App. Ser. No. 78723912 (TTAB July 16, 2009)
The TTAB affirmed the Examining Attorney’s refusal to register a design of a bicycle wheel. The TTAB found that patents owned by Applicant and third parties disclosed the utilitarian advantages of the design, that Applicant had touted the utilitarian features of the design in advertisements, and that there was no evidence of alternative designs that worked equally as well as Applicant’s design.
Applicant Rolf Dietrich applied to register the mark shown below for “bicycle wheels,” in Class 12.
The application was fi led under Section 2(f) based on Applicant’s ownership of an incontestable registration on the Principal Register for the mark shown below for “torque transmitting bicycle wheels,” in Class 12.
Applicant claimed that the mark in the registration was the same basic design as the mark in the application. The Examining Attorney, however, refused registration on the ground that the confi guration in the applied-for mark was functional under Section 2(e)(5). The Examining Attorney also rejected Applicant’s Section 2(f) evidence, which included a declaration attesting to fi ve years of substantially exclusive and continuous use of the confi guration, on the ground that functionality constitutes an absolute bar to registration regardless of any evidence of acquired distinctiveness.
The TTAB’s main consideration on appeal was whether the applied-for confi guration was functional. Under the test established by the Supreme Court in TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23 (2001), the TTAB explained that a product feature is functional if “the feature is essential to the use or purpose of the article or if it affects the cost or quality of the article.” The following four factors must be considered in determining functionality: (1) the existence of a utility patent that discloses the utilitarian advantages of the design; (2) the touting by the originator of the design in advertising material of the utilitarian advantages of the design; (3) facts showing the unavailability to competitors of alternate designs; and (4) facts indicating that the design results from a relatively simple or cheap method of manufacturing the product.
Regarding factor one, the TTAB explained that third-party patents may be relied on as evidence of functionality because a patent is potentially relevant if it covers the feature at issue, regardless of the owner. Further, the TTAB is not limited to a review of the claims in a patent in determining functionality, but it may also consider the disclosures in the patent. Based on a review of a number of patents, the TTAB explained that a bicycle wheel typically has 32 to 48 spokes that are spaced evenly, either radially or tangentially. However, the problem with this conventional, single-spoke arrangement according to the patents is that the more spokes the wheel has, the heavier and slower the bike. Further, conventional spoking can create speed wobble or shimmy. To address these problems, Applicant invented the concept of pairing spokes at the rim, where the outer end of a spoke from the left side of a bicycle wheel hub is paired together with the outer end of a spoke from the right side of the hub where the ends are attached to the rim.
Based on the patents it reviewed, including Applicant’s own patents, the TTAB determined that this offset pairing of spokes by Applicant has a functional advantage because it puts less strain on the rim and the connection between the rim and the spokes. Further, the TTAB determined that Applicant’s holes in the hub fl anges also reduced spoke bending and stress. Finally, the TTAB noted that Applicant had admitted in his declaration that the confi guration in his application was covered by a claim in one or more of his patents. Accordingly, the TTAB found that the features that were combined to produce the design of the appliedfor wheel design—offset, tangentially laced, paired spokes, and paired fl ange holes—affected the quality of Applicant’s bicycle wheel.
With respect to factor two, the TTAB noted that Applicant’s website promoted his paired spoke wheels in a manner that suggested the functional advantage of Applicant’s design. For example, Applicant indicated that he was “committed to developing the world’s most innovative wheel designs that deliver the lightest fastest wheels available anywhere,” and that its design patents contributed to “substantial improvements in strength, weight and aerodynamics.” Further, the TTAB noted that there was no evidence of record that Applicant or any third party promoted the spoking pattern of a bicycle wheel for its visual appeal. Thus, the TTAB found that factor two was neutral or supported a finding that the design was functional.
The TTAB also found that factor three—the availability to competitors of alternate designs—favored a fi nding of functionality. The TTAB explained that where, as here, a feature of the device is found to affect the quality of the device, the Supreme Court has held that there is no need to proceed further to consider if there is a competitive necessity for the feature. Thus, the mere fact that bicycle wheels may be produced with different spoking arrangements did not detract from the functional character of Applicant’s spoking design. Further, even considering the factor of alternative designs, the TTAB found that although at least one company copied Applicant’s spoking design, there was nothing to indicate that it was copied for its visual appeal. Moreover, the TTAB explained that the question was not whether there were alternative designs that performed the same basic function, but rather whether the available designs work “equally well.” Here, while other paired spoke designs might result in a well-performing wheel, the TTAB found that Applicant’s design was protected by various parents and apparently performed better (and was implicitly promoted that way). Finally, although there may have been many other spoke designs, those designs may also have been functional.
As to factor four, the TTAB examined whether there was a simple or cheap method of manufacturing the bicycle wheel. The TTAB acknowledged that Applicant’s bicycles were handmade, which was the most expensive way to manufacture a bicycle. However, the TTAB found that although lower manufacturing costs may be indicative of the functionality of a product feature, a higher cost would not detract from the functionality of that feature. This is because a product feature is functional when it affects the cost or quality of the article.
The TTAB thus affi rmed the refusal of registration on the ground of functionality.
In determining whether a confi guration is functional and thus unregistrable, the PTO follows the Supreme Court’s holding in TrafFix. Accordingly, whether utility patents exist covering the confi guration is an important consideration. Moreover, the TTAB will not only look at whether the applicant owns utility patents covering the applied-for confi guration, but also whether third-party patents cover the features of the confi guration.