Monday, December 24, 2012

TTAB Reverses Section 2(e)(5) Functionality Refusal of Wavy Exercise Hoop

Concluding that the PTO failed to make out a prima facie case of functionality under Section 2(e)(5), the Board reversed a refusal to register the product configuration shown below, for "exercise and toy hoop." And even if the PTO had established a prima facie case, Applicant's design patent rebutted the PTO's evidence. In re Kun Yuan Lin, Serial No. 85065887 (December 14, 2012) [not precedential].

The Board first recited the "traditional rule" or "Inwood formulation" for trademark functionality: a product feature is functional "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." The purpose of the functionality doctrine is to "encourage legitimate competition by maintaining the proper balance between trademark law and patent law." 

If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).

The Board next looked to the CAFC's Morton-Norwich factors, keeping in mind that if functionality is established under Inwood, further inquiry regarding the Morton-Norwich factors is unnecessary.

Applicant's product is a weighted sports hoop having a smooth outer circumference, but an inner surface that "is not perfectly circular in that it has an undulating surface." The Examining Attorney contended that the "way ridges" of Applicant's hoop function to massage the user and help maintain the hoop on the user's body. He pointed to Applicant's advertising and to its design patent, entitled "Massage Hoop." [Of course, that just means that the design or configuration is de facto functional: i.e., it performs a function. Design patents are meant to cover things that have a function. But is the shape or design de jure functional? Ah, that is the question! ed.].

Applicant countered by addressing the four Morton-Norwich factors, asserting out that there has never been a utility patent on the subject design, that his advertising was mere "puffing," that there are at least seven competing products on the market that achieve the same function, none of which use the "wavy ridges" design, and that the cost to make his design is essentially the same as for other designs. 

As to the design patent, Applicant argued that its existence "suggests, at least presumptively, that the design is not de jure functional," citing Morton-Norwich.

The Board found that only one of the Morton-Norwich factors supported the PTO's position: in his advertising, Applicant made "vague references" to the massaging effect of the hoop and the role of the wavy ridges in helping maintain the hoop on the body. But the Board found these references insufficient to show that Applicant's design is "essential to the use or purpose of the article" or "affects ... the quality of the article" under Inwood. It was not clear to the Board that either the massaging effect or the "holding-up" effect were "essential to the use" of the product. Furthermore, the Board observed that any irregularity on the interior surface (such as a textured surface) would likely product the same result.

Advertising for the third-party hoops referred to the massaging effect and the maintenance function, but customer commentary focused on the exercise function of the hoops. In short, this evidence indicated that exercise, not massage, is the primary purpose of the hoops, and that the  maintenance effect is little more than incidental. Moreover, the existence of several alternative configurations suggested that Applicant's particular configuration is not essential to the use or purpose of the goods.

We find that all of the evidence that may tend to indicate the functionality of applicant’s configuration is not sufficient to make out a prima facie showing that applicant’s mark is functional under the Inwood standard. However, even if we assume that the examining attorney has made out a prima facie showing of functionality, it is sufficiently rebutted by the applicant’s design patent.

Finally, the Board noted that the existence of the design patent did not dispose of the functionality question. "Design patent applications, as opposed to trademark applications, are examined under different standards of functionality and are issued in furtherance of different public policies." The USPTO, "on a record that may well have included more evidence than we have before us," found the design "not dictated by function alone." "We have before us no evidence on the basis of which we could find otherwise."

And so the Board reversed the refusal.

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TTABlog comment: Good job by the Board, except maybe for that last part about design patents. Having filed and secured many design patents, I can attest that the PTO's examination of design patent applications is typically minimal. I can't recall every having a question raised regarding "functionality." So it is quite unlikely that the PTO had more evidence during its examination of the design patent application than it did with regard to the trademark application.

As I understand it, as to "functionality," a design patent is granted unless the design is "dictated by function." That is a much higher standard for "functionality" than the trademark standard. Design patents are meant to cover utilitarian things, so by definition the subject of a design patent will have utility - i.e., will have a function. Only when there is absolutely no room for design choice should a design patent be refused on the ground of "functionality." If alternative designs exist, then there is no functionality refusal of the design patent application. On the trademark side, some designs may be better than others, and even though a better design may be the subject of a design patent, it may be refused trademark registration under Section 2(e)(5) as de jure functional.

Note that the quotation above regarding the balance between patents and trademark relates to utility patents, not design patents. This case presents an example of a product configuration that is both covered by a design patent and is eligible for trademark protection. [The PTO had already accepted Applicant's 2(f) evidence, in case the Board reversed the functionality refusal]. Maybe there should be a federal right to copy when a design patent expires, but there isn't.

By the way, did you know that HULA-HOOP was registered as a trademark for plastic toy hoops fifty years ago? The registration is owned by Wham-O. - ed.].

Text Copyright John L. Welch 2012.


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