Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

 

 

 

EXAMINING ATTORNEY’S APPEAL BRIEF

 

 

The applicant, Herman Miller, Inc. (hereinafter “Applicant”) has appealed the Trademark Examining Attorney’s[1] refusal to register a three-dimensional product configuration of a chair on the basis that the mark is functional pursuant to Section 2(e)(5) of the Trademark Act, 15 U.S.C. §1052(e)(5). 

FACTS

On July 5, 2018, applicant applied to register a three-dimensional configuration of a chair for the goods “furniture, namely, chairs” in Class 20.

On September 4, 2018, the examining attorney issued a refusal pursuant to Section 2(e)(5), 5 U.S.C. §1052(e)(5), due to the functionality of the product design in the mark.  The examining attorney also refused registration pursuant to Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; of the Trademark Act due to the mark being a non-distinctive product design.  The examining attorney further required information about the functionality of the mark and required applicant submit either a single rendition of the mark or file a petition requesting that this requirement be waived.

On September 27, 2018, applicant filed a Petition to the Director requesting that the requirement for a single rendition in Mark Drawing be waived.  This petition was granted on November 7, 2019.

On March 25, 2019, applicant filed a Response in which applicant: (1) provided arguments and evidence against the Section 2(e)(5) Refusal,  (2) submitted a Section 2(f) Claim of Acquired Distinctiveness in response to the Sections 1, 2, and 45 Refusal, and (3) submitted evidence in response to the Request for Information Requirement.

On April 17, 2019, the examining attorney issued an Office Action in which the examining attorney: (1) maintained and continued the Section 2(e)(5) Refusal, (2) accepted the Section 2(f) Claim and consequently withdrew the Sections 1, 2, and 45 Refusal, (3) required additional information about the goods, and (4) noted that applicant’s petition to allow for multiple renditions of the mark had been granted and so this requirement was satisfied.

On October 17, 2019, applicant submitted a Response in which applicant: (1) submitted arguments and evidence against the Section 2(e)(5) Refusal, (2) amended the Mark Drawing and Mark Description to exclude the spine of the chair from the mark, and (3) responded to the Request for Information Requirement.

On November 20, 2019, the examining attorney made final the Section 2(e)(5) Refusal.  The examining attorney accepted the amended Mark Drawing and Mark Description and noted that the Request for Information Requirement was satisfied.

On May 20, 2020, applicant submitted a Request for Reconsideration in which applicant made additional arguments against the Section 2(e)(5) Refusal.  On June 10, 2020, the examining attorney issued a subsequent final refusal which maintained the final Section 2(e)(5) Refusal and provided additional evidence in response to applicant’s arguments.

On September 12, 2020, applicant submitted its Appeal Brief, however, on October 15, 2020, applicant submitted a Request for Remand in which applicant amended its Mark Description.  This was granted and forwarded to the examining attorney on October 26, 2020.  On November 12, 2020, the examining attorney responded to the Remand, accepting the amended Mark Description but noting that it did not overcome the Section 2(e)(5) Refusal.  On November 30, 2020 the appeal was resumed and the application forwarded to the examining attorney for statement.

ISSUE

The sole issue on appeal is whether the applied-for mark, a three-dimensional product configuration for the identified goods, is functional pursuant to Section 2(e)(5) of the Trademark Act.

ARGUMENT

1.     APPLICANT’S MARK, A THREE-DIMENSIONAL DESIGN OF THE GOODS, IS FUNCTIONAL

 

Registration is refused because the applied-for mark, which consists of a three-dimensional configuration of the goods, appears to be a functional design for such goods.  Trademark Act Section 2(e)(5), 15 U.S.C. §1052(e)(5); see TMEP §1202.02(a)-(a)(ii).  A feature is functional if it is “‘essential to the use or purpose of the [product]’” or “‘it affects the cost or quality of the [product].’”  TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001) (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995)); Inwood Labs., Inc., v. Ives Labs., Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1982); TMEP §1202.02(a)(iii)(A).

Here, applicant’s mark is a three-dimensional configuration of a chair for the goods “Furniture, namely, chairs” in Class 20.  As amended in the Request for Remand, applicant describes the mark as follows: “The mark consists of a three-dimensional configuration of a chair comprised of a curved trapezoidal seat and back, each with rounded corners but different curvatures and proportions, two arched legs, each of continuous material and offset heights which narrow toward the ground. The broken lines depicting the spine of the chair indicate placement of the mark on the goods and are not part of the mark.”  Thus, applicant is claiming the back, seat, and legs of the chair as depicted in the mark drawing.

