Monday, March 24, 2014

Pennsylvania District Court Upholds TTAB Functionality Ruling On Plastic Suction Cup Configuration

The U.S. District Court for the Western District of Pennsylvania entered summary judgment in favor of the USPTO in a Section 1071 review of the TTAB's decision in In re Adams Mfg. Corp., Serial No. 85025503 (August 7, 2012) [not precedential]. [TTABlogged here]. The Board had stuck with the PTO in affirming two refusals to register the product configuration shown below for "plastic suction cups, not for medical purposes:" Section 2(e)(5) functionality, and alternatively, lack of acquired distinctiveness. [The applied-for configuration does not include the outer ring or the stem (shown in dashed lines), but only the three-dimensional configuration of the two concentric rings on the cup portion.] Adams Mfg. Corp. v. Rea, Civil Action No. 12-1430 (March 12, 2014).

In the district court, the parties filed cross-motions for summary judgment, and Adams submitted evidence in addition to that presented to the TTAB. The court recognized that because new evidence was presented on a disputed fact question, it must make a de novo finding in order to assess the new evidence together with the evidence before the Board.

The court was particularly concerned with the "undeniable tension between patent law and trademark protection of product designs. "In patent law, the purpose is to encourage innovation while inviting competition; the recipient of a patent is granted a monopoly for a limited time, after which the innovation passes to the public for copying and improvement. *** In contrast, the purpose of trademark is not to encourage invention, but to maintain quality by protecting the reputation of the producer for an unlimited time."

Adams obtained a utility patent in 1991 on a "suction cup for use on windows," which claimed the improvement to a suction cup comprising a "plurality of surface deformations ... such that light rays passing through said suction cup will not converge at a single point." The issuance of the patent gave Adams "a production monopoly for the concentric ring suction cup." The patent expired on May  29, 2010, but Adams had meanwhile filed the subject trademark application.

Adams contended that because there are alternative designs that are equally effective at approximately the same cost of manufacture as its two-ring design, registration of its mark would not adversely affect competition.

The court found that the first two Morton-Norwich factors - the existence of a utility patent claiming the design, Adams' promotion of the utilitarian advantages of the design - led "inescapably" to the conclusion that the subject design is de jure functional and barred from registration by Section 2(e)(5).

The utility patent obtained by Adams was "overwhelming evidence" that the applied-for mark was functional.

A previous utility patent therefore adds "great weight" to the already burdensome statutory presumption that the features are deemed functional. In order to overcome this "heavy burden," a person seeking trade dress after an expired patent must show that the feature is not functional by showing that it is "merely an ornamental, incidental, or arbitrary aspect of the device." (citing TrafFix, 532 U.S. at 30.)

The court found that Adam's concentric-ring design "is the essential feature advocated as the 'central advance'" of its utility patent. The two-ring design was not merely incidental or ornamental. It was the "fundamental purpose of the utility patent, advanced to prevent the danger of converging light rays through clear suction cups attached to windows."

Adams cannot claim that the claimed design was an arbitrary flourish. The design of the Adams' suction cup is necessary to its operation, to prevent light passing through the suction cup from converging on a focal point. As advertised, it is the reason the patented device works, and therefore the two ring design is not random or artistic, but is designed to address a specific safety issue.

As to the second Morton-Norwich factor, the court found that Adams had "consistently and repeatedly touted the utilitarian advantages of its proposed mark."

The existence of alternative designs was irrelevant, because the applied-for design was "influenced by its light diffusing quality, as described in the utility patent an in Adams' product literature." In short, the existence of alternative designs does not render the design nonfunctional or incidental.

Finally, the court agreed with the TTAB's determination that the subject design does not cost significantly more than other designs, nor is it significantly less expensive to manufacture.

Balancing the four functionality factors, the Court concluded that no reasonable jury could find that the subject design was not functional.

TrafFix imposes a heavy burden on Adams to establish that its product promotion and ‘045 Patent do not render the two-ring design functional, a burden which Adams has not met in this case. Because the essential feature of the applied-for mark is the same as the central advance of the patent, there is no material issue of fact which needs to be decided by a finder of fact.

In light of its ruling that registration was barred by reason of functionality, the court found it unnecessary to rule on the issue of acquired distinctiveness.

Read comments and post your comment here.

TTABlog note:  Compare this decision to the Hershey candy bar scoring case, wherein the Board reversed a Section 2(e)(5) refusal to register the configuration of a Hershey bar. [TTABlogged here]. Despite the existence of a utility patent, the Board found most significant the fact that many alternative configurations were available to competitors. But was scoring not the "central advance" of that patent?

On April 18, 2014, Adams filed a notice of appeal to the United States Court of Appeals for the Third Circuit.

Text Copyright John L. Welch 2014.


At 5:13 PM, Anonymous David Perlsack said...

In the Hershey case, Hershey was trying to register the over-all configuration of the candy bar, not just the scoring. The over-all design was found not to be functional. Here, Adams was trying to register just the concentric rings.


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