TTAB Says "No Dice" to Opposer's Claim of Functionality of Dice Box Configuration

The Board dismissed this opposition to registration of a mark comprising the product configuration of boxes for storing board game components or dice, rejecting Opposer Chris Taylor's claims of de jure functionality and lack of acquired distinctiveness. The Board found that, although the configuration has utility, it is not functional in the "utilitarian sense," nor is it functional in the aesthetic sense. Chris W. Taylor Jr. v. Three Frog, LLC, Opposition No. 91255161 (March 29, 2024) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

"The mark consists of a three-dimensional configuration of the interior of a hex shaped box with a honeycomb configuration of seven interior hexagonal indentations on the bottom of the box and the design of a six point star, having flat points, on the top of the box. The broken lines depicting circular magnets indicate placement of the mark on the goods and are not part of the mark."

Functionality in the Utilitarian Sense: "[M]atter is functional in the utilitarian sense if  'it is essential to the use or purpose of the articles or if it affects the costs of quality of the article.'" TrafFix. The Board applied the Morton-Norwich factors, finding no utility patent of record that discloses the utilitarian features of Applicant Three Frog's dice box, no evidence that Three Frog touted the utilitarian advantages of the design, and no evidence that the configuration at issue is comparatively cheap or simple to manufacture. Opposer Taylor admitted that alternative designs are available.

The Board noted the U.S. Copyright Office's (non-final) refusal to register a copyright in the design on the ground that a dice box is a "useful article" under 17 U.S.C. Section 101. The Board, however, was not persuaded that "the finding that Applicant’s dice box has 'an intrinsic utilitarian function' for copyright purposes is equivalent to a finding that the configuration 'is essential to the use or purpose of the article or if it affects the cost or quality of the article,' the test laid out by the Supreme Court for trademark functionality."

The Board concluded that the proposed mark is not de jure functional under the "utilitarian functionality test."

Aesthetic Functionality: "[A] mark is aesthetically functional and prohibited from registration if, rather than utilitarian advantage in terms of product performance, the design provides other competitive advantages." Qualitex. There was no evidence as to how products are developed or marketed in the dice box field, or what features are desirable, or why Three Frog's design is superior. Moreover, the evidence showed that there are several available alternative designs. [Example below].

The Board concluded that Opposer Taylor failed to prove aesthetic functionality.

Acquired Distinctiveness: Of course, product designs can never be inherently distinctive. Wal-Mart. Accordingly, Three Frog sought registration under Section 2(f). The Board looked to the Converse factors to determine whether the subject design has achieved acquired distinctiveness.

Three Frog submitted five declarations from third parties in the tabletop gaming business to demonstrate that its box design is associated with it. The Board found the declarations "somewhat persuasive." Though the declarations were rather formulaic, they varied in length and detail and each declarant "plainly states that he is unaware of other products that use the same or similar design elements to Applicant's box."

Three Frog has been selling its dice box configuration since 2014 and sales have been substantially exclusive and have increased exponentially.  Three Frog has spent more than $1 million to promote its product line and this dice box configuration is its main product. It has advertised at gaming conventions and via social media, Google Ads, and social influencers. Three Frog is one of the three biggest sellers of dice boxes, and each of the three companies makes unique dice boxes. Three Frog has policed the mark and has received unsolicited media coverage.

Based on the evidence of long and substantially exclusive use, industry recognition, sales and advertising expenditures, and unsolicited media attention, we find that Applicant’s dice box configuration has acquired distinctiveness, and Opposer’s claim that Applicant’s dice box configuration is non-distinctive trade dress must fail.

And so, the Board dismissed the opposition.

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TTABlogger comment: Nicely Dunn.

Text Copyright John L. Welch 2024.