United States Court of Appeals
for the Federal Circuit
__________________________
(Serial No. 77/254,637)
IN RE BECTON, DICKINSON AND COMPANY
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2011-1111
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Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.
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Decided: April 12, 2012
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RICHARD Z. LEHV, Fross, Zelnivk, Lehrman & Zissu, of
New York, New York, argued for the appellant.
CHRISTINA J. HIEBER, Associate Solicitor, United
States Patent and Trademark Office, of Alexandria,
Virginia, argued for the appellee. With her on the brief
was RAYMOND T. CHEN, Solicitor. Of counsel was AMY
NELSON.
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Before BRYSON, CLEVENGER, and LINN, Circuit Judges.
Opinion for the court filed by Circuit Judge CLEVENGER.
Dissenting opinion filed by Circuit Judge LINN.
IN RE BECTON DICKINSON 2
CLEVENGER, Circuit Judge.
Becton, Dickinson and Company (“BD”) appeals from
the final decision of the Trademark Trial and Appeal
Board (“Board”) affirming the examining attorney’s
refusal to register BD’s design of a closure cap for blood
collection tubes as a trademark on the ground that the
design is functional. BD also appeals the Board’s deter-
mination that the mark has not acquired distinctiveness.
We need not reach the issue of acquired distinctiveness.
Even if the mark had acquired the requisite distinction, it
fails registrability because we affirm the Board’s conclu-
sion that the mark as a whole is functional.
I
BD applied to register with the United States Patent
and Trademark Office (“PTO”) the following mark on the
Principal Register for “closures for medical collection
tubes”:
U.S. Trademark Application Serial No. 77/254,637 (filed
August 14, 2007). The application asserts acquired dis-
tinctiveness based on five years of substantially exclusive
3 IN RE BECTON DICKINSON
and continuous use in commerce. The required descrip-
tion of the mark, as amended, reads as follows:
The mark consists of the configuration of a
closure cap that has [1] an overall stream-
lined exterior wherein the top of the cap is
slimmer than at the bottom and the cap
features [2] vertically elongated ribs set
out in combination sets of numerous slim
ribs bordered by fatter ribs around most of
the cap circumference, where [3] a smooth
area separates sets of ribs. [4] The slim
ribs taper at their top to form triangular
shapes which intersect and blend together
at a point where [5] a smooth surface area
rings the top of the cap above the ribs,
thus [6] extending the cap’s vertical pro-
file. At the bottom, [7] a flanged lip rings
the cap and protrudes from the sides in
two circumferential segments with the
bottom-most segment having [8] a slightly
curved contour. The matter in dotted
lines is not claimed as a feature of the
mark, but shows the tube on which the
closure is positioned.
The numbers in brackets in the description above are not
part of the trademark application, but were used by BD in
conjunction with the following illustration to illustrate
key features of the mark:
IN RE BECTON DICKINSON 4
The examining attorney refused registration under 15
U.S.C. § 1052(e)(5) on the basis that the cap design is
functional and on the basis that even if non-functional,
the cap design is a non-distinctive configuration of the
goods under 15 U.S.C. §§ 1051-1052 and 1127. She fur-
ther found BD’s declaration insufficient to show acquired
distinctiveness under 15 U.S.C. § 1052(f).
As part of the initial office action, the examining at-
torney also issued a request for additional information
pursuant to 37 C.F.R. § 2.61 and required BD to provide
information concerning the cap design, including: whether
it is or has been the subject of either a utility or design
patent application; samples of advertising, promotional,
and/or explanatory materials concerning the cap design;
evidence regarding the availability of alternative designs;
designs used by competitors; and whether the design
results from a comparatively simple or inexpensive
method of manufacture. In response, BD submitted
several of its utility and design patents, samples of adver-
tising materials, and copies of website printouts showing
medical closure caps manufactured by other entities.
Specifically, BD provided these patents in response to the
information requirement: U.S. Patent No. 4,741,446 (filed
Dec. 29, 1986) (“the ’446 patent”); U.S. Patent No.
5 IN RE BECTON DICKINSON
4,991,104 (filed Mar. 19, 1990); U.S. Patent No. 6,602,206
(filed Aug. 16, 2000); U.S. Patent No. D356,643 (filed May
27, 1993); U.S. Patent No. D357,985 (filed May 27, 1993);
and U.S. Patent No. D445,908 (filed Aug. 6, 1999). BD
also submitted numerous advertising samples for its
VACUTAINER® collection tubes with HEMOGARD™
closure—the brand name of the closure cap for which BD
seeks registration. Additionally, BD reasserted that the
cap design has acquired distinctiveness and submitted the
declaration of BD’s chief intellectual property counsel
with exhibits in support of that claim.
