Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1160267
`
`Filing date:
`
`09/17/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91255161
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Three Frog, LLC
`
`STEPHEN MCARTHUR
`THE MCARTHUR LAW FIRM PC
`9465 WILSHIRE BLVD SUITE 300
`BEVERLY HILLS, CA 90212
`UNITED STATES
`Primary Email: stephen@smcarthurlaw.com
`323-639-4455
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Opposition/Response to Motion
`
`Thomas Dietrich
`
`tom@smcarthurlaw.com, stephen@smcarthurlaw.com,
`ricky@smcarthurlaw.com
`
`/Thomas Dietrich/
`
`09/17/2021
`
`2021.09.16. FINAL OPP. BRIEF.pdf(224242 bytes )
`EXHIBIT A.pdf(1376094 bytes )
`EXHIBIT B - PART 1.pdf(2457067 bytes )
`EXHIBIT B - PART 2.pdf(5434760 bytes )
`EXHIBIT B - PART 3.pdf(3576327 bytes )
`EXHIBIT B - PART 4.pdf(2538891 bytes )
`EXHIBIT C - PART 1.pdf(2522394 bytes )
`EXHIBIT C - PART 2.pdf(4325468 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91255161
`
`Application Serial No. 88/125,640
`Filed: September 20, 2018
`Published: December 10, 2019
`Mark: Hex Shaped Box
`
`
`
`
`CHRIS W. TAYLOR, JR.,
`
` Opposer,
`
` v.
`
`THREE FROG, LLC,
`
` Applicant.
`
`
`
`APPLICANT’S OPPOSITION TO OPPOSER’S
`CROSS-MOTION FOR SUMMARY JUDGMENT
`
`Applicant Three Frog, LLC (“Applicant”) files this brief in opposition to Opposer Chris
`
`W. Taylor, Jr.’s (“Opposer”) cross-motion for summary judgment.
`
`Applicant’s Opposition brief addresses four primary issues. First, the Board has already
`
`held that Opposer has not properly pled a claim of functionality. Thus, he cannot obtain summary
`
`judgment on that claim. Second, the undisputed evidence—including Opposer’s admissions—
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`shows that Applicant’s dice box design is not functional, which warrants granting summary
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`judgment in Applicant’s favor on that issue. Third, Opposer’s frivolous attempt to create issue
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`preclusion using a Copyright Office decision applying entirely different law in a proceeding that
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`did not involve both parties is directly contrary to the B&B Hardware case cited by Opposer.
`
`Fourth, Opposer failed to meet his initial burden of making out a prima facie case that the
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`examiner’s finding of acquired distinctiveness was in error, and summary judgment on acquired
`
`distinctiveness should thus be granted to Applicant instead. At minimum, there is a genuine dispute
`
`of material fact regarding acquired distinctiveness, which prohibits granting Opposer’s cross-
`
`motion on that issue.
`
`I.
`
`MATERIAL FACTS
`
`A.
`
`Facts Stated by Opposer
`
`Pursuant to TBMP § 528.01 and Fed. R. Civ. P. 56(c)(1), Applicant hereby identifies the
`
`
`
`1
`
`

