1202.02(a)(v)(A)    Utility Patents and Design Patents

Utility Patents

Utility patents cover the invention or discovery of a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. 35 U.S.C. §101.

In TrafFix Devices, Inc. v. Marketing. Displays, Inc., 532 U.S. 23, 29-30, 58 USPQ2d 1001, 1005 (2001), the United States Supreme Court resolved a circuit split regarding the proper weight to be afforded a utility patent in the functionality determination, stating:

A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.

See In re Becton, Dickinson & Co., 675 F.3d 1368, 1375, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012) (utility patent supported finding that closure cap for blood-collection tubes was functional); In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) (shape of loudspeaker system enclosure held functional per patent disclosure containing evidence of functionality); McGowen Precision Barrels, LLC v. Proof Rsch., Inc., 2021 USPQ2d 559, at *40-41 (TTAB 2021) (utility patent disclosed functional rifle barrel design that resulted from barrel manufacturing process); In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *10-11 (TTAB 2020) (utility patents disclosed functional role of perimeter cut-outs or slots in applicant’s circular saw blade configuration); In re OEP Enters., Inc., 2019 USPQ2d 309323, at *9-10 (TTAB 2019) (utility patent disclosed functional umbrella canopy design); In re Change Wind Corp., 123 USPQ2d 1453, 1459-60 (TTAB 2017) (utility patent disclosed functional role of components claimed in configuration of wind turbines); In re Dietrich, 91 USPQ2d 1622 (TTAB 2009) (patent evidence supported bicycle wheel configuration was functional); In re Udor U.S.A., Inc., 89 USPQ2d 1978 (TTAB 2009) (patent claims did not support finding spray nozzle head to be functional).

The Court in TrafFix went on to hold that where the evidence includes a utility patent that claims the product features at issue, it is unnecessary to consider evidence relating to the availability of alternative designs:

There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose. Here, the functionality of the spring design means that competitors need not explore whether other spring juxtapositions might be used. The dual-spring design is not an arbitrary flourish in the configuration of MDI’s product; it is the reason the device works. Other designs need not be attempted.

532 U.S. at 33-34, 58 USPQ2d at 1007 (citation omitted).

Therefore, when presented with facts similar to those in TrafFix (i.e., where there is a utility patent establishing the utilitarian nature of the product design at issue), the examining attorney may properly issue a final functionality refusal based primarily on the utility patent. In re Howard Leight Indus., LLC, 80 USPQ2d 1507, 1515 (TTAB 2006). Where functionality appears to be an issue, in the first Office action, the examining attorney must issue a request for information under 37 C.F.R §2.61(b), requiring the applicant to provide copies of any active, pending, or expired patent(s), and any pending or abandoned patent application(s). See also Valu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1279, 61 USPQ2d 1422, 1429 (Fed. Cir. 2002) ("We agree with the Board that an abandoned patent application should be considered under the first Morton-Norwich factor, because an applied-for utility patent that never issued has evidentiary significance for the statements and claims made in the patent application concerning the utilitarian advantages, just as an issued patent has evidentiary significance.").

It is not necessary that the utility patent be owned by the applicant; a third-party utility patent is also relevant to the functionality determination, if the patent claims the features in the product design sought to be registered. See In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *5 (citing In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1046 n.22 (TTAB 2013); In re Mars, Inc., 105 USPQ2d 1859, 1861 (TTAB 2013); In re Virshup, 42 USPQ2d 1403, 1405 (TTAB 1997)); AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1834-35 (TTAB 2013); In re Virshup, 42 USPQ2d 1403, 1405 (TTAB 1997); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990). In addition, a third-party patent may include other evidence directly related to the functionality of a proposed mark. In In re Pohl-Boskamp GmbH & Co., the applicant sought to register the flavor of peppermint for use in connection with pharmaceutical preparations of nitroglycerin in the form of a lingual spray. 106 USPQ2d at 1043. The examining attorney made of record a third-party patent that described the results of two studies demonstrating that peppermint oil had therapeutic properties in the applicant’s field of goods. Id. at 1046-48. Therefore, the examining attorney may also consult patent databases, including the USPTO’s patent records, to see if utility patents owned by applicant’s competitors disclose the functional advantages of the product design that the applicant seeks to register.