The examining attorney issued a final refusal, and BD
filed a Notice of Appeal to the Board, while simultane-
ously filing a Request for Reconsideration. With its
reconsideration request, BD submitted declarations from
two of its product designers in support of its argument
that the cap design is not functional. BD also submitted
eleven customer declarations in support of its argument
that the cap design has acquired distinctiveness. The
examining attorney denied BD’s reconsideration request,
and the appeal proceeded.
After briefing of the appeal was completed but before
a hearing, BD filed a second Request for Reconsideration
and proposed the more detailed mark description stated
above, which the examining attorney accepted. BD filed a
supplemental reply brief, and the Board held an oral
hearing on April 1, 2010. The Board found that the
proposed mark is a configuration of the outer shell portion
of BD’s HEMOGARD™ collection tube closure caps. In re
Becton, Dickinson & Co., No. 77254637, 2010 WL
3164746, at *2 (T.T.A.B. July 27, 2010) (“Board Opinion”).
BD argued that its amended mark description and a
numbered illustration in its reply brief set out the fea-
tures of the cap design, but the Board explained that the
features described in the amended description do not
IN RE BECTON DICKINSON 6
embody the mark in its entirety. Id. at *1-2. The Board
saw additional elements not recited in the mark descrip-
tion, including the circular opening on the top of the cap.
Id. at *2. Thus, the Board concluded that the proposed
mark included all elements shown in the drawing except
the tube, which was shown in dotted lines. Id.
The Board considered the four factors from In re Mor-
ton-Norwich Prods., Inc., 671 F.2d 1331 (CCPA 1982), in
finding that the cap design, considered in its entirety, is
functional. The Board found that the first factor–the
existence of a utility patent (e.g., the ’446 patent) disclos-
ing the utilitarian advantages of the design sought to be
registered–weighed in favor of finding the cap design
functional. The Board found that the ’446 patent ex-
plained the utilitarian advantages of at least two promi-
nent features of the cap design, namely, the circular
opening and the ribs. Board Opinion, 2010 WL 3164746,
at *4-5.
The second factor—advertising by the applicant that
touts the utilitarian advantages of the design—also
weighed in favor of a functionality finding. The Board
agreed with the examining attorney that several parts of
BD’s advertising “extol the utilitarian advantages of
several design features of the proposed mark,” including
(1) the ridges on the side of the cap that allow for a more
secure grip, (2) the flanged lip at the bottom that inhibits
the handler’s ability to roll their thumb to pop off the cap,
thereby reducing the risk of splattering, and (3) the
hooded feature of the cap whereby the bottom of the cap
extends over the top of the tube and thus prevents the
user’s gloves from getting pinched between the stopper
and tube when closing the tube. Id. at *6.
Next, the Board considered the third factor, assessing
whether the cap design results from a comparatively
7 IN RE BECTON DICKINSON
simple or inexpensive method of manufacture. With little
argument or evidence on this factor, the Board found that
it did not favor a finding of functionality. Id. Finally, the
Board considered the fourth factor, regarding the avail-
ability of alternative designs, and found that “the record
does not establish that there are alternative designs for
collection tube closure caps.” The Board considered BD’s
evidence: website printouts featuring three third-party
collection tube products. The Board found one product did
not perform the same function as BD’s goods and there-
fore was not relevant. Regarding the two remaining
third-party products, the Board found them difficult to
characterize as alternative designs because they shared
the same utilitarian features as BD’s cap design, includ-
ing ribs on the side to allow for a better grip and an
opening on the top, rather than discernible contrasting
features. Id. at *7.
Thus, the Board concluded that “the closure cap con-
figuration mark, considered in its entirety, is functional.”
Id. at *4. In conducting the analysis, the Board gave less
weight to less prominent features, such as the exact
spacing or shape of the ribs, because it found them to be
incidental to the overall adoption of those features and
hardly discernible when viewing the mark. Id. at *8. In
this regard, the Board relied on Textron, Inc. v. Interna-
tional Trade Commission, 753 F.2d 1019, 1025 (Fed. Cir.
1985), for the proposition that presence of non-functional
features in a mark would not affect the functionality
decision where the evidence shows the overall design to be
functional. The Board concluded that the overall design
is dictated by utilitarian concerns and that the “‘overall
composite design’ engendered by [BD’s] proposed mark is
functional.” Board Opinion, 2010 WL 3164746, at *8.
