Federal Circuit Affirms TTAB Decision Finding Design Of A Closure Cap For Blood Collection Tubes Functional And Not Entitled To Registration

This article previously appeared in Last Month at the Federal Circuit, May, 2012.

Judges: Bryson, Clevenger (author), Linn (dissenting)

[Appealed from TTAB]

In In re Becton, Dickinson & Co., No. 11-1111 (Fed. Cir. Apr. 12, 2012), the Federal Circuit affirmed the TTAB's finding that Becton, Dickinson and Company's ("BD") design of a closure cap for blood collection tubes ("BD Mark") was functional and thus not entitled to registration. The Court did not reach the issue of acquired distinctiveness (which BD had also appealed) because, even if the BD Mark had acquired distinctiveness, it would still be barred registration on the ground that it was functional.

BD applied to register the BD Mark for "closures for medical collection tubes," shown below, claiming acquired distinctiveness under 15 U.S.C. § 1052(f).

The Examining Attorney refused registration on the ground that the cap design was functional and, even assuming it was not functional, the cap design was a nondistinctive configuration. Further, she found that BD's declaration was insufficient to establish acquired distinctiveness. Considering the four

Morton-Norwich factors, the TTAB concluded that the cap design, considered in its entirety, was functional. In its analysis, the TTAB gave less weight to less prominent features of the BD Mark, such as the exact spacing or shape of the ribs, because it found them to be incidental to the overall adoption of those features and hardly discernible when viewing the mark. The TTAB relied on Federal Circuit precedent, finding that the presence of nonfunctional features in a mark would not affect the functionality decision where the evidence showed the overall design to be functional. The TTAB also concluded that even if the cap design was not functional, BD had not established acquired distinctiveness.

"[T]he Board committed no legal error by weighing the functional and non-functional features of BD's mark against each other. Our functionality precedent indeed mandates that the Board conduct such an assessment as part of its determination of whether a mark in its entirety is overall de jure functional." Slip op. at 10-11.

On appeal, the Court found that one objective of the Morton-Norwich inquiry was to weigh the elements of the mark against one another to develop an understanding of whether the mark as a whole is functional and thus nonregistrable. The Court explained that whenever a proposed mark includes both functional and nonfunctional...