Thursday, November 19, 2009

TTAB Finds Flashlight Casing Not De Jure Functional but Lacking in Distinctiveness

The Board reversed in part and affirmed in part a refusal to register the product configuration mark shown on the right, for "portable lighting equipment, namely flashlights." It jettisoned the Section 2(e)(5) functionality refusal, but affirmed the refusal to register on the ground that Applicant failed to establish that the product shape has acquired distinctiveness. In re Brayco Products, Ltd., Serial No. 77296052 (November 16, 2009) [not precedential].

Applicant Brayco described its mark as "the configuration of an elongated oval light casing having one end featuring a similarly formed transparent window for covering an array of lights beneath the transparent window." As we know, to achieve registrability, a product shape must clear two hurdles: Section 2(e)(5) functionality and acquired distinctiveness. [See "Trade Dress and the TTAB: If Functionality Don't Get You, Nondistinctiveness Will," Allen's Trademark Digest, vol. 18, no. 5 (November 2004)].

Functionality: Applying the CCPA's Morton-Norwich test, the Board first found that there are no relevant utility patents that reference the applied-for design. The Examining Attorney contended that the Brayco's advertising "touts" that the product design allows the flashlight to simultaneously function as both a flashlight and a floodlight." The Board reviewed Brayco's advertising and concluded that:

While applicant’s advertising and promotional materials promote the thin shape and “dual-mode multifunction” capability of the product, there is nothing in applicant’s advertising and promotional materials that associates the product design with utilitarian advantages offered by applicant’s product: that is, there is nothing that indicates that the elongated cylindrical oval design produces a superior flashlight or that the elongated cylindrical oval design offers utilitarian advantages.

The Board ruled that the Examining Attorney had failed to show that "the flashlight's touted features of being 'pocketable,' 'thin shaped' and ergonomic are attributed to the elongated oval shape."

As to the availability of alternative designs, Brayco submitted evidence showing many flashlights and portable lights, including multi-functional products, that shared a cylindrical shape similar to the applied-for design. Because there are alternative designs, "the elongated oval design applicant seeks to register does not appear to be essential to competition."

And finally, as to ease or economy of manufacture, Brayco stated that the expense of manufacturing its design "is at least comparable to, if not more expensive, than alternative competitive designs."

Balancing these factors, the Board found that the design is not functional.

Acquired Distinctiveness: The Supreme Court told us in Wal-Mart that product designs cannot be inherently distinctive. Moreover, an applicant faces a "heavy burden" to prove distinctiveness for a product design.

The Board sided with the Examining Attorney, who pointed out that Brayco offered no evidence of sales, advertising expenditures, or other indicia of consumer recognition. In fact, it appears that Brayco is in a "start-up" mode. The Board concluded, not surprisingly, that Brayco's evidence of attendance at nine trade shows, numerous sales presentations, and a few sales and some customer interest during the little more than a year that the product has been on the market, was insufficient to prove acquired distinctiveness.

The Board therefore affirmed the refusal to register for lack of proof of acquired distinctiveness.

TTABlog comment: When was the last time a product shape made it past the Board to registration? I think it was the key-head shape in In re The Black & Decker Corp., 81 USPQ2d 1841 (TTAB 2006) [TTABlogged here], but there the only issue was acquired distinctiveness.

Text Copyright John L. Welch 2009.


At 9:33 AM, Blogger MEH said...

I thought this was an interesting decision because in making a functionality refusal, examining attorneys often assert that the applicant's own advertising touts the utilitarian advantages of the design. But when you take a close look at the advertising, sometimes that characterization is a stretch.

So it was good to see the Board state here, “In determining whether applicant’s advertising touts the utilitarian advantages of a product configuration, the advertising should clearly emphasize specific utilitarian features of the design claimed as a mark.”


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