Back to the Future: trade dress found functional in 1985 still functional in 2007
February 27, 2007

The Federal Circuit once again rejected Bose Corporation's application to register a speaker design as a trademark. The court had earlier affirmed a finding of functionality by the USPTO, and because there were no changed circumstances since that decision, the court once again affirmed the same finding based on the doctrine of res judicata (claim preclusion).

More details of the case after the jump.

Bose stated that the claimed trade dress "comprises an enclosure and its image of substantially pentagonal cross-section with a substantially pentagonal shaped top with a bowed edge parallel to a substantially pentagonal-shaped bottom end." In a response to an office action, Bose also stated that the claimed mark was "identical to the trademark application serial no. 73/127,803." The design applied for is shown below:

Bose speaker

In 1985, the Federal Circuit held that this design was functional, and as a result not entitled to trademark protection. This was largely because the design was claimed in a utility patent (No. 4,146,745) as part of the functional and utilitarian advantage of the speaker system. Further, Bose had publicly stated that the "Bose enclosure design is one of the best from the standpoint of performance of the speaker system." The USPTO found that the current Bose application was also barred from registration under the doctrine of res judicata, stating that there had been no changed conditions, facts, or circumstances that the speaker had become non-functional in the intervening years. Bose appealed, stating that the prior application claimed a "bowed" front edge, where the current application claimed a "curved" front edge, that the legal standard of functionality of trade dress had changed since the last decision, and that there was an absence of evidence that Bose had "touted" the utilitarian advantages of the design. The Federal Circuit rejected each of these arguments. First, the court stated that "bowed" and "curved" are synonymous in this instance. Also, the picture of the design in both applications was the same, further supporting the conclusion that there is no difference between the marks. The court also rejected the notion that the Supreme Court's decision in TrafFix Devices, Inc. v. Marketing Displays, Inc. altered the functionality analysis to be performed by the USPTO. The seminal case discussing the functionality standard at the USPTO is the 1982 In re Morton-Norwich Products, Inc. case from the Court of Customs and Patent Appeals, the predecessor court to the Federal Circuit. There, the court outlined four factors that should be considered when determining whether a claimed product design is functional:

  1. The existence of a utility patent disclosing the utilitarian advantages of the design
  2. Advertising materials in which the originator of the design touts the design's utilitarian advantages
  3. The availability to competitors of functionally equivalent designs
  4. Facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

In TrafFix, the Supreme Court stated that a product design is function if it is "essential to the use or purpose of the article" or "affects the cost or quality of the article." However, in a post-TrafFix case, the Federal Circuit already held that TrafFix did not alter the Morton-Norwich analysis. Thus, there was not a change in applicable law to save Bose from claim preclusion. Finally, the court found Bose's advertising materials did not change the result. Bose argued that in its advertisements, it did not "tout any utilitarian advantage of the curved front edges." However, the court noted that Bose was applying for trademark protection on the design as a whole, not just the curved front edge. As a result, these advertisements did not save the day for Bose. Because there were no changed circumstances since the previous decision where Bose's speaker design was found to be functional, the court once again affirmed the USPTO's finding of functionality, and registration was denied. Time will tell if Bose decides to refile for protection just on the curved front of the speaker, as the court used the fact that the application was not limited to the curved front to refute some of Bose's arguments.

To read the full decision in In re Bose Corp., click here.

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