Application of Shenango Ceramics, Inc.

• Decision Date: 23 June 1966
• Docket Number: Patent Appeal No. 7612.
• Citation: 362 F.2d 287
• Parties: Application of SHENANGO CERAMICS, INC.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

362 F.2d 287 (1966)

Application of SHENANGO CERAMICS, INC.

Patent Appeal No. 7612.

United States Court of Customs and Patent Appeals.

June 23, 1966.

Albert L. Ely, Jr., Cleveland, Ohio, for appellant.

Joseph Schimmel, Washington, D. C. (George C. Roeming, Washington, D. C., of counsel), for Commissioner of Patents.

Before RICH, Acting Chief Judge, MARTIN, SMITH, and ALMOND, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

MARTIN, Judge.

This is an appeal from a decision of the Trademark Trial and Appeal Board¹ refusing to register² on the Principal Register a portion of the under-rim configuration shown in the drawing below as a trademark for "China dishware."³

China dishware incorporating such ribs was the subject of a U. S. utility patent 2,178,274, issued October 31, 1939 to R. Ratner. The patent was assigned to the appellant herein (or its predecessor), and that patent expired in 1956. The patent was directed to the use of a median rib as above shown on the under-surface of a tableware article such as a plate. The patent states:

* * * In virtue of its behavior in protecting the article against chipping, cracking and breaking as the result of vibratory stresses from impact-shocks received by the article, I call this rib the vibration-throttling rib. * * *

The patentee notes that pedestal ribs and perimetral ribs were then conventional, the former "allowing the articles to be stacked without extended face to face contact while in the kiln," and thus are "important in aiding manufacture of the article * * *." Although the perimetral rib had been used "with the idea of strengthening the flange * * *" of tableware, the patentee discovered the lifetime of such ware was shortened rather than prolonged.⁴ The patentee teaches that:

Whether or not the perimetral rib is present, the vibration-throttling rib of the present invention has been found by actual test to act in precisely the way it should act to justify its designation as a vibration-throttling element. * * *

A second "important" advantage taught by the patentee to arise from the use of the ribs is that "convenient and safe handling of the articles is made possible when it is grasped in one hand only," because the space between the ribs affords "a finger stall or seat for naturally accommodating a finger of an adult's hand." The claims were directed to the middle rib, either with the pedestal rib or with both the pedestal and perimetral ribs.⁵

The examiner in refusing to register the "representation of goods" distinguished between containers that may serve as a trademark for the contents therein, and a "representation of goods themselves purporting to be trademarks for the same goods * * *." That point, however, was not the reason for final refusal to register below, nor is it the basis of our decision here. The basic reason for refusal, as stated by the examiner, was that the rib configuration is a functional feature:

* * * This configuration of goods is said to be a scientifically designed molded roll that reinforces the underside of the rim at its weakest structural point. The representation of this "exclusive patented double roll construction" is firmly believed not to be a trademark. The trademark is the name Rim-Rol,⁶ which applicant has given to this utilitarian feature of the goods, but the construction feature of the goods themselves is not a trademark as defined in Section 45 of the Trademark Statute, and therefore, it is not a mark capable of distinguishing the goods as required by Section 2 of the Trademark Statute. * * *

The refusal to register was affirmed by a majority of the board (there was also a concurring minority opinion),⁷ on the ground that the subject matter under consideration "is incapable of distinguishing applicant's goods from the goods of others because it is merely a functional feature of a product on which the patent has expired."

Thus this appeal presents the issue whether the preamble of section 2 (15 U.S.C. § 1052) and the definition of trademarks under section 45 (15 U.S.C. § 1127) preclude the registration on the Principal Register of the present three-dimensional configuration with its functional aspects. No section 2(f) issue is presented.

Appellant contends that the under-rim configuration falls within the statutory definition of a trademark, section 45, as it "includes any * * * symbol, or device * * *," and that the listing of configuration of goods in section 23 (15 U.S.C. § 1091) does not preclude registration on the Principal Register. Appellant also argues that section 2 of the 1946 Act is mandatory, that no trademark shall be refused registration "on account of its nature * * *" except for those grounds specifically set forth in subsections (a) to (e) under section 2, none of which include functionality. Thus appellant states:

All of the reasons advanced by the Examiner and the Board boil down to refusals to register appellant\'s mark because (a) of its mechanically functional nature or, (b) when used on ware also having a foot rib, such footed ware identified by appellant\'s mark was once patented. None of these "natures" of appellant\'s mark are included in the exceptions recited in sub-sections (a) to (e) of Section 2 of the Act. The decision below, accordingly, amounts to an attempt to amend the statutory mandate, by administrative decision, by adding "non-patented or non-patentable functional marks" as an additional exception to those now listed in subsections of Section 2 of the Act and/or further qualifying the present recital in the Section 45 definition of a trademark so that "any * * * symbol or device" should read "any * * * unpatentable, nonfunctional symbol or device."

Regarding the functionality of the under-rim configuration appellant's position is:

* * * Admittedly applicant\'s rim configuration was selected to function well as a vibration dampening configuration and to aid the gripping of the ware — while also serving as a distinctive identification. * * *

* * * * * *

* * * it should be pointed out that appellant in no way contends that its mark is non-functional; rather, if mechanical functionality is properly considered at all in determining a trademark\'s registrability under the 1946 Act, such mechanical functionality of applicant\'s device is not so non-arbitrary as to impair its obvious function as a distinctive identification of appellant\'s ware and, therefore, its registrability.

The distinction last quoted represents appellant's attempt to bring the instant under-rim configuration within the class of "shapes which can be monopolized because they are of such an arbitrary nature that the law does not recognize a right in the public to copy them, even if some incidental function is associated with them," In re Deister Concentrator Co., 289 F.2d 496, 48 CCPA 952, 965. By appellant's reading, the Deister case would permit the registration of a functional "symbol, or device" that is "not so non-arbitrary as to impair its obvious function as a distinctive identification of appellant's ware and, therefore, its registrability." We do not so read the Deister case, since that reading changes "incidental function" as not barring registration, to: incidental identification as mandatory of registration. We hold the present case to be controlled by the principles of law in Deister, and in In re Shakespeare Co., 289 F.2d 506, 48 CCPA 969. The under-rim configuration here is unregistrable on the Principal Register since it is functional and in essence utilitarian.

It is our view that the expired utility patent is adequate evidence that the under-rim configuration here sought to be registered is indeed functional. We do not find the board to have erred in rejecting the contention that the present configuration is registrable because its functionality is so incidental as to be "arbitrary" or a mere design. All the evidence points the other way. Appellant's arguments are futile "attempts to reduce it functionality to a de minimis status," Deister, supra, 289 F.2d at 504, 48 CCPA at 967.

We think that the 1946 Act is premised on the idea that only nonfunctional configurations may be registrable thereunder. As stated in truism (4) of the Deister case, 289 F.2d at 502, 48 CCPA at 963:

(4) A feature dictated solely by "functional" (utilitarian) considerations may not be protected as a trademark; but mere possession of a function (utility) is not sufficient reason to deny protection.

Rather than adding an exception to section 2 or amending section...