In re DC Comics, Inc.

RICH, Judge,

concurring.

I concur in the result, but for the following reasons.

Capability of Functioning as a Trademark

Citing In re Abcor Development Corp., 588 F.2d 811, 815 , 200 USPQ 215, 219 (Cust. & Pat.App.1978) (Rich, J., concurring), where it was noted that, “The ultimate in descriptiveness is the name of a thing,” the TTAB concluded:

We think it is fair to extend this proposition to the conclusion that the ultimate in descriptiveness in this situation is a picture of the character represented by a toy doll.

The TTAB also said, “If a word may be descriptive, so may a picture.”

Completing the circle from name to picture and back to name, what the TTAB has done, sub silentio, is to imply that the word-mark SUPERMAN, registered by appellant for the identical goods involved herein, is in fact not a mark as applied to Superman dolls and that appellant’s registration thereof for such goods is invalid. 1 However, the fact is that the word SUPERMAN and a stylized drawing of SUPERMAN (separately or in combination) are trademarks for many different types of goods. 2 Accordingly, the three-dimensional doll configuration is actually a three-dimensional representation of a trademark, whether that trademark is considered to be the word SUPERMAN or a drawing of the SUPERMAN character, conceptually two different versions of the same trademark. Alternatively, one may consider the goods to be a doll bearing appellant’s trademark. Either way, while a drawing of those goods necessarily describes them, it is not “merely de *1047 scriptive” within the meaning of Section 2(e)(1) of the Lanham Act, nor is it incapable of functioning as an identification of source, the singularly prominent impression given by those goods being a well-known and famous trademark.

Given the evidence, the board opinion, taken to its logical conclusion, suggests that a stylized drawing of SUPERMAN can be a trademark for anything but a three-dimensional toy doll designed as SUPERMAN. In other words, because the SUPERMAN doll embodies a trademark and is therefore a unique product, no one else having the right to manufacture or sell such dolls, the TTAB opinion amounts to a holding that the alleged mark sought to be registered is generic to such goods. That was error. 3 If a product design can legally function as a trademark, In re Morton-Norwich Products, Inc., 671 F.2d 1332 , 213 USPQ 9 (Cust. & Pat.App.1982), a trademark design can be embodied as a product, and marketed as such, without that design necessarily being denied trademark status.

In re Penthouse International Ltd., 565 F.2d 679 , 195 USPQ 698 (Cust. & Pat.App.1977), contrary to the TTAB’s view, is an analogous case. There, where the specimens submitted to the PTO were bracelets to which three-dimensional embodiments of the mark were affixed as charms, it was stated:

The record shows that the stylized key design was chosen because Penthouse was using it as a trademark on other products. With respect to those other products, the mark is unquestionably arbitrary and fanciful. With respect to jewelry in general the mark itself has no nontrademark meaning. That one of Penthouse’s jewelry items takes the form of its trademark does not strip the mark itself of its arbitrary and fanciful characteristics.

Although in Penthouse appellant was attempting to register the three-dimensional configuration of the mark itself — the goods — it must be presumed, using the reasoning of the TTAB in this case, that the TTAB would also have refused registration for jewelry had Penthouse attempted to register *as a mark a picture of the stylized key logo. Yet in commenting on Penthouse in this case, the TTAB stated that, “Had specimens consisting of box labels * * * bearing a small embossed version of the mark been presented, it was conceded that registration would not have been refused.” That position and the one taken by the TTAB here are entirely inconsistent.

The TTAB here remarked that, “The question presented in this case is whether a picture of a fanciful or fictitious human figure can be a registrable trademark for the toy doll version of the same fanciful or fictitious comic book character.” More precisely, the issue here is whether a trademark may be registered for a three-dimensional rendering of that trademark. For the above reasons, I conclude that it may be.

Functionality

The TTAB stated (211 USPQ at 837):

It is our opinion that the designs of the three dolls involved in this appeal are quintessentially utilitarian. A child who wants to playact with dolls an adventure involving the character “Superman” or the character “Batman” or the character “Joker” would simply not be satisfied with any doll that was not a replica of the appropriate character. The customary dress, accoutrements and facial expression of the character are indispensable elements of the commercial appeal of the product. Thus, these features are commercially functional. The artistic renditions of the dolls, as presented on the cartons and shown in the drawings of *1048 the applications, are informative depictions of the contents of the boxes and, further, serve to reinforce the desirability of the dolls by assisting a child to associate the dolls more closely within the characters as seen in other contexts and to identify with the adventures of the characters represented by the dolls. Hence, the designs are functional in a utilitarian sense and for that reason are not trademarks. [Emphasis added.]

