In a 62-page opinion, the Board affirmed a Section 2(e)(5) refusal to register the product configuration mark shown below, for “circular saw blades for power-operated saws,” finding the proposed mark to be de jure functional. Alternatively, the Board also agreed with the USPTO that Applicant MK Diamond failed to carry its “unusually high burden” of proving that the configuration has acquired distinctiveness. In re MK Diamond Products, Inc., Serial No. 86813875 (July 27, 2020) [precedential] (Opinion by Judge Mark Lebow).

The proposed mark comprises the curved portions of the slots or cut-outs around the circumference of the blade,which are shown in solid lines. Applicant MK claimed that the precise shape of the cut-outs  was chosen arbitrarily in order to differentiate its “Tiger Tooth” diamond saw blades from those of competitors.

Functionality: The Board applied the ever-popular Morton-Norwich factors in considering the Section 2(e)(5) issue. First, it reviewed four third-party utility patents and two pending applications submitted by Examining Attorney Andrea R. Hack. Applicant MK argued that these patent documents were not probative because they did did not disclose or claim the exact same configuration as the proposed mark, but the Board rejected that notion.

The disclosures in such a patent may demonstrate that utilitarian benefits are provided by a basic design feature irrespective of the specific shape. Thus patents (and applications) for analogous designs can provide competent evidence of functionality.

The Board concluded that the patent evidence supported a finding that cut-outs interspaced along the outer edge of a circular saw blade, regardless of shape, are de jure functional because they provide one or more utilitarian benefits: they dissipate blade stress, prevent blade warpage, clean out kerf, attain straighter cutting action, etc. Evidence of third-party use of similar features on saw blades also tended to show that the features at issue are functional.

The weight of the evidence, including applicant MK’s own statements, suggested that its saw blades are cooled more, and are provided with more stress relief, by using these cut-outs. Based on the totality of the evidence the Board found that the proposed configuration mark “as a whole is primarily functional.”

The overall appearance of the applied-for mark affects the quality of the blades under the Inwood test and, as a whole, “is in its particular shape because it works better in that shape,” Becton, Dickinson, 102 USPQ2d at 1376 – 39, because it provides cooling, stress relief, and other benefits such as the removal of swarf, particularly with respect to blades manufactured without vacuum brazed technology or other means that do not eliminate added benefits provided by cut-outs in the blade’s design.

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Applicant’s slightly curved cut-out design is not manifestly different from other blade designs in a manner suggesting the cut-outs do not provide the same benefits that similar third-party blade cut-outs provide. Applicant understands that consumers expect cut-outs on diamond blade saws. If consumers expect them to be there, it is either because they are used decoratively, which the evidence here does not suggest, or it is because they make the products work better.

Having found the proposed mark to be functional under InwoodTrafFix, and their progeny, the Board need not review the other Morton-Norwich factors. Nonetheless, the Board reviewed applicant’s advertising and found that it did not tout the design in question. Applicant MK did not provide evidence of alternative designs “that offer the same performance benefits as Applicant’s cut-outs.” And there was no evidence that applicant’s design results from a simple or inexpensive method of manufacture.

The Board concluded that applicant’s configuration ‘is dictated by the function it performs, and is therefore essential to the use or purpose of the goods and as a whole is functional.” TrafFix, 58 USPQ2d at 1006.

To give Applicant the trademark registration it seeks here would give it a potential perpetual monopoly on a slightly curved basic design of cut-outs along the outer edges of a circular saw blade. One can envision only several different alternative configurations for the shape of cut-outs emanating from the perimeter of a circular saw blade – straight, angled, curved, or some combination thereof. We believe that a registration covering one of the few basic shapes available would interfere with the fundamental right to compete.

Acquired Distinctiveness: For the sake of completeness, and assuming arguendo that the proposed design is not de jure functional, the Board considered applicant’s claim of acquired distinctiveness. The burden of proving same is heavier for a product configuration, and because cut-outs in circular saw blades are common, MK had to make a “particularly strong showing.”

Applying the CAFC’s Converse factors, the Board found that the widespread use of substantially similar cut-outs undercut MK’s claim of  ”substantially exclusive”use  as required under Section 2(f). MK’s advertising did not emphasize or call out the design through “look-for” advertising. Its sales figures lacked industry context, and may have merely reflected the popularity of the product and not recognition of the proposed configuration mark.

MK submitted the declarations of twelve distributors who attested to recognizing the design as MK’s mark, but the Board was unimpressed. There was no evidence to suggest that this selection of declarants was representative of applicant’s customers. Moreover, the probative value of the declarations was diminished because they were identical in form. The variations in the declarations as to what features are recognized as a source indicator was also of concern to the Board. And twelve declarations is simply an inadequate number in this case.

The Board therefore found that MK’s evidence failed to meet its high burden of proof to demonstrate that the primary significance of the proposed configuration mark is to identify the source of MK’s circular saw blades rather that being a mere feature of the blades.

Conclusion: And so the Board affirmed the refusal to register on both grounds.

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Text Copyright John L. Welch 2020.