It is important to read the patent to determine whether the patent actually claims the features presented in the proposed mark. If it does, the utility patent is strong evidence that the particular product features claimed as trade dress are functional. But the specification and/or drawings in the patent may also provide strong evidence, even if the feature is not explicitly claimed as part of the invention. See, e.g., In re Becton, Dickinson and Co., 675 F.3d at 1375, 102 USPQ2d at 1377 (there is no requirement "that a patent claim the exact configuration for which trademark protection is sought in order to undermine an applicant's assertion that an applied-for mark is not de jure functional. Indeed, . . . statements in a patent's specification illuminating the purpose served by a design may constitute equally strong evidence of functionality."); In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at *9-10 ("the Court in [TrafFix] explained that statements in a patent can show that another party’s particular design is functional because it is similar in shape to similar functional features disclosed in the patent"). In contrast, if the features are referenced in the patent, but only as arbitrary or incidental features, then the probative value of the patent as evidence of functionality is substantially diminished or negated entirely. TrafFix, 532 U.S. at 34, 58 USPQ2d at 1007 (noting that where a manufacturer sought to protect arbitrary, incidental, or ornamental features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, functionality would not be established if the manufacturer could prove that those aspects did not serve a purpose within the terms of the utility patent); Grote Indus., Inc. v. Truck-Lite Co., 126 USPQ2d 1197, 1206 (TTAB 2018) (finding that utility patent did not show that the six-diode design of vehicle lights was essential to their use or purpose); In re Udor U.S.A., Inc., 89 USPQ2d 1978, 1980-82 (TTAB 2009) (finding that where the patent’s language and a detailed comparison between the identified features of the patent drawing with the visible features of the trademark drawing established that the patent claims involved components neither shown nor described in the trademark design, the utility patent did not support a holding of functionality). Where a utility patent claims more than what is sought to be registered, this fact does not establish the nonfunctionality of the product design, if the patent shows that the feature claimed as a trademark is an essential or integral part of the invention and has utilitarian advantages. Cf. TrafFix, 532 U.S. at 31, 58 USPQ2d at 1006-07 (nothing in the applied-for dual-spring traffic sign design pointed to arbitrary features).

The examining attorney should consider both the numbered claims and the disclosures in the written description, drawings, and abstract of the patent. See McGowen Precision Barrels, LLC v. Proof Rsch., Inc., 2021 USPQ2d 559, at *40 (citing In re Becton, Dickinson & Co., 675 F.3d at 1375, 102 USPQ2d at 1377; In re Howard Leight Indus., LLC, 80 USPQ2d at 1511). The Board has found functionality based on both the claims and/or disclosures. See In re OEP Enters., Inc., 2019 USPQ2d 309323, at *10; Leight, 80 USPQ2d at 1510-11. In In re Howard Leight Industries, LLC, the Board rejected the applicant’s argument that the examining attorney erred in looking to the claims made in applicant’s patent, noting that the Supreme Court in TrafFix repeatedly referred to a patent’s claims as evidence of functionality. 80 USPQ2d at 1510-11. The examining attorney should also consider other evidence described in a patent that is relevant to the functionality of the mark at issue. In re Pohl-Boskamp GmbH & Co., 106 USPQ2d at 1046-47; see also In re Becton, Dickinson & Co., 675 F. 3d at 1375, 102 USPQ2d at 1377 ("[S]tatements in a patent's specification illuminating the purpose served by a design may constitute equally strong evidence of functionality."); In re Loggerhead Tools, LLC, 119 USPQ2d 1429, 1431-32 (TTAB 2016) (indicating that evidence of functionality in a patent was not limited to language in the claims themselves).

Statements regarding utilitarian advantages of the design made in the course of the prosecution of the patent application can also be very strong evidence of functionality. TrafFix, 532 U.S. at 32, 58 USPQ2d at 1006 ("These statements [regarding specific functional advantages of the product design] made in the patent applications and in the course of procuring the patents demonstrate the functionality of the design. MDI does not assert that any of these representations are mistaken or inaccurate, and this is further strong evidence of the functionality of the dual-spring design."); M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1096 (TTAB 2001) .

The fact that the proposed mark is not the subject of a utility patent does not establish that a feature of the proposed mark is nonfunctional. TrafFix, 532 U.S. at 32, 35, 58 USPQ2d at 1006-07; In re Gibson Guitar Corp., 61 USPQ2d 1948, 1950 n.3 (TTAB 2001) .

Design Patents

Design patents cover the invention of a new, original, and ornamental design for an article of manufacture. 35 U.S.C. §171.  A design patent is a factor that weighs against a finding of functionality, because design patents by definition protect only ornamental and nonfunctional features. However, ownership of a design patent does not in itself establish that a product feature is nonfunctional, and can be outweighed by other evidence supporting the functionality determination. See In re Becton, Dickinson & Co., 675 F.3d at 1375, 102 USPQ2d at 1377; In re R.M. Smith, Inc., 734 F.2d 1482, 1485, 222 USPQ 1, 3 (Fed. Cir. 1984); In re OEP Enters., Inc., 2019 USPQ2d 309323, at *6-7; In re Caterpillar Inc., 43 USPQ2d 1335, 1339 (TTAB 1997); In re Am. Nat’l Can Co., 41 USPQ2d 1841, 1843 (TTAB 1997); see also In re Loggerhead Tools, LLC, 119 USPQ2d 1429, 1432-33 (TTAB 2016) ("[a]bsent identity between the design patent and proposed mark, . . . , 'similar' design patents lack sufficient evidentiary value" to overcome other evidence showing that the proposed mark was functional, especially in view of a utility patent that disclosed the utilitarian advantages of the claimed feature (quoting In re Becton, Dickinson & Co., 675 F. 3d at 1375, 102 USPQ2d at 1377 )).