In Re Becton, Dickinson and Co.
675 F.3d 1368
Fed. Cir.2012Background
- BD sought to register the closure cap design for BD's HEMOGARD blood collection tubes as a trademark.
- The PTO examiner refused registration under 15 U.S.C. § 1052(e)(5) for functionality and § 1051-1052/1127 for lack of distinctiveness.
- The Trademark Trial and Appeal Board affirmed, finding the mark, considered in its entirety, is functional and not inherently distinctive.
- BD argued the mark is non-functional as a whole and submitted evidence of patents, advertising, and declarations to prove acquired distinctiveness.
- BD appealed to the Federal Circuit; the court reviewed Board factual findings for substantial evidence and legal conclusions de novo.
- A dissent argues the Board erred by treating functionality on a feature-by-feature basis and by not considering the mark as a whole.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is the mark, taken as a whole, de jure functional? | BD argues the mark as a whole is not dictated by function. | BD's mark is primarily functional due to its utilitarian features. | affirmed |
| Did the Board properly apply Morton-Norwich factors to assess overall functionality? | BD contends the analysis weighed de facto features, not the whole design. | Board properly weighed the four Morton-Norwich factors. | affirmed |
| Did evidence from patents and advertising support a finding of functionality? | BD contends patents and ads show non-functionality or, at least, do not prove de jure functionality. | Patents and ads demonstrate utilitarian advantages and functionality. | affirmed |
| Was there substantial evidence for the Board's finding of lack of alternative designs? | BD argues competitors show alternative designs; thus design is not essential to function. | Record shows no meaningful alternatives sharing the same functional features. | affirmed |
| Did the Board appropriately consider the fourth Morton-Norwich factor on manufacturing costs? | BD presented evidence that design did not lower manufacturing costs. | Evidence on cost impact was insufficient to weigh this factor. | affirmed |
Key Cases Cited
- TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (Supreme Court 2001) (utility patent disclosures support functionality of features)
- Morton-Norwich Prods., Inc. v. Trailmobile, 671 F.2d 1332 (CCPA 1982) (overall design functionality balancing design utility versus distinctiveness)
- In re Teledyne Indus., Inc., 696 F.2d 968 (Fed. Cir. 1982) (de facto functionality analysis aids de jure assessment)
- In re Bose Corp., 476 F.3d 1331 (Fed. Cir. 2007) (functionality and acquired distinctiveness standards clarified)
- Textron, Inc. v. U.S. Int'l Trade Comm'n, 753 F.2d 1019 (Fed. Cir. 1985) (overall design should be evaluated for functionality, not isolated features)
- In re R.M. Smith, Inc., 734 F.2d 1482 (Fed. Cir. 1984) (design patent evidence not conclusive for non-functionality)
- New England Butt Co. v. International Trade Commission, 756 F.2d 874 (Fed. Cir. 1985) (public policy favors competition when design is primarily functional)