`

`material facts stated by Opposer which are in dispute.
`
`1.
`
`Disputed. Opposer is an individual who makes YouTube videos. See Exhibit
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`(“Ex.”) A filed herewith (Deposition of Chris Taylor (“Taylor Depo.”)) at 8:8-18. Opposer had no
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`interest in distributing a 3D print file for a hexagonal dice box until the creator of the file, Aaron
`
`Griffith (“Agrif”), informed Opposer of a copyright-related dispute between Agrif and Applicant
`
`concerning a 3D print file that Agrif had created (the “Agrif File”) which had been removed from
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`the Thingiverse website in response to Applicant’s copyright DMCA removal notice. On or about
`
`November 29, 2018, Opposer re-posted the digital Agrif File to Thingiverse. Taylor Depo. 39:11-
`
`42:21, Deposition Exhibit (“Depo. Ex.”) 1; Ex. B filed herewith (Declaration of Stephen McArthur
`
`(“McArthur Opp. Decl.”)), Attachment (“Att.”) 1 (Reddit conversation chain) at Taylor-000201-
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`03 (Reddit posts made by user “nerys71” were made by Opposer). The genesis of Opposer’s
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`involvement with Applicant began by this uploading of the digital Agrif File.1 At the time, Opposer
`
`wrote that he did so solely to shield Agrif from the potential consequences of having his name
`
`attached to the file and to create a conflict with Applicant. See McArthur Opp. Decl., Att. 1.
`
`Opposer wrote: “send me the file. I will repost it to thingiverse and tell [Elderwood] to go F OFF
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`if they try to say anything about it.” Id. Opposer admitted in writing that he did this in order to
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`protect Mr. Griffith (“he does not want his name attached to the endeavor. SO I am going to post
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`it ‘as my own’ on thingiverse”). Id. (internal quotations placed by Opposer in original). In
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`explaining his reasoning for why he would re-post the file, Mr. Taylor testified that it was because
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`“I would like to spank [Elderwood] and make them squeal because they can’t own a hexagon.”
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`Taylor Depo. 36:13-24. In Opposer’s email to Agrif asking for permission to re-post the Agrif File,
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`Opposer wrote he wanted to re-post the file because “I have nothing to lose and an axe to grind :-
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`) I like a challenge. . . . I just REALLY freaking hate it when people abuse copyright and the legal
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`system to smash the little guy. really wrankles me good :-)” Taylor Depo. 42:3-9, Depo. Ex. 1.
`
`
`1 All of this previous history between Opposer and Applicant has only involved a digital file
`containing and a copyright claim, not an actual physical dice box containing the applied-for mark
`or any trademark or trade dress claim.
`
`
`
`2
`
`

`

`2.
`
`3.
`
`4.
`
`5.
`
`Undisputed.
`
`Undisputed.
`
`Undisputed.
`
`Disputed that the declarations submitted by Applicant were identical. Each
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`declaration was reviewed by the individual signing it, they added their own unique identifying
`
`information, and signed under penalty of perjury because the individual agreed that the facts stated
`
`in the declaration were accurate.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Undisputed.
`
`Disputed regarding declarations on the same basis identified for No. 5 above.
`
`Undisputed.
`
`Undisputed.
`
`10.
`
`Undisputed.
`
`11.
`
`This statement is an incomplete sentence. Because Applicant cannot ascertain what
`
`was supposed to be stated, Applicant disputes the statement.
`
`12.
`
`Undisputed.
`
`13.
`
`Undisputed.
`
`14.
`
`Undisputed.
`
`15.
`
`Undisputed.
`
`16.
`
`Disputed that Opposer made any changes to the 3D print file he uploaded to
`
`Thingiverse in November 2018. He admitted that file was a digital copy of the file created by a
`
`third party, Agrif, and that Opposer re-uploaded that file to Thingiverse merely to inject himself
`
`into a copyright-related dispute between Applicant and Agrif concerning the file. See response to
`
`No. 1 above.
`
`17.
`
`Disputed. The statement by Applicant’s owner was not fraudulent. Applicant did
`
`and does own a copyright in the sculptural design of its dice box, regardless of whether the
`
`Copyright Office accepted Applicant’s copyright application. Further, at the time Applicant
`
`submitted its DMCA notice to Thingiverse on January 14, 2019, as Opposer himself notes,
`
`
`
`3
`
`

