TTAB Affirms Functionality Refusal of Plastic Suction Cup Configuration

The Board stuck with the PTO in affirming two refusals to register the product configuration shown below for "plastic suction cups, not for medical purposes:" Section 2(e)(5) functionality, and alternatively, lack of acquired distinctiveness. [The applied-for configuration does not include the outer ring or the stem (shown in dashed lines), but only the three-dimensional configuration of the two concentric rings on the cup portion.] In re Adams Mfg. Corp., Serial No. 85025503 (August 7, 2012) [not precedential].


Functionality: The Board applied the CAFC's Valu Engineering test, which involves consideration of the Morton-Norwich factors:

1. Whether a utility patent exists that discloses the utilitarian advantages of the design sought to be registered;

2. Whether applicant’s advertising touts the utilitarian advantages of the design;

3. Whether alternative designs are available that serve the same utilitarian purpose; and

4. Whether the design results from a comparatively simple or inexpensive method of manufacture.

Examining Attorney James W. MacFarlane maintained that the rings are functional because they diffuse light that passes through the suction cup to prevent damage from sunlight focused on surfaces or objects. He asserted that Applicant's particular configuration has advantages over alternative designs. Applicant conceded that the rings diffuse light, but argued that the its design is not essential to that function nor does it affect the cost or quality of the product.

The Board observed that "if the concentric ring design is essential to the light-diffusing qualities of the suction cup, is less expensive to manufacture, or affects the quality of the product, registration of the design would hinder the legitimate right of others to compete effectively."

The Board found that one of Applicant's utility patents describes the utilitarian advantages of the use of ridges on a suction cup, and the claims of that patent read on the applied-for design because they call for a "plurality of surface deformations" to diffuse light.

Although Applicant owns a design patent on the suction cup, which is some evidence of nonfunctionality, that design patent is "outweighed" by the disclosure of the utilitarian advantages of the design in Applicant's utility patent.

The Board further found that Applicant's advertising "flaunts" the utilitarian advantages of the design.

As to the availability of alternative designs, the Board concluded that the concentric rings design "appears to be superior" to other design options.

The evidence did not show that Applicant's design results from a comparatively cheaper or simpler method of manufacture, and so this factor favored Applicant.

Balancing the factors, the Board affirmed the refusal to register.

Acquired distinctiveness: For purposes of completeness, and assuming that the applied-for mark is not functional, the Board considered the issue of acquired distinctiveness.

An applicant has a "heavy burden" to prove that a product configuration has acquired distinctiveness. Applicant Adams submitted evidence of use of the design for 15 years, with total sales of more than $10 million. However, Adams offered no "look for" advertising, and the three declarations that it submitted (one from a sales representative of Applicant and one from its president) were of limited probative value since the declarants were not purchasers of the goods.

There was no evidence of media recognition of the mark, or unsolicited endorsements, or information as to advertising expenses. Nor was there evidence of market share. And so the Board was unable to assess the impact of Applicant's long use on the purchasing public.

In sum, Applicant failed to carry its heavy burden under Section 2(f).

TTABlog comment: Compare the Board's analysis here with that in recent Hershey case [TTABlogged here], where the Board was careful in recognizing that although a design may be de facto functional, the details or refinements may not be de jure functional: i.e, the scoring on the Hershey bar has a utilitarian purpose, but is not barred from registration by Section 2(e)(5).

I have suggested before that when the Section 2(e)(5) question is a close one, the registration hurdle should be raised even higher on the Section 2(f) question.

Text Copyright John L. Welch 2012.