A determination of functionality is a question of fact.  In re Becton, Dickinson & Co., 675 F.3d 1368, 1372, 102 USPQ2d 1372, 1375 (Fed. Cir. 2012); In re Bose Corp., 476 F.3d 1331, 1334, 81 USPQ2d 1748, 1751 (Fed. Cir. 2007); TMEP §1202.02(a)(iv).  Such a determination depends on the totality of the evidence presented in each particular case.  Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1273, 61 USPQ2d 1422, 1424 (Fed. Cir. 2002).

Here, applicant’s chair is of a highly utilitarian design encompassing simple features that are commonly used in chairs, particularly molded plywood chairs.  Thus, for the reasons set forth below, this mark is functional.

Determining 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 disclosing the utilitarian advantages of the design sought to be registered.

(2)       Advertising materials of the applicant that tout the design’s utilitarian advantages.

(3)       The availability to competitors of alternative designs.

(4)       Facts indicating that the design results in a comparatively simple or inexpensive method of manufacture.

In re Becton, Dickinson & Co., 675 F.3d 1368, 1374-75, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-41, 213 USPQ 9, 15-16 (C.C.P.A. 1982); TMEP §1202.02(a)(v).  It is not required that all four factors be proven in every case, nor do all four factors have to weigh in favor of functionality to support a functionality refusal.  Poly-America, LP v. Ill. Tool Works, Inc., 124 USPQ2d 1508, 1514 (TTAB 2017) (citing In re Change Wind Corp., 123 USPQ2d 1453, 1456 (TTAB 2017); In re Heatcon, Inc., 116 USPQ2d 1366, 1370 (TTAB 2015)); TMEP §1202.02(a)(v).

1. Applicant’s Utility Patent Describes the Features of the Chair and the Claimed Elements are Integral to the Overall Design

 

First, applicant’s mark was subject to a patent for furniture construction.  Applicant is the owner of utility patent U.S. Patent No. 2554490.[2] This patent states the invention “remains restful and comfortable over long periods of use yet may be inexpensively manufactured using mass production methods”. This patent discusses the spine of the chair, which has been dotted out in this application but also claims “[a] furniture construction of the character described having a body-contour-conforming, independently mounted back and seat” and discusses that the shape of the legs, stating “the forward portion of the spine being supported by a front leg frame and the lowermost rear portion of the adjacent where it turns vertically upwardly to carry the back being supported by a rear leg frame”. See U.S. Patent No. 2554490, Claim 3.  Thus, this patent discusses the back, seat and legs as being part of the comfortable design of the chair and being shaped to support the spine of the chair.

A utility patent claiming the design features at issue is strong evidence that those features are functional.  TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29-30, 58 USPQ2d 1001, 1005 (2001); In re Becton, Dickinson & Co., 675 F.3d 1368, 1375, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012); see TMEP §1202.02(a)(iv), (a)(v)(A).  However, a patent need not claim the exact configuration for which trademark protection is sought to prove functionality.  See In re Becton, Dickinson & Co., 675 F.3d at 1375, 102 USPQ2d at 1377 (citing TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. at 32-33, 34-35, 58 USPQ2d at 1005).  “[S]tatements in a patent’s specification illuminating the purpose served by a design may constitute equally strong evidence of functionality.”  In re Loggerhead Tools, LLC, 119 USPQ2d 1429, 1432 (TTAB 2016) (quoting In re Becton, Dickinson & Co., 675 F.3d at 1375, 102 USPQ2d at 1377).

Further, while applicant has removed the spine from its claimed elements in this trademark application, this patent and the statements therein indicate that the back, seat, and legs are integral in relation to this spine element, and that these elements are designed to be body contouring and comfortable while maintaining an inexpensive method of manufacture.

Utility patents that claim more features than the applied-for configuration mark are relevant to a functionality determination if the patent shows that the features claimed as a trademark are an essential or integral part of the invention and have utilitarian advantages.  TMEP §1202.02(a)(v)(A); see In re Cabot Corp., 15 USPQ2d 1224, 1227-28 (TTAB 1990); cf. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 31, 58 USPQ2d 1001, 1006 (2001).

