cautioning that “a utility patent is only ‘some evidence’ as to functionality” in its explanation of statements in In re Shenango Ceramics, Inc., 362 F.2d 287, 292, 150 USPQ 115, 120, 53 C.C.P.A. 1268, 1274 (1966)
How later courts described this case
- cautioning that “a utility patent is only ‘some evidence’ as to functionality” in its explanation of statements in In re Shenango Ceramics, Inc., 362 F.2d 287, 292, 150 USPQ 115, 120, 53 C.C.P.A. 1268, 1274 (1966)
- entertaining an opposition on the ground that the subject matter of applicant's registration was functional
- entertaining an opposition on the ground that the subject matter of applicant's registration was functional: "the [Lanham] Act is premised on the idea that only non-functional configurations may be registrable thereunder.”
- “It is settled law that a configuration of an article cannot be registered as a trademark if the purpose of the configuration is to contribute functional advantages to the article in which it is embodied or if the configuration results from functional considerations.”
Written by the judges who cited it.
The opinion
BALDWIN, Judge
(dissenting).
A motion for summary judgment may be granted if and only if there is no genuine issue as to any material fact, that is, if the moving party is entitled to.prevail strictly as a matter of substantive law. On a motion for summary judgment, the tribunal cannot try issues of fact; it cannot pre-judge the facts by making conclusions based on part of the evidence; it can only determine whether there are any substantial issues of material fact to be tried.
The burden is on the moving party to establish that there is no genuine issue as to any material fact and that he is. entitled to judgment solely as a matter of substantive law. And the moving party is not entitled to the benefit of favorable factual inferences which may be drawn from his pleadings or moving papers; instead, the matters presented must be construed most favorably to the party opposing the motion. That it may be surmised that the non-moving party is unlikely to prevail after a full trial is not sufficient to authorize summary judgment against him.
Thus, I feel that summary judgment was erroneously granted since I agree with appellant that a genuine issue of material fact exists as to the functionality of the figure 8 configuration, at least to the extent that the functionality is of such nature as to preclude registration, and that appellant is entitled to introduce its evidence relevant to the issue of functionality. The mere magnitude of appellant’s burden, which may indeed be quite formidable, to prevail on the merits of this case should not as a matter of law deny appellant his day in court.
I have no quarrel with the majority’s characterization of the substantive law as to trademark registration of “functional” configurations. What troubles me is the majority’s acceptance of a single piece of evidence, the Best patent, as conclusively establishing functionality of such nature as to preclude registration. This, I feel, is error. Perhaps if the only evidence as to functionality were the utility patent after appellant had submitted all of its evidence, as was the case in Shenango, supra, then the utility patent might be “some,” “adequate,” and “conclusive” evidence of functionality of such nature as to preclude registration. However, Shenango is no precedent for holding that the evidentiary value of a patent is so great as to foreclose a party’s efforts to introduce evidence contradictory to the specification of the patent. Since the Best patent is merely one piece of evidence of functionality insofar as this case is concerned, appellant should be given the opportunity to rebut that evidence.
I would reverse.