TTAB Grants Summary Judgment Motion, Finding Fusible Link Configuration De Jure Functional

The Board granted Tyco Fire's motion for summary judgment, finding the product configuration marks shown below, for a "heat fusible link for use in fire protection," to be functional under Section 2(e)(5). The mark on the left "consists of a configuration of a copper rectangular heat fusible link with rounded edges with a transparent circle at the top and bottom." The mark on the right is identically described except for the word "copper." Tyco Fire Products LP v. Globe Technologies Corporation, Oppositions Nos. 91212425 and 91220233 (January 22, 2018) [not precedential].

Opposer’s expert explained that the fusible link consists of two plates placed under tension or load. The plates are held together by a fixed heat-sensitive material, which in the event of a fire melts or breaks once the ambient temperature reaches a certain degree, causing the plates to separate. When the plates separate the fire detection or suppression system is activated.

Generally, a product design or product feature is considered to be functional in a trademark sense if it is (1) “essential to the use or purpose of the article,” or if it (2) “affects the cost or quality of the article.” TrafFix, 58 USPQ2d at 1006 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). The Board found no genuine dispute of material fact "that the configuration of Applicant’s goods is essential to the use and purpose of the goods and affects the cost and quality of the article under the standard set forth in Inwood/TrafFix."

The evidence of record, including various utility patents (both applicant's and third-party patents) established that the use of identical, overlying plates serves a utilitarian function. At to the "transparent circles," which are actually holes in the plates, the circular shape depicted in the drawing of the patent "is the most logical and effective choice." The rounded ends are used to avoid sharp edges. As to the straight sides of applicant's device:

As the many patents of record show, we live in a world of straight edges and right angles. The straight parallel sides of Applicant’s goods would be essential to fitting the goods into mechanisms that have limited space. Competitors who are required to eschew the use of straight, parallel sides in order to avoid infringing upon Applicant’s trademark rights would be put to “a significant non-reputation-related disadvantage."

Applicant did not rebut Opposer’s contention that in certain applications, fusible links with straight, parallel edges and circular holes are one of the few available alternatives.

Finally, Applicant contended that the copper-colored design presented in one application is not functional for the additional reason that the application contains a claim to the color copper. However, the evidence showed, and applicant did not dispute, that the color is the result of the natural coloring of the commercial bronze, and that commercial bronze has utilitarian function in a fusible link. The Board concluded that "[c]ompetitors who are required to eschew the use of copper, bronze, or other metals having a copper-like color in order to avoid infringing upon Applicant’s trademark rights would be put to 'a significant non-reputation-related disadvantage.'" Nor should competitors have to paint their links to mask the copper color.

Therefore, the Board found no genuine dispute of material fact that the copper color of Applicant’s mark is dictated by a functional feature of the goods.

And so the Board entered judgment summarily in opposer's favor.

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TTABlog comment: The Board is a bit fuzzy at times on the difference between utilitarian functionality [de facto functionality] and trademark functionality [de jure functionality]. Many configurations and features may have the former, but not necessarily the latter. E.g., the scoring on a Hershey bar.

Text Copyright John L. Welch 2018.