`

`Applicant had a request for reconsideration pending with the Copyright Office, which was not
`
`denied until April 9, 2019, several months after the DMCA notice was submitted. And in July
`
`2019, Applicant filed a second appeal of the Copyright Office’s decision. Applicant therefore had
`
`reason to believe that the Copyright Office would accept registration of its copyright application
`
`at the time Applicant submitted the DMCA notice to Thingiverse.
`
`18.
`
`Undisputed.
`
`B.
`
`Additional Material Facts
`
`Applicant provides the following additional material facts relevant to the issues raised in
`
`Opposer’s cross-motion.
`
`Opposer’s Failure to Plead Functionality
`
`19.
`
`The Board has found that Opposer did not properly plead Count One regarding
`
`functionality. [15 TTABVUE 12-13]
`
`20.
`
`Specifically, with regard to Count One of Opposer’s original opposition notice, the
`
`Board found as follows:
`
`[I]n the original pleading it is unclear as to whether Count One is intended to assert
`a claim that the mark fails to function as a trademark under Sections 1, 2, and 45 of
`the Trademark Act, or that the mark is functional under Section 2(e)(5) of the
`Trademark Act. Consequently, Opposer sufficiently pleads neither claim. See D.C.
`One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016) (providing
`the failure to function standard). See also Qualitex Co. v. Jacobson Prods. Co., 514
`U.S. 159, 34 USPQ2d 1161, 1163-64 (1995) (articulating the functionality
`standard).
`
`[15 TTABVUE 12]
`
`21. With regard to the amendments to the opposition proposed by Opposer in his
`
`motion to amend, the Board found as follows:
`
`With respect to the proposed amendments to Count One, the amendments to add
`references to aesthetic and utilitarian functionality in amended ¶¶ 31 and 32 are
`acceptable in that they are timely (as noted above) and do not prejudice Applicant.
`8 TTABVUE 35. However, even in view of the amendments, and as with the
`original pleading, Opposer does not sufficiently plead a claim of either failure to
`function or functionality, and thus does not address or cure the deficiencies in the
`original notice of opposition.
`
`[15 TTABVUE 12-13 (emphasis added)]
`
`
`
`4
`
`

`

`22. While the Board gave Opposer the opportunity to further amend Count One to
`
`properly plead a claim. [16 TTABVUE ¶¶ 30-33]. Despite being represented by counsel, Opposer
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`never did so.
`
`23.
`
`Opposer has not properly pleaded a claim either of functionality or failure to
`
`function as a mark.
`
`Applicant’s Well-Known Dice Box Design
`
`24.
`
`Applicant is a company that makes and sells role-playing game accessories,
`
`including wooden boxes that can be used to store dice such as those commonly used in games like
`
`Dungeons & Dragons. See Ex. C filed herewith (Deposition of Quentin Weir (“Weir Depo.”))
`
`63:21-63:16, 84:12-18.
`
`25.
`
`Applicant’s founders, Quentin Weir and Daniel Reiss, designed a wooden dice box
`
`with a particular hexagonal outer shape and hexagonally-shaped internal compartments (the “Hex
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`Chest box”) in August-September 2014. Weir Depo. 17:2-19:9, 132:8-20, Depo. Ex. 2.
`
`26.
`
`Applicant first began selling its Hex Chest box in September 2014, following public
`
`release of its design to great acclaim on Reddit. Weir Depo. 19:13-31:5, 38:3-43:15, 137:2-141:2,
`
`Depo. Exs. 11, 12; McArthur Opp. Decl., Att. 2.
`
`27.
`
`Applicant has sold Hex Chest boxes continuously from 2014 to the present. Weir
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`Depo. 33:2-38:2, 57:20-77:19, 113:5-14:12, Depo. Ex. 12.
`
`28.
`
`Applicant conducted three successful Kickstarter campaigns for its Hex Chest box,
`
`in October 2014, August 2017, and March 2018. In total, these campaigns led to sales of Hex Chest
`
`boxes to 4,050 individuals for a total of $258,288 in revenue. Weir Depo. 24:1-26:1, 50:14-25,
`
`Depo. Exs. 3, 6; McArthur Opp. Decl., Att. 3.
`
`29.
`
`From 2018 to May 2021, Applicant sold approximately 30,500 Hex Chest boxes to
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`consumers. Weir Depo. 71:6-75:19.
`
`30.
`
`Applicant’s Hex Chest box has been the subject of numerous blog and media
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`articles. See, e.g., Weir Depo. Ex. 4.; McArthur Opp. Decl., Att. 4.
`
`31.
`
`Applicant spent more than $650,000 over the last four-and-a-half years promoting
`
`
`
`5
`
`

