TTABulator

The core issues in four very interesting consolidated appeals brought by Navy Exchange Service Command (“NEXCOM”) was whether the pixilated pattern in the marks is functional as a matter of law under Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(2).

The mark was described in the applications as in whole, or in part, as consisting of irregular block-shaped pixels in a four-color pattern consisting of black, deck grey, light grey, and navy blue.

The Examining Attorney argued that the marks are functional because they hide stains and wear and tear. Applicant contended there was no evidence to support the refusal, and that any functionality was an incidental feature inherent to any patterned material.

“In general terms, the design or trade dress of a product is functional and cannot serve as a trademark if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”

While the Examining Attorney introduced evidence regarding the Navy’s need for a clean uniform and the like, only one of the references was specifically to the pattern in the marks at issue. The board noted that many other requirements that Navy uniforms that have nothing to do with fabric design. And it concluded, “[q]uite simply, there is nothing in applicant’s statements that persuade us that applicant’s applied-for color pattern design is essential to the Navy’s requirement for a neat and clean uniform.” Applicant also showed that there were numerous other designs available that would similarly mask wear-and-tear and stains.

In sum, the Board found for Applicant:

After carefully considering all the arguments and
evidence submitted by applicant and the examining attorney,
including those not specifically discussed, we cannot
conclude that the examining attorneys have met their burden
of establishing prima facie cases of functionality. In re
R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir.
1984). See also In re Howard Leight Industries LLC, 80
USPQ2d 1507, 1509 n.7 (TTAB 2006) (“In ex parte proceedings
before the Board, … the Office has the initial burden of
establishing a prima facie case of functionality.”). While
the color pattern design in applicant’s marks may perform
the incidental function of masking stains and wear and tear

on the fabric and clothing items identified in the
applications, it need not be devoid of any function in
order to be registrable as a trademark. See In re Morton
Norton Products, supra (the mere fact that a product
configuration has utility, or aspects of a product are
functional, does not render the configuration
unregistrable). The examining attorneys quite simply have
not shown how applicant’s particular color pattern is
functional or how it would hinder competition.

The Board therefore reversed the functionality refusal.  Full opinion available here.

NOTE: Congratulations to counsel for Navy on this matter, Geoffrey McNutt, with whom I served as a trademark examiner at the USPTO!

Raytheon applied to register the mark PAVEWAY for “Laser guided bombs” in 2004.  In 2005, Lockheed Martin filed an Opposition to the application claiming the term was generic.

The Opposition lasted nearly six years. The TTAB sided with Lockheed Martin in September 2011, finding the PAVEWAY mark generic for the goods.  The TTAB proceeding was not appealed by Raytheon.

Jump to October 2012, and Raytheon has still not let go its claim to the term and its dispute with Lockheed Martin.  Raytheon has sued Lockheed Martin for infringement of the PAVEWAY mark in federal District Court.

Some questions:

• What affect will the TTAB ruling have on the District Court?
• Is it significant that Raytheon had the opportunity to appeal, but did not?
• How significant is it that the parties have both used the name for several years?
• Why did Raytheon wait so long to sue for infringement? If they were willing to go to District Court, why not move the action there years ago – before a ruling from the TTAB?
• Have any circumstances or facts changed since the TTAB’s ruling last year?

NOTE: Raytheon in 2010 filed a newer application for a PAVEWAY logo (below). That application has been refused, for now because…. Applicant has been required to “disclaim” the descriptive or generic terms in it.