TTAB Affirms Another Section 2(e)(5) Functionality Refusal: Beach Canopy

In a thorough and instructive opinion, the Board upheld another Section 2(e)(5) functionality refusal, this time rejecting the proposed product configuration marks shown below for "Canopies of textile or synthetic materials." Once again, the applicant's utility patents and advertising established the functional benefits of its designs. In re Shibumi Shade, Inc., Serial Nos. 90785780 and 90785791 (May 13, 2025) [not precedential] (Opinion by Judge Jennifer L. Elgin).

The proposed marks consist of the configuration of a rectangular canopy (one with horizontal stripes) attached to a curved frame along one side. In real life, the canopies look like this:

As usual, the Board looked to the four factors set out in Morton-Norwich: utility patents, laudatory advertising, alternative designs, and lower cost of manufacturing.

Utility Patents:The specifications and drawings of Applicant Shibumi's utility patents "disclose a shading system where the segments are fitted together to form a single frame, which, in the preferred embodiment [shown below], are formed into a curved (i.e., arched) shape." Moreover, the curved configuration shown in the marks is specifically included in the patent claims in two of applicant's patents.

Here, there is no element of the applied-for marks as described in the applications, save the two-toned shading of the mark in the ’780 Application, which is not essential to the patented invention; and this shading is too incidental to transform the overall functionality of the applied-for mark into a nonfunctional mark.

The Board concluded that "the ’046 and ’904 utility patents are strong and explicit evidence that the applied-for marks have overall utilitarian benefits."

Advertising: Shibumi's advertising confirmed that the "arched frame and canopy design has at least the following utilitarian advantages: (1) ease of set-up; (2) maximization of shade; and (3) ease of repositioning to follow the movement of the sun or direction of the wind." And so, the second Morton-Norwich element "strongly supports a determination that the applied-for marks are functional."

Alternative Designs: The Board noted that competitors sell alternative beach shade designs that "work with the wind and not against it," but it could not determine from the evidence whether those designs work "equally well" as Shibumi's. In any event, "it is not necessary for a finding of functionality that there are a few other designs available; it is sufficient if the product design Applicant seeks to register is one of only a few superior designs." The Board deemed this factor to be neutral

Cost of Manufacture: Examining Attorney Kathryn Browning offered little evidence regarding this factor, and so the Board considered it neutral.

Design Patents: Shibumi argued that its six design patents presumptively indicate that its design is not de jure functional. In re OEP Enters., Ser. No. 87345596, 2019 TTAB LEXIS 278, *20-21 (TTAB 2019). However, the Board noted, this fact alone is not dispositive: the Board "must examine the totality of the evidence, including Applicant’s utility patents and advertising."

Conclusion: Ruling that Shibumi's design patents and other evidence "[do] not tip the balance in its favor," the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Seems like if the wind shifts, you've got a problem

Text Copyright John L. Welch 2025.