`

`and publicizing its product line, of which the Hex Chest box is the headlining product. Applicant
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`has attended many tabletop gaming industry conventions where it promoted its Hex Chest box to
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`a total of more than a million convention attendees. Weir Depo. Ex. 8.
`
`32.
`
`Applicant’s Hex Chest design is among the most well-known and widely-
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`recognized dice boxes in the industry. The distinctive Hex Chest design distinguishes Applicant’s
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`dice box product from other dice boxes, including those of its competitors. McArthur Opp. Decl.,
`
`Atts. 5-7.
`
`33.
`
`Ken Gruhl, a tabletop game designer named one of the top 100 most influential
`
`people in the tabletop gaming industry testified that Applicant’s Hex Chest design is unique to
`
`Applicant and very different from its competitors’ dice box designs. McArthur Opp. Decl., Att. 5
`
`¶¶ 8-12, 15. He stated, “I am not aware of any other product which uses the same design elements
`
`or is similar in style to [Applicant’s] Hex Chest with the beehive interior, other than perhaps a few
`
`very small-time hobbyists that have copied [Applicant’s] Hex Chest Design and may sell or give
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`away a miniscule amount of product.” Id. ¶ 15.
`
`34.
`
`Justus Hughes, the former director of a company that makes tabletop gaming dice,
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`who has planned and executed over 100 tabletop gaming conventions, also testified that
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`Applicant’s Hex Chest trade dress was unique to Applicant. McArthur Opp. Decl., Att. 6 ¶¶ 5-10,
`
`12.
`
`35. Mike Cameron, the owner of Dog Might Games, one of Applicant’s largest
`
`competitors, testified that Dog Might Games sells dice boxes in a variety of different shapes that
`
`are different from Applicant’s Hex Chest design. McArthur Opp. Decl., Att. 7 ¶¶ 4-6. Mr. Cameron
`
`testified that the shape of a dice box’s exterior and its interior slots (if any) are design choices that
`
`are completely up to the designer, and dice box companies have developed “signature” designs
`
`that are recognizable as coming from each company. Id. ¶¶ 7-9. Mr. Cameron testified that
`
`Applicant’s Hex Chest trade dress was unique to Applicant and “is among the most well-known
`
`and widely recognized dice box designs in the industry.” Id. ¶¶ 10-11. In Mr. Cameron’s
`
`experience, consumers interested in dice boxes recognized Applicant’s Hex Chest design as
`
`
`
`6
`
`

`

`originating from Applicant. Id. ¶¶ 12-13.
`
`36. While Opposer had knowledge of the testimony from these industry participants
`
`well before the close of discovery in this proceeding, Opposer chose not to take their depositions
`
`or conduct any discovery relating to their testimony.
`
`Alternative Dice Box Designs
`
`37.
`
`Opposer admitted “[t]here’s an infinite number of ways to create a dice box.”
`
`Taylor Depo. 67:7-9.
`
`38.
`
`There exist infinite other designs for boxes intended to hold dice that do not consist
`
`of a hexagonal outer shape with hexagonal inner compartments. The outer shape of a dice box can
`
`consist of any possible container shape. The inside of a dice box can contain compartments shaped
`
`like a circle, square, triangle, or any other polygonal shape other than a hexagon, or it can contain
`
`no inner compartments at all. See McArthur Opp. Decl., Att. 8 (Opposer Supp. Responses to
`
`Requests for Admission Nos. 28-32); Taylor Depo. 59:16-60:20, 66:16-67:9, Depo. Exs. 3, 4.
`
`39.
`
`Opposer admitted the hexagonal inner compartment of Applicant’s Hex Chest box
`
`is “no better at holding dice than a circle or a square. It’s just a cavity that things fit in.” Taylor
`
`Depo. 60:13-20.
`
`40.
`
`Opposer admitted that, with regard to different shaped dice boxes, “[n]o box would
`
`hold dice better or worse than [Elderwood’s] chest set. It’s not really a relevant function.” Taylor
`
`Depo. 66:16-21.
`
`41.
`
`There are literally thousands of different dice box designs that are or have been on
`
`the market. It is an industry practice for each company to use different and identifiable dice box
`
`designs for high-end wooden dice boxes to identify the source of the dice boxes. Without a unique
`
`design, a dice box is just a container no different than a Tupperware or Ziploc container.
`
`Manufacturers need to choose unique and distinctive dice box designs in order to stand out from
`
`the crowd. McArthur Opp. Decl., Atts. 5-7.
`
`42.
`
`Participants with deep knowledge of the tabletop gaming industry testified that
`
`Applicant’s Hex Chest design is not functional and could be a variety of different shapes and still
`
`
`
`7
`
`

