Feature that doesn't work well can still be functional

Acacia, Inc. v. NeoMed, Inc., 2012 WL 3019948 (C.D. Cal.)

The parties produce neonatal feeding systems.  Errors in tubing and misconnection with devices not intended for enteral (feeding) use can seriously harm patients.  As a result, companies have used color-coded tubing and connections to diminish the risks of error, though the parties disputed whether this is necessary given current designs.  NeoMed uses orange for “enteral use only” devices, as do several other companies including Acacia and Utah Medical products, which chose orange as a safety measure.

NeoMed’s predecessor applied for a trademark in 2007 for orange used for gradation markings and text/text box on a clear barrel for oral syringes.  The PTO allowed registration on the supplemental register.  NeoMed sent Acacia a C&D for its use of orange on syringes, including for gradation markings and text.  Acacia sued for declaratory relief and cancellation of the registration.  NeoMed counterclaimed.  Acacia moved for partial summary judgment on functionality, which it received.  Since the mark was only on the supplemental register and not the principal register, NeoMed retained the burden of proving the nonfunctionality of its trade dress (query: given this rule, should the PTO consider functionality as a bar to registration on the supplemental register as thoroughly as it does for the principal register? I would think yes, given the potential deterrent effect of even a supplemental registration, not to mention things like import controls). 

Functionality exists when a feature is essential to the use or purpose of the article or whe it affects the cost or quality of the article.  Color can be an essential product feature if it serves a significant nontrademark function.

Less than a month after the PTO put NeoMed’s claimed mark on the supplemental register, NeoMed’s counsel sent letters to three manufacturers of neonatal enteral devices saying, in part,

NeoMed is working to create a coalition of manufacturers of enteral products to establish orange as the color representing enteral safety, and would be happy for you to join that coalition. However, the use of orange specifically for gradation [sic] markings and text represents only our own products.

NeoMed has advertised that “orange signals enteral safety,” “NeoMed Oral Dispensers feature orange lettering and precise gradient marking that signify ‘enteral or oral’ designed to connect with other compliant devices,” and “[o]range lettering and graduation marking identify as enteral only.”  NeoMed’s president testified similarly.  Acacia presented evidence from executives of other device manufacturers, medical device sales representatives, and a nurse that orange is used to signal to hospital staff that a particular device is for enteral use, and to coordinate different enteral only devices, including syringes.  (Purple and amber are apparently the other key colors for enteral-only devices.)  The court found this case indistinguishable from Inwood: color is an aid to hospital staff in identifying particular types of devices by sight.

NeoMed’s primary argument was that its claims were limited to orange gradation markings and text on the barrels of syringes.  Orange, it admitted, was functional; but it claimed that its use of orange wasn’t.  But a product feature can’t be nonfunctional when it’s nothing other than a collection of functional parts.  NeoMed argued, at most, that its product was visually distinguishable from competing products, but that’s not sufficient.

NeoMed argued that color had become nonfunctional because “[s]pecially-designed enteral-only syringes, physically incapable of being connected to IV tubes, have become universal in the neonatal environment [ ]and will be mandated by law in California as of January 1, 2013[ ].”  But its evidence was not strong enough to support the factual claim that orange was now anachronistic.  That would raise an interesting issue if the facts were there!  It seems possible that functional could become nonfunctional under a rather unusual set of circumstances (as Tom Lehrer might say); could someone now attempt to trademark the rotary dial?

NeoMed argued that it tried to put together a coalition to promote orange, but that its efforts failed.  Thus, orange was intended to be functional, but became source identifying. The court ruled that the fact that orange wasn’t functioning well didn’t make it nonfunctional.  In Inwood, the Supreme Court noted only that “some” patients commingled their pills and used color to distinguish them; others wouldn’t do so. “Therefore, under Inwood, a design feature does not have to achieve perfect functionality to be functional as a matter of law.”  If NeoMed hadn't tried to game the system, maybe the court would have been more sympathetic, but no dice.

Thus, the court granted Acacia’s motion and directed the PTO to cancel NeoMed’s registration.