06-1173
`(Serial NO. 74/734,496)
`
`United States Court of Appeals
`For the Federal Circuit
`
`IN RE ROSE CORPORATION
`
`Appeal from" the United States Patent and Trademark Office,
`Trademark Trial and'Appea1 Board.
`
`BRIEF FOR APPELLANT
`BOSE CORPORATION
`
`~
`Charles Hieken"
`FISH & RICHARDSONRC.
`225 Franklin Street
`-
`
`Boston, MA 02110
`Telephone (617) 542-5070
`of Counsel,
`-——v -V
`
`3
`
`~
`
`Cynthia Johnson Walden
`Amy L_ Bmsius
`FISH & RICHARDSON R0,
`225 Franklin Street
`
`Attorney for Appellant
`
`—
`
`Boston, MA 02110
`' Telephone (617) 542-5070
`Facsimile (617) 542-8906
`
`
`
`(Serial NO. 74/734,496)
`
`United States Court of Appeals
`For the Federal Circuit
`
`IN RE ROSE CORPORATION
`
`Appeal from" the United States Patent and Trademark Office,
`Trademark Trial and'Appea1 Board.
`
`BRIEF FOR APPELLANT
`BOSE CORPORATION
`
`~
`Charles Hieken"
`FISH & RICHARDSONRC.
`225 Franklin Street
`-
`
`Boston, MA 02110
`Telephone (617) 542-5070
`of Counsel,
`-——v -V
`
`3
`
`~
`
`Cynthia Johnson Walden
`Amy L_ Bmsius
`FISH & RICHARDSON R0,
`225 Franklin Street
`
`Attorney for Appellant
`
`—
`
`Boston, MA 02110
`' Telephone (617) 542-5070
`Facsimile (617) 542-8906
`
`
`
`
`
`
`'~q:_q_v‘§,..V.,,._.-x.;3«=..—..
`
`CERTIFICATE OF INTEREST
`
`Pursuant to Federal Circuit Rule 47.4, counsel for Applicant-Appellant Bose
`
`Corporation certifies the following:
`‘
`(1) The full name of the party represented in this case is Bose Corporation.
`
`3
`
`(2) Bose Corporation is the real party in interest.
`
`(3) Bose Corporation does not have a parent corporation. There are no
`
`publicly held companies that own 10% or ‘more of the shares in Bose Corporation.
`
`(4) Charles Hieken of Fish & Richardson, P.C. represented Bose
`
`Corporation before the Tradernark Trial and Appeal Board. Charles Hieken,
`
`Cynthia Johnson Walden, and Amy L. Brosius of Fish & Richardson, P.C. are
`
`appearing for Bose Corporation in this Court.
`
`
`
`Dated: March 13, 2006
`
`FISH & RICHARDSON 1>.c.
`
`
`
`By:
`
`Charles Hieken
`Cynthia Johnson Walden
`Amy L. Brosius
`FISH & RICHARDSON P.C.
`
`225 Franklin Street
`Boston, MA 02110
`Tel.:(6l7) 542-5070
`Facsimile: (617) 542~8906
`
`Attorneys for Applicant-
`Appellant,
`'
`Bose. Corporation
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`CERTIFICATE OF INTEREST .....................................................................
`TABLEOF CONTENTS ........................................
`..........................................iii
`TABLE OF AUTHORITIES.....'....................... ..‘................................vii
`STATEMENT OF RELATED CASES ............................................................... 1
`JURISDICTIONAL STATEMENT............................
`...................................... 2
`STATEMENT OF THE ISSUES ......................................................................... 3
`STATEMENT OF THE CASE .-...............................................
`.......................... 4 I
`STATEMENT OF THE FACTS ..............................................._........................... 5
`SUMMARY OF THE ARGUMENT.......................
`........................................ 12
`ARGUMENT ..................................................................................................... 13
`
`.
`
`1.
`II.
`
`.
`STANDARD OF REVIEW .....................................................................13 I
`NEW SUPREME COURT LAW AND ADDITIONAL EVIDENCE
`SINCE THIS COURT’S DECISION IN INRE BOSE CORP.,
`772 F.2d 866, 874, 227 U.S.P.Q. 1, 7 (FED. CIR. 1985)
`INCLUDING OVER TWO DECADES WITHOUT ANY EVIDENCE
`OF USE OF THE MARK BY OTHERS MAKE AN APPLICATION
`
`.
`
`I
`
`I
`g
`
`—-
`
`A.
`
`The Board Erred In Concluding That This Court’s Decision In
`In re Bose Carp., 772 F.2d at 874, 227 U.S.P.Q. at 7 Was A
`Prior Final Judgment On The Merits For The Same Claims
`Presented Here Where The Court In The Prior Case Did Not
`Consider The Supreme Court Decision In Traflix Devices, Inc.
