Tuesday, January 05, 2016

TTAB Finds Monster's Flat Cable Design Functional and Generic

The Board affirmed two refusals to register, on the Supplemental Register, the product configuration shown below for "Headphone cables sold as an integral component of headphones," on the grounds of functionality and genericness. The marks "consists of a headphone cable having a cross-section in the form of an oblong, wherein the cable features contoured outer edges and is significantly wider than it is thick." In re Monster Cable Products, Inc., Serial No. 85318060 (December 28, 2015) [not precedential].

Functionality: Applying the Morton-Norwich factors, and guided by the CAFC's decision in In re Becton, Dickinson and Co., 102 USPQ2d 1372 (Fed. Cir. 2012) [TTABlogged here], the Board concluded that the proposed mark is, as a whole, functional. Applicant Monster's utility patent disclosed the usefulness of (it doesn't tangle), and claimed, the flat cable design. Although the patent did not discuss the contoured sides of the flat cable, that aspect of the design was, according to the Board, "imperceptible and inconsequential." Monster's advertising emphasized the non-tangle benefit of the headphone cable, attributing this feature to the fact that the cable is "significantly wider than it is thick."

The Board reviewed a number of alternative cable designs submitted by Monster - although the Board did not have to consider them in view of the persuasive impact of the patent and advertising evidence. These alternative designs, the Board found, did not offer the same features as Monster's configuration.

The Board concluded that the applied-for mark is functional under Section 23(c), and therefore unregistrable on the Supplemental Register.

Genericness: A product design may be found generic when the design is "at a minimum, so common in the industry that it cannot be said to identify a particular source." Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1555 (TTAB 2009) [Guitar shape] [TTABlogged here].

The Board found that Examining Attorney Kim Teresa Moninghoff had submitted ample evidence that other entities provide headphone cables that are oblong and have curved or rounded edges that are the same as, or highly similar to Monster’s design: i.e., headphone cables that are significantly wider than thick, and have curved or rounded side contours.

The Board concluded that Monster's applied-for mark is a "generic design for flat headphone cables, incorporating the common, basic elements of an oblong cross-section (i.e., wider than it is thick) and curved edges."

Read comments and post your comment here.

TTABlog comment: Do you think this case will go up on appeal? How do you think it will come out?

Text Copyright John L. Welch 2016.


At 8:43 AM, Anonymous Elizabeth King said...

The Board and the Office generally is doing a great job with the nuances of 2(e)5 functionality the past few cases I have come across. I was surprised that the flat cable is ubiquitous in the industry so as to be a generic design. But if the evidence supports that then I can appreciate the dual basis of the refusal and the Board's decision to uphold both grounds. If the design hadn't been functional, would the other basis for refusal be "generic" or "failure to function as a mark"? Could it be both generic and fail to function? Is there really a distinction between the two? We can say the latter refers to capability but genericness does too. Alleged "marks" can cross from capable to incapable and theoretically back again depending on the existence of new evidence.

At 11:43 AM, Blogger TMAttorneyHeller said...

They looked like any other headphone cables to me.

At 2:43 PM, Anonymous Anonymous said...

I think the case is likely to go to the CAFC primarily because of the players involved (big, aggressive mark owner and well-known, experienced trademark counsel) and the CAFC may question or have something to say about the genericness determination, but I doubt the CAFC would overturn the functionality determination.

At 3:20 PM, Anonymous Phil Green said...

Well yes, I would expect TTAB to decide that the shape of a cable, which shape helps avoid tangling, would be functional. I have found that type of cable on Plantronics, mini-audio cables and other products that need to keep a setup tangle-free. I would expect this to be upheld on Appeal. If one handle cables since the 1960s one comes to appreciate functional technologies that might prevent tangles. The parties should save their shareholders the cost of the appeal and come up with something not so "real" to differentiate their goods from the others.


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