Wednesday, March 12, 2014

TTAB Affirms Section 2(e)(5) Functionality Refusal of Yellow Fan Winglet Design

Suffering from a bad case of over-reaching, Applicant Delta T applied to register the two-dimensional design shown below for "ventilating fans for commercial and industrial use," describing the mark as "a yellow triangular shape with two curved sides and rounded corners." However, Delta's specimen of use displayed the design in three-dimensions, corresponding to the shape of the winglet at the outer tip of the fan blade. The Board found that the proposed mark "is coextensive with and inseparable from applicant’s patented winglet design" and is de jure functional under Section 2(e)(5). Moreover, because the drawing of the mark did not match the specimen of use, the alternative refusal under Sections 1 and 45 was affirmed. In re Delta T Corporation, Serial No. 77839055 (March 7, 2014) [not precedential].

Section 2(e)(5) Functionality: Applying the Morton-Norwich factors to the applied-for design, the Board first noted that Delta owns a utility patent covering fan blades, which patent states that "[a]dding winglets to fan blades may improve the aerodynamics of the fan blades, and therefore increase efficiencies of a fan." Delta did not argue that its winglets are not covered by the patent. Instead, it asserted that it was not seeking protection of the three-dimensional shape of the winglet, but only the two-dimensional yellow triangular shape. [Note: Delta already owns a Supplemental Registration for the color  yellow as applied to winglets, so it was here trying to claim the shape as well - ed.]. The Board was not impressed.

The Board observed that the fact that a drawing of a mark is two-dimensional does not preclude the alleged mark from being functional. It agreed with Examining Attorney Richard F. White that the curved triangular design is exclusively located on the winglets of applicant's fans, and it is therefore essentially utilitarian. Allowing registration of this shape would improperly extend the time-limited protection afforded by the patent. This was strong evidence of functionality.

Moreover, Delta's advertising touted the utilitarian benefits of the winglet design: "Patented airfoil and winglet design set the world standard for maximum efficient airflow in large spaces." Again, this was strong evidence of functionality.

There was some evidence that other winglet shapes were in use, but the mere fact that other designs are available does not necessarily mean that applicant's design is not de jure functional.

The Board concluded that the first two factors outweighed the third, and ruled that the applied for design is barred from registration by Section 2(e)(5). Delta feebly argued that the design as a whole was not functional because the color yellow is not functional, but the Board pointed out that "the critical question is the degree of utility present in the overall design of the mark," and it concluded that the functional features outweighed the non-functional feature (the color yellow).

Disagreement Between Drawing and Specimen: The Board reiterated that the proposed mark, as shown in the specimen of use, is "coextensive with and inseparable from" the patented design. The consumer viewing one of the fans would see the design in three dimensions, not two.

Delta argued that the drawing is not in disagreement with the specimen; instead, "the geometric shape of the surface to which the mark is applied causes the mark itself to take the shape of said surface." Again, the Board was not impressed. Not only is the mark formed on the fan winglets, but "as formed [it] constitutes an important functional component of those goods."

Therefore the Board concluded that Delta had failed to provide a specimen showing the applied-for mark in use in commerce, and it affirmed the alternative refusal to register.

Read comments and post your comment here.

TTABlog note:  Seems pretty obvious that Delta was trying to make an end run around the expiration of the utility patent by seeking trademark rights in the winglet shape.

Text Copyright John L. Welch 2014.


At 8:55 AM, Anonymous Mike Zall said...

You say they were trying to make an end run around the expiration of the utility patent. So? Nothing inherently wrong with that. The terrible part is they got caught. Good try.


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