IP Law Daily, TRADEMARK—TTAB: Honeywell obtains cancelation of safety helmet design marks, (Mar 23, 2023)

By Cheryl Beise, J.D.

ERB Industries failed to rebut evidence its product configuration marks lacked acquired distinctiveness.

The Trademark Trial and Appeal Board has granted Honeywell Safety Products’ petition to cancel two registrations for safety helmet configuration marks owned by ERB Industries, finding in a 163-page nonprecedential decision that ERB failed to rebut Honeywell’s prima facie case that the marks lacked acquired distinctiveness. The Board, however, dismissed Honeywell alternate claim that the designs were functional (Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., March 13, 2023, Lykos, A.).

ERB Industries, Inc., a personal safety products manufacturer owned two registrations on the Principal Register, registered under Trademark Act Section 2(f), 15 U.S.C. § 1052(f), for a three-dimensional product configuration for “safety helmets” in International Class 9—Registration No. 4493482 (“Full-Brim Hard Hat Ridge Design” or ’482 Registration”) and Registration No. 4493481 (“Cap-Style Hard Hat Ridge Design” or “’481 Registration”) (referred to collectively as the “Ridge Designs”).

Honeywell Safety Products USA, Inc. filed a petition to cancel each registration on the grounds that the marks were functional within the meaning of Trademark Act Section 2(e)(5): the marks lacked acquired distinctiveness under Trademark Act Section 2(f), and the marks failed to function as trademarks under Sections 1, 2 and 45.

Functionality. A mark may be cancelled under Section 2(e)(5) of the Trademark Act where it “comprises any matter that, as a whole, is functional.” 15 U.S.C. § 1052(e)(5). It was undisputed that the ERB’s helmets satisfied hard hat safety requirements set forth in federal law and standard-setting organizations. However, the question was whether the design marks were functional. The Board examined the Ridge Designs as depicted in the ’481 and ’482 registrations to determine whether they were essential to their use or purpose or affected the cost or quality of the product, that is, whether allowing the trademark registrations to continue to exist would hinder competition.

The Board applied the Inwood test first. The Inwood test states that a product design or product feature is considered to be functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” After examining the evidence, the Board concluded that Honeywell “failed to meet its burden under the preponderance of the evidence standard [to] rebut the presumption that Respondent's Ridge Designs are valid and nonfunctional under Inwood.”

If a product design mark fails the Inwood test, it may still be found to be functional under the Morton-Norwich test. The Morton-Norwich test examines four factors: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

The Board found that all four factors favored ERB. ERB did not own a patent covering the designs; there was no evidence of advertising touting the utilitarian benefits of the Ridge Designs; there was evidence of many alternative designs in the record; and there was no evidence that the Ridge Designs were easier or less expensive to register.

Accordingly, Honey failed to prove that the Ridge Designs were functional.

Lack of acquired distinctiveness. Product designs cannot be inherently distinctive, so are registrable only upon a showing of acquired distinctiveness under Section 2(f).

In determining acquired distinctiveness, the Board examined each of the Converse factors: (1) association of the trademark with a particular source by actual purchasers (typically measured by consumer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.

The Board found that Honeywell established a prima facie case that the Ridge Designs lacked acquired distinctiveness and ERB failed to produce evidence to overcome Honeywell’s prima facie case. The only evidence ERB offered for the first factor was employee testimony, which was entitled to little weight. ERB did not offer survey evidence. The second factor did not favor ERB because there was insufficient evidence that its use of the designs was substantially exclusive. ERB failed to produce evidence of look-for advertising directed to the claimed design features. ERB’s sales figures were not substantial and were offered without context in the marketplace. And there was no evidence of media coverage or intentional copying by others.

Finding that Honeywell satisfied the preponderance of evidence standard based on all the evidence of record, Board granted Honeywell’s petition to cancel both Ridge Design registrations.

The Case is Cancellation No. 92070774.

Attorneys: James D. Weinberger (Fross Zelnick Lehrman & Zissu, PC) for Honeywell Safety Products USA, Inc. Ronald A. Dicerbo (McAndrews Held & Malloy, Ltd.) for ERB Industries, Inc.

Companies: Honeywell Safety Products USA, Inc.; ERB Industries, Inc.

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