`v. Marketing Displays, Inc., 532 U.S. 23, 34 (2001), The
`Mark’S Curved Front Edges, The Absence Of Use By Others
`For An Additional Two Decades, And The Testimony Of Dr.
`Bose ............................................................................................. ..
`
`15
`
`
`
`
`
`The Board Erred By Not Considering The Supreme Court’s
`Decision In Traflix To Be A Change In Circumstances That
`Allows The Re-Litigation OfThe Claims Raised And Decided
`In The Prior Application Where Trafiix Provides A New Basis
`For Granting Registration That Did Not Exist At The Time Of
`The Prior Decision ....................................................................... .. 17
`
`The Board Erred In Not Correctly Applying The Morton-Norwich
`Factors To Determine Whether" the Bose Mark Is De Jure
`Functional. . ..............................................
`................................. .. 19
`
`1.
`
`2.
`
`The Board Incorrectly Applied The First
`Morton-Norwich Factor By Not Considering Whether
`An Expired Utility Patent Discloses The Utilitarian
`Advantage Of The Mark. .................................
`.............. 19
`
`'
`
`The Board Incorrectly Applied The Second
`Mortori~Norwz'ch Factor By Not Considering Additional
`Evidence of The Absence of Advertisements Touting
`The Utilitarian Aspects Of The Mark, Which Comprises
`A Change In Circumstances That Allows The
`Re-Litigation Of The Claims Raised And Decided In
`The Prior Application Where Such Circumstances Did
`Not Exist At The Time Of The Prior Decision And
`Provide Additional Support For Granting The
`Registration ........................................
`............................. 20
`
`V The Board Incorrectly Applied The Third
`
`'
`
`Evidence Of Non-Use Of The Mark By Competitors In
`The More Than Twenty Years Since This Court’s
`Decision In In re Bose Corp., Which Comprises A '
`Change In Circumstances That Allows The Re—Litigation
`Of The Claims Raised And Decided In The Prior
`Application Where Such Circumstances Did Not Exist
`At The Time Of The Prior Decision And Provide
`Additional Support For Granting The Registration ........ .. 21
`
`iv.
`
`
`
`4.
`
`The Board Incorrectly Applied the Fourth
`Morton-Norwich _Factor By Not Considering Additional
`Evidence Regarding The Economy Of The Mark, Which
`Comprises A Change In Circumstances That Allows The
`Re—Litigation Of The Claims Raised And Decided In The
`Prior Application Where Such Circumstance Did Not
`Exist At The Time Of The Prior Decision And Provides
`Additional -Support For Granting The Registration .....
`
`22
`
`D.
`
`Public Policy Considerations Require That The Circumstances
`For Preclusion Be Certain As To Every Intent And The Board
`Has Failed To Meet Its Burden To Show That Claim Preclusion
`Should Apply ................................................................................. 23
`
`III.
`
`THE BOARD ERRED IN APPLYING THE MORT0N—NOR WICH
`FACTORS AND THESE ERRORS CAUSED THE BOARD TO
`INCORRBCTLY FIND THAT THE MARKIS DE JURE
`FUNCTIONAL ....................................................... .7.............................24
`
`A.
`
`B.
`
`H__ C._
`
`No Patent Claims Recite The Curved Front Edges, And
`Neither Patent Discloses Utilitarian Advantages For Curved
`Front Edges ..............................................
`................................ .. 25
`
`The Board Failed To Furnish Any Evidence That Bose
`Advertising Touts The Utilitarian Advantages Of The Design..... 26
`
`____There Is_Substantia1 Evidence Of Record That Alternative
`Designs Are Available To _Co_mp‘e‘iit6rs",‘No C6rf1pEfit‘<fi“I=l‘as"'EVef"“‘“"'
`Used The Mark, And The Board Has Not Refuted The Evidence
`Showing That The Mark With The Curved Front Edges Is
`Ornamental, Incidental, Or Arbitrary ............................................ 27
`
`D.
`
`There Is Substantial Evidence Of Record That Alternative
`28
`Designs Are Less Expensive And Easier To Manufacture ....
`THE MARK HAS ACHIEVED" SECONDARY MEANING ............... .. 29
`
`IV.
`
`
`
`CONCLUSION .................................................................................. .; ............ .. 3]
`
`
`
`“'““""~r---—------«—--.........,........_._._.............‘....-..._..._.._.._._.....,._._.............,..,_,,_,......._...H.__
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`
`1_>gg§
`
`Dickinson v. Zurko, 527 U.S. 1500, 164-65 (1999) ................................................ 13
`
`Foster v. Hallco Mfg. Co., 947 F.2d 469, 480 (Fed. ‘Cir. 1991) ........................... 23
`Hallco Mfg. Co., Inc. v. Foster, 256 F.3d 1290, 1294, 59 U.S.P.Q.2d 1346,
`1348 (Fed. Cir. 2001) ...........
