Precedential No. 12: TTAB Rejects Functionality Claim But Finds Truck Light Configuration Lacks Acquired Distinctiveness

The TTAB sustained an opposition to registration of the product design shown below left, for "Electric lighting fixtures, namely, lights for vehicles," and granted a petition for cancellation of a registration for the product design shown below right, for "Lighting products for vehicles, namely, a combined stop-turn-tail lamp," finding that the two designs lacked acquired distinctiveness under Section 2(f). The Board first rejected plaintiff's claim of functionality under Section 2(e)(5), and it ultimately declined to reach plaintiff's fraud claim. Grote Industries v. Truck-Lite Co., LLC f/k/a/ Truck-Lite Co., Inc., 126 USPQ2d 1197 (TTAB 2018) [precedential] (Opinion by Judge Susan J. Hightower).

Functionality: A product design or feature is de jure functional under Section 2(e)(5) “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). In making a determination regarding functionality, the Board is guided by the analysis set forth in In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982).

Morton-Norwich identifies the following inquiries or categories of evidence as helpful in determining whether a particular design is functional: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product. Morton-Norwich, 213 USPQ at 15-16.

The Board first reviewed a utility patent owned by Defendant Truck-Lite, entitled "Combined Stop/Turn/Tail/Clearance Lamp Using Light Emitting Diode Technology." [pdf here]. The claims of that patent require "at least one light emitting diode,” but not necessarily the six diodes of the applied-for marks. Moreover, although other aspects of the lamp assembly are claimed, the specific pattern of the lights is not claimed.

The Board agreed with defendant Truck-Lite that its so-called "Penta-Star Pattern" is "only incidentally disclosed" in the ’172 patent. Moreover, Truck-Lite presented evidence that the Penta-Star Pattern was chosen for aesthetic reasons from among other six-diode designs. The Board noted that "although the design is the 'preferred embodiment" for the light, any number of diodes can be used, and further that the patent "does not disclose any utilitarian aspect of the specific placement of the optical elements."

Reviewing Truck-Lite’s advertising, the Board concluded that defendant does not promote utilitarian advantages arising from the Penta-Star Pattern.

As to alternative designs, Truck-Lite pointed to a number of allegedly "functionally-equivalent" lights on the market, but the Board found this factor to be neutral. Although the evidence indicated that competing lights meet applicable federal safety standards without employing the six-diode LED light pattern, it did not establish whether the different patterns offer varying advantages in terms of cost, voltage, longevity, etc.

Finally, the evidence suggested that use of the Penta-Star Pattern makes Truck-Lite’s product more expensive and complex to manufacture.

The Board found the design to be non-functional:

In sum, we find that (1) no patent specifically discloses the benefits of the Penta-Star Pattern; (2) the relevant advertising does not suggest a benefit arising from the pattern per se; (3) there appear to be alternative designs that satisfy federal regulations; and (4) there is no clear benefit as to either cost or ease of manufacture attributable to the pattern.

Plaintiff Grote also asserted that the Penta-Star Pattern is aesthetically functional. A proposed mark will be deemed aesthetically functional if there is a “competitive need” for the feature. See, e.g., Brunswick Corp. v. British Seagull Ltd., 32 USPQ2d 1120, 1122 (Fed. Cir. 1994) (the color black for outboard boat engines found to be functional because it served the non-trademark purpose of reducing the apparent size of outboard boat engines).

The Board was not impressed: "Grote’s argument that consumers want to be able to find matching replacement lights would apply to any design, even one whose light array design is solely arbitrary and whimsical and is known by customers to be a source identifier. Thus, this argument ultimately proves nothing." The Board found that Grote failed to prove a prima facie case of aesthetic functionality.

Acquired Distinctiveness: Of course, a product configuration cannot be inherently distinctive, but may be registered upon a showing of acquired distinctiveness under Section 2(f). Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000).

Truck-Lite submitted sales figures ($192 million through 2015), trade show attendance data (40-50 shows per year), and print and media statistics (reaching 400,000 customers per year). The Board pointed out, however, that a product's commercial success is not by itself indicative of customer recognition of a product configuration as an indicator of source because such success may merely indicate the popularity of the product itself.

The Board found that the record, viewed in its entirety, contained insufficient probative evidence that the primary significance of Truck-Lite’s design is to identify the source of its lights in the minds of consumers. "What is needed – and what is missing from this record – is probative evidence demonstrating that the design presently serves as an indicator of source in the minds of the consuming public."

The Board noted that "look-for" advertising may be crucial in product configuration cases, but Truck-Lite's advertising did not call attention to the six diode configuration, let alone tell consumers to "look for" that pattern to identify a Truck-Lite product.

Concluding that the evidence was insufficient to show that the configuration at issue indicates source or that consumers so recognize it, the Board sustained the opposition and granted the cancellation petition.

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TTABlog comment: Reminiscent of the Hershey candy-scoring case.

Text Copyright John L. Welch 2018.