Bose Corporation

Trademark Trial and Appeal Board

Oct 4, 2005

No. 74734496re (T.T.A.B. Oct. 4, 2005)

Mailed:
October 4, 2005
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bose Corporation
________

Serial No. 74734496
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Request for Reconsideration
_______

Charles Hieken of Fish & Richardson P.C. for Bose
Corporation.

Glenn G. Clark, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______

Before Hairston, Bucher and Drost, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
The Board, in a final decision dated July 12, 2005,
affirmed the refusal to register the following product
design for “loudspeaker systems,”

on the grounds that under the doctrine of res judicata,
applicant has already had a full and fair opportunity to
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 74734496
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prosecute this proposed mark for identical goods, and that
the proposed design still consists of a de jure functional
configuration of a loudspeaker system.1
In its request for reconsideration, applicant alleges
that this Board: failed to follow critical legal
precedents, overlooked the fact that the curved front
edges of the speaker enclosure are not functional, and
ignored testimony that alternative speaker designs would
be less expensive. This opinion presumes familiarity with
our final decision, and briefly explains why, contrary to
applicant’s allegations, we did not overlook relevant law
and facts in reaching our earlier decision on this matter,
and hence, deny applicant’s request for reconsideration.
In finding this design to be a de jure functional
configuration, we noted the importance of the first factor
of the Morton-Norwich test2, i.e., the existence of a
utility patent that discloses the utilitarian advantages

1 Application Serial No. 74734496 was filed on September 26,
1995, based upon applicant’s allegation of first use and first
use in commerce at least as early as September 1976. The
application, as amended, contains a statement that the lines and
stippling in the drawing are features of the mark and do not
indicate color. In the course of prosecution, applicant has
described this product design as consisting of “an enclosure and
its image of substantially pentagonal cross section with a
substantially pentagonal-shaped top with a curved front edge
parallel to a substantially pentagonal-shaped bottom with a
curved front edge.”
2 From the oft-cited case of In re Morton-Norwich Products,
Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982).
Serial No. 74734496
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of the design sought to be registered. Applicant’s two
expired utility patents repeatedly disclose the
utilitarian advantages of this particular design. For
example, Claim 12 of applicant’s Patent No. 3,582,553
claims “[a] loudspeaker system … wherein said rear baffles
are contiguous flat panels forming an angle, and said
loudspeaker cabinet comprises a pair of side panels each
interconnecting a respective normally vertical edge of
said front panel with a normally vertical edge of a
respective rear baffle flat panel to define said internal
volume as of pentagonal cross section and interconnecting
generally parallel top and bottom panels to coact
therewith and define said internal volume.” [Emphasis
added.]
Accordingly, this patent explicitly claims the
pentagonal shape of the applied-for design. We found that
the pentagonal shape of the loudspeaker enclosure and the
precise placement on the back panels of eight full-range
drivers, as claimed in applicant’s expired patents, have
inherent utilitarian value and continue to be the
essential features of these speakers.
The United States Supreme Court has reaffirmed that,
if the product configuration sought to be registered as a
Serial No. 74734496
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mark is the subject of a utility patent that discloses the
feature’s utilitarian advantages, the applicant bears an
especially heavy burden of overcoming the strong
evidentiary inference of functionality:
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.
Where the expired patent claimed the
features in question, one who seeks to
establish trade dress protection must carry
the heavy burden of showing that the
feature is not functional, for instance by
showing that it is merely an ornamental,
incidental, or arbitrary aspect of the
device.

TrafFix Devices, Inc. v. Marketing Displays, Inc., 532
U.S. 23, 58 USPQ2d 1001, 1005 (2001). Therefore, we
correctly found that applicant’s proposed mark is
functional.
Applicant objects strenuously to our finding that
there is a critical difference in how its configuration
evolved as contrasted with the configuration litigated in
the case of In Re Honeywell Inc., 8 USPQ2d 1600 (TTAB
1988), a decision that applicant has made the centerpiece
of its arguments in the instant case. We stated that:
Serial No. 74734496
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[t]he Honeywell record shows that the round
configuration was chosen for source-
indicating purposes, and that then the
other components were designed to fit the
round configuration. Here, the pentagonal
shape is a clear derivative of the angled
rear panels that are integral to the
utility patents herein.

