In a recent ruling by the Trademark Trial and Appeal Board, affirmed an Examining Attorney’s decision that an application for a proposed rifle barrel configuration mark in connection with rifles and rifle barrels could not be trademarked.
There are several elements (sometimes referred to as the Morton-Norwich factors) for analysis when determining whether a product design or feature can be owned as a trademark or whether it is functional and part of the public domain.
- The existence of 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).
While the decision hinged on multiple factors, one of the practical matters cited by TTAB in denying its trademark application was the advertising description on the company’s web site which touted the company’s “patented helical fluting” for its “Fluted Gun Barrel.” TTAB determined that the applicant’s claims were “more than mere puffery.” Although the trademark applicant advertised on its web site that it’s product had a “unique appearance,” it also stated on its web site its utilitarian advantages.
A functional matter cannot receive trademark protection. A product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.
For a company that looks to trademark one of its products, it must be careful with its ad copy on its web site or other promotional materials. TTAB will review this information in making a determination as to whether the application for a trademark can be approved.
It should be noted that the Examining Attorney originally denied the application for lack of response by the applicant. TTAB subsequently ruled on the basis of the information described above.
Case: In re E.R. Shaw, Inc. (mailed September 29, 2015)