The Board in addition found that even if the cap design
was not functional, BD had not met its burden to estab-
IN RE BECTON DICKINSON 8
lish acquired distinctiveness, and so would not be permit-
ted registration, in any event. Id. at *9-12.
On October 26, 2010, BD filed a timely notice of ap-
peal. This court has jurisdiction over this ex parte appeal
of a final decision of the Board pursuant to 28 U.S.C. §
1295(a)(4)(B) and 15 U.S.C. §1071(a)(1).
II
The functionality of a proposed mark is a question of
fact. In re Bose Corp., 476 F.3d 1331, 1334 (Fed. Cir.
2007); Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268,
1273 (Fed. Cir. 2002); Morton-Norwich, 671 F.2d at 1340.
Likewise, distinctiveness and acquired distinctiveness are
questions of fact. In re Slokevage, 441 F.3d 957, 959 (Fed.
Cir. 2006); In re Loew’s Theaters, Inc., 769 F.2d 764, 769
(Fed. Cir. 1985).
Legal conclusions of the Board are reviewed de novo,
but the factual findings of the Board are upheld unless
they are unsupported by substantial evidence. In re Pacer
Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003). Evidence is
substantial if a “reasonable person might find that the
evidentiary record supports the agency’s conclusion.” On-
Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080,
1085 (Fed. Cir. 2000). The possibility that two inconsis-
tent conclusions may be drawn from the evidence does not
preclude a Board finding from being supported by sub-
stantial evidence. Id. at 1086. Rather, where contradic-
tory conclusions may reasonably be drawn from the
evidence, the decision of the Board favoring one conclu-
sion over the other is the type of finding that must be
sustained as supported by substantial evidence. In re
Bayer Aktiengesellschaft, 488 F.3d 960, 970 (Fed. Cir.
2007); In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir. 2002).
9 IN RE BECTON DICKINSON
III
BD presents two challenges to the Board’s conclusion
that the mark as a whole is functional. Its lead argument
posits legal error by the Board in its determination that
certain features of the mark, which are admittedly non-
functional, will not serve to remove the mark as a whole
from the realm of functionality. BD asserts that the
elongated shape of the closure cap, the spacing of the ribs
and their particular shapes, as well as the design rela-
tionship of those features to the whole of the closure cap
are the design embraced by the mark. As such, BD as-
serts that the scope of its mark is “extremely modest and
limited.” Appellant Br. 2, 10. BD does not contest that
the ribs themselves are functional, as is the opening in
the top of the closure cap. These prominent and impor-
tant functional features, which are common to the closure
caps made by BD’s competitors, led the Board to conclude
that admitted non-functional features could not save the
mark from being deemed overall functional. BD contends
that the Board committed reversible error by discounting
the significance of the non-functional elements.
BD’s secondary argument is that the Board’s analysis
of the Morton-Norwich factors is unsupported by substan-
tial evidence. BD appreciates the more deferential stan-
dard of review we apply to its second argument.
A
BD’s first argument fails to recognize that one object
of the Morton-Norwich inquiry is to weigh the elements of
a mark against one another to develop an understanding
of whether the mark as a whole is essentially functional
and thus non-registrable. Whenever a proposed mark
includes both functional and non-functional features, as
in this case, the critical question is the degree of utility
present in the overall design of the mark. This court
IN RE BECTON DICKINSON 10
recognized as much in Morton-Norwich, 671 F.2d at 1338,
where Judge Rich harked back to the design in In re
Deister Concentrator Co., 289 F.2d 496, 506 (CCPA 1961),
in which the design was judged “in essence utilitarian.”
In In re R.M. Smith, Inc., 734 F.2d 1482, 1484 (Fed. Cir.
1984), this court reiterated the importance of the “degree
of utility” proposition, and explained how the distinction
between de facto and de jure functionality gives shape to
a court’s inquiry into a mark’s “degree of utility.”
De facto functionality simply means that a design has
a function, like the closure cap in this case. Such func-
tionality is irrelevant to the question of whether a mark
as a whole is functional so as to be ineligible for trade-
mark protection. De jure functionality “means that the
product is in its particular shape because it works better
in this shape.” Id. Further, as the Board recognized in
this case, Textron instructs that where a mark is com-
posed of functional and non-functional features, whether
“an overall design is functional should be based on the
superiority of the design as a whole, rather than on
whether each design feature is ‘useful’ or ‘serves a utili-
tarian purpose.’” 753 F.2d at 1026. Textron cited as an
example the Coca-Cola® bottle, noting that the bottle’s
significant overall non-functional shape would not lose
trademark protection simply because “the shape of an
insignificant element of the design, such as the lip of the
bottle, is arguably functional.” Id. at 1027. Likewise, a
mark possessed of significant functional features should
not qualify for trademark protection where insignificant
elements of the design are non-functional.
