As stated in section 1202.02(a)(i) Statutory Basis for Functionality Refusal of the Trademark Manual of Examination Procedure:

Before October 30, 1998, there was no specific statutory reference to functionality as a ground for refusal, and functionality refusals were thus issued as failure-to-function refusals under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127.

Effective October 30, 1998, the Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, §201, 112 Stat. 3064, 3069, amended the Trademark Act to expressly prohibit registration on either the Principal or Supplemental Register of functional matter:

Section 2(e)(5) of the Trademark Act, 15 U.S.C. §1052(e)(5), prohibits registration on the Principal Register of "matter that, as a whole, is functional."
Section 2(f) of the Act, 15 U.S.C. §1052(f), provides that matter that, as a whole, is functional may not be registered even on a showing that it has become distinctive.
Section 23(c) of the Act, 15 U.S.C. §1091(c), provides that a mark that, as a whole, is functional may not be registered on the Supplemental Register.
Section 14(3) of the Act, 15 U.S.C. §1064(3), lists functionality as a ground that can be raised in a cancellation proceeding more than five years after the date of registration.
Section 33(b)(8) of the Act, 15 U.S.C. §1115(b)(8), lists functionality as a statutory defense to infringement in a suit involving an incontestable registration.

These amendments codified case law and the longstanding USPTO practice of refusing registration of functional matter.

As stated in section 1202.02(a)(ii) Purpose of Functionality Doctrine of the Trademark Manual of Examination Procedure:

The functionality doctrine, which prohibits registration of functional product features, is intended to encourage legitimate competition by maintaining the proper balance between trademark law and patent law. As the Supreme Court explained, in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164-165, 34 USPQ2d 1161, 1163 (1995):

The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. §§154, 173, after which competitors are free to use the innovation. If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).

In other words, the functionality doctrine ensures that protection for utilitarian product features be properly sought through a limited-duration utility patent, and not through the potentially unlimited protection of a trademark registration. Upon expiration of a utility patent, the invention covered by the patent enters the public domain, and the functional features disclosed in the patent may then be copied by others – thus encouraging advances in product design and manufacture. In TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 34-35, 58 USPQ2d 1001, 1007 (2001), the Supreme Court reiterated this rationale, also noting that the functionality doctrine is not affected by evidence of acquired distinctiveness.

Thus, even where the evidence establishes that consumers have come to associate a functional product feature with a single source, trademark protection will not be granted in light of the public policy reasons stated. Id.

As stated in section 1202.02(a)(iii)(B) "De Jure" and "De Facto" Functionality of the Trademark Manual of Examination Procedure:

Prior to 2002, the Office used the terms "de facto" and "de jure" in assessing whether "subject matter" (usually a product feature or the configuration of the goods) presented for registration was functional. This distinction originated with the Court of Customs and Patent Appeals' Morton-Norwich decision, which was discussed by the Federal Circuit in Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274, 61 USPQ2d 1422, 1425 (Fed. Cir. 2002):

Our decisions distinguish de facto functional features, which may be entitled to trademark protection, from de jure functional features, which are not. ‘In essence, de facto functional means that the design of a product has a function, i.e., a bottle of any design holds fluid.' In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed. Cir. 1984). De facto functionality does not necessarily defeat registrability. Morton-Norwich, 671 F.2d [1332,] at 1337, 213 USPQ [9] at 13 [(C.C.P.A. 1982)] (A design that is de facto functional, i.e., ‘functional' in the lay sense ... may be legally recognized as an indication of source.'). De jure functionality means that the product has a particular shape ‘because it works better in this shape.' Smith, 734 F.2d at 1484, 222 USPQ at 3.

However, in three Supreme Court decisions involving functionality – Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d 1161 (1995), Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000), and TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001) – the Court did not use the "de facto/de jure" distinction. Nor were these terms used when the Trademark Act was amended to expressly prohibit registration of matter that is "functional." Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, §201, 112 Stat. 3064, 3069 (1998). Accordingly, in general, examining attorneys no longer make this distinction in Office actions that refuse registration based on functionality.

De facto functionality is not a ground for refusal. In re Ennco Display Systems Inc., 56 USPQ2d 1279, 1282 (TTAB 2000); In re Parkway Machine Corp., 52 USPQ2d 1628, 1631 n.4 (TTAB 1999).

As stated in section 1202.02(a)(v) Evidence and Considerations Regarding Functionality Determinationsof the Trademark Manual of Examination Procedure:

Trade dress is functional if it is essential to the use or purpose of a product or if it affects the cost or quality of the product. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, 214 USPQ 1, 4 n.10 (1982).

A determination of functionality normally involves consideration of one or more of the following factors, commonly known as the "Morton-Norwich factors:"

(1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
(2) advertising by the applicant that touts the utilitarian advantages of the design;
(3) facts pertaining to the availability of alternative designs; and
(4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1340-1341, 213 USPQ 9, 15-16 (C.C.P.A. 1982).

Since relevant technical information is often more readily available to an applicant, the applicant will often be the source of most of the evidence relied upon by the examining attorney in establishing a prima facie case of functionality in an ex parte case. In re Teledyne Industries Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982); In re Witco Corp., 14 USPQ2d 1557, 1560 (TTAB 1990). Therefore, when there is reason to believe that the proposed mark may be functional, in the first Office action, the examining attorney should require the applicant to provide information necessary to permit an informed determination concerning the registrability of the proposed mark, pursuant to 37 C.F.R. §2.61(b). See In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (registration properly refused where applicant failed to comply with examining attorney's request for copies of patent applications and other patent information). Accordingly, the examining attorney should: (1) ask the applicant to provide copies of any patent(s) or any pending or abandoned patent application(s); (2) 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; (3) inquire of the applicant whether alternative designs are available; and (4) inquire whether the feature makes the product easier or cheaper to manufacture. The examining attorney should also examine the specimen(s) for information relevant to the Morton-Norwich factors, and conduct independent research to find advertising or promotional material.

It is not necessary to consider all the Morton-Norwich factors in every case. The Supreme Court held that "[w]here the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature." TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001). Moreover, there is no requirement that all four of the Morton-Norwich factors weigh in favor of functionality to support a refusal. See Valu Engineering, 278 F.3d at 1276, 61 USPQ2d at 1427 ("once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs"); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (orange flavor found functional based on applicant's touting of the utilitarian advantages of the flavor and the lack of evidence of acceptable alternatives, even though the mark was not the subject of a patent or patent application and there was no evidence that the flavor affected the cost of the product); In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) (where there was no utility patent, and no evidence that applicant's guitar configuration resulted from a simpler or cheaper method of manufacture, these factors did not weigh in Board's decision).

Evidence that the proposed mark is the subject of a utility patent that discloses the utilitarian advantages of the configuration at issue can be sufficient in itself to support a functionality refusal. TrafFix, 532 U.S. at 33, 58 USPQ2d at 1007 ("There is no need, furthermore, to engage ... in speculation about other design possibilities); In re Howard Leight Industries, LLC, 80 USPQ2d 1507, 1515 (TTAB 2006) ("[W]e find that applicant's expired utility patent, which specifically discloses and claims the utilitarian advantages of applicant's earplug configuration and which clearly shows that the shape at issue ‘affects the . . . quality of the device,' is a sufficient basis in itself for finding that the configuration is functional, given the strong weight to be accorded such patent evidence under TrafFix.") See TMEP §1202.02(a)(v)(A) for further discussion of utility patents.

It is important that the functionality inquiry focus on the utility of the feature or combination of features claimed as protectable trade dress. Morton-Norwich, 671 F.2d at 1338, 213 USPQ at 13. Generally, dissecting the design into its individual features and analyzing the utility of each separate feature does not establish that the overall design is functional. See 15 U.S.C. §1052(e)(5); Teledyne Industries Inc., 696 F.2d at 971, 217 USPQ at 11. However, it is sometimes helpful to analyze the design from the standpoint of its various features. See Elmer v. ICC Fabricating Inc., 67 F.3d 1571, 1579-80, 36 USPQ2d 1417, 1422-23 (Fed. Cir. 1995) (rejecting the argument that the combination of individually functional features in the configuration resulted in an overall nonfunctional product design); In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 2 (Fed. Cir. 1984) (affirming the functionality determination, where the Board had initially considered the six individual features of the design, and then had concluded that the design as a whole was functional); In re Controls Corp. of America, 46 USPQ2d 1308, 1312 (TTAB 1998) (finding the entire configuration at issue functional because it consisted of several individual features, each of which was functional in nature).

Where the evidence shows that the overall design is functional, the inclusion of a few arbitrary or otherwise nonfunctional features in the design will not change the result. See Textron, Inc. v. U.S. International Trade Commission, 753 F.2d 1019, 1025, 224 USPQ 625, 628-29 (Fed. Cir. 1985); In re Vico Products Mfg. Co., Inc., 229 USPQ 364, 368 (TTAB 1985).

