IP Law Daily, TRADEMARK—TTAB: Cancellation granted in glass breaking device design patent dispute, (Dec 4, 2023)

By Kevin M. Finson, J.D.

A design patent for a glass-breaking, seatbelt-cutting device was granted because the design as a whole was functional.

A competitor showed that a design trademark for an automotive safety device intended to allow a user to break window glass and cut seat belts was invalid for being functional, the Trademark Trial and Appeal Board has held. The asserted trade dress elements were claimed as functional in a European patent and their functionality featured in the registrant’s advertising (Trevari Media, LLC v. Colasse, November 14, 2023, Hudis, J.).

Laurent Colasse was the registered owner of a three-dimensional product design mark on the Principal Register for a “[s]pring-loaded glass-breaking device” in International Class 8. Trevari Media, LLC (Trevari) petitioned for cancellation on the ground that the mark as a whole was functional. After briefly noting that Trevari was entitled to a statutory cause of action due to Colasse’s actions of sending take-down notices and alleging infringement, the Board considered the functionality of the design.

Functionality. There was no dispute that the asserted trade dress possessed acquired distinctiveness, so that element was met. The only issue was functionality. The Board found that the features of the device were discussed and claimed in a prior EU Patent, which strongly suggested they were functional. The advertising and packaging for the product touted the functionality of the same design elements which were claimed here to be part of the trade dress. The Board held that the design was functional and based on utilitarian considerations.

The Board granted the petition to cancel.

The Case is Cancellation No. 92078038.

Attorneys: Jason Witten (Witten Law Ltd.) for Trevari Media, LLC. Guy Cumberbatch (Patent4you) for Laurent Colasse.

Companies: Trevari Media, LLC

Cases: Trademark USPTO