By Cheryl Beise, J.D.
A product design mark depicting a three-dimensional "two-tiered canopy umbrella" was properly refused registration on the ground of functionality, and alternatively, for lack of acquired distinctiveness.
An applicant’s proposed product configuration mark for a two-tiered canopy umbrella—which was previously protected by now-expired design and utility patents—was properly refused registration on the ground that the mark as a whole was functional, the Trademark Trial and Appeal Board has decided in an opinion designated as precedential. The applicant admitted that the handle, shaft, runner, and ribs of the umbrella design were functional, but argued that the inner canopy consisting "mostly of mesh" was protectable. The evidence, however, showed that the inner canopy served the utilitarian purpose of adding strength and wind-resistance. The Board also affirmed the examining attorney’s alternative refusal to register on the ground that there was insufficient evidence to show that the product design mark had acquired distinctiveness (In re OEP Enterprises, Inc., August 19, 2019, Larkin, C.).
OEP Enterprises, Inc. sought registration on the Principal Register of a product configuration mark depicting an umbrella for "umbrellas; beach umbrellas; beach umbrellas; golf umbrellas; patio umbrellas," in International Class 18. The applicant described the mark as "a three-dimensional configuration of the goods, in the form of an umbrella with a two-tiered canopy, wherein the inner canopy consists mostly of mesh. The umbrella also has a handle, shaft, runner and ribs." Color was not claimed as a feature of the mark.
The Trademark Examining Attorney refused registration of Applicant’s mark on two grounds: (1) under Section 2(e)(5) of the Trademark Act on the ground that the mark was a functional design for the goods; and (2) under Sections 1, 2, and 45 of the Trademark Act, on the ground that the mark consisted of a non-distinctive product design that had not acquired distinctiveness under Section 2(f) of the Trademark Act. The applicant appealed.
Before the Board, the applicant contended that its claimed mark consisted of "a mesh lower canopy of a double canopy umbrella." However, the applicant’s drawing depicted an entire umbrella with a double canopy and did not include any broken or dotted lines to depict matter that was not claimed as part of the mark. Therefore, the Board assessed the functionality of the entire mark as it was shown and described in the application.
Functionality. Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5), prohibits registration of "a mark which ... comprises any matter that, as a whole, is functional." Generally, a product design or product feature is considered to be functional if it is "essential to the use or purpose of the article or if it affects the cost or quality of the article." See Inwood Labs, Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). To determine whether a product design is functional under the Inwood test, the Board examines four factors: (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 Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982).
Functionality of applicant’s mark. The applicant did not dispute that certain features of its mark were functional; namely, the handle, shaft, runner, and ribs. The applicant also admitted that the upper canopy of the double-canopy design in its mark served the functional purpose of "block[ing] the rain or sunlight from the user." The applicant, however, maintained that the mesh lower canopy portion of its mark was not functional.
The applicant owned an expired design patent and an expired utility patent covering the design claimed in its application. U.S. Patent No. D408,125 (the ’125 Design Patent), expired on April 20, 2013, claimed the "ornamental design for an umbrella, as shown and described." Figure 3 in the ’125 Design Patent corresponded to the drawing submitted with the trademark application. The Board agreed that the ’125 Design Patent was evidence of non-functionality.
However, the applicant’s utility patent, U.S. Patent No. 5,890,506 (the ’506 Patent), expired on February 24, 2017, was strong evidence that the claimed features were functional. The specification of the ’506 Patent made it clear that the use of mesh in the umbrellas and umbrella canopies claimed in the invention has significant benefits over the prior umbrella art. The mesh material "provides an escape route for air gusts impinging on the concave lower surface of the umbrella when it is in a deployed state" and "also provides strength to the entire first canopy portion." In addition, the mesh element also appeared in some the claims themselves, thus confirming that the mesh element has utilitarian benefits. "The strong and explicit evidence from the ’506 Utility Patent that the applied-for mark as a whole is functional rebuts any initial presumption of non-functionality resulting from the existence of the ’125 Design Patent," the Board said. The first Morton-Norwich factor favored a finding of functionality.
The applicant nevertheless argued that the mesh material was not functional, but an aesthetic design choice, pointing out that "are many other types of air transmissible lower canopies on the market." However, the Board pointed out that this arguments was belied by the applicant’s promotional materials, which refer to its "Patented Windbrella Vented Mesh System," its "Wind-Defying Umbrella" with an "innovative double-overlapping canopy design that allows wind to pass through while keeping rain out," and its "Patented double canopy mesh system," touting the product’s ability to "[r]esist[ ] inversion in high winds." The second Morton-Norwich factor also favored a finding of functionality.
The Board considered the third Morton-Norwich factor, the availability of alternative designs. The applicant maintained that the granting of a "trademark in the lower mesh canopy will still allow the competitors to freely replicate important features of a fully functioning double-canopy umbrella." However, now that the ’506 Patent is expired, competitors are free to replicate the applicant’s "superior two-canopy umbrella design." The Board found that this factor favored that the mark as a whole was functional.
The last Morton-Norwich provided additional support that the applied-for mark was functional. The specification of the ’506 Patent discussed in detail the manufacturing costs savings over the production of the prior umbrella art, including umbrellas with die cut holes, the applied-for mark has at least some cost-related benefits in addition to use-related ones.
"While the ’125 Design Patent is some evidence that the applied-for mark is non-functional," the Board found that it was "outweighed by the explicit disclosures of the utilitarian advantages of the applied-for mark in the ’506 Utility Patent." Concluding that the applied-for mark as a whole was functional, the Board affirmed the refusal to register under Section 2(e)(5) of the Trademark Act.
Acquired distinctiveness. The Board’s finding that the applied-for mark was functional was an absolute bar to its registration on either the Principal or Supplemental Register. However, in the interest of completeness, the Board also considered the alternative ground for refusal of registration: that the mark consists of a nondistinctive product design and that the applicant’s evidence of acquired distinctiveness was insufficient to make it eligible for registration.
The Board noted that the burden for proving acquired distinctiveness for a product configuration is heavier than for other marks. The applicant did into claim that its entire mark had acquired distinctiveness, but only that the non-functional mesh portion of the design had acquired distinctiveness.
The applicant’s direct evidence of acquired distinctiveness consisted of a declaration by Windbrella’s founder and president, Glenn Kupferman, and declarations of representatives of four sellers of Windbrella umbrellas and one of Windbrella’s competitors. These declarations were not persuasive for several reasons, including that they were not representative of the applicant’s customers, they were vague and substantially similar, and they were based on personal opinion.
The applicant’s circumstantial evidence consisted of long use of the applied-for mark since 1998, more than $40 million in sales of umbrellas comprising the design over 20 years, $1,000,000 in advertising and promotion of the umbrellas over 20 years, media coverage, purported "customer recognition," and copying and enforcement. The Board determined that the record, when considered in its entirety, established that the applicant had not met its burden of making a substantial showing that the applied-for product configuration mark had acquired distinctiveness. The refusal to register on the ground of lack of acquired distinctiveness was also affirmed.
The case is Serial No. 87345596.
Attorneys: Michael J. Marcin (Fay Kaplun & Marcin, LLP) for OEP Enterprises, Inc.
Companies: OEP Enterprises, Inc.
MainStory: TopStory Trademark USPTO
Interested in submitting an article?
Submit your information to us today!Learn More
IP Law Daily: Breaking legal news at your fingertips
Sign up today for your free trial to this daily reporting service created by attorneys, for attorneys. Stay up to date on intellectual property legal matters with same-day coverage of breaking news, court decisions, legislation, and regulatory activity with easy access through email or mobile app.