In an exhaustive 129-page opinion (including a 12-page appendix), the Board sustained an opposition to registration of the product configuration shown below, for “engines for use in construction, maintenance and power equipment,” finding the applied-for mark to be functional under Section 2(e)(5) and, alternatively, lacking in acquired distinctiveness. This summary of the Board’s decision will discuss the high points of the Board’s ruling. Kohler Co. v. Honda Giken Kogyo K.K., Opposition No. 91200146 (December 13, 2017) [precedential] (Opinion by Judge Christopher Larkin).
The Board observed that the mark Applicant Honda seeks to register is depicted in the drawing. “[T]he drawing of the mark, not the words an applicant uses to describe it, controls what the mark is.” In re Change Wind Corp. Matter not claimed must be shown in broken lines. The Board thus noted that Honda is seeking protection for what it described as “the configuration of an engine with an overall cubic design, with a slanted fan cover, the fuel tank located above the fan cover on the right, and the air cleaner located to the left of the fuel tank.”
Evidentiary Issues: The parties raised many evidentiary objections, several of which merited the Board’s discussion. Applicant Honda objected to the admission of copies of 14 utility model applications that it filed in Japan, contending that the Japanese utility model system has no counterpart in American law and that it is unclear whether the Japanese applications were ever examined or issued. The Board found this to be an issue of first impression. It overruled the objection, observing that the “analysis requires us to do what we must do in considering Applicant’s issued United States patents – determine whether the claims and disclosures in the patent show the utilitarian advantages of the design sought to be registered as a trademark.”
The Board sustained Honda’s objection to the admissibility of a decision by the Office of Harmonization in the Internal Market (OHIM) affirming a refusal to register a depiction of an engine design and containing a summary of Honda’s argument under European Community Law as to whether the design was inherently distinctive. The Board observed that European Community Law is “at odds with United States law” because in this country a product configuration mark cannot be inherently distinctive. The Board, however, overruled an objection to the admissibility of certain statements made by Honda’s Turkish counsel before a Turkish court.
Section 2(e)(5) Functionality: Section 2(e)(5) bars registration of “a mark which … comprises any matter that, as a whole, is functional.” In general, “‘a product feature is functional,’ and cannot serve as a trademark, ‘if it is “essential to the use or purpose of the article or if it affects the cost or quality of the article.'” (Citing Traffix, Qualitex, Inwood, and other cases). The functionality doctrine is intended to encourage legitimate competition by maintaining the proper balance between patent law and trademark law. See Qualitex, 34 USPQ2d at 1163-64.
The Board observed that its analysis may begin with a consideration of the functionality of individual features, as long as those features are considered in the context of the design as a whole. In particular, the Board considered that Air cleaner cover (A), the fuel tank (B), the carburetor cover (C), and the fan cover (D):
In assessing the functionality of the design as a whole, the Board must , we must determine whether the mark “is in its particular shape because it works better in that shape.” Becton, Dickinson, 102 USPQ2d at 1376; see also Change Wind. The Board found that the fan cover (D) “is in its particular slanted shape because (as both experts agree) that slanted shape works better to direct cooling air to the hottest part of the engine than a non-slanted shape.”
The shape of the fuel tank (B) has both utilitarian and design elements, but positioning and its overall “roughly rectangular” shape are “more prominent, thus making the features of the fuel tank as a whole primarily functional.” As to the carburetor cover (C}, it also has utilitarian and decorative elements, but its relative positioning and placement make its features as a whole functional, despite its inclusion of purely decorative ribs.
The air cleaner cover (A) also includes functional and non-functional elements, but here the Board found its features not to be primarily functional. The choice to use a cube or rectangular shape was a design choice.
The “overall cubic design” of the engine has the utilitarian benefit that Honda sought to achieve when it designed its GX engine, including compactness and adaptability to a range of OEM options. The Board found that the “overall cubic design” of Honda’s applied-for mark “is in its particular shape because it works better in that shape.”