This analysis is flawed in several respects. The principal error is the conception that the doctrine of functionality applies to this case.

Preliminarily, it is noted that appellant is not attempting to register as a trademark the goods themselves; it is attempting to register in each case a stylized drawing representative of the goods. The TTAB, in discussing this basis for rejection, consistently referenced the designs of the dolls rather than the drawings sought to be registered, apparently convinced that if it could demonstrate that the designs of the products were de jure functional and therefore unprotectable as trademarks, a similar fate would necessarily befall the drawings. That is, the goods and the drawings were deemed legally one and the same.

Clearly, the drawings of the goods here are not de jure functional — they possess no de facto function at all, save their communication function. The question is, therefore, if the PTO can demonstrate that a particular configuration of goods is de jure functional, does that necessarily render a picture or drawing of those goods unregistrable as a trademark therefor? The answer, undoubtedly, is yes, for a finding of de jure functionality is, in a sense, similar to a rejection for genericness, that is, it is a conclusion that others have the right to make and sell the item so designed (and, concomitantly, the right to utilize a picture or drawing of the item in their pursuit of business).

Turning to the merits of the “functionality” rejection, the TTAB stated (211 USPQ at 837-38):

The dolls in this case possess “engineering”, i.e., utilitarian, function. Take away the facial expressions, the clothes and the accompanying props, and all that are left are pieces of molded plastic of no distinction whatsoever, undesired and unsaleable. The designs depict the very details which make the dolls commercially viable.

Putting aside the question of what is meant by the “engineering” function of the appearance of a character doll, the dolls here possess no utility except as dolls — and numerous designs will do for that purpose. The fact that removal of the dolls’ clothes leaves a bare piece of molded plastic is determinative of nothing. It only demonstrates that the costumes — which are part of the design — are what give the dolls their unique identities as SUPERMAN, BATMAN, and JOKER. 4

The utilitarian functionality rejection is untenable in view of In re Morton-Norwich Products, Inc., 671 F.2d 1332 , 213 USPQ 9 (Cust. & Pat.App. 1982). Superiority in the utility or economy of manufacture of a doll is neither wholly nor in any part connected to the use of the particular design of appellant’s dolls or their costumes.

This is not the end of the matter, however, for in formulating its opinion, the TTAB clearly intermingled the concepts of utilitarian functionality and what has been termed “aesthetic functionality.” The TTAB noted that the doll designs were “commercially functional” because the various well-known features thereof “are indispensible elements of the commercial appeal of the product.”

A design has been said to be functional in an “aesthetic” sense and, therefore, not pro *1049 tectable as a trademark if it is “an important ingredient in the commercial success of the product,” Ives Laboratories, Inc. v. Darby Drug Co., 601 F.2d 631, 643 , 202 USPQ 548, 557 (2d Cir. 1979), if it constitutes “the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product,” International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 917 , 208 USPQ 718 , 723 (9th Cir. 1980), or if it is “said to connote other than a trademark purpose,” Vuitton et Fils S. A. v. J. Young Enterprises, Inc., 644 F.2d 769, 773 , 210 USPQ 351, 354 (9th Cir. 1981) (citing Pagliero v. Wallace China Co., 198 F.2d 339, 343 , 95 USPQ 45 , 48 (9th Cir. 1952)).

Although this expansive definition of what is functional in an “aesthetic” sense appears troublesome, its import becomes clearer upon study. In the case of utilitarian functionality, a determination of de jure functionality is conclusive, that is, any showing of trademark function — secondary meaning — will be termed “de facto”; it will not dissuade a court or the PTO from holding the subject design to be unprotectable (or unregistrable) as a trademark. In re Deister Concentrator Co., 48 CCPA 952, 289 F.2d 496 , 129 USPQ 314 (1961). In the case of “aesthetic” functionality, on the other hand, it would appear that a demonstration of secondary meaning is crucial. The Ninth Circuit labels as aesthetically functional a design which connotes “other than a trademark purpose,” or which constitutes that which the consumer wishes to purchase “as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product.” In other words, the reasoning is circular. If a design which is sought to be protected as a trademark can be demonstrated to so function, it will be protected as a trademark; it will not be said that its only function is as an aesthetically pleasing design. 5

