The Board affirmed a Section 2(e)(5) refusal of the product configuration mark shown below, finding the mark to be de jurefunctional for "“gun parts, namely, bottom metal for custom guns that incorporates a trigger guard shape." The Board also considered, in the alternative, applicant's evidence of acquired distinctiveness under Section 2(f) and found it inadequate. In re William D. Hober, Inc., Serial No. 85643266 (April 7, 2016) [not precedential].   

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The description of the mark limited its scope to certain curves and surfaces of the trigger guard, and applicant argued that although trigger guards provide a function [i.e., are de facto functional - ed.] that does not mean that a particular design for a trigger guard is functional in a trademark sense [i.e., de jure functional].   

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Examining Attorney Dominic R. Fathy argued that the oval shape is a superior design for a trigger guard, and that applicant's design is an "indiscernible variation of a fundamental oval trigger guard design that functions to protect against accidental discharge of a firearm."

The Board applied the Morton-Norwich factors to determine the Section 2(e)(5) issue. Three of the four factors were neutral: applicant does not own a patent covering its trigger guard, there was no evidence that it touted the utility of the design, and applicant's design was not comparatively simple or cheaper to manufacture.

The fourth factor, the availability of alternative designs, was critical. The Board noted that just because alternative designs are available, an applicant's design may still be functional. If a design "is the best, or at least one, of a few superior designs for its de facto purpose, it follows that competition is hindered."

The examining attorney asserted that applicant's design comprises an "Oberndorf style" trigger guard (shown immediately below), a basic, common shape for a trigger guard. He explained that the shape of applicant's guard "distributes stress over a broader area to effectively make the guard more durable," and is flat at the top where it meets the gun. The concave and convex surfaces "appear to be virtually universal in the firearm industry, especially in Oberndorf guards."

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The Board found nothing in applicant's description of the mark "that elevates the functional design or shape of applicant's trigger guard into a non-functional source indicator; rather applicant's trigger guard has its shape because the trigger guard works better in this shape."

Given that it is beyond debate that the basic oval or loop shape of a trigger guard is functional, Applicant’s proposed mark describes a very narrow range of features that it claims to be non-functional. The inclusion of a few arbitrary features in the design (e.g., the radii of the curved portions) does not appreciably detract from the overall functionality of the design as a whole. See In re Becton, Dickinson and Co., 102 USPQ2d at 1376 (where a mark is composed of functional and non-functional features, whether an overall design is functional should be based on the superiority of the design as a whole, rather than on whether each design feature is useful or serves a utilitarian purpose).

The evidence showed that applicant's design is "one of a few superior designs." The fact that the design may give a gun a unique, custom look does not necessarily mean that the design is not functional.

The Board therefore affirmed the Section 2(e)(5) refusal.

Assuming arguendo that the design was not de jure functional, the Board considered applicant's claim of acquired distinctiveness under Section 2(f). The evidence included declarations from the owner of applicant's president and of the designer of the trigger guard, as well as "form" declarations from 35 gunsmiths, custom gun purchasers, and gun industry professionals. However, the Board found that the evidence fell short of establishing acquired distinctiveness. 

The declarations of the president and the designer were self-serving, and the 35 customer declarations never explained why the design is "distinctive" and "recognizable," nor did they refer to the specific elements of the proposed mark as described in the application. Although the design has been in use since 1964, the widespread use of the Oberndorf trigger guards is inconsistent with a claim of substantial exclusivity. Moreover, evidence of sales revenues and advertising expenditures was lacking, and there was no evidence of "look-for" promotional language in applicant's advertising. 

The Board therefore rejected applicant's Section 2(f) claim.