The foregoing authority makes clear that the Board
committed no legal error by weighing the functional and
non-functional features of BD’s mark against each other.
Our functionality precedent indeed mandates that the
Board conduct such an assessment as part of its determi-
11 IN RE BECTON DICKINSON
nation of whether a mark in its entirety is overall de jure
functional. As the court explained in Morton-Norwich,
“we must strike a balance between the ‘right to copy’ and
the right to protect one’s method of trade identification.”
621 F.2d at 1340. To decide as a matter of fact “whether
the ‘consuming public’ has an interest in making use of
[one’s design], superior to [one’s] interest in being [its]
sole vendor,” we are guided by the Morton-Norwich fac-
tors. Id. (citation omitted).
B
To support a functionality rejection in proceedings be-
fore the Board, the PTO examining attorney must make a
prima facie case of functionality, which if established
must be rebutted by “competent evidence.” In re Teledyne
Indus., 696 F.2d 968, 971 (Fed. Cir. 1982). Given the
burden of proof in other areas of trademark law and given
the context here, we understand the “competent evidence”
standard as requiring proof by preponderant evidence.
See, e.g., Yamaha Int’l Corp. v. Hoshino Gakki Co, 840
F.2d 1572, 1576 (Fed. Cir. 1988) (in an inter partes oppo-
sition before the Board, the opposer has the initial burden
to present prima facie evidence that the mark has not
acquired distinctiveness, and then burden shifts to the
applicant to prove acquired distinctiveness by a prepon-
derance of the evidence); Cold War Museum, Inc. v. Cold
War Air Museum, Inc., 586 F.3d 1352, 1356 (Fed. Cir.
2009) (petitioner in a cancellation proceeding bears the
burden of proof and must overcome the registration’s
presumption of validity by a preponderance of the evi-
dence).
In this case, the Board sustained the examining at-
torney’s prima facie determination of functionality, and
rejected BD’s attempt to overcome that determination. As
noted above, the Board did so by conducting its assess-
IN RE BECTON DICKINSON 12
ment of BD’s proposed mark under the familiar Morton-
Norwich factors:
(1) the existence of a utility patent disclos-
ing the utilitarian advantages of the de-
sign; (2) advertising materials in which
the originator of the design touts the de-
sign’s utilitarian advantages; (3) the
availability to competitors of functionally
equivalent designs; and (4) facts indicat-
ing that the design results in a compara-
tively simple of cheap method of
manufacturing the product.
Valu Eng’g, 278 F.3d at 1274 (citing Morton-Norwich, 671
F.2d at 1340-41).
BD challenges the Board’s ultimate factual determi-
nation that the mark as a whole is functional by homing
in on the Board’s Morton-Norwich analysis, arguing that
the Board’s analysis lacks substantial evidence support.
As to the first Morton-Norwich factor, the Board did not
err in finding that this factor weighs in favor of finding
functionality. In TrafFix Devices, Inc. v. Marketing Dis-
plays, Inc., 532 U.S. 23, 31 (2001), the Supreme Court
stated that “the disclosure of a feature in the claims of a
utility patent constitutes strong evidence of functionality.”
As discussed by the Board, claim 4 of the ’446 patent
shows the utilitarian nature of at least two prominent
features of BD’s mark: (1) the two concentric circles at the
top of the closure cap, which allow a needle to be inserted,
and (2) the ribs, which serve as a gripping surface.
BD does not contest the Board’s finding that the ’446
patent teaches the functional benefits of two important
features of its proposed mark. Rather it argues that those
features, while disclosed in the ‘446 patent, were not
themselves claimed in that patent. BD’s argument lacks
13 IN RE BECTON DICKINSON
merit. TrafFix does not require that a patent claim the
exact configuration for which trademark protection is
sought in order to undermine an applicant’s assertion
that an applied-for mark is not de jure functional. Indeed,
TrafFix teaches that statements in a patent’s specification
illuminating the purpose served by a design may consti-
tute equally strong evidence of functionality. See TrafFix,
532 U.S. at 32-33, 34-35. The Board correctly read the
‘446 patent to indicate that at least two of the important
elements of the proposed mark were functional.