With respect to the notion that a design is aesthetically functional if it is “an important ingredient in the commercial success of the product,” it is noted that many trademarks hold such a place of importance. In any event, it is sufficient in this case that the involved drawings embody subject matter well-known and famous; the fact that consumers may wish to purchase appellant’s dolls for their inherent ornamental characteristics is secondary — the characters themselves are trademarks. Cf. Vuitton et Fils S. A. v. J. Young Enterprises, Inc., supra at 773, 210 USPQ at 354 et seq. (Court disagrees with interpretation “that any feature of a product which contributes to the consumer appeal and saleability of the product is, as a matter of law, a functional element of that product.”)

Further commentary on the Ninth Circuit analysis of aesthetic functionality was recently provided by the Third Circuit Court of Appeals in Keene Corp. v. Paraflex Industries, Inc., 653 F.2d 822, 825 , 211 USPQ 201 , 203-04 (3d Cir. 1981):

The difficulty with accepting such a broad view of aesthetic functionality, which relates the doctrine to the commercial desirability of the feature at issue without consideration of its utilitarian function, is that it provides a disincentive for development of imaginative and at *1050 tractive design. The more appealing the design, the less protection it would receive. As our ambience becomes more mechanized and banal, it would be unfortunate were we to discourage use of a spark of originality which could transform an ordinary product into one of grace. The doctrine of aesthetic functionality need not be construed in such a manner for it to fulfill its important public policy function of protecting free competition.

Instead, the inquiry should focus on the extent to which the design feature is related to the utilitarian function of the product or feature. When the design itself is not significantly related to the utilitarian function of the product, but is merely arbitrary, then it is entitled to protection as a design trademark if it has acquired the distinctiveness necessary to achieve a secondary meaning.

Thus, it is arguable that there is no “doctrine” of aesthetic functionality which stands alone, without consideration of the more traditional source identification principles of trademark law. To the extent that there may be — at least with respect to ex parte prosecution practice — it has been previously rejected by this court. In re Mogen David Wine Corp., 51 CCPA 1260, 1267-68, 328 F.2d 925, 931 , 140 USPQ 575 , 580 (1964) (“On the basis of the record before us * * * we cannot accept the [‘functionality in ornamentation’] approach.”); In re World’s Finest Chocolate, Inc., 474 F.2d 1012, 1015 , 177 USPQ 205, 207 (Cust. & Pat.App.1973) (court distinguished case where “the design trademark consisted of three narrow white concentric rings on the dark sidewall surface of a tire.. We concluded that through long familiarity with whitewalls as tire ornamentation, the public would consider a three-ring whitewall as just a refinement of a general ornamental concept rather than a trademark. No evidence of distinctiveness had been submitted. The General Tire [& Rubber Co., 56 CCPA 867, 404 F.2d 1396 ] case is inapposite here in view of our finding that appellant’s package design identifies and distinguishes the goods to which it is applied.” [Emphasis added.]); In re Penthouse International Ltd., 565 F.2d 679, 682 , 195 USPQ 698, 700 (Cust. & Pat.App.1977) (“The ‘ornamentation function’ basis of rejection, argued here by the solicitor, was summarily rejected by this court on a related issue in Mogen David, and is without merit.”).

Accordingly, the holding of the TTAB that the drawings sought to be registered are functional, either in a utilitarian or in an aesthetic sense, is without foundation. See In re Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982).

It is for the above reasons that the decision of the board should be reversed.

. The TTAB noted that, “Applicant, as part of its effort to secure the reversa! of the refusals of registration, has referred to various registrations it has obtained for word marks (e.g., ‘BATMAN’) and word and design marks (e.g. ‘BATMAN’ and design of face and spread cape) for various goods. One of these registrations, as pertinent as any, is Registration No. 1,070, -290, issued July 26, 1977, for the word mark ‘SUPERMAN’ for toy doll figures. None of these registrations, however, is in point because none is for a mark which is, in effect, an illustration of the goods, and the fundamental question in these applications is whether an artistic rendition of a fictitious character can serve as a trademark for what is a somewhat cruder three-dimensional toy doll version of the same fictitious character.” I regard the registrations, especially that singled out by the TTAB, as clearly relevant in determining registrability of the drawings, since the words SUPERMAN, BATMAN, and JOKER conjure up the images those drawings portray.