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  • If applicant's design are function, evidence of distinctiveness/secondary meaning is of no avail in supporting a claim for registration of the mark.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • Furthermore, "[f]unctionality having been established, whether [applicant's design] has acquired secondary meaning need not be considered." TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1007 (2001). See also M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 USPQ2d 1086, 1097 (TTAB 2001) (If "applicant's designs are functional, any evidence of distinctiveness is of no avail to applicant in support of registration").
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • Because applicant's design is functional, any evidence of distinctiveness is of no avail to applicant in support of registration. See TrafFix, supra, 58 USPQ2d at 1007 ("Functionality having been established, whether MDI's dual-spring design has acquired secondary meaning need not be considered"). See also M-5 Steel Mfg. Co. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001).
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • In view of our conclusion that applicant's mark is functional, applicant's mark is unregistrable whether or not applicant has shown that its mark has acquired distinctiveness. In re Caterpillar, Inc., 43 USPQ2d at 1342.
  • Definition: Functional.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • On the subject of functionality, the Supreme Court has held: "Discussing trademarks, we have said "‘[i]n general terms, a product feature is functional,' and cannot serve as a trademark, ‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.'" [Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165, 34 USPQ2d 1161 (1995)] (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n. 10 [214 USPQ 1] (1982)). TrafFix Devices, 58 USPQ2d at 1006.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • The Supreme Court has stated: "In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982).
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • The Supreme Court has called this "Inwood formulation" the "traditional rule" of functionality. TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001).
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • The Supreme Court has addressed the issue of functionality in cases both before and after the statutory change. The Court has stated "[i]n general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Qualitex Co. v. Jacobson Products Co., 34 USPQ2d at 1163-64, quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n. 10 (1982).
  • A mark that comprises any matter that, as a whole, is functional is not entitled to trademark protection.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • "Congress explicitly recognized the functionality doctrine in a 1998 amendment to the Lanham Act by making "functionality" a ground for ex parte rejection of a mark. 15 U.S.C. §1052(e)(5) (2000). Under this provision, a mark that comprises "any matter that, as a whole, is functional" is not entitled to trademark protection. Id. (emphasis added). Although the new statutory basis for refusal of registration does not apply in this case, we note that the 1998 amendment was intended to "make explicit some of the current practices of the Patent and Trademark Office with respect to the trademark protection of matter that is wholly functional," and referred to the amendment as a "mostly technical," "housekeeping" amendment." Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1425 (Fed. Cir. 2002) (footnotes omitted).
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • The Trademark Act was amended expressly to provide that an application may be refused registration if the proposed mark "comprises any matter that, as a whole, is functional." Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5).
  • The functionality statute only applies to applications filed after October 30, 1998.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • Because the application at issue here was filed on May 18, 1998, the statutory functionality section does not apply. Valu Engineering, 61 USPQ2d at 1425 n.3 ("The statute applies only to applications filed after October 30, 1998").
  • The color of an item can be a functional feature of the goods even if it does not make the product perform better.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • We start by noting that the color of an item can be a functional feature of the goods even if it does not make the product perform better. See Brunswick II, 32 USPQ2d at 1122-23:
        "The color black, as the Board noted, does not make the engines function better as engines. The paint on the external surface of an engine does not affect its mechanical purpose. Rather, the color black exhibits both color compatibility with a wide variety of boat colors and ability to make objects appear smaller. With these advantages for potential customers, the Board found a competitive need for engine manufacturers to use black on outboard engines. Based on this competitive need, the Board determined that the color was de jure functional. This court discerns no error in the Board's legal reasoning and no clear error in its factual findings."
  • In the typical color mark case, the final color of the product is normally dictated by aesthetic considerations.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • This case is different from most color functionality cases. In the typical color case, the final color of the product is normally dictated by aesthetic considerations. In Owens-Corning, the Court found that a "pink color mark registered for fibrous glass insulation does not confer a ‘monopoly' or act as a barrier to entry in the market. It has no relationship to production of fibrous glass insulation. It serves the classical trademark function of indicating the origin of the goods." 227 USPQ at 421. Furthermore, the record revealed that Owens-Corning was the only manufacturer to color insulation, which was ordinarily a light yellow-white coloring. 227 USPQ at 420. Similarly, in Brunswick II, the basic color of the engines after the manufacturing process was not an issue.
  • If competitive factors restrict the availability of color, then color may be functional.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • Further, applicant argues that "3M Purple is not the only shade available" citing Brunswick II (Brief at 48). First, Brunswick II did not set out a rule that a color is functional if it is the only shade available. Second, Brunswick II is distinguishable because there was no indication that outboard engines came in a variety of colors as a result of the materials used in the manufacturing process. In contrast, here the record establishes that coated abrasives come in a variety of natural colors and these products are often then dyed for a variety of reasons. Therefore, the situation in R.L. Winston is analogous, because naturally dark-colored abrasives would then need to be dyed often with a dark color.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • As R.L. Winston held:
        "It is not so important to categorize the function of the color, however, as it is to determine whether manufacturers have a competitive need for using a limited number of colors. If competitive factors restrict the availability of color, then color may be functional." 29 USPQ2d at 1781.
  • Burden of Proof: Once the opposer in a trademark opposition has made a prima facie showing of functionality, the burden shifts to the applicant to prove nonfunctionality.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • Once the opposer in a trademark opposition has made a prima facie showing of functionality, the burden shifts to the applicant to prove nonfunctionality. "Where, as here, the opposer in a trademark opposition has made a prima facie showing of functionality, the burden shifts to the applicant to show nonfunctionality… The appropriateness of shifting the burden in a trademark opposition proceeding is supported by the recent amendment to Section 43(a) of the Lanham Act, which shifts the burden of proving nonfunctionality of unregistered trade dress to applicant-plaintiff in civil actions for trade dress infringement, even without a prima facie showing by the alleged infringer. 15 U.S.C. § 1125(a)(3)(2000)."Valu Engineering, 61 USPQ2d at 1429 (citations and footnote omitted). See also Textron, Inc. v. U.S. Int'l Trade Comm'n, 753 F.2d 1029, 224 USPQ 625, 629 (Fed. Cir. 1985) ("[A]n applicant for trademark protection has the burden to prove that the design is nonfunctional, once a prima facie case of functionality is made by the opponent").
  • Case Finding: In view of the fact that color, especially color that is dark in nature, both natural and dyed, is a common and useful feature in the field of coated abrasives, applicant's color purple is functional because "exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • However, as discussed above, we find that applicant has not sustained this burden of showing that there is no competitive need for others to use the color purple and that its deep purple color is not functional. "[I]f the use of color on the applicant's goods serves a non-trademark purpose that hinders competition, the de jure functionality doctrine precludes trademark protection." Brunswick II, 32 USPQ2d at 1123. In view of the fact that color, especially color that is dark in nature, both natural and dyed, is a common and useful feature in the field of coated abrasives, applicant's color purple is functional because "exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage." Qualitex, 34 USPQ2d at 1164.
  • A functional feature is one the exclusive use of which would put competitors at a significant non-reputation-related disadvantage.
    • In re Gibson Guitar Corp., Serial No. 75/513,342, (TTAB 2001).
      • A product feature is functional and cannot serve as a trademark if it is essential to the use or purpose of the article or it affects the cost or quality of the article. A functional feature is one the exclusive use of which would put competitors at a significant non-reputation-related disadvantage. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161 (1995), quoted in TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001).
  • Although the existence of a utility patent could weigh against applicant in terms of showing that the configuration is de jure functional, the absence of such a patent simply has no weight in our analysis.
    • In re Gibson Guitar Corp., Serial No. 75/513,342, (TTAB 2001).
      • In this case, applicant has stated that there is no utility patent, nor is there any evidence that its guitar configuration results from a simpler or cheaper method of manufacture. Accordingly, these factors do not weigh in our decision.3 FOOTNOTE 3 "The Examining Attorney characterizes the absence of a utility patent as a factor which weighs in applicant's favor. We disagree. Although the existence of a utility patent could weigh against applicant in terms of showing that the configuration is de jure functional, the absence of such a patent simply has no weight in our analysis."
  • With respect to the third factor, the availability of alternative designs, it is not clear, after TrafFix Devices Inc. v. Marketing Displays Inc., supra, whether the availability of alternatives weighs as a factor in applicant's favor.
    • In re Gibson Guitar Corp., Serial No. 75/513,342, (TTAB 2001).
      • With respect to the third factor, the availability of alternative designs, it is not clear, after TrafFix Devices Inc. v. Marketing Displays Inc., supra, whether the availability of alternatives weighs as a factor in applicant's favor.
    • In re Gibson Guitar Corp., Serial No. 75/513,342, (TTAB 2001).
      • Even assuming the availability of alternative designs remains a factor in determining whether a configuration is de jure functional, applicant has not shown that there are alternative guitar shapes which can produce the same sound as applicant's configuration. On the contrary, the evidence indicates that the specific shape of applicant's guitar is necessary for such sound.
  • Definition "As a whole"
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • Trademark Act Section 2(e)(5)4 precludes registration of "any matter that, as a whole, is functional."5 FOOTNOTE 4 "This provision of the statute applies only to applications filed after October 30, 1998. Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, §201(b), 112 Stat. 3064 (1998). The present application was filed on August 5, 2002." FOOTNOTE 5 ""The term ‘as a whole' existed under prior decisional law and refers to the entirety of the mark itself, rather than the entirety of the class of goods in connection with which the mark is used." Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, at n.6 (Fed. Cir. (2002)."
  • The functionality doctrine is intended to encourage legitimate competition by maintaining the proper balance between trademark law and patent law.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • The functionality doctrine is intended to encourage legitimate competition by maintaining the proper balance between trademark law and patent law.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • As the Supreme Court observed in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161, 1163-64 (1995): "The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, after which competitors are free to use the innovation. If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity). That is to say, the Lanham Act does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity. The Lanham Act, furthermore, does not protect trade dress in a functional design simply because an investment has been made to encourage the public to associate a particular functional feature with a single manufacturer or seller."
  • Test for whether a mark is de jure functional.
    • In re Gibson Guitar Corp., Serial No. 75/513,342, (TTAB 2001).
      • In In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982), the Court set forth four factors to be considered in determining whether a product design is de jure functional: (1) the existence of a utility patent that discloses the utilitarian advantages of the design; 2) advertising materials in which the originator of the design touts the design's utilitarian advantages; 3) the availability to competitors of alternative designs; and 4) facts indicating that the design results from a comparatively simple or cheap method of manufacturing the product.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • The Federal Circuit, our primary reviewing court, looks at four factors when it considers the issue of functionality: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design's utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product. Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002), citing In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982). These are known as the Morton- Norwich factors.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • The Federal Circuit, our primary reviewing court, looks at four factors when it considers the issue of functionality: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design's utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product. In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982). See also Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002).
