[Caveat: The Wolf Greenfield trademark team of Christina Licursi, Stephanie Stella, and Yours Truly represented Petitioner Lakeside Equipment in this case.]. The Board granted Petitioner Lakeside’s motion for summary judgment in this cancellation proceeding, ruling that Respondent Evoqua’s registered concentric-loop configuration (shown below) for an “oxidation ditch for wastewater treatment” is functional under Section 2(e)(5). Two expired utility patents, a published article, and Evoqua’s own advertising convinced the Board that “there is no genuine dispute of material fact that the use of three concentric loops is essential to the use or function of the goods and affects their cost.” Lakeside Equipment Corporation v. Evoqua Water Technologies LLC, Cancellation No. 92066259 (August 23, 2018) [not precedential].

A product design or product feature is considered to be de jure functional if it is (1) “essential to the use or purpose of the article,” or if it (2) “affects the cost or quality of the article.” TrafFix, 58 USPQ2d at 1006 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). The Board noted that the well-known “Morton-Norwich factors” are “legitimate source[s] of evidence to determine whether a feature is functional.” Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002). However, if functionality is established under Inwood, “further inquiry into facts that might be revealed by a Morton-Norwich analysis will not change the result.”

Based upon a careful review of the parties’ submissions, the Board finds that there is no genuine dispute of material fact that the concentric loop design claimed by Respondent is essential to the use and purpose of the goods and affects the cost and quality of the wastewater treatment system under the standard set forth in Inwood/TrafFix.

The two expired utility patents (one owned by Evoqua’s predecessor), taken together, disclosed the functionality of using multiple chambers, or channels, in an wastewater oxidation ditch. Each channel has a specific utilitarian function, and both patents disclosed embodiments with three or four channels.

The 1972 article by Meiring discusses the utilitarian function of using multiple channels, specifically three or more. Respondent Evoqua advertises its three-channel configuration as capable of a
higher percentage of total nitrogen removal than its two-channel configuration. The Board therefore found “no genuine dispute of material fact that the use of three channels in an oxidation ditch serves a utilitarian function.”

As to Respondent Evoqua’s concentric loops, Meiring U.S. Patent No. 3579439 (issued in 1971) describes the use of “concentric, annular basins or channels” in an “orbal wastewater treatment process” and includes the following drawing:

The Meiring article states that “the reason for the very good quality of effluent obtained from the orbal plant, with regard to biochemical oxygen demand (BOD) and total nitrogen, is to be found in the multicompartment aeration arrangement. Normally three or four channels are recommended.” (emphasis supplied by the Board). Respondent Evoqua advertises its three-channel configuration as capable of a higher percentage of total nitrogen removal than its two-channel configuration.

The Meiring ‘439 patent states that, in addition to creating an endless circuit for the flow of wastewater from one channel to another, “[t]he concentric arrangement of the channels permits the same shaft to be used for aerating all channels.”

Respondent Evoqua’s advertising brochure asserts that the treatment zones, or channels, operate in a series which is essential to the wastewater treatment process—specifically a simultaneous nitrification-denitrification process which “is the backbone” of the design.

Moreover, Evoqua’s advertising specifically touts the use of concentric channels in the shape of loops as partially responsible for the effectiveness of its oxidation ditch. (“The Orbal® system incorporates a unique Concentric Loop™ configuration that creates dedicated zones for specific treatment purposes . . . . The volume split of the Concentric Loop configuration naturally applies the correct volume to oxygen input ratio required in the design of a SND plant.”). The use of concentric “orbal” or loop channels also allows for “easy extension of capacity by adding extra channels.”

The Board found the evidence clear that the concentric loop design affects the cost of the product. According to Evoqua’s brochure, “[t]he Concentric Loops also save on concrete and construction costs of the aerobic basin volume by using common wall construction.”

Thus, the evidence of record established that” the use of concentric loops creates an endless circuit that can use common walls, a single aeration shaft, and easily allow for the addition of further loops.”

Moreover, the decision to use the concentric loop design is partly a function of population size and location:

The Meiring article further explains that the extended aeration orbal plant design is most useful for populations below 4,000, and that for larger populations, the choice between the extended aeration plant and a conventional plant would depend upon factors such as the topography of the area in which the plant is installed. *** According to the article, the design of the plant is therefore dictated in part by population size and topography. In other words, the orbal irrigation ditch design is dictated by functional considerations.

The Board concluded that “there is no genuine dispute of material fact that the use of three concentric loops is essential to the use or function of the goods and affects their cost.” Therefore the mark in question is functional under Section 2(e)(5) and the Board granted the petition for cancellation of Evoqua’s registration.

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Text Copyright John L. Welch 2018.