In order to reach the registrability finish line, a proposed product configuration mark must clear two hurdles: Section 2(e)(5) functionality and Section 2(f) acquired distinctiveness. Selig Sealing Products failed to clear the first hurdle and, even if it had, it also failed at the second hurdle. Selig sought to register the product configuration shown below, for non-metal seals for use in container closures and caps. The applied-for mark consists of the "half-moon shaped pull-tab of an inner container seal." In re Selig Sealing Products, Inc., Serial No. 86078062 (March 14, 2017) [not precedential]
Section 2(e)(5) Functionality: The Board found that applicant's design possesses "two notable features: the semicircular profile of the pull-tab, and its position across the center of the seal, reaching from edge to edge."
In a thorough discussion of the (de facto) functionality of the design, the Board found that "there are many functional reasons that explain the semi-circular shape of Applicant’s pull-tab." The configuration is easier to grasp, and the base of the tab is as long as possible without extending beyond the edge of the container (so that a cap may be placed over the seal). Because of this functionality, competitors are not required to seek alternative designs.
[W]e are persuaded that all of the elements of Applicant’s design affect the performance of Applicant’s pull-tab as a method for removing Applicant’s seals, and that the combination of these design elements results in a design that is, as a whole, functional within the meaning of Section 2(e)(5). Viewing the record in its entirety, we find that the design of Applicant’s product comprises matter that, as a whole, “is essential to the use or purpose of the article or … affects the … quality of the article,” as contemplated by Inwood. We therefore find that Applicant’s product design is functional within the meaning of Section 2(e)(5).
Section 2(f) Acquired Distinctiveness: Assuming arguendo that applicant's design was not de jure functional, the Board considered applicant's evidence of acquired distinctiveness. [Of course, a product design can never be inherently distinctive].
Applicant's evidence fell "far short" of establishing acquired distinctiveness. Although applicant's revenues were substantial, there was no evidence placing the sales figures in context in terms of market share or advertising channels. Seven third-party declarations were too few to be meaningful because the Board lacked information "regarding the nature and size of Applicant’s customer base to conclude that these seven declarations meaningfully reflect the perception of Applicant’s design in the marketplace."
And so the Board affirmed the refusal under Section 2(e)(5)