Slip opinion, p. 12. As this panel discussed in our July
decision, applicant’s patented technology requires that
the drivers be directed at specific angles in a specially
shaped enclosure. “It is obvious that if the back of a
conventionally shaped speaker cabinet is replaced with two
angled panels, this results in a pentagonally shaped
enclosure.” In re Bose Corporation, 215 USPQ 1124, 1126
(TTAB 1982).
Applicant does not deny that the patented technology
requires a functional configuration, namely that the
drivers be placed into two panels connected at a precise
angle (e.g., 120°) in a specially-shaped enclosure.
Moreover, the explicit claims of applicant’s expired
patents provide strong evidence of the functionality of
the configuration design in the present case when one
focuses on whether this is a comparatively simple or
inexpensive method of manufacture:
The present invention relates in general to
loudspeaker systems and more particularly
concerns a novel compact loudspeaker system
Serial No. 74734496
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that is compact and relatively easy and
inexpensive to manufacture and provides
realistic reproduction of sound with
negligible distortion. [Emphasis
supplied.]

Applicant’s ‘553 utility patent, LOUDSPEAKER SYSTEM,
column 1. As was the case in the TrafFix decision,
statements made in Bose’s patent applications demonstrate
the functionality of the design, and Bose does not assert
in later testimony that any of these representations are
mistaken3 or inaccurate. See TrafFix at 1006.
Applicant, in its request for reconsideration,
continues to make much of the Morton-Norwich factor tied
to the availability to competitors of feasible alternative
designs – i.e., whether the design is superior to other

3 The testimony of Dr. Bose [Bose Corp. v. Consumers Union,
February 26, 1980 (D.C. Mass)], in the context of confusion over
what forms of intellectual property were implicated by this
design configuration, equivocates (“yes,” “no … some
consequences”) but certainly does not repudiate the claims made
in the patents as to the functional nature of the pentagonally-
shaped speaker enclosure:
The Court: Tell me, does [the speaker shape]
have any acoustical significance?
The witness: Yes, it does. The shape itself,
your Honor?
The Court: Yes, the pentagonal shape itself,
does it have an acoustical significance?
The witness: No, the pentagonal shape itself
does not. There are some consequences of it,
but I don’t know how to answer that.

Serial No. 74734496
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designs, such as a rectangular or triangular design for
the speaker enclosure.
The pentagonal shape of this enclosure and the
precise placement on the back panels of eight full-range
drivers are the reasons applicant claims the device works
as it does, so detailed speculation about other designs
need not be undertaken, according to the Supreme Court in
the TrafFix decision:
There is no need, furthermore, to engage,
as did the Court of Appeals, in speculation
about other design possibilities, such as
using three or four springs which might
serve the same purpose. 200 F.3d, at 940.
Here, the functionality of the spring
design means that competitors need not
explore whether other spring juxtapositions
might be used. The dual-spring design is
not an arbitrary flourish in the
configuration of MDI’s product; it is the
reason the device works. Other designs
need not be attempted.

Because the dual-spring design is
functional, it is unnecessary for
competitors to explore designs to hide the
springs, say by using a box or framework to
cover them, as suggested by the Court of
Appeals. Ibid. The dual-spring design
assures the user the device will work. If
buyers are assured the product serves its
purpose by seeing the operative mechanism,
that in itself serves an important market
need. It would be at cross-purposes to
those objectives, and something of a
paradox, were we to require the
manufacturer to conceal the very item the
user seeks.

TrafFix at 1007.
Serial No. 74734496
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As noted in this panel’s July decision, the Supreme
Court in TrafFix reaffirms the traditional rule of Inwood
Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S.
844, 214 USPQ 1 (1982), that “a product feature is
functional if it is essential to the use or purpose of the
article or if it affects the cost or quality of the
article.” 532 U.S. at 32, 58 USPQ2d at 1006.
Regarding the third Morton-Norwich factor, the
Federal Circuit has explained that “the [Supreme Court in
TrafFix] 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.”
Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 61
USPQ2d 1422, 1427 (Fed. Cir. 2002). Consistent with this
analysis, the Board earlier explicitly took the position
that the availability of certain other shapes for speaker
enclosures did not detract from the functional character
of the involved configuration. In re Bose Corporation,
215 USPQ at 1127.
It is certainly not determinative of the result
herein whether or not it is easier or less expensive, for
Serial No. 74734496
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example, to manufacture the pentagonally-shaped speaker
enclosure claimed in Bose’s patent, as applicant has for
decades, or to design a hypothetical Bose 901 speaker
having conventional rectangular top and bottom panels, and
then wrapping grill cloth completely around the back
portion of the speaker – in a manner that hides the V-
shaped portion within a rectangular enclosure.
In this context, we reiterate that we clearly did not
overlook the law on functionality as recently set out by
the Supreme Court in TrafFix, and we did not overlook any
evidence in the current record. Rather, we explicitly
considered the testimony before a Federal District Judge
given by Dr. Bose and Mr. Greenblatt. We accept the fact
that although applicant has not chosen to do so, it could
have hidden its patented technology inside a differently
shaped enclosure.
Q: What other shapes could it be?
A: It could be triangular cross-section,
increased height. That is one way. It
could have more panels, more different
facets, more that pentagonal.
Q: Did Bose consider making it other than
a pentagonal shape?
A: Yes; we considered making it
rectangular, to look like conventional
speakers.
Q: How would you have done this?
Serial No. 74734496
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A: We would have made the top and bottom
plates rectangular and wrapped grill cloth
completely around the system enclosing the
V-shaped portion inside.