`

`perform the same function. McArthur Opp. Decl., Att. 5 ¶ 14, Att. 6 ¶ 11, Att. 7 ¶¶ 7-8.
`
`II.
`
`SUMMARY JUDGMENT STANDARD
`
`“A party moving for summary judgment must show ‘that there is an absence of evidence
`
`to support the nonmoving party’s case.’” TBMP § 528.01. The evidence on summary judgment is
`
`viewed in a light most favorable to the nonmoving party, and all reasonable inferences are drawn
`
`in the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d
`
`2027, 2029 (Fed. Cir. 1993).
`
`III. OPPOSER IS NOT ENTITLED TO SUMMARY JUDGMENT ON ANY CLAIM
`
`Because Opposer has not properly pled a claim of functionality, he cannot obtain summary
`
`judgment on such a claim. There is also substantial undisputed evidence that Applicant’s Hex
`
`Chest design is not functional, and that the design has acquired distinctiveness through long
`
`association with Applicant.
`
`A.
`
` Opposer Cannot Obtain Summary Judgment on an Unpleaded Claim
`
`It is well established that “[a] party may not obtain summary judgment on an issue that has
`
`not been pleaded.” TBMP § 528.07(a); see Asian and Western Classics B.V. v. Lynne Selkow, 92
`
`USPQ2d 1478, 1480 (TTAB 2009) (petitioner cannot obtain summary judgment on an
`
`insufficiently pleaded fraud claim); Intermed Communications, Inc. v. Chaney, 197 USPQ 501,
`
`503 n.2 (TTAB 1977) (“If a claim has not been properly pleaded, one cannot obtain summary
`
`judgment thereon”). In Selkow, the Board noted “[a] decision on summary judgment necessarily
`
`requires a review of the operative pleading in this case . . . .” 92 USPQ2d at 1478. The Board
`
`subsequently reviewed the pleading in Selkow, determined it did not properly allege a claim of
`
`fraud, and held “[b]ecause petitioner’s fraud claim was not properly pleaded and is insufficient to
`
`state a claim, the motion for summary judgment is deemed moot.” Id. at 1480 (citing Intermed,
`
`197 USPQ at 503 n.2).
`
`1. The Board has already ruled functionality was not properly pled
`
`Here, the Board has already held that Opposer’s operative Count One “does not sufficiently
`
`plead a claim of either failure to function or functionality . . . .” [15 TTABVUE 12-13] It therefore
`
`
`
`8
`
`

`

`cannot be disputed that Opposer’s operative pleading does not state a claim of functionality. As
`
`such, Opposer cannot obtain summary judgment on that claim. See Selkow, 92 USPQ2d at 1480;
`
`Intermed, 197 USPQ at 503 n.2. Opposer is not a pro se party that may have some excuse for its
`
`failure to follow a direct Order from the Board. Instead, he has been represented by competent
`
`counsel since filing this Opposition. The Board should thus deny Opposer’s cross-motion for
`
`summary judgment as to functionality.2
`
`2. Opposer’s vague request to amend should be denied
`
`While Opposer has offered a bare-bones request to amend within his brief, he has not
`
`supported that with an actual motion or with a proposed amended opposition demonstrating that
`
`the amended claim would be legally sufficient. Because there has been no showing that an
`
`amended claim would be legally sufficient, the unsupported request to amend should be denied.
`
`See Hurley Int’l LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007) (“Where the moving party seeks to
`
`add a new claim or defense, and the proposed pleading thereof is legally insufficient, or would
`
`serve no useful purpose, the Board normally will deny the motion for leave to amend.”) (citing
`
`Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937 (Fed. Cir. 1990)).
`
`In addition, the Board must consider prejudice to Applicant before granting any
`
`amendment. Hurley at *2. In the Hurley case relied on by Opposer, the parties had fully conducted
`
`discovery on the issue of fraud which was sought to be added by a pre-trial amendment, and adding
`
`that claim did not therefore prejudice the applicant. Id. at *2-3. Indeed, there the applicant had
`
`admitted that it had not used the mark in commerce at the time it filed its Section 1(a) application,
`
`in response to opposer’s discovery requests on the issue of fraud. Id. at *3-4. Here, by contrast, the
`
`Board gave Opposer a chance to amend the defective Count One under threat that the count would
`
`be dismissed if Opposer failed to amend it within 30 days. The Board specifically stated that
`
`
`2 While, as a precaution, Applicant addresses the merits of this claim below, the Board should not
`take that as an agreement the claim was properly pled. Applicant objects to inclusion of this
`unpleaded ground. See Greenhouse Systems Inc. v. Carson, 37 USPQ2d 1748, 1750 n.5 (TTAB
`1995) (summary judgment not permitted where nonmoving party objected to inclusion of
`unpleaded grounds even though party responded to motion on those grounds on merits).
`
`
`
`9
`
`

