The Board affirmed a refusal to register a motion mark "depicting the product configuration of a hand tool in which six rectangular-shaped jaw-like elements of the circular head of a hand tool radially move in and out," for "hand tools, namely, gripping tools in the nature of wrenches and wire crimpers for sale through mass merchandisers to retail consumers," on the ground of Section 2(e)(5) functionality]. [Video (.wmv) specimen of use here]. In re Loggerhead Tools, LLC, Serial No. 85700986 (June 30, 2016) [precedential].

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The Supreme Court has stated that a product feature is functional, and thus 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." See TrafFix and Inwood. Treating this mark like a product configuration mark, the Board applied the ever-popular four-part test of Morton-Norwich.

Utility Patent: As to the first Morton-Norwich factor, the Board reviewed Applicant Loggerhead's utility patent for an "Adjustable Gripping Tool." According to TrafFix, "A utility patent is strong evidence that the features therein claimed are functional," but Loggerhead argued that the subject motion of its hand tool is not claimed in that patent. The CAFC's decision in Becton, Dickinson, however, held that "statements in a patent's specification illuminating the purpose served by a design may constitute equally strong evidence of functionality."

The specification of Loggerhead's patent described the tool's motion: "the gripping tool of the present invention symmetrically translates the force applied to the gripping too onto the workpiece in a symmetrically balanced and mechanically advantaged and efficient manner." Taken together with the patent drawings, this description this is "strong evidence that the matter is functional."

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Loggerhead pointed to its design patent for a "Hydrant Tool" (see below) as persuasive evidence that its "overall design is not functional. However, the Board pointed out, the design patent does not cover the motion described in the subject trademark application: it shows five gripping elements instead of six, and does not describe the motion at all. Therefore, the design patent does not overcome the "strong conclusion" that the utility patent's disclosure of the utilitarian advantages of the proposed mark indicates functionality.

Advertising Touting Utilitarian Advantages: Examining Attorney Barney L. Charlon pointed to numerous examples of Loggerhead touting the utilitarian advantages of its tool: with a one hand squeeze, the tool sizes and grips a wide range of nuts and bolts, and the symmetrical movement of the gripping elements in its product configuration allow the equal distribution of force on the work object with less strain on the corners of the nut or bolt.

Alternative Designs: Although the first two factors established that the applied-for mark is functional because it affects the quality of the device, the Board proceeded to consider the other two factors (since Loggerhead might appeal this decision). Loggerhead argued that there are many alternative designs for adjustable gripping tools, submitting declarations from two industrial design experts. But the Board observed that only a few of the examples showed an “iris-type motion” like that in the subject application. Loggerhead’s evidence “indicates that its design sets it apart as one of the best, thereby hampering or even eliminating competition in this regard.” Thus even if relevant, Loggerhead’s evidence of alternative designs was unpersuasive.

Cost of Manufacture: The Board also addressed the fourth Morton-Norwich factor, deeming unavailing Loggerhead’s only evidence, a conclusory statement by its President that its device “was not the most cost-effective combination among the various alternatives available.”

Other arguments: Loggerhead asserted that some of the features of its tool are nonfunctional, aesthetic design choices: for example, the shape, size, and orientation of the jaw-like elements, and the exposure of the elements so that the user may observe the movement of the elements. The Board observed that in Becton, the CAFC advised that it is appropriate to weigh the elements of a mark in determining overall functionality, but the ultimate determination must be made based on the proposed mark as a whole.

The Board found that these non-functional elements do not outweigh the overall functionality of the applied-for mark. It pointed out that the analysis for a motion mark “is the same as it would be for any other product configuration mark, product design trade dress or other non-traditional mark such as color or sound.” See TEMP Section 1202.02(a)(viii) and cases cited therein.

Loggerhead asserted that this case is analogous to the facts in two nonprecedential TTAB decisions for product designs, in which functionality refusals were reversed: In re Lin (exercise and toy hoop) [TTABlogged here] and In re Hershey (scored candy bar) [TTABlogged here]. However, the Board pointed out, neither of those cases involved a utility patent.

Finally, Loggerhead argued that its design is distinctive, having won numerous awards, and Loggerhead claimed acquired distinctiveness. The Board pointed out, however, that the Lanham Act specifically excludes from Section 2(f), material that has been refused registration under Section 2(e)(5).

Concluding that the applied-for mark affects the quality of Loggerhead’s hand tool, the Board affirmed the refusal under Section 2(e)(5).