The U.S. Court of Appeals for the Federal Circuit recently affirmed the Trademark Trial and Appeal Board’s refusal to register Bose’s speaker design mark pursuant to the doctrine of res judicata, based on the Court’s earlier refusal to register as functional Bose’s previous application for the same mark. In re Bose Corp., Case No. 06-1173 (Fed. Cir., Feb. 8, 2007) (Lourie, C.J.),

In 1977, Bose Corporation filed a trademark registration for a “loudspeaker systems” design. In 1985, the Federal Circuit deemed the “substantially pentagonal shape” and a “bowed” “front edge” of the speaker design to be functional and unregistrable because it was a superior design. See In re Bose Corp., 772 F.2d 866 (Fed. Cir. 1985) (hereinafter, “Bose I”). More than 20 years later, Bose re-applied to register a design of a pentagonal-shaped speaker enclosure. Bose acknowledged that the “new” speaker enclosure is identical to the mark deemed functional in Bose I. Bose attempted to distinguish the new enclosure based on a modification of its written description as having a “curved front edge” as opposed to the “bowed front edge” in the proposed mark in Bose I. The USPTO, however, has once again, refused registration based res judicata and because the proposed mark remains functional.

Bose did not dispute that the same applicant previously applied to register the same trade dress at issue and that there was a final judgment on the merits, i.e., the functionality of the identical design. Thus, the general prerequisites for res judicata were satisfied. Nonetheless, Bose argued that the circumstances have changed and were not considered in the prior proceeding such that application of the res judicata is not appropriate.

Bose first argued that res judicata does not apply because the Federal Circuit did not explicitly consider the “curved front edge” of the Bose design in its functionality analysis. Relying on the substantial identity of the drawings of the marks in each application, the Federal Circuit rejected Bose’s contention that, simply because the written description of the mark in the second application described the enclosure as having a “curved front edge,” it somehow constitutes a different case. The Federal Circuit further noted that the picture of the design at issue in Bose I depicts the same curved edge as the design in the present application. Noting that this feature remained the same as in the earlier litigation, the panel concluded that the modified description of the curved front edge in the present application was insufficient to foreclose res judicata.

Bose also contended that the post-Bose I Supreme Court case TrafFix represents a change in the law and sets forth additional considerations in the functionality analysis. For support, Bose cited a passage in TrafFix that states “where a manufacturer seeks to protect arbitrary, incidental or ornamental aspects of features of a produce found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern pained on the springs, a different result might obtain. There the manufacturer could perhaps provide that those aspects do not serve a purpose within the terms of the utility.” Therefore, according to Bose, TrafFix mandates consideration of its curved front edges as “arbitrary, incidental, or ornamental aspects or features’ of the mark.” The Court concluded that Bose’s reliance on TrafFix is misplaced because it is applying for protection on the entire pentagonal-shaped design rather than just the curved front edges. The Federal Circuit also held that Bose’s focus on the advertising materials, which do not promote the utilitarian aspects of the curved front edge, was irrelevant because the Bose’s design is not merely limited to the curved front edges, but includes the entire pentagonal-shaped design.