Monday, July 24, 2017

Precedential No. 19: TTAB Affirms Section 2(e)(5) Functionality Refusal of Wind Turbine Configuration

The TTAB affirmed a Section 2(e)(5) refusal to register the product configuration shown below, for "Wind turbines; Windpowered electricity generators," finding the design to be functional because "it is essential to the use or purpose of the product." Applicant's own utility patent took the wind out of its sails. Assuming arguendo that the design was not de jure functional, the Board also considered and rejected applicant's claim that the applied-for mark had acquired distinctiveness under section 2(f). In re Change Wind Corp., 123 USPQ2d 1453 (TTAB 2017) [precedential] (Opinion by Judge Cheryl S. Goodman).


Section 2(e)(5) of the Trademark Act bars registration of a proposed mark that "comprises any matter that, as a whole, is functional." A product design or product feature is considered to be functional for trademark purposes (i.e., de jure functional) if it is: (1) “essential to the use or purpose of the article;” or if it (2) “affects the cost or quality of the article.” TrafFix Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)).

In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982), sets forth four nonexclusive types of evidence that may be helpful in determining the issue of functionality: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

However, the Supreme Court in TrafFix made it clear that there is no need to consider alternative designs if the product configuration at issue is functional under the Inwood standard. "Thus, there is no requirement that all of the categories of evidence identified in Morton-Norwich appear in every case in order to make a functionality refusal. In re Heatcon, Inc., 116 USPQ2d 1366, 1370 (TTAB 2015)."

Here, in considering the functionality of the configuration as a whole, we may consider the functional role of the individual features of the design—the conical housing and the helical wings—to determine whether the applied-for mark is functional and thus, unregistrable.

Utility Patent: In TrafFix, the Supreme Court stated that a utility patent is strong evidence that the features an applicant claims are functional. Applicant submitted its U.S. Patent 9,103,321, directed to an "on or off grid vertical access wind turbine and self-contained rapid deployment autonomous battlefield robot recharging and forward operating base horizontal axis wind turbine.”


The Board found that the features contained in the applied-for mark (helical wings and housing enclosing frame structure) are "specified in the twenty-one claims of the invention:"

A wind turbine, comprising: a frame structure; a housing enclosing said frame structure . . . helical swept wings that rotate to capture wind throughout a circumference of the rotary wing assembly from both windward and leeward sides so that a torque input spreads evenly to mitigate damaging harmonic pulsations that would otherwise arise without the torque input spreading evenly . . .

Applicant contended that the patent describes certain advantages associated with "the mechanical gear drive train system and with components that are NOT found in the design sought to be registered." The Board disagreed:

However, both the disclosures and the claims of the patent reveal that the shape of the housing and he use of helical wings and their placement are not merely arbitrary, ornamental, or incidental, but serve an essential function in the invention for the VAWT and that these features are necessary for its use.

The Board pointed out that the protective housing enclosing the structural frame  and the helical wings "are features of the invention as set forth in the specified claims." The patent specification indicates the utilitarian advantages these features. The preferred embodiment of the invention is shown in patent Figures [See Fig. 1A above] that are essentially the same as the drawing of the applied-for mark.

The patent thus plainly discloses the functional role of the three components disclosed and claimed in Applicant’s drawing of the mark: the conical tower, the helical wings, and the boundary fences affixed to the helical wings. These features are necessary elements of the invention and are essential to the functioning of Applicant’s wind turbine.

Because applicant's utility patent "demonstrates the utilitarian advantages of the VAWT design at issue," the Board found that the product configuration is functional under Section 2(e)(5).

Advertising: The Board found the advertising evidence in the record to be "inconclusive" on the issue of functionality, because it did not "explicitly" tie the touted benefits of applicant's products to the aspects of the turbine depicted in the trademark drawing . "While we think that some consumers may connect the listed advantages as flowing from the external design aspects depicted in the application, some may not."


Alternative Designs: Because the Board found the applied-for design to be functional under the Inwood test, there was no need to consider design alternative. Nonetheless, the Board reviewed the evidence provided by applicant, but found that the alternative "are all merely variations of a single basic VAWT design." Indeed, the Board observed, "[i] is probative of functionality that others in the industry use similar designs; they do not have to be identical."

It is apparent there are only a limited number of variations in these design elements which maintain the functional advantages inherent in those design elements and in the overall VAWT design. To allow Applicant to register a design incorporating one of that quite limited number of superior designs as a trademark clearly would hinder competition.

Cost of Manufacture: Because the utility patent and the advertisements discloseduse-related benefits, the lack of cost savings does not undermine the finding of functionality. A product feature can be found functional if its affects either the quality or cost of the product. "In
other words, evidence that a design costs more, or has no impact on cost, is irrelevant if the design is found to work better." In any case, the Board found applicant's evidence of purported cost savings
to be inconclusive as to whether the savings were attributable to the design features depicted in the trademark drawing or to the turbine’s internal workings.

Conclusion on Functionality: That Board found that the evidence, viewed as a whole, establishes that the subject design is functional under Section 2(e)(5) because it is essential to the use or purpose of the product. Applicant has failed to rebut the evidence that supports this conclusion, "specifically, the utility patent and the possible adverse effect on competition because of the similarity of Applicant’s design to those of other VAWTs."

Acquired Distinctiveness: Of course, a product configuration that is functional under Section 2(e)(5) cannot be registered. Nonetheless, for the sake of completeness, the Board considered applicant's Section 2(f) claim of acquired distinctiveness.

Applicant asserted five years of exclusive use, and provided declaration evidence that it has spent $48,750 for sales consulting and $3,000 in marketing expenditures for a trade show booth. Applicant was also mentioned a few times in media, and it features a picture of the product on its website, where it claims $12 million in pre-production orders for its $59,000 wind turbine. Finally, applicant pointed to its "look for" advertising, depicted below:


The Board observed that five years of is not alone sufficient to establish acquired distinctivenesss for a product configuration. As to applicant's "look for" advertising, there was no evidence regarding extent of exposure to, or effect on, relevant consumers. Likewise, there was no evidence of the effect of the the trade show and website promotion on consumer perception. The pre-production sales figure may indicate commercial success of the product, but it does not show that consumers view the design as a trademark. The evidence regarding media coverage on Fox News and on a radio show failed to indicate the subject matter of the coverage, and the sole newspaper article focuses on the advantages of the design, not on any configuration mark.

And so the Board blew away applicant Section 2(f) claim.

Ruling: In sum, the Board affirmed the Section 2(e)(5) functionality refusal, and also affirmed the USPTO's rejection of applicant's claim of acquired distinctiveness.

Read comments and post your comment here.

TTABlog comment: Hat tip to Examining Attorney Jeffrey S. DeFord, who handled the prosecution through seven requests for reconsideration and the appeal, over a period of three-and-one-half years. And to the Board panel for digging into the details of this utility patent

Text Copyright John L. Welch 2017.

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