Baby Bjorn AB

Trademark Trial and Appeal Board

Nov 18, 2004

No. 75751554 (T.T.A.B. Nov. 18, 2004)

Mailed: November 18, 2004
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Baby Bjorn AB
________
Serial No. 75751554
______
Daniel Zendel, Steven M. Perez and Mary A. Moy of Ladas &
Parry for Baby Bjorn AB.
Nicholas K.D. Altree, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Simms, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Baby Bjorn AB (applicant), a Swedish corporation, has
appealed from the final refusal of the Trademark Examining
Attorney to register the amended mark shown below for soft
baby carriers worn on the body.1
1 Serial No. 75751554, filed July 15, 1999, based upon an
allegation of use in commerce since at least July 4, 1991, and on
a claim of priority under Section 44(d) of the Act, 15 USC
§1126(d), based upon ownership of Swedish application 99-00356,
now Reg. No. 337,347, filed January 20, 1999. During the course
of prosecution, on February 2, 2001, applicant claimed acquired
distinctiveness of its asserted mark.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75751554
2
With a request for reconsideration, applicant amended the
description of its mark as follows:
The mark comprises the configuration of
a flared, kite-shaped outside front
panel of a baby carrier and two
vertical stripes placed thereon. The
portions of the drawing shown in dotted
lines are not part of the mark but are
merely intended to show the position of
the mark.
Essentially, applicant claims that the source-identifying
features of its design consist of the arbitrary shape of
No issue has been raised as to whether applicant’s amended mark
is a substantially exact representation of the mark in the
foreign registration, which is of the same image except that the
straps are shown in black rather than in dotted lines. See
Trademark Rule 2.51(a)(3) and (b)(3), and TMEP §§1011.01, 1011.03
Serial No. 75751554
3
the front flap of its baby carrier as well as the vertical
stripes on the front of the carrier. In its brief, 10,
applicant states that its mark consists of “the combination
of arbitrary curves and lines comprising its distinctive
one-piece, kite-shaped flap design and distinctive front-
panel stripes,” and, at 18, the “combination of a flared,
kite-shaped panel and vertical stripes.”
The Examining Attorney has refused registration on the
basis that applicant’s proposed mark is functional under
Section 2(e)(5) of the Act, 15 USC §1052(e)(5), and,
assuming that the configuration is nonfunctional, on the
basis that applicant’s product design has not acquired
distinctiveness under Section 2(f) of the Act, 15 USC
§1052(f), and is therefore merely a non-distinctive
configuration which is not a mark. See Sections 1, 2 and
45 of the Act, 15 USC §§1051, 1052 and 1127.
The Law of Functionality
The Trademark Act has been amended to provide that an
application may be refused registration if it “comprises
any matter that, as a whole, is functional.” 15 USC
§1052(e)(5). The Supreme Court has recently discussed the
issue of functionality:
and 807.14. For purposes of this decision, we shall assume that
these marks are substantially exact.
Serial No. 75751554
4
[W]e have said “`[i]n general terms, a
product feature is functional,' and 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.’” Qualitex Co. v. Jacobson
Products Co., 514 U.S. 159, 165 (1995)
(quoting Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U.S. 844, 850, n. 10
(1982)). Expanding upon the meaning of this
phrase, we have observed that a functional
feature is one the “exclusive use of [which]
would put competitors at a significant non-
reputation-related disadvantage.” 514 U.S.,
at 165.
TrafFix Devices Inc. v. Marketing Displays Inc., 523 U.S.
23, 58 USPQ2d 1001, 1006 (2001). Also, in Qualitex Co. v.
Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d 1161,
1163-64, the Supreme Court observed:
The functionality doctrine prevents
trademark law, which seeks to promote
competition by protecting a firm’s
reputation, from instead inhibiting
legitimate competition by allowing a
producer to control a useful product
feature. It is the province of patent law,
not trademark law, to encourage invention by
granting inventors a monopoly over new
product designs or functions for a limited
time, after which competitors are free to
use the innovation. If a product’s
functional features could be used as
trademarks, however, a monopoly over such
features could be obtained without regard to
whether they qualify as patents and could be
extended forever (because trademarks may be
renewed in perpetuity).
That is to say, the Lanham Act does not exist to reward
manufacturers for their innovation in creating a particular
Serial No. 75751554
5
device; that is the purpose of the patent law and its
period of exclusivity. The Lanham Act, furthermore, does
not protect trade dress in a functional design simply
because an investment has been made to encourage the public
to associate a particular functional feature with a single
manufacturer or seller.
The Federal Circuit looks at four factors in
determining the issue of functionality:
(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; and
(4) facts indicating that the design results in a
comparatively simple or cheap method of
manufacturing the product.
See Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268,
61 USPQ2d 1422, 1426 (Fed. Cir. 2002), citing In re Morton-
Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15-16
(CCPA 1982).
Concerning the first factor, the existence of a
utility patent, one must first look at the question of
whether there is a prior utility patent that is relevant to
the issue of functionality of applicant’s design. The
Serial No. 75751554
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Supreme Court has indicated that a utility patent can be a
critical factor in a functionality determination.
A prior patent, we conclude, has vital
significance in resolving the trade dress
claim. A utility patent is strong evidence
that the features therein claimed are
functional. If trade dress protection is
sought for those features, the strong
evidence of functionality based on the
previous patent adds great weight to the
statutory presumption that features are
deemed functional until proved otherwise by
the party seeking trade dress protection.
TrafFix, 58 USPQ2d at 1005.
As to the third factor, the existence of alternative
designs, the Federal Circuit has noted that the fact that
other designs are available does not mean that applicant’s
design is not functional:
We did not in the past under the third
factor require that the opposing party
establish that there was a “competitive
necessity” for the product feature. Nothing
in TrafFix suggests that consideration of
alternative designs is not properly part of
the overall mix, and we do not read the
Court's observations in TrafFix as rendering
the availability of alternative designs
irrelevant. Rather, we conclude that the
Court merely noted that once a product
feature is found functional based on other
considerations there is no need to consider
the availability of alternative designs,
because the feature cannot be given trade
dress protection merely because there are
alternative designs available. But that
does not mean that the availability of
alternative designs cannot be a legitimate
source of evidence to determine whether a
feature is functional in the first place.
Serial No. 75751554
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Valu Engineering, 61 USPQ2d at 1427 (footnote omitted).
The question is not whether there are alternative designs
that perform the same basic function, but whether these
designs work “equally well.” Valu Engineering, 61 USPQ2d
at 1427, quoting, 1 McCarthy on Trademarks and Unfair
Competition, §7:75, 7-180-1 (4th ed. 2001). The Supreme
Court found that it was improper to engage in “speculation
about other design possibilities, such as using three or
four springs which might serve the same purpose … [or] to
explore designs to hide the springs.” TrafFix, 58 USPQ2d
at 1007. The presence of other designs does not indicate,
therefore, that applicant’s design is not de jure
functional.
The Patents and Advertising of Record
The record includes two patents held by applicant.
Patent number 5,490,620, dated February 13, 1996, is the
more relevant of the two. It covers a child-supporting
shoulder harness. In the detailed description of the
preferred embodiments, it is indicated that the supporting
flap (2) in the drawing below has a neck-supporting part
(27) in the region above the point at which the fastening
devices are attached to the straps.
Serial No. 75751554
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It also indicates that the side edges of the flap are
provided with recesses (22) through which the arms of the
child extend in a region immediately above the fastening
devices. Further, the patent states that, if the harness
is placed in another configuration, used when the child is
placed in the harness in a forward-facing position, the
neck-support part can be folded down onto the lower part of
the supporting flap. However, the patent states that “it
Serial No. 75751554
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is normally desirable for the supporting flap … to have a
given degree of stiffness so as to hold the neck-supporting
part 27 upright.” In the patent, the applicant states that
he claims, among other things, a flap which includes “a
neck-support part … which extends up beyond the level of
the fastening connections (3, 11) of said flap; in that the
neck-support part is provided along its side (28) with
fastener elements (23) for releasably fastening said neck-
support part to the two looped straps (1) so as to
stabilize said neck-support part (27)…. … A harness
according to [the previous claim], characterized in that
the neck-support part (27) can be folded down…. 13. A
harness according to [a previous claim], characterized in
that the child-supporting flap (2) has lateral recesses
(22) for accommodating arms of the child.”
Applicant’s other patent (the ’821 patent) relates to
clasp mechanisms used to attach and adjust the baby
carrier.
Exhibit E submitted with applicant’s Request for
Reconsideration shows ads and product reviews touting
applicant’s baby carriers. The ads indicate that
applicant’s baby harness provides “safe and snug head
support,” and “strong support for your baby’s neck and
back,” and “[I]t features safe and comfy head support.”