    • In re Ball Corporation, Application Serial No. 75/092,220, (TTAB 2000).
      • Factors which are to be considered in the determination of whether a particular product design is superior include (1) the existence of a utility patent that discloses utilitarian advantages of the design, (2) advertising materials in which the utilitarian advantages of the design are touted, (3) the availability to competitors of alternative designs, and (4) facts indicating that the design results from a comparatively simple or cheap method of manufacturing a product. See In re Morton-Norwich Products, Inc., supra.
  • As to the first element of the functionality test, the TTAB considers both existing and expired utility patents.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • The first Morton-Norwich factor is the existence of a utility patent disclosing the utilitarian advantages of the design. For purposes of this factor, we consider not only utility patents which are currently extant, but also expired utility patents. See TrafFix Devices Inc., supra, 58 USPQ2d at 1005-1007.6 FOOTNOTE 6 "Abandoned utility patent applications likewise are probative evidence under the first Morton-Norwich factor. See Valu Engineering Inc., supra, 61 USPQ2d at 1429."
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • Applicant's utility patent for the earplug has expired, and we are not persuaded by applicant's contention that the earplug configuration, with its functional advantages as disclosed and claimed in the patent, is now entitled to trademark registration. Rather, we find that the evidence of record establishes, prima facie, that applicant's design is functional, and that applicant has failed to rebut that presumption. Registration of the design as a trademark is barred under Trademark Act Section 2(e)(5), and we affirm the Trademark Examining Attorney's refusal on that ground.
  • A utility patent is strong evidence that the features therein claimed are functional.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • Regarding the evidentiary value of utility patents in the functionality determination, the Supreme Court has instructed as follows: "A prior patent, we conclude, has vital significance in resolving the trade dress claim. A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental or arbitrary aspect of the device." TrafFix Devices Inc., supra, 58 USPQ2d at 1005. 7
  • Burden of Proof: Burdens of proof regarding functionality.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • FOOTNOTE 7 "The "statutory presumption that features are deemed functional until proved otherwise" to which the Court refers is applied in trade dress infringement actions brought under Trademark Act Section 43(a). See Trademark Act Section 43(a)(3), 15 U.S.C. §1125(a)(3). In ex parte proceedings before the Board, by contrast, the Office has the initial burden of establishing a prima facie case of functionality. Likewise, the plaintiff in an inter partes proceeding before the Board bears the initial burden of establishing a prima facie case of functionality. If such prima facie case is established, the burden then shifts to the applicant (or registrant) to prove nonfunctionality. See Valu- Engineering Inc., supra, 61 USPQ2d at 1429, and cases cited therein. While the Section 43(a)(3) statutory presumption of functionality is not applicable in Board proceedings, we understand the Supreme Court's instructions in TrafFix, quoted above, to require us to regard a utility patent as "strong evidence" entitled to "great weight" in our determination of whether the Office (or an inter partes plaintiff) has established a prima facie case of functionality. If such prima facie case is supported by the existence of a utility patent claiming the design feature(s) in question, the burden shifts to the applicant (or registrant) to prove nonfunctionality."
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • In Valu Engineering, the Federal Circuit also confirmed that applicant bears the ultimate burden on the issue of functionality: "Where, as here, the opposer in a trademark opposition has made a prima facie showing of functionality, the burden shifts to the applicant to show nonfunctionality. (citations omitted) . . . The appropriateness of shifting the burden in a trademark opposition proceeding is supported by the recent amendments to Section 43(a) of the Lanham Act, which shifts the burden of proving nonfunctionality of unregistered trade dress to applicant-plaintiff in civil actions for trade dress infringement, even without a prima facie showing by the alleged infringer. 15 U.S.C. § 125(a)(3)(2000)(footnote omitted)." Valu Engineering, 61 USPQ2d at 1429.
  • The patent and its prosecution history must be examined to see if the feature in question is shown as a useful part of the invention.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • The Court further explained (in reference to the patented road sign design at issue in TrafFix): "In a case where a manufacturer seeks to protect arbitrary, incidental, or ornamental aspects of features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, a different result might obtain. There the manufacturer could perhaps prove that those aspects do not serve a purpose within the terms of the utility patent. [The patent and its prosecution history must be examined] to see if the feature in question is shown as a useful part of the invention." TrafFix, supra, 58 USPQ2d at 1007. 8
        FOOTNOTE 8 "Professor McCarthy has pointed out that non-functional elements of an invention, such as "arbitrary curves" or a painted "ornamental pattern," should not and do not appear in the claims of a utility patent as asserted by the Supreme Court in the quoted language; "[t]herefore, the Court must have been referring to non-functional features that appear in a patent disclosure." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §7:89 (4th ed. 2006)."
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • Professor McCarthy notes in this regard: "Prior case law cautions that a utility patent must be examined in detail to determine whether the disclosed configuration is really primarily functional or is just a non-functional shape that happens to be described or pictured as an incidental detail in a patent disclosure." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §7:89 (4th ed. 2006).
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • Similarly, as McCarthy notes at §7:89.1, the Court of Customs and Patent Appeals has stated that "[a] patent may not be evidence of functionality in regard to things of a ‘purely arbitrary' or ‘mere design' nature which happen to be disclosed in the patent but which are not attributed any functional significance therein." Best Lock Corp. v. Schlage Lock Co., 413 F.2d 1195, 162 USPQ 552, 556 (C.C.P.A. 1969).
  • One cannot argue that a shape is functionally advantageous in order to obtain a utility patent and later assert that the same shape is non-functional in order to obtain trademark protection. Functional patent protection and trademark protection are mutually exclusive.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • However, if the patent discloses the functionality of the design, "...this evidence is particularly entitled to great weight if the patent was applied for by the same person who now asserts trademark significance in the same configuration. A kind of estoppel arises. That is, one cannot argue that a shape is functionally advantageous in order to obtain a utility patent and later assert that the same shape is non-functional in order to obtain trademark protection. Functional patent protection and trademark protection are mutually exclusive. As one court stated, when the configuration is disclosed in a functional patent, and the patent expires, the public "now has its inning."" McCarthy, supra, at §7:89.1.
  • An applicant's utility patent as a whole, including its claims, is reviewed in determining functionality under the first Morton-Norwich factor.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • Likewise, despite the Bose court's language in its Cable Electric Products citation parenthetical quoted above, we note that the court in Cable Electric Products had simply stated that "[i]n resolving the question of product design functionality for purposes of the Lanham Act, section 43(a), the fact finder is to consider the appearance of the products in issue. Reference to utility patent claims that are, or have been, asserted to read on either product, or to the appearance of the device depicted in figures included in the patent specification supporting such claims, must be done with caution. ... Claims may be capable of reading on many devices of strikingly different configuration. Thus, even the fact that the claims read on two commercial devices in the marketplace is not support in itself for a finding that one is a copy of the other or confusingly similar thereto for section 43(a) purposes. ... Hence, for purposes of evaluating the existence or impact of product copying, the relevance of patent figures depends on the extent to which their appearance is replicated in the actual marketplace product of the patentee. We have been shown no Ninth Circuit precedent to the contrary." Cable Electric Products, supra, 226 USPQ at 891 (emphasis in original).
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • The court's analysis thus appears to relate to the relevance of the patent claims to the confusing similarity issue in a Section 43(a) false designation of origin case, rather than to the pertinence, vel non, of the patent claims to the functionality issue.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • In any event, to the extent that the Bose court's above-quoted statement might be read as standing for the proposition that patent claims are irrelevant to the functionality determination, we believe that it is superseded by the Supreme Court's decision in TrafFix, in which the Court repeatedly referred to a patent's claims as evidence of functionality. See TrafFix, 58 USPQ2d at 1005, 1006 (emphasis added): "[a] utility patent is strong evidence that the features therein claimed are functional"; "[w]here the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional..."; "[i]n the case before us, the central advance claimed in the expired utility patents (the Sarkisian patents) is the dual-spring design"; "...the strong evidentiary inference of functionality based on the disclosure of the dual-spring design in the claims of the expired patents"; "[t]he rationale for the rule that the disclosure of a feature in the claims of a utility patent constitutes strong evidence of functionality is well illustrated in this case."
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • Finally, although we may and must look to the patent's claims in determining functionality, we are not limited to review of the claims.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • As noted by Professor McCarthy in his discussion of TrafFix, "...while the Court continually talked about the evidentiary weight of what appeared in the patent claims, in fact the Court did not restrict the evidentiary use of a utility patent to its claims. The Supreme Court used both disclosures in the specification and argument made in the prosecution history as persuasive evidence of functionality." McCarthy, supra, at §7:89.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • Likewise, McCarthy notes that "[i]t is proper to look to the disclosure (as distinguished from the claims) in a utility patent as evidence of the functionality of a shape. The Trademark Board has held that each embodiment of the invention described in a utility patent is equally functional for purposes of trademark law." McCarthy, supra, at 7:89.1, citing In re Bose, supra, and In re Edwards Ski Products Inc., 49 USPQ2d 2001 (TTAB 1999).
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • Thus, in this case, we have reviewed applicant's utility patent as a whole, including its claims, in determining functionality under the first Morton-Norwich factor.
  • Case Finding: Applicant's expired utility patent is strong evidence of the functionality of its earplug configuration.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • We are not persuaded by these arguments. Rather, we find that applicant's expired utility patent is strong evidence of the functionality of the earplug configuration applicant seeks to register.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • These features are more than merely de facto functional; rather, the patent shows that the earplug is in this shape because it works better in this shape. Both the disclosures and the claims of the patent reveal that the shape of the earplug is not a mere arbitrary, ornamental or incidental flourish, but rather serves an essential function in the use of the earplug, and affects the quality of the earplug.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • In short, applicant's expired utility patent demonstrates the utilitarian advantages of the earplug design at issue, and we find that the first Morton-Norwich factor accordingly weighs heavily in favor of a finding of functionality.
  • Regarding the third Morton-Nowrich factor - Once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available. But that does not mean that the availability of alternative designs cannot be a legitimate source of evidence to determine whether a feature is functional in the first place
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • The third Morton-Norwich factor contemplates consideration of evidence of the availability to competitors of functionally equivalent designs. Regarding the applicability of this factor after the Supreme Court's decision in TrafFix, the Federal Circuit has noted, first, that the Court in TrafFix "reaffirmed the "traditional rule" of Inwood that "a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." The Court further held that once a product feature is found to be functional under this "traditional rule," "there is no need to proceed further to consider if there is competitive necessity for the feature," and consequently "[t]here is no need ... to engage ... in speculation about other design possibilities. ... Other designs need not be attempted."" Valu Engineering Inc. v. Rexnord Corp., supra, 61 USPQ2d at 1427. (Citations omitted.)
        The Federal Circuit then continued: "Nothing in TrafFix suggests that consideration of alternative designs is not properly part of the overall mix, and we do not read the Court's observations in TrafFix as rendering the availability of alternative designs irrelevant. Rather, we conclude that the Court merely noted that once a product feature is found functional based on other considerations9 there is no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available. But that does not mean that the availability of alternative designs cannot be a legitimate source of evidence to determine whether a feature is functional in the first place." Valu Engineering Inc. v. Rexnord Corp., supra, 61 USPQ2d at 1427. (Citations omitted.)
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • FOOTNOTE 9 "The Federal Circuit's footnote 5, inserted at this point in the quoted language, reads: "For example, a feature may be found functional where the feature ‘affects the cost or quality of the device.' TrafFix, 121 S.Ct. at 1263.""