`

`“failing [an amendment], based on the Board’s determination that Count One is insufficiently
`
`pleaded, the Board will dismiss the count for failure to state a claim upon which relief can be
`
`granted.” [15 TTABVUE 13 (citing Fed. R. Civ. P. 12(b)(6)) (emphasis added)] The Board gave
`
`Opposer 30 days to re-plead Count One in order “to achieve judicial economy, and to assure that
`
`discovery proceeds focused on the matters that are well-pleaded . . . .” [15 TTABVUE 13] Opposer,
`
`however, did not take the opportunity provided by the Board. The parties subsequently continued
`
`in the discovery phase of this proceeding, and Applicant focused on the matters that were well-
`
`pleaded, which did not include functionality. Applicant relied on Opposer’s failure to amend and
`
`the Board’s promise that it would dismiss Count One. Opposer now wants to plead both kinds of
`
`functionality, neither of which were properly pled in Count One. However, Applicant has not been
`
`on notice of either issue. Opposer declined to amend to specify which of the two functionality
`
`attacks he was pursuing, so Applicant did not perform discovery, produce evidence, or, importantly,
`
`designate an expert witness on those issues. Allowing Opposer to now re-plead to fix a defect that
`
`he ignored (offering no reason for doing so), would unduly prejudice Applicant and permit
`
`Opposer to disregard the Board’s authority without consequence.
`
`Opposer indisputably failed to adequately plead Count One. Discovery is now over. The
`
`Board should abide by its order that if Opposer fails to amend Count One within 30 days, it will
`
`“dismiss the count for failure to state a claim upon which relief can be granted.” [15 TTABVUE
`
`13] Applicant is simply asking that the Board do what it already said it would do, a response that
`
`is particularly warranted by Opposer’s unreasonable failure to follow the Board’s order and the
`
`prejudice that would be caused by allowing a belated amendment on an improper motion without
`
`even a hint of what is proposed for a new pleading. For these reasons, the Board should deny
`
`Opposer’s cross-motion for summary judgment on the unpled claim of functionality.
`
`B.
`
`Opposer Admits Applicant’s Hex Chest Design is Non-Functional
`
`Opposer’s scattershot cross-motion does not clearly say why Applicant’s particular Hex
`
`Chest box design is functional, and Opposer has not provided any evidence to support that claim.
`
`The determination of whether a design consists of a functional configuration is a “question of fact,
`
`
`
`10
`
`

