1202.02(a)(iv) Burden of Proof in Functionality Determinations
The examining attorney must establish a prima facie case that the proposed trade dress mark sought to be registered is functional in order to make and maintain the §2(e)(5) functionality refusal. See In re Becton, Dickinson & Co., 675 F.3d 1368, 1374, 102 USPQ2d 1372, 1376 (Fed. Cir. 2012); Textron, Inc. v. U.S. Int'l Trade Comm'n, 753 F.2d 1019, 1025, 224 USPQ 625, 629 (Fed. Cir. 1985); In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed. Cir. 1984). To do so, the examining attorney must not only examine the application content (i.e., the drawing, the description of the mark, the identification of goods or services, and the specimen, if any), but also conduct independent research to obtain evidentiary support for the refusal. In applications where there is reason to believe that the proposed mark may be functional, but the evidence is lacking to issue the §2(e)(5) refusal in the first Office action, a request for information pursuant to 37 C.F.R. §2.61(b) must be issued to obtain information from the applicant so that an informed decision about the validity of the functionality refusal can be made.
The burden then shifts to the applicant to present "competent evidence" to rebut the examining attorney’s prima facie case of functionality. See In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1374; Textron, Inc. v. U.S. Int'l Trade Comm'n, 753 F.2d at 1025, 224 USPQ at 629; In re R.M. Smith, Inc., 734 F.2d at 1484, 222 USPQ at 3; In re Bio-Medicus Inc., 31 USPQ2d 1254, 1257 n.5 (TTAB 1993). The "competent evidence" standard requires proof by preponderant evidence. In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1377.
The functionality determination is a question of fact, and depends on the totality of the evidence presented in each particular case. In re Becton, Dickinson & Co., 675 F.3d at 1372, 102 USPQ2d at 1375; Valu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1273, 61 USPQ2d 1422, 1424 (Fed. Cir. 2002); In re Udor U.S.A., Inc., 89 USPQ2d 1978, 1979 (TTAB 2009); In re Caterpillar Inc., 43 USPQ2d 1335, 1338 (TTAB 1997). While there is no set amount of evidence that an examining attorney must present to establish a prima facie case of functionality, it is clear that there must be evidentiary support for the refusal in the record. See, e.g., In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1342, 213 USPQ 9, 16-17 (C.C.P.A. 1982) (admonishing both the examining attorney and the Board for failing to support the functionality determination with even "one iota of evidence").
If the design sought to be registered as a mark is the subject of a utility patent that discloses the feature’s utilitarian advantages, the applicant bears an especially "heavy burden of showing that the feature is not functional" and " overcoming the strong evidentiary inference of functionality." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 30, 58 USPQ2d 1001, 1005 (2001); Udor U.S.A., Inc., 89 USPQ2d at 1979-80; see TMEP §1202.02(a)(v)(A).