In a non-precedential opinion, the CAFC upheld the Board’s decision affirming a Section 2(e)(5) functionality refusal of of the packaging designs shown below for “electric cables and wire. [TTABlogged here]. The appellate court found no legal error in the Board’s functionality analysis, and further that substantial evidence supported the Board’s findings that numerous features of the designs were “dictated by the utilitarian purpose they serve.” Moreover, the Board found that applicant’s own patents revealed “the functionality of significant aspects of the designs,” and its advertising touted some of the features. In re My Reelex Packaging Solutions, Inc., Appeal No. 2020-1282 (November 5, 2020) [not precedential].

On appeal, Reelex argued that the Board erred “because the totality of record evidence shows that the trade dresses at issue provide no real utilitarian advantage to the user.” It also argued that the Board erred in failing to consider evidence of alternative designs.
The appellate court, however, pointed out that the Board identified multiple useful features present in the boxes that combine to define box designs “dictated by the utilitarian purpose they serve.” Although Reelex argued that the Board improperly dissected the designs into discrete design features, the court’s review of the Board’s decision showed that the Board analyzed the features as a whole and in combination. The Board then applied the four Morton-Norwich factors, and found that they, too, weighed in favor of a functionality finding.

Reelex primarily argued that the Board’s Morton-Norwich analysis was flawed because it ignored “competent evidence of alternative designs.” As the Board correctly noted, however, if functionality is found based on other considerations, “there is ‘no need to consider the availability of alternative de-signs, because the feature cannot be given trade dress protection merely because there are alternative designs available.'” In any case, the Board did expressly consider Reelex’s evidence of alternative de-signs.

The Board is entitled to assess credibility and has broad discretion to weigh the evidence presented. Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 979–80 (Fed. Cir. 2018) (“The TTAB is entitled to weigh the evidence.”); see also Inwood Labs., 456 U.S. at 856 (“Determining the weight and credibility of the evidence is the special province of the trier of fact.”). We find no error in the Board’s consideration of alternative designs, and we decline Reelex’s request to reweigh the evidence on appeal. Nor do we find any error in the Board’s conclusion that the boxes at issue are “simple, basic boxes that provide numerous utilitarian advantages for figure 8 or otherwise wound coils of cable and wire designed for dispensing from the center of the coil. That means the boxes are functional, and [Reelex’s] competitors need not look for other possible alternative designs.”

And so the CAFC affirmed the Board’s decision.

Read comments and post your comment here.

TTABlogger comment: The Board panel included Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. Was this a WYHA? from the git-go?

Text Copyright John L. Welch 2020.