Therefore, although applicant has excluded the spine element from this trademark, the ‘490 patent shows that the back, legs, and seat of the chair are also essential and integral parts of the invention, and thus demonstrates that the design as a whole is functional.

Applicant’s Arguments Regarding the ‘490 Patent

Applicant argues that no utility patent covers the overall design.  However, U.S. Patent No. 2554490 does depict the overall shape of the chair and discusses the body contouring seat, panels, and the legs as supporting parts for the chair. This patent discusses how the shape of the legs is intended to accommodate the spine construction of the chair and how the back and seat fit into the spine design of the chair.  As stated above, a utility patent need not include all claimed features and patent need not claim the exact configuration for which trademark protection is sought to prove functionality.  See In re Becton, Dickinson & Co., 675 F.3d at 1375, 102 USPQ2d at 1377 (citing TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. at 32-33, 34-35, 58 USPQ2d at 1005). 

Specifically, the patent specification in U.S. Patent No. 2554490 discusses this configuration in Claim 3, discussing the “body-contour-conforming, independently mounted back and seat” and discusses how the spine is supported by the legs and attaches to the seat and back of the chair. Claim 3 particularly discusses the placement of the seat, back, and legs of the chair design and indicates that these are integral components of the claimed feature.  Therefore, although applicant has not claimed the spine element as a feature of the mark, the depiction of the claimed seat, back, and legs in this patent and the discussion of these elements in Claim 3 show that these shapes are functional.  Therefore, applicant’s arguments regarding the patent are not persuasive.

2. Applicant’s Advertising Materials and the Advertising of Third Parties tout the Utilitarian Advantages of the Design

 

Second, applicant’s advertising materials tout the utilitarian advantages of the goods. Applicant’s own advertising that extols specific utilitarian advantages of the applied-for product design or product packaging is also strong evidence that the matter sought to be registered is functional.  TMEP §1202.02(a)(v)(B); see, e.g., In re Becton, Dickinson & Co., 675 F.3d 1368, 1375-76, 102 USPQ2d 1372, 1377-78 (Fed. Cir. 2012); In re Heatcon, Inc., 116 USPQ2d 1366, 1373 (TTAB 2015).  Thus, applicant’s advertising that emphasizes the advantages of the shape of the goods indicates the goods are functional.

Specifically, applicant’s advertising for the goods discusses the “Molded seat and backrest for comfort” and “Extremely comfortable and built for longevity”.[3] Applicant’s website discusses that the chair is “Sculpted to the human body” and “Sculpting a seat and back to fit the contours of the human body, the designed a truly comfortable chair that’s suitable for businesses and homes”.[4] Therefore, applicant’s advertising touts the comfort and body contouring shape of the goods.

The chair is also emphasized for its comfort and postural support by others. See evidence from Smartfurniture.com (“The curve of the seat matches the curve of a human at rest, and you’ll fit right into it when you sit down.  The same goes for the back of the chair, which is both low and expansive; that keeps your lower back supported (your lumbar region) while at the same time keeping your neck and shoulders free to move.  That helps your circulation.”)[5]  Thus, this evidence demonstrates that this specific chair design is touted featuring many utilitarian advantages for comfort and back support based on its specific configuration.

Further, historical discussion of the chair emphasizes the functionality of the chair and specifically details that it was designed to address the problem of cracking in molded plywood chairs.[6] Specifically, the inventors originally set out to mold the chair out of a single piece of plywood, but “[w]hen they found that plywood did not withstand the stresses that occurred where the chair seat and back met, they abandoned their original single-shell idea in favor of a chair that had separate molded-plywood panels for the back and seat”.[7]  Therefore, this design was motivated by manufacturing concerns at the time.  The chair is also discussed by others as having “utilitarian origins”[8] and being a “utilitarian object”.[9]  This chair design is also discussed as reflecting the designers’ “firm belief in functionalism.  Not of jot of extraneous matter exists in this spare piece…”[10]  The designers are also described as being “masters of functional design”.[11]  Therefore, this chair is discussed as being reflecting of functional considerations in design.

Therefore, both applicant’s advertising and articles discussing the history of applicant’s chair emphasize the functional advantages of the back, seat, and overall shape of the chair, which mold to the body and provide additional comfort and postural support.  Thus, this indicates that the overall design is functional.

Applicant’s Arguments Regarding the Advertising for the Goods

Applicant argues that its advertising does not tout the functional features of the chair, stating that advertising touting the chair as comfortable does not tout the utilitarian features of the goods.

