The Tech, Inc. v. Kinedyne Corporation

This case concerns the validity of a product configuration
trademark for the SAFECUT® "web-cutter" device. The issue
presented is whether summary judgment was appropriate on
grounds that the design is functional and therefore not protectible
as a trademark. Underlying this question is the evidentiary
role of a trademark registration in such a proceeding. We
affirm the district court's grant of summary judgment against
the trademark holder because the product design is not fanciful,
but instead wholly functional, and consequently cannot
have trademark significance.

BACKGROUND

Tie Tech makes and markets "wheelchair securement systems"
for private and public vehicles. One of its products, the
SAFECUT "web-cutter," is used in emergencies to facilitate
the quick release of individuals from their securement systems.
Tie Tech, which designed and marketed this cutter
beginning in the 1980's, describes its product as "a hand-held,
well-balanced webbing cutter" that is "made of durable polycarbonate."
An advertising image portrays the SAFECUT
device in action: a hand is gripping the device with four fingers
fitted through an enclosed oval opening; an elongated
prong of plastic guides the webbing towards a recessed cutting
blade. Tie Tech offered the following depiction of the In 1998, the Patent and Trademark Office (PTO) registered
"the entire configuration and arbitrary embellishment" of the
SAFECUT device as a trademark on its primary register.1
Specifically excepted from this trademark were the scalloped
"finger indentations" on the handle which the examiner had
previously concluded to be functional, thus precluding registration
of those aspects of the design. Tie Tech achieved this
result not without considerable struggle. The examiner originally
rejected the application because, among other grounds,
he concluded that the entire configuration was functional in
design. After an appeal to the Trademark Trial and Appeal
Board (TTAB), however, the application was remanded for
further reconsideration, and the examiner without explanation
limited his conclusions about functionality to the finger indentations
on the handle and the shape of the partially concealed
blade.In 1998, the Patent and Trademark Office (PTO) registered
"the entire configuration and arbitrary embellishment" of the
SAFECUT device as a trademark on its primary register.1
Specifically excepted from this trademark were the scalloped
"finger indentations" on the handle which the examiner had
previously concluded to be functional, thus precluding registration
of those aspects of the design. Tie Tech achieved this
result not without considerable struggle. The examiner originally
rejected the application because, among other grounds,
he concluded that the entire configuration was functional in
design. After an appeal to the Trademark Trial and Appeal
Board (TTAB), however, the application was remanded for
further reconsideration, and the examiner without explanation
limited his conclusions about functionality to the finger indentations
on the handle and the shape of the partially concealed
blade.In 1998, the Patent and Trademark Office (PTO) registered
"the entire configuration and arbitrary embellishment" of the
SAFECUT device as a trademark on its primary register.1
Specifically excepted from this trademark were the scalloped
"finger indentations" on the handle which the examiner had
previously concluded to be functional, thus precluding registration
of those aspects of the design. Tie Tech achieved this
result not without considerable struggle. The examiner originally
rejected the application because, among other grounds,
he concluded that the entire configuration was functional in
design. After an appeal to the Trademark Trial and Appeal
Board (TTAB), however, the application was remanded for
further reconsideration, and the examiner without explanation
limited his conclusions about functionality to the finger indentations
on the handle and the shape of the partially concealed
blade.

Kinedyne is a competitor of Tie Tech in the web-cutter
market. As late as June 1999, Kinedyne was selling its own
distinctive web-cutter. After some of Kinedyne's customers
expressed dissatisfaction with Kinedyne's original cutter, one
of its sales representatives requested a cutter similar to the
SAFECUT design. According to Kinedyne's regional director,
he understood that the representative wanted a SAFECUT-styled design because Kinedyne's then-current
design "did not meet [unspecified] states' satisfaction."

In response to the special request, Kinedyne redesigned its
web-cutter. The resulting Kinedyne cutter is virtually indistinguishable
from the SAFECUT - save the color, the manufacturer's
name embossed in the polycarbonate frame, and the
absence of the scalloped finger indentations in the handle, the
most noticeable difference.

* * *

Upon discovery of Kinedyne's new cutter, Tie Tech sued
Kinedyne for trademark infringement under the Lanham Act,
15 U.S.C. § 1114, as well as for unfair competition and consumer
protection claims under Washington state law. Kinedyne
moved for summary judgment, arguing that, as a
consequence of its functionality, the design mark was invalid
pursuant to 15 U.S.C. § 1115(b)(8). The district court agreed
and granted summary judgment for Kinedyne.

* * *

Click the case caption above for the full text of the Court's opinion.

In Leatherman we held that a product’s manufacturer
“does not have rights under trade dress law to compel its competitors
to resort to alternative designs which have a different
set of advantages and disadvantages. Such is the realm of
patent law.” Id. at 1014 n.7. Here, Tie Tech does not dispute
that some customers may prefer a specific functional aspect
of the SAFECUT, namely its closed-grip handle, even though
other functional designs may ultimately get the job done just
as well. As Leatherman reminds us, though, a customer’s
preference for a particular functional aspect of a product is
wholly distinct from a customer’s desire to be assured “that
a particular entity made, sponsored, or endorsed a product.”
Id. at 1012 (quoting Vuitton, 644 F.2d at 774). Whereas the
latter concern encompasses the realm of trademark protection,
the former does not. We therefore conclude on this record that
the district court appropriately granted summary judgment in
favor of Kinedyne.

AFFIRMED.

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