Considering whether a medical device company was entitled to obtain a trademark registration for its design of a closure cap for medical collection tubes, the U.S. Court of Appeals for the Federal Circuit affirmed a final decision of the Trademark Trial and Appeal Board (TTAB) that the design could not be registered because it is functional. In re Becton, Dickinson and Co., Case No. 11-1111 (Fed. Cir., Apr. 12, 2012) (Clevenger, J.) (Linn, J. dissenting)

Becton, Dickinson (BD) applied to register a particular design of a closure cap for blood collection tubes. The trademark examining attorney refused registration under 15 U.S.C. § 1052(e)(5) on the grounds that the cap design is functional, as well as on the basis that even if the design is non-functional, the cap design is a non-distinctive configuration of the goods under 15 U.S.C. §§ 1051-1052 and 1127. A shape or design is “functional,” and therefore may not be protected as a trademark, if it is “essential to the use or purpose of the article or affects the cost or quality of the article.” TrafFix Devices, Inc. v. Marketing Displays, Inc. (see IP Update, Vol. 4, No. 4). The examining attorney requested that BD provide additional information concerning the cap design. BD did, providing several of its utility and design patents, samples of advertising materials and photographs of medical closure caps manufactured by third parties. The examining attorney issued a final refusal and BD appealed to the TTAB.

The TTAB assessed the design’s utilitarian functionality under the Morton-Norwich factors: the existence of a design patent disclosing the utilitarian advantages of the design sought to be registered; advertising by applicant that touts the utilitarian advantages of the design; whether the design results from a comparatively simple or inexpensive method of manufacture; and the availability of alternative designs. The Board found applicant’s cap to be a functional design based on the first two factors. A utility patent disclosed at least two utilitarian advantages of the cap’s design and thus supported functionality. Also, some of BD’s advertising materials extolled the utilitarian advantages of several design features of the proposed mark. Becton, Dickinson appealed.

On appeal, the majority of the Federal Circuit agreed with the TTAB, finding substantial evidence supporting the first two Morton-Norwich factors. First, the Court noted that the utility patent disclosing features of applicant’s cap design was strong evidence of functionality. BD argued that the references should not be given such probative value because they were found in the specification of the patent and not the actual patent claims. The Court rebuffed the argument, explaining it was not limited to consider only the actual patent claims in evaluating trademark functionality. The Court also gave great weight to BD’s own advertising materials touting the utilitarian advantages of its design.

In dissent, Judge Linn argued that the Board and majority improperly compared the functional features against the non-functional features of applicant’s cap design to determine whether the mark as a whole is functional and non-registerable. “The proper inquiry,” Judge Linn explained, “is to examine the degree to which the mark as a whole is dictated by utilitarian concerns (functional or economic superiority) or is arbitrary (‘without complete deference to utility’).” In other words, if a particular design is not required to look the way it does, the design is non-functional. Further, Judge Linn stated that more weight should have been given to the third and fourth Morton-Norwich factors, i.e., existence of alternative designs and whether the design resulted in a less expensive method of manufacture. Linn argued that the TTAB and the majority discounted “the most probative evidence submitted” in the case which were the design patents and third-party alternative designs. Linn explained that three distinct design patents showed that the shape of the container could be varied and still perform the same function, weighing against a finding of functionality. Linn explained that even though BD’s advertising materials may be viewed supporting finding of functionality, those same materials could also be viewed supporting non-functionality because they showed the existence of alternative cap designs different from the mark.