Tuesday, March 10, 2009

Precedential No. 6: TTAB Affirms Section 2(e)(5) Functionality Refusal of Shape of Metal Spray Nozzle

Another product configuration "mark" bit the TTAB dust when the Board affirmed the PTO's refusal to register the purported mark shown below (consisting of a "round disk head on a sprayer nozzle") for "metal spray nozzles." The Board found the design to be functional under Section 2(e)(5), and alternatively found that it fails to function as a mark, under Sections 1, 2, and 45. In re UDOR U.S.A., Inc., 89 USPQ2d 1978 (TTAB 2009) [precedential].

Functionality: As usual, the Board applied the CCPA's four-factor analysis set forth in In re Morton-Norwich Prods., Inc., 213 USPQ 9, 15-16 (CCPA 1982), which requires the Board to consider (1) whether a utility patent discloses the utilitarian advantages of the design; (2) whether advertising materials tout the design's utilitarian advantages; (3) the availability of functionally-equivalent alternatives; and (4) whether the design results from a comparatively simple or cheap method of manufacture.

The Board first closely examined Applicant UDOR's U.S. Patent No. 7,108,204 , entitled "Spray Nozzle," for any disclosed utilitarian advantages of the above design. [Tip from the TTABlog: you may find this patent readily via the GOOGLE Patents search engine]. The Board concluded that the PTO Examining Attorney had not "demonstrated convincingly that the round shape of the nozzle head has inherent utilitarian value based upon the claims of the patented technology." In short, what is shown in the trademark drawing does not "serve a function within the terms of the utility patent."

While it is true that all the embodiments depicted in drawings in the patent do involve a round head, none of the utility patent claims refer to a rounded spray nozzle head. Rather it is the design of the impingement surface and the deflection ridges alone that determines the discharge pattern of the fluid from each nozzle head. The novel and non-obvious features claimed for this patented spray nozzle would function identically, irrespective of the shape of the portion of the spray nozzle head visible in the trademark product design configuration.

Turning to the second Morton-Norwich factor, the Board found nothing in UDOR's advertising that touted the utilitarian advantages of the product design sought to be registered. In fact, the advertising of record suggested that consumers "look for" the "unique round head shape" for UDOR's sprinkler nozzles.

As to the third factor, the Board analyzed the availability of alternative designs to help it determine whether the proposed mark "is functional in the first place." The record showed that UDOR's competitors market spray nozzles with quite similar round heads, an impingement surface, and a gap for a pressurized fluid plume. The Board concluded that the round head "is the preferred shape of a metal spray nozzle tip," noting that "[t]his would appear to be an obvious conclusion from the standpoint of design, manufacture, storage, shipping and handling." Therefore, this factor supports a finding of functionality.

Finally, as to factor 4, the Board concluded that, as with the third factor, the round disk shape of UDOR's nozzle head "appears to be efficient, economical, and advantageous."

In sum, the Board found that under the third and fourth Morton-Norwich factors, Examining Attorney Shaila E. Settles had established a prima facie case that the subject design is functional, and that UDOR failed to overcome that showing.

Failure to Function: Assuming arguendo that UDOR's product design is not functional, the Board considered whether the design is registrable based upon acquired distinctiveness. [As we all know, a product design cannot be inherently distinctive. See Wal-Mart Stores Inc. v. Samara Brothers Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068-69 (2000)]].

UDOR's product design "comprises an ordinary device such that many third parties are using similarly-shaped configurations." Like a highly-descriptive mark, this product design may not be registered "except upon a substantial showing of acquired distinctiveness."

Absent from UDOR's evidence were any statements from the ultimate users of the device; the few declarations from the industry are "simply insufficient." Although UDOR has employed "look for" advertising, there was no evidence of its effectiveness. Nor was there evidence of UDOR's sales under the mark.

Consequently the Board concluded that UDOR's evidence was insufficient to prove acquired distinctiveness, and it affirmed this alternative refusal to register.

TTABlog comment: If you want to see how hard it is to overcome a Section 2(e)(5) functionality refusal for a product configuration, stick the word "functional" into the TTABlog search engine above and peruse the results.

BTW: the article I wrote in 2004, entitled "Trade Dress at the TTAB: If Functionality Don’t Get You, Nondistinctiveness Will," still resonates five years later.

Text Copyright John L. Welch 2009


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