Nature of the Case
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Facts
P applied to register a mark for 'closures for medical collection tubes.' P claimed acquired distinctiveness based on five years of substantially exclusive and continuous use in commerce. The examining attorney refused registration on the basis that the cap design is functional and on the basis that even if non-functional, the cap design is a non-distinctive configuration of the goods. She further found P's declaration insufficient to show acquired distinctiveness. The examining attorney also issued a request for additional information concerning the cap design, including: whether it is or has been the subject of either a utility or design patent application; samples of advertising, promotional, and/or explanatory materials concerning the cap design; evidence regarding the availability of alternative designs; designs used by competitors; and whether the design results from a comparatively simple or inexpensive method of manufacture. P submitted several of its utility and design patents, samples of advertising materials, and copies of website printouts showing medical closure caps manufactured by other entities. The examining attorney issued a final refusal. With its reconsideration request, P submitted declarations from two of its product designers in support of its argument that the cap design is not functional. BD also submitted eleven customer declarations in support of its argument that the cap design has acquired distinctiveness. The reconsideration was denied and P appealed. The Board explained that the features described in the amended description do not embody the mark in its entirety. It saw additional elements not recited in the mark description, including the circular opening on the top of the cap. The Board concluded that the proposed mark included all elements shown in the drawing except the tube, which was shown in dotted lines. The Board considered the four Morton-Norwich factors in finding that the cap design, considered in its entirety, is functional. It found that the first factor-the existence of a utility patent disclosing the utilitarian advantages of the design sought to be registered-weighed in favor of finding the cap design functional. Advertising by P touts the utilitarian advantages of the design. Assessing whether the cap design results from a comparatively simple or inexpensive method of manufacture the Board found that it did not favor a finding of functionality. It also found that the record does not establish that there are alternative designs for collection tube closure caps. It found for functionality. The Board concluded that admitted non-functional features could not save the mark from being deemed overall functional. P appealed.
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