TTAB Lets Stand Bifusal of Leveling Leg Configuration: De Jure Functional and Non-Distinctive

The Board upheld two refusals to register the product configuration shown below as a trademark for "Food service equipment levelers of metal," finding the proposed mark to be de jure functional under Section 2(e)(5), and, alternatively, lacking in acquired distinctiveness. Applicant Kason's ownership of a design patent for the same design "presumptively indicated that the design is not de jure functional," In re Becton, Dickinson and Co., but utility patent evidence overcame that presumption. In re Kason Industries, Inc., Serial No. 97602791 (March 18, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Section 2(e)(5): Applicant's proposed trademark is "identical to the device protected by its utility patent" entitled “Height Adjustable Support For Food Service Equipment." According to the patent, the leg adjustments are made by rotating the lower tubular external segment about a threaded internal stud that, at its top end, is threaded to structure at the bottom of the stove, refrigerator, or other restaurant equipment. The Board observed that "[n]o leg shape other than one that employs two cylindrical tubular sections could accomplish what the patent seeks to accomplish."

While a smaller, non-cylindrical leg segment could be made sufficiently small to “rotate” within the larger segment without the corners catching, the necessary size disparity would create gaps between the two segments, and the specification’s discussion of the shortcomings of the prior art makes clear that gaps between the upper and lower segments are a significant problem, because they allow bugs to crawl in.

The Board found that "the disclosures in both the specification and claims of the utility patent provide strong and explicit evidence that the applied-for mark as a whole is functional, conclusively rebutting any initial presumption of non-functionality." Based on this evidence, and noting that "[t]he three other types of potentially-relevant functionality evidence mentioned in Morton-Norwich don’t play much of a role in this case," the Board affirmed the functionality refusal.

Lack of Distinctiveness: Although Section 2(e)(5) is an absolute bar to registrability, the Board, in the interest of completeness, considered the alternative ground of lack of distinctiveness.

We know, of course, that a product configuration cannot be inherently distinctive and may be registered only upon proof of acquired distinctiveness. Applicant Kason offered no direct evidence (e.g., survey results, customer declarations) in this regard. It submitted indirect or circumstantial evidence in the form of sales and advertising figures: 3,281,944 levelers sold since 2004, generating approximately $10,929,447 in revenue. Kason spent approximately $34,480 on advertising.

The Board observed that, because consumers are not predisposed to consider product designs (as opposed to words) to be trademarks, a relatively stronger showing of acquired distinctiveness is required. The Board found Kason's evidence "underwhelming."

For the 19-year period from 2004 through August 2023, the average yearly sales revenue is $575,235 and the average yearly advertising expenditure is $1,815. These bare numbers simply come nowhere close to demonstrating that Applicant has successfully educated relevant consumers to view two concentric leg portions of a restaurant equipment leg as an indicator of the source of the product.

The Board further noted that, even if the numbers were much larger, it "would still have to look to other evidence to be confident that the sales simply didn’t simply reflect the desirability of the product - which is especially acute in cases where a product feature is integral part of a product covered by a utility patent."

And so, the Board affirmed the non-distinctiveness refusal.

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TTABlogger comment: The existence of both a utility patent and a design patent for the same configuration demonstrates why ownership of a design patent should not provide any presumption regarding non-functionality in a trademark sense. The question for design patentability is whether the design is the only one that works. If not, design patent protection is available, even if it's the best design (and so not registrable as a trademark). In short, in my view, the existence of a design patent should have no bearing on the issue of whether the proposed mark is functional in a trademark sense because the respective standards for "functionality" are different. See Sarah Fackrell (Burstein), Faux Amis in Design Law, 105 TMR 1455 (2015). [pdf here]

Text Copyright John L. Welch 2025.