WYHA? TTAB Affirms Section 2(e)(5) Functionality Refusal of Packaging for Cables and Wire.

In a thorough, 39-page opinion, the Board affirmed a Section 2(e)(5) functionality refusal of the packaging designs shown below for "electric cables and wire." The Board found that numerous features of the designs were "dictated by the utilitarian purpose they serve." Moreover, applicant's own patents revealed "the functionality of significant aspects of the designs," and its advertising touted some of the features. Alternatively, the Board concluded that the packaging designs are not inherently distinctive and lack acquired distinctiveness. Would you have appealed? In re My Reelex Packaging Solutions, Inc., Serial Nos. 87285383 and 87285412 (October 23, 2019) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).

Functionality: Applicant Reelex described the designs as a box with square sides and rectangular front, back, top, and bottom, and a small circular hole in the center of the front of the box with a payout tube and collar positioned with the hole. Reelex touted itself a leader in the figure-8 winding business and bragged that its box designs have been the “standard” for many years.

These claims suggest that competitors need to use boxes of the same general size and shape in order to meet stacking needs and shelf spacing at warehouses, distribution centers, and retail outlets. Using nonstandard packaging would place Applicant’s competitors (or competitors of Applicant’s licensees) at a substantial disadvantage,  which suggests the standard box designs at issue here are functional.

Reelex’s winding “technology dates back to World War II when the REELEX figure-eight coil was first proposed to the military as a way to lay down field wire while still allowing an infantryman free use of both hands.” Reelex obtained patents for this technology. "The technology proved particularly useful for small gauge wire and cable and eventually led to what Applicant calls its REELEX system." "Applicant’s competitors have a right to use box designs that will work well with figure 8 wound coils no longer covered by patents."

The Board described seven useful features of Reelex's boxes designed for the figure-8 winding system.

The seven useful features . . .  combine to define a box with at least the following characteristics:

• square side panels and rectangular front, back, top and bottom panels, where the rectangular panels are narrower than long;
• a payout hole positioned near the center of the front panel;
• a payout tube extending from the payout hole to the center of the coil; and
• sizing that fits the coil snugly and a hole sizing that accommodates different sized cable and wire.

These features are all present in the ’383 and ’412 boxes and show that the designs were dictated by the utilitarian purpose they serve.

The Board found that these combined features are “essential to the use or purpose of the article or affect[] the cost or quality of the article," Inwood Labs., Inc. v. Ives Labs., Inc., 456 US 844, 214 USPQ 1, 4 n.10 (1982), and therefore the designs are de jure functional.

Although this analysis sufficed to establish Section 2(e)(5) functionality, the Board went on to discuss the Morton-Norwich factors. As to Reelex's expired patents: "Overall, the disclosures and preferred embodiments in the patents reveal the functionality of significant aspects of the designs." Reelex's advertising touted a number of useful benefits of the designs. The Board saw no evidence of alternative designs, noting that when a design is de jure functional under Inwood, alternative designs are irrelevant anyway.

Acquired Distinctiveness: Assuming arguendo that Reelex's designs are not functional, the Board considered its claim of acquired distinctiveness under Section 2(f). [Reelex did not argue that the designs are inherently distinctive]. "Given the common nature of the trade dress before us, we find that only a strong showing of acquired distinctiveness will suffice. Applicant’s evidence falls far short of satisfying this standard."

Reelex's advertising and packaging always displayed the REELEX mark, and the Board noted that "[c]onsumers are not likely to rely on the design of the box as a source identifier when Applicant’s licensees prominently feature these two trademarks on the boxes." There was no evidence of media recognition and no survey evidence. Third-parties who use similar trade dress also display their own trademarks, and so this was not evidence of copying Reelex's trade dress.

Reelex also submitted five declarations that were "nearly identical and formulaic (although the use of reordered sentences may make the declarations appear different)." The Board found that the declarations actually tended to show that the designs are not distinctive. There were no declarations from retailers or end users of electrical wire and cable.

Four of the five declarants are licensees of Applicant and, therefore, stand to benefit if Applicant is successful here. These are presented as sophisticated, knowledgeable declarants from different companies. Yet each declarant made exactly the same statements about the trade dress. Clearly someone other than the declarants prepared these documents. All of these considerations undermine the reliability of the declarations. The fifth declarant represents a large trade group. We would be inclined to place more weight on this declaration if it had addressed industry-wide understanding, but it is essentially identical to all the others. We find this declaration also has little probative value.

The Board found that the evidence of record, including direct and circumstantial evidence, "does not prove the two box designs have acquired distinctiveness. And the Applicant has effectively conceded that its packaging trade dress is not inherently distinctive."

Conclusion: "The refusals to register Applicant’s ’383 and ’412 box designs are affirmed both because the designs are functional, and because they are not distinctive."

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TTABlog comment: Well, would you have? Note that one of the panelists was Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office.

Text Copyright John L. Welch 2019.