Bose Corporation

Trademark Trial and Appeal Board

Jul 12, 2005

No. 74734496 (T.T.A.B. Jul. 12, 2005)

Hearing: Mailed:
April 26, 2005 July 12, 2005
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bose Corporation
________

Serial No. 74734496
_______

Charles Hieken of Fish & Richardson P.C. for Bose
Corporation.

Glenn G. Clark, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
_______

Before Hairston, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the following product design for “loudspeaker systems” in
International Class 9:
1

1 Application Serial No. 74734496 was filed on September 26,
1995, based upon applicant’s allegation of first use and first use
in commerce at least as early as September 1976. The application,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 74734496
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This is a case whose “long and tortuous prosecution
history”2 will soon span thirty years. This latest case is
before the Board on appeal from the final refusals of the
Trademark Examining Attorney to register this design based
upon the following grounds: (1) that applicant has failed
to comply with the requirement that the applicant submit
evidence allegedly missing from the record; (2) that
applicant has failed to comply with the requirement that the
applicant submit an acceptable drawing of the proposed mark
and explain the nature of two vertical dashed lines that
appear in the drawing; (3) that under the doctrine of res
judicata, applicant has already had a full and fair
opportunity to prosecute this proposed mark for identical
goods [Application Ser. No. 73127803]; (4) that registration
is proscribed by Section 2(e)(5) of the Trademark Act,

as amended, contains a statement that the lines and stippling in
the drawing are features of the mark and do not indicate color.
In the course of prosecution, applicant has described this product
design as consisting of “an enclosure and its image of
substantially 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.”
Applicant also claims ownership of Registration No. 0992982,
issued on September 10, 1974 (second renewal, January 2004), also
for “loudspeaker systems” in International Class 9 for the design
shown below:

2 In re Bose Corporation, 772 F.2d 866, 227 USPQ 1, 2 (Fed.
Cir. 1985).
Serial No. 74734496
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15 U.S.C. Section 1052(e)(5); (5) that the proposed design
consists of a de jure functional configuration of a
loudspeaker system; and (6) that even if this matter should
be found not to be de jure functional, applicant’s claim of
acquired distinctiveness is insufficient to support
registration on the Principal Register under Section 2(f) of
the Lanham Act, 15 U.S.C. Section 1052(f).
Applicant and the Trademark Examining Attorney have
fully briefed this case, and both applicant’s counsel and
the Trademark Examining Attorney appeared before this panel
of the Board at an oral hearing conducted on April 26, 2005.
1. Evidence allegedly missing from the record
In his appeal brief and at oral argument, the Trademark
Examining Attorney continued to argue that applicant’s
booklet [“Bose® Product Line”]3 was missing from the record,
and that applicant’s failure to submit another copy of this
booklet is simply one more reason for denying registration
herein.
However, applicant argues as follows:
We are aware of no authority that allows
refusal of registration based on the failure
of an applicant to supply a booklet that was
previously furnished to the Office and
misplaced by the Office.

3 This appears to be a fifty-two page booklet if one counts
both the front and back covers.
Serial No. 74734496
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This booklet was discontinued four or five
years ago. We enclose a copy of it.

We have afforded extensive cooperation to the
Office during the nine-year prosecution of
this application including furnishing a copy
of the file history of the abandoned
application that the Office was unable to
locate.

There is absolutely nothing in this booklet
which bears on the registrability of this
mark, except that it shows the wide range of
loudspeaker systems Bose manufactures that
differ from the mark. The information
regarding Bose products was readily available
to the Examining Attorney on the Bose website
at www.bose.com and is still available there.

Applicant’s reply brief, p. 4.

