On May 20, 2021, the TTAB issued a lengthy and comprehensive precedential opinion canceling Proof Research, Inc.’s registration for the trade dress of a gun barrel (as shown below) on grounds of de jure functionality under Section 2(e)(5).

The registered trade dress “consists of trade dress applied to gun barrels formed with a mottled pattern of irregularly-sized, rippled patches, resembling a quilt having striated patches of varying shapes and reflectivity depending on the ambient light source and viewing angle.”

Petitioner McGowen Precision Barrels, LLC sought cancellation of the registered trade dress on five different grounds—namely that (1) the mark “comprises matter that, as a whole is functional,” (2) the Registration “encompasses more than one mark,” (3) the “trade dress encompassed in [the] Registration … is generic,” (4) the trade dress is aesthetically functional, and (5) the Registration was obtained through fraud. [Opinion, at p. 2]. The TTAB did not reach grounds #2-5, relying, in large part, on Proof Research’s own utility patent to find the trade dress functional. [Id., at p. 3].

Significantly, the parties did not dispute carbon fiber composite barrels provide various functional benefits for rifles.  Instead, the focus of the dispute centered on whether the specific appearance of Proof Research’s carbon fiber composite barrels is functional as a natural by-product of the manufacturing process or whether it is  the result of aesthetic efforts to create a trade dress consumers associate with Proof Research.

The TTAB began its analysis noting, “A product design or feature is considered functional in a utilitarian sense if: (1) it is ‘essential to the use or purpose of the article,’ or (2) it ‘affects the cost or quality of the article.’ [Id., at p. 37 (citing TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982))].  If functionality of the trade dress is established under the Inwood test, an analysis of all types of Morton-Norwich evidence is unnecessary. [Id., at n. 193].

In reaching its decision that the trade dress was functional, the TTAB relied heavily on Proof Research’s utility patent, citing well-settled law that “‘[a] prior [utility] patent … has vital significance in resolving the trade dress claim’ and ‘is strong evidence that the features therein claimed are functional.’” [Id., at p. 39 (quoting TrafFix, 58 USPQ2d at 1005)].  Following a thorough examination of the claims in Proof Research’s utility patent, the TTAB held that Proof Research’s trade dress was the result of a manufacturing process that followed a specific claim of the utility patent:

The TTAB further found the particular appearance of the trade dress resulted from Proof Research’s implementation of the “best mode” for practicing its patented invention. [Id., at pp. 40-41]. “In other words, the appearance of the barrel is dictated by its function.” [Id., at p. 56].

The TTAB ultimately concluded, as follows: “‘[W]e view the disclosures in the [’117] Utility Patent as so strong as to be sufficient, by [themselves], to sustain the functionality refusal without consideration of the other Morton Norwich categories of evidence.’ In re OEP Enters., Inc., 2019 USPQ2d 309323, *10-11 (TTAB 2019). See also Grote Indus., 126 USPQ2d at 1203. Simply put, the patent evidence, combined with the evidence regarding Respondent’s manufacturing process, is dispositive on the issue of functionality.” [Id., at p. 65]. In view of this analysis the TTAB cancelled the Registration under Section 2(e)(5).

The TTAB’s decision is a stark reminder that a risk in applying for utility patent protection and trade dress protection for the same product exists because of the inherent tension between the utilitarian usefulness required for utility patent protection, and non-functionality of the same design features required for trade dress protection

The decision is McGowen Precision Barrels, LLC v. Proof Research, Inc., Cancellation No. 92067618 (TTAB May 20, 2021).

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