R. Griffith “Griff” Thomas, Editor-in-Chief of Allen’s Trademark Digest, has filed the following report regarding the recent TTAB oral hearing in In re WCM Industries, Inc.

On Tuesday, January 14, 2020, the Board conducted a live oral hearing at the United States Patent and Trademark Office in the East Wing of the Madison Building, in Alexandria, Virginia. The TTAB heard arguments in In re WCM Industries, Inc, S.N. 87555014, involving WCM Industries, Inc.’s (WCM) application to register a three-dimensional product configuration of a bathtub overflow drain cap for “Plumbing products, namely, a bathtub overflow drain cap” in International Class 11.

Trademark Examining Attorney Heather A. Sales had refused registration under Trademark Act Section 2(e)(5) because the mark was found to be functional, and also under Sections 1, 2, and 45 because the product design was nondistinctive. WCM Section 2(f) evidence of acquired distinctiveness was found insufficient. The parties’ briefs and other papers may be found HERE.

The two issues argued on appeal were: (1) Whether the applied-for mark, a three-dimensional product configuration for the identified goods, is de jure functional under Section 2(e)(5) of the Lanham Act; and (2) Whether WCM’s submitted evidence, declarations and advertisements were sufficient to show acquired distinctiveness under Section 2(f).

The TTAB Panel consisted of Judges Karen S. Kuhlke, Robert H. Coggins, and Thomas Wellington.

Scott W. Johnston, Merchant & Gould PC, argued for WCM Industries, Inc. and Heather A. Sales for the Trademark Examining Office. The Board allowed each side 20 minutes to present its case. WCM reserved four minutes for rebuttal.

The Judges seemed content to let WCM’s counsel get through his argument before starting in with questions. During WCM’s opening argument, the Board confirmed that relevant consumers included plumbers and average residential buyers. The Board asked a number of questions about why the portions of the drain cap and opening were not delineated by appropriate solid and dotted lines to indicate the portions that are not claimed. WCM argued that nothing in its utility patents indicates that the shape of the drain hole is essential, makes the drain work better, or is more desirable. WCM relied on the Board’s non-precedential decision in In re 3M Company, S. Nos. 77701886 and 77701928 (May 10, 2012), to support its position. In that case, the Board reversed a Section 2(e)(5) refusal of the configuration of a hand sanitizing container shown below. [TTABlogged here].

Examining Attorney Sales argued that the subject design is functional because, as shown by WCM’s utility patents, the design made the product better (U.S. Patent No. 0079654 Device for Concealing a Plate Associated with Overflow Plumbing) and provides cost saving to manufacture (U.S. Patent Pub. No. US 2018/0044899 Device for Providing Improved Drainage). Moreover, WCM’s advertising supported the functionality refusal.

Turning to acquired distinctiveness, WCM argued that its extensive use, massive sales, and significant advertising, and a multitude of customer and industry declarations proved that WCM’s mark has acquired distinctiveness and serves to identify the source of WCM’s overflow cap.

The Board quizzed both sides about the more than 100 declaration statements submitted by WCM and completed by manufacture representatives and other plumbing industry consumers, asserting recognition of the mark as source indicator. WCM contended that the declarations constitute overwhelmingly persuasive evidence regarding acquired distinctiveness. WCM was questioned about potential bias, while the Examining Attorney was challenged about the claim that the statements were just fill-in-the blank forms. WCM insisted the numerous declarants had no direct communication or business relationship with WCM and were not biased. Examining Attorney Sales agreed that the surveys were not just fill-in-the-blank forms. Finally, Applicant WCM argued that the drain has been in use for 19 years and has been seen and recognized a huge number of times by tub users, and thus has acquired distinctiveness

The Board asked many more questions of WCM and the panel seemed split, with one judge agreeing with Applicant WCM, one agreeing with the USPTO, and the third undecided. It will be interesting to see whether WCM’s application will go down the TTAB drain or whether the appeal will hold water.

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Text Copyright John L. Welch and R. Griffith Thomas 2020.