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Functionality is a ground for ex parte rejection of a mark. 15 U.S.C.S. § 1052(e)(5). Under 15 U.S.C.S. § 1052(e)(5), a mark that comprises any matter that, as a whole, is functional is not entitled to trademark protection.
Valu Engineering, Inc. (“Valu”) filed three applications seeking registration of conveyer guide rail configuration designs as trademarks. For each cross-sectional design, Valu asserted a claim of acquired distinctiveness. The applications were approved and Rexnord Corporation (“Rexnord”) filed a timely objection alleging that the three guide rail designs were de jure fictional and thus unregistrable. The board concluded that the designs were de jure functional and not registrable. The board, focusing primarily on the utilitarian advantages of the designs, determined that all four Morton-Norwich factors weighed in favor of a finding of functionality. On appeal, Valu contended that the board erred in confining its functionality analysis to a single use.
Did the Board err in concluding that Valu’s designs were de jure functional and, therefore, not registrable?
The appellate court found that the board correctly concluded that Valu’s cross-sectional designs of conveyor guide rails were de jure functional. According to the court, the board properly limited itself to a single application. The board's decision to confine its functionality analysis to a competitively significant application of the designs was not erroneous. The board's finding that the guide rails were de jure functional was supported by substantial evidence.