We also considered applicant’s drawings showing
hypothetical designs of a rectangular shape and a
triangular shape drawn around the current speaker
enclosure configuration:

However, judging by any measure of aesthetics,
marketability, increased manufacturing costs of the
additional materials, much heavier speakers or incredible
inefficiencies in shipping, this awkward triangular
structure must be deemed “unfeasible, uneconomical or
otherwise disadvantageous.” In re Bose Corporation, 215
USPQ at 1127.
Serial No. 74734496
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In finding that Bose’s appeal was barred by claim
preclusion, we stated:
The applicant herein is identical to the
applicant in the earlier proceeding, the
Court of Appeals for the Federal Circuit
rendered a final decision in that action on
the issue of de jure functionality of the
same product configuration as is before us
in this proceeding, and no conditions,
facts or circumstances of consequence to
the issue of de jure functionality have
changed since that earlier, adverse
decision. Hence, we affirm the refusal of
the Trademark Examining Attorney to
register this matter based upon the
doctrine of res judicata.

Slip opinion, p. 16.
In its request for reconsideration, applicant argues
that we “overlooked key reasons” for rejecting the
doctrine of res judicata contained in Board precedent.4
Specifically, applicant continues to argue, as it did
in its main brief on appeal, that the circumstances have
changed since Bose’s earlier, adverse decisions.
Applicant continues to emphasize the “curved front edge”
of the speaker enclosure. However, we found that this

4 See In Re Honeywell Inc., 8 USPQ2d 1600 (TTAB 1988). In
addition to distinguishing this case on its facts, we pointed
out that the Seventh Circuit’s affirmance in Eco Manufacturing
LLC v. Honeywell International Inc., 357 F.3d 649, 69 USPQ2d
1296 (7th Cir. 2003), aff’g 295 F.Supp.2d 854 (S.D. Ind. 2003),
seriously undercuts the rationale of the Board’s 1988 Honeywell
decision that applicant has made the centerpiece of its argument
in the instant case against our finding res judicata as to the
issue of de jure functionality.
Serial No. 74734496
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does not represent a change from the applied-for matter in
the earlier-filed application. While clearly present in
the drawing involved in the earlier litigation, applicant
never argued that this was a notable feature of its
claimed mark.5 Bose’s images shown on the drawings in
these respective applications are substantially identical.
As to an additional twenty years of usage of this
product design since the adverse decisions, while this
period of usage may provide support for applicant’s claims
of acquired distinctiveness, any positive change in the
levels of de facto recognition by consumers of the design
of this speaker enclosure has no impact upon the
conclusion that the design is de jure functional. We
noted that applicant clearly “has not made the argument
that the relevant laws of physics have changed over the
past twenty years.” A design feature that is shown by way
of an exhaustive analysis of a utility patent to be de
jure functional does not become not de jure functional by
the passage of time, more promotional efforts or increased

5 Moreover, Bose’s “curved front edge” is not analogous to
the hypothetical “case where a manufacturer seeks to protect
arbitrary, incidental, or ornamental aspects of features of a
product found in the patent claims, such as arbitrary curves in
the legs or an ornamental pattern painted on the springs [of
sign stands]….” TrafFix at 1007. The Court’s discussion to
which applicant analogized is to a manufacturer seeking separate
trademark protection for a discrete trade dress flourish that
may be shown on a patent drawing, for example.
Serial No. 74734496
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sales. This too is consistent with the Supreme Court’s
holding in the TrafFix decision:
Functionality having been established,
whether MDI’s dual-spring design has
acquired secondary meaning need not be
considered.

Id. at 1007.
Therefore, we correctly found that Bose’s appeal was
barred by claim preclusion.
Decision: The final decision dated July 12, 2005, in
which we affirmed the refusals to register the
configuration of a loudspeaker system based on the grounds
that the proposed design is de jure functional and under
the doctrine of res judicata, stands. Applicant’s request
for reconsideration is hereby denied.