E.D. Va. District Court Upholds TTAB Affirmance of Functionality of Bathtub Overflow Drain Cap

In another action for review under Section 1071(b) of the Trademark Act, the U.S. District Court for the Eastern District of Virginia (a/k/a the Rocket Docket) wasted no time in upholding the TTAB's decision finding the product configuration of a bathtub overflow drain cap to be de jure functional under Section 2(e)(5). The court granted the Commissioner of Patent's motion for summary judgment and denied Applicant WCM's cross-motion. WCM Industries, Inc. v.Andrew Hirschfield, Case No. 1:20-cv-00558 (E.D. Va. April 6, 2021).

 In its March 17,  2020 decision [TTABlogged here] the Board found that applicant's own utility patents were "sufficient to make the determination of functionality." Reviewing applicant's patents, the Board found that "the product configuration mark results from the utilitarian snap on feature. The size of the cover is dictated by the curvature of the tub, the depth of the side walls is dictated by the requirement to be able to snap on and allow water flow but not too deep as that is aesthetically unpleasant."

Applicant argued that its utility patents protect the functional aspects of the interior of the cover, not the outward face and sidewall, which provide an aesthetically pleasing design. The Board nixed that argument:

The overall configuration is directed by utilitarian concerns of an overflow cover that is used to cover the round overflow pipe and plate while allowing water to flow through the drainage hole. The product configuration makes the overflow cover easier to install (no screws, rounded configuration snaps on to cylindrical retainer nut) and safer (no screws so smooth rounded surface to avoid abrasion on the skin). In addition, the drainage opening encompassed by the sidewall allows for the circular overflow cover to snap onto the circular retainer nut.

The district court observed that "The Supreme Court has articulated a preference against granting trade dress status because 'product design almost invariably serves purposes other than source identification." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 523 U.S. 23, 29 (2001). The first hurdle to trademark protection for a product shape is functionality. "The proper avenue for the protection of a functional article is patent law, not trademark law." 

The court applied the Morton-Norwich factors, noting that the first two "carry the most weight:" (1) utility patents and (2) advertising touting the utilitarian benefits of the design. As to the first factor, "the products design is present in Plaintiff's utility patents for their overflow drain system as a whole." 

Moreover, Plaintiff WCM had "used these utility patents to protect their Innovator line of product, including the design of the Overflow Cap Mark, in litigation." In one case, a representative of WCM testified that the cap has the "functional purpose" of preventing items from entering the drainpipe." [That's de facto functionality (i.e., utility), not de jure functionality - ed.]. In a complaint filed with the ITC, WCM stated that is utility patents are directed to an assembly that is free of screws and includes a "decorative cap which snaps on to an associated nut element, eliminating the possibility of cross-threading or damaging components of the assembly. [Seems innocuous to me - ed].

As to the second factor, the record included advertising by WCM that touted the functional advantages of the design. The court noted that the inclusion of the term "Hi-Flow" in the product name "strongly suggests that its flow capacity is a practical advantage and thus that this design, in the eye of its manufacturer, has a functional benefit as well as an aesthetic one." 

The court declined to address the third Morton-Norwich factor (alternative designs), since that issue is irrelevant when the first two factors are satisfied. TrafFIx, 522 U.S. at 33-34. Finally, under the fourth factor, one of the patents indicated that the subject design is "comparatively simple or cheap to manufacture." 

Concluding that WCM had failed to satisfy its burden of proof to show that its product configuration is non-functional, the court granted the USPTO's motion for summary judgment.

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TTABlogger comment: It's very hard to overcome utility patent evidence in these product configuration cases. Not that I'm shedding any tears for the patentee.

Text Copyright John L. Welch 2021.