Valu Engineering, Inc. v. Rexnord Corporation

278 F.3d 1268 (2002)

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Nature of the Case

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Facts

P makes guide rails for conveyors used in bottling and canning plants where the areas in the plant were frequently washed and sanitized (wet areas). P first applied for a patent for its guide rails but abandoned that application. P then filed three applications seeking registration of conveyor guide rail configurations in the Principal Register. P asserted a claim of acquired distinctiveness under 15 U.S.C. § 1052(f). The Examining Attorney approved the applications. D filed three Oppositions. D alleged three guide rail designs were de jure functional and thus unregistrable. D focused on the opposition as concerns functionality was on the 'wet' areas of bottling and canning plants. Because the washing solutions are corrosive, the machinery in the wet areas is usually formed of noncorrosive materials, such as stainless steel and plastic. The Board concluded that the shapes were functional and not registrable. The Board applied the Morton-Norwich factors as the products pertain only to wet areas. The Board determined that all four Morton-Norwich factors weighed in favor of a finding of functionality. It found that an abandoned utility patent application filed by Valu but rejected under 35 U.S.C. § 103 'disclosed certain utilitarian advantages of P's guide rail designs and that those advantages result from the shape of the guide rail designs.' P's advertising materials touted the utilitarian advantages of the rail designs. It found that the 'limited number of basic guide rail designs are 'dictated solely by function.' The designs resulted in a comparatively simple or cheap method of manufacturing. P appealed. P claims the Board erred in confining its functionality analysis to a particular use (the wet use), rather than considering all potential uses for the marks.