`

`and depends upon the totality of the evidence presented in each particular case. In Re Udor U.S.A.,
`
`Inc, No. Serial 78867933, 2009 WL 721548, at *1 (Mar. 4, 2009); TrafFix Devices, Inc. v.
`
`Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1005 (2001); In re Morton-Norwich
`
`Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982). In essence, functionality “is the
`
`‘utilitarian’ design of a ‘utilitarian’ object . . . .” In re Morton-Norwich, 671 F.2d at 1338. The
`
`court in Morton-Norwich identified factors relevant to determining whether a design was
`
`functional:
`
`1. Whether the design was the subject of a utility patent.
`
`2. Whether “the originator of the design touts its utilitarian advantages through advertising.”
`
`3. Whether “there are other alternatives available” to the design.
`
`4. Whether the “particular design results from a comparatively simple or cheap method of
`
`manufacturing the article.”
`
`Id. at 1340-41; see also TrafFix, 532 U.S. at 32.
`
`Here, in stark contrast to Udor, Applicant has not filed a utility patent application for its
`
`Hex Chest design, and Opposer has not identified any advertising by Applicant touting the
`
`utilitarian advantages of its design. In re Udor, 2009 WL 721548, at *5-7. Nor has Opposer
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`submitted any evidence that Applicant’s Hex Chest design is the result of a comparatively simple
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`or cheap method of manufacturing a dice box. It obviously is more costly than a simple circle or
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`square with circular inner carrying slots, which could easily be created with a drill and a saw. Cf.
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`id. at *6 (hypothetical design of unusual spray head configuration “would arguably present a much
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`stronger case for being a non-functional source-identifier—a shape that is “uneconomical or
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`otherwise disadvantageous.”).
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`Rather, this case is far more akin to Morton-Norwich, where the CCPA found the spray
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`bottle design at issue “can have an infinite variety of forms or designs and still function to hold
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`liquid” and “[n]o one form is necessary or appears to be ‘superior.’” 671 F.2d at 1342. Because
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`“the functions of appellant’s bottle can be performed equally well by containers of innumerable
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`designs . . . thus, no one is injured in competition . . . .” Id. at 1342-43. Rather, as the CCPA noted,
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`many other competitors were selling functionally identical spray bottles using different designs.
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`Id. at 1342. In almost identical fashion, here Opposer has admitted “[t]here’s an infinite number
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`of ways to create a dice box,” Taylor Depo. 67:7-9, and that “[n]o box would hold dice better or
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`worse than [Elderwood’s] chest set. It’s not really a relevant function.” Taylor Depo. 66:16-21.
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`Applicant further admitted that the hexagonal inner compartments of Applicant’s Hex Chest
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`design are “no better at holding dice than a circle or a square. It’s just a cavity that things fit in.”
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`Taylor Depo. 60:13-20. And Opposer has admitted there are many other companies selling dice
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`boxes in a broad array of other shapes, from treasure chests to skulls to rectangles to castles. See
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`McArthur Decl. Att. 8; Taylor Depo. 59:16-60:20, 66:16-67:9, Depo. Exs. 3, 4. As additional
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`support, Applicant has submitted declarations under penalty of perjury from industry
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`participants—including Applicant’s largest competitor in the dice box industry—stating that a dice
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`box’s exterior shape and interior configuration are not functional. See McArthur Opp. Decl., Att.
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`5 ¶ 14, Att. 6 ¶ 11, Att. 7 ¶¶ 7-8. While Opposer could have deposed these witnesses, he chose
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`not to and has failed to contradict their testimony in any way.
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`Opposer has offered forth zero evidence of functionality, and very little argument; he
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`simply concludes that the design is functional contrary to all evidence on the subject. Based on the
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`evidence, not only should the Board deny Applicant’s cross-motion for summary judgment, it
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`should also grant summary judgment in Applicant’s favor that the Hex Chest design is not
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`functional. See Fed. R. Civ. P. 56(f)(1).
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`C.
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`Applicant’s Copyright Proceeding is Completely Irrelevant to Functionality
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`Opposer argues Applicant should be precluded from arguing its design is not functional
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`because Applicant applied for, and was refused, a copyright registration for its dice box design.
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`That is a frivolous misunderstanding of applicable law.
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`First, Opposer’s copyright-related argument goes to functionality, a claim he failed to
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`properly plead. Therefore, because Opposer cannot obtain summary judgment on that claim, the
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`Board should disregard his argument on this point as moot. See Selkow, 92 USPQ2d at 1480.
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`Second, Opposer cites only B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138
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`(2015), as support for his claim that a Copyright Office refusal involving only Applicant is
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`somehow preclusive in a Board proceeding involving both parties and an entirely different legal
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`standard. Opposer apparently failed to actually read B&B Hardware. There, the Supreme Court