BD argues that its design patents are persuasive evi-
dence of the non-functionality of the closure caps’ overall
design. However, while evidence of a design patent may
be some evidence of non-functionality under Morton-
Norwich, “the fact that a device is or was the subject of a
design patent does not, without more, bestow upon said
device the aura of distinctiveness or recognition as a
trademark.” R.M. Smith, 734 F.2d at 1485 (citation
omitted). Furthermore, the design patents BD claims as
evidence of non-functionality do not reflect the specific
design for which trademark protection is sought. Our law
recognizes that the existence of a design patent for the
very design for which trademark protection is sought
“presumptively . . . indicates that the design is not de jure
functional.” Morton-Norwich, 671 F.2d at 1342 n.3.
Absent identity between the design patent and the pro-
posed mark, the presumption loses force, and the “simi-
lar” design patents lack sufficient evidentiary value to
overcome the strong conclusion in this case that BD’s
utility patents underscore the functionality of significant
elements of the proposed mark.
As to the second Morton-Norwich factor, substantial
evidence supports the Board’s assessment of BD’s adver-
tising. BD’s advertising touts the utilitarian advantages
of the prominent features of the mark, such as the top’s
IN RE BECTON DICKINSON 14
circular opening (which maximizes the possible useful
area of the opening), the side’s ribs, and the bottom’s
flanged lip. The advertisements emphasize that the
“ridges on the outer surface permit for a more secure
grip,” and praise the “enhanced handling features” that
are “inherent in the design.” The advertisements explain
that the top’s “plastic shield” is an “important design
innovation that keeps the blood safely contained within
the closure” and “encourages safer opening–discourages
use of the thumb roll technique, which can result in
spattering of the specimen,” and that the “hooded feature
of closure reduces the possibility of catching glove be-
tween stopper and tube on reclosing.” Against this sub-
stantial evidence of functionality, BD offers two
explanations, each of which we reject. First, BD argues
that the designs shown in the advertisements are not
exactly the same as the proposed mark’s design. For
purposes of an overall functionality assessment, this
distinction is without a difference. While the spire-like
tops of the ribs may not be shown in the advertisements,
the arrangement of the ribs along the side of the top and
the shape of the opening are sufficiently like the features
of the claimed mark to show an identity of functionality
between the articles shown in the advertising and the
proposed mark’s prominent features. Second, BD would
characterize the advertisements as “look for” advertis-
ing—the kind that pulls out of an overall article a few
features to catch the viewer’s attention. Thus BD argues
that its advertisements were not really intended to tout
functional aspects of its design, but merely to cause the
viewer to look at one part of a design in particular. This
argument fails. Nothing in the text of the advertisements
underscores this “look for” concept. Instead the adver-
tisements taken as a whole are more than substantial
evidence that the proposed mark as a whole is functional.
15 IN RE BECTON DICKINSON
Indeed, the enlarged photographs of parts of the device
actually highlight the functional aspects of the mark.
As to the third factor, if functionality is found based
on other considerations, there is “no need to consider the
availability of alternative designs, because the feature
cannot be given trade dress protection merely because
there are alternative designs available.” Valu Eng’g, 278
F.3d at 1276. Thus, since the patent and advertising
evidence established functionality, the Board did not need
to analyze whether alternative designs exist. Nonethe-
less, the Board did conduct this analysis and found that
one of the proposed designs was irrelevant and the other
two could not be characterized as alternative designs
because they shared the same utilitarian features of BD’s
design. BD has not shown that this finding is unsup-
ported by substantial evidence.
Finally, as to the fourth factor, there was little record
evidence before the Board to establish whether the cap
design results from a comparatively simple or inexpensive
method of manufacture. The sole evidence in the record
on this factor consists of the declarations of Jaeger and
Newby, two BD witnesses, who both averred that the
design features did not lower the cost of manufacture.
Given this scarce evidence, the Board did not err in refus-
ing to weigh this factor in its analysis.
In New England Butt Co. v. International Trade
Commission, 756 F.2d 874 (Fed. Cir. 1985), we explained
that the public policy underlying the rule that de jure
functional designs cannot be protected as trademarks is
“not the right to slavishly copy articles which are not
protected by patent or copyright, but the need to copy
those articles, which is more properly termed the right to
compete effectively.” Id. at 877 (citing Morton-Norwich,
671 F.2d at 1339). The record in this case shows that
IN RE BECTON DICKINSON 16
BD’s competitors in the closure cap industry also feature
ribs for sure gripping and similar functional openings on
their products. The Board thus concluded that the record
failed to establish that there are meaningful alternative
designs for collection tube closure caps. Board Opinion,
2010 WL 3164746, at *8. Substantial evidence supports
this conclusion, which underscores the competitive need
to copy the functional features of BD’s proposed mark.