Serial No. 75751554
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Another ad indicates that one may “[p]lace baby facing you
when very young and use the head support.” Instructions
for using applicant’s baby carrier are of record, one part
of which is reproduced below:
Arguments
It is the Examining Attorney’s position that the
evidence of record, including applicant’s utility patents
and advertising, demonstrates that the portion of
applicant’s baby carrier sought to be protected by its
application is de jure functional and unregistrable. The
Examining Attorney maintains that applicant’s product has
this shape because it works better in this shape. The
Examining Attorney points to some of the statements from
Serial No. 75751554
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applicant’s ’620 patent noted above as well as claims made
in applicant’s advertising such as “safe and snug head
support” and “high and padded neck rest.” The Examining
Attorney contends that advertising calling attention to
functional details of applicant’s product does not
establish that consumers recognize the configuration (or a
part thereof) as an indicator of source. Applicant’s
utility patents, he argues, are strong evidence that
applicant’s features are functional, and applicant has a
heavy burden to show that the features in its patents are
not functional, for example, that they are ornamental,
incidental or arbitrary. It is the Examining Attorney’s
position that the vertical stripes shown in the drawing are
“probably” the result of reinforcement stitching.
Assuming that applicant’s design is determined not to
be functional as a whole, the Examining Attorney contends
that applicant’s design has not acquired distinctiveness,
and that it shares some of the same properties embodied in
baby carriers of others, such as a supporting pouch, head
support and openings for the arms and legs. While the
Examining Attorney concedes that it is possible that the
two vertical stripes, if not functional, may be
protectable, the Examining Attorney points out that
applicant’s drawing is not limited to the two vertical
Serial No. 75751554
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stripes but includes the overall shape of the pouch or flap
as well.
Applicant, on the other hand, contends that all baby
carriers have certain features, such as flaps, straps and
fastener elements. It is applicant’s position, however,
that its patents do not disclose any utilitarian advantages
relating to the design features for which applicant seeks
trademark registration, but rather applicant’s
configuration embodies a nonfunctional design which has
acquired distinctiveness. That is to say, the pouch or
flap herein sought to be protected has a shape which is
neither described nor dictated by the claims of its
patents, applicant argues.
Because the drawing of applicant’s mark has been
amended to delete any claim to the straps, buckles or
clasps covered in the ’821 patent, that patent is
irrelevant, applicant maintains. The ’620 patent concerns
the ease with which a child may be removed from its baby
carrier, applicant contends. It is applicant’s position
that the shape or use of the flap design is not the subject
matter of or central advance claimed in that patent.
According to applicant, neither patent reveals any
particular utilitarian advantages to the shape of this
support flap. In sum, applicant acknowledges that it is
Serial No. 75751554
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not seeking or entitled to “exclusive rights to the use of
a fabric support flap for baby carriers. Applicant instead
seeks registration of a particular flap shape comprising a
specific combination of curves, lines and stripes.” Reply
brief, 4.
Furthermore, applicant points out that there is no
mention in the ’620 patent of any functional advantages of
the stitching shown in applicant’s proposed mark. With
respect to this stitching, applicant argues that its
function is to add “a characteristic, eye-catching
element.” Request for Reconsideration, 9.
Applicant also points to the alternative competitive
configurations of other baby carriers as evidence that
applicant’s design is not essential to the use or purpose
of its product. Some of these alternative designs are
shown below.
Serial No. 75751554
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Serial No. 75751554
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With respect to any advertising claims made by
applicant, applicant maintains that statements concerning
strap comfort, the ease of baby removal and adjustability
are irrelevant in view of applicant’s amended drawing and
description, which no longer claim those features as part
of the mark.
Assuming that applicant’s asserted mark is not found
functional, applicant maintains that the design aspects of
its mark have acquired distinctiveness. Applicant points
to its cumulative sales in the U.S. over 12 years of more
than one million units and advertising expenditures
approaching $2 million. For example, in 2002, applicant
spent $428,000 in advertising all of its products, about 90
percent of which was for its baby carrier. In addition,
its marketing materials have included photographs showing
Serial No. 75751554
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the flap configuration. It is applicant’s position that
the flared front panel of its baby carrier as well as the
dual vertical stripes are extremely well-known in the baby
care industry and that the public has come to recognize
these design features as indicating source. Further, no
similar marks have been registered by third parties,
according to applicant. Applicant also points to what it
characterizes as an unsolicited consumer review:
This now famous carrier has been touted in
all the magazines of must haves. Easily
recognizable as a brand name from afar the
Bjorn certainly looks attractive and comes
in different color patterns.
Exhibit C, from epinions.com Web site, attached to
applicant’s Request for Reconsideration. Applicant’s
Request for Reconsideration also contains a number of
photographs of celebrities wearing applicant’s baby
carriers.
Functionality Discussion and Analysis
Upon careful consideration of this record, including
applicant’s more relevant patent and applicant’s
advertising, we conclude that the flap design sought to be
registered is functional as a whole. The curved top of the
flap is clearly designed for and promoted as providing
support for the baby’s head. In addition, the openings
near the top of the flap are intended to be used as arm
Serial No. 75751554
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openings for the baby. These openings are clearly
functional. Because the flap narrows near the bottom, the
baby’s legs may easily be placed on either side of the
flap.
