TMEP 1202.02(a)(v)(B): Advertising, Promotional, or Explanatory Material in Functionality Determinations

October 2017 Edition of the TMEP

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1202.02(a)(v)(B)    Advertising, Promotional, or Explanatory Material in Functionality Determinations

The applicant’s own advertising touting the utilitarian aspects of its product design or product packaging is often strong evidence supporting a functionality refusal. See, e.g., In re Becton, Dickinson & Co., 675 F.3d 1368, 1375-76, 102 USPQ2d 1372, 1377-78 (Fed. Cir. 2012); In re Loggerhead Tools, LLC, 119 USPQ2d 1429, 1433 (TTAB 2016); AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829 (TTAB 2013); Kistner Concrete Prods., Inc. v. Contech Arch Techs., Inc., 97 USPQ2d 1912 (TTAB 2011); Mag Instrument, Inc. v. Brinkmann Corp., 96 USPQ2d 1701 (TTAB 2010); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006); In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001); M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086 (TTAB 2001); In re Visual Commc’ns Co., 51 USPQ2d 1141 (TTAB 1999); In re Edward Ski Prods., Inc., 49 USPQ2d 2001 (TTAB 1999); In re Caterpillar Inc., 43 USPQ2d 1335 (TTAB 1997); In re Bio-Medicus Inc., 31 USPQ2d 1254 (TTAB 1993); In re Witco Corp., 14 USPQ2d 1557 (TTAB 1989).

An applicant will often assert that statements in its promotional materials touting the utilitarian advantages of the product feature are mere "puffery" and, thus, entitled to little weight in the functionality analysis. However, where the advertising statements clearly emphasize specific utilitarian features of the design claimed as a mark, the Board will reject such assertions of "puffing." See, e.g., Gibson Guitar, 61 USPQ2d at 1951; Goodyear Tire and Rubber Co. v. Interco Tire Corp., 49 USPQ2d 1705, 1716-17 (TTAB 1998); Bio-Medicus, 31 USPQ2d at 1260 (TTAB 1993); Witco, 14 USPQ2d at 1559-61 (TTAB 1989).

In Gibson Guitar, the Board found the design of a guitar body to be functional, noting that applicant’s literature clearly indicated that the shape of applicant’s guitar produced a better musical sound. Applicant’s advertisements stated that "[t]his unique body shape creates a sound which is much more balanced and less ‘muddy’ than other ordinary dreadnought acoustics." 61 USPQ2d at 1951.

Where functionality appears to be an issue, in the first Office action, the examining attorney must 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. 37 C.F.R. §2.61(b). The examining attorney should also examine the specimen(s), and check to see if the applicant has a website on which the product is advertised or described.

In addition, examining attorney may check the websites of applicant’s competitors for evidence of functionality. See In re Van Valkenburgh, 97 USPQ2d 1757, 1762-63, (TTAB 2011); Gibson Guitar, 61 USPQ2d at 1951. Industry and trade publications and computer databases may also be consulted to determine whether others offer similar designs and features or have written about the applicant’s design and its functional features or characteristics. In Gibson Guitar, the record included an advertisement obtained from the website of a competitor whose guitar appeared to be identical in shape to applicant’s configuration, touting the acoustical advantages of the shape of the guitar. 61 USPQ2d at 1951.