Because the Board committed no legal error in its as-
sessment of the functionality of BD’s proposed mark, and
because substantial evidence supports the Board’s find-
ings of fact under the Morton-Norwich factors, we affirm
the final decision of the Board.
AFFIRMED
COSTS
Each party shall bear its own costs.
United States Court of Appeals
for the Federal Circuit
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IN RE BECTON, DICKINSON AND COMPANY
__________________________
2011-1111
__________________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in application
Serial No. 77/254,637.
__________________________
LINN, Circuit Judge, dissenting.
Because the Trademark Trial and Appeal Board
(“Board”) incorrectly applied the legal standards in as-
sessing the functionality of the trademark of Becton,
Dickinson and Company (“BD”), and because substantial
evidence does not support the Board’s conclusion of func-
tionality, I respectfully dissent.
It is undisputed that certain individual features of
BD’s closure cap design are functional, but the evidence
falls short in supporting a conclusion that the mark, as a
whole and as shown in the drawing, is in essence utilitar-
ian, and thus de jure functional. While various individual
features of a mark may be de facto functional if they are
directed to the performance of certain identified functions,
In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1337
(CCPA 1982), de jure functionality is directed to the
appearance of the design (not the thing itself) and is
concerned with whether the design is “made in the form it
2 IN RE BECTON DICKINSON
must be made if it is to accomplish its purpose”—in other
words, whether the appearance is dictated by function.
Morton-Norwich, 671 F.2d at 1338-39 (internal citation
omitted); see TrafFix Devices, Inc. v. Mktg. Displays, Inc.,
532 U.S. 23, 33 (2001) (“[A] feature is . . . functional when
it is essential to the use or purpose of the device or when
it affects the cost or quality of the device.”) (citing
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995)
and Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844
(1982)).
I agree with the majority that the degree of design
utility must be considered in determining de jure func-
tionality. Maj. Op. at 9-10 (citing Morton-Norwich, 671
F.2d at 1338). I part company with the majority, how-
ever, when it approves the Board’s “weigh[ing] the ele-
ments of a mark against one another to develop an
understanding of whether the mark as a whole is essen-
tially functional and thus non-registrable.” Maj. Op. at 9.
The presence of functional features may be relevant, but
not in the sense of comparing dissociated functional
features against non-functional features. The proper
inquiry is to examine the degree to which the mark as a
whole is dictated by utilitarian concerns (functional or
economic superiority) or is arbitrary (“without complete
deference to utility”). See Morton-Norwich, 671 F.2d at
1338-39, 1342-43.
Weighing individual elements of a mark against each
other is analytically contrary to the consideration of the
mark as a whole. As this court has previously held,
“[s]imply dissecting appellant’s alleged trademark into its
design features and attributing to each a proven or com-
monly known utility is not, without more, conclusive that
the design, considered as a whole, is de jure functional
and not registrable.” In re Teledyne Indus., Inc., 696 F.2d
968, 971 (Fed. Cir. 1982).
IN RE BECTON DICKINSON 3
This court’s decision in Morton-Norwich is instructive.
Morton-Norwich sought to register the following design:
671 F.2d at 1334. The examining attorney rejected the
mark on the basis that the design “is no more than a non-
distinctive purely functional container for the goods plus a
purely functional spray trigger controlled closure . . .
essentially utilitarian and non-arbitrary.” Id. at 1335.
The Board similarly concluded that the mark “is dictated
primarily by functional (utilitarian) considerations, and is
therefore unregistrable.” Id. (original emphasis omitted).
Our predecessor court reversed finding that the appli-
cant sought to register “no single design feature or com-
ponent but the overall composite design comprising both
bottle and spray top.” Id. at 1342. Thus, the degree of
design utility was analyzed for the whole mark, not the
dissociated functional elements. Although the bottle and
spray top each served a function, there was a complete
absence of evidence to show that the shape of the bottle
and spray top were required to look as they did to serve
those functions. Id. Indeed, the evidence before the
Board established that the bottle and spray top could take
a number of diverse forms, equally as suitable from a
functional standpoint. Id. The court concluded that there
would be no injury to competition if Morton-Norwich were
entitled to protection of this particular design; competi-
tors could obtain the functions of the container without
copying the trade dress. Id. at 1342-43. In sum, the
4 IN RE BECTON DICKINSON
evidence failed to prove that the overall design was “the
best or one of a few superior designs available.” Id. at
1341.
