims would also be covered by the registered mark? Whether the mark covers other products as well is irrelevant.

In other words, a registered trademark for a product shape may "cover" many different variations of that shape. If any one of them falls within the patent claim, the shape is de jure functional. This has its corollary in patent law: if a patent claim reads on any prior art device, the claim is invalid under Section 102.

Text Copyright John L. Welch 2011.