TTAB Reverses Section 2(e)(5) Functionality Refusal of "3-click" Sound Mark for Eyeglasses

The Board reversed the PTO's Section 2(e)(5) refusal to register on the Supplemental Register, a sound mark for "eye glasses; optical glasses; [and] sun glasses," the mark comprising "a series of three, regularly spaced, repeated clicks, wherein the clicks resemble the sound of a small object striking another metal object." [specimen .mpeg here]. The Board found that the clicks, made by the eyeglass hinges, were not 'essential" to making a resistance hinge, and therefore were not de jure functional. In re Sutro Product Development, Inc., Serial No. 77418246 (August 1, 2013) [not precedential].

The Examining Attorney maintained that the proposed mark provides a functional advantage and therefore is barred from registration by Section 2(e)(5):

Because applicant's goods involve a ratcheting mechanism that involves metallic components rubbing against each other to provide resistance, the sound produced is merely a natural byproduct of the friction created by the functional hinge, and any similar design will naturally produce a similar or even identical sound. *** [E]liminating such a sound would require an additional step in the manufacturing process...."

The Examining Attorney also pointed to applicant's advertising, claiming that it touted the functionality of the proposed mark by stating that its "Three Click Hinge" is "10X stronger than a conventional hinge."

The Board noted that the PTO did not claim any functionality in the "click" sound itself, or the number of clicks. Instead the PTO argued that the clicks were a "natural byproduct" of a functional feature, and therefore cannot be registered. The Examining Attorney could cite no case law in support of his "byproduct" theory. However, if the "byproduct" sound were "essential" to the use or purpose of the goods, then it would be de jure functional, under the traditional analysis. [TTABlog comment: if a sound were a natural byproduct of a de jure functional feature, then I think the sound too would be de jure functional.]

The Board, as usual, applied the Morton-Norwich factors. Two third-party utility patents disclosed resistant eyewear hinges, neither mentioning sound. The absence of any utility patent covering the sound sought to be registered is, according to the Board, a factor in applicant's favor. [TTABlog comment: Does this mean that an Examining Attorney must conduct a thorough patent search lest the first factor be weighed in favor of the applicant? Would a party in an ex parte proceeding face the same burden? Does the Board realize how difficult and expensive a patent search can be?]

As to applicant's advertising, the Board found no statement that applicant's hinge is superior because of any feature that creates sound.

The designer/inventor of the three-click hinge provided a detailed declaration averring that he could have designed a hinge that made no appreciable sound, while still providing the hinge's other features. Moreover, it would not add cost to create variations with no sound, or a different number of clicks.

Applicant agreed that the 3-click sound is a "natural byproduct" of the particular camming mechanism of its hinge, but it denied that competitors would be placed at a competitive (non-reputation related) disadvantage if the subject sound mark were registered.

Applicant's arguments clicked with the Board, the decision hinging on the designer/inventor's declaration:

As spelled out by applicant, the hinges in its eyeglasses could have been designed to not produce any sound, yet the hinge would still have all of its functional features. The sound, in and of itself, has no appreciable effect on the hinge’s resistance to movement. Thus, while the hinge movements produce the sound, the sound is not dictated by functionality.

And so the Board reversed the refusal.

TTABlog comments: The Board noted that a sound emitted in the course of a product's ordinary function cannot be inherently distinctive. See, e.g. In re Powermat Inc., 105 UPSQ2d 1789 (TTAB 2013) [chirp sound of battery charger]. But that does not mean that the sound is de jure functional.

On a pedantic note, I think that, In the trademark context, one should be careful in using the term "functional" when one merely means that a particular product feature has a function. Many product features have a function and thus are de facto functional.  If a feature is unregistrable under the Morton-Norwich, it is labelled de jure functional. I think it better, in order to avoid confusion, to say that a feature "has a function" until one decides whether it is de jure functional or merely de facto functional. Or maybe say it is "useful," or "has utility."

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Text Copyright John L. Welch 2013.