. The record shows that SUPERMAN has been registered for toy doll figures, that SUPERMAN in combination with a full figure drawing has been registered for magazines, that the SUPERMAN logo, with name and drawing of head and torso, has been registered for magazines, that the SUPERMAN logo, with the name in telescopic lettering, has been registered for cartoons in a series, and that a full figure drawing of SUPERMAN has been registered for shirts. Applicant has also registered a full figure drawing of SUPERMAN for electric lamps, night lights, and bicycle reflectors (Reg. No. 1,187,-512), for adults’ and childrens’ clothing (Reg. No. 1,184,662), and for various book, desk, and paper products (Reg. No. 1,178,048). Published for opposition in the Official Gazette of April 13, 1982, were three more applications for registration of a full figure drawing of SUPERMAN; one for jewelry, watches, and clocks; another for various audiovisual records and tapes, radios, eyeglass frames and cases; and the last for bubble bath. In that same edition of the Gazette, two applications for registration of the word SUPERMAN are found; one for mirrors and the other for books, greeting cards, notepads and posters, paper napkins, paper tablecloths, calendars, pencil sharpeners, cardboard centerpieces, and writing slates. In the Official Gazette of April 20, 1982, three more applications for registration of a full figure drawing of SUPERMAN were published for opposition; one for bubble gum, the second for bowls, mugs, glasses, cookie jars, toothbrushes and hair brushes made of plastic, and the third for shower curtains, towels, sheets, pillow cases, blankets, comforters, and drapes.

Likewise, a BATMAN full figure drawing is registered for shirts. The BATMAN logo, incorporating his head and cape is registered for magazines. The BATMAN logo, with name and drawing of his head and cape is registered for magazines and for cartoons in a series. The record also contains six registrations for the word BATMAN which span eight different classes and name over 140 different goods upon which the mark was, and may still be, used.

The certified record contains one registration for the word JOKER, naming toy doll figures as the goods.

. In early prosecution before the PTO the applicant observed that “it is not unusual in the toy industry for a particular display of a doll to be visually the same as the mental impression created by the trademark, which operates to name the doll and distinguish [it] from those sold by others.” This market observation respecting unique product design is entirely consistent with Judge Nies’s source v. goods identification “truism” discussion, with which I wholeheartedly agree.

. It may be, however that even without their familiar costumes, at least BATMAN and JOKER are identifiable. BATMAN’S distinctive mask is not removable, but is molded as part of the doll. As appellant noted before the TTAB, JOKER is molded to include a large distinctive smile covering almost half of his face and showing nearly a full set of teeth, an elongated chin, furrowed brow, thick black eyebrows, green wavy long hair with a widow’s peak, and “an evil leer.”

. Although the sundry facts involved in various disputes aid in distinguishing some cases from others, attempted definitions of “aesthetic functionality” remain somewhat confusing. Some courts seem to treat a demonstration of secondary meaning as the opposite side of the “aesthetic functionality” coin. Major Pool Equipment Corp. v. Ideal Pool Corp., 203 USPQ 577 , 582 (N.D.Ga.1979); PPS, Inc. v. Jewelry Sales Representatives, Inc., 392 F.Supp. 375, 384 , 185 USPQ 374, 380 (S.D.N.Y.1975). Others take what appears to be a balancing approach, weighing on opposite sides of the scale the ornamentation and source identification functions óf a design. Vuitton et Fils S. A. v. J. Young Enterprises, Inc., 644 F.2d 769, 774, 777 , 210 USPQ 351, 355, 357 (9th Cir. 1981); International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 919, 920 , 208 USPQ 718 , 724, 725 (9th Cir. 1980). Still other courts, as in the case of utilitarian functionality, keep completely separate the issues of functionality and secondary meaning. Keene Corp. v. Para-flex Industries, Inc., 653 F.2d 822, 827 , 211 USPQ 201 , 205 (3d Cir. 1981); Famolare, Inc. v. Melville Corp., 472 F.Supp. 738, 744-45 , 203 USPQ 68, 74 (D.Hawaii 1979).