`.................................................................... 13 .
`
`Inre Bose Corp., 216 U.S.P.Q. 1001 (TTAB 1983) ............................................... 5
`
`In re Bose Corp, 772 F.2d 866, 227 U.S.P.Q. 1
`(Fed. Cir. 1985) ....... .._. ....................................................... ..
`‘
`
`1, 5-6,13,15,16,
`17, 18, 21
`
`In re Gartside, 203 F.3d 1305, 1315, 53 U.S.P.Q.2d 1769, 1775
`(Fed. Cir. 2000) ........................................................................................... 13
`
`In re Honeywell Inc., 8 U.S.P.Q.2d 1600 (TTAB 1988)............
`
`............... 9, 10, 15
`
`In re Morton—Norwich Prods., Inc., 671 F.2d 1332,
`213 U.S.P.Q. 9 (C.C.P.A. 1982) ...................... ..3, 10, 12, 13, 16, 19, 20, 21,
`'
`.
`22, 24, 25-26, 27, 28, 29
`
`In re Owens-Corning Fiberglass Cor"p., 774 F.2d 1116, 1120,
`Cir-. 1985)...........................................;.......... 13
`Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1362, 55 U.S.P.Q.2d 1854,
`1856 (Fed. Cir. 2000) .....................
`........................................................... 14
`
`Mayer/Berkshire Corp. v. Berkshire Fashions, Inc.,.424 F.3d 1229, 1232-33,
`76 U.S.P.Q. 1310 (Fed. Cir. 2005)........................................................ 14, 23
`
`McNellis v. First Fed. Sav. And Loan Ass 'n ofRochester, New York,
`364 F.2d 251_, 251 (2nd. Cir. 1966)........................
`................................... 23
`
`Parklane Hosiery Co. v. Shore, 439 US. 322, 326 n.5 (1979)?............................ 14
`
`vii
`
`
`
`Cases, cont’d.
`
`Page
`
`Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1327, 54 U.S.P.Q.2d 1894, 1897
`(Fed. Cir. 2000) ............. ..; ........................................................................... 13
`
`Russell v. Place, 94 U.S. 606, 610, 24 L.Ed. 214 (1376)...................................... 23
`
`Traflix Devices, Inc. v. Marketing Displays, Inc.,
`532 U.S. 23 (2001) ........
`.............................................3, 10, 12, 15, 16-17,
`.
`.
`18, 19, 20, 25,28
`
`United States v. Munsingwear, Inc., 340 U.S. 36, 38, 71 S.Ct. 104,
`95 L.Ed. 36 (1950) ...................................................................................... 23
`
`'
`Universal‘Overall Co. v. Stonecutter Mills Corp, 310 F.2d 952, 956,
`135 U.S.P.Q. 437, 439 (C.C.P.A. 1962) ................ .. 14, 19, 20-21, 22, 23, 24
`
`'
`Valu Eng ’g., Inc. v. Rexnord Corp., 278 F.3d 1268, 1276,
`61 U.S.P.Q.2d 1422, 1427 (Fed. Cir. 2002).......................................... 19, 29
`
`Young Eng ’rs., Inc. v. United States Int’l Trade Comm ’n, 721 F.2d 1305,
`1314, 219 U.S.P.Q. 1142, 1150 (Fed. Cir. 1983) .......................................
`
`14
`
`viii
`
`
`
`STATEMENT OF RELATED CASES
`
`Pursuant to Federal Rule 47.5, Appl-icant-Appellant states that there was a
`
`prior proceeding under Trademark Serial No. 73/127,803, which registration was
`
`refused in In re Bose Corporation, 772 F.2d 866, 227 U.S.P.Q. 1 (Fed. Cir. 1985‘)
`
`(the “l 985 decision”). There have been no other previous appeals in the
`
`proceeding before this or any other appellate court. "There are no other cases
`
`known to counsel, pending in this or any other court, that will directly affect or be
`
`directly affected by this Court’s decision.
`
`..._.__...L.._..-..__.--._-.
`
`
`
`JURISDICTIONAL STATEMENT
`
`This is an appeal from a final decision of the Trademark Trial and Appeal
`
`Board in a trademark application. This court has jurisdiction over the appeal
`
`pursuant to 15 U.S.C. § 1071(a)*and 28 U.S.C. § 1295(a)(4)(B).
`
`
`
`.-......._;_...c..__..........--_,....-..._...._._._,_~_______,__________w___,_w
`
`
`
`STATEMENT OF THE ISSUES
`
`1.
`
`_ Whether registration is barred by claim preclusion when the 1985
`
`decision did not deal with the nonfunctional curved front edges feature ofthe mark
`
`of the type recognized by the 2001 decision of the Supreme Court as protectible in
`
`Traflix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), there is
`evidence of more than another decade of exclusive use ofthe mark, and additional
`evidence of nonfunctionality from Dr. Bose not considered in the prior appeal.
