IP Law Daily, TRADEMARK—TTAB: Refusal to Register Camouflage Design Marks for Navy Clothing and Uniforms Reversed, (Oct 12, 2012)

By Mark Engstrom, J.D.

A trademark examining attorney improperly refused, on functional grounds, the registration of four design marks proposed by the Navy Exchange Service Command, for use on Navy uniforms and other camouflaged clothing products, the Trademark Trial and Appeal Board has ruled (In re Navy Exchange Service Command, September 29, 2012, Taylor, J.). The functionality refusals were therefore reversed.

All of the applicant’s marks contained a pixilated pattern of irregular block shapes in four colors. Two of the marks added a logo that included the letters USN and an eagle perched atop an anchor in front of a schooner. The examining attorney’s refusal in each application was directed solely to the multi-colored pixilated pattern.

Generally speaking, a design was functional if it was essential to the use or purpose of the product with which it was associated, or if it affected the cost or quality of that product. The Board considered four factors to determine whether the applicant’s design was functional: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising material in which the originator of the design touted its utilitarian advantages; (3) the availability to competitors of alternative designs; and (4) facts indicating that the design resulted in a relatively simple or cheap method of manufacturing the product.

Existence of Utility Patent

The record did not contain any utility patents that referenced the utilitarian advantages of the applicant’s pixilated pattern marks.

Utilitarian Advantages

The examining attorney referenced statements by the U.S. Navy—in regulations, policies, press releases, and website articles—that purportedly showed the importance of a “uniform display” to the U.S. Navy. The examining attorney argued that these statements exemplified the applicant’s commitment to “qualitative factors” for uniform development, as set out in Navy regulations. The attorney also argued that the color pattern of the proposed marks met the Navy’s requirements concerning ease of maintenance, cleaning, upkeep, and tailoring, as well as the amount of space required for storage, purchase price and maintenance costs, durability, and how well the uniform displayed a crisp image.

These statements clearly reflected the Navy’s requirement that its personnel present a “proud and professional” appearance, as well as its desire for a durable, cost effective, and easily maintained uniform. Only one statement, however, referred in any manner to the design of the applicant’s mark. That statement, indicating that a multicolor pattern was chosen because it was less likely to show wrinkles, stains, and heavy wear than a solid color, did not convince the Board that the specific multicolored pattern that the applicant chose was superior to other patterns that could have been chosen. According to the Board, the ability to hide stains and wear and tear was an incidental function that was “inherent to most patterned material.”

Further, many of the Navy’s requirements for its uniforms had nothing to do with fabric design. Requirements such as durability, cost, ease of maintenance, and storage space all arise from the permanent press 50/50 nylon and cotton-blend fabric, the wash and wear nature of the fabric, and the Navy’s conscious decision to replace several styles of uniforms with one multi-seasonal uniform. Quite simply, there was nothing in the applicant’s statements that persuaded the Board that the applicant’s applied-for design was essential to the Navy’s requirement for a neat and clean uniform.

Availability of Alternative Designs

The applicant persuasively showed that many different “camouflage” patterns could similarly mask stains and hide wear and tear, and the Board concluded that the existence of alternative designs worked against the examining attorneys’ argument that the applicant’s marks were functional. Put another way, because alternative pattern designs performed the same functions as the applicant’s pattern (and equally as well), there was no competitive need to adopt the applicant’s pattern.

Product Cost or Quality

The applicant submitted the declaration of a printing contractor who stated that the cost to print the Navy’s pattern was no less expensive than the cost to print other digital or camouflage pattern in other colors. The contractor further stated that the inclusion of the Navy’s logo in its digital design was no less expensive than the inclusion of any other logo in the design. Although this evidence showed that the applicant’s color pattern was not the result of a cheaper method of manufacturing, it ultimately favored neither the applicant nor the examining attorney with respect to a functionality analysis. Significantly, evidence that a product feature made the product cheaper to manufacture could be probative in showing functionality, but evidence that the product feature did not affect product cost was not necessarily proof of non-functionality.

After examining all of the evidence and arguments, the Board could not conclude that the examining attorney had established a prima facie case of functionality. Although the color pattern design in the applicant’s marks may have performed the incidental function of masking stains and wear and tear, the pattern did not need to be devoid of any function in order to be registered as a trademark. The examining attorney simply failed to show how the applicant’s color pattern was functional or how it would hinder competition.

More Accurate Descriptions

The Board also reversed the examining attorney’s requirement that the applicant submit more accurate descriptions for two of its marks. The examining attorney found that the applicant’s descriptions were incomplete because they failed to describe the repetitive pattern of the marks’ design, but the Board concluded that the applicant’s amended descriptions complied with Trademark Rule 2.37 and the corresponding guidelines provided by the Trademark Manual of Examining Procedure. The applicant’s descriptions were not as specific as they could have been (in terms of the repeating nature of the marks), but they were sufficient, primarily because the inclusion of the term “pattern” in the descriptions subsumed the “repeating” language that the examining attorney had required.

The serial numbers are 77160754, 77160783, 77324266, and 77324270.

Melanie Fix for Navy Exchange Service Command. Kathleen H. Lorenzo, Trademark Examining Attorney, USPTO.

Cases: Trademark USPTO