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • Thus, under the Supreme Court's TrafFix test as interpreted by the Federal Circuit in Valu Engineering, because these "other considerations" (i.e., the disclosures and claims of the patent) establish the functionality of the design, "there is no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available." Valu Engineering, supra, 61 USPQ at 1427.
  • Even if some of these alternative designs are deemed to be functionally equivalent designs and thus are evidence in support of a finding of non-functionality, we find that this evidence is simply outweighed, in our functionality analysis, by the clear and strong evidence of functionality contained in applicant's expired utility patent.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • However, even if some of these alternative designs are deemed to be functionally equivalent designs and thus are evidence in support of a finding of non-functionality, we find that this evidence is simply outweighed, in our functionality analysis, by the clear and strong evidence of functionality contained in applicant's expired utility patent.
  • Definition: De jure functional.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Opposer asserts that the marks in both applications should not be registered both because the product design claimed is functional1 and because applicant has failed to show that the marks have acquired distinctiveness.
        FOOTNOTE 1 "The use of the term "functional" in this opinion means "de jure functional" as discussed in cases, such as, In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982). As the Board has stated, ". . . if the design of a product is so utilitarian as to constitute a superior design which others in the field need to be able to copy in order to compete effectively, it is de jure functional and is precluded from registration as a matter of public policy." In re Caterpillar Inc., 43 USPQ2d 1335, 1338 (TTAB 1997)(citations omitted)."
    • In re Ball Corporation, Application Serial No. 75/092,220, (TTAB 2000).
      • If a product is in a particular shape because it works better in that shape, the configuration is considered de jure functional.
  • Various formulations used to articulate the functionality doctrine.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Over the years, the Supreme Court has used a number of formulations to articulate the functionality doctrine. For example, in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982), the Court stated, "In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article."
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • In Qualitex the Court stated further, "a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage." Qualitex, 34 USPQ2d at 1163-64, citing, Inwood, 214 USPQ at 4 n.10.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • In Valu Engineering, the Court of Appeals for the Federal Circuit confirmed that its long-standing test for determining whether a particular product design is functional remained viable after TrafFix, noting, "We do not understand the Supreme Court's decision in TrafFix to have altered the Morton-Norwich analysis." Valu Engineering, 61 USPQ2d at 1427. The Federal Circuit and its predecessor court, the Court of Customs and Patent Appeals, have employed the Morton-Norwich analysis or test for nearly twenty-five years.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Morton-Norwich identifies the following factors to be considered in determining whether a particular design is functional: "(1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design's utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product." Morton-Norwich, 213 USPQ at 15-16.
  • In TrafFix, the Supreme Court addressed and clarified the proper weight to be accorded a utility patent in that analysis, as well as the role of alternative designs.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • In TrafFix, the Supreme Court addressed and clarified the proper weight to be accorded a utility patent in that analysis, as well as the role of alternative designs. TrafFix Devices Inc. v. Marketing Displays Inc., 58 USPQ2d at 1005.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • The Supreme Court notes, "A prior patent, we conclude, has vital significance in resolving the trade dress claim. A utility patent is strong evidence that the features claimed therein are functional. . . Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device." Id.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • As to the role of alternative designs, the Federal Circuit observes in Valu Engineering: "Nothing in TrafFix suggests that consideration of alternative designs is not properly a part of the overall mix, and we do not read the Court's observations in TrafFix as rendering the availability of alternative designs irrelevant. Rather, we conclude that the Court merely noted that once a product feature is found functional based on other considerations, there is no need to consider the availability of alternative designs because the feature cannot be given trade dress protection merely because there are alternative designs available. But that does not mean that the availability of alternative designs cannot be a legitimate source of evidence to determine whether a feature is functional in the first place. "Valu Engineering, 61 USPQ2d at 1428 (footnote omitted).
  • Application of functionality test.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Thus, in this case we must analyze each of the features claimed by applicant, the hexagonal base and the butterfly shaped grip, according to the four Morton-Norwich factors and determine whether opposer has established a prima facie case of functionality, and if so, whether applicant has rebutted that showing. If after that analysis we find either feature functional applicant's mark cannot be registered. In re R. M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 2 (Fed. Cir. 1984); Petersen Mfg. Co. v. Central Purchasing, Inc., 740 F.2d 1541, 222 USPQ 562, 569 (Fed. Cir. 1984).
  • Any expired patent is potentially relevant if it covers the feature at issue, regardless of the owner.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • To remove any doubt we first confirm that the fact that the Allen-Stevens Corporation, and not applicant, owned the patent in question is not relevant. In re Virshup, 42 USPQ2d 1403, 1405 (TTAB 1997). Any expired patent is potentially relevant if it covers the feature at issue, regardless of the owner.
  • The first Morton-Norwich element is satisfied where the patent is a utility patent disclosing the utilitarian advantages of the design, even if it is not primarily directed at this feature.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Applicant may be correct in noting that the hexagonal base was in use long prior to the patent application and that the patent was "directed to" a sealing means rather than the hexagonal base. Nonetheless, the patent language clearly refers to the functional advantage of the hexagonal base, that is, "to accommodate a standard wrench." Thus the terms of the patent indicate that the feature is a functional one and not an "ornamental, incidental, or arbitrary aspect of the device." As Morton-Norwich states, the patent here is "a utility patent disclosing the utilitarian advantages of the design," even if it is not primarily directed at this feature. Morton-Norwich, 213 USPQ at 15-16.
  • It is appropriate to analyze each element of a mark to determine if the mark, as a whole, is registerable.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • As to applicant's dissection argument, opposer properly focuses on one of the two elements applicant claims in its mark, as we must. We must analyze each element to determine whether applicant's mark is functional overall. It is entirely proper and necessary for us to consider whether the hexagonal base or lip is functional to determine whether applicant's mark, as a whole, is registrable. In this case, applicant's mark consists of two principal features, each of which is significant in its own right. In re R. M. Smith, Inc., 222 USPQ at 2.
  • Even though the TTAB finds strong evidence under the "patent" factor that a patent discloses the utilitarian advantages of the hexagonal lip or base, it may consider the availability of alternative designs.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Alternative Designs – Even though we find strong evidence under the "patent" factor that a patent discloses the utilitarian advantages of the hexagonal lip or base, we will consider the availability of alternative designs. See Valu Engineering, 61 USPQ2d at 1427.
  • The TTAB may consider its previous decisions to reach the conclusion of whether an element of a mark is functional.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • We also conclude that the hexagonal shape is in many ways optimal for this purpose. As opposer asserts, nuts and bolts, which are turned by wrenches, are hexagonal. In fact, this Board has previously considered and confirmed the functional advantages of the hexagonal shape of a product to permit tightening with a wrench when a wrench was not the recommended or preferred method for tightening. In re Pingel Enterprise Inc., 46 USPQ2d 1811, 1819-20 (TTAB 1998).
  • The presentation of evidence showing an absence of an item does not necessarily lead to the conclusion that no such item exists.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Although applicant has presented catalogs containing examples of standard wrenches which are not wide enough to grip its hexagonal head, we cannot conclude that no such wrench exists, particularly in view of other evidence, such as applicant's own touting of this feature. In re Caterpillar, Inc., 43 USPQ2d at 1341.
  • In the case of a product-design mark, even the authorized use of such a mark by others, such as under a private label, may impair applicant's claim to rights in the mark.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Also, in the case of a product-design mark, such as the mark at issue here, even the authorized use of such a mark by others, such as under a private label, may impair applicant's claim to rights in the mark. See British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1203-04 (TTAB 1993), aff'd, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995).
  • Functional advantages may outweigh a minor increase in cost.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Accordingly, applicant's hexagonal base is not cheaper or easier to manufacture. If the evidence related to other factors, on balance, indicates that the hexagonal base is functional, the functional advantages may very well outweigh the rather minor increase in cost. See Pingel Enterprise Inc., 46 USPQ2d at 1821 (TTAB 1998); In re American National Can Co., 41 USPQ2d 1841, 1844-45 (TTAB 1997). Therefore, we conclude that this factor is neutral.
  • Where a proposed amended mark presents a difference commercial imporession from the originally claimed mark, the TTAB will apply the test of functionality to the originally submitted drawing.
    • In re Ball Corporation, Application Serial No. 75/092,220, (TTAB 2000).
      • With respect to this preliminary matter, we agree with the Examining Attorney that the proposed amended mark presents a mark with a different commercial impression from that originally claimed -- a larger circular ridge and a smaller more elevated circular ridge with all portions of the metal top from the larger circular ridge being claimed. See Trademark Rule 2.72(a) and TMEP § 807.14(a). See also Visa International Service Association v. Life-Code Systems, Inc., 220 USPQ 740 (TTAB 1983). Accordingly, we must analyze the issues in this case on the basis of the originally submitted drawing and the mark shown thereon. We hasten to add, however, that we would reach the same results with respect to functionality and inherent distinctiveness were we to allow the amendment.
  • The mere fact that a product configuration has utility does not necessarily mean the configuration is unregistrable, because registrability depends upon the degree of design utility.
    • In re Ball Corporation, Application Serial No. 75/092,220, (TTAB 2000).
      • A configuration which is so utilitarian as to constitute a superior design, which competitors need to copy in order to compete effectively, is de jure functional and unregistrable. However, the mere fact that a product configuration has utility does not necessarily mean that the configuration is unregistrable, because registrability depends upon the degree of design utility. In re Morton- Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15 (CCPA 1982). See also In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984).
  • The fact that a good can be produced in other shapes does not detract from the functional characteristics of applicant's good.
    • In re Ball Corporation, Application Serial No. 75/092,220, (TTAB 2000).
      • We agree with the Examining Attorney that the fact that a container top can be produced in other shapes does not detract from the functional characteristics of applicant's can top. Applicant's is clearly one of a few superior designs. See In re Bose Corp., 772 F.2d 866, 227 USPQ 1, 6 (Fed. Cir. 1985) and In re Controls Corp. of America, 46 USPQ2d 1308 (TTAB 1998).
  • A superior design is one which performs a function better because of its configuration.
    • In re Ball Corporation, Application Serial No. 75/092,220, (TTAB 2000).
      • Accordingly, we conclude that applicant's container top design is a superior design because it performs the function better in this shape. It is therefore de jure functional.
  • Definition: Functional feature
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • A functional feature is one the "exclusive use of [which] would put competitors at a significant nonreputation- related disadvantage." Qualitex Co. v. Jacobson Products Co., 34 USPQ2d at 1164. See TrafFix Devices Inc. v. Marketing Displays Inc., 523 U.S. 23, 58 USPQ2d 1001, 1006 (2001).
  • Purpose of the functionality doctrine.
    • In re N.V. Organon, Serial No. 76467774, (TTAB 2005).
      • The functionality doctrine is intended to encourage legitimate competition by maintaining the proper balance between trademark law and patent law. As the Supreme Court observed in Qualitex Co. v. Jacobson Products Co., Inc., 34 USPQ2d at 1163-64: "The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, after which competitors are free to use the innovation. If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity). That is to say, the Lanham Act does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity. The Lanham Act, furthermore, does not protect trade dress in a functional design simply because an investment has been made to encourage the public to associate a particular functional feature with a single manufacturer or seller."
