BD Stumbles on the Fine Functionality Line between Patents and Trademarks

| May 2, 2012

In Re Becton, Dickinson and Company

April 12, 2012

Panel:  Bryson, Clevenger, and Linn. Opinion by Clevenger.  Dissent by Linn.


BD appealed a decision of the USPTO’s Trademark Trial and Appeal Board (TTAB) that a requested trademark registration for a design of a closure cap for blood collection tubes could not be trademarked because the design is functional.  The CAFC affirmed the TTAB ruling relying heavily on prior BD utility patents and advertisements as evidencing functionality.   Attempting to convert functional aspects into a trademark due to acquired secondary meaning will not hold. A company looking to protect a product across multiple forms of intellectual property needs to clearly identify, from the advent of seeking protection, which aspects are considered functional and which are for design purposes.  The designation of function and design should be maintained in all ways the product is protected and promoted.




The mark

BD sought trademark protection to a closure cap for blood collection tubes.  The mark consists of the configuration of a closure cap that has [1] an overall stream-lined exterior wherein the top of the cap is slimmer than at the bottom and the cap features [2] vertically elongated ribs set out in combination sets of numerous slim ribs bordered by fatter ribs around most of the cap circumference, where [3] a smooth area separates sets of ribs. [4] The slim ribs taper at their top to form triangular shapes which intersect and blend together at a point where [5] a smooth surface area rings the top of the cap above the ribs, thus [6] extending the cap’s vertical pro-file. At the bottom, [7] a flanged lip rings the cap and protrudes from the sides in two circumferential segments with the bottom-most segment having [8] a slightly curved contour.


The TTAB ruling

The trademark examiner and the TTAB both found that the design was functional.  During the trademark prosecution the examiner had requested information including any related patents.  In response to the request, BD produced six patents, four of which were utility and two design.  Additionally, BD produced advertising materials directed to the cap.

The TTAB applied the four factors from In re Morton-Norwich Prods., Inc., 671 F.2d 1331 (CCPA 1982) in finding that the cap design, considered in its entirety, was 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 of cheap method of manufacturing the product.

For the first factor, the TTAB found that the existence of a utility patent (e.g., the ’446 patent)–disclosing the utilitarian advantages of the design sought to be registered–weighed in favor of finding the cap design functional. The TTAB found that the ’446 patent explained the utilitarian advantages of at least two prominent features of the cap design, namely, the circular opening and the ribs.

For the second factor, the TTAB agreed with the examining attorney that several parts of BD’s advertising “extol the utilitarian advantages of several design features of the proposed mark,” including (1) the ridges on the side of the cap that allow for a more secure grip, (2) the flanged lip at the bottom that inhibits the handler’s ability to roll their thumb to pop off the cap, thereby reducing the risk of splattering, and (3) the hooded feature of the cap whereby the bottom of the cap extends over the top of the tube and thus prevents the user’s gloves from getting pinched between the stopper and tube when closing the tube.

For the third and fourth factors, the TTAB noted there was little evidence of record and found that the strong evidence from the first two factors of functionality was sufficient.

BD’s CAFC appeal arguments

BD presented two arguments.  First, BD argued that the TTAB committed reversible error by discounting the significance of the non-functional elements.  BD asserted that the elongated shape of the closure cap, the spacing of the ribs and their particular shapes, as well as the design relationship of those features to the whole of the closure cap are the design embraced by the mark. The mark is thus “extremely modest and limited.”

BD did not contest that the ribs themselves are functional, as is the opening in the top of the closure cap. These functional features are common to the closure caps made by BD’s competitors and are not part of the mark.

Second, BD argued that the TTAB’s analysis of the Morton-Norwich factors is unsupported by substantial evidence.

The CAFC’s decision

The court found that BD’s first argument fails to recognize that one object of the Morton-Norwich inquiry is to weigh the elements of a mark against one another to develop an understanding of whether the mark as a whole is essentially functional and thus non-registrable. Whenever a proposed mark includes both functional and non-functional features the critical question is the degree of utility present in the overall design of the mark.

The court explained in some detail how the distinction between de facto and de jure functionality gives shape to a court’s inquiry into a mark’s “degree of utility.”  De facto functionality simply means that a design has a function, like the closure cap.   However, the court noted that such functionality is irrelevant to the question of whether a mark as a whole is functional so as to be ineligible for trade-mark protection.  De jure functionality means that the product is in its particular shape because it works better in this shape. (citations omitted).

Thus the court concluded that the TTAB committed no legal error by weighing the functional and non-functional features of BD’s mark against each other.

BD’s second argument asserted that the Board’s ultimate factual determination that the mark as a whole is functional lacks substantial evidence support.  Specifically, BD challenged the TTAB’s analysis of the four Morton-Norwich factors.

The utility patent evidence

The court found that as to the first Morton-Norwich factor, the Board did not err in finding that this factor weighs in favor of finding functionality.   The court cited to TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 31 (2001), (“the disclosure of a feature in the claims of a utility patent constitutes strong evidence of functionality.” )   The court then noted the evidence in the form of  claim 4 of the ’446 patent showing the utilitarian nature of at least two prominent features of BD’s mark: (1) the two concentric circles at the top of the closure cap, which allow a needle to be inserted, and (2) the ribs, which serve as a gripping surface.

