Continuing our ramp up toward the launch of our Strategies for Owning Your Product Designs webinar next week, I’ve been thinking a lot about the Morton-Norwich factors — the common analysis for determining whether a product design or feature can be owned as a trademark or whether it is functional and part of the public domain (i.e., free for anyone to copy):
- the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
- advertising by the applicant that touts the utilitarian advantages of the design;
- facts pertaining to the availability of alternative designs; and
- facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.
TMEP 1202.02(a)(v); In re Becton, Dickinson & Co., 102 USPQ2d 1372, 1377 (Fed. Cir. 2012); In re Morton-Norwich Prods., Inc., 1340-1341, 213 USPQ 9, 15-16 (C.C.P.A. 1982).
Just last week, our friend John Welch over at the TTABlog, shared some thoughtful insights about the first Morton-Norwich factor, relating to trademark functionality determinations when evidence of utility patents are involved. Bottom line, when they are, it is not impossible, but a tough road ahead, given what the Supreme Court has said about the functionality doctrine:
“The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. Sections 154, 173, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).”
Qualitex Co. v. Jacobson Prods Co., 514 U.S. 159, 164-165, 34 USPQ2d 1161, 1163 (1995).
Our marketing and public relations friends would do well to focus on the second Morton-Norwich factor, because when this evidence exists, good luck convincing the USPTO that it shouldn’t be the death knell to the assertion of exclusive rights in a non-traditional trademark. But, what if such evidence does not exist, shouldn’t that help to disprove functionality?
We are currently handling a product design trademark appeal at the TTAB, and you might be interested to know that the Examining Attorney who issued the registration refusal seems to believe that marketers don’t fall into the trap of touting utilitarian advantages any longer:
“Given the long-standing existence of this Morton-Norwich factor, and any competent trademark attorney’s knowledge of it, it would be surprising to actually find such advertising in this day and age.” (emphasis added)
As you can sense, the Examining Attorney wasn’t impressed by our point that the Applicant has no such advertising — but, should each factor only be relevant if it supports a functionality finding? We think not, each of the doors (factors) should swing both ways.
Actually, we recognize that there are more than a few marketing types out there (especially those who aim to please their engineering colleagues) who have not yet mastered our teaching on this subject over the past six years:
- Pepsi Gets Grip on MLB All-Star Extravaganza
- Calling Non-Traditional Trademarks By Name
- A New Generation of Storytelling: Getting a Grip on The New Pepsi Bottle Design
- Marketing Pitfall Kills Yellow Color Trademark
- Quilted Toilet Paper Design Flushed As Functional
- Samuel Adams Better Beer Glass . . . No Trademark For You?
- One Risqué of a Bawls-to-the-Wall Marketing Style?
- The FURminator and Ads Touting Utility: Marking the Termination of Product Configuration Trademark Protection?
Do you actually think that it would be surprising to find such advertising in this day and age?
If not, does it actually follow that the advertiser’s trademark counsel is not competent? Or, might it suggest they actually aren’t communicating together in harmony?