The facts in the present case are very much like those
in Morton-Norwich. BD seeks protection of the following
mark, with the matter in dotted lines not claimed as a
feature:
As in Morton-Norwich, there is no evidence that the
overall design of the BD closure cap is required to look the
way it does or that the design is “the best or one of a few
superior designs available.” Id. at 1341-42. The Board
and the majority place principal focus on the function
served by certain features of the mark, including, inter
alia, the top’s opening (to allow for the insertion of a
needle), the ribs on the side of the cap (to allow for in-
IN RE BECTON DICKINSON 5
creased grip), and the bottom’s flanged lip (to allow for a
safer opening). These considerations relate to the de facto
functionality of individual product features and not the de
jure functionality of the overall design—whether the
design as a whole must look this way to serve some identi-
fied function. In focusing on the functional attributes of
individual components, the Board and the majority over-
look the arbitrary nature of BD’s overall design.
Even under the improper analysis accepted by the
majority, if the individual attributes with recognized
functions are examined, there is no support for the propo-
sition that the form of those components was dictated by
their function. There is no evidence that: (1) the hole in
the top must be that particular shape and size for a
needle to pass through the opening; (2) the side of the cap
must possess horizontally spaced ribs in the precise
shape, size, and spacing depicted in BD’s design to pro-
vide for increased grip; or (3) the bottom lip must be
flanged and tapered in the precise manner depicted to
avoid being unsafe.
While the proposed mark must be examined as a
whole, evidentiary concerns allow the Patent and Trade-
mark Office (“PTO”) to establish a prima facie case of
functionality by analyzing de facto functional features of a
design. Teledyne, 696 F.2d at 971 (“We recognize that in
most cases . . . the best the PTO can probably do is to
analyze a design from the standpoint of its de facto func-
tional features.”); Textron, Inc. v. U.S. Int’l Trade
Comm’n, 753 F.2d 1019, 1026 (Fed. Cir. 1985) (following
Teledyne, 696 F.2d at 971); see In re R.M. Smith, Inc., 734
F.2d 1482, 1484 (Fed. Cir. 1984) (following Teledyne, 696
F.2d at 971). The burden then shifts to the applicant to
rebut the prima facie case of functionality. Teledyne, 696
F.2d at 971 (“Determination that the design as a whole is
not de jure functional may well be possible only in light of
evidence more readily available to, or uniquely in the
6 IN RE BECTON DICKINSON
possession of, the applicant.”). However, the ultimate
determination of de jure functionality still requires a
consideration of the design as a whole. Id.; Textron, 753
F.2d at 1026 (following Teledyne, 696 F.2d at 971).
Here, the examiner focused on functional features to
establish a prima facie basis for the rejection and BD, in
turn, submitted evidence on functionality to rebut that
rejection. While the Board and the majority correctly cite
the Morton-Norwich factors to determine the functionality
of the overall design based on the evidence presented,
Maj. Op. at 11-12 (quoting Valu Eng’g, Inc. v. Rexnord
Corp., 278 F.3d 1268, 1274 (Fed. Cir. 2002)); In re Becton,
Dickinson & Co., No. 77254637, 2010 WL 3164746, at *4
(T.T.A.B. July 27, 2010) (“Board Opinion”) (citing Morton-
Norwich, 671 F.2d), both the Board and the majority fail
to consider the design as a whole in analyzing these
factors. Maj. Op. at 12-15; Board Opinion, 2010 WL
3164746, at *4-8.
First, while the Board and the majority put great
weight in the existence of a utility patent, U.S. Patent No.
4,741,446 (“the ’446 Patent”), that patent fails to illumi-
nate the functionality inquiry. The Supreme Court recog-
nized that “[a] utility patent is strong evidence that the
features therein claimed are functional.” TrafFix, 532
U.S. at 29 (2001). However, the ’446 Patent claims none
of the features of BD’s design mark. Specifically, the
claims of the ’446 Patent do not cover the appearance or
pattern of the ridges, the flanged lip, or the top opening of
BD’s design. See ’446 Patent col.8 ll.23-29 (“(f) a flexible
cap body for mounting on said stopper body; (g) said cap
body having an open end and a substantially closed end; .
. . (i) said closed end having a needle receiving bore in the
top surface thereof . . . .”).