  • In an opposition proceeding, the applicant cannot argue the opposer's mark is functional without counterclaiming or petitioning to cancel opposer's marks on those grounds.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • We have several problems with applicant's argument. First, to the extent that applicant is arguing that opposers' registered trademarks are functional, we note that it is improper to raise this defense without counterclaiming or petitioning to cancel the marks on this basis. Contour Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 USPQ 285, 287 (CCPA 1963) ("[T]his is an opposition only and in an opposition, this court has always held that the validity of the opposer's registrations are not open to [collateral] attack"); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (CCPA 1970) ("As long as the registration relied upon … remains uncanceled, it is treated as valid and entitled to the statutory presumptions"). In this case, opposers own or are licensed to use the registered marks CHICAGO BEARS and BEARS.
  • Even if applicant is correct in its argument that the existence of its patent application for its product is not relevant to a Morton-Norwich analysis regarding the registrability of its sound, the absence of a patent for the sound would only mean this factor would be neutral in the analysis of functionality.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Moreover, even if applicant is correct in its argument that the existence of its patent application for its product is not relevant to a Morton-Norwich analysis regarding the registrability of its sound, the absence of a patent for the sound would only mean this factor would be neutral in the analysis of functionality. See TrafFix Devices, 58 USPQ2d at 1006, and In re N.V. Organon, 79 USPQ2d at 1646.
  • In general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article; that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage."
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • The Supreme Court has stated "‘[i]n general terms, a product feature is functional,' and cannot serve as a trademark, ‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article,' that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage." Qualitex v. Jacobson, 34 USPQ2d at 1163-64, quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982). See also, TrafFix Devices Inc. v. Marketing Displays Inc., 523 U.S. 23, 58 USPQ2d 1001, 1006 (2001).
  • The Federal Circuit looks at four factors when it considers the issue of functionality, and the factors are particularly helpful for analyzing functionality under the second approach: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design's utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • The Federal Circuit, our primary reviewing court, looks at four factors, originally set out by a predecessor court, when it considers the issue of functionality, and the factors are particularly helpful for analyzing functionality under the second approach: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design's utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product. In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982). See also Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002).
  • The final Morton-Norwich factor considers whether the sound yields applicant a comparatively simple or cheap method of manufacturing personal alarms.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • The final Morton-Norwich factor considers whether the sound yields applicant a comparatively simple or cheap method of manufacturing personal alarms.
  • The first Morton-Norwich factor focuses on whether a utility patent exists disclosing the advantages of the proposed mark.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • The first Morton-Norwich factor focuses on whether a utility patent exists disclosing the advantages of the proposed mark. Applicant argues that it has a utility patent application for its product, not for its sound. This argument, however, is undercut by the application's focus on a digital wristwatch with a "loud alarm" as an exemplary embodiment for the product, and the application's description of an alarm of 80-125 decibels. The application does not note the degree of brightness for lights that could potentially be utilized in a visual alarm, or the types of odors that could be used for an olfactory alarm; but it does specify a decibel range for the audible alarm that would be characterized as loud.
  • The second Morton-Norwich factor focuses on whether advertising materials tout utilitarian advantages.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • The second Morton-Norwich factor focuses on whether advertising materials tout utilitarian advantages.
  • The third Morton-Norwich factor focuses on whether competitors would have functionally equivalent sounds available to them if applicant were accorded the exclusive rights attendant to registration.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • The third Morton-Norwich factor focuses on whether competitors would have functionally equivalent sounds available to them if applicant were accorded the exclusive rights attendant to registration.
  • The Trademark Act provides that a proposed mark may be refused registration if it comprises any matter that, as a whole, is functional.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • The Trademark Act provides that a proposed mark may be refused registration if it "comprises any matter that, as a whole, is functional." Section 2(e)(5), 15 U.S.C. §1052(e)(5).
  • This standard contemplates at least two possible bases upon which a finding of functionality may be made. First, if the product feature is essential to the use or purpose of the article it may be found functional. Second, if the product feature affects the cost or quality of the article, so that exclusive right to use it would put a competitor at a disadvantage, this, too, may support a conclusion that the product feature is functional.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • We note that this standard contemplates at least two possible bases upon which a finding of functionality may be made. First, if the product feature is essential to the use or purpose of the article it may be found functional. See TrafFix Devices, 58 USPQ2d at 1006 ("Where the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature."). Second, if the product feature affects the cost or quality of the article, so that exclusive right to use it would put a competitor at a disadvantage, this, too, may support a conclusion that the product feature is functional.
  • When a proposed mark has been found functional on other grounds, it is not necessary for the record to also show use of applicant's particular sound would be a competitive necessity.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Of course, as already noted, when a proposed mark has been found functional on other grounds, it is not necessary for the record to also show use of applicant's particular sound would be a competitive necessity. See Valu Engineering, 61 USPQ2d at 1427.
  • Where the description of the sound is not limited to a particular volume, it must be considered to encompass all reasonable degrees of loudness for the sound.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Applicant has argued that it is not seeking to register a sound of any particular loudness. Equally significant, however, is that the description of the sound is not limited to a particular volume. Thus, we must consider it to encompass all reasonable degrees of loudness for an alarm sound. Cf. Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) ("Webb's application is not limited to the mark depicted in any special form. In trying to visualize what other forms the mark might appear in, we are aided by the specimens submitted with Webb's application.").
  • Case Finding: Applicant has explained, and the record shows, that the sound of its product has no bearing on the cost or ease of manufacture of its alarms. This factor is neutral.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Applicant has explained, and the record shows, that the sound of its product has no bearing on the cost or ease of manufacture of its alarms. This factor is neutral.
  • Case Finding: Applicant's advertising touts a critical feature of its sound, as emitted by the identified goods. This factor favors a finding of functionality.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Applicant's advertising clearly extols the loudness of the alarm sound, much more than the engineering of the product that produces the sound. Applicant has admitted as much. See January 22, 2008 response, child's bracelet application ("the advertising touts the degree of loudness")(emphasis in original). The advertising material does not tout the particular frequencies of the sound pulses or the pattern of the pulses, but applicant has admitted "[t]he volume of the alarm is critical." See September 14, 2005 response to office action, child's bracelet application. Thus, applicant's advertising touts a critical feature of its sound, as emitted by the identified goods. This factor favors a finding of functionality.
  • Case Finding: Moreover, it is clear from the record that applicant's alarm emits a loud sound and that the loudness of the sound is an essential feature of the product.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Moreover, it is clear from the record that applicant's alarm emits a loud sound and that the loudness of the sound is an essential feature of the product. For example, the specimen of use shows that applicant's sound is typically used in a loud manner. In addition, applicant has admitted "[t]he volume of the alarm is critical." See September 14, 2005 response to office action, child's bracelet application. Indeed, a soft alarm sound would not draw much attention.
  • Case Finding: The ability of applicant's products to emit a loud, pulsing sound is essential to their use or purpose. For that reason alone, the functionality refusal must be affirmed in regard to each application. However, we shall also consider the question whether the proposed mark is functional under the Morton-Norwich analysis.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • In short, the ability of applicant's products to emit a loud, pulsing sound is essential to their use or purpose. For that reason alone, the functionality refusal must be affirmed in regard to each application. However, we shall also consider the question whether the proposed mark is functional under the Morton-Norwich analysis.
  • Case Finding: The sound proposed for registration is functional and not entitled to registration under either view of functionality.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • In the cases at hand, we conclude that the sound proposed for registration is functional and not entitled to registration under either view of functionality. Quite simply, the use of an audible alarm is essential to the use or purpose of applicant's products. It is clear, for example, that applicant touts the loud volume of the sound emitted by its alarm watch (and emphasizes the loudness much more than the flashing LEDs). Similarly, the evidence regarding competitive personal security devices that applicant put into the record also shows the predominant use of loud sound as an alarm. In addition, the sound involves alternating sound pulses and silence, which the CPSC paper and other evidence shows is a more effective way to use sound as an alarm than is a steady sound.
  • Case Finding: Weighing all the Morton-Norwich factors in the balance, we conclude that the mark applicant has described in its application and proposes to register is functional and unregistrable. The functionality refusal is affirmed in each application, based on both the Inwood formulation of the sound being essential to the use or purpose of applicant's goods and under the Morton-Norwich analysis.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Weighing all the Morton-Norwich factors in the balance, we conclude that the mark applicant has described in its application and proposes to register is functional and unregistrable. The functionality refusal is affirmed in each application, based on both the Inwood formulation of the sound being essential to the use or purpose of applicant's goods and under the Morton-Norwich analysis.
  • Case Finding: While there may indeed be countless combinations of frequencies available for personal alarms utilizing the frequencies within the optimal range, registration of applicant's sound as described would deprive competitors of many of those options.
    • In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009)
      • Thus, under applicant's analysis the thousands of frequencies within this range can be combined into countless variations and therefore applicant's particular combination of frequencies need not be employed by other makers of personal alarms. What applicant's argument fails to appreciate, however, is that the description of its mark only specifies that its sound pulses will be between 1500 Hz and 2300 Hz. Based on this description, applicant would be free to combine sound pulses for any of the frequencies within this range, a large swath of the optimal range of 1000 Hz to 3000 Hz. While there may indeed be countless combinations of frequencies available for personal alarms utilizing the frequencies within the optimal range, registration of applicant's sound as described would deprive competitors of many of those options. It matters not that applicant's actual sound may currently use only a handful of particular frequencies, for it would be free to change the combinations at any time and still have its sound fall within the ambit of the description. This factor favors a finding of functionality.
  • The third Morton-Norwich factor involves consideration of alternative designs.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The third Morton-Norwich factor involves consideration of alternative designs.
  • Applicant carries a heavy burden of showing that the feature is not functional.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • Thus, the applicant has failed to carry the "heavy burden of showing that the feature is not functional." Traffix, 58 USPQ2d at 1005.
  • A product feature is functional when it affects the cost or quality of the article.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • As stated in TrafFix, 58 USPQ2d at 1006, a product feature is functional "when it affects the cost or quality of the article." (Emphasis added).
  • The Supreme Court's decision in TrafFix has not altered the Morton Norwich analysis.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The Supreme Court's decision in TrafFix has not altered the Morton Norwich analysis. See Valu Engineering, Inc. v. Rexnord Corp., 61 USPQ2d at 1427.
  • A higher production cost of a product design does not detract from its functionality.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • Accordingly, we find that the cost and complexity of manufacturing applicant's product design is comparable to some of his competitors. Nevertheless, even if applicant's motorcycle stands with this design are more costly to produce, a higher cost does not detract from its functionality.
  • The Federal Circuit has indicated that competition is the crux of the functionality inquiry.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The Federal Circuit has indicated that competition "is the crux of the functionality inquiry." Valu Engineering, 61 USPQ2d at 1427 (internal citations omitted).
  • The Supreme Court has called this "Inwood formulation" the "traditional rule" of functionality.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The Supreme Court has called this "Inwood formulation" the "traditional rule" of functionality. TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001).
