Pattishall IP Blog

April 16, 2012

The Mud Thickens: The Federal Circuit Issues Its Latest Decision on Utilitarian Functionality, Refusing Registration to Becton Dickinson’s Blood Collection Tube Cap

Filed under: TM Registration — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:09 am

By Janet Marvel, Trademark Attorney

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…)

March 21, 2012

Federal Circuit Rejects “Reasonable Manners” Test For Determining Scope of Standard Character Mark During Ex Parte Examination

Filed under: TM Registration — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:41 am

By Seth Appel, Trademark Attorney

Viterra Inc. applied to register XCEED in standard character form for “agricultural seed.”  The examining attorney refused registration, and the Board affirmed, based on likelihood of confusion with the following registered mark for “agricultural seeds.”

On appeal to the Federal Circuit, Viterra conceded that the goods were the same, but it argued that there was no likelihood of confusion as a result of differences in the marks.  Viterra contended that its proposed standard character mark should not be construed so broadly as to cover the distinctive form of the registered mark.  The court disagreed and affirmed the Board’s decision refusing registration.  In re Viterra Inc., 101 U.S.P.Q.2d 1905 (Fed. Cir. March 6, 2012).

As the court observed, an application to register a standard character mark is “without claim to any particular font style, size, or color.”  37 C.F.R. § 2.52(a).  Traditionally, the Board used the “reasonable manners” test to determine the scope of a standard character mark.  That is, it considered all reasonable depictions of the mark when comparing it to another mark to determine the presence or absence of likelihood of confusion.  However, the Federal Circuit rejected this “reasonable manners” test in Citigroup v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011), an inter partes proceeding involving competing standard character marks.  In Viterra, the court held that the “reasonable manners” test is also improper when comparing a standard character mark and a word/design composite mark in the context of ex parte examination.

The court explained, quoting Citigroup:  “The T.T.A.B. should not first determine whether certain depictions are ‘reasonable’ and then apply the Du Pont analysis to only a subset of variations of a standard character mark.”  Rather, “the T.T.A.B. should simply use the DuPont factors to determine the likelihood of confusion between depictions of standard character marks that vary in font style, size, and color and the other mark.”  The court found no basis for limiting Citigroup to comparisons of word marks, and no basis for distinguishing between inter partes proceedings and ex parte examination.

In view of the foregoing, the court concluded, the Board was correct to find likelihood of confusion between the marks at issue.  After all, the applicant’s XCEED mark could be depicted as a capital “X” followed by “ceed” in small letters, making it similar to the registered mark.  Insofar as the T.T.A.B. applied the more restrictive and outdated “reasonable manners” test, it was harmless error.

Trademark users must remember Viterra when considering new marks, and trademark practitioners must keep Viterra in mind during clearance.  A registered word/design composite mark might create a conflict with a would-be applicant’s standard character mark – even if the applicant would never consider depicting its mark in that fashion.

 *     *     *

 Seth I. Appel is an associate attorney at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Appel’s practice focuses on litigation, transactions, and counseling with respect to trademark, trade dress, copyright and Internet law.

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March 31, 2010

Fed. Circuit Reverses ITC: Over-Reliance on Verbal Description of Design Patent Claim Unduly Emphasizes Particular Features Instead of Overall Design

Filed under: Design Patent — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:49 pm

by Teresa Tambolas, Patent and Trademark Attorney

In Crocs Inc. v. International Trade Commission, 93 U.S.P.Q.2d 1777 (Fed. Cir. 2010), the Court of Appeals for the Federal Circuit reversed an International Trade Commission (“ITC”) finding of non-infringement that relied on a detailed verbal construction of a design patent claim.  Due to the ITC’s reliance on the verbal construction, the Court found the ITC placed undue emphasis on particular features of the design rather than the design as a whole.

