TTAB Enters Summary Judgment Under Section 2(e)(5), Cancelling Registration for Baseball Training Glove Design Due to Functionality
The Board granted Petitioner Rawlings' motion for summary judgment in this cancellation proceeding directed to a trademark registration for the product configuration shown below for "baseball and softball training apparatus, namely a glove used for catching practice." The Board found the design to be, as a whole, functional under Section 2(e)(5). A (now-expired) utility patent owned by Registrant Birmingham, which patent claimed the triangular shape for the device, proved to be fatal to Birmingham's case. Rawlings Sporting Goods Company, Inc. v. Peter C. Birmingham, Cancellation No. 92051353 (July 26, 2011) [not precedential].
The purpose of Birmingham's device is to assist in teaching a baseball player proper fielding technique: catching the ball "with two hands." [Not such a good idea for catchers, however. They use the one-handed technique popularized by Johnny Bench].
Rawlings pointed to a now-expired utility patent that Birmingham obtained, disclosing and claiming "the functional advantage of the triangular shape of the training glove." Birmingham never told the Trademark Examining Attorney of the existence of the patent.
The claims of the patent specifically include "a triangular shaped ... pad having a planar front ..., having hand attachment means on the back surface thereof for encircling the thumb and first three fingers of the glove hand which will align the middle finder along an axis of the triangle with the apex of the pad being positioned over the wrist." Of course, under TrafFix, the existence of a prior utility patent is "strong evidence that the features claimed therein are functional."
Birmingham contended that the design in the trademark registration is only one of may possible shapes for the training device. He pointed to the standard, boilerplate language found in his and, in one form or another, in virtually every utility patent: "the invention is not limit to [the preferred] embodiment and many modifications and variation" are possible "without departing from the scope and spirit of this invention."
Not so fast, said the Board:
[N]otwithstanding respondent's position that the shape was somehow "disclaimed" in the patent, the shape is not considered "disclaimed" in considering the features disclosed, claimed and described and claimed in the patent to determine whether the shape is functional for purposes of trademark registrability. The triangular configuration, described in the patent as the preferred embodiment, is now the subject of respondent's Registration No. 3019645.
The expired utility patent demonstrates the utilitarian advantages of the triangular design. The shape of the pad as disclosed and claimed in the patent is not arbitrary or ornamental, or incidental to the design and function of the training glove. Instead, it performs an essential function for the invention/product. Thus, the patent establishes that no genuine dispute of material fact exists and that the design, as a whole, is the functional configuration of the goods.
And so the Board granted the petition for cancellation.
TTABlog comment: Dare I say that the TTAB hit a home run with this one? This is not one of those cases where the patent claim includes broad, functional language that could be met by a product having various shapes. Here the claim dictates the shape. Ballgame over!
Text Copyright John L. Welch 2011.