According to the records of the United States Patent
and Trademark Office (USPTO), this booklet is now a part of
the record, having been sent most recently with a
certificate of mailing via the United States Postal Service
on December 3, 2004, one day after applicant’s counsel
submitted the reply brief quoted above.
As noted by applicant, this booklet is, at best,
cumulative of other evidence in this extensive record,
showing a wide range of loudspeaker systems that applicant
manufactures that have different product configurations from
the Bose 901 loudspeakers involved herein.
We are sympathetic to applicant’s frustration with this
particular requirement of the Trademark Examining Attorney.
Serial No. 74734496
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It appears as if this latest submission may well be the
third or fourth time this now out-of-date brochure has been
placed into the prosecution record. It appears as if this
may have been the original specimen filed with the
application. Then, as part of its argument for
registrability, the booklet was submitted with applicant’s
response of September 29, 1997. Unfortunately, by December
1997, the Trademark Examining Attorney indicated that this
booklet had been misplaced. Then, years later, after the
entire file wrapper was lost by the Office, applicant
submitted copies in July 2002 of the entire record since
1995 – including the contents of the earlier abandoned
Application Ser. No. 73127803. As indicated above, the
booklet was submitted most recently on December 3, 2004.
We conclude that applicant has submitted the requested
brochure, and hence, we reverse this refusal to register
made by the Trademark Examining Attorney.
2. Drawing requirements
In its reply brief, applicant states with reference to
its drawing that “[t]he vertical broken lines represent the
side edges of the enclosure.” The Trademark Examining
Attorney correctly notes that “[i]t is unclear why the
drawing of the mark features the two dashed lines. By
Serial No. 74734496
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featuring these two dashed lines, it appears that the
applicant is disclaiming any exclusive right to the two
vertical front edge walls of the configuration design.”
Trademark Examining Attorney appeal brief, p. 3. See also
Trademark Rule 2.52(b)(4).4
We too are unsure why applicant has chosen, in its
drawing, to portray the two vertical edges (where the front
meets the two sides of the speaker enclosure) as broken
lines. We presume that applicant may have been attempting,
with its drawing, to contrast these ordinary vertical edges
– which would be identical on a rectangular speaker
enclosure – with the pentagonally-shaped enclosure having a
curved front. However, even the explanations proffered by
applicant’s counsel at the oral hearing failed to clear up
our confusion on this point. Nonetheless, we are
constrained to decide this case on the merits inasmuch as
the legal arguments have all been clearly explored and fully
briefed. In any case, we find that this small anomaly in
the drawing has a de minimus impact on our decision on the

4 (4) Broken lines to show placement. If necessary to adequately depict
the commercial impression of the mark, the applicant may be required
to submit a drawing that shows the placement of the mark by
surrounding the mark with a proportionately accurate broken-line
representation of the particular goods, packaging, or advertising on
which the mark appears. The applicant must also use broken lines to
show any other matter not claimed as part of the mark. For any
drawing using broken lines to indicate placement of the mark, or
matter not claimed as part of the mark, the applicant must describe
the mark and explain the purpose of the broken lines. (Emphasis
supplied).

Serial No. 74734496
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issue of functionality herein. Hence, on this refusal to
register, we also reverse the Trademark Examining Attorney.
3. Res judicata based upon Application Ser. No. 73127803
Under the doctrine of claim preclusion (or res
judicata), the entry of a final judgment “on the merits” of
a claim (i.e., cause of action) in a proceeding serves to
preclude the re-litigation of the same claim in subsequent
proceedings between the parties or their privies. See
Lawlor v. National Screen Service Corp., 349 U.S. 322,
75 S.Ct. 865, 99 L.Ed. 1122 (1955); Chromalloy American
Corp. v. Kenneth Gordon, Ltd., 736 F.2d 694, 222 USPQ 187
(Fed. Cir. 1984); and Flowers Industries, Inc. v. Interstate
Brands Corp., 5 USPQ2d 1580 (TTAB 1987). The “[a]pplication
of res judicata [claim preclusion] requires a prior final
judgment on the merits by a court or other tribunal of
competent jurisdiction; identity of the parties or those in
privity with the parties; and a subsequent action based on
the same claims that were raised, or could have been raised,
in the prior action." International Nutrition Co. v.
Horphag Research Ltd., 220 F.3d 1325, 1328, 55 UPSQ2d 1492,
1494 (Fed. Cir. 2000).
Serial No. 74734496
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There is no dispute but that the applicant herein is
identical to the applicant in the earlier proceeding
(involving Application Ser. No. 73127803).
The Trademark Examining Attorney also contends that
this Board and our principal reviewing Court, the Court of
Appeals for the Federal Circuit, rendered final decisions in
that action on the issue of de jure functionality of
substantially the same product configuration as is before us
in this proceeding.5
However, applicant argues that the circumstances have
changed since that earlier, adverse decision:
… The facts and issues in the present case
are not identical to those in the Applicant’s
prior adjudication. The facts in the prior
adjudication did not include a clear and
concise description of the mark limiting the
mark to the top and bottom having a curved
front edge. Manifestly, the mark having a
curved front edge is not functional and was
not considered in the prior application. Nor
was it possible to state in the prior
application that there was no use by others
of anything resembling the mark since 1976, a
period of nearly 27 years, additional
evidence of absence of functionality. …