BD argued that those features from the ‘446 patent were not themselves claimed in that patent. However, the court countered that TrafFix does not require that a patent claim the exact configuration for which trademark protection is sought in order to undermine an applicant’s assertion that an applied-for mark is not de jure functional.   The court noted that TrafFix allows for statements in a patent’s specification illuminating the purpose served by a design to constitute equally strong evidence of functionality.

The design patent evidence

While interpreting the utility patent evidence broadly, the court does the opposite for the design patents submitted as evidence by BD.  BD argued that its design patents are persuasive evidence of the non-functionality of the closure caps’ overall design.   The court found that while evidence of a design patent may be some evidence of non-functionality under Morton-Norwich, “the fact that a device is or was the subject of a design patent does not, without more, bestow upon said device the aura of distinctiveness or recognition as a trademark.” R.M. Smith, 734 F.2d at 1485 (citation omitted).  The court further determined that the design patents do not reflect the specific design for which trademark protection is sought and absent identity between the design patent and the proposed mark, the presumption loses force.  Hence, the court concluded that the “similar” design patents lack sufficient evidentiary value to overcome the strong conclusion in the case that BD’s utility patents underscore the functionality.

The advertisement evidence

As to the second Morton-Norwich factor, the court found that BD’s advertising substantially touted the utilitarian advantages of the prominent features of the mark.

The court noted the top’s circular opening (which maximizes the possible useful area of the opening), the side’s ribs, and the bottom’s flanged lip. The advertisements emphasized that the “ridges on the outer surface permit for a more secure grip,” and praise the “enhanced handling features” that are “inherent in the design.” The advertisements explained that the top’s “plastic shield” is an “important design innovation that keeps the blood safely contained within the closure” and “encourages safer opening–discourages use of the thumb roll technique, which can result in spattering of the specimen,” and that the “hooded feature of closure reduces the possibility of catching glove between stopper and tube on reclosing.”  The court even noted that enlarged photographs of parts of the device actually highlight the functional aspects of the mark.

BD offered two explanations. First, BD argued that the designs shown in the advertisements are not exactly the same as the proposed mark’s design.  The court found that for purposes of an overall functionality assessment, this distinction is without a difference. Specifically, the court noted that while the spire-like tops of the ribs may not be shown in the advertisements, the arrangement of the ribs along the side of the top and the shape of the opening are sufficiently like the features of the claimed mark to show an identity of functionality between the articles shown in the advertising and the proposed mark’s prominent features.

Second, BD attempted to characterize the advertisements as “look for” advertising—the kind that pulls out of an overall article a few features to catch the viewer’s attention.   The court found that nothing in the text of the advertisements underscores this “look for” concept, but instead the advertisements taken as a whole are more than substantial evidence that the proposed mark as a whole is functional.

The CAFC’s conclusion

As to the third and fourth factor of Morton-Norwich, the court took a similar position to the Board that in essence the factors were not addressed with substantial evidence and neither would overcome the strong evidence of functionality based on BD’s utility patents and advertisements.

The court decided that based on strong evidence of functionality from the utility patents and advertisements, the TTAB did not err in finding that the applied for mark was functional and thus not registerable.

The Dissent

Judge Linn dissented.  While agreeing with the majority that individual features of BD’s closure cap design are functional, he maintained that the evidence falls short in supporting a conclusion that the mark, as a whole and as shown in the drawing, is in essence utilitarian, and thus de jure functional.

Judge Linn maintained that the majority erred in basing the determination weighing the elements of a mark against one another to develop an understanding of whether the mark as a whole is essentially functional and thus non-registrable.

Linn held that the presence of functional features may be relevant, but not in the sense of comparing dissociated functional features against non-functional features.

Citing In re Teledyne Indus., Inc., 696 F.2d 968, 971 (Fed. Cir. 1982) he asserts that weighing individual elements of a mark against each other is analytically contrary to the consideration of the mark as a whole.  (“As this court has previously held, ‘[s]imply dissecting appellant’s alleged trademark into its design features and attributing to each a proven or commonly known utility is not, without more, conclusive that the design, considered as a whole, is de jure functional and not registrable.’”).

Relying heavily on Morton-Norwich, he maintains that there is no evidence that the overall design of the BD closure cap is required to look the way it does or that the design is “the best or one of a few superior designs available.” Id. at 1341-42. His position is that the TTAB and the majority placed principal focus on the function served by certain features of the mark, such as the top’s opening (to allow for the insertion of a needle), the ribs on the side of the cap (to allow for in- creased grip), and the bottom’s flanged lip (to allow for a safer opening).   However, Linn asserts that these considerations relate to the de facto functionality of individual product features and not the de jure functionality of the overall design.  Linn concludes that in focusing on the functional attributes of individual components, the TTAB and the majority erroneously overlook the arbitrary nature of BD’s overall design.

Take Away

A line should be drawn between what aspects of a design are functional and which are only aesthetic .  This line should be maintained in all filings, advertisements and positions asserted  to protect the intellectual property rights related to the overall device.

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