`2. Whether the mark with the nonfunctional curved front edges feature
`
`. of the type recognized by the Supreme Court as protectible is functional when
`
`there is no evidence that any of the four criteria for determining functionality as set
`
`forth in In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 U.S.P.Q. 9
`
`(C.C.P.A. 1982) have been met.
`
`-i-—-«--—~—--_-..._........_..-...,...._____.'
`
`
`
`STATEMENT OF THE CASE
`
`App1icant—Appel1ant, Bose Corporation (“Bose”) filed Application Serial
`
`9
`
`No. 74/734,496 on September 26, 1995 seeking registration of the following
`
`product configuration device for loudspeaker syster’ns4(A42~49):
`
`
`
`The Examining attorney refused registration under the doctrine of res
`
`judicata, claiming that Bose had‘ an opportunity to prosecute this design in prior
`
`. Application Serial No. 73/127,803 and on the basis that the mark is dejure
`functional. Bd. Dec. p. 27; A40. Bose appealed to the Board, claiming that the
`
`xamineroverlooked critical-euvidehce showirigitilfafincliaifn 1.5feE1fi§fdrraia“fibt§p13I3r“‘
`
`"
`
`and that the mark was not dejure functional. A50—83, A85“-135, A142-194, A195-
`
`199, A224-249, The Board denied Bose’s appeal in a final decision dated July 12,
`
`2005 (reconsideration denied by Board October 4, 2005). Al—40. Bose filed a
`
`timely Notice of Appeal. A48-49.
`
`
`
`
`
`...\.......-......_________,,.___._________‘__M____;___‘_____‘_.____~M"”~mw.~"_—_m_’~‘Wm———_-“_m“-HH.
`
`
`
`STATEMENT OF THE FACTS
`
`THE BOSE DEVICE
`
`Bose seeks to register the mark pictured above for loudspeakers. A42. Bose
`
`has had substantially exclusive use of this mark for loudspeakers for at least 22
`
`years. Bd. Dec. p. 26; A39. The mark has acquired secondary meaning. Bd. Dec.
`p. 26-27; A39—40.
`.
`
`The mark is described in the present application, Serial No. 74/734,496, as
`
`“an enclosure and its image ofsubstantially pentagonal cross section with a
`
`substantially pentagonal-shaped top with a curved front edge parallel to a
`
`substantially pentagonal—shaped_bottom with a curved front edge” for
`
`loudspeakers. A42-47, A286, A346.
`
`Although the marks are the same, this description is different from the ‘
`
`descriptionin the prior Bose application, Serial No. 73/ 127,803, describing the
`
`mark as “an enclosure andiits image of substantially pentagonal cross section with
`substantially peritagonallsl-iaped top paranata‘agufiaariiialry'p'éh"t'éi"g”6f1”al"-‘slia15‘e‘d“
`
`H
`
`bottom” A1016. The Board previously determined that the mark in Serial No.
`
`73/127,803 had acquired secondary meaning, but ultimately refused to grant
`
`registration on the basis that the mark was dejure functional. In re Bose Corp.,
`
`216 U.S.P.Q. 1001 (TTAB 1983); A617-630. On appeal from the Board’s decision
`
`refusing registration, this Court determined that the Board’s finding that the five-
`
`
`
`sidedness feature of the Bose mark is functional was not clearly erroneous. In re
`
`Bose Corp., 772 F.2d 866, 874, 227 U.S.P.Q. 1, 7 (Fed. Cir. 1985) (the “l985
`decision”). However, the 1985 "decision was not based on any consideration ofthe
`
`“curved front edges” ofthe mark:
`
`Thus we need only consider whether the angled back, which gives the '
`enclosure ‘its substantially pentagonal shape, is functional in the sense
`of “utilitarian.”
`
`772 F.2d at 874, 227 U.S.P.Q. at 4.
`
`The Board concedes that “the bibliographical, portion of the previous
`
`USPTO application record does not contain a written description of the
`
`loudspeaker enclosure.” Bd. Dec. p. 9; A22. The Board also concedes that Bose
`“made no prominent arguments as to the legal significance ofthe bowed (or
`curved) front edge in the previous litigation.” Bd. llec. p. 10, A23.
`
`Bose owns two expired utility patents on loudspeaker systems, U.S. Patent
`
`No. 3,582,553 and U.S. Patent No. 4,146,745. A523—547. These patents expired
`
`4
`
`8 iii{‘i”9’é‘z?aiia 1996, £6s:‘»’56ti‘vEiy. "'I23T”'1\Té"i‘tl“ié‘r'6'f"tlié’;¢;’é"patéfits di§c'l'6ses‘an“y”"""""‘ -
`
`in ~ -7
`
`7-
`
`utilitarian advantages to the curved front edges, and none of the claims recite the
`
`curved front edges of the Bose mark. Id.