However, as set forth above, applicant’s advertising does not simply tout the chair as a whole as comfortable but specifically touts the shape of the back and seat as being contoured specifically to the body so as to be comfortable and to provide postural support.[12]  Applicant notes that its advertising also touts the aesthetic elements of the design. However as discussed above, the chair is specifically historically discussed as being utilitarian and representative of a design movement that emphasized utilitarian designs.[13]  Thus, this argument regarding the advertising is not persuasive.

3. Applicant’s claimed elements include common, basic shapes, particularly for molded plywood chairs and so alternative designs are not readily available to competitors.

 

Third, applicant’s design is composed of three basic parts of a chair. The three elements of the claimed mark, the seat, back, and chairs are all fundamental and simple elements of chair design. See evidence from Visualdictionaryonline.com[14] (listing the basic parts of a chair), Props.eric-hard.com (listing the parts and purpose thereof of a chair)[15]; Englishstudyonline.org (listing the parts of a chair)[16]; and Wikipedia.org (discussing the basic parts of a chair)[17].  The placement and shape of these elements determines the comfort and ergonomics of the chair. See evidence from Woodmagazine.com (discussing the measurements for comfortable sitting)[18]; Ergo.human.cornell.edu (discussing how chair design and sitting affect comfort)[19]; Woodworkersjournal.com (discussing how to design chair leg layout for comfort)[20]

The elements claimed by applicant are particularly common in molded plywood chairs.  See evidence from Roveconcepts.com (showing similar tapered legs and a similar-shaped seat in a molded plywood chair)[21], Amazon.com (showing a similar-shaped chair in back, seat, and legs)[22]; Thekhanza.net (showing a similar shaped seat, back, and legs)[23]; Houzz.com (showing a similar-shaped seat, back, and legs)[24]; Eurway.com (showing a similar shaped seat and back, and tapered legs)[25]; Walmart.com (showing a similar shaped seat, back and legs)[26]; Amazon.com (showing a similar shaped legs, back, and seat)[27]; Dwell.com (showing similar molded seat and tapered legs)[28]; Elijahhome.com (showing several chairs with a similar shaped back and seat)[29]; Midmodscout.com (showing a similar seat, back, and legs and stating that they are “designed to comfortably fit to the body”)[30]; Hillarysfurniture.com (showing a similar seat, back, and legs)[31]; Oldbones.com (showing a chair with a similar seat and back and similar tapered plywood legs)[32]; and Inmod.com (showing a plywood chair with a similar shaped back, seat, and legs)[33].  Thus, these shapes are common, particularly for molded plywood chairs and are discussed in some instances as being intended for comfort.

These design elements are also common in non-plywood chairs.  See evidence from Ontimesupplies.com (showing a similar shaped seat and back in a classroom chair)[34]; Furnituretycoon.com (showing a similar shaped back and seat with a tapered lip)[35]; Schoolsin.com (showing a separated back and seat with a similar shape)[36]; Amazon.com (showing a similar back and lipped seat on a computer chair and describing the chair as “ergonomic” and comfortable)[37]; Lovegrowswild.com (showing a similar shaped back and seat element on a computer chair)[38]; Advantagechuchchairs.com (showing a chair with a similar-shaped seat)[39]; and Overstock.com (showing a chair with a similar-shaped seat)[40].  Thus, these shapes are common for chairs and are described as being parts of comfortable chairs.

Thus, as these are common, basic shapes for chairs, particularly molded plywood chairs, giving applicant exclusive rights over these shapes would prevent competitors from using these utilitarian features for chairs.

Therefore, because these shapes are functional and therefore commonly used in chair design, allowing exclusive rights to these elements would limit the availability of alternative designs and directly undermine competition in the marketplace.

Applicant’s Arguments Regarding the Availability of Alternate Designs

Applicant argues that alternate designs are available. However, as shown by the evidence set forth above, the features of applicant’s chair include simple functional shapes that are particularly common in basic chair designs, especially for molded plywood chairs.  While alternate designs may be available for chairs generally, allowing one user to have exclusive rights over simple common shapes would limit the availability of alternate designs.

