TMEP 1202.02(a)(v): Evidence and Considerations Regarding Functionality Determinations

October 2017 Edition of the TMEP

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1202.02(a)(v)    Evidence and Considerations Regarding Functionality Determinations

A determination of functionality normally involves consideration of one or more of the following factors, commonly known as the " Morton-Norwich factors":

  • (1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
  • (2) advertising by the applicant that touts the utilitarian advantages of the design;
  • (3) facts pertaining to the availability of alternative designs; and
  • (4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

In re Becton, Dickinson & Co., 675 F.3d 1368, 1374-75, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-1341, 213 USPQ 9, 15-16 (C.C.P.A. 1982).

Since relevant technical information is often more readily available to an applicant, the applicant will often be the source of most of the evidence relied upon by the examining attorney in establishing a prima facie case of functionality in an ex parte case. In re Teledyne Indus. Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982); In re Witco Corp., 14 USPQ2d 1557, 1560 (TTAB 1989). Therefore, in an application for a trade dress mark, when there is reason to believe that the proposed mark may be functional, the examining attorney must perform a search for evidence to support the Morton-Norwich factors. In applications where there is reason to believe that the proposed mark may be functional, the first Office action must include a request for information under 37 C.F.R. §2.61(b), requiring the applicant to provide information necessary to permit an informed determination concerning the functionality of the proposed mark. See In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (finding that registration is properly refused where applicant failed to comply with examining attorney’s request for copies of patent applications and other patent information). Such a request should be issued for most product design marks.

Accordingly, the examining attorney’s request for information should pertain to the Morton-Norwich factors and: (1) ask the applicant to provide copies of any patent(s) or any pending or abandoned patent application(s); (2) ask the applicant to provide any available advertising, promotional, or explanatory material concerning the goods/services, particularly any material specifically related to the features embodied in the proposed mark; (3) inquire of the applicant whether alternative designs are available; and (4) inquire whether the features sought to be registered make the product easier or cheaper to manufacture. The examining attorney should examine the specimen(s) for information relevant to the Morton-Norwich factors, and conduct independent research of applicant’s and competitors’ websites, industry practice and standards, and legal databases such as LexisNexis®. The examining attorney may also consult USPTO patent records.

It is not necessary to consider all the Morton-Norwich factors in every case. The Supreme Court held that "[w]here the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001); see also In re Becton, Dickinson & Co., 675 F.3d at 1376, 102 USPQ2d at 1378 (stating that "since the patent and advertising evidence established functionality, the Board did not need to analyze whether alternative designs exist"); In re Loggerhead Tools, LLC, 119 USPQ2d 1429, 1434 (TTAB 2016) (finding that the first two Morton-Norwich factors established that applicant’s applied-for mark is functional, before considering the remaining factors). Moreover, there is no requirement that all four of the Morton-Norwich factors weigh in favor of functionality to support a refusal. See Valu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002) ("once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs"); In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042 (TTAB 2013) (finding the flavor peppermint functional for nitroglycerin lingual spray based on evidence that peppermint oil, which imparts a flavor of peppermint, can improve the effectiveness of sublingual nitroglycerin spray); In re Udor U.S.A., Inc., 89 USPQ2d 1978 (TTAB 2009) (affirming the functionality refusal of "a round disk head on a sprayer nozzle" where the third and fourth factors showed that applicant’s competitors manufactured and marketed spray nozzles with similar features, the shape was preferred in the industry, and it appeared efficient, economical, and advantageous, even though applicant’s utility patent and advertising did not weigh in favor of functionality); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (holding orange flavor for pharmaceuticals to be functional based on applicant’s touting of the utilitarian advantages of the flavor and the lack of evidence of acceptable alternatives, even though the mark was not the subject of a patent or patent application and there was no evidence that the flavor affected the cost of the product); In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) (finding that since there was no utility patent, and no evidence that applicant’s guitar configuration resulted from a simpler or cheaper method of manufacture, these factors did not weigh in Board’s decision).

