ShawBarrellThis isn’t the first time we’ve written about brand owners who shoot themselves in the foot with their advertising. And, I’m sure it won’t be the last.

As we’ve discussed before, touting the function of a product design feature can kill any hope of owning non-traditional trademark protection in that feature.

The latest example from the Trademark Trial and Appeal Board (TTAB) relates to a claimed mark consisting of “a three-dimensional configuration of external helical fluting around a gun barrel.

Here, the TTAB seized on the brand owner’s website content touting function in this way:

“[T]he unique appearance of our Helical Fluting provides the discriminating shooter with a barrel that not only looks great but is up to thirty percent more rigid than a similar barrel with Straight Fluting. Helical fluting provides additional surface area for improved cooling, improved barrel harmonics, and helps counteract rotational torque, giving the shooter greater shot consistency.”

While there was much discussion and debate about whether the Applicant’s utility patent actually disclosed the claimed trademark feature (when present, no trademark protection is possible), there was much discussion and debate about the presence of an arguably controlling design patent (normally considered totally consistent with non-traditional trademark protection), and there was much discussion and debate about the existence of other competing designs in the marketplace, from my perspective, it’s hard to explain away the Applicant’s own advertising:

“Applicant’s website clearly touts the utilitarian advantages of its rifle barrel configuration design (‘Helical fluting provides additional surface area for improved cooling, improved barrel harmonics, and helps counter act rotational torque, giving the shooter greater shot consistency.’).”

“Applicant specifically claims on its website that its ‘patented helical fluting’ provides an improvement of ‘up to thirty percent rigidity versus straight fluting.’ Thus, while Applicant mentions a ‘unique appearance’ to the fluting in the same passage on its website, it also clearly claims the same specific utilitarian advantages identified in the patent, i.e., more rigid, lighter, improved cooling, etc.”

In the end, the TTAB pointed both barrels at Applicant’s trademark claim, finding functionality, and affirming the USPTO Examining Attorney’s refusal to register the claimed “external helical fluting around a gun barrel” trademark:

“[B]ased on all of the record evidence, we find Applicant’s proposed rifle barrel configuration mark is principally dictated by utilitarian concerns. With respect to the Morton-Norwich factors in particular, Applicant owns a utility patent demonstrating and claiming the utilitarian purposes of its fluted design; Applicant extols these same virtues in its advertisements; and Applicant’s design is considered superior to other barrel fluting designs. With these findings and viewing the record in its entirety, we conclude the proposed rifle barrel configuration mark comprises matter that, as a whole, ‘is essential to the use or purpose of the article or … affects the cost or quality of the article,’ as contemplated by Inwood, and thus is functional and not registrable on that basis.”

So, pointing to a “unique appearance” or saying it “looks great” won’t save the day, when what follows is fatal in terms of functionality. This fatal flaw is a bit reminiscent of the Bawls energy drink example we wrote about a while back, where the collection of bumps on the bottle not only “looks cool,” but is also there to provide a “non-slip-grip.”

It is also reminiscent of Toyota’s front “spindle” grille, self-explained as a “dashing visual feature,” but then also like this: “Its trapezoid-like shape assists the flow of air into the engine room.

The gun barrel case serves as another good reminder of the importance of having your favorite trademark type review ad copy and website content before going live.

Bottom line, if you want to forever own a design feature as a trademark, treat it like one.