Thursday, May 25, 2023

TTAB Reverses Functionality Refusal of Rocking Chair Design But Finds Acquired Distinctiveness Lacking

The Board reversed a Section 2(e)(5) functionality refusal of a product configuration mark (shown below) comprising the side of a rocking chair (not including the high back and curved base). Applying the Morton-Norwich factors, and giving some weight to applicant's design patents, the Board concluded that the USPTO failed to make a prima facie case of functionality. However, Applicant JBL failed to prove that this design has acquired distinctiveness, and so registration was refused on the Principal Register, but the Board accepted JBL's alternative amendment to the Supplemental Register. In re JBL International, Inc., Serial No. 88941388 (May 22, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington).

There were no utility patents of record, nor any evidence showing that JBL touted any utilitarian advantages of this product design. Nor was there any evidence that JBL’s product design serves to minimize the cost or simplify the manufacture of its rocking chairs.

JBL pointed to its ownership of seven design patents for rocking chairs of the same or a very similar configuration. The Board noted that "[o]ur law recognizes that the existence of a design patent for the very design for which trademark protection is sought 'presumptively . . . indicates that the design is not de jure functional.'" And so, the design patents constituted evidence weighing against a finding of functionality, but the Board pointed out that they are not dispositive of the issue.

The examining attorney contended that evidence of third-party rocking chairs “shows that [applicant's design] is one of a few superior designs available." The Board was not impressed: "while the Examining Attorney points out that some of the third-party rocking chairs have 'an arm-rest connected to the chair’s back and front legs with an angled rear leg' or 'an armrest and front leg that meet at an approximate 90-degree angle,' there is no explanation how these design traits are 'superior' or how they are utilitarian because they are 'essential to the use or purpose' of the rocking chairs." Instead, the evidence showed that "there are several alternative functionally equivalent designs available to Applicant's competitors. Indeed, some of the third-parties' rocking chairs bear little resemblance in product design to Applicant's." [see example below]

And so, the Board found that the USPTO had failed to make a prima facie case of functionality.

Turning to the issue of acquired distinctiveness, the Board applied the Converse factors, with JBL relying on its length of use (since 2010), sales figures (very little meaningful evidence), and advertising and promotion (ditto). It did not offer any evidence of "look for" advertising, but pointed to its registered logo (below) depicting a rocking chair.The Board noted, however, that the logo does not feature the elements of the design at issue, nor was there any evidence regarding the extent of consumer exposure to this mark.

Finally, there was no direct evidence of consumer perception of the proposed mark, nor any evidence of copying or of unsolicited media attention.

And so, the Board concluded that JBL fell short of meeting its high burden to prove acquired distinctiveness for its product design. The Board did, however, accept JBL's amendment to the Supplemental Register, which amendment was made in the alternative during prosecution of the subject application.

Read comments and post your comment here.

TTABlogger comment: In my view, the existence of a design patent should have no bearing on the issue of whether the proposed mark is functional in a trademark sense because the respective standards for functionality are different. See Sarah Burstein, Faux Amis in Design Law, 105 TMR 1455 (2015). [pdf here].

Text Copyright John L. Welch 2023.


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