Applicant argues that the chairs showing similar designs are either knockoffs or are dissimilar.  However, the evidence shows that each of the individual elements of the chair, particularly the seat and back shape and the tapered shape of the legs, are individually common.  Thus this evidence demonstrates that each of the major claimed features, the seat, back, and leg, are common shapes.   An applied-for mark possessed of significant functional features should not qualify for registration where insignificant elements of the design are non-functional.  In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1376.

In the alternative, even if there are alternative designs, when functionality is found based on other considerations, there is “no need to consider the [third Morton-Norwich factor regarding] availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available.”  In re Becton, Dickinson & Co., 675 F.3d 1368, 1376, 102 USPQ2d 1372, 1378 (Fed. Cir. 2012) (quoting Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002)); TMEP §1202.02(a)(v)(C).  “The availability of alternative designs does not convert a functional design into a non-functional design.”  Kohler Co. v. Honda Giken Kogyo KK, 125 USPQ2d 1468, 1502 (TTAB 2017) (quoting Kistner Concrete Prods. Inc. v. Contech Arch Techs. Inc., 97 USPQ2d 1912 (TTAB 2011)).

Therefore, this argument regarding alternative designs is unpersuasive.

4. Articles regarding the history of the chair indicates the design was motivated by simple and less-expensive manufacturing methods.

 

Finally, articles regarding the history of this chair suggest the overall shape and elements were designed to be cheaper and easier to manufacture and mass produce.  See evidence from Hermanmiller.com (stating the inventors applied technology they had created “to making affordable, high-quality chairs that could be mass-produced using dimensionally shaped surfaces instead of cushioned upholstery” and discussing that the separated design was the result of cracking from using a single piece of plywood).[41]  Third party articles about applicant also discuss that the motivations behind the design involved the ability to mass-produce the chair. See attached evidence from Wikipedia.org (article describing the history of the chair and explaining that the chair design was simple for the time)[42]; see also evidence from Smartfurniture.com (discussing how the chair reflects the technology limitations of the time in which it was produced and that producing a solid plywood chair (“the cost of making such a piece would have been exorbitant and would have pushed the price of the chair way past acceptable marks”)[43].  Therefore, this evidence demonstrates that, particularly at the time applicant’s chair was created, the design was motivated by a cheaper method of manufacture. 

The examining attorney acknowledges that the technology has changed since the initial design of these goods and that the goods are now sold as expensive luxury items. However, the initial motivations for the design were to be able to mass produce the product and the current demand based on the historical fame of the chair does not indicate that the goods are currently made with more expensive manufacturing methods.  Therefore, the design of the mark appears to have been motivated by this functionality concern.

Applicant’s Arguments Regarding the Method of Manufacturing

Applicant argues that the applied-for design does not result in cheaper manufacturing.  However, as discussed above, historical discussion of the development of the chair design does indicate that the original design was motivated by manufacturing concerns, particularly to address issues with cracking in other plywood chairs.[44] Thus, the evidence indicates that this design was motivated by manufacturing concerns and was designed specifically for methods of mass production at the time.

Applicant argues that the goods are now an expensively manufactured item sold for a higher price.  However, this reflects the advance of technology and fame of the goods since its development in 1946, and does not indicate that the initial design was motivated by manufacturing concerns.  Thus, this evidence supports the acquired distinctiveness of the goods, but does not indicate that the design is not functional.

Further, an applicant’s assertion that its design is more expensive or more difficult to make does not establish that the configuration is not functional.  AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1836 (TTAB 2013) (citing In re Dietrich, 91 USPQ2d 1622, 1637 (TTAB 2009) (“[E]ven at a higher manufacturing cost, applicant would have a competitive advantage for what is essentially . . . a superior quality wheel.”)); In re Pingel Enter. Inc., 46 USPQ2d 1811, 1821 (TTAB 1998) (“That applicant, despite the inherent advantages of a design which is simple and less expensive to manufacture than other petcocks, has, however, deliberately chosen a more complex and expensive manner in which to manufacture its product does not mean that the configuration thereof is not de jure functional.”); TMEP §1202.02(a)(v)(D).  Therefore, if applicant has now deliberately chosen a more expensive manner to manufacture the chair, this does not mean that the configuration is not functional for purposes of the Trademark Act.  Therefore, this argument regarding manufacturing costs is not persuasive.

Therefore, based on applicant’s patent, the statements regarding the utilitarian advantages of the chair provided by applicant and third parties, the fact that the shapes claimed in the patent are common in basic chair design, particularly for molded plywood chairs, and the historical evidence that the design of the chair was motivated in part by manufacturing costs and concerns, this design is functional.  Therefore, the refusal to register applicant’s mark under Trademark Act Section 2(e)(5) should be affirmed.