`
`_
`
`Numerous facts and circumstances have changed since the 1985 decision. In
`
`the over 20 years, since the 1985 decision and during the more than ten—year
`
`prosecution of the present application where the Examiner issued five office
`
`
`
`actions, no evidence has ‘been made of record that shows advertising by Bose that
`
`touts the utilitarian advantages of the mark. A271-285, A2893320, A333—345,
`
`A427-492, A548-551. There is evidence of record showing that Bose advertising
`
`‘ does not tout the utilitarian advantages of the mark.. A324-332, A346-426, A493,
`
`A547.
`
`There is no evidence of record that shows that, in the over 20 years since the
`
`1985 decision and during the more than ten—year prosecution of the present
`
`application where the Examiner issued five office actions, any competitor uses the
`
`Bose mark. A27l—285, A289-320, A333-345, A427—492, A548-551. There is
`
`evidence of record indicating that, prior to the 1985 decision and in the over 20
`
`years since that time, Bose competitors use other designs. A324—332, A346-426,
`
`A493, A547.
`
`There is no evidence of record that shows that, in the over 20 years since the
`
`1985 decision and during the more than ten—year prosecution of the present
`
`I iliapplicationflwhere the Ex miner issued fivewdffificé a'_6ti6iis',‘thé ‘rfiarieaofisists of‘2T’"'
`
`' ‘
`
`'
`
`configuration that results from a comparatively easy or inexpensive method of
`manufacture. A271"-.285, A2489-.320, AH333-345, A427-492, A548-551. There is
`evidence of record, which was not considered in the 1985 proceeding, and
`consisting of a declaration from Dr. Amar Bose that indicates that the mark
`
`consists of a configuration that is more expensive and requires considerably more
`
`
`
`manufacturing labor and care and is thus more difficult to produce than other
`
`designs. A52—54, A58-79, A584—612.
`
`THE BOARD’S DECISION
`
`Claim Preclusion
`
`The Board held that registration is barred by claim preclusion because:
`
`The applicant herein is identical to the applicant in the earlier
`proceeding, the Court of Appeals for the Federal Circuit rendered a
`final decision in that action on theissue of dejure functionality of the
`same product configuration as is before us in this proceeding, and no
`conditions, facts, or circumstances of consequence to the issue of de
`jure functionality have changed since that earlier, adverse decision.
`
`2
`
`Bd. Dec. p. 16; A29.
`
`The Board said that this Court rendered a final decision in the 1985
`
`proceeding on the issue of dejure functionality “of substantially the same product
`
`configuration as is before us in this proceeding.” Bd. Dec. p. 8; A21. The Board
`
`did not consider that the description of the mark here is different fiom the
`
`H ___A_desc_ription in the 1985 proceeding. A42-47, A286, A346, A1016. The Board
`
`the bowed (or curved) front edge in the previous litigation.” Bd. Dec. p. 10; A23.
`
`The Board also determined that “no conditions, facts, or circumstances of
`
`consequence to the issue of dejure functionality havechanged since that earlier,
`adverse decision.” Bd. Dec. p. 16; A29. The Examiner presented no evidence in
`
`support of functionality. A271-285, A289-320, A333-345, A427-492, A548-551.
`
`8.
`
`
`
`Bose presented post-1985 affirmative evidence that supports a finding that the
`
`‘
`
`mark is not functional. A324-332, A346-426, A493, A547.
`
`Although Bose urged the Board, as it had urged the USPTO, to apply the
`
`analogous factsof In re Honeywell,Inc., 8 _U.S.P.Q.2d 1600 (TTAB l988), where
`
`the Board found a round thermostat to be registrable despite being refused
`registration in a prior application proceeding, and despite the existence ofexpired
`utility patents for the thermostat and an expired design patent for the round
`thermostat cover, where the Examiner hadnfailed to provide evidence of use of the
`
`mark by competitors in the intervening period, and where applicant provided
`
`evidence showing that competitors actually use different designs, to this case, the
`
`Board declined. Bd. Dec. pp.l3—17; A26-30, A50-54, A85-135, A195-197, A226-
`
`230, A237-245, A249.
