Precedential No. 10: Finding Aesthetic Functionality, TTAB Affirms 2(e)(5) Refusal of Black Color for Floral Packaging

The Board affirmed two refusals to register a purported mark consisting of the color black applied to packaging for flowers, finding the mark to be aesthetically functional under Section 2(e)(5), and if not functional, then lacking in acquired distinctiveness. Judge David Bucher added a thoughtful concurring opinion, suggesting that we lay to rest the "aesthetic functionality" label and instead focus on "first principles" when considering the registrability of non-traditional "marks." In re Florists’ Transworld Delivery, Inc., 106 USPQ2d 1784 (TTAB 2013) [precedential].

Section 2(e)(5) Functionality: In M-5 Steel Mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086 (TTAB 2001), the Board recognized that there are two forms of functionality: utilitarian functionality and aesthetic functionality. In considering utilitarian functionality, the Board looks first to the test set forth in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982): a feature is considered to be functional mark in the utilitarian sense if it is “essential to the use or purpose of the article,” or if it “affects the cost or quality of the article.” The Federal Circuit, in its analysis, applies the four factors set out in In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 13 n.1 (CCPA 1982).

A design feature that does not meet the Inwood test for utilitarian functionality is still prohibited from registration if the exclusive appropriation of that feature would put competitors at a significant non-reputation related disadvantage. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1165 (1995); TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006-7 (2001).

FTD's specimen of use
The Board agreed with Examining Attorney J. Brett Golden that the color black "serves an aesthetic function" when used for floral packaging; there exists a strong competitive need to use that color in order to convey a particular message to the recipient of the flowers. The evidence showed that color communicates particular messages in the presentation of flowers. The color black may communicate elegance or luxury, or may have significance "on somber occasions, such as in the context of death." And black is traditionally used in Halloween floral bouquets or arrangements.

The Board concluded that the PTO had demonstrated prima facie that competitors in the floral industry need to use the color black in connection with floral arrangements and flowers.

Applicant feebly pointed to non-black packaging used by other flower delivery companies, but the Board noted that there was no indication that such packaging was used for the special occasions referred to by the PTO's evidence.

The Board therefore found that Applicant had failed to rebut the PTO's prima facie case of functionality under Section 2(e)(5).

Acquired Distinctiveness: For the sake of completeness, the Board also addressed the refusal to register on the ground that the mark lacks acquired distinctiveness.  Of course, a single-color mark cannot be inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000); see also Qualitex, 34 USPQ2d at 1162-63. Moreover, an applicant bears a "difficult burden" to establish acquired distinctiveness for such a mark. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 424 (Fed. Cir. 1985).

Applicant submitted a declaration, dated January 23, 211, from an officer of the company, asserting that it used the mark since December 2008, sold more than 1.8 million units of "the goods," included a "look for" statement (“[l]ook for the black box as a symbol of high quality FTD flowers") on its website and in marketing materials, and had millions of visits to its website. The Board, however, was not impressed. The "black box" was depicted along with designs and wording, which the consumer might also look to as source indicators. The "look for" statement was displayed for only one year, there was no indication of how many mailers were sent out, and some portion of the website visits occurred when the "look for" statement was not displayed.

The Board also pooh-poohed four customer declarations submitted by applicant, in which the customers claimed that they recognize the color black as a source indicator for applicant. The declarants did not, however, account for the other matter appearing on the boxes, there was no indication of the location of the individuals (raising a doubt about geographic diversity), and most importantly for the Board, a mere four statements is simply an insufficient number to be probative on this issue.

And so the Board affirmed the refusal under Section 1, 2, and 45, finding a lack of adequate proof of acquired distinctiveness.

Concurring Opinion: Judge Bucher proposed that, when considering non-traditional source indicators, we resist the urge to force each case into a pre-existing cubbyhole. Applying some already established label that (as in the case of the label "aesthetic functionality") may yield more confusion than enlightenment. He would instead apply "first principles drawn from our magnificent trademark jurisprudence."

[W]hen one is faced with a putative source indicator such as the configuration of a product or its packaging or any product feature that enhances the attractiveness of the product, it is logical to ask as a first question whether the public interest is best served by refusing to permit a particular feature to be taken from the “public domain.” This is, at its root, a public policy question, and turns on whether the non-traditional indicator should remain permanently available for competitors to use freely. If one sifts through the relevant case law, it is clear that the best enunciation of this standard is one focused on whether competitors can still compete effectively, or contrariwise, whether they will suffer a significant non-reputational disadvantage. [footnoted citations omitted].

Judge Bucher noted that the Morton-Norwich type of analysis works well in determining whether a product configuration will affect a competitor's ability to compete. But as to color cases, not so much.

Nonetheless, in every case, the first principles remain the same. Especially when confronting product features that enhance the attractiveness of the product (e.g., trade dress, surface design and overall color), being forced in advance to choose a label (“utilitarian functionality,” “aesthetic functionality,” “ornamentation,” etc.), presents the possible peril of stumbling badly over first principles.

This "first principles approach" will enable a tribunal to determine functionality while avoiding "the ongoing debate among the circuit courts of appeal as to whether the tortured concept of “aesthetic functionality” has morphed far enough from Pagliero to retain some viability." [Pagliero et al. v. Wallace China Company, Limited, 198 F.2d 339, 95 USPQ 45, 48 (9th Cir. 1952).]

As to acquired distinctiveness vel non, assuming that the putative source indicator has cleared the functionality ("first principles") hurdle, the attention turns away from the competitors to the consumers: "whether permitting encroachment on this (arguably) reputation-based feature that the public may well have come to associate with a single source will be subject to source confusion – a significant reason to provide protection for any distinctive mark."

In sum, Judge Bucher's approach would be to avoid the "functionality" and "ornamentality" labels altogether, and instead apply "first principles:" initially considering competitive effects in order to determine "capability," the refusal being grounded on Sections 1, 2, and 45, and then, if capability is established, assessing the indicia of acquired distinctiveness under Section 2(f).

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TTABlog comments: I agree with Judge Bucher that the label "aesthetic functionality" causes more problems than it's worth. The brouhaha over the Betty Boop case in the Ninth Circuit is a recent example. But Judge Bucher's return to first principles would cause many heads to explode, particularly those of practitioners who need handy labels - not to mention bloggers who want to categorize issues in convenient cubbyholes. With that in mind, I suggest dividing Section 2(e)(5) functionality into to categories: product configuration functionality, and non-product configuration functionality. As to the "aesthetic functionality" label, forget it.

Turning from the theoretical to the practical side of trade dress protection, I recommend Elizabeth W. King's new article, "Protecting packaging and product designs as trademarks," Intellectual Asset Management, May/June 2013.

Text Copyright John L. Welch 2013.