Thursday, January 13, 2011

Precedential No. 1: TTAB Affirms 2(e)(5) Functionality Refusal of Motorcycle Stand Design

In its first precedential decision of 2011, the Board affirmed a Section 2(e)(5) refusal to register the product configuration shown below, finding it to be functional for "motorcycle stands." Alternatively, if not functional, the configuration lacks Section 2(f) acquired distinctiveness. In re Charles N. Van Valkenburgh, 97 USPQ2d 1757 (TTAB 2011) [precedential].

Functionality: The Board applied the Morton-Norwich factors, first perusing a utility patent owned by Applicant. The Board found that, although the configuration is not identical to the patented invention, "[t]he proposed mark adopts a significant portion of the invention disclosed in the patent; it is not merely an ornamental, incidental, or arbitrary aspect of the motorcycle stand."

In view of the facts that the drawing of the invention in U.S. Patent No. 7,000,901 incorporates the proposed mark, the "detailed description of the invention" describes the proposed mark, and Claim 1(a) of the patent claims the proposed mark as part of the subject matter of applicant’s invention, we find that the patent is prima facie evidence that the proposed mark is functional. In the face of this showing, it was incumbent upon applicant to rebut why the patent does not disclose the utilitarian advantages of the proposed mark.

Applicant argued that there are alternative designs for motorcycle stands, but he failed to explain "why the design of the supporting base of the stand, as shown in the proposed mark, is not essential to the function or purpose of the motorcycle stand or why it did not affect quality of the product. Thus, the applicant has failed to carry the 'heavy burden of showing that the feature is not functional.'"

Furthermore, advertising by Applicant’s competitors tout the utilitarian advantages of motorcycle stands similar in design to the proposed mark. Although Applicant claimed that there are 85 alternative designs for motorcycle stands, the Board noted that "the availability of alternative designs does not convert a functional design into a non-functional design." Here, "registration of the claimed matter could well hinder competitors who would not know if the features they used in the supporting base of their motorcycle stands, whose overall configurations are not dissimilar from those of applicant, might well subject them to a suit for trademark infringement."

As to the fourth factor, the Board found that "the cost and complexity of manufacturing applicant’s product design is comparable to some of his competitors. Nevertheless, even if applicant’s motorcycle stands with this design are more costly to produce, a higher cost does not detract from its functionality."

As stated in TrafFix, 58 USPQ2d at 1006, a product feature is functional “when it affects the cost or quality of the article.” (Emphasis added). Thus, even at a higher manufacturing cost, applicant would have a competitive advantage for what is essentially, as claimed in the patent, a superior motorcycle stand.

The Board therefore affirmed the functionality refusal, concluding that "the proposed mark is an efficient and superior design for the supporting base of a motorcycle stand and, thus, functional."

Acquired Distinctiveness: For the sake of completeness, and observing that a functional design is flat out unregistrable, the Board nonetheless considered the alternative refusal based on lack of acquired distinctiveness. [Of course, a product design cannot be inherently distinctive - ed.]

Applicant claimed 16 years of continuous and exclusive use of the design. He submitted 14 declarations from consumers, 23 "consumer surveys," and proof of intentional copying by infringers. Not good enough, said the Board.

"First, applicant’s 16 years of use is substantial but not necessarily conclusive or persuasive considering that its mark is a product configuration." Popularity or commercial success of the product do not automatically demonstrate that consumers recognize the shape as a source indicator.

Applicant declined to provide sales figures (on the ground of confidentiality), nor did he provide information regarding advertising expenditures or market share.

Applicant's "surveys" were merely questionnaires filled out by people at motorcycle events, and the Board treated them as mere declarations. The 14 declarations were signed by individuals who had also filled out the survey, and so there were 23 respondents in all, not 14 plus 23. Six survey responses were ambiguous, casting doubt on three declarations as well. That left 16 unambiguous surveys/declarations, according to the Board. [Not sure how the math works out here - ed.] The Board was not impressed:

To put the matter simply, that 16 people in the entire “Sportbike Motorcycle/Motorsports Industry” through applicant’s 16 years of doing business, have come to recognize applicant's product configuration as a trademark for motorcycle stands is not persuasive.

Finally, the Board refused to accept Applicant's evidence of copying as probative of acquired distinctiveness because ""[w]here the proposed mark is a product design, the copier may be attempting to exploit a desirable product feature, rather than seeking to confuse customers as to the source of the product.

And so the Board affirmed the alternative refusal.

TTABlog comment: Once a utility patent is involved, you might as well get on your motorcycle and ride out of town. You're wasting your time trying to convince the Board that your application for registration will stand.

Text Copyright John L. Welch 2011.


At 1:00 PM, Anonymous Joshua Jarvis said...

A pretty straightforward decision -- why is it precedential?

If it makes the applicant feel any better, the Pit Bull is a fantastic motorcycle stand.

At 7:41 PM, Blogger John L. Welch said...

One has to be careful in jumping to the conclusion that a design is functional just because a patent claim reads on the design. For example, supposed the patent claims says "a chair, comprising a seat, four legs attached to and depending therefrom, and a back member attached to and extending away from the seat." Now a chair that falls within that claim language can take almost an infinite number of shapes. Is every shape de jure functional for trademark purposes? Sure every chair is de facto functional, but is there no room for trademark protection for a unique chair design?

At 10:46 AM, Anonymous Orrin A. Falby said...

John, I would argue that the design of the chair is a protectable trademark, but only by showing secondary meaning of course. Similarly, the design is protectable as a design patent. I have another opportunity to ask my question again, so here goes. If the design is subject to a design patent claim, can you still be granted trademark protect for the design? As far as I know, the "patent bar" deals with utility patents, not designs. Am I missing the obvious here?

At 11:25 AM, Blogger John L. Welch said...

Orrin: Under current law, there is nothing stopping you from getting a design patent and a trademark registration for the same product design. For a discussion, see the TTABlog posts here

and here:


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