— Karen Brennan, Attorney

Now that the Tour de France is over, it looks like the choices in evening television once again consist of several versions of the same reality show.  I can’t complain, the Tour was phenomenal this year and I enjoyed every minute I was able to watch (thank you DVR).

Last week, as the 2009 le Tour de France raged on, the TTAB issued another loss for product configuration marks everywhere, affirming a refusal to register a product configuration mark for bicycle wheels (In re Rolf Dietrich).  The applicant, Rolf Dietrich, described the mark as a specific spoke pattern which created diamond shaped regions between the rim and hub.

The Board concluded the proposed mark was functional and thus unregistrable, noting no amount of 2(f) evidence (acquired distinctiveness) would be sufficient to overcome a functionality refusal.  The applicant’s attempt to draft off of its existing, incontestable, registration for a highly similar design was of no further assistance.  In fact, the Board went so far as to note the applicant’s incontestable registration was subject to cancellation on the ground of functionality at any time.

The Board focused on evidence of utility patents owned by applicant relating to bicycle wheels, which it found to be sufficient to establish a prima facie case that the design was functional.  In summary, it is becoming quite clear that an attempt to register a product configuration covered by a utility patent will likely result in spinning your wheels and will simply die in the mountains.

For a summary of the best Tour moments, see Phil’s Top 5 Most Amazing Tour Moments.