Evidence that the proposed mark is the subject of a utility patent that discloses the utilitarian advantages of the configuration at issue can be sufficient in itself to support a functionality refusal. TrafFix, 532 U.S. at 33, 58 USPQ2d at 1007 ("There is no need, furthermore, to engage... in speculation about other design possibilities"); In re Change Wind Corp., 123 USPQ2d 1453, 1460 (TTAB 2017) ("[T]he utility patent demonstrates the utilitarian advantages of... the design at issue, and for this reason, we find the product configuration functional."); In re Howard Leight Indus., LLC, 80 USPQ2d 1507, 1515 (TTAB 2006) ("[W]e find that applicant's expired utility patent, which specifically discloses and claims the utilitarian advantages of applicant's earplug configuration and which clearly shows that the shape at issue ‘affects the... quality of the device,’ is a sufficient basis in itself for finding that the configuration is functional, given the strong weight to be accorded such patent evidence under TrafFix."). See TMEP §1202.02(a)(v)(A) for further discussion of utility patents.

It is important that the functionality inquiry focus on the utility of the feature or combination of features claimed as protectable trade dress. Morton-Norwich, 671 F.2d at 1338, 213 USPQ at 13. Generally, dissecting the design into its individual features and analyzing the utility of each separate feature does not establish that the overall design is functional. See 15 U.S.C. §1052(e)(5); Teledyne, 696 F.2d at 971, 217 USPQ at 11. However, it is sometimes helpful to analyze the design from the standpoint of its various features. See Elmer v. ICC Fabricating Inc., 67 F.3d 1571, 1579-80, 36 USPQ2d 1417, 1422-23 (Fed. Cir. 1995) (rejecting the argument that the combination of individually functional features in the configuration resulted in an overall nonfunctional product design); In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 2 (Fed. Cir. 1984) (affirming the functionality determination, where the Board had initially considered the six individual features of the design, and then had concluded that the design as a whole was functional); In re Change Wind Corp., 123 USPQ2d at 1456-61 (finding product configuration functional based on the functional role of the components claimed in applicant’s drawing of the mark); In re Controls Corp. of Am., 46 USPQ2d 1308, 1312 (TTAB 1998) (finding the entire configuration at issue functional because it consisted of several individual features, each of which was functional in nature).

Where the evidence shows that the overall design is functional, the inclusion of a few arbitrary or otherwise nonfunctional features in the design will not change the result. See In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1376; Textron, Inc. v. U.S. Int’l Trade Comm'n, 753 F.2d 1019, 1025, 224 USPQ 625, 628-29 (Fed. Cir. 1985); In re Vico Prods. Mfg. Co., 229 USPQ 364, 368 (TTAB 1985).

In the limited circumstances where a proposed trade dress mark is not functional overall, but contains insignificant elements that are functional, the examining attorney must issue a requirement for an amended drawing and allow applicant to remove or delete the functional elements from the drawing or depict them in broken or dotted lines to indicate that they are not features of the mark. See TMEP §1202.02(c)(i) regarding drawings in trade dress applications.

The question of whether a product feature is "functional" should not be confused with whether that product feature performs a "function" (i.e., it is de facto functional) or "fails to function" as a trademark. See TMEP §1202.02(a)(iii)(B) regarding de facto functionality. Usually, most objects perform a function, for example, a bottle holds liquid and a lamp provides light. However, only certain configurations that allow an object to work better are functional under §2(e)(5). As the Morton-Norwich court noted, "it is the 'utilitarian' design of a 'utilitarian' object with which we are concerned." 671 F.2d at 1338, 213 USPQ at 14. Similarly, a product feature that is deemed not functional under §2(e)(5) may lack distinctiveness such that it fails to function as a trademark under §§1, 2, and 45 of the Trademark Act. See TMEP §§1202.02(b)–1202.02(b)(ii) for distinctiveness of trade dress.