Monday, August 19, 2019

TTAB Finds Wedge Shape for Yoga Blocks Functional Under Section 2(e)(5)

The Board affirmed a Section 2(e)(5) refusal to register the product configuration shown below, for "yoga blocks," finding the proposed mark to be de jure functional and therefore unregistrable. Applicant's advertising touted the advantages of the design and "there appear to be no alternative designs available that would work as well . . . ." In re Amanda Field d/b/a Republic Yoga, Serial No. 87562426 (August 14, 2019) [not precedential] (Opinion by Judge Jonathan Hudis).

Applicant described the design as "a three-dimensional configuration of a triangular block which has beveled edges." Examining Attorney Saima Makhdoom submitted the text of a U.S. patent application filed in 2008, entitled "Yoga comfort Wedge System," describing and claiming a wedge-shaped device, but the Examining Attorney did not include the patent application drawings. The Board noted that it could not take judicial notice of the complete application, and it concluded that it could not give this evidence "full evidentiary weight." [Is a third-party patent application entitled to any weight? Is it mere hearsay? What if it's a published application that hasn't been examined yet? - ed.]. Various websites and blog postings discussed the use of a "yoga wedge."

The Board stepped through the Morton-Norwich factors, finding that Applicant's own website touted the utilitarian advantages of the wedge shape: it stabilizes joints and creates "a safe environment for supported yoga poses and practice, and in the practice of yoga if the person is injured or in pain."

As to alternative designs, the evidence depicted yoga devices in triangular (wedge), block, and rectangular configurations. Several blog posts discussed the utilitarian usefulness of the wedge design. The Board found that the wedge shape provided "superior utilitarian benefits over block or rectangular shaped designs, and is certainly ;essential to the use or purpose of the article' under Inwood. [No mention was made of the "beveled edges" on Applicant's device - ed.].

The Board concluded that the Examining Attorney had presented a prima facie case under Section 2(e)(5), which the Applicant failed to rebut. Therefore the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: The Board's unwillingness to take judicial notice of government records is still rather mystifying.

Text Copyright John L. Welch 2019.


At 4:06 PM, Anonymous Anonymous said...

The Board explanation for its refusal to take judicial notice of third-party registrations is this: "[T]he Board does not take judicial notice of either third-party registrations or a party’s own registration[s] insofar as the Trademark Rules of Practice specify, as discussed above [in Trademark Rule 2.122(d)], how to make such registrations of record in an inter partes proceeding." TBMP 704.03(b)(1)(A) n.3.

Thing is, Trademark Rule 2.122(d) only addresses how a party to a proceeding makes *its* registrations of record, and does not address making *third-party* registrations of record. Moreover, 2.122(d) does not apply to ex parte examination, and “as a matter of practice, the evidentiary requirements in an ex parte record are less formal than in an inter partes context.” In re Urbano, 51 U.S.P.Q.2d 1776, 1779 n.6 (T.T.A.B. 1999).

Go figure.

At 11:56 AM, Blogger Pamela Chestek said...

Perhaps it wasn't clearly what was submitted to the Patent Office. If it was a published application, or even the application as submitted, it would have had drawings. And seems rather coy of the attorney to submit only the text and not the drawings.


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