TTAB Affirms Functionality Refusal of Door Channel Configuration Mark

Here we go again. Another product design mark failed to gain entry into the Hall of Registrations. The Board affirmed a Section 2(e)(5) functionality refusal of the configuration mark shown below, for "Metal doors, commercial reinforced steel doors” and “Non-metal doors." The mark comprises the configuration of the U-shaped channel that runs the length of the door.  In re Openings d/b/a Total Door, Serial No. 86044043 (May 5, 2016) [not precedential]. [Affirmed per curiam by the CAFC, October 11, 2017].

A product feature is functional "when it is essential to the use or purpose of the device or when it affects the cost or quality of the device." TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (citing Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d 1161, 1163-64 (1995) and Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)).

The Board observed that utility patents have "vital significance in resolving [a] trade dress claim." quoting Traffix. "Moreover, utility patent evidence of functionality is entitled to even greater weight where, as here, the patent’s owner seeks a trademark registration for the same configuration claimed in the (expired) patent." And the Board noted that "product design almost invariably serves purposes other than source identification." TrafFix, 58 USPQ2d at 1005 (quoting Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 US. 205, 54 USPQ2d 1065, 1069 (2000)).

Applicant's expired patents disclosed and claimed a U-shaped locking channel running the full length of a door, and further stated that this configuration provides a number of benefits, including enhanced security and lower cost of manufacture.

Applicant's advertising touted the efficacy of the channel configuration:

[T]he full length locking channel "acts as a 5/8" deadbolt along the full length of the door." It provides "exceptional security on single doors and eliminates vertical rods, floor hardware, coordinators, astragals and flush bolts on pairs and double-egress fire doors." Moreover, the locking channel requires "no templating" and uniformly distributes loads to the door, "increasing the strength, durability and abuse resistance of the door and frame." These are all functional benefits.

Because the expired patents and the advertising statement established the functionality of the design, the Board did not need to consider alternative designs or cost of manufacture. In any case,

applicant’s argument that “the alternative designs are equal to, or even superior” to applicant’s design rings hollow in view of its own touting to the contrary in promotional materials. Given the utilitarian advantages of applicant’s configuration (one need only believe applicant’s own statements in its promotional materials) ... it follows that competition is hindered. In re Caterpillar, 43 USPQ2d at 1441.

Moreover, even in the expired patents did not reveal that applicant's design minimizes cost, and even if applicant's costs were higher, applicant would have an advantage by excluding competitors "from using what is, as claimed in the patents and Applicant’s advertisements, a desirable product design for a door." See In re Dietrich, 97 USPQ2d at 1637.

And so the Board found the mark functional under Traffix and Inwood.

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TTABlog comment: WYHA? Let's face it, if there are prior, relevant utility patents, the door to registration will be slammed shut.

Text Copyright John L. Welch 2016.