## Facts

- Becton, Dickinson and Company (BD) applied to register a product-configuration mark for a closure cap used on blood-collection tubes for “closures for medical collection tubes” on the Principal Register, claiming acquired distinctiveness under Lanham Act § 2(f).
- The claimed configuration included: a smoothly rounded top, a skirt tapering from top to bottom, a centrally located circular opening in the top, and an annular rib near the top of the skirt.
- The examining attorney refused registration on the grounds that the configuration was functional under 15 U.S.C. § 1052(e)(5) and, alternatively, lacked acquired distinctiveness.
- The Trademark Trial and Appeal Board (TTAB) affirmed, finding the proposed mark “as a whole” functional and also finding the evidence of acquired distinctiveness insufficient.
- In finding functionality, the TTAB relied heavily on BD’s utility patents and patent applications describing the cap’s structure and utilitarian advantages (including needle access, sealing/sterility, leakage prevention, and pressure resistance), as well as BD marketing that promoted performance benefits of the design.
- BD appealed to the United States Court of Appeals for the Federal Circuit, arguing the TTAB improperly treated the configuration as purely utilitarian and failed to credit allegedly nonfunctional aspects of the overall appearance.

## Issues

1. Whether substantial evidence supported the TTAB’s determination that BD’s overall closure-cap configuration is functional under Lanham Act § 2(e)(5) and therefore barred from registration.
2. Whether the availability of alternative cap designs precluded a finding of functionality where utility patents and other evidence linked the claimed features to utilitarian advantages.
3. Whether the court needed to reach acquired distinctiveness under § 2(f) if the configuration was functional.

## Decision

- The Federal Circuit affirmed the TTAB’s refusal to register the mark.
- The court held that the closure-cap configuration, considered as a whole, was functional because the claimed design features were tied to utilitarian performance and affected the product’s use, purpose, cost, or quality.
- The court treated BD’s utility patents as strong evidence of functionality because they disclosed and claimed the same or closely related features for which BD sought trademark protection.
- The court agreed that BD’s advertising and marketing statements touting performance benefits were probative of functionality.
- The court held that alternative-design evidence did not undermine the functionality finding where other evidence (including utility patents) established utilitarian functionality.
- Because functionality is a statutory bar to registration, the court declined to decide acquired distinctiveness.

## Legal Principles

- A product feature is functional if it is essential to the use or purpose of the article or affects the cost or quality of the article; functional matter is ineligible for trademark registration.
- Functionality is assessed with respect to the mark as a whole, but a tribunal may evaluate whether the overall configuration’s claimed features each contribute to utilitarian performance.
- Utility patents are strong, and potentially decisive, evidence of functionality when they disclose and claim the features for which trademark protection is sought.
- Advertising that promotes utilitarian advantages of a design supports a finding that the design is functional rather than source-identifying.
- After a showing of utilitarian functionality through patents and similar evidence, the existence of alternative designs does not negate functionality.
- Acquired distinctiveness cannot overcome a finding of functionality under § 2(e)(5).

## Conclusion

The Federal Circuit held that BD’s blood-collection tube closure-cap configuration was functional in its overall design and therefore barred from registration under Lanham Act § 2(e)(5), making any showing of acquired distinctiveness irrelevant.


In re Becton, Dickinson & Co., 675 F.3d 1368 (Fed. Cir. 2012)