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`held a Board’s determination regarding likelihood of confusion in a trademark opposition
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`proceeding involving both of the same parties had a preclusive effect in a district court litigation
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`involving the same parties and the identical issue. See id. at 152-58. But the Supreme Court noted
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`that this type of issue preclusion applies only “where the issues in the two cases are indeed identical
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`and the other rules of collateral estoppel are carefully observed.” Id. at 153. The “issues are not
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`identical if the second action involves application of a different legal standard, even though the
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`factual setting of both suits may be the same.” Id. at 154 (emphasis added). The Supreme Court
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`explained at length that preclusion applied only in B&B Hardware because the issue before the
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`Board and district court (likelihood of confusion) was “materially the same.” Id. at 154-60.
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`That is obviously not the case here, and it would be a dramatic expansion of statute and
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`precedent to hold the Copyright Office’s determination that Applicant’s box design was not
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`copyrightable bars this Board from assessing whether Applicant’s trade dress is registrable. See,
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`e.g., Carano v. Vina Concha y Toro S.A., 67 USPQ2d 1149, 1152 (TTAB 2003). In Carano, the
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`opposer claimed to own a copyright for the design of a logo in which the applicant had applied to
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`register a trademark. Id. Far from ruling on any issue of copyright law, the Board stated in Carano
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`that “[q]uestions of copyright are left to the federal courts as specified in the Copyright Act (28
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`U.S.C. §1338(a)) or to administrative agencies with specified authority to address copyright issues,
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`e.g., the International Trade Commission (37 U.S.C. 1337).” Id. The Board went on: “In fact, the
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`statutory schemes set out in the Copyright Act and the Trademark Act are entirely separate and
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`independent, and protect different rights even when those rights arise from the same words
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`and/or designs.” Id. (emphasis added).
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`In assessing copyright registration eligibility, the Copyright Office is concerned with
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`original creative authorship. See, e.g., Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345
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`(1991). To register a copyright on a product design, the product must have “pictorial, graphic, or
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`sculptural qualities” that are conceptually separable from the article itself. Star Athletica, L. L. C.
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`v. Varsity Brands, Inc., 137 S. Ct. 1002, 1010 (2017). Trade dress, on the other hand, looks at the
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`“total image and overall appearance” of a product, or the totality of the elements, and “may include
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`features such as size, shape, color or color combinations, texture, graphics.” Two Pesos, Inc. v.
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`Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992). The two registrability tests have no overlap and
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`bear no relationship to each other. What is trademarkable may not be copyrightable, and vice versa.
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`For example, the famous curved Coca-Cola bottle design is registered trade dress. See McArthur
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`Opp. Decl., Att. 9 (U.S. Reg. No. 1,057,884) But that bottle design very likely would be deemed
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`ineligible for copyright registration by the Copyright Office due to a lack of sufficient pictorial,
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`graphic, or sculptural qualities that are separable from the bottle itself. Likewise, the Copyright
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`Office frequently finds logo designs are not entitled to copyright registration for lack of creative
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`authorship. See, e.g., McArthur Opp. Decl., Att. 10 (Copyright Review Board Rejection of Second
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`Request for Reconsideration for Refusal to Register Nikon Brand Logo dated March 16, 2017, at
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`3-5 (stating “[t]he [Copyright Review] Board finds that, viewed as a whole, the Work simply is
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`not sufficiently creative from a copyright perspective.”)). But obviously logos such as Nikon’s and
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`others are eligible for trademark registration. See, e.g., McArthur Opp. Decl., Att. 11 (U.S. Reg.
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`No. 4,933,007 showing the trademark registration for Nikon logo which was not eligible for
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`copyright registration).
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`While the Board may determine some limited copyright issues to the extent necessary in
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`determining questions of trademark registration, that is not what Opposer is asking the Board to
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`do here. Rather, Opposer is seeking to have the Board consider Applicant’s legal arguments on
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`copyrightability to the Copyright Office and the Copyright Office’s denial of copyright registration
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`as evidence that Applicant’s design is not eligible for trademark registration. That is directly
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`contrary to the settled case law of Carano, holding that questions of copyrightability and trademark
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`registrability are separate and unrelated. The two