Monday, October 15, 2012

TTAB Torpedoes 2(e)(5) Functionality Refusals of Four US Navy Pixilated Fabric Patterns

The TTAB torpedoed four Section 2(e)(5) refusals to register the US Navy's pixilated pattern designs shown below, for clothing sold at military exchanges and for fabric for manufacturing merchandise to be sold at military exchanges. The Board concluded that, although the color pattern has incidental utility (i.e., is de facto functional), the PTO failed to make a prima facie case that the pattern is de jure functional and therefore barred from registration. In re Navy Exchange Service Command, Serial Nos. 77160754, 77160783, 77324266 and 77324270 (September 29, 2012) [not precedential].

The Examining Attorney maintained that the marks are barred by Section 2(e)(5) because the color pattern masks stains and wear-and-tear, and consequently the designs are "essential" to the Navy's requirements for a neat and clean uniform. The Navy fired back with the arguments that any such function or utility is merely incidental, and further that a "plethora" of alternative patterns are available and therefore there is no competitive need for this particular color pattern.

The Board applied TrafFix and Morton-Norwich to the issue at hand, observing generally that under the former, "the design or trade dress of a product is functional and cannot serve as a trademark if its is essential to the use or purpose of the article or if it affects the cost or quality of the article." Under Morton-Norwich, the following factors are to be considered in assessing Section 2(e)(5) functionality:

1. Whether a utility patent exists that discloses the utilitarian advantages of the design sought to be registered;

2. Whether applicant's advertising touts the utilitarian advantages of the design;

3. Whether alternative designs are available that serve the same utilitarian purpose; and

4. Whether the design results from a comparatively simple or inexpensive method of manufacture.

As to the first factor, there were no utility patents of record. With regard to "advertising," the Examining Attorney pointed to certain statements in Navy regulations and other documents that show the importance of the “uniform display,” exemplifying the Navy's commitment to meet the "qualitative factors" for uniforms set out in these documents: ease of maintenance, cleaning, upkeep, tailoring, neatness, packability, etc.

The Board pointed out, however, that only one of the documents refers to the subject design, stating that a multicolor pattern was chosen because it is less likely to show wrinkles, stains, and heavy wear. The Board, however, was not persuaded that the particular pattern at issue "is superior to any other pattern that could have been chosen." It agreed with applicant that the ability to hide stains and wear and tear is "an incidental function inherent to most patterned material." Moreover, the Navy’s requirements have nothing to do with fabric design. In short, "there is nothing in Applicant's statements that persuade us that applicant’s applied for color pattern is essential to the Navy’s requirement for a neat and clean uniform."

As to the third factor, the Navy's submission of numerous alternative designs of camouflage patterns convinced the Board that "the availability of alternative designs that appear to work 'equally well,' does not support the examining attorney’s argument that applicant's marks are functional." In other words, there is no competitive need to adopt the Navy's color pattern.

Finally, as to cost and quality, the Navy proffered a declaration from a screen-printing company stating that printing the pattern at issue is no less expensive than printing any other pattern or logo. This evidence regarding the fourth factor did not support the PTO’s case, but neither does it necessarily prove non-functionality.

The Board concluded that "[w]hile the color pattern design in applicant's mark may perform the incidental function of masking stains and wear and tear on the fabric and clothing items identified in the applications, it need not be devoid of any function in order to be registrable as a trademark."

Because the PTO failed to show how the Navy's color pattern is functional or how it would hinder competition, the Board reversed the refusals.

TTABlog note: The Navy cleared the ornamentality when the Examining Attorney(s) accepted its claim of acquired distinctiveness under Section 2(f).

Text Copyright John L. Welch 2012.


At 8:59 AM, Anonymous freiburger said...

This is a WYHR case because none of the Morton-Norwich factors supported the refusal. This appears to be one of those situations where an examining attorney made a refusal and wasn't going to withdraw it no matter what the record showed.

At 12:37 PM, Anonymous Arizona Trademark Attorney said...

An interesting strategy for the Navy. One wonders what the motivation for applying for registration on a mark like this was, especially given that the goods are sold at Navy Exchanges, where, presumably, the Navy can control the market. What meaningful breadth does the registration have when camoflauge patterns, on a granulated basis can appear so different, but from a distant perspective, appear generally the same.

At 9:19 AM, Anonymous Anonymous said...

If I read the decision correctly, the outcome hinges on the Navy's position that ts camo does not function as camo. I wonder if that argument would work as well in an opposition proceeding. I suspect the RFP associated with the Navy's purchase of this material may speak to this point.

At 11:39 AM, Blogger John L. Welch said...

I wouldn't say that. I think it hinges on the availability of numerous alternative designs. The Navy's pattern many have utility as camouflage clothing, but it's not de jure functional.

At 12:33 PM, Anonymous Anonymous said...

So you believe that the Navy did not need to take the position noted in fn 12, that its camo design was not intended for concealment and does not act as camouflage. And that it could have asserted that the design functions as cammo and nevertheless register the mark.

At 12:37 PM, Blogger John L. Welch said...



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