TTAB Affirms Section 2(e)(5) Functionality Refusal of Holster Configuration

The Board affirmed a Section 2(e)(5) refusal to register, on the Supplemental Register, the product configuration shown below, for "holsters," finding the proposed mark to be de jure functional under Section 2(e)(5). Once again, the existence of a patent established the functional benefits of the design: it "enables the user to secure the holster within the waistband, and the gun within the holster, with minimal bulkiness and weight and with maximum comfort." This post will aim to hit the high points of the 44-page opinion. In re JM4 Tactical, LLC, Serial No. 90518181 (February 27, 2024) [not precedential] (Opinion by Judge Christopher C. Larkin).

According to the application, the mark consists of "a product configuration of a holster, wherein the holster comprises a strap attached to a holster body, the strap having a securement device at an end of the strap, the body having a second securement device extending from the body, the dashed lines of the body represent positioning of the strap and securement devices and are not claimed as part of the mark." Applicant JM4 Tactical described the device as a "concealed carry holster." The strap folds over the user's waistband, with the holster and the gun inside the waistband.

Under the Inwood test, a product configuration is functional under Section 2(e)(5) if (1) it is "essential to the use or purpose of the article,” or (2) it "affects the cost or quality of the article." In applying that test, the Board may consider the categories of evidence set forth in In re Morton-Norwich:

(1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

JM4's ’530 Patent established the functional benefits of the proposed mark, "namely, that the overall design, including the shape, length, and positioning of the strap, and the placement of the magnetic securement devices, enables the user to secure the holster within the waistband, and the gun within the holster, with minimal bulkiness and weight and with maximum comfort." A third-party patent suggested an additional benefit, "namely, the ability of the user to return the gun to the holster using the magnetic attraction of the securement devices without the need to divert attention from the user’s surroundings."

The benefits discussed in the ’530 Patent were touted on JM4’s website and reflected on third-party websites and in product reviews. The Board concluded that the first two Morton-Norwich categories of evidence show that the proposed mark “‘is in its particular [configuration] because it works better in that [configuration]," and "make it unnecessary to consider the other categories."

JM4 relied heavily on its ownership of various design patents for the ornamental designs of holsters, but they missed the mark. The Board noted that, "while evidence of a design patent may be some evidence of non-functionality under Morton-Norwich, the fact that a device is or was the subject of a design patent does not, without more, bestow on said device the aura of distinctiveness or recognition as a trademark.'"

Our law recognizes that the existence of a design patent for the very design for which trademark protection is sought “presumptively . . . indicates that the design is not de jure functional. Absent identity between the design patent and proposed mark, the presumption loses force, and the “similar” design patents lack sufficient evidentiary value to overcome the strong conclusion in this case that [applicant’s] utility patent[] underscore[s] the functionality of significant elements of the proposed mark.

The Board found that JM4's design patents covered designs that were not identical to the proposed mark. "To the extent that Applicant’s design patents show designs that are similar to Applicant’s proposed mark, they 'lack sufficient evidentiary value to overcome the strong conclusion in this case that [Applicant’s] utility patent[] underscore[s] the functionality of significant elements of the proposed mark.'"

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Another trademark applicant shot down while trying to extend protection for an out-of-patent invention by way of a potentially perpetual trademark registration.

Text Copyright John L. Welch 2024.