In Re Becton, Dickinson and Co.
102 U.S.P.Q. 2d (BNA) 1372, 2012 WL 1216281, 675 F.3d 1368 (2012)
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Rule of Law:
A product design is considered de jure functional and thus ineligible for trademark registration if its overall appearance is dictated by utilitarian concerns, as evaluated by factors including utility patents, advertising touting utilitarian advantages, and competitive need to copy the design.
Facts:
- Becton, Dickinson and Company (BD) manufactured a specific design of a closure cap for blood collection tubes.
- This cap design featured an overall streamlined exterior, vertically elongated ribs of varying slimness and fatness, a smooth area separating rib sets, slim ribs tapering to triangular shapes, a smooth surface ringing the top, and a flanged lip at the bottom with a slightly curved contour.
- BD held utility patents, such as U.S. Patent No. 4,741,446, which disclosed and described the utilitarian advantages of features within the cap design, specifically the circular opening for needle insertion and the ribs for gripping.
- BD's advertising materials promoted the utilitarian benefits of the cap's design elements, highlighting aspects like a secure grip from the ribs, reduced splattering from the flanged lip, and prevention of glove-pinching due to the cap's hooded feature.
- Competitors in the medical closure cap industry produced their own caps, some of which incorporated similar utilitarian features like ribs for gripping and functional openings.
Procedural Posture:
- Becton, Dickinson and Company (BD) filed U.S. Trademark Application Serial No. 77/254,637 with the United States Patent and Trademark Office (PTO) to register its closure cap design on the Principal Register for "closures for medical collection tubes," asserting acquired distinctiveness.
- The examining attorney initially refused registration under 15 U.S.C. § 1052(e)(5) on the basis that the design was functional, and also found it a non-distinctive configuration and BD's declaration insufficient to show acquired distinctiveness.
- In response to a request for information, BD submitted several utility and design patents, advertising samples, and website printouts of competitor products.
- The examining attorney issued a final refusal of registration.
- BD filed a Notice of Appeal to the Trademark Trial and Appeal Board (Board) and simultaneously a Request for Reconsideration, submitting declarations from product designers and customers.
- The examining attorney denied BD’s request for reconsideration.
- BD filed a second Request for Reconsideration, proposing a more detailed description of the mark, which the examining attorney accepted.
- The Board, after an oral hearing, affirmed the examining attorney’s refusal, concluding that the cap design, considered in its entirety, was functional and that BD had not met its burden to establish acquired distinctiveness.
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Issue:
Does a product design's overall functionality, when comprised of both functional and non-functional features, render it ineligible for trademark registration even if some elements are non-functional, under the Morton-Norwich factors?
Opinions:
Majority - Clevenger, Circuit Judge
Yes, a product design's overall functionality, when comprised of both functional and non-functional features, renders it ineligible for trademark registration if the overall design is dictated by utilitarian concerns, even if some elements are non-functional. The court affirmed the Trademark Trial and Appeal Board's decision, concluding that BD’s closure cap design as a whole is functional. The court explained that when a proposed mark includes both functional and nonfunctional features, the critical question is the "degree of utility present in the overall design." Citing Textron, Inc. v. International Trade Commission, the court held that the assessment of an overall functional design should be based on its superiority as a whole, rather than the utility of individual features. The court applied the Morton-Norwich factors: 1. Utility Patent: The '446 utility patent disclosed utilitarian advantages of prominent features like the circular opening and ribs. The court, citing TrafFix Devices, Inc. v. Marketing Displays, Inc., found this to be strong evidence of functionality and rejected BD’s argument that features must be explicitly claimed in the patent. Design patents provided by BD were deemed insufficient as they did not reflect the specific design sought for protection. 2. Advertising: BD's advertising materials touted the utilitarian advantages of the cap's prominent features (e.g., secure grip, reduced splattering, glove-pinch prevention). The court found this to be substantial evidence of functionality, dismissing BD's attempt to characterize them as "look for" advertisements. 3. Alternative Designs: The court stated that if functionality is established by other factors (like patents and advertising), the availability of alternative designs need not be considered. Even so, the Board's finding that competitor designs shared the same utilitarian features was upheld, meaning they were not truly distinct alternatives. 4. Inexpensive Method of Manufacture: With scarce evidence, the court upheld the Board’s decision not to weigh this factor heavily. The court emphasized that the public policy underlying the rule against trademarking functional designs is the "need to copy those articles, which is more properly termed the right to compete effectively." It concluded that the overall design of BD's cap is dictated by utilitarian concerns and that the Board's findings were supported by substantial evidence.
Dissenting - Linn, Circuit Judge
No, the cap design should not be rendered ineligible for trademark registration because the Board incorrectly applied legal standards by failing to analyze the functionality of the mark as a whole and by lacking substantial evidence for its findings. Justice Linn argued that the Board inappropriately weighed individual functional features against non-functional ones, rather than examining whether the appearance of the design as a whole was dictated by utilitarian concerns. Citing In re Teledyne Indus., Inc., the dissent noted that dissecting a mark into functional features is not conclusive for de jure functionality. Justice Linn compared the situation to In re Morton-Norwich Prods., Inc., where a spray bottle's overall design was found registrable because its specific shape was not dictated by function, despite individual functional components. He contended there was no evidence that BD’s cap had to look precisely as depicted (e.g., specific rib spacing, flange tapering) to serve its functions. He criticized the majority's application of the Morton-Norwich factors: 1. Utility Patent: The '446 patent did not claim the specific visual features of BD’s design mark, thus, under TrafFix, it failed to strongly illuminate the functionality inquiry. 2. Advertising: While BD’s ads touted functional features, the dissent noted that the existence of different, functionally identical designs (including BD’s own prior advertisements) demonstrated the availability of alternative appearances. 3. Alternative Designs: The Board improperly disregarded design patents and competitor designs merely because they shared utilitarian features. Justice Linn argued that competitors should be able to achieve the same function without copying the external appearance, and the presence of distinct design patents for similar products suggested the current design was not the only functional form. 4. Inexpensive Method of Manufacture: The dissent argued that the Board erred by ignoring BD’s undisputed evidence that the design features did not lower manufacturing costs, regardless of the scarcity of that evidence. Justice Linn concluded that the Board committed legal error by not analyzing the mark as a whole and that its findings lacked substantial evidence, thus advocating for reversal and remand for reconsideration of acquired distinctiveness.
Analysis:
This case reinforces the principle that trademark protection for product designs is severely limited when the design as a whole is primarily utilitarian. It clarifies that even the presence of some non-functional elements will not save a design from a finding of de jure functionality if the overall appearance is dictated by utilitarian concerns. The decision highlights the strong evidentiary value of utility patents and promotional materials touting functional advantages in assessing functionality, and demonstrates the high bar for overcoming such evidence, particularly when alternative designs are not truly distinct in their utilitarian features. It underlines the importance of differentiating between a feature's inherent utility and whether its specific form is necessary for that utility.