`
`First, the Board distinguished Honeywell by stating that the prior refused
`
`mark and the later-filed mark in Honeywell were different, whereas, here, the Bose
`
`xf{5r'1E1s"th锧arfi€asEh€ina£E'aécrd5a'by
`
`tlie"’I9"85proeeeding;4'Bd:-*Dec-pp-:1--t=-1~2;—:~~
`
`A24—25. Second, the Board indicated that the mark in Honeywell was chosen for
`
`‘its source-identifying nature, whereas the Bose mark is a “clear derivative of the
`
`angled rear panels that are integral to the [Bose] utility patents.” Bd. Dec. p. 12;
`
`A25. The Board did not mention the evidence of record showing that the Bose
`
`ii ‘mark was chosen for its source-identifying capacity. A52-54, A63-79. Lastly, the
`
`........._......,........,_....,....-....,,____,_,._,...,......._.,.,_,__,
`
`--
`
`
`
`Board distinguished Honeywell on the basis that “much of the discussion in the
`
`Board-’ s 1988 Honeywell decision actually pointed to design patents rather than
`utility patents.” Bd. Dec. p. 13; A26. Honeywell involved both an expired patent
`
`on the round thermostat as Well as two expired utility patents on a thermostat
`
`control. See In re Honeywell Inc., 8 U.S.P.Q.2d at 1603.
`
`De Jure Functionality
`
`The Board held that “[W]hen applying the four M0rt0n—Norwich factors to
`
`the instant case, each one of the factors weighs against the applicant. Therefore,
`
`we find that applicant’s mark is functional.” Bd. Dec. p. 26, A39.
`First, the Board pointed to the expired Bose utility patents, and stated that
`
`they “disclose the utilitarian advantages of the design sought to be registered”
`
`where they refer to the “pentagonal shape of the claimed invention.” Bd. Dec. p.
`
`18-19; A31-32. The Board quoted Traflix Devices, Inc. v. Marketing Displays,
`
`Inc., 532 U.S., at 29-30 for the proposition that if a product configuration sought to
`
`T
`
`‘ 1")?-r_‘e“g’i_sTer"c':—c1'_'i“s"“°lE€§uBj'€6f'61’"antility"pat'éfit“that‘disclo‘ses'the'"fe'ature‘st
`
`-2 ~
`
`~
`
`utilitarian advantages, then there is a high burden to prove that the configuration is
`
`not functional. Bd. Dec. p. 18, A31. The Board did not identify any language in
`
`the expired Bose utility patents that discloses utilitarian advantages of the curved
`
`front edges. Bd. Dec. p. 18-20; A31-33.
`
`16
`
`
`
`
`
`'""t“"‘-'*'v*-‘——--v--—.—-t—-.._......._._.__,__,____,____,___.__‘_________W___________“__~_
`
`
`
`Second, the Board identified two Bose promotional pieces that refer to or
`
`depict the internal components of a -Bose loudspeaker (but that do not show the
`
`mark as described in the application) and concluded that they constitute
`
`advertisements that tout the utilitarian advantages of the ‘mark sought to be
`
`registered. Bd. Dec. 20-22; A33-35, A499-502, A505-508. Like the patents, these
`
`pieces do not tout the utilitarian advantages of the curved front edges. Id.
`Third, the Board discounted the relevance ofevidence of alternative designs
`in the functionality analysis: [T]he Board earlier explicitly took the position that
`
`the availability of certain other forms or shapes for speaker enclosures did not
`
`detract from the functional character of the involved configuration.” Bd. Dec. p.
`
`24; A37. The Board went on to indicate that
`
`“To the extent we do consider the availability of shapes for speaker
`enclosures, we View withsorrie skepticism the testimony of Bose
`Chief Engineer, Sherwin Greenblatt. . .that this speaker enclosure
`could have been designed to be ‘octagonal,’ or to have a ‘triangular
`cross section [with] increased height. .
`.
`. These proposed alternatives
`appear to us to be ‘unfeasible, uneconomical, or otherwise
`‘ disadvantagTe6u'sT’''‘''
`
`.
`
`Bd. Dec. pp. 24-25; A37-38." The Board did not mention the testimony ofDr.
`
`Amar Bose which described the alternative of conventional rectangular enclosures
`
`for loudspeakers. A53, A59, A238.
`
`11
`
`
`
`
`
`«-Ami».........._.._.._a........w...__-..—....,.,........_._.._.._.........,.,m
`
`
`
`SUMMARY OF THE ARGUMENT
`
`With respect to the issue of claim preclusion, the Board committed
`
`reversible error by failing to give weight to the nonfunctional curved front edges
`
`feature of a type recognized as protectible by the Supreme Court in Traflix
`
`Devices, Inc. v. Marketing Displays, Inc., 523 U.S., 23, 34 (2001) and despite the
`existence of20 more years of exclusivity and new evidence that bears‘ directly on
`
`..
`
`the functionality factors.
`With respect to the issue of functionality, the Board committedireversible
`
`.
`
`error by (1) failing to recognize that the curved front edge feature is not claimed in
`the expired Bose utility patents; (2) concluding that Bose advertising touts the
`
`A
`
`4
`
`9
`
`_
`
`Board do not describe or show the mark at all, but only describe or show the
`
`internal components of the loudspeakers; (3) discounting relevant evidence
`
`showing the availability of alternative designs; and (4) discounting relevant
`I’éviiéfiéisihattIHé’ta1t5fir5tive“desrgas"‘z'ife‘a‘ct1'Ial'l'}rless"expensive--a-nel-easier.to....
