CAFC Hears Oral Argument in Mag Instrument v. Brinkmann Appeal Re Functionality
The CAFC heard oral argument [mp3 here] yesterday in Mag Instrument, Inc. v. The Brinkmann Corporation, Appeal No. 2011-1052. The TTAB decision is discussed in a TTABlog post here. Mag's appeal concerned the functionality of the two bands that encircle the the flashlight, which bands are used in re-charging the device. [Update: affirmed per curiam, November 9, 2011 under Federal Circuit Rule 36].
Brinkmann maintained that this configuration is functional because the rings are "necessary to charge the flashlight and the reason that the charging feature works." The Board agreed.
The Board reviewed an expired utility patent and concluded that "the features of [the proposed mark] are fundamentally covered by the expired patent," and that this patent "discloses the utilitarian advantages of the underlying mark, i.e., the two bands."
On appeal, Mag argued that the location of the bands and their contrasting color are not functional. It contended that the Board had over-emphasized the importance of, and had misread, the expired patent, because the patent does not claim or even disclose dual bands.
Brinkmann argued that the contrasting bands are functional because the metallic bands, used for charging the flashlight will by necessity be separated and surrounded by different material in order to insulate one band from the other. Brinkmann should not have to make the bands and the insulating material look the same in order to avoid Mag's purported trademark.
Mag countered that there is no record evidence that the contrasting color of the bands versus the flashlight body, or the location of the bands, is functional.
TTABlog comment: No one discussed the conceptual difference between de facto functionality and de jure functionality. Of course the bands are de facto functional - they perform a function. But do they have to be contrasting in color from the flashlight case? Do they have to be in the location where Mag put them? If not, then maybe the proposed mark is not de jure functional, and the Board should be reversed.
Text Copyright John L. Welch 2011.