Monday, November 26, 2012

TTAB Grants Cancellation Petition, Finding Prison Toothbrush Design to be De Jure Functional

The Board granted a petition to cancel a registration for the product configuration shown below, for toothbrushes, finding the design to be de jure functional and therefore barred from registration under Section 2(e)(5) of the Trademark Act. A utility patent disclosed and claimed the design, asserting that it is both safer than a conventional toothbrush for use in prisons and other correctional institutions, and is easier to hold in one hand. Phoenix Trading Inc. dba Amercare Products, Inc. v. Loops, LLC, Cancellation No. 92051757 (November 15, 2012) [not precedential].

According to the registration, the mark "consists of a three-dimensional, overall appearance of a toothbrush featuring a smoothly rounded handle, having a top aspect which is generally barbell shaped with the rear end portion being larger than the front end portion and with a narrow intermediate portion smoothly interconnecting both ends, and a side aspect being slightly bowed and smoothly tapered toward its rear end." [specimen of use pictured below].

Petitioner's claim for cancellation relied entirely on the first Morton-Norwich factor, the existence of Respondent's utility patent (7,334,286) entitled "Toothbrush and Methods of Making and Using Same."

The Board noted the Supreme Court's statement in TrafFix that "[a] utility patent is strong evidence that the features claimed therein are functional." In considering a utility patent, the Board may look to not only the claims of the patent, but the entire disclosure.

The Board compared the patent claim language to the description of the registered, finding a correlation between the three-dimensional overall appearance, the rounded handle, general barbell shape, and bowed and tapered sides.

And so the Board found the design to be unregistrable under Section 2(e)(5), and it granted the petition for cancellation.

TTABlog comment: When the claims of a utility patent are detailed and specific and read on a particular product configuration, there is little room for argument that the design is not de jure functional under Section 2(e)(5). Of course, functionality is only the first hurdle prior to registration of a product configuration; acquired distinctiveness must also be shown.

Text Copyright John L. Welch 2012.


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