Monday, May 24, 2021

Precedential No. 12: TTAB Grants Petition to Cancel Registration for Gun Barrel Trade Dress Due to Section 2(e)(5) Functionality

In an impressively exhaustive opinion, the Board granted a petition for cancellation of a registration for the trade dress of a gun barrel (see drawing below), on the ground of de jure functionality under Section 2(e)(5). The registered mark "consists of trade dress applied to gun barrels formed with a mottled pattern of irregularly-sized, rippled patches, resembling a quilt having striated patches of varying shapes and reflectivity depending on the ambient light source and viewing angle." As often happens in Section 2(e)(5) determinations, respondent's own utility patent blew a hole in its case. McGowen Precision Barrels, LLC v. Proof Research, Inc., 2021 USPQ2d 559 (TTAB 2021) [precedential] (Opinion by Judge Mark Lebow).

The Board provided a lengthy and detailed explanation of the technology and the process for manufacturing carbon fiber composite gun barrels. There was no dispute that carbon fiber composite barrels provide various functional benefits to rifles.

What the parties dispute is whether the particular appearance of Respondent’s carbon fiber composite barrels is functional because it is a natural by-product of the manufacturing process that creates the barrels, as Petitioner claims, or whether it is simply the result of Respondent’s cosmetic efforts to create a trade dress that consumers associate with Respondent.

The Board observed that a product design or feature is considered functional in a utilitarian sense if: (1) it is “essential to the use or purpose of the article,” or (2) it “affects the cost or quality of the article.” TrafFix, 58 USPQ2d at 1006 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). If functionality is established under the Inwood test, "a full analysis of all types of Morton-Norwich evidence will not change the result―in particular, the availability of alternatives―and is unnecessary."

The Board looked to respondent's utility patent, noting that “[a] prior [utility] patent … has vital significance in resolving the trade dress claim” and “is strong evidence that the features therein claimed are functional.” TrafFix, 58 USPQ2d at 1005. The Board found that respondent’s trade dress is the result of a manufacturing process that follows Claim 22 of respondent's U.S. Patent 10,168,117, entitled "Fiber Winding System for Composite Projectile Barrel Structure" [pdf here].

The Board further found that respondent employs the "best mode" for practicing its patented invention, which yields the trade dress at issue when ground down with no coating applied. In short,  the appearance of the barrel is dictated by its function.

[W]e view the disclosures in the [’117] Utility Patent as so strong as to be sufficient, by [themselves], to sustain the functionality refusal without consideration of the other Morton-Norwich categories of evidence.” In re OEP Enters., Inc., 2019 USPQ2d 309323, *10-11 (TTAB 2019). See also Grote Indus., 126 USPQ2d at 1203. Simply put, the patent evidence, combined with the evidence regarding Respondent’s manufacturing process, is dispositive on the issue of functionality

And so the Board granted the petition for cancellation under Section 2(e)(5).

Read comments and post your comment here.

TTABlogger comment:  The patent statute requires that an applicant "set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention."  

Text Copyright John L. Welch 2021.


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