Product Configuration Mark Not Functional for Services

In Duramax Marine, LLC v. R.W. Fernstrum & Co., Opposition No. 91119899 (August 4, 2006), the U.S. Trademark Trial and Appeal Board dismissed the opposer's claim that the proposed mark (below) is functional for "manufacture of marine heat exchangers to the order and specification of others"

The mark was the admitted equivalent of the drawing of a keel cooler configuration in the applicant's expired U.S. Patent No. 4,338,993. According to Administrative Trademark Judge Rogers,

We do agree with applicant, however, that there is a significant difference between an application to register trade dress in the nature of product design as a mark for the product itself (e.g., applicant's abandoned configuration application) and an application to register a two-dimensional drawing that may look very much like such a product, but is used on labels, catalogs, brochures, and in various other ways as a mark for services. . . .

The vast majority of the functionality cases deal with product design or product packaging. . . . We recognize that the instant case is significantly different from the Fotomat cases, and from similar cases involving trade dress in the nature of building design (interior or exterior) claimed to be a mark for services. Specifically, in the case at hand, the services are not restaurant services or retail sales of photographic products, but are custom manufacturing of a specific type of item, once-patented, for which the patent has expired.

Applicant's competitors or would-be competitors, save for the voluntary restriction opposer took on itself via the settlement agreement, are free to manufacture the once-patented item; and even are free to manufacture the item in varying sizes, to the order and specification of customers. Thus, the case at hand presents, more than cases involving restaurant or retail kiosk trade dress, a much closer question regarding whether any manufacturer of the formerly patented item should be free to utilize, in advertising its goods for sale, a realistic depiction of the item.

Opposer has advanced some compelling arguments why applicant should not be permitted to register what is in essence the two-dimensional depiction of the formerly patented product that appeared in the patent itself, even for services. Nonetheless, we must balance against opposer's argument for the extension of existing case law on functionality what is shown by the record to be long use of the keel cooler depiction by applicant in the manner of a logo.

Further, opposer has not discussed whether, when custom manufacturing services are involved, we should still apply the TrafFix test for functionality (a three-dimensional product design is functional if it is "essential to the use or purpose of the product or if it affects the cost or quality of the product") to the product that results from purchasing the services, or whether the test should be adapted and focus on whether use of the two-dimensional design to be registered is essential to anyone who would provide the same service, or would, if unavailable, affect the cost or quality of the service.

Opposer has failed to persuade us that an extension of existing law to cover the circumstances of this case is warranted. We decline to sustain the opposition on opposer's claim of functionality. We add, however, that our decision does not foreclose the extension of TrafFix to service marks if circumstances in a future case warrant such an extension.