`
`.
`
`,.
`
`__ _
`
`manufacture th
`
`an the Bose mark, all of which bear on the issue of functionality as
`
`set forth in In re Morton-Norwich Prods., Inc., 671 F.2u
`
`d 1332, 213 U.S.P.Q. 9
`
`(Fed. Cir. 1982)..
`
`12
`
`
`
`ARGUMENT
`
`1.
`
`STANDARD or REVIEW
`
`Claim preclusion is a question of law reviewed without deference. See
`Hallco Mfg. Co. v. Foster, 236 F.3d 1290, 1294, 59‘U.S.P.Q.2d 1346, 1348 (Fed.
`
`Cir. 2001).
`Functionality is a question of fact. See In re Morton-Norwich Pr0ds., 'Inc.,
`A 671 F.2d 1332, 1340, 213 U.S.P.Q. 9, 15 (C.C.P.A._1982). Whether amark is
`functional will depend on the totality of the evidence. See In re Owens-Corning
`
`-
`
`Fiberglas Corp., 774 F.2d 1116, 1120, 227 U.S.P.Q. 417, 419 (Fed. Cir. 1985).
`This Court will uphold the Board's factualifindings unless they are unsupported by
`
`substantial evidence. See Dickinson v. Zurko, 527 U.S. 150, l64—65 (1999); In re
`
`Gartside, 203 F.3d 1305, 1315, 53 U.S.P.Q.2d'1769,‘1775 (Fed. Cir. 2000); Recot,
`
`Inc. v. M.C. Becton, 214 F.3d 1322, 1327,54 U.S.P.Q.2d 1894, 1897 (Fed. Cir.
`
`2000).
`
`'
`
`SINCE THIS COURT’S DECISION IN INRE BOSE CORP., 772 F.2d
`866, 874, 227 U.S.P.Q. 1,7 (FED. CIR. 1985) INCLUDING OVER TWO
`
`.-
`
`attempting to register its mark, the Board said:
`
`
`
`The applicant herein is identical to the -applicant in the earlier
`proceeding, the Court of Appeals for the Federal Circuit rendered a
`final decision in that action on the issue of dejure functionality of the
`same product configuration as is before us in this proceeding, and no
`conditions, facts orcircumstances of consequence to the issue of de
`jure functionality have changed since that earlier, adverse decision.
`
`Bd. Dec. p. 16, A29.
`
`Under the doctrine of claim preclusion, “a judgment on themerits in a prior
`
`suit bars a second suit involving the same parties or their privies based on the same
`
`cause of action.” Parklane Hosiery Co. v..Shore, 439 U.S. 322, 326 n.5 (1979);
`
`see also Young Eng’rs, Inc. v. United States Int’l Trade Comm’n, 721 F.2d 1305,
`
`1314, 219 U.S.P.Q. 1142, 1150 (Fed. Cir. 1983).
`
`Thus:
`
`a second suit will be barred by claim preclusion if: (1) there is identity
`of parties (or their privies); (2) there has been an earlier final
`judgment on the merits of a claim; and (3) the second claim is based
`on the same set of transactional facts as the first.
`
`0
`
`Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1362, 55 U.S.P.Q.2d 1854, 1856
`3 A5(fiddfairf~fl500)f§5e"a'l.§o'Y\7Iaj7e77B"eFk§fi'ire“Corfi;"v;""Berkshireiiashions;---lnc;;-—-424—v— — --
`F.3d 1229, 1232-33, 76 U.S.P.Q.2d 1310, 1312 (Fed. Cir. 2005). However,
`
`preclusion will not be appropriate where “it is apparent that all the questions of fact
`and law involved [in the current proceeding] were not determined in the previous
`
`proceedings” See Universal Overall Co. v. Stonecutter Mills Corp., 310 F.2d 952,
`
`956, 135 U.S.P.Q. 437, 439 (C.C.P.A. 1962).
`
`.14
`
`
`
`
`
`Here, the Board failed to take into consideration legal and factual changes in
`circumstance that have arisen since the prior decision, and which therefore make
`
`the application of claim preclusion improper.
`
`While this Court is not bound to follow decisions of the Board, we have set
`
`forth in the proceedings below why In Re Honeywell Inc., 8 U.S.P.Q.2d 1600
`(TTAB 1988) requires a conclusion that the mark is not fiinctional andregistration
`is not barred by claim preclusion. A50-54, A85-135, Al95-197, A226-247, A287,
`
`A325-328, A347-361, A495-496.
`
`A.
