TMEP 1202.02(a)(v)(A): Utility Patents and Design Patents

This is the October 2015 Edition of the TMEP

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1202.02(a)(v)(A)    Utility Patents and Design Patents

Utility Patents

Utility patents cover the invention or discovery of a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. 35 U.S.C. §101.

In TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29-30, 58 USPQ2d 1001, 1005 (2001), the Supreme Court resolved a circuit split regarding the proper weight to be afforded a utility patent in the functionality determination, stating:

A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.

See In re Becton, Dickinson & Co., 675 F.3d 1368, 1375, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012) (utility patent supported functionality of closure cap for blood-collection tubes); In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) (shape of loudspeaker system enclosure found functional, per patent disclosure containing evidence of functionality); In re Dietrich, 91 USPQ2d 1622 (TTAB 2009) (patent evidence supported bicycle wheel configuration was functional); In re Udor U.S.A., Inc., 89 USPQ2d 1978 (TTAB 2009)(functionality of spray nozzle head not supported by patent claims); In re Visual Commc’ns Co., 51 USPQ2d 1141 (TTAB 1999) (patent disclosed functionality of light-emitting diode housings); In re Edward Ski Prods., Inc., 49 USPQ2d 2001 (TTAB 1999) (ski mask found functional based on patent evidence); In re Caterpillar Inc., 43 USPQ2d 1335 (TTAB 1997) (patent disclosures supported functionality of elevated sprocket configuration).

The Court in TrafFix went on to hold that where the evidence includes a utility patent that claims the product features at issue, it is unnecessary to consider evidence relating to the availability of alternative designs:

There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose. Here, the functionality of the spring design means that competitors need not explore whether other spring juxtapositions might be used. The dual-spring design is not an arbitrary flourish in the configuration of MDI’s product; it is the reason the device works. Other designs need not be attempted.

TrafFix, 532 U.S. at 33-34, 58 USPQ2d at 1007 (citation omitted).

Therefore, when presented with facts similar to those in TrafFix (i.e., where there is a utility patent establishing the utilitarian nature of the product design at issue), the examining attorney may properly issue a final functionality refusal based primarily on the utility patent. In re Howard Leight Indus., LLC, 80 USPQ2d 1507, 1515 (TTAB 2006). Where functionality appears to be an issue, in the first Office action, the examining attorney should ask the applicant to provide copies of any active, pending, or expired patent(s), and any pending or abandoned patent application(s). 37 C.F.R. §2.61(b). See Valu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1279, 61 USPQ2d 1422, 1429 (Fed. Cir. 2002) (“We agree with the Board that an abandoned patent application should be considered under the first Morton-Norwich factor, because an applied-for utility patent that never issued has evidentiary significance for the statements and claims made in the patent application concerning the utilitarian advantages, just as an issued patent has evidentiary significance.”).

It is not necessary that the utility patent be owned by the applicant; a third-party utility patent is also relevant to the functionality determination, if the patent claims the features in the product design sought to be registered. See AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1834-35 (TTAB 2013); In re Mars, Inc., 105 USPQ2d 1859, 1861 (TTAB 2013); In re Dietrich, 91 USPQ2d at 1627; In re Am. Nat’l Can Co., 41 USPQ2d 1841, 1843 (TTAB 1997); In re Virshup, 42 USPQ2d 1403, 1405 (TTAB 1997); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990). In addition, a third-party patent may include other evidence directly related to the functionality of a proposed mark. In Pohl-Boskamp GmbH & Co., the applicant sought to register the flavor of peppermint for use in connection with pharmaceutical preparations of nitroglycerin in the form of a lingual spray. The examining attorney made of record a third-party patent that described the results of two studies demonstrating that peppermint oil had therapeutic properties in the applicant’s field of goods. In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1046-48 (TTAB 2013). Therefore, the examining attorney may also consult patent databases, including the USPTO’s patent records, to see if utility patents owned by applicant’s competitors disclose the functional advantages of the product design that the applicant seeks to register.

