IP Law Daily, TRADEMARK—TTAB: Manufacturer’s hardware design failed to satisfy Lanham Act tests, (Mar 24, 2025)

By Sheri A. Wattles-Miller, J.D.

Proposed mark was functional and not inherently distinctive of the applicant’s hardware for food service equipment, and the applicant did not show acquired distinctiveness.

The Trademark Trial and Appeal Board independently affirmed an Examining Attorney’s refusal of registration of a proposed mark for "Food service equipment levelers of metal.” The proposed mark was a "three-dimensional configuration of a leveling leg with a cylindrical top portion and a cylindrical bottom portion having a diameter smaller than the diameter of the top portion." The Board determined (1) the proposed mark was functional under Section 2(e)(5) of the Lanham Trademark Act; (2) the proposed mark was an inherently nondistinctive product design under Sections 1, 2, and 45 of the Act; and (3) the Applicant failed to prove acquired distinctiveness under Section 2(f) of the Act (In re Kason Industries, Inc., No. 97602791 (T.T.A.B. Mar. 18, 2025)).

Background. The Applicant, Kason Industries, Inc., makes hardware for food service equipment. It applied to register, as a trademark on the Principal Register, "Food service equipment levelers of metal," in International Class 6. Kason defined the item as the "three-dimensional configuration of a leveling leg having a cylindrical top portion and a cylindrical bottom portion having a diameter smaller than the diameter of the top portion."

Functionality. In response to a request from the Examining Attorney, Kason acknowledged that the product depicted in its application "has been the subject of" two issued U.S. patents. The company argued that the fact that one of those patents, a design patent, meant that the item was presumably non-functional. Although the Board agreed that the design patent presumptively indicated that the design was not de jure functional, the other patent, a utility patent, indicated that the design was functional. The utility patent was entitled "Height Adjustable Support For Food Service Equipment." The drawings for the utility patent and the drawings accompanying the trademark application were nearly identical. In addition, both described a "telescoping" configuration that was integral to the item's design.

The Board found that the disclosures in both the specification and claims of the utility patent provided strong and explicit evidence that the proposed mark was functional. Although Kason suggested other alternatives to indicate that the design was not functional, the Board found that the alternatives were immaterial. The utility patent made clear that Kason's design worked better than previous designs, and that made it clear that it was functional, which was an absolute bar to registration.

Nondistinctive product design. Kason offered aggregate sales and advertising figures, two types of circumstantial evidence, to show that the mark had acquired distinctiveness in the minds of the public. Product design features fall within the category of marks that require a relatively stronger showing of acquired distinctiveness than some other categories of non-inherently distinctive marks. Kason's advertising expenditures were a small fraction of the average yearly sales revenue, and thus the company is nowhere close to demonstrating that it had successfully education consumers to view the difference between Kason's product and its competitors. The proposed mark constituted product design, which could not be considered inherently distinctive, and Kason had not established that the design had acquired distinctive.

The Case is Serial No. 97602791.

Judge: Casagrande, T.

Attorneys: Dorian B. Kennedy (Caldwell & Berkowitz, P.C.) for Kason Industries, Inc. Amy Hahn for the USPTO.

Companies: Kason Industries, Inc.

Cases: Trademark USPTO