5 In re Bose Corporation, 215 USPQ 1124 (TTAB 1982)
[configuration of loudspeaker design is de jure functional]; In re
Bose Corporation, 215 USPQ 1132 (TTAB 1982) [request for rehearing
denied]; In re Bose Corporation, 216 USPQ 1001 (TTAB 1983) [on
remand from the Court of Appeals for the Federal Circuit, the
Board found that the involved loudspeaker had de facto acquired
distinctiveness sufficient to support registration of the mark
under Section 2(f) of the Lanham Act]; In re Bose Corporation,
supra (Fed. Cir. 1985) [shape of loudspeaker enclosure represents
a superior design and is de facto functional].
Serial No. 74734496
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In view of the foregoing amendment,
authorities, the authorities previously set
forth, the remarks, the additional evidence
not considered in connection with the first
application, and the absence of confusing
similarity between any registered mark of
another and mark in a pending application,
this application is submitted to be in a
condition for publishing the mark, and notice
thereof is respectfully requested….

Applicant’s appeal brief, p. 12.
As to applicant’s first contention above, in its appeal
brief, applicant emphasizes a difference between that
earlier, adverse decision and this application created by
the description of the mark in the instant application
having a “curved front edge.”
It is true that the bibliographical portion of the
previous USPTO application record does not contain a written
description of the loudspeaker enclosure. However, whether
the front edge of the current speaker design is described as
“bowed” or “curved,” we find that this is not a change from
the applied-for matter in the earlier-filed application.
The images shown on the drawings are substantially identical
in both applications:

SERIAL NO. 73127803 SERIAL NO. 74734496

Serial No. 74734496
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Moreover, the late Judge Nies, in footnote 3 of the
Federal Circuit’s 1985 decision, notes that the “front edge
is bowed.”6 Hence, this feature of the alleged mark has not
changed, and the enclosure remains “substantially
pentagonally shaped.” Having made no prominent arguments as
to the legal significance of the bowed (or curved) front
edge in the previous litigation, it is disingenuous for
applicant to argue in this re-litigation that this unchanged
feature of the enclosure design now represents “an arbitrary
flourish”7 that bars a finding of claim preclusion.
On the other hand, applicant also argues that the
circumstances in the instant case are indistinguishable from
the circumstances found relevant by the Board in approving
registration of the round thermostat design. In re
Honeywell, Inc., 8 USPQ2d 1600 (TTAB 1988). In fact,
applicant contends that this case should be treated exactly
like Honeywell, where the Board expressly refused to find
res judicata based upon the previous attempt at
registration, because “applicant’s [Honeywell’s] appeal of
the Board’s affirmance of refusal was to the Court of
Customs and Patent Appeals, not the federal district court.”
The Board in Honeywell also based its determination on what