It is important to read the patent to determine whether the patent actually claims the features presented in the proposed mark. If it does, the utility patent is strong evidence that the particular product features claimed as trade dress are functional. If it does not, or if the features are referenced in the patent, but only as arbitrary or incidental features, then the probative value of the patent as evidence of functionality is substantially diminished or negated entirely. TrafFix, 532 U.S. at 34, 58 USPQ2d at 1007 (noting that where a manufacturer seeks to protect arbitrary, incidental, or ornamental features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, functionality will not be established if the manufacturer can prove that those aspects do not serve a purpose within the terms of utility patent); In re Udor U.S.A., Inc., 89 USPQ2d 1978, 80-82 (TTAB 2009) (finding that where the patent’s language and a detailed comparison between the identified features of the patent drawing with the visible features of the trademark drawing established that the patent claims involved components neither shown nor described in the trademark design, the utility patent did not support a finding of functionality); see also Black & Decker Inc. v. Hoover Serv. Ctr., 886 F.2d 1285, 12 USPQ2d 1250 (Fed. Cir. 1989) (lower court’s reliance on and misinterpretation of a patent not in evidence as support for a finding of functionality was clear error); In re Zippo Mfg. Co., 50 USPQ2d 1852 (TTAB 1999) (configuration of cigarette lighter not functional since patent covered slightly different exterior features and claimed internal mechanism); In re Weber-Stephen Prods. Co., 3 USPQ2d 1659 (TTAB 1987) (patent evidence did not show utilitarian advantages of barbeque grill design sought to be registered). Where a utility patent claims more than what is sought to be registered, this fact does not establish the nonfunctionality of the product design, if the patent shows that the feature claimed as a trademark is an essential or integral part of the invention and has utilitarian advantages. Cf. TrafFix, 532 U.S. at 31, 58 USPQ2d at 1006-07 (nothing in the applied-for dual-spring traffic sign design pointed to arbitrary features).

The examining attorney should consider both the numbered claims and the disclosures in the written description, drawings, and abstract of the patent. In Leight, the Board found functionality based on both the claims and the disclosure. The Board rejected the applicant’s argument that the examining attorney erred in looking to the claims made in applicant’s patent, noting that the Supreme Court in TrafFix repeatedly referred to a patent’s claims as evidence of functionality. Leight, 80 USPQ2d at 1510-11. The examining attorney should also consider other evidence described in a patent that is relevant to the functionality of the mark at issue. In re Pohl-Boskamp GmbH & Co., 106 USPQ2d at 1046-47.

Statements regarding utilitarian advantages of the design made in the course of the prosecution of the patent application can also be very strong evidence of functionality. TrafFix, 532 U.S. at 32, 58 USPQ2d at 1006 (“These statements [regarding specific functional advantages of the product design] made in the patent applications and in the course of procuring the patents demonstrate the functionality of the design. MDI does not assert that any of these representations are mistaken or inaccurate, and this is further strong evidence of the functionality of the dual-spring design.”); M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1096 (TTAB 2001).

The fact that the proposed mark is not the subject of a utility patent does not establish that a feature of the proposed mark is nonfunctional. TrafFix, 532 U.S. at 32, 35, 58 USPQ2d at 1006-07; In re Gibson Guitar Corp., 61 USPQ2d 1948, 1950 n.3, (TTAB 2001).

Design Patents

Design patents cover the invention of a new, original, and ornamental design for an article of manufacture. 35 U.S.C. §171. A design patent is a factor that weighs against a finding of functionality, because design patents by definition protect only ornamental and nonfunctional features. However, ownership of a design patent does not in itself establish that a product feature is nonfunctional, and can be outweighed by other evidence supporting the functionality determination. See In re Becton, Dickinson & Co., 675 F.3d at 1375, 102 USPQ2d at 1377; In re R.M. Smith, Inc., 734 F.2d 1482, 1485, 222 USPQ 1, 3 (Fed. Cir. 1984); Caterpillar, 43 USPQ2d at 1339; Am. Nat’l Can Co., 41 USPQ2d at 1843; In re Witco Corp., 14 USPQ2d 1557, 1559 (TTAB 1989).