By Mark Engstrom, J.D.
A trademark examining attorney did not err in refusing to register on the Supplemental Register a Monster Cable Products mark for “headphone cables sold as an integral component of headphones,” the Trademark Trial and Appeal Board has ruled (In re Monster Cable Products, Inc., December 28, 2015, Zervas, A.). The proposed mark comprised a headphone cable with an oblong cross-section and contoured outer edges. Because the mark was functional and generic, the refusal to register was affirmed.
Functionality. The Board considered four factors in its functionality analysis: (1) the existence of a utility patent that disclosed the utilitarian advantages of the asserted design; (2) advertising that touted the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design resulted in a comparatively simple or cheap method of manufacturing.
Regarding the first factor, the Board noted that Monster owned a utility patent—U.S. Patent No. 8,068,633 B2, titled “Headphone Cable Splitter”—that was directed to a “flat headphone cable” with a unitary cable section and a split cable section, which allowed users to orient the unitary section to lie flat against one’s body, and to orient the split sections to lie flat against one’s face.
Significantly, the specification of Monster’s utility patent identified the advantages of a flat cable design, including a tangle-resistant headphone cable that facilitated the passage of multiple conductors in a side-by-side configuration for lower overall impedance and faster transient response. The Board noted that Monster’s patent showed the utilitarian advantages of the headphone cable design at issue, which heavily favored a finding of functionality.
With respect to the second factor—advertisements that touted the utilitarian advantages of the applicant’s design—Monster had addressed the non-tangling feature of its headphone cable in its advertisements and had attributed that feature to the fact that its cable was significantly wider than it was thick.
Although the utility patent and advertisements were silent about the contoured sides of Monster’s cable design, the Board found that the patent and the advertisements both constituted substantial evidence that: (1) the proposed mark as whole was functional and (2) the purportedly distinctive element was “imperceptible and inconsequential.”
Regarding the third factor—the availability of equivalent designs—Monster proffered examples of alternative designs, but those designs did not offer the same set of features that were offered by its own configuration, and therefore did not amount to persuasive evidence of non-functionality.
The fourth factor was neutral, the Board concluded, because Monster and the examining attorney failed to discuss the issue of whether Monster’s design resulted in a comparatively simple or cheap method of manufacture.
Considering the four functionality factors and the proposed mark as a whole, the Board concluded that Monster’s cable configuration was a functional design.
Genericness. The examining attorney relied on the websites of third-party competitors, which sold headphone cables that were oblong or had curved or rounded edges. Because those cables were, in the examiner’s view, the same as or substantially similar to Monster’s cable, the examining attorney concluded that the features that were claimed by Monster were commonly used by competitors.
The Board agreed. The record contained ample evidence of third-parties whose headphone cables were oblong and used curved or rounded edges that were the same as, or highly similar to, Monster’s design. According to the Board, the third-party designs showed headphone cables that: (1) were significantly wider than they were thick and (2) had curved or rounded side contours. The record also included many examples of headphone cables with a round cross section. For those reasons, the Board found that curved or rounded sides were a common design element for headphone cables. Nevertheless, Monster proffered four arguments that merited specific consideration by the Board.
First, Monster argued that the examining attorney did not provide any sales, advertising, or marketing information for the competitors’ designs. Nevertheless, the Board noted that the evidence showed that many of the competitors’ headphone cables were sold by major retailers such as Best Buy, RadioShack, Office Depot, and Amazon.com. Further, the examining attorney had submitted a webpage from sony.com, and the webpage identified Sony as a leading manufacturer of audio technology products. In the Board’s view, there was no reason to discount the designs of headphone cables that were offered by major retailers. Monster’s argument regarding the lack of sales, advertising, or marketing figures for the designs that were relied on by the examining attorney was simply unpersuasive.
Second, Monster tried to distinguish the Board’s finding in Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (2009)—which found that an exact match in designs was not needed for the Board to consider the designs of competitors—because the designs considered in Stuart Spectorhad been used by third parties for three decades without any policing of the alleged trademarks. In the Board’s view, however, Monster’s eight years of use was “not insubstantial,” and the record did not show that Monster had enforced its alleged trademark rights in the applied-for cable configuration during that time period. For those reasons, the Board concluded that Stuart Spector was not distinguishable.
Third, Monster argued that the record contained no evidence regarding the market share of flat cable headphones in the wider headphone market. In the Board’s view, however, the volume and nature of the evidence of flat headphone cables that were offered for sale by numerous competitors undercut that argument. According to the Board, the evidence showed that: (1) a substantial number of entities manufactured flat cable headphones and (2) those entities were “not an insignificant portion” of the headphone cables that were offered for sale by major retailers such as Target, Best Buy, and Amazon.com.
Fourth, Monster argued that a license agreement with Beats Electronics was evidence that its proposed mark was perceived by the industry as being capable of source-identifying significance. Beats Electronics was described as “a leading brand of headphones with over 25% of the $1.8 billion headphone market,” but the record was silent as to what designs made up the remaining 75 percent of the market.
Moreover, the agreement noted that Monster and Beats had a history of developing and co-marketing products, including headphone and speaker products, since 2009. Based on that prior history and co-development, the Board was not surprised that an agreement was concluded. In the Board’s view, the probative value of the agreement was diminished because the agreement was a “fully-paid up, nonexclusive license” that did not provide Monster with any income on its alleged trademark.
Finally, the agreement was signed after the examining attorney had issued a final office action. In the Board’s view, that fact raised the question of whether the agreement was made in anticipation of prosecuting Monster’s trademark application.
Given the facts and findings of record, the Board concluded that the proposed mark was a generic design for flat headphone cables because it incorporated the common, basic elements of an oblong cross-section and curved edges. For that reason, the design was unregistrable under Section 23(c) of the Trademark Act.
The case is Serial No. 85318060.
Attorneys: David M. Kelly, Robert D. Litowitz and Linda McLeod (Kelly IP, LLP) for Monster Cable Products, Inc. Kim Teresa Moninghoff, Trademark Examining Attorney.
Companies: Monster Cable Products, Inc.
MainStory: TopStory Trademark USPTO
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