(concurring).
While I agree with the remand of this case to the board for its views on the examiner’s functionality rejection, without any decision by us on the merits at this time, I am constrained to concur only in that result because of some of what the majority opinion says.
I do, however, fully agree with the majority opinion’s views on the jurisdictional, or reason of appeal, issue.
I also fully agree with its disapproval of the board’s reasoning and I adhere to all that we said in our 1964 Mogen David opinion.
The majority opinion states that the remand is to give the board an “opportunity” to express its views on “the functionality reasoning relied upon by the examiner.”
What is meant by “the functionality reasoning” of the examiner is not too clear. In his Answer, the examiner reasoned in various ways. He held that what is sought to be registered is “incapable of performing the function of trademark”; that it “comprises merely the basic, circular shape of the thermostat”; that “the details claimed as a mark are merely circular bands, dictated by the shape of the instrument”; that they are “without such distinguishing characteristics as to function as a trademark”; that “is merely the configuration of the goods”; that it “is basically functional in nature”; that it is “not capable of indicating origin or serving as a trademark”; that “only de facto secondary meaning, if any, has been acquired”; that it “is so fundamentally functional and utilitarian that the matter applied for is incapable of acquiring a legally recognizable second meaning or of becoming an enforceable trademark”; and that “the shape is in essence utilitarian.”
The examiner relied on the preamble to Sec. 2 of the Trademark Act (15 U.S.C. § 1052) and on Sec. 45 (15 U.S.C. § 1127), presumably the definition therein of “Trademark.” He also relied on In re Deister Concentrator Co., 289 F.2d 496, 48 CCPA 952 (1961), as involving “just such a situation” as this case presents.
I deem all of the foregoing to be encompassed by the term, “the functionality reasoning.”
Because the board — although it has already had the “opportunity to do so”— chose not to discuss or rely on any of the foregoing reasoning of the examiner in affirming his rejection, the appeal to us was virtually based only on the board’s own design patent expiration ground and the parties therefore did not brief the “functionality” question. All appellant’s brief says on the subject is that there is no “functionality” issue here and then makes the bald assertion:
It is Honeywell’s position that the trademark elements are so clearly non-functional as to be self-evident to the court.
If the case had come here with a “functionality” issue in it and that issue had been briefed, I would feel that, since it is a question of law, we should decide it now and not remand. But, in the present posture of the case, I think the board should be required to state the extent, if any, of its agreement with the examiner’s views so that appellant can then fully brief this issue on the basis of a board decision and the Solicitor can respond thereto. I regard the non-functionality urged by appellant as anything but “self-evident.”
I further regard the so-called “functionality reasoning” of the examiner as involving distinct questions: (1) Is the subject matter sought to be registered a “trademark” within the meaning of the statute? (2) In what way is that subject matter functional or utilitarian, factually or legally? (3) Following Diester-type reasoning, iif there is de facto “secondary” meaning, because no competitors are making “little round” thermostats, should it be given de jure recognition which would prevent them from doing so?
*1351With respect to appellant’s contention that what is sought to be registered is merely “a portion of the configuration of a thermostat cover,” (my emphasis) I call attention to appellant’s own application description reading:
The trademark * * ■ * consists * * * of the * * * combination of an outer cover ring of a thermostat and a center disc positioned concentrically within said ring, said ring and disc comprising a portion of the configuration of a thermostat. (My emphasis.)
The application drawing shows the disc to be transparent and the specimen shows it as a rotatable control dial serving as a window through which a thermostat scale and a temperature setting scale are visible. These are not merely parts of a cover. On this point, I note the board’s statement, made in the course of its attempt to distinguish Mo-gen David, that appellant “is seeking to register the design of the product for the product itself.” The product is a thermostat. The design constitutes the appearance of practically the entire visible portion of an object commonly known as a thermostat.
I think it appropriate to point out for consideration the fact that functionality, ornamental appearance, and good industrial design are matters which are closely intermingled. The very best of modern product design has long been called “functional design.” See, for example, the definitions of “functional” and “functionalism” in The Random House Dictionary of the English Language (1967) and in Webster’s Third New International Dictionary.
I discussed at great length the principles which I see as applicable to this case thirteen years ago in Deister. As to the board’s action in the present ease, I advert to the statement in Deister that “we are not seriously concerned with whether he who claims trademark rights of unlimited duration now has or did have patent protection, or what that protection was.” I also discussed how we must go about determining when subject matter such as that here involved will be regarded as a trademark, when it will not, and why it will not. But these are points on which, as related to the facts of this case, which differ from Deister facts, we should be briefed before we decide on registrability.