Box designs for dispensing wires and cables affirmed as functional, not registrable as trade dresses
| December 23, 2020
In re: Reelex Packaging Solution, Inc. (nonprecedential)
November 5, 2020
Moore, O’Malley, Taranto (Opinion by O’Malley)
Summary
In a nonprecedential opinion, the U.S. Court of Appeals for the Federal Circuit (the “CAFC”), affirmed the decision of the Trademark Trial and Appeal Board (the “TTAB”), upholding the examining attorney’s refusal to register two box designs for electric cables and wire as trade dresses on grounds that the designs are functional.
Details
Reelex filed two trade dress applications for coils of cables and wire in International Class 9.
The trade dress of Application Serial No. 87285383 (the ‘383 trade dress) is described as follows:
The mark consists of trade dress for a coil of cable or wire, the trade dress comprising a box having six sides, four sides being rectangular and two sides being substantially square, the substantially square sides both having a length of between 12 and 14 inches, the rectangular sides each having a length of between 12 and 14 inches and a width of between 7.5 and 9 inches and a ratio of width to length of between 60% and 70%, one, and only one rectangular side having a circular hole of between 0.75 and 1.00 inches in the exact middle of the side with a tube extending through the hole and through which the coil is dispensed from the package, the tube having an outer end extending beyond an outer surface of the rectangular side, and a collar extending around the outer end of the tube on the outer surface of the rectangular side of the package, and one square side having a line folding assembly bisecting the square side.
The trade dress of Application Serial No. 87285412 (the ‘412 trade dress) is described as follows:
The mark consists of trade dress for a coil of cable or wire, the trade dress comprising a box having six sides, four sides being rectangular and two sides being substantially square, the substantially square sides both having a length of between 13 and 21 inches, the rectangular sides each having a length of the same length of the square sides and a width of between 57% and 72% of the size of the length, one, and only one rectangular side having a circular hole of 4.00 inches in the exact middle of the side with a tube extending in the hole and through which the coil is dispensed from the package, one square side having a tongue and a groove at an edge adjacent the rectangular side having the circular opening, and the rectangular side having the circular opening having a tongue and a groove with the tongue of each respective side extending into the groove of each respective side at a corner therebetween.
The examining attorney refused the applications, finding the design of the boxes as being functional and non-distinctive. Further, the examining attorney found that the designs do not function as trademarks to indicate the source of the goods. On an appeal to the TTAB, the Board affirmed the examining attorney to register on the grounds of functionality and distinctiveness. Regarding functionality, the Board found that the features of these boxes – the rectangular shape, built-in handle for the ‘412 design, and dimensions of the boxes and the size and placement of the payout tubes and payout holes, are “clearly dictated by utilitarian concerns.” The Board also found that the payout holes and their position on the boxes allowed users easy access and twist-free dispensing.
While the Board found above to be sufficient evidence to uphold the functionality refusal, the Board went further to considered the following four factors from In re Morton-Norwich Products, Inc., 671 F.2d 1332 (CCPA 1982):
(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.
- Existence of a utility patent
With regard to the first factor, Reelex submitted five utility patents relating to the applied-for marks:
- U.S. Patent No. 5,810,272 for a Snap-On Tube and Locking Collar for Guiding Filamentary Material Through a Wall Panel of a Container Containing Wound Filamentary Material;
- U.S. Patent No. 6,086,012 for Combined Fiber Containers and Payout Tube and Plastic Payout Tubes;
- U.S. Patent No. 6,341,741 for Molded Fiber and Plastic Tubes;
- U.S. Patent No. 4,160,533 for a Container with Octagonal Insert and Corner Payout; and
- U.S. Patent No. 7,156,334 for a Pay-Out Tube.
The Board found that the patents revealed several benefits of various features of the two boxes, weighing in favor of finding the designs of the two boxes to be functional.
- Advertising by the applicant
The second factor also weighed in favor of finding functionality. Reelex’s advertising materials repeatedly touted the utilitarian advantages of the boxes, which allow for dispensing of cable or wire without kinking or tangling. The boxes’ recyclability, shipping, and storage advantages were also being touted. The evidence weighed in favor of finding functionality.
- Alternative designs
The Board explained that in cases where patents and advertising demonstrate functionality of designs, there is no need to consider the availability of alternative designs. Nevertheless, the Board considered evidence submitted by Reelex, and found the evidence to be speculative and contradictory to its own advertising and patents. Therefore, the Board found the evidence to be unpersuasive.
- Comparatively simple or inexpensive method of manufacture
Regarding this last factor, the Board found no evidence of record regarding the cost or complexity of manufacturing the trade dress.
Considering and analyzing the case using the Morton-Norwich factors, the Board found the design of Reelex’s trade dress to be “essential to the use or purpose of the device” as used for “electric cable and wires.”
On appeal, Reelex argued that evidence shows that the trade dresses at issue “provide no real utilitarian advantage to the user.” In addition, Reelex argued that the Board erred in failing to consider evidence of alternative designs.
The CAFC found there to be substantial evidence to support the Board’s finding of multiple useful features in the design of the boxes, and these features were properly analyzed by the Board as a whole and in combination, and the Board did not improperly dissect the designs of the two trade dresses into discrete design features. The CAFC also found there to be sufficient evidence supporting the Board’s finding of functionality using the Morton-Norwich factors.
As to whether the Board considered Reelex’s evidence of alternative designs, the Board expressly considered Reelex’s evidence of alternative designs, and found the evidence to be both speculative and contradictory. For example, although the declaration submitted by Reelex stated that the shape of the package, as well as the shape, size, and location of the payout hole, were merely ornamental, Reelex’s utility patents repeatedly refer to the utilitarian advantages of the two box designs.
Therefore, the CAFC affirmed the decision of the Board, upholding the examining attorney’s refusal to register the two trade dress applications because they are functional.
Takeaway
- Functional designs cannot be registered as a trade dress. If a utility patent exists for a design, it is likely that the same design cannot also be protected as a trade dress.
- Note that there is an overlap in design patent and trade dress. Existence of a design patent does not preclude an applicant from filing a trademark application for the same design.
