On April 12, 2012, the Federal Circuit waded into the increasingly muddy waters of utilitarian functionality law with its decision in In re Becton, Dickinson and Co., 2012 WL 1216281. The Federal Circuit affirmed the TTAB’s decision that Becton Dickinson’s (“BD”) closure cap for blood collection tubes (shown below) was functional and not registerable by the U.S. Patent and Trademark Office. The drawing for BD’s mark appeared as follows:
A shape is functional as utilitarian if it is “essential to the use or purpose of the article or affects the cost or quality of the article.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001). Functional shapes can never be protected as trademarks. Over the past year or two, the courts have produced a number of utilitarian functionality decisions that unfortunately do little to help businesses predict whether their designs are functional or subject to trademark protection. See, e.g., Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corporation, 647 F.2d 723 (7th Cir. 2011) (quilted toilet paper design found functional); Specialized Seating v. Greenwich Industries, L.P., 616 F.3d 722 (7th Cir. 2010) (folding chair found functional as utilitarian despite hundreds of alternative designs); Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (7th Cir. 2010) (round beach towel found functional on utilitarian and aesthetic grounds). In re Becton Dickinson continues to grapple with the determination.
The Federal Circuit uses four factors to evaluate utilitarian functionality: (1) the existence of a utility patent disclosing the utilitarian advantages of the design sought to be registered; (2) advertising by the applicant that touts the utilitarian advantages of the design; (3) whether the design results from a comparatively simple or inexpensive method of manufacture, and (4) the availability of alternative designs. In re Morton-Norwich Prods., Inc., 671 F.2d 1331 (C.C.P.A. 1982).
Before turning to the factors, the court evaluated BD’s main argument. The drawing in BD’s application included both functional and non-functional elements. BD argued that the existence of some non-functional features removed the mark “from the realm of functionality.” The Board disagreed, noting that “a mark possessed of significant functional features should not qualify for trademark protection where insignificant elements of the design are non-functional.” Id. Far from finding that the TTAB’s weighing of the functional and non-functional features of the claimed design was improper, as BD claimed, the Federal Circuit stated that the inquiry was “mandated.” (more…)