Finally, the Board considered the “critical question:” the degree of utility present in the overall design of the mark,” taking into account the impact of any “specific styling components” of each feature. The Board found these styling components to be relatively insignificant, concluding that the overall appearance of the applied-for mark is essential to the use or purpose of the engine and affects its quality under the Inwood. test because the mark as a whole “is in its particular shape because it works better in that shape.”
Because the Honda engine design is functional under Inwood, there was no need to consider the CCPA’s Morton-Norwichfactors. Nonetheless, for the sake of completeness, the Board addressed these factors briefly. It found the seven United States patents proffered by Opposer Kohler to be non-probative of functionality, but found two of the Japanese utility models to be corroborative of its finding of functionality.
Honda argued that its expired design patent D282,071 is presumptive evidence of non-functionality. See Loggerhead Tools, 119 USPQ2d at 1432. The Board, however, found this design patent “not persuasive evidence of non-functionality” since the patented design differed from the mark at issue here.
Honda’s advertising touted performance attributes of the GX Engine design, but did not specifically tie those benefits to the applied-for design. As to alternative designs, Honda did not show that other engines “offer the same performance benefits” as the applied-for mark. In any case, as explained in TrafFix, once a product feature is found functional based on other considerations, there is no need to consider the availability of alternative designs. The testimony regarding cost of manufacture was inconclusive, but in any case, since the Board already found that the design has use-related benefits, whether the design was more expensive to manufacture was not relevant.
Acquired Distinctiveness: Assuming arguendo that Honda’s engine design was eligible for registration, the Board considered the issue of acquired distinctiveness. Of course, under Wal-Mart, a product configuration can never be inherently distinctive. Opposer Kohler had the initial burden to establish a prima facie case that Honda did not satisfy the acquired distinctiveness requirement of Section 2(f).
The burden to prove acquired distinctiveness is heavier when considering a product configuration. Furthermore, where, as here, many third parties use similarly shaped configurations, “a registration may not issue except upon a substantial showing of acquired distinctiveness.”The Board found, based on the third-party uses together with other deficiencies in Honda’s evidence, that Kohler had established a prima facie case that the applied-for mark does not serve as a source identifier.
Honda’s sales and advertising figures, although very substantial, are not probative of purchaser recognition. The declarations from Honda distributors were not persuasive: they were substantively identical, were based on both the trademark drawing and a color photo of the engine, and were conclusively worded and failed to explain what it was about the design that was unique or distinctive.
Both parties submitted surveys, which the Board reviewed in some detail. Honda’s survey purported to show a 42% level of recognition while Kohler’s survey showed 18%. The deficiencies in the Honda survey, conduced by George Mantis, significantly impacted its probative value: it employed a photograph of the Honda engine rather than the application drawing, as well as poorly chosen control. The Kohler survey conducted by Hal Poret contained some flaws, but they did no significantly reduce the value of the survey. The Board concluded that the true level of association “is likely closer to the net level reported by the Poret survey.” In any case, however, a net level of association between 18 and 42% has “little evidentiary value” on the issue of the distinctiveness of the applied-for mark.
As to the circumstantial evidence, Honda’s long use of the applied-for design has diminished importance in light of the many third-party engines with similar configurations. Sales volume and advertising expenditures, though very substantial, are not probative of consumer recognition of the engine design as a source indicator. Although the advertising displayed a picture of the Honda engine, none of the advertising directed consumers to the specific features of the applied-for mark.
Finally, Honda claimed that intentional copying of the design supported a finding of acquired distinctiveness, but the Board found this evidence of limited value. Although Honda enjoyed some success in enforcing its purported rights, such evidence may show a desire to avoid litigation rather than a confirmation of the distinctiveness of the design.
The Board therefore ruled that Honda failed to establish that the applied-for mark has acquired distinctiveness under Section 2(f), and it therefore sustained Kohler’s opposition.