6 In re Bose Corporation, 227 USPQ at 4.
7 Applicant’s reply brief, p. 3.
Serial No. 74734496
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had “happened in the marketplace in the 17 years since the
record of the original application closed [In re Honeywell,
Inc., 532 F.2d 180, 189 USPQ 343 (CCPA 1976)] and since
applicant’s design patent on the configuration expired ….”
The Board found these factors represented additions to the
record significant enough to avoid a holding of res
judicata.
Similarly, applicant argues that res judicata is not
appropriate herein inasmuch as the present record reflects
what has happened in the marketplace in the twenty-one years
since the record of the original application closed and the
sixteen years since applicant’s Patent No. 3,582,553
(hereinafter “‘553 patent”) expired.
However, in spite of applicant’s urging us to apply
Honeywell to the instant case, and find that Bose’s current
appeal is not barred by res judicata, or claim preclusion,
we find that case can be distinguished given important
factual differences between these two cases.
First, the Board found that the mark that Honeywell
applied for in the 1980’s was different from the mark that
it had applied for in the 1970’s. Specifically, the Board
found that the prior decisions of the Board and CCPA “were
influenced by the functionality of the visibility of the
temperature-controlling and -indicating mechanism,” and that
Serial No. 74734496
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“the absence of such a feature in the present configuration”
provided a reason why the Board was not bound by the
holdings in the prior decisions. Honeywell, supra at 1603.
By contrast, as noted above, the instant applicant’s two
images shown on the drawings are substantially identical in
both applications.
Second, we see a difference in how the two
configurations evolved. The Honeywell record shows that the
round configuration was chosen for source-indicating
purposes, and that then the other components were designed
to fit the round configuration.8 Here, the pentagonal shape
is a clear derivative of the angled rear panels that are
integral to the utility patents herein.9 As a corollary,
Honeywell involved an expired utility patent having
“ancillary references” to “round casings.” This is not
simply drawing a distinction between what is disclosed and
what is claimed in a utility patent, but rather, an
ancillary reference is clearly something less than either
disclosed or claimed. In the instant case, the previous
litigation, along with the evidence of record, demonstrates

8 In re Honeywell Inc., 8 USPQ2d at 1603.
9 As discussed infra, the patented technology requires that the
drivers be directed at specific angles in a specially shaped
enclosure. “It is obvious that if the back of a conventionally
shaped speaker cabinet is replaced with two angled panels, this
results in a pentagonally shaped enclosure.” In re Bose
Corporation, 215 USPQ at 1126.
Serial No. 74734496
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that these patents contain much more than merely “ancillary
references” to the pentagonal shape. See discussion infra.
Third, we note that much of the discussion in the
Board’s 1988 Honeywell decision actually pointed to design
patents rather than utility patents. When dealing with
issues of utilitarian functionality, it is significant if
the product design feature claimed as a trademark is an
integral feature of a utility patent, as is the case herein.
Certainly, one cannot draw the same conclusions if the
portion of the product configuration claimed as a trademark
is merely a feature of a design patent.
Finally, a recent case has seriously undercut the
rationale of the Board’s 1988 Honeywell decision. Eco
Manufacturing LLC v. Honeywell International Inc., 357 F.3d
649, 69 USPQ2d 1296 (7th Cir. 2003), aff’g 295 F.Supp2d 854
(S.D. Ind. 2003).
The Seventh Circuit affirmed the trial court’s denial
of Honeywell’s motion for a preliminary injunction in its
counterclaim against Eco Manufacturing LLC for infringement.
The underlying action was one for declaratory judgment
brought by Eco against Honeywell International Inc., that
Eco’s product will not infringe Honeywell’s trade dress.
The judge in the trial court [Eco Manuf. v. Honeywell,
supra] declined to follow the Board’s 1988 Honeywell
Serial No. 74734496
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decision, concluding instead that there was a sufficiently
high likelihood that the shape of Honeywell’s thermostat
would be found to be functional after a trial on the merits.
He dismissed the impact of the Board’s decision because the
proceeding was ex parte, the Board applied what the District
Court Judge regarded as the wrong legal standard of
functionality, the Board did not have before it significant
evidence of competitors’ use of circular thermostat designs
and the Board allegedly misread the evidence before it,
including the claims of the relevant utility patent.
In its supplemental brief of May 2005, submitted after
oral argument, applicant cites to the final paragraph of the
Seventh Circuit’s opinion:
Thus the district court did not abuse its
discretion in holding that Eco may go forward
with a round thermostat — at its own risk, of
course, should the decision come out
otherwise on the merits. Although we have
not endorsed all of the district court’s
legal analysis, it would be pointless to
remand for another hearing on interlocutory
relief. The case should proceed
expeditiously to final decision; another
“preliminary” round would waste everyone