  • Section 2(e)(5) of the Trademark Act precludes registration of any matter that, as a whole, is functional.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • Section 2(e)(5) of the Trademark Act precludes registration of "any matter that, as a whole, is functional."
  • The first Morton-Norwich factor is the existence of a utility patent disclosing the utilitarian advantages of the design.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The first Morton-Norwich factor is the existence of a utility patent disclosing the utilitarian advantages of the design.
  • The determination of functionality is a question of fact, and depends on the totality of the evidence presented in each particular case.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The determination of functionality is a question of fact, and depends on the totality of the evidence presented in each particular case. In re Udor U.S.A. Inc., 89 USPQ2d 1978, 1979 (TTAB 2009).
  • An applicant's own advertising touting the utilitarian aspects of its product design is strong evidence supporting a functionality refusal.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • An applicant's own advertising touting the utilitarian aspects of its product design is strong evidence supporting a functionality refusal.
  • The fourth and final factor is a consideration of whether applicant's design results from a comparatively simple or cheap method of manufacture.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The fourth and final factor is a consideration of whether applicant's design results from a comparatively simple or cheap method of manufacture.
  • In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The Supreme Court has stated: "In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982).
  • As indicated above, the invention described in the patent and the proposed mark do not have to be identical for the patent to read on or apply to the proposed mark.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • As indicated above, the invention described in the patent and the proposed mark do not have to be identical for the patent to read on or apply to the proposed mark.
  • The availability of alternative designs is relevant to show that the design sought to be registered will preserve competition by ensuring competitors the right to compete effectively.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The availability of alternative designs is relevant to show that the design sought to be registered will "preserve competition by ensuring competitors the right to compete effectively." Id.; In re Morton-Norwich Products, Inc., 213 USPQ at 13.
  • In the face of this showing, it was incumbent upon applicant to rebut why the patent does not disclose the utilitarian advantages of the proposed mark.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • In the face of this showing, it was incumbent upon applicant to rebut why the patent does not disclose the utilitarian advantages of the proposed mark. See Textor, Inc. v. U.S. Int'l Trade Comm'n, 753 F.2d 1019, 1025 (Fed. Cir. 1986) (stating that once a prima facie case of functionality is made by an opponent, the burden shifts to the applicant to prove that the design is nonfunctional).
  • The best mode requirement is a safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure as required by the statute.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • "The best mode requirement is a safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure as required by the statute. The requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves." MPEP § 2165 citing In re Nelson and Shabica, 280 F.2d 172, 126 USPQ 242, 253 (CCPA 1960).
  • Case Finding: Registration of the claimed matter could well hinder competitors who would not know if the features they used in the supporting base of their motorcycle stands might well subject them to a suit for trademark infringement.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • Beyond this basic structure, and without any formal explanation of the specific elements which applicant claims as its mark, registration of the claimed matter could well hinder competitors who would not know if the features they used in the supporting base of their motorcycle stands, whose overall configurations are not dissimilar from those of applicant, might well subject them to a suit for trademark infringement.
  • The drawing in a nonprovisional application must show every feature of the invention specified in the claims.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • "The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical symbol or a labeled representation (e.g., a labeled rectangular box)." 37 CFR 183(a).
  • Without any advertising by the applicant on which to rely, the examining attorney turned to promotional materials published by applicant's competitors touting the functional features of motorcycle stands that incorporate the design of the proposed mark.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • Without any advertising by the applicant on which to rely, the examining attorney turned to promotional materials published by applicant's competitors touting the functional features of motorcycle stands that incorporate the design of the proposed mark. See In re Gibson Guitar Corp., 61 USPQ2d 1948, 1951 (TTAB 2001) (referencing the advertisement of a competitor that used the identical shape to the configuration sought to be registered).
  • The availability of alternative designs does not convert a functional design into a non-functional design.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • However, the availability of alternative designs does not convert a functional design into a non-functional design. TrafFix, 58 USPQ2d at 1007 ("Here, the functionality of the spring design means that competitors need not explore whether other spring juxtapositions might be used. The dual-spring design is not an arbitrary flourish in the configuration of MDI's product; it is the reason the device works. Other designs need not be attempted").
  • It is not necessary that the configuration designs for which trademark protection is sought be virtually identical to the invention described and claimed in the patent or that the patent must cover all facets of the proposed marks. The TTAB should look to the features disclosed in the patent which have been incorporated into the present product designs and the teachings of the patent with respect to these features.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The fact that the proposed mark comprises less than the entirety of the invention claimed in the patent is not dispositive. "We do not find it necessary that the configuration designs for which trademark protection is sought be "virtually identical to the invention described and claimed" in the patent or that the patent must "cover" all facets of the proposed marks. Instead we look to the features disclosed in the patent which have been incorporated into the present product designs and the teachings of the patent with respect to these features." In re Visual Communications Co., 51 USPQ2d 1141, 1143 (TTAB 1999).
  • Contrary to applicant's argument, even if the patent describes the proposed mark, the patent does disclose utilitarian advantages of the proposed mark because of the best mode requirement.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • Applicant argues, in the alternative, that even if the patent describes the proposed mark, the patent does not disclose any utilitarian advantages of the proposed mark.5 To the contrary, applicant was required to present the best mode of the invention and the patent discloses that the design of the base is used to leverage support during operation. The summary of the invention provides, in pertinent part, that "[t]he bass (sic) portion consists of a pair of arms to which are affixed a pair of fulcrum wheels and a handle for operation." Accordingly, the proposed mark is necessary to the operation of the motorcycle stand particularly, where as here, the proposed mark is identified as the best mode for carrying out the invention.
  • Listing of the Morton-Norwich factors.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The Federal Circuit, our primary reviewing court, looks at four factors when it considers the issue of functionality: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design's utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product. Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002), citing In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982). These are known as the "Morton-Norwich factors."
  • The mere fact that other designs are available does not necessarily mean that applicant's design is not functional.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The Federal Circuit has noted, however, that the mere fact that other designs are available does not necessarily mean that applicant's design is not functional. In this regard, the Federal Circuit has noted that the mere fact that other designs are available does not necessarily mean that applicant's design is not functional. In re Bose, 772 F.2d 866, 227 USPQ 1, 5-6 (Fed. Cir. 1985) ("That another type of [design] would work equally as well does not negate that this [design] was designed functionally to enhance or at least not detract from the rest of the system . If the feature asserted to give a product distinctiveness is the best, or at least one, of a few superior designs for its de facto purpose, it follows that competition is hindered. Morton-Norwich does not rest on total elimination of competition in the goods." (emphasis in original)).
  • Where the patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental or arbitrary aspect of the device.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • Regarding the evidentiary value of utility patents in the functionality determination, the Supreme Court has instructed as follows: "A prior patent, we conclude, has vital significance in resolving the trade dress claim. A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental or arbitrary aspect of the device." TrafFix Devices Inc. v. Marketing Displays Inc., 58 USPQ2d at 1005.
  • The detailed description of the invention identifies the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The "detailed description of the invention" identifies "the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth." 37 CFR 1.71(b); see also 35 U.S.C. § 112 ("The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention").
  • Case Finding: The advertisements by applicant's competitors tout the utilitarian advantages of motorcycle stands similar, if not identical, in design to the proposed mark in more than just generalized statements.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • Applicant argues that the advertising does not describe, explain or reference any utilitarian aspects or advantages of the proposed mark; rather the advertising makes general statements that could be attributed to any motorcycle stand.12 We disagree. Statements such as "designed to allow a superb sturdy, non-flex performance," "[e]xtended arm provide (sic) extra leverage," "[l]ow effort one hand lift," "extraordinarily easy to use," "[t]he whole system is so strong, and its geometry so correct, that a bike can easily be rolled around while on the stand," and "[u]niversal design to fit all standard swing arm sportbikes" relate specifically to the design of the supporting base incorporated into applicant's proposed mark. Thus, we find that the advertisements by applicant's competitors tout the utilitarian advantages of motorcycle stands similar, if not identical, in design to the proposed mark in more than just generalized statements.
  • The functionality doctrine is intended to encourage legitimate competition by maintaining the proper balance between trademark law and patent law.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The functionality doctrine is intended to encourage legitimate competition by maintaining the proper balance between trademark law and patent law. As the Supreme Court observed in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161, 1163-64 (1995): "The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, after which competitors are free to use the innovation. If a product's functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity). That is to say, the Lanham Act does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity. The Lanham Act, furthermore, does not protect trade dress in a functional design simply because an investment has been made to encourage the public to associate a particular functional feature with a single manufacturer or seller."
In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011) In re Vertex Group LLC, Serial No. 76601697 and 78940163 (TTAB 2009) Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007) In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006) American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005) In re N.V. Organon, Serial No. 76467774, (TTAB 2005) In re Gibson Guitar Corp., Serial No. 75/513,342, (TTAB 2001) In re Ball Corporation, Application Serial No. 75/092,220, (TTAB 2000) Grand Total
In re Udor U.S.A. Inc., 89 USPQ2d 1978 (TTAB 2009) 1
In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) 1
Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422 (Fed. Cir. 2002) 6
In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) 1
M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001) 1
TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001) 7
In re Edwards Ski Products Inc., 49 USPQ2d 2001 (TTAB 1999) 1
In re Visual Communications Co., 51 USPQ2d 1141 (TTAB 1999) 1
In re Controls Corp. of America, 46 USPQ2d 1308 (TTAB 1998) 1
In re Pingel Enterprise Inc., 46 USPQ2d 1811 (TTAB 1998) 1
In re Caterpillar Inc., 43 USPQ2d 1335 (TTAB 1997) 1
In re Virshup, 42 USPQ2d 1403 (TTAB 1997) 1
Brunswick Corp. v. British Seagull Ltd., 35 F.2d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995) 1
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) 6
British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993), aff'd, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995) 1
R.L. Winston Rod Co. v. Sage Manufacturing Co., 838 F. Supp. 1396, 29 USPQ2d 1779 (D. Mont. 1993) 1
Textor, Inc. v. U.S. Int'l Trade Comm'n, 753 F.2d 1019 (Fed. Cir. 1986) 1
Cable Electric Products Inc. v. Genmark Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985) 1
In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) 3
In re Owens Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) 1
Textron Inc. v. U.S. Int'l Trade Comm'n, 753 F.2d 1029, 224 USPQ 625 (Fed. Cir. 1985) 1
In re R. M. Smith Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984) 2
Petersen Mfg. Co. v. Central Purchasing Inc., 740 F.2d 1541, 222 USPQ 562 (Fed. Cir. 1984) 1
Visa International Service Association v. Life-Code Systems Inc., 220 USPQ 740 (TTAB 1983) 1
In re Morton-Norwich Products Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982) 7
Inwood Laboratories Inc. v. Ives Laboratories Inc., 456 U.S. 844, 214 USPQ 1 (1982) 6
Phillips Petroleum Co. v. C. J. Webb Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971) 1
Best Lock Corp. v. Schlage Lock Co., 413 F.2d 1195, 162 USPQ 552 (C.C.P.A. 1969) 1
In re Nelson and Shabica, 280 F.2d 172, 126 USPQ 242 (CCPA 1960) 1
Grand Total 11 7 9 9 11 5 2 5 59

