Thursday, October 08, 2015

Rifle Barrel Configuration Unregistrable Due to Functionality, Says TTAB

The Board affirmed a Section 2(e)(5) refusal to register the product configuration shown below, for "rifle barrels, rifles," finding the proposed mark to be (de jure) functional. The mark comprises the configuration of external helical fluting on a gun barrel. Applicant owns two relevant patents, one utility, one design. Applying the four-factor test of Morton-Norwich, the Board found the former more significant than the latter. In re E.R. Shaw, Inc.., Serial No. 85797528 (September 29, 2015) [not precedential].

In applicant's utility patent for a "Fluted Gun Barrel," internal and external spiral grooves produce a lighter gun barrel and permit the gun to cool more quickly. The internal and external fluting is included in the patent claims, and they are an "integral part of the invention." Although the patent is directed to the combination of internal and external fluting while the subject trademark application involves only the external fluting, the grant of trademark registration here would prevent others from practicing the invention, even after the patent expired.

Applicant argued that the existence of the design patent "presumptively indicates that the [applied-for mark] is not de jure functional," citing the the CAFC's decision in In re Becton, Dickinson. The Board pointed out, however, that the "mere existence of a design patent is not dispositive and may be outweighed by other evidence."

The Board considered the design patent, but ultimately found its probative value outweighed by other evidence, including the utility patent.

[A]lthough the spiral lines on the gun barrel are described as "ornamental" in the design patent and may be aesthetically pleasing, the question remains whether, on balance, this design is merely incidental to the overall purpose of the article or whether it "adopts a significant portion of the invention disclosed in the [utility] patent."

Here, the Board found that the proposed configuration mark is a "significant portion" of the invention described in the utility patent. Therefore this Morton-Norwich factor supports a finding of functionality.

In its advertising, Applicant mentions a "unique appearance" to the fluting, but it also asserts the same utilitarian advantages identified in the patent. [Couldn't the fluting be both unique in design and utilitarian at the same time? Is the Board mixing up de jure and de facto functionality here? - ed.].

The existence of alternative designs is probative, but "does not detract from the functional character of the product design where the subject matter sought to be registered is 'the preferred or a superior design.'" [Note that applicant is not trying to register as a trademark, all spiral designs, and there seemed to be no evidence that its particular spiral design was the preferred design. Surely one could imagine a design for the fluting - say, lighting bolts - that would perform the function (i.e., be de facto functional, but not be the preferred design (i.e., not be de jure functional) - ed.]

Helical fluting, the Board found, was clearly superior to the other fluting designs in the record: straight flutes, pocked indentations, or other grooves.

Applicant's spiral fluting may be more expensive to produce than, say, straight fluting, "but the fact that other designs are simpler and cheaper to make does not weigh very much in applicant's favor."

The Board concluded that the the applied-for configuration mark "comprises matter that, as a whole, 'is essential to the use or purpose of the article or ... affects the cost or quality of the article,' as contemplated by Inwood, and thus is functional and not registrable on that basis."

Read comments and post your comment here.

TTABlog comment: How does this case differ from the Hershey case (here), in which the scoring on a Hershey bar [plain, not with almonds], despite the existence of a utility patent on candy bar scoring. There are surely other ways to include spiral fluting on a gun barrel, like my lightning bolt example. Or suppose every other spiral line was much thicker than the adjacent lines, creating an eye-catching pattern. Could that not be registrable as a trademark? Maybe the hurdle for proving acquired distinctiveness might be high, and maybe the scope of protection would be narrow, but would it be de jure functional?

I am campaigning to revive the use of the terms de facto and de jure functionality, because I think they help clarify the analysis under Section 2(e)(5). See my TTABlog post here.

Text Copyright John L. Welch 2015.


At 10:12 AM, Anonymous Anonymous said...

I think another way of thinking about this case and the Hershey one is whether if you removed the matter that is purely functional in a utilitarian sense (helical boring of the barrel, simple scoring of a candy bar), is there enough material left that is capable of distinguishing source without running afoul of policies that patents must expire for the benefit of the public domain. With this barrel, the answer seems "no": being able to bootstrap such a patent through trademark protection seems clearly contradictory to policy.


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