Trade dress registration on carbon fiber rifle barrel canceled because it is functional. MCGOWEN v. PROOF RESEARCH

Trade dress constitutes a “symbol” or “device” within the meaning of §2 of the Trademark Act, 15 U.S.C. §1052. Trade dress originally included only the packaging or “dressing” of a product, but in recent years has been expanded to encompass the design of a product. It is usually defined as the “total image and overall appearance” of a product, or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, graphics.” Thus, trade dress includes the shape of a product.

Registering trade dress is slightly more complicated that a normal trademark application. When an applicant applies to register a product design or other trade dress, two substantive issues are considered: (1) functionality; and (2) distinctiveness. If the design of a product is essential to the use or purpose of the product or if it affects the cost or quality of the article it is functional and cannot be registered.

To determine whether a particular design is functional, a court will consider the four factors from In re Morton-Norwich Products, Inc., 671 F.2d 1332 (CCPA 1982) which are:(1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered; (2) advertising by the applicant that touts the utilitarian advantages of the design; (3) facts pertaining to the availability of alternative designs; and (4) facts indicating that the design results from a comparatively simple or inexpensive method of manufacture.

MCGOWEN PRECISION BARRELS, LLC v. PROOF RESEARCH, INC., Cancellation No. 92067618 (TTAB 2021) is an example of a registered trade dress which was canceled because it was found to be functional.

Respondent in this case owns Registration No. 4390533, issued August 27, 2013. The Registration includes the following description of the mark: The mark consists of trade dress applied to gun barrels formed with a mottled pattern of irregularly-sized, rippled patches, resembling a quilt having striated patches of varying shapes and reflectivity depending on the ambient light source and viewing angle. The dotted lines in the drawing show the shape of the gun to which the applicant’s trade dress is applied, are intended to show the position of the mark on the gun, and are not part of the mark. An example of the Respondent’s claimed trade dress is reproduced above. The feature that the Respondent claims as its trade dress is created by wrapping a gun barrel in several layers of carbon fiber composite.

Petitioner, filed a petition for cancellation of the Registration on five grounds, but TTAB’s decision focused on the grounds that the mark comprises matter that, as a whole is functional, in violation of the Trademark Act § 2(e), 15 USC § 1052(e).

There was no dispute that carbon fiber composite barrels provide various functional benefits to rifles. The Petitioner claimed the appearance was functional because it is a natural by-product of the manufacturing process that creates the barrels. Respondent claimed the appearance was cosmetic efforts to create a trade dress that consumers associate with Respondent.

One of the piece of evidence submitted was Respondent’s U.S. Patent No. 10,168,117 B2 (the “’117 Patent”). The ‘117 Patent disclosed the best way to create composite barrels was the have the outer layer of carbon fiber helically wrapped at an angle of ±45° and comprising 8% to 18% of the radial thickness of the composite. Expert testimony from both Petitioner and Respondent confirmed that the appearance the Respondent claimed as trade dress was a result of that manufacturing process. The TTAB viewed the disclosures in the ’117 patent as so strong as to be sufficient, by themselves, to sustain the functionality refusal without consideration of the other Morton-Norwich categories of evidence.

The TTAB granted the petition for cancellation on the ground of functionality.

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