Second, the majority correctly notes that the adver-
tisements tout the features of BD’s design that serve a
IN RE BECTON DICKINSON 7
functional purpose, which weighs against a finding of non-
functionality. Maj. Op. at 13-14. However, the adver-
tisements do support the finding of non-functionality
based on the third Morton-Norwich factor: the presence of
alternative designs. While the majority finds no rele-
vance in the fact that the designs featured in BD’s adver-
tisements were not exactly the same as the current mark,
see id., this fact indicates the existence of alternative
designs that are nonetheless functionally identical.
Addressing the third Morton-Norwich factor, the
Board and the majority discounted the most probative
evidence submitted in this case—the design patents and
evidence of alternative designs. Because “the effect upon
competition is really the crux of the matter, it is, of
course, significant that there are other alternatives avail-
able.” Morton-Norwich, 671 F.2d at 1341 (internal quota-
tion omitted).
The three design patents noted by the majority are
not identical to the specific design for which trademark
protection is sought. Maj. Op. at 13. However, the fact
that three distinct design patents were granted on simi-
lar, but not identical, designs performing the same overall
function as the current design at issue suggests that the
current design is not “made in the form it must be made if
it is to accomplish its purpose.” Morton-Norwich, 671
F.2d at 1339 (internal citation omitted). If a design
patent can show that one design in a group of functionally
identical alternative designs is non-functional, the entire
class of arbitrary alternative designs is likely non-
functional.
Moreover, the court in Morton-Norwich noted that the
presence of a design patent, even when a utility patent
exists, presumptively indicates a design is de jure non-
functional. 671 F.2d at 1342 n.3. The majority references
In re Smith for the proposition that a design patent “does
8 IN RE BECTON DICKINSON
not, without more, bestow upon said device the aura of
distinctiveness or recognition as a trademark.” In re
Smith, 734 F.2d at 1485 (quoting In re Honeywell Inc.,
187 U.S.P.Q. 576, 578 (T.T.A.B. 1975)). However, the
same case also notes that “[e]vidence of distinctiveness is
of no avail to counter a de jure functionality rejection.”
Id. at 1484-85. Also, even In re Smith states that “[t]he
existence of a design patent may be some evidence of non-
functionality.” Id. at 1485.
Further, the Board and the majority wholly disre-
garded the evidence submitted by BD of alternative
designs utilized by BD’s competitors. The majority is
correct that there is no need to consider alternative de-
signs when functionality has been established, Maj. Op.
at 15; however, “that does not mean that the availability
of alternative designs cannot be a legitimate source of
evidence to determine whether a feature is functional in
the first place.” Valu Eng’g, 278 F.3d at 1276. In this
case, the Board disregarded two alternative designs—
designs actually used by BD’s competitors—because it
found that they shared the same utilitarian features and
were therefore not “alternative designs.” See Maj. Op. at
15. The disqualification of an alternative design because
it shares the same utilitarian features is unsupported by
law. See Morton-Norwich, 671 F.2d at 1342
(“[C]ompetitors may even copy and enjoy all of [the de-
sign’s] functions without copying the external appearance
of appellant’s spray top.” (emphasis added)). In fact, this
evidence strongly suggests that BD’s design is not func-
tional because BD faces competition from products with
similar functionality, yet differing designs. As in Morton-
Norwich, BD’s “[c]ompetitors have apparently had no
need to simulate” BD’s product design “in order to enjoy
all of the functional aspects” of a closure cap. Id. at 1342
(emphasis in original). Any concern that BD will unfairly
assert its mark against these competitors rings hollow
IN RE BECTON DICKINSON 9
when BD, in seeking protection of this mark, has already
distinguished those designs of its competitors.
Finally, the Board may not ignore the fourth Morton-
Norwich factor—whether the design results from a less
expensive method of manufacture—when evidence was
presented on it. There were undisputed statements from
BD indicating that the design did not result from reduced
costs of manufacture. This uncontroverted evidence
should have been taken into consideration in the Board’s
weighing of the factors. While the majority characterizes
this as “little record evidence,” Maj. Op. at 15, it is evi-
dence that must be considered nonetheless.
Because the Board committed legal error in failing to
analyze the functionality of BD’s mark as a whole and
lacked substantial evidence for its findings, I would
reverse the Board’s decision on functionality. On the
functionality determination, I therefore respectfully
dissent.
Because the Board’s analysis of acquired distinctive-
ness was influenced in material respects by its legally
erroneous finding of functionality, see Board Opinion,
2010 WL 3164746, at *9, I would vacate that portion of
the Board’s opinion and remand for reconsideration.