Tuesday, July 28, 2009

TTAB Affirms Section 2(e)(5) Functionality Refusal of Bird Feeder Design

Another purported product configuration mark kicked the TTABucket as the Board affirmed a Section 2(e)(5) refusal to register the product design shown below for a "bird feeder," finding it to be de jure functional. Alternatively, the Board found that if the design is considered not functional, Applicant Woodlink's evidence of acquired distinctiveness is insufficient to support registration under Section 2(f). In re Woodlink, Ltd., Serial No. 78971622 (July 17, 2009) [not precedential].

Woodlink's described its mark as "a configuration of a bird feeder that comprises a cylindrical feeding tube and a top and bottom base." The Board noted that this broad description "encompasses virtually any bird feeder of the 'tube feeder' type."

As usual when considering functionality, the Board looked to the factors set forth in In re Morton-Norwich Prods., Inc., 213 USPQ 9, 15-16 (CCPA 1982):

(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.

The Board observed that the functional aspects of Woodlink's design "are apparent from a simple examination of the specimen" (below): the tube of wire mesh holds the feed and keeps it dry, and provides a perch or the birds. The wire also protects the feed from rodents. The bulbous top protects the feed from the elements and from rodents, while the base provides another perch. [So the design is at least de facto functional; but is it de jure functional? That is the question.]

Utility Patents: The Board found two third-party patents to be of relevance because they disclose the use of a bulbous top and a mesh tube, and it concluded that these patents are "clear evidence that applicant's [design] is functional." [TTABlog comment: why aren't these statements made in third-party patents merely hearsay? Why automatically give the statements credence just because they appear in a patent?] The Board found that, as in TrafFix, these patents provide "strong evidence" that the produce design is functional. [TTABlog comment: Actually, TrafFix says that a utility patent is strong evidence of functionality if the feature in question is claimed in the patent. What was claimed in the patents cited by the Board?]

Advertising: Woodlink's own advertising touted the utilitarian advantages of the design: "One of the most versatile and squirrel-proof feeders available." [TTABlog comment: Doesn't sound that bad to me.]

Alternative Designs: Woodlink argued that there are numerous alternative designs, but the Board concluded that "the sum of the features incorporated in applicant's [design] result in an overall design which is functionally superior."

Simpler of Cheaper Method of Manufacture: Woodlink asserted that its design does not result in a "comparatively simple or cheap method of manufacturing the product." But the Board pointed out that even if the design is no more expensive than others, the functional advantage of Woodlink's product afford it a competitive advantage.

And so the Board affirmed the functionality refusal.

Acquired Distinctiveness: For the sake of completeness, the Board considered Woodlink's claim of acquired distinctiveness, assuming arguendo that its design is not de jure functional.

Woodlink relied on its long use and repeat sales of its product, and on eleven affidavits from retailers. However, it provided no information regarding the amount of its sales, and the claim of 23 years of use without more is not enough to meet the "especially high" burden of proof applicable in this case due to the breadth of Woodlink's claimed mark. As to the form affidavits, they contain legal conclusions and are not directly from the ultimate purchasers of the goods; 0verall, they are insufficient to show acquired distinctiveness.

Therefore, the Board rejected Woodlink's Section 2(f) claim.

TTABlog comment: . Frankly, this was not the greatest opinion the Board has ever written. The distinction between de facto and de jure functionality was not clearly delineated nor clearly applied.

Sure the wire mesh performs a function, but is a tube shape better than a hexagon or an octagon or some other shape? Sure the top performs a function, but is the shape of the top in Woodlink's design better than other shapes? More easy to manufacture? Just because each of the elements of the feeder performs a function does not necessarily mean that the shape of each element is de jure functional. Think, for example, of a chair. Every chair is de facto functional because it performs a function. But is a particular chair shape de jure functional? That depends on whether the shape gives the owner a competitive advantage unrelated to any source-identifying significance.

Judge Rich made the point thusly in Morton-Norwich:

We wish to make it clear -- in fact, we wish to characterize it as the first addition to the Deister "truisms" -- that a discussion of “functionality” is always in reference to the design of the thing under consideration (in the sense of its appearance ) and not the thing itself. One court, for example, paraphrasing Gertrude Stein, commented that "a dish is a dish is a dish." Hygienic Specialties Co. v. H. G. Salzman, Inc., 302 F.2d 614, 621, 133 USPQ 96, 103 (2d Cir. 1962). No doubt, by definition, a dish always functions as a dish and has its utility, but it is the appearance of the dish which is important in a case such as this, as will become clear.

In short, the Board did little to spell out the functional advantages of this particular design. It seems to me that the design in question is indeed so simple as to be the cheapest way to provide the particular utilitarian features of a bird feeder.

Text Copyright John L. Welch.


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