Friday, March 13, 2015

TTAB Affirms Section 2(e)(5) Functionality Refusal of "Bladeless" Electric Fan Configuration

The Board affirmed a Section 2(e)(5) functionality refusal of the product configuration depicted below, for electric fans. The proposed mark comprised a "three-dimensional configuration of [a] circular ring on top of a column-shaped base with inlets and buttons." In re Dyson Limited, Serial No. 85708119 (March 11, 2015) [not precedential].

Applicant Dyson's product is a so-called "bladeless" fan, in which an impeller moves air that enters the base and pushes the air into the body of the circular ring or nozzle. A slit or "mouth" in the nozzle emits the air so that it flows along the inner surface of the nozzle. Because of the contour of the nozzle, air is drawn forward from behind the nozzle through the empty circular space, and combines with the impelled air to cool the user.

The Board noted that the standard for functionality under Section 2(e)(5) is set forth in the Supreme Court's Inwood decision: namely, whether a feature is "essential to the use or purpose of the article or ... affects the cost or quality of the article." If a product design is functional under Inwood, there is no need to conduct further factual inquiry by applying a Morton-Norwich analysis [although the Board did so here].

Dyson made of record a number of utility and design patents and applications that it owns. Also relevant were certain findings in prior district court litigation involving the design patents. Examining Attorney Dorrit Carroll pointed to certain language in the claims of applicant's utility patents in arguing that each visible element of the design has utility. Applicant Dyson contended that the Board must consider the design as a whole, rather than dissect it into a" checklist of design concepts." It argued that the nozzle could take many different shapes, as may the base. As to the air inlets, applicant asserted that although the have utility, they could be made in various shapes (i.e., they are de facto functional, but not de jure functional).

In an earlier civil litigation, Dyson obtained a preliminary injunction against an infringer of its design patents. The court found that nearly every element of the design was functional (in a design patent sense), but that the specific proportions of the design were protectable. The Board gave the findings of functionality substantial weight, but it noted that the court's findings were "based upon standards that differ from those that guide us in determining the protectability of Applicant's design as a trademark."

[T]he Court’s finding as to the protectability of the proportions of Applicant’s design is based upon standards that differ from those that guide us in determining the protectability of Applicant’s design as a trademark. As the Court made clear, infringement of a design patent occurs where the resemblance between two designs is such that an ordinary observer would “purchase one [product] believing it to be the other.” 5 TTABVUE 39-40. Trademark infringement occurs where a customer would be likely to confuse the source of one product with the source of another. If Applicant obtains the desired trademark registration, Applicant would be in a position to enforce it not only against those who imitate the design in its precise proportions, but also against users of any design so resembling Applicant’s design as to be likely to cause confusion, mistake or deception. Accordingly, the District Court’s finding on this point does not dispose of the question before us, because a trademark registration could provide, possibly in perpetuity, a substantially broader scope of protection than the District Court contemplated extending to Applicant.

The Board was persuaded by Dyson's patents, coupled with the court's findings, that the circularity of the ring-shaped nozzle and the cylindrical shape of the base are functional. The shape of a circle is the most efficient shape for the base (in cross-section) and for maintaining the central discharge of the nozzle. The "three lines" are essential to the tilting and oscillating functions of the fan, and the array of control buttons in a straight line is one of only a few superior arrangements. Likewise, the circular shape of the buttons is one of a few superior shapes.

The Board considered a number of alternative designs provided by Dyson, but it concluded that the alternative designs were not functionally equivalent. A circular nozzle maximizes the airflow, and competitors should not have to avoid or disguise a circular design in order to avoid applicant's purported trademark.

Dyson design consists of fundamental geometric forms - the circle and the cylinder - and therefore "has a degree of simplicity, the avoidance of which would place competitors at a disadvantage." Avoidance of these shapes would probably mean added expense for competitors. Similarly, the need to eschew buttons in a straight line, or non-rectangular inlets, would likely increase the costs of a competitor.

The ultimate question under Section 2(e)(5), the Board observed, is whether the design "as a whole, is functional." In Beckton, Dickinson, however, the CAFC stated that "a mark possessed of significant functional features should not qualify for trademark protection where insignificant elements of the design are non-functional."

Here, three of the Morton-Norwich factors (utility patents, lack of equivalent alternative designs, and increased cost) favor a finding of functionality. To the extent that the shapes or arrays of the buttons and air inlets are non-functional, they are "insignificant elements of the design" that cannot render the design as a whole protectable.

And so the Board found that, under Inwood, the applicant's product configuration is de jure functional and unregistrable.

Read comments and post your comment here

TTABlog note: I agree with the Boards' conclusion, but I don't agree with the Board's comparison of trademark infringement and design patent infringement standards. The standard for design patent infringement is not so stringent as the Board indicates, in my opinion. I agree that the functionality standards for design patents and trademarks are different, but because a product design may be patentable even if it is the most efficient design, whereas that is not the case for a trademark. In other words, the standard for proving functionality of a design patent is much higher than that for a trademark.

Text Copyright John L. Welch 2015.


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