2.     APPLICANT’S ADDITIONAL ARGUMENTS REGARDING THE FUNCTIONALITY OF THE MARK ARE NOT PERSUASIVE AND DO NOT REBUT THE EXAMINING ATTORNEY’S PRIMA FACIE CASE OF FUNCTIONALITY

 

In the appeal, applicant provided several arguments against the Section 2(e)(5) Functionality Refusal. However, for the reasons set forth below, these arguments are unpersuasive.

A.    Applicant’s Arguments Regarding the Functionality of the Design as a Whole

First, applicant argues that the chair consists of very specific elements and argues that the overall combination of features is non-functional.  This is not persuasive.  As shown by the evidence above, each of the individual features claimed by applicant, the seat, back, and legs, has a functional purpose of creating a comfortable chair that is designed to be body contouring and combine with the flexible spine claimed in applicant’s patent.  As shown by applicant’s advertising, the back and seat of the chair are designed to be body contouring and attach to the flexible spine.  The legs here are an integral and essential part of the claimed spine element, supporting the shape of the goods.  Therefore, this argument is unpersuasive.

In Specialized Seating Inc. v. Greenwich Industries LP, a chair design was found to be functional, considering an overall chair design stating “[a] novel or distinctive selection of attributes on these many dimensions can be protected for a time by a utility patent or a design patent, but it cannot be protected forever as one producer's trade dress.” 96 USPQ2d 1580, 1584 (7th Cir. 2010).  Further, while a marks overall appearance may be distinctive, what can make a design distinctive overall “was a nonfunctional aspect of the design”. Id.  Here the back, seat, and legs of the chair are all functional aspects of the design.

Applicant argues that the chair includes non-functional aspects including the “trapezoidal back” and “U” shaped configuration of the legs. A few arbitrary or otherwise nonfunctional features included within a product or packaging configuration mark do not affect a functionality determination where the evidence shows the overall design to be functional.  See Textron, Inc. v. U.S. Int’l Trade Comm’n, 753 F.2d 1019, 1024-27, 224 USPQ 625, 628-30 (Fed. Cir. 1985); In re Vico Prods. Mfg. Co., 229 USPQ 364, 368 (TTAB 1985); TMEP §1202.02(a)(v).  Specifically, an applied-for mark possessed of significant functional features should not qualify for registration where insignificant elements of the design are non-functional.  In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1376.  Thus, the inclusion of these elements do not overcome the significant functional features of the chair design.

Applicant argues in a recent case, Blumenthal Distrib., Inc. v. Jak Sp Herman Miller, Inc., another of applicant’s designs was found to be non-functional. 963 F.3d 859 (9^th Cir. 2020). However, this case involved infringement and not a trademark registration, in which functional elements of a design must be removed from a mark and clearly not claimed.  See TMEP §1202.02(a)(iii)(A); see 15 U.S.C. §§1052(e)(5), (f), 1091(c), 1064(3), 1115(b)(8).  As noted in the Blumenthal case, “if a particular combination of functional features is itself functional, referring to that layout of features as the ‘overall appearance’ of a product does not render it nonfunctional.” See Blumenthal Distrib., Inc. v. Jak Sp Herman Miller, Inc., 963 F.3d at 866 (“Thus, if everything that affects a product's appearance is functional, then its overall appearance is also functional.”).  Here, the three elements claimed by applicant, the back, seat, and legs of the chair, are functional elements that are specifically contoured to provide comfort and support the flexible design of the chair.  Here, applicant’s claimed trade dress does not merely include functional elements, but is primarily composed of these functional elements. Therefore, this argument is unpersuasive.

Applicant further argues that the overall appearance is non-functional.  However, the overall combination of features here comprises common, simple, elements that are particularly common in molded plywood chairs.  In contrast to In re Honeywell, Inc., where competitors were shown not to be using applicant’s product shape, the evidence referenced above demonstrates that similar back, shape, and legs are common for chairs, particularly molded plywood chairs. See 8 USPQ2d, 1600, 1604 (TTAB 1988) (discussing that the examining attorney was unable to provide evidence of competitors using the claimed round thermostat cover).  Thus, granting trade dress protection for these basic, common shapes would limit the options of competitors.

