Divided CAFC Panel Affirms TTAB's Becton, Dickinson Functionality Ruling

A divided panel of the U.S Court of Appeals for the Federal Circuit affirmed the TTAB's decision (TTABlogged here) refusing registration, on the ground of functionality, of the product configuration shown below for a closure cap for blood collection tubes. The majority ruled that the Board had not committed legal error by weighing the functional and non-functional features of the design against each other in order to determine whether the design is de jure functional. The dissent maintained that this "weighing" of the individual elements was improper because under Section 2(e)(5) of the Lanham Act the design must be considered "as a whole," and further that the Board's factual findings were not supported by substantial evidence. In re Becton, Dickinson and Company, 102 USPQ2d 1372 (Fed. Cir. 2012) [precedential].


In its decision, the Board gave less weight to less prominent features of the design, such as the precise spacing or shape of the ribs, because it found them to be incidental and barely discernable when the mark is viewed. BD challenged two aspects of the Board's functionality ruling: the Board's determination that certain admittedly non-functional features of the mark did not remove the mark from the functionality ban, and that the Board's Morton-Norwich analysis was not supported by substantial evidence. The first issue was a question of law, while the second was a question of fact, reviewable under a more deferential standard.

As to the first issue, the panel majority observed that "one aspect of the Morton-Norwich inquiry is to weigh the elements of a mark against one another to develop an understanding of whether the mark as a whole is essentially functional and thus non-registrable."

[T]he Board committed no legal error by weighing the functional and non-functional features of BD’s mark against each other. Our functionality precedent indeed mandates that the Board conduct such an assessment as part of its determination of whether a mark in its entirety is overall de jure functional. As the court explained in Morton-Norwich, “we must strike a balance between the ‘right to copy’ and the right to protect one’s method of trade identification.” 621 F.2d at 1340.

The majority then considered the Board's factual findings under Morton-Norwich. It found that the Board did not err in relying on statements in B-D's patent specification (not the claims) as support for finding that at least two elements of the design were functional (the circular opening in the top allows for a needle to puncture the cap and the ribs on the side provide a gripping surface). BD's design patents might have provided some support for non-functionality, but the patented designs were not identical to the applied-for mark.

Substantial evidence also supported the Board's finding that BD's advertising touted the utilitarian advantages of the design. Since BD's utility patent coupled with its advertising established functionality, there was no need for the Board consider alternative designs. Nonetheless, the Board did consider and dismiss two proffered alternative designs, a finding that was supported by substantial evidence. As to the fourth factor, the relative cost of manufacture, the evidence was scant and the Board did not err in refusing to weigh this factor.

The panel majority thus concluded that the Board committed no legal error, and that its factual findings were supported by substantial evidence.

Judge Linn dissented. He observed that in Morton-Norwich, the CCPA reversed a finding that a spray bottle design [shown below] was de jure functional due to a lack of evidence that the shape of the bottle and the spray top were dictated by function. The evidence showed that each feature could take on a number of diverse forms.


Judge Linn found the facts here to be very much like those in Morton-Norwich, and he asserted that the Board and the majority overlooked the arbitrary nature of BD'S overall design:

There is no evidence that: (1) the hole in the top must be that particular shape and size for a needle to pass through the opening; (2) the side of the cap must possess horizontally spaced ribs in the precise shape, size, and spacing depicted in BD’s design to provide for increased grip; or (3) the bottom lip must be flanged and tapered in the precise manner depicted to avoid being unsafe.

As to the Board's Morton-Norwich analysis, Judge Linn pointed out that the claims of B-D's patent do not cover the appearance or pattern of the ridges, the flanged lip, or the top opening of the applied-for design. Although BD's advertising does lend support to a finding of functionality, the advertising also supports a finding of non-functionality because it indicates the existence of alternative designs (since the designs shown were not identical to the applied-for mark).


The Board and the majority, according to Judge Linn, "discounted the most probative evidence submitted in this case - the design patents and evidence of alternative designs." The existence of three distinct design patents shows that the shape of the container may be varied and still perform the same function. The two third-party alternative designs were wrongly discarded. And BD's evidence that its design did not result from a cheaper method of manufacture, even if scant, should have been considered.

Thus Judge Linn concluded that the Board committed legal error in failing to analyze the design as a whole, and further that its factual findings were not supported by substantial evidence.


TTABlog comment: It seems to me that nearly every product has some features or elements that are not dictated by function, i.e., that are not de jure functional. The question is where to draw the line for purposes of Section 2(e)(5): how significant must these non-functional features or elements be to avoid the verdict that the design is functional "as a whole?"

Of course, if a design clears the functionality hurdle, it must still clear the acquired distinctiveness hurdle. Will that second hurdle be higher if the non-functionality conclusion is based on relatively minor features? Will look-for advertising have to focus on those particular non-functional features in order to be effective proof? Or, as a practical matter, will large sales and advertising figures carry the applicant over the 2(f) hurdle?

Text Copyright John L. Welch 2012.