Wednesday, June 27, 2012

TTAB Reverses Functionality Refusal of 3M Hand Sanitizer Dispenser, But Affirms Failure-to-Function Refusal

Applicant 3M overcame two of three PTO refusals of each of its configuration marks shown below, for "hand-sanitizing antiseptic with moisturizer." The Board reversed the Section 2(e)(5) functionality refusals and the refusals alleging a failure to provide adequate descriptions of the mark. But the Board affirmed the PTO's failure-to-function refusal, deeming 3M's Section 2(f) evidence insufficient. In re 3M Company, Serial Nos. 77701886 and 77701928 (May 10, 2012) [not precedential], reconsideration denied (here), June 21, 2012.

Functionality: The Board looked to the CCPA's Morton-Norwich factors to determine whether the applied-for configuration is de jure functional and therefore unregistrable under Section 2(e)(5). The Examining Attorney focused on the first factor - the existence of a utility patent that discloses the utilitarian advantages of the design - and apparently conceded that the other three factors (boastful advertising, availability of alternative designs, and relative ease of manufacture) favored 3M.

The Board, however, disagreed with the Examining Attorney's interpretation of 3M's utility patents. It did not find that the patents disclose utilitarian advantages of the design.

The particular patent excerpts referenced by the examining attorney in his brief provide a general description of the overall shape of the dispenser’s reservoir; however, there is no explanation or claims in the patents divulging any utilitarian purpose for such design or configuration. Specifically, the examining attorney relies on the language in the patents regarding a “preferable geometry” for the dispensers, but does not point to any further language in the patents illustrating how this “preferable geometry” actually provides a utilitarian advantage.

The Examining Attorney pointed to the nozzle, but the Board noted that the inner workings of the nozzle cannot be claimed as features of the proposed configuration mark, and even if the nozzle shown in the mark had some utilitarian advantage (that it is somehow easier to grasp and turn), that alone would not be enough for a finding that the "entire mark" is functional. See In re Becton, Dickinson and Company, 102 USPQ2d 1372, 1376 (Fed. Cir. 2012) [precedential]. [TTABlogged here].

3M also owns two design patents for nearly indistinguishable designs. These design patents, under Morton-Norwich, are evidence of non-functionality.

The Board therefore found that the PTO did not meet its burden to prove functionality.

Description of the Mark: The Board found that Applicant's description of its proposed marks, although not as succinct as they might have been, accurately characterizes the marks, in compliance with Rule 2.37.

Acquired Distinctiveness: By seeking registration only under Section 2(f), 3M conceded that the proposed marks are not inherently distinctive. [Remember that product containers or packaging can be inherently distinctive - ed.]. It was 3M's burden to prove acquired distinctiveness.

3M relied on look-for advertising ("a few copies"), use of the configurations for more than 10 years, a market share of more than 50%, and nine affidavits containing the statement that that the affiant associates the shape with a single source for sanitizer products.

The Board criticized the form of some of this evidence because it was not supported by affidavit (i.e., statements about the advertising and 3M's market share), but was presented in factual statements by counsel. However, the Board considered the evidence anyway, since the Examining Attorney did not object and there was no contradictory evidence.

However, the Board found 3M's proofs to be insufficient. There was no evidence as to the number of dispensers sold or the revenues therefrom, and no evidence regarding advertising figures or the "degree of advertising efforts" to associate the proposed marks with the identified goods. The market share figures related to the "limited realm of the medical scrub markets," but 3M's identification of goods was not so limited: i.e., there was no information as to 3M's market share in the broader market of hand-sanitizing antiseptics.

As to the affidavits, the number was not impressive and there was no evidence that the they "resulted from a random selection of possible declarants" Moreover, some of the statements were incomplete. In sum, their probative value was minimal.

And so the Board affirmed the failure-to-function refusal.

TTABlog comment: Should 3M appeal, or file a new application in which it can add additional evidence, alternatively argue inherent distinctiveness, and perhaps narrow its identification of goods to the "medical scrub" market?

Text Copyright John L. Welch 2012.


At 2:20 PM, Anonymous Orrin A. Falby said...

This is product packaging. It makes no sense to me not to argue that the applied-for mark is inherently distinctive. See In re Creative Beauty Innovations, Inc., 56 U.S.P.Q. 2d 1203 (T.T.A.B. 2000). The Supreme Court has explained that, in determining inherent distinctiveness of trade dress, the spectrum of distinctiveness test for word marks as articulated in Abercrombie & Fitch Co. v. Hunting World, Inc., 189 USPQ 759, 764 (2d. Cir. 1976) can be employed. Two Pesos, Inc. v. Taco Cabana, Inc., 112 S. Ct. 2753, 2757 (1992). In addition, the Court of Customs and Patent Appeals has set forth several factors to consider in determining whether or not a design is inherently distinctive, including whether the design is a "common" basic shape, whether it is unique or unusual in a particular field, whether it is a mere refinement of a commonly-adopted and well known form of ornamentation for a particular class of goods, and whether it is capable of creating a commercial impression distinct from the accompanying word. See, Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 196 USPQ 289, 291 (CCPA 1977)(Four part test (1) whether the design is a common, basic shape or design; (2) whether the design is unique or unusual in a particular field; (3) whether the design is a mere refinement of a well-known form of ornamentation; and (4) whether the design is capable of creating a commercial impression distinct from the accompanying word.)

A product's trade dress is its "total image ... includ[ing] features such as size, shape, color or color combinations, texture, [or] graphics." John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir.1983). Trade dress often utilizes commonly used lettering styles, geometric shapes, or colors, or incorporate descriptive elements. While each of these elements individually would not be inherently distinctive, it is the combination of elements and the total impression that the trade dress gives to the observer that should be the focus of the analysis of distinctiveness. If the overall trade dress is arbitrary, fanciful, or suggestive, it is inherently distinctive despite its incorporation of generic or descriptive elements. Roulo v. Russ Berrie & Co., 886 F.2d 931, 936 (7th Cir.1989), cert. denied, 110 S.Ct. 1124 (1990). Cf. LeSportsac, 754 F.2d at 76 (despite functionality of individual elements of sports bag, bag is nonfunctional "when viewed in its entirety"). One could no more deny protection to a trade dress for using commonly used elements than one could deny protection to a trademark because it consisted of a combination of commonly used letters of the alphabet.


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