TTAB Afffirms 2(e)(5) Functionality Refusal of Concrete Block Configuration

Coobs Canada Ltd. sought to register the product shape shown below left, for "concrete blocks," but the USPTO refused registration on the ground of functionality under Section 2(e)(5). Applicant pointed to its "incontestable" registration for the design shown below right, for "concrete blocks for use in constructing retaining walls," arguing that reversal of the instant refusal was mandated. The Board gave short shrift to that argument, and it affirmed the refusal. In re Coobs Canada Ltd., Serial No. 85345427 (November 25, 2014) [not precedential].

Prior Registration: The Board observed once again that each application for registration must be considered on its own record, under the facts as existing at the time registration is sought. In short, the Board is not bound by the decisions of prior examining attorneys. Moreover, it noted, the two designs are not the same, nor are the goods, although the differences "are not great." [But apparently different enough to induce applicant to seek a second registration].

Functionality: The Board applied the CCPA's ever-popular Morton-Norwich factors, which require consideration of the points listed below. [Initially, the Board recognized that a number of applicant's competitors sell rectangular concrete blocks.]

1. The existence of a utility patent that discloses the utilitarian advantages of the design;
2. Advertising by the applicant that touts the utilitarian advantages of the design;
3. Facts pertaining to the availability of alternative designs; and
4. Facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

Utility Patent: The Board looked to a utility patent (for a concrete arch structure) owned by applicant, that discloses "an arch and the method of building it using blocks which 'include[ ] a protrusion extending from the surface, said protrusion being mateable with a corresponding recess in' a similar adjacent block. Claim 1 and Claims 3, 4, 6, and 7 further disclose the use of similar blocks having 'cross-shaped' protrusions."  The drawings showed "cross-shaped" protrusions that prevent slippage of the blocks (see Fig. 3 from the patent).

The Board concluded that the cross-shaped protrusion of applicant's block is "disclosed" in applicant's patent. According to the Supreme Court's TrafFix decision, the existence of a utility patent claiming the design is strong evidence of the design's functionality in a trademark sense. Are the protrusions "claimed" in the patent? In fact, yes: Claim 7 of the patent does claim a "cross-shaped protrusion."

Advertising: Applicant's advertising touted the interlocking feature of its concrete block design: "The copyright protected interlocking key design holds the units together in alignment during and after assembly." [If this design is covered by copyright, why risk a functionality ruling by the TTAB which might undermine the copyright protection? - ed.].

Alternative Designs: Applicant proved that there are various alternative interlocking designs available but because the Board found that the applied-for design affects the quality of the goods, the design is de jure functional for trademark purposes, and  "there is no need to proceed further to consider if there is a competitive necessity for the feature." See TrafFix.

Cost or Ease of Manufacture: There was no evidence of record regarding this factor, and so it was neutral.

With the first two factors pointing away from registrability, the Board concluded that applicant's design is de jure functional and is barred from registration under Section 2(e)(5).

Failure to Function: Of course, a de jure functional product configuration cannot be registered via Section 2(f). Nonetheless, the Board considered applicant's claim of acquired distinctiveness, assuming arguendo that the design was not functional.

Applicant relied on its existing concrete block trademark registration in asserting that the instant design has acquired distinctiveness. The Board noted that the existing registration issued prior to Wal-Mart v. Samara, when acquired distinctiveness was not a prerequisite to trademark registration.The Board, however, pointed out that the goods in the two registrations are not identical, and it concluded that "the alleged mark in this case, if not functional, is so highly descriptive that it is not capable of acquiring distinctiveness."

[I]n this case where the asserted mark is a product design consisting of a three-dimensional rectangular shape of a block commonly used by third parties, with a functional cross-shaped protrusion, ownership of a prior registration — even one over five years old — for a similar, albeit not identical, mark for related goods is not sufficient to establish distinctiveness.

Applicant did not provide sales of advertising figures, and its long use of the alleged mark is not conclusive on the issue. The Board concluded that applicant had failed to prove acquired distinctiveness.


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TTABlog note: Is "incontestable" registration a misnomer? Regardless of whether a Section 15 declaration has been filed, Section 14 provides a statute of limitations that prohibits cancellation of a registration on many grounds. I think its the "exclusive right to use" that is made incontestable, not the "registration." See Section 15.

Text Copyright John L. Welch 2014.