1202.02(a)(v)(D)    Ease or Economy of Manufacture in Functionality Determinations

"'[A] product feature is functional if it is essential ... to the use or purpose of the [product] or if it affects the cost or quality of the [product].'" TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001) (emphasis added) (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995)); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1982) (citing Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 232, 140 USPQ 524, 528 (1964); Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 122, 39 USPQ 296, 300 (1938)). Therefore, a showing that a product design or product packaging results from a comparatively simple or inexpensive method of manufacture will support a finding that the claimed trade dress is functional.

In many cases, there is little or no evidence pertaining to this factor. However, the examining attorney must still issue a requirement under 37 C.F.R. §2.61(b)  for information as to whether the proposed design makes the product simpler or less costly to manufacture, since evidence on this issue weighs strongly in favor of a finding of functionality. See, e.g., TrafFix, 532 U.S. at 32, 58 USPQ2d at 1006; In re Virshup, 42 USPQ2d 1403, 1407 (TTAB 1997) . Statements pertaining to the cost or ease of manufacture may sometimes also be found in informational or advertising materials. See M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1097 (TTAB 2001) (statements in promotional material that applicant’s design results in reduced installation costs supported finding that applicant’s configurations of metal ventilating ducts and vents for tile or concrete roofs were functional).

While evidence showing that a product feature results from a comparatively simple or inexpensive method of manufacture supports a determination that the design is functional, the opposite is not necessarily the case. That is, assertions by the applicant that its design is more expensive or more difficult to make, or that the design does not affect the cost, fails to establish that the configuration is not functional. In re Dietrich, 91 USPQ2d 1622, 1637 (TTAB 2009) ("Even at a higher manufacturing cost, applicant would have a competitive advantage for what is essentially, as claimed in the patents, a superior quality wheel."); In re N.V. Organon, 79 USPQ2d 1639, 1646 (TTAB 2006) . Designs that work better or serve a more useful purpose may, indeed, be more expensive and difficult to produce.