Applicant Buff and Shine cruised past a Section 2(e)(5) functionality refusal but failed to garner the Section 2(f) checkered flag in its attempt to register the product configuration shown below as a trademark for “machine parts, namely, polishing discs for rotary machines, random-orbit machines, and other surface preparation machines for vehicles.” In re Buff and Shine Manufacturing, Inc., Serial No. 88737597 (September 12, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington).
According to the application, “The mark consist[s] of a three-dimensional configuration of a polishing disc that includes a repeating pattern of hexagonal (or honeycomb) shapes on a front surface of the disc. The broken lines on the outer image and within the honeycomb pattern indicate placement of the mark on the goods and is not a part of the mark.”
Functionality: The Board considered the ever-popular Morton-Norwich factors, deemed “helpful in determining whether a particular design is functional:”
- (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.
As to the first factor, there were no pertinent utility patents of record, but there was a design patent owned by the applicant. Citing In re Becton, Dickinson, the Board found the design patent to be some evidence of non-functionality, but not dispositive of the issue. The Board noted a prior utility patent application owned by applicant, but found that the claims had no bearing on the proposed mark. [Note: Becton, Dickinson says that you should look at the specification as well as the claims – ed.]
As to the second factor, the evidence included advertising for Applicant’s product stating that the “hex pattern” is a means of keeping the polishing pad cooler when polishing surfaces. The Board found that. although the goods have “the ability to dissipate heat, this is attributed to the fact the pads are textured, and not a result of the repeating hexagonal design. In other words, the design is not ‘essential to the use or purpose’ of the polishing pads.”
As to the third factor, the evidence showed alternative, functionally-equivalent designs that are available to applicant’s competitors,. “Although not essential to our decision, this weighs in favor of finding the proposed mark is not functional.”
As to the fourth factor, the examining attorney did not refute applicant’s assertion that its product design does not help minimize the cost or simplify the manufacture of polishing discs.
And so, the Board reversed the Section 2(e)(5) refusal.
Acquired Distinctiveness: Since product designs are never inherently distinctive, applicant had to prove acquired distinctiveness under Section 2(f). Buff and Shine did not submit customer survey evidence or any declarations from actual purchasers, nor any evidence regarding the amount of sales or proof of its relevant market share.
Buff and Shine claimed use of the proposed mark since at least 2009, but it offered no “look for” advertising directing consumer attention to the design. Third-party Internet references to applicant’s products did not refer to the repeated hexagonal design as an indicator of source, but at best touted that “a particular design that works well in this configuration.” Statements made by consumers referred to applicant’s “Hex-Logic” mark but not to the repeating pattern on the product.
In sum, the totality of the evidence falls woefully short of showing that the consuming public has come to understand the hexagonal design as an indicator of source. Noticeably absent is any statement, solicited or unsolicited, from a consumer of polishing discs attesting to the belief that the repeating hexagonal design is an indicator of source with respect to Applicant’s goods.
And so, the Board concluded that applicant had failed to prove acquired distinctiveness, and it affirmed the refusal to register on the ground that the proposed mark fails to function as a trademark.