Friday, November 17, 2023

TTAB Orders Cancellation of Registration for Configuration of Glass-Breaking Device on the Ground of Section 2(e)(5) Functionality

In a highly detailed and instructive opinion, the Board granted a petition for cancellation of a registration for the product configuration shown below, for a "spring-loaded glass-breaking device," on the ground of de jure functionality under Section 2(e)(5). The parties proceeded under the Accelerated Case Resolution (ACR) regime, waiving pre-trial disclosures and trial and submitting briefs accompanied by evidence in the form of declarations or affidavits. Trevari Media, LLC v. Laurent Colasse, Cancellation No. 92078038 (November 14, 2023) [not precedential[ (Opinion by Judge Jonathan Hudis).

The Board looked to the factors set forth in In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982), in evaluating utilitarian functionality: (1) the existence of a utility patent that discloses the utilitarian advantages of the registered subject matter; (2) advertising by the registrant that touts the utilitarian advantages of the subject matter; (3) facts pertaining to the availability of alternative designs; and (4) facts pertaining to whether the subject matter results.

Because respondent's product (as described in the application) includes a seat-belt cutting blade, the Board referred to the product as a "GLASS-BREAKING/SEAT-BELT CUTTING Device." The purpose of the device is to help an individual escape from a vehicle in an emergency.

The Board found that all of the functional features of the device are depicted, discussed, and claimed in a European patent. The Board noted that the fact that this patent was issued in Europe has no effect on the Section 2(e)(5) analysis. See Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1478 (TTAB 2017). Since a prior patent has "vital significance in resolving the trade dress claim," respondent "must carry the heavy burden of showing that the feature[s of the device are] … not functional, for instance by showing that … [they are] merely … ornamental, incidental, or arbitrary aspect[s] of the device[.]" The Board, after a thorough review of the evidence and testimony regarding the structure and function, with many annotated illustrations, concluded that Respondent failed to meet that burden.

With regard to registrant's advertising, the Board found that "[n]early all of the graphical and textual matter on Respondent’s product packaging . . . pertains to the functional operations of the device: a seat belt cutter in an elongated and winged configuration with a window breaker in a stepped or ridged housing affixed to a keychain, used for the purpose of escaping from a car in an emergency."

As to manufacturing efficiencies, there was little evidence in the record, but it supported a finding that  the overall configuration of the GLASS-BREAKING/SEAT-BELT CUTTING Device is functional.

Finally, as to respondent's evidence of alternative designs, the Board first observed that, since it found the device to be "utilitarian functional" [a/k/a de jure functional - ed.] under the other Morton-Norwich factors, it need not consider the existence or acceptability of alternative designs. TrafFix, 58 USPQ2d at 1006-07; In re Becton, Dickinson, 102 USPQ2d at 1378; Valu Eng’g, 61 USPQ2d at 1427.

Second, respondent did not supply evidence or analysis showing that the competitors’ products or petitioner’s new product made of record "are equivalent in desired mechanical properties to those of Respondent’s design."

The EU ’787 Patent discloses the utilitarian advantages of the design of Respondent’s GLASS-BREAKING/SEAT-BELT CUTTING Device as shown in Respondent’s ’245 Registration. The packaging and online advertising of Respondent’s company for the Resqme product incorporating the design shown in the ’245 Registration touts the utilitarian advantages of the design. Although not totally in sync, testimony from the named inventors on the EU ’787 Patent demonstrates that the elements of Respondent’s GLASS-BREAKING/SEAT-BELT CUTTING Device in which Respondent claims rights were designed based on functional considerations as to (1) user operation of the device, and (2) ease of manufacture. Facts pertaining to the availability of alternative designs comprise a neutral factor here, in view of controlling case law and due to the dearth of relevant evidence and analysis.

And so, the Board found that "the design of Respondent’s GLASS-BREAKING/SEAT-BELT CUTTING Device, as shown in Respondent’s ’245 Registration, is functional based on utilitarian considerations."

Read comments and post your comment here.

TTABlogger comment: Once in a while, it feels good to put on my patent attorney hat (as long as it doesn't muss my hair.). Do you think this opinion should be precedential? If so, there's a form for that [here].

Text Copyright John L. Welch 2023.


At 5:52 AM, Anonymous Jason Witten said...

Thanks for the write-up, John, and congrats on the award. I was the attorney for the prevailing party in this case. It would be great if someone applied for the ruling to be made precedential. As you put it, the opinion is "highly detailed and instructive". For example, it's one of the rare cases where the inventors of the design testified that the design was functional. In functionality cases, evidence related to the patent can include statements the inventors made to the PTO during prosecution of the patent. Declarations and testimony by the inventors made under oath AFTER prosecution would be a sound addition to this line of precedent. It would seem common sense, and perhaps therefore not require precedent to make this point, but it did seem there was a hole in the precedent that this would fill (along with the guidance the opinion provides on a number of issues).


Post a Comment

<< Home