`
`The Board Erred In Concluding That This Court’s Decision In In
`re Bose Corp., 772'F.2d at 874, 227 U.S.P.Q. at 7 Was A Prior
`Final Judgment On The Merits For The Same Claims Presented
`Here Where The Court In The Prior Case Did Not Consider The _
`Supreme Court Decision In Trajfx Devices, Inc. v. Marketing
`Displays, Inc., 532 U.S. 23, 34 (2001), The Mark’s Curved Front
`Edges, The Absence Of Use By Others For An Additional Two
`Decades, And The Testimony Of Dr. Bose
`Bose does not dispute that this Court’s decision in In re Bose Corp., 772
`___I_:‘_'l2_(__l_§.__lL__A__8‘:l_‘_i, 227 U.S.P.Q. at 7 was a final decision involving the same party as
`here, namely, Bose. However, the Board erred in concluding that the same set of
`
`transactional facts are involved now as were at issue in the prior proceeding. The
`
`Board’s determination on this point rests solely on its assessment that the “images
`
`shown on the drawings are substantially identical in both applications.” Bd. Dec.
`
`p. 9; A22. However, the Board concedes both that ‘-‘the bibliographical portion of
`
`the previous USPTO application record does not contain a written description of
`
`15
`
`----—---—--i-.-—.~.-.--.a.,.....-.._.__-..-
`
`
`
`the loudspeaker enclosure” (Bd. Dec. p. 9; A22) and that Bose “made no
`
`prominent arguments as to the legal significance ofthe bowed (or curved) front
`
`edge in the previous litigation.” Bd. Dec. p. 10; A23. In fact, this Court’s analysis
`of dejure functionality in the prior case did not address the particular significance
`
`of the curved front edges of the mark: ,
`
`Thus, we need only consider whether the angled back, which gives
`the enclosure its substantially pentagonal shape, is functional in the
`sense of ‘-utilitarian’ as defined in Morton-Norwich. If this feature is
`functional, it follows that the design as a whole is functional.
`
`In re Bose Corp., ‘772 F.2d at 870, 227 U.S.P.Q. at 4. This Court ultimately held,
`
`“Since the board’s finding that thefive~sidednes.sfeature of Bose’s design is
`
`. functional is not clearly erroneous, we c'yf7irm.” 772 F.2d at 875, 227 U.S.P.Q. at 7
`
`(additional emphasis added).
`
`The mark Bose now seeks to register is described as, “an enclosure and its
`
`image of substantially pentagonal cross‘ section with a substantially pentagonal
`
`‘_ Mshap'e~cl~to__p__with a curved front edge parallel to a substantially pentagonal-shaped
`bottom with a curved front edge.” A44, A286, A346. At least because this curved
`
`..._....._.__n__._..
`
`.-__
`
`_._.._.....,.«.....-_.-._...
`
`____......_._._.
`
`front aspect of the mark was not an issue that‘was litigated or decided by the Board
`
`or this Court in the prior proceeding, and therefore did not form the basis for the
`
`prior finding of functionality, claim preclusion cannot be invoked as a basis for
`denying Bose the opportunity to attempt to register a mark comprised, in part, of a
`
`clearly nonfunctional feature that was not previously litigated or decided to be
`
`16
`
`
`
`
`
`I—--V--———-.-.-...........,..,.,..__,__,,_,.____,_._______.___M__________.
`
`
`
`functional and of the type subject to protection under Trafiix Devices, Inc. v.
`Marketing Displays, Inc., 532 U.S. 23, 34 (2001).
`4
`
`B.
`
`The Board Erred By Not Considering The Supreme Court’s
`Decision In Traffix To Be A Change In Circumstances That
`Allows The Re-Litigation Of The Claims Raised And Decided In
`The Prior Application‘ Where Traffix Provides A New Basis For
`Granting Registration That Did Not'Exist At The Time Of The
`Prior Decision
`
`The Board completely disregarded evidence presented by Bose which
`
`showed that in the time since this Court’s prior decision, there has been a change in
`
`the legal standard of inquiry for functionality of trade dress. Bose Req. Recon. pp.
`
`5-6, A 5455. In 2001, long after this Court’s 1985 decision in In re Bose Corp,
`
`772 F.2d at 870, 227 U.S.P.Q. at 7 the Supreme Court decided Traflix, and said
`
`that although “[a] utility patent is strong evidence that the features therein claimed
`
`are functional’.’, nevertheless:
`
`_
`
`In a case where a manufacturer seeks to protect arbitrary,
`Incidental, or ornamental aspects offeatures ofa product
`
`ound in the atent claims such as arbitrary curves in the
`
`H " legs or an ornamental"pati€rii‘pEii'ntéd"6fi‘the‘ ‘s'p'rji'r1'g"s;'a“"""““'*-'
`different result might obtain. There the manufacturer could
`perhaps prove that those aspects do not serve a puipose
`within the terms ofthe utility patent. The inquiry into wheth
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