Further, in contrast to In re Hershey Chocolate & Confectionary Corp., applicant has touted the utilitarian advantages of its design and articles on the history of this chair design explain how this design was created to address functional concerns. 2012 TTABLEXIS 255 (TTAB June 28, 2012) [not precedential].  Thus, the current facts are distinguishable from that case.  Similarly, in Deckers Outdoor Corp. v. Pac. Harbors, LLC, the court specifically listed five major non-functional elements of the goods, which impacted their decision to find that the boot design was not functional overall.  No. 3:19-cv-01587, 2020 U.S. Dist. LEXIS 162262, at *5 (D. Ore. Aug. 10, 2020).  Here, applicant’s goods are not being refused as functional because they are a chair, but because the claimed elements of the chair are simple and utilitarian and all perform a function.  Therefore, this argument is unpersuasive.

Similarly, in contrast to In re Kun Yuan Lin, there is evidence of discussion of the body-contouring features in applicant’s patent and advertising, which touts the shape and functionality of the goods. See Serial No. 85065887, 2012 TTAB LEXIS 476671 f2, at *6-7 (T.T.A.B. Dec. 14, 2012) [not precedential] (noting the lack of evidence of functionality of the claimed ridges of the applied-for hoop).  Therefore, this argument is not persuasive.

Thus, contrary to applicant’s assertion, the claimed design here is not refused because it performs some function at all but because the goods are composed of simple, utilitarian, and functional elements, and the combination of these functional elements does not result in a non-functional design.  As set forth in the evidence above, the design at issue here was designed to be body contouring and attach to a simple spine to allow for simple manufacture. As shown by the evidence of third party use, these simple shapes are commonly used, particularly for molded plywood chairs. Thus, this is a simple, superior design that is essential for competition. Thus, this argument is unpersuasive.

B.    Applicant’s Arguments Regarding the Competitive Need for the Design Elements

Applicant further argues that there is no evidence that protection for applicant’s design will disadvantage competitors.  However, as shown by the evidence above, all of the elements claimed by applicant, the shaped back, seat, and legs, commonly appear in competitor’s chairs, particularly in molded plywood chairs.  Thus, allowing applicant exclusive rights to these common, simple shapes would result in a disadvantage to competitors.  Further, as noted above, “[t]he availability of alternative designs does not convert a functional design into a non-functional design.”  Kohler Co. v. Honda Giken Kogyo KK, 125 USPQ2d 1468, 1502 (TTAB 2017) (quoting Kistner Concrete Prods. Inc. v. Contech Arch Techs. Inc., 97 USPQ2d 1912 (TTAB 2011)).  Therefore, this argument is unpersuasive.

Applicant also emphasizes the fame of the design.  The examining attorney does not dispute the fame of applicant’s chair and has accepted applicant’s Section 2(f) Claim of Acquired Distinctiveness to overcome the Sections 1, 2, and 45 Non-Distinctive Product Design Refusal.  However, distinctiveness and functionality are two separate issues in an application for a three-dimensional configuration mark consisting of a product design, product packaging or other types of trade dress.  See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001); In re Ennco Display Sys., Inc., 56 USPQ2d 1279 (TTAB 2000); TMEP §1202.02.

Functional matter may not be registered on either the Principal or Supplemental Registers, regardless of evidence of acquired distinctiveness.  Trademark Act Sections 2(e)(5) and 23, 15 U.S.C. §§1052(e)(5), 1091; see TrafFix Devices, Inc., 532 U.S. at 29, 58 USPQ2d at 1006; In re Controls Corp. of Am., 46 USPQ2d 1308, 1311 (TTAB 1998); TMEP §1202.02(a)(iii)(A).

Therefore, for the reasons set forth above, applicant’s mark is functional and applicant’s evidence of fame of the mark does not overcome this refusal.

CONCLUSION

For the foregoing reasons, it is respectfully submitted that the refusal to register applicant’s mark under Trademark Act Section 2(e)(5), 15 U.S.C. §1052(e)(5), should be affirmed

 

 

                                                                      Respectfully submitted,

 

 

/Alison Keeley/

Examining Attorney

Law Office 113

(571) 272-4514

Alison.Keeley@uspto.gov 

             

 

 

Myriah Habeeb

Managing Attorney

Law Office 113

571-272-8909

Myriah.Habeeb@uspto.gov