TTAB Affirms Trademark Rejection Based On Functionality

On September 29, 2015, the TTAB affirmed an Examining Attorney's refusal to register product configuration trade dress on the Supplemental Register on functionality grounds. The case underscores the difficulty of securing registration of product configuration trade dress (on any register) when functionality issues are in play.

Applicant Heatcon, Inc. sought to register the three-dimensional configuration shown below for industrial equipment that fabricates bonded composite materials:

The Board applied the traditional four-factor test under In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-1341 (CCPA 1982) to determine whether the design is functional. That test considers (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) whether advertising materials tout the design's utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) whether the design results from a comparatively simple or inexpensive method of manufacturing the product.

As to the first factor, the Examining Attorney noted the existence of a third-party patent for a portable curing system for repairing vacuum bags:

The Board noted a number of similarities between Heatcon's product and the patented device. Significantly, the patent disclosed that the specific arrangement of various functional features would lead to utilitarian advantages such as allowing the air input line to be easily connected to the port, easily discharging air or other fluid into the environment, and easily plugging the vacuum sensor lines into the connectors. Given the weight accorded utility patent evidence in the functionality analysis, the Board found that this patent was prima facie evidence that Heatcon's design was functional.

Regarding the second factor, the Board found that Heatcon's own advertising materials promoted specific...