Becton Dickinson loses CAFC appeal on trademark on design of a closure cap for blood collection tubes
The Board considered 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, is functional. The Board found that the first factor–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 Board found that the ’446 patent ex- plained the utilitarian advantages of at least two prominent features of the cap design, namely, the circular opening and the ribs. Board Opinion, 2010 WL 3164746, at *4-5.
The second factor—advertising by the applicant that touts the utilitarian advantages of the design—also weighed in favor of a functionality finding. The Board 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. Id. at *6.
Next, the Board considered the third factor, assessing whether the cap design results from a comparatively simple or inexpensive method of manufacture. With little argument or evidence on this factor, the Board found that it did not favor a finding of functionality. Id. Finally, the Board considered the fourth factor, regarding the avail- ability of alternative designs, and found that “the record does not establish that there are alternative designs for collection tube closure caps.” The Board considered BD’s evidence: website printouts featuring three third-party collection tube products. The Board found one product did not perform the same function as BD’s goods and there- fore was not relevant. Regarding the two remaining third-party products, the Board found them difficult to characterize as alternative designs because they shared the same utilitarian features as BD’s cap design, includ- ing ribs on the side to allow for a better grip and an opening on the top, rather than discernible contrasting features. Id. at *7.
The CAFC noted:
The functionality of a proposed mark is a question of fact. In re Bose Corp., 476 F.3d 1331, 1334 (Fed. Cir. 2007); Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1273 (Fed. Cir. 2002); Morton-Norwich, 671 F.2d at 1340. Likewise, distinctiveness and acquired distinctiveness are questions of fact. In re Slokevage, 441 F.3d 957, 959 (Fed. Cir. 2006); In re Loew’s Theaters, Inc., 769 F.2d 764, 769 (Fed. Cir. 1985).
Legal conclusions of the Board are reviewed de novo, but the factual findings of the Board are upheld unless they are unsupported by substantial evidence. In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003). Evidence is substantial if a “reasonable person might find that the evidentiary record supports the agency’s conclusion.” On- Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085 (Fed. Cir. 2000). The possibility that two inconsis- tent conclusions may be drawn from the evidence does not preclude a Board finding from being supported by sub- stantial evidence. Id. at 1086. Rather, where contradictory conclusions may reasonably be drawn from the evidence, the decision of the Board favoring one conclu- sion over the other is the type of finding that must be sustained as supported by substantial evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 970 (Fed. Cir. 2007); In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir. 2002).
De facto functionality simply means that a design has a function, like the closure cap in this case. Such functionality is irrelevant to the question of whether a mark as a whole is functional so as to be ineligible for trademark protection. De jure functionality “means that the product is in its particular shape because it works better in this shape.” Id. Further, as the Board recognized in this case, Textron instructs that where a mark is com- posed of functional and non-functional features, whether “an overall design is functional should be based on the superiority of the design as a whole, rather than on whether each design feature is ‘useful’ or ‘serves a utili- tarian purpose.’” 753 F.2d at 1026. Textron cited as an example the Coca-Cola® bottle, noting that the bottle’s significant overall non-functional shape would not lose trademark protection simply because “the shape of an insignificant element of the design, such as the lip of the bottle, is arguably functional.” Id. at 1027.
Of "competent evidence"
To support a functionality rejection in proceedings be- fore the Board, the PTO examining attorney must make a prima facie case of functionality, which if established must be rebutted by “competent evidence.” In re Teledyne Indus., 696 F.2d 968, 971 (Fed. Cir. 1982). Given the burden of proof in other areas of trademark law and given the context here, we understand the “competent evidence” standard as requiring proof by preponderant evidence. See, e.g., Yamaha Int’l Corp. v. Hoshino Gakki Co, 840 F.2d 1572, 1576 (Fed. Cir. 1988) (in an inter partes oppo- sition before the Board, the opposer has the initial burden to present prima facie evidence that the mark has not acquired distinctiveness, and then burden shifts to the applicant to prove acquired distinctiveness by a prepon- derance of the evidence); Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1356 (Fed. Cir. 2009) (petitioner in a cancellation proceeding bears the burden of proof and must overcome the registration’s presumption of validity by a preponderance of the evidence).
Because the Board committed no legal error in its as- sessment of the functionality of BD’s proposed mark, and because substantial evidence supports the Board’s find- ings of fact under the Morton-Norwich factors, we affirm the final decision of the Board.
Judge Linn dissented. He noted
Addressing the third Morton-Norwich factor, the Board and the majority discounted the most probative evidence submitted in this case—the design patents and evidence of alternative designs. Because “the effect upon competition is really the crux of the matter, it is, of course, significant that there are other alternatives avail- able.” Morton-Norwich, 671 F.2d at 1341 (internal quota- tion omitted).
The three design patents noted by the majority are not identical to the specific design for which trademark protection is sought. Maj. Op. at 13. However, the fact that three distinct design patents were granted on simi- lar, but not identical, designs performing the same overall function as the current design at issue suggests that the current design is not “made in the form it must be made if it is to accomplish its purpose.” Morton-Norwich, 671 F.2d at 1339 (internal citation omitted).