Sec. 1051. Application for registration; verification

  1. (a) Application for use of trademark
    1. (1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the date of the applicant's first use of the mark, the date of the applicant's first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify that--
      1. (A) the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be the owner of the mark sought to be registered;
      2. (B) to the best of the verifier's knowledge and belief, the facts recited in the application are accurate;
      3. (C) the mark is in use in commerce; and
      4. (D) to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, except that, in the case of every application claiming concurrent use, the applicant shall--
        1. (i) state exceptions to the claim of exclusive use; and
        2. (ii) shall \\1\\ specify, to the extent of the verifier's knowledge--
          ---------------------------------------------------------------------------
          \\1\\ So in original. The word ``shall'' probably should not appear.
          ---------------------------------------------------------------------------
          1. (I) any concurrent use by others;
          2. (II) the goods on or in connection with which and the areas in which each concurrent use exists;
          3. (III) the periods of each use; and
          4. (IV) the goods and area for which the applicant desires registration.
  2. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  3. (b) Application for bona fide intention to use trademark
    1. (1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify--
      1. (A) that the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be entitled to use the mark in commerce;
      2. (B) the applicant's bona fide intention to use the mark in commerce;
      3. (C) that, to the best of the verifier's knowledge and belief, the facts recited in the application are accurate; and
      4. (D) that, to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive.
    Except for applications filed pursuant to section 1126 of this title, no mark shall be registered until the applicant has met the requirements of subsections (c) and (d) of this section.
    1. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  4. (c) Amendment of application under subsection (b) to conform to requirements of subsection (a) At any time during examination of an application filed under subsection (b) of this section, an applicant who has made use of the mark in commerce may claim the benefits of such use for purposes of this chapter, by amending his or her application to bring it into conformity with the requirements of subsection (a) of this section.
  5. (d) Verified statement that trademark is used in commerce
    1. (1) Within six months after the date on which the notice of allowance with respect to a mark is issued under section 1063(b)(2) of this title to an applicant under subsection (b) of this section, the applicant shall file in the Patent and Trademark Office, together with such number of specimens or facsimiles of the mark as used in commerce as may be required by the Director and payment of the prescribed fee, a verified statement that the mark is in use in commerce and specifying the date of the applicant's first use of the mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in commerce. Subject to examination and acceptance of the statement of use, the mark shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued for those goods or services recited in the statement of use for which the mark is entitled to registration, and notice of registration shall be published in the Official Gazette of the Patent and Trademark Office. Such examination may include an examination of the factors set forth in subsections (a) through (e) of section 1052 of this title. The notice of registration shall specify the goods or services for which the mark is registered.
    2. (2) The Director shall extend, for one additional 6-month period, the time for filing the statement of use under paragraph (1), upon written request of the applicant before the expiration of the 6-month period provided in paragraph (1). In addition to an extension under the preceding sentence, the Director may, upon a showing of good cause by the applicant, further extend the time for filing the statement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to written request of the applicant made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a verified statement that the applicant has a continued bona fide intention to use the mark in commerce and specifying those goods or services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee. The Director shall issue regulations setting forth guidelines for determining what constitutes good cause for purposes of this paragraph.
    3. (3) The Director shall notify any applicant who files a statement of use of the acceptance or refusal thereof and, if the statement of use is refused, the reasons for the refusal. An applicant may amend the statement of use.
    4. (4) The failure to timely file a verified statement of use under paragraph (1) or an extension request under paragraph (2) shall result in abandonment of the application, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the time for filing may be extended, but for a period not to exceed the period specified in paragraphs (1) and (2) for filing a statement of use.
  6. (e) Designation of resident for service of process and notices
    If the applicant is not domiciled in the United States the applicant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.

 

 

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

 

 

Sec. 1064. Cancellation of registration

A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:
    1. (1) Within five years from the date of the registration of the mark under this chapter.
    2. (2) Within five years from the date of publication under section 1062(c) of this title of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
    3. (3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
    4. (4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 1062 of this title.
    5. (5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies:
Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.

 

 

Sec. 1091. Supplemental register

  1. (a) Marks registerable
    In addition to the principal register, the Director shall keep a continuation of the register provided in paragraph (b) of section 1 of the Act of March 19, 1920, entitled ``An Act to give effect to certain provisions of the convention for the protection of trademarks and commercial names, made and signed in the city of Buenos Aires, in the Argentine Republic, August 20, 1910, and for other purposes'', to be called the supplemental register. All marks capable of distinguishing applicant's goods or services and not registrable on the principal register provided in this chapter, except those declared to be unregistrable under subsections (a), (b), (c), (d), and (e)(3) of section 1052 of this title, which are in lawful use in commerce by the owner thereof, on or in connection with any goods or services may be registered on the supplemental register upon the payment of the prescribed fee and compliance with the provisions of subsections (a) and (e) of section 1051 of this title so far as they are applicable. Nothing in this section shall prevent the registration on the supplemental register of a mark, capable of distinguishing the applicant's goods or services and not registrable on the principal register under this chapter, that is declared to be unregistrable under section 1052(e)(3) of this title, if such mark has been in lawful use in commerce by the owner thereof, on or in connection with any goods or services, since before December 8, 1993.
  2. (b) Application and proceedings for registration
    Upon the filing of an application for registration on the supplemental register and payment of the prescribed fee the Director shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made and if on such examination it shall appear that the applicant is entitled to registration, the registration shall be granted. If the applicant is found not entitled to registration the provisions of subsection (b) of section 1062 of this title shall apply.
  3. (c) Nature of mark
    For the purposes of registration on the supplemental register, a mark may consist of any trademark, symbol, label, package, configuration of goods, name, word, slogan, phrase, surname, geographical name, numeral, device, any matter that as a whole is not functional, or any combination of any of the foregoing, but such mark must be capable of distinguishing the applicant's goods or services.