While it is true that the Examining Attorney has only
speculated about the purpose of the vertical stitching or
stripes, shown in white in applicant’s drawing, applicant
has not sought registration of only these two stripes as
its trademark. Rather, applicant claims that the entire
flap configuration, as well as the two stripes shown
thereon, is its trademark. Because applicant is seeking
registration of the entire flap design, which we find to be
de jure functional, registration on this application cannot
be permitted even if the stripes are ornamental, incidental
or arbitrary.
With respect to the existence of alternative designs
of baby carriers, as noted above, the existence of such
alternatives does not mean that applicant’s product design
is nonfunctional. In view of the evidence establishing the
functionality of applicant’s flap design, these alternative
designs do not show that applicant's flap design is not
functional.
Serial No. 75751554
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Acquired Distinctiveness
While we have affirmed the functionality refusal,
applicant has also sought registration on the basis that
its design has acquired distinctiveness. Because
applicant's design is functional, any evidence of
distinctiveness is of no avail to applicant in support of
registration. See TrafFix, 58 USPQ2d at 1007
(“Functionality having been established, whether MDI’s
dual-spring design has acquired secondary meaning need not
be considered”). Therefore, even if there were evidence
sufficient to demonstrate acquired distinctiveness, it
would not permit the registration of a functional design.
However, for the sake of completeness, should applicant
appeal and ultimately prevail on the issue of
functionality, we will discuss applicant’s contention that
its design has acquired distinctiveness.
At the outset, we observe that a product configuration
is not inherently distinctive, and is entitled to
registration on the Principal Register only upon a showing
of acquired distinctiveness under Section 2(f). Wal-Mart
Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54
USPQ2d 1065, 1068 (2000). Further, the burden of
establishing acquired distinctiveness is upon the
applicant, who must establish acquired distinctiveness by a
Serial No. 75751554
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preponderance of the evidence. Yamaha International
Corporation v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6
USPQ2d 1001, 1006 (Fed. Cir. 1988). Acquired
distinctiveness or secondary meaning occurs when “in the
minds of the public, the primary significance of a [mark]
is to identify the source of the product rather than the
product itself. Wal-Mart Stores, Inc. v. Samara Bros.,
Inc., supra.
As noted above, applicant has pointed to its sales in
the U.S. for over 12 years of over one million units and
advertising expenditures of about $2 million. In 2002,
applicant spent about $400,000 in advertising for its baby
carrier.
The claim that applicant has been using a design for a
long period of substantial and exclusive use does not, by
itself, demonstrate that the mark has acquired
distinctiveness. See In re Gibson Guitar Corp., 61 USPQ2d
1948, 1952 (TTAB 2001)(66 years of use). In addition, the
mere fact that applicant has sold over 200,000 units in a
recent year is not in and of itself persuasive since we
have no evidence of the percentage of the market this
number of baby carriers represents. Id. (“As for the sales
of 10,000 in a two-year period, again there is no evidence
to show whether this is a large number of sales of guitars
Serial No. 75751554
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vis-à-vis the sales of other companies”). Even if these
sales figures were significant, it would not establish that
the applicant’s design was the basis for the success. M-5
Steel Mfg. Co. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1098
(TTAB 2001)(“[W]hile applicant’s sales may demonstrate
popularity or commercial success for its roof vents, such
evidence alone does not demonstrate that the vents’ designs
which applicant seeks to register have become distinctive
of its goods and thus function as source indicators”).
That is, mere sales volume alone does not establish
recognition of a mark and may be readily attributable to
the desire of purchasers to acquire the product.
Also, applicant’s ads do not contain any indication
“that [applicant] has promoted the asserted product designs
as trademarks, and we have no evidence that consumers have
come to recognize applicant’s designs as indications of
origin.” M-5 Steel v. O’Hagin’s, supra, at 1098. It is
not clear if prospective purchasers would even recognize
applicant’s flap design as a trademark, especially since we
observe no “look-for” advertising calling attention to
those features of applicant’s baby carrier which it
maintains is its mark. One unsolicited consumer comment
that applicant’s product is “easily recognizable as a brand
name from afar” is not sufficient to show that applicant’s
Serial No. 75751554
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front flap of its baby carrier has become distinctive and
is a trademark.
We cannot say that applicant’s showing of acquired
distinctiveness is sufficient to demonstrate that, even if
the product design is not considered functional, the design
of the flap has acquired distinctiveness.
Decision: The refusal to register applicant’s design
on the Principal Register on the basis that it is de jure
functional is affirmed. If the mark is not functional, the
refusal to register the mark on the ground that it has not
acquired distinctiveness is also affirmed.