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The Non-Functional Parts of a Rocking Chair

Posted by James Juo | May 25, 2023 | 0 Comments

Trademark law prohibits registration of “any matter that, as a whole, is functional.” 15 U.S.C. § 1052(e)(5).

“A product design or a product feature is considered functional in a utilitarian sense if: (1) it is ‘essential to the use or purpose of the article,' or (2) it ‘affects the cost or quality of the article.'” In re MK Diamond Prods., 2020 USPQ2d 10882, at *5 (TTAB 2020) (quoting 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 re Morton-Norwich, 213 USPQ 9, 15-16 (CCPA 1982) identifies the following inquiries or categories of evidence as helpful in determining whether a particular design is functional:

(1) the existence of a utility patent disclosing the utilitarian advantages of the design;

(2) advertising materials in which the originator of the design touts the design's utilitarian advantages;

(3) the availability to competitors of functionally equivalent designs; and

(4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

These functionality considerations are non-exclusive. In re Heatcon, Inc., 116 USPQ2d 1366, 1370 (TTAB 2015).

Ultimately, the determination of functionality is a question of fact and depends on the totality of the evidence presented in each particular case. See Valu Eng'g Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1489 (TTAB 2017); Poly-America, L.P. v. Ill. Tool Works Inc., 124 USPQ2d 1508, 1513 (TTAB 2017); In re Change Wind Corp., 123 USPQ2d 1453, 1456 (TTAB 2017).

Rocking Chairs

The Trademark Trial and Appeal Board (“TTAB”) recently addressed the functionality of a product configuration mark comprising the side of a rocking chair (not including the high back and curved base). In re JBL Int'l, Inc., Ser. No. 88941388 (TTAB May 22, 2023). The TTAB concluded that the design was not functional, but lacked acquired distinctiveness. JBL's alternative amendment to the Supplemental Register, however, was accepted.


With respect to functionality, the TTAB noted that the record contained no evidence of advertising that “highlights or ‘touts' a utilitarian advantage of its product design” or any evidence that the product design helps minimize the cost or simplify the manufacture of rocking chairs. Moreover, several design patents were issued to Applicant which, though not dispositive, was evidence that weighed against a finding of functionality.

The TTAB concluded that a prima facie showing of functionality had not been made.

Acquired Distinctiveness

But product design is not inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065, 1068-69 (2000) (“In the case of product design, as in the case of color, we think consumer predisposition to equate the feature with the source does not exist.”).

To establish acquired distinctiveness under Section 2(f), the following six factors are considered:

(1) association of the [mark] with a particular source by actual purchasers (typically measured by customer surveys);

(2) length, degree, and exclusivity of use;

(3) amount and manner of advertising;

(4) amount of sales and number of customers;

(5) intentional copying; and

(6) unsolicited media coverage of the product embodying the mark.

Converse, Inc. v. Int'l Trade Comm'n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018); see also In re SnoWizard, Inc., 129 USPQ2d 1001, 1105 (TTAB 2018). These are known as the “Converse factors.”

The TTAB emphasized there was no “look for” type of promotion in the record.

This type of promotional effort, while not necessary for purposes of proving acquired distinctiveness, often is probative to sway a fact finder in determining whether certain features have become distinctive in the minds of consumers over time and consumers may identify the source product by those features. See In re Becton, Dickinson, 102 USPQ2d 1376; Kohler v. Honda, 125 USPQ2d 1517.

Applicant also noted that its logo (a two-dimensional silhouette drawing of a side-view of the rocking chair) may direct a consumer's attention to the overall design of its rocking chairs. But the TTAB held that “consumers encountering such use are not prompted to focus on any particular features of Applicant's mark. Rather, consumers may perceive this mark as generally suggestive of Applicant's rocking chairs, without offering any special attention to the combination of features that Applicant claims has become distinctive as a source-identifier.”

The TTAB concluded that “Applicant falls short of carrying the high burden of showing that its product configuration mark has acquired distinctiveness.”

During the prosecution of its application, however, Applicant “request[ed] that it [be] allowed to amend to the Supplemental Register only in the alternative and only after an appeal of the [Examining Attorney's] decision on the issue of acquired distinctiveness to the Trademark Trial and Appeal Board.” The Examining Attorney noted in response that, given those conditions, “Applicant may amend the application to the Supplemental Register.”

The TTAB noted that its decision fulfilled the aforementioned conditions, so “the application is hereby amended to seek registration of the mark on the Supplemental Register.”

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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