 

 

Sec. 1115. Registration on principal register as evidence of exclusive right to use mark; defenses

  1. (a) Evidentiary value; defenses
    Any registration issued under the Act of March 3, 1881, or the Act of February 20, 1905, or of a mark registered on the principal register provided by this chapter and owned by a party to an action shall be admissible in evidence and shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration subject to any conditions or limitations stated therein, but shall not preclude another person from proving any legal or equitable defense or defect, including those set forth in subsection (b) of this section, which might have been asserted if such mark had not been registered.
  2. (b) Incontestability; defenses
    To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce. Such conclusive evidence shall relate to the exclusive right to use the mark on or in connection with the goods or services specified in the affidavit filed under the provisions of section 1065 of this title, or in the renewal application filed under the provisions of section 1059 of this title if the goods or services specified in the renewal are fewer in number, subject to any conditions or limitations in the registration or in such affidavit or renewal application. Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in section 1114 of this title, and shall be subject to the following defenses or defects:
    1. (1) That the registration or the incontestable right to use the mark was obtained fraudulently; or
    2. (2) That the mark has been abandoned by the registrant; or
    3. (3) That the registered mark is being used by or with the permission of the registrant or a person in privity with the registrant, so as to misrepresent the source of the goods or services on or in connection with which the mark is used; or
    4. (4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin; or
    5. (5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 1057(c) of this title, (B) the registration of the mark under this chapter if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of section 1062 of this title: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved; or
    6. (6) That the mark whose use is charged as an infringement was registered and used prior to the registration under this chapter or publication under subsection (c) of section 1062 of this title of the registered mark of the registrant, and not abandoned: Provided, however, That this defense or defect shall apply only for the area in which the mark was used prior to such registration or such publication of the registrant's mark; or
    7. (7) That the mark has been or is being used to violate the antitrust laws of the United States; or
    8. (8) That the mark is functional; or
    9. (9) That equitable principles, including laches, estoppel, and acquiescence, are applicable.

 

 

Sec. 1125. False designations of origin, false descriptions, and dilution forbidden

  1. (a) Civil action
    1. (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--
      1. (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
      2. (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,
      shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
    2. (2) As used in this subsection, the term ``any person'' includes any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
    3. (3) In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.
  2. (b) Importation
    Any goods marked or labeled in contravention of the provisions of this section shall not be imported into the United States or admitted to entry at any customhouse of the United States. The owner, importer, or consignee of goods refused entry at any customhouse under this section may have any recourse by protest or appeal that is given under the customs revenue laws or may have the remedy given by this chapter in cases involving goods refused entry or seized.
  3. (c) Dilution by blurring; dilution by tarnishment
    1. (1) Injunctive relief
      Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
    2. (2) Definitions
      1. (A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:
        1. (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
        2. (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
        3. (iii) The extent of actual recognition of the mark.
        4. (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
      2. (B) For purposes of paragraph (1), ``dilution by blurring'' is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:
        1. (i) The degree of similarity between the mark or trade name and the famous mark.
        2. (ii) The degree of inherent or acquired distinctiveness of the famous mark.
        3. (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
        4. (iv) The degree of recognition of the famous mark.
        5. (v) Whether the user of the mark or trade name intended to create an association with the famous mark.
        6. (vi) Any actual association between the mark or trade name and the famous mark.
      3. (C) For purposes of paragraph (1), ``dilution by tarnishment'' is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.
    3. (3) Exclusions
      The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
      1. (A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with--
        1. (i) advertising or promotion that permits consumers to compare goods or services; or
        2. (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
      2. (B) All forms of news reporting and news commentary.
      3. (C) Any noncommercial use of a mark.
    4. (4) Burden of proof
      In a civil action for trade dress dilution under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that--
      1. (A) the claimed trade dress, taken as a whole, is not functional and is famous; and
      2. (B) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.
    5. (5) Additional remedies
      In an action brought under this subsection, the owner of the famous mark shall be entitled to injunctive relief as set forth in section 1116 of this title. The owner of the famous mark shall also be entitled to the remedies set forth in sections 1117(a) and 1118 of this title, subject to the discretion of the court and the principles of equity if--
      1. (A) the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first used in commerce by the person against whom the injunction is sought after October 6, 2006; and
      2. (B) in a claim arising under this subsection--
        1. (i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark; or
        2. (ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark.
    6. (6) Ownership of valid registration a complete bar to action
      The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this chapter shall be a complete bar to an action against that person, with respect to that mark, that--
      1. (A)
        1. (i) is brought by another person under the common law or a statute of a State; and
        2. (ii) seeks to prevent dilution by blurring or dilution by tarnishment; or
      2. (B) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.
    7. (7) Savings clause
      Nothing in this subsection shall be construed to impair, modify, or supersede the applicability of the patent laws of the United States.
  4. (d) Cyberpiracy prevention
    1. (1)
      1. (A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person--
        1. (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
        2. (ii) registers, traffics in, or uses a domain name that--
          1. (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
          2. (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
          3. (III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.
        1. (B)
          1. (i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to--
            1. (I) the trademark or other intellectual property rights of the person, if any, in the domain name;
            2. (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
            3. (III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
            4. (IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
            5. (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
            6. (VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct;
            7. (VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct;
            8. (VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
            9. (IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c).
          2. (ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.
        2. (C) In any civil action involving the registration, trafficking, or use of a domain name under this paragraph, a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.
        3. (D) A person shall be liable for using a domain name under subparagraph (A) only if that person is the domain name registrant or that registrant's authorized licensee.
        4. (E) As used in this paragraph, the term ``traffics in'' refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.
      2. (2)
        1. (A) The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if--
          1. (i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c) of this section; and
          2. (ii) the court finds that the owner--
            1. (I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1); or
            2. (II) through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1) by--
              1. (aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar; and
              2. (bb) publishing notice of the action as the court may direct promptly after filing the action.
        2. (B) The actions under subparagraph (A)(ii) shall constitute service of process.
        3. (C) In an in rem action under this paragraph, a domain name shall be deemed to have its situs in the judicial district in which--
          1. (i) the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located; or
          2. (ii) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court.
        4. (D)
          1. (i) The remedies in an in rem action under this paragraph shall be limited to a court order for the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark. Upon receipt of written notification of a filed, stamped copy of a complaint filed by the owner of a mark in a United States district court under this paragraph, the domain name registrar, domain name registry, or other domain name authority shall--
            1. (I) expeditiously deposit with the court documents sufficient to establish the court's control and authority regarding the disposition of the registration and use of the domain name to the court; and
            2. (II) not transfer, suspend, or otherwise modify the domain name during the pendency of the action, except upon order of the court.
          2. (ii) The domain name registrar or registry or other domain name authority shall not be liable for injunctive or monetary relief under this paragraph except in the case of bad faith or reckless disregard, which includes a willful failure to comply with any such court order.
      3. (3) The civil action established under paragraph (1) and the in rem action established under paragraph (2), and any remedy available under either such action, shall be in addition to any other civil action or remedy otherwise applicable.
      4. (4) The in rem jurisdiction established under paragraph (2) shall be in addition to any other jurisdiction that otherwise exists, whether in rem or in personam.

     

     

    Sec. 1127. Construction and definitions; intent of chapter

    In the construction of this chapter, unless the contrary is plainly apparent from the context--
    The United States includes and embraces all territory which is under its jurisdiction and control.
    The word ``commerce'' means all commerce which may lawfully be regulated by Congress.
    The term ``principal register'' refers to the register provided for by sections 1051 to 1072 of this title, and the term ``supplemental register'' refers to the register provided for by sections 1091 to 1096 of this title.
    The term ``person'' and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this chapter includes a juristic person as well as a natural person. The term ``juristic person'' includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
    The term ``person'' also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
    The term ``person'' also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
    The terms ``applicant'' and ``registrant'' embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.
    The term ``Director'' means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
    The term ``related company'' means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
    The terms ``trade name'' and ``commercial name'' mean any name used by a person to identify his or her business or vocation. The term ``trademark'' includes any word, name, symbol, or device, or any combination thereof--
      1. (1) used by a person, or
      2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
    to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
    The term ``service mark'' means any word, name, symbol, or device, or any combination thereof--
      1. (1) used by a person, or
      2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
    to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
    The term ``certification mark'' means any word, name, symbol, or device, or any combination thereof--
      1. (1) used by a person other than its owner, or
      2. (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter,
    to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
    The term ``collective mark'' means a trademark or service mark--
      1. (1) used by the members of a cooperative, an association, or other collective group or organization, or
      2. (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
    and includes marks indicating membership in a union, an association, or other organization.
    The term ``mark'' includes any trademark, service mark, collective mark, or certification mark.
    The term ``use in commerce'' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce--
      1. (1) on goods when--
        1. (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
        2. (B) the goods are sold or transported in commerce, and
      2. (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
    A mark shall be deemed to be ``abandoned'' if either of the following occurs:
      1. (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. ``Use'' of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
      2. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
    The term ``colorable imitation'' includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.
    The term ``registered mark'' means a mark registered in the United States Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the Act of March 19, 1920. The phrase ``marks registered in the Patent and Trademark Office'' means registered marks.
    The term ``Act of March 3, 1881'', ``Act of February 20, 1905'', or ``Act of March 19, 1920'', means the respective Act as amended.
    A ``counterfeit'' is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.
    The term ``domain name'' means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.
    The term ``Internet'' has the meaning given that term in section 230(f)(1) of title 47.
    Words used in the singular include the plural and vice versa.
    The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.

     

     

    C.F.R. Sec. 2.61. Action by examiner.

    1. (a) Applications for registration, including amendments to allege use under section 1(c) of the Act, and statements of use under section 1(d) of the Act, will be examined and, if the applicant is found not entitled to registration for any reason, applicant will be notified and advised of the reasons therefor and of any formal requirements or objections.
    2. (b) The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.
    3. (c) Whenever it shall be found that two or more parties whose interests are in conflict are represented by the same attorney, each party and also the attorney shall be notified of this fact.