Four Morton Norwich / Factors Confirm De Jure / Functionality

In re Becton, Dickinson and Company, [2011-1111] (April 12, 2012) [CLEVENGER, Bryson, Lynn] The Federal Circuit affirmed the TTAB's conclusion that BD's design of a closure cap for blood collection tubes is functional.
DISCUSSION: The functionality of a mark is a question of fact, as are distinctiveness and acquired distinctiveness. The Federal Circuit noted that factual determinations of the Board must be upheld unless they are unsupported by substantial evidence -- evidence a reasonable person might find supports the agency's conclusion. The Federal Circuit said that when a proposed mark includes both functional and non-functional features, the critical question is the degree of utility present in the overall design of the mark. The degree of utility is the difference between de facto functionality --the fact that the product has a function, and de jure functionality -- the fact that the product is in its particular shape because it works better in that shape.
The TTAB applied the four factors from In re Morton-Norwich:

1. The existence of a utility patent
2. Advertising that touts the utilitarian advantages
3. Whether the design results from a comparative simple or inexpensive method of manufacture
4. The availability of alternative designs

and agreed with the Examiner's determination of functionality.  On appeal BD argued that the functional features while disclosed in its patent, were not themselves claimed in the patent.  The Federal Circuit rejected this argument, noting that statements in a patent's specification illuminating the purpose served by a design constitute strong evidence of functionality.  BD also argued that the existence of design patents showed that the design was not functional, but the Federal Circuit found that the presumption of non-functionality loses force when the designs are not the same.  BD tried to characterize its advertising about the functional features as "look for" advertising promoting the design as a mark, but the Federal Circuit found them to be evidence of functionality as a whole.  The Federal Circuit said that where the other factors indicated functionality, there was no need to consider the availability of alternative designs.  The Federal Circuit found no evidence of with respect to whether the design resulted from a comparatively simple or inexpensive manufacturing process.
The public policy against protecting de jure functional designs is not based upon the right to slavishly copy  articles which are not protected by patent or copyright, but the need to copy those articles -- in other words the right to compete effectively.