United States: TTAB Orders Cancellation Of Three Registrations For Bag Closure Configuration Marks Due To Section 2(E)(5) Functionality

Last Updated: October 31 2017
Article by John L. Welch

In a case argued at Suffolk Law School in Boston on April 4, 2017, the Board granted a petition for cancellation of three registrations for the product configurations shown immediately below, on the ground of Section 2(e)(5) functionality: on the left, a "horizontal stripe adjacent the bag top" for "plastic bags;" in the center, the configuration of flexible plastic reclosable fastener strips (the "zipper flange" mark); and on the right, "a continuous colored stripe extending for the length of plastic film tubing and plastic film sheeting having a continuous reclosable strip on the surface" (the "rollstock" mark) for "reclosable film tubing and plastic film sheeting, not for wrapping." Poly-America, L.P. v. Illinois Tool Works Inc., Cancellation No. 92056833 (October 18, 2017) [precedential] (Opinion by Judge Peter W. Cataldo).

Standing: Of course, standing is a threshold issue that must be proven by a plaintiff in every inter partes case. The plaintiff must show that it has a "real interest," i.e., a direct and personal stake, in the outcome of the proceeding and a reasonable basis for its belief of damage. Ritchie v.Simpson, 50 USPQ2d at 1023 (Fed. Cir. 1999).

The evidence showed that petitioner, a manufacturer and supplier of plastic film and garbage bag products, is planning to sell reclosable food storage bags with colored closures. Although petitioner is not intending to sell flexible plastic reclosable fastener strips or film tubing and sheeting, it seeks to manufacture or purchase those goods for purposes of manufacturing reclosable food storage bags. Petitioner submitted evidence that it risked a suit for infringement of all three of the subject trademark registrations. The Board concluded that petitioner established its standing to challenge the three registrations.

Functionality: A product configuration or product feature is considered to be functional under Section 2(e)(5) if it is (1) "essential to the use or purpose of the article," or if it (2) "affects the cost or quality of the article." TrafFix Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). In making its determination under Section 2(e)(5), the Board is guided by the analysis of In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982). However, the Supreme Court in TrafFix ruled that if functionality is properly established under Inwood, further inquiry as to the Morton-Norwich factors is unnecessary.

The first Morton-Norwich factor considers whether a utility patent discloses the utilitarian advantages of the design at issue. Petitioner submitted expired U.S. Patent No. 3,054,334, issued on September 18, 1962, entitled "Bag Closure," issued to respondent's predecessor for an "article such as a pouch or similar container having a new and improved resilient type fastener structure." The stated object of the patent is to provide a resilient fastener that would reduce the risk of accidental separation of the fastener. In one embodiment, a pair of flanges assist in the separation of the two strips that form the seal. The patent states that "[e]xcellent results may be obtained" when the strips are of a clear color while one or both of the flanges are colored red.

Claim 6 of the patent specifically recites that "said flange being colored differently than the strips to facilitate identification of the flange and assist in separation of the strips." The Board found that this language "defines the same features of the registered trademarks as described by Respondent, namely, the colored stripe on the reclosable fastener strips shown in each of the three registrations."

Respondent argued that the patent did not describe any utilitarian advantages with regard to the registered marks, and further that the inventor came to understand that "his initial belief was incorrect" and that there never was any functionality to the "Color Line Trademark."

The Board was wholly unimpressed because respondent's predecessor, in arguing against the Patent Examiner's rejection of the color line feature as lacking utility, asserted that it "affords an advantage." Moreover, the predecessor touted the value of the color line: it "serves a practical purpose. It immediately identifies the point of opening." The predecessor listed the '434 patent in its advertising brochures and submitted the brochures in the underlying application for the color line trademark registration.

Simply put, its predecessors having availed themselves of the protection of the '434 patent until its expiration, Respondent's convenient change of heart falls far short of convincing us that the features described in the sixth claim were never functional and may now be the subject of trademark protection.

Respondent contended that, even if the Color Line Trademark "may have been intended to have some functional benefits when first conceived a trademark can become non-functional over time." However, there was no explanation as to how the Color Line Trademark became non-functional over time, and respondent's reliance on Eco Mfg. LC v. Honeywell Int'l Inc., 357 F.3d 649, 653 [69 USPQ2d 1296] (7th Cir. 2003), was misplaced. There, the court never decided the ultimate issue of functionality of the "trademarked" round thermostat (although it did suggest three different ways in which the design could be functional).

In sum, the mere argument that one of the inventors of the '434 patented invention conveniently changed his mind about the functionality of the color strip was not sufficient to outweigh petitioner's proofs. It is irrelevant that the invention claimed in the '434 patent was a closure mechanism. "The fact that the color was part of a larger claim does not reduce its significance, particularly in light of the reliance by Respondent's predecessor on the color recited in claim 6."

Because petitioner established functionality under Inwood based upon claim 6 of the '434 patent, it was unnecessary for petitioner to provide evidence that consumers recognize color as a functional feature of the involved goods. Nor was it necessary to present evidence under all four Morton-Norwich factors. Once petitioner established a prima facie case of functionality, it was respondent's burden to provide sufficient evidence of non-functionality. Respondent did not do so.

Therefore the Board concluded that respondent's registered trademarks are functional under Section 2(e)(5) and it ordered that the three registrations be cancelled.

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