Precedential No. 32: TTAB Sustains Opposition to Pipe Boot Design, Finding it De Jure Functional

H & C Milcor sought to register a product configuration mark for "pipe flashing for use in sealing openings for pipe," but AS Holdings opposed on the grounds of de jure functionality under Section 2(e)(5) and, in the alternative, lack of acquired distinctiveness. In a relatively straightforward but instructive ruling, the Board sustained the opposition on both grounds. AS Holdings, Inc. v. H & C Milcor, Inc., f/k/a Aquatico of Texas, Inc., 107 USPQ2d 1829 (TTAB 2013) [precedential].

The Board first considered Opposer's contention that Applicant impermissibly amended its original drawing to that shown above, materially altering the mark. The Board pointed out, however, that such allegations do not constitute a valid ground for opposition. Determinations made by an Examining Attorney regarding examination requirements, such as the acceptability of an identification of goods or of the drawing of the mark, do not constitute statutory grounds for refusal and therefore cannot form the basis of an inter partes challenge to registration.

Functionality: The Board applied the CCPA's Morton-Norwich analysis, recently cited by the CAFC in In re Becton, Dickinson & Co., 102 USPQ2d 1372 (Fed. Cir. 2012).

Under the first Morton-Norwich factor, a utility patent that claims the features of a product design is "strong evidence that those features are functional." Here, applicant's predecessor owned a patent for a pipe boot, which patent claimed a boot having annular step portions of progressively small diameter, the boot being severable along its top edge in order to match the diameter of the pipe. In other words, the cone of the pipe boot may be cut off to fit the particular pipe to be sealed. A number of third-party patents also disclosed the utility of the stepped-cone configuration.

Moreover, another patent demonstrated that the tapered, or "frusto-conical" shape of the pipe boot is functional because it allows the user to cut the pipe boot to the appropriate size smaller than the pipe so that the pipe boot securely seals around the pipe.

The remaining features of the design - a circular rib near the top of each step followed by a short vertical surface - are also functional, as disclosed in third-party patents: the rib arrangement acts as a cutting guide and as a barrier to keep clamps in place.

As to the second Morton-Norwich factor, applicant's catalog touted the utilitarian feature of the pipe boot configuration: "[t]he conically shaped steps ... will securely seal all pipes and the large double thick molded rib at the top of each step offers supreme tear resistance and reinforcement as well as a cutting guide." Applicant conceded that its brochures attributed a cutting guide and "clamp-stopping" function to the ribs. Thus applicant's own advertising "extols specific utilitarian advantages of the applied-for design and is strong evidence that the matter sought to be registered is functional."

As to the third and fourth factors, there was limited evidence regarding alternative designs, and the parties disagreed as to the cost and simplicity of manufacture of the applied-for design. The Board noted that even if the applied-for design is more expensive or more difficult to make, that does not mean it is not de jure functional.

The Board concluded that the overall design of applicant's pipe boot is dictated by utilitarian concerns and is therefore unregistrable under Section 2(e)(5).

Acquired Distinctiveness: For the sake of completeness, the Board considered opposer's claim that, even if the applied-for design were not barred by Section 2(e)(5), it lacked the acquired distinctiveness necessary for registration of a product configuration mark.

An application that seeks registration under Section 2(f), once approved for publication, enjoys a presumption that the examining attorney found that applicant had made a prima facie case of acquired distinctiveness. When that application is challenged in an inter partes proceeding, the challenger has the initial burden to establish prima facie, on the record evidence, that applicant has not met its ultimate burden of showing acquired distinctiveness. Applicant may find it necessary to submit additional evidence to counter the plaintiff's showing.

The Board found that opposer met its initial burden in challenging the Section 2(f) evidence submitted by applicant during prosecution.

That is, based on the entire record, including the patents submitted by opposer and applicant’s own statements and catalog highlighting the utilitarian aspects of the applied-for design, there is ample evidence supporting a prima facie showing that consumers will view the pipe boot design as a non-distinctive product design, rather than a design that has acquired distinctiveness and functions as an indicator of the source of the product. 

Applicant failed to overcome the evidence submitted by opposer. For a product design, applicant must show that "the primary significance of the design in the minds of consumers is not that of the product itself, but rather is the source of that pipe boot in order to establish acquired distinctiveness."

In its application, Applicant Milcor claimed substantially exclusive and continuous use for more than five years, but the weight to be accorded this type of evidence depends on the facts of each case. In light of the evidence showing the utilitarian nature of the design, more evidence is needed.

Applicant also relied on sales and advertising figures, but the sales figures were devoid of context, like market share, and therefore had little or no probative value. The advertising figures were not limited to the subject pipe boot, and in any case they were relatively modest. There was no evidence of "look for" advertising that pointed to any unique design features; when particular features were called out by applicant, it was to tout their utilitarian purpose or advantages.

The Board concluded that applicant had failed to establish acquired distinctiveness.

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Text Copyright John L. Welch 2013.