Crocs Inc. (“Crocs”) owns design and utility patents covering footwear (see, e.g., figure at left).  In 2006, Crocs filed an ITC complaint against eleven companies, alleging unfair competition under 19 U.S.C. § 337 for importing infringing foam shoes.  Section 337 empowers the ITC to bar importation of products that infringe intellectual property rights. (more…)

January 15, 2010

Fed. Cir. Overturns PTO Requirement That Applicant Provide a Picture of a Good Sold Over the Internet as a Specimen Supporting A Trademark Application

Filed under: TM Registration — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:44 pm

by Phillip Barengolts, Trademark Attorney

An applicant for federal registration of a trademark in the United States eventually must submit a specimen to the Patent and Trademark Office (the “Office”) showing use of the trademark in connection with the applied-for goods or services.  For many years, the Office has required applicants who submit a web page showing the mark in connection with the sale of the goods over the Internet to include a picture of the goods themselves.  In In Re Sones, 93 U.S.P.Q.2d 1118 (Fed. Cir. 2009), the Federal Circuit overturned this bright-line rule to conform web page specimens to traditional requirements that a trademark applicant merely must show that the mark has been “placed in any manner on the goods or… the displays associated therewith.”  15 U.S.C. § 1227.  The specific test the Federal Circuit announced to determine the sufficiency of a web page specimen is whether the specimen shows evidence to “sufficiently associate[]” the mark with the goods so as to “identify and distinguish the goods.”  Sones at 1123 (citation omitted). (more…)

September 2, 2009

Putting the Intent Back Into Fraud: The Federal Circuit Overturns the TTAB’s Should Have Known Standard

Filed under: TTAB — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:30 pm

By Andrew N. Downer, Trademark Attorney

On August 31, 2009, the Federal Circuit issued an opinion that significantly impacts U.S. trademark owners, allowing them the opportunity to breathe a little easier with respect to their statements to the Patent and Trademark Office (“PTO”).   The case – In re Bose Corp., No. 08-1448[1] – essentially overturns the PTO’s decision in Medinol v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003), and re-grounds the establishment of a claim of fraud on the PTO in traditional notions of intent.  Medinol had relaxed the standard for proving fraud such that a claimant only had to prove that the applicant/registrant “should have known” a statement was false.  The Federal Circuit’s opinion reestablishes that the applicant/registrant must have an intent to deceive the PTO, contrary to the PTO’s post-Medinol jurisprudence.

In the underlying case, Bose challenged Hexawave’s application to register the mark HEXAWAVE based on a likely confusion with Bose’s prior registration of WAVE.  Hexawave counterclaimed for cancellation of Bose’s WAVE registration, alleging that Bose committed fraud when renewing its WAVE registration.  Hexawave contended that Bose falsely claimed use of the mark on all of the listed goods when, in fact, it knew that it had stopped selling certain of the goods, namely, audio tape recorders and players.  During discovery, Bose’s general counsel testified that he believed the WAVE mark was still in use in commerce because Bose was repairing those trademark-bearing goods and shipping them back to customers.  The Board held that Bose’s belief was not reasonable, and cancelled Bose’s WAVE registration on the ground of fraud. (more…)

June 2, 2009

Federal Circuit Oral Argument – Bose v. Hexawave: Have the Trademark Trial and Appeal Board’s Medinol Fraud Cases “Crossed a Very Fundamental Line”?

Filed under: TTAB — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:57 pm

by Trademark Attorney, Janet Marvel

On May 5, 2009, the Federal Circuit heard oral argument in Bose v. Hexawave, Opposition No. 91157315.  This case has been closely watched for its impact on the U.S. Patent and Trademark Office (“PTO”) standard for finding fraud based on false claims of use.  The presiding judges’ comments during oral argument indicate that the Court may adopt a higher standard of proof of intent to deceive than the Board currently uses in fraud cases.

In 2003, the Board decided Medinol v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003), where it appeared to apply a strict liability/negligence standard to find fraud on the PTO. In Medinol, the registrant, Neuro Vasx, signed a Statement of Use, in which it alleged that it was using its mark in connection with “medical devices, namely neurological stents and catheters.”  Medinol petitioned to cancel Neuro Vasx’s registration for fraud because Neuro Vasx was not using its mark on stents when it filed its Statement of Use.  Neuro Vasx responded that it had made the misstatement that it was using the mark on stents unintentionally, rather than fraudulently, and tried to amend its registration to delete “stents.” The Board accepted Neuro Vasx’s explanation that it had “overlooked” inclusion of stents, but stated:  “Respondent’s explanation for the misstatement (which we accept as true) – that the inclusion of stents in the notice of allowance was ‘apparently overlooked’ – does nothing….Respondent’s knowledge that its mark was not in use on stents – or its reckless disregard for the truth – is all that is required to establish intent to commit fraud in the procurement of a registration.”   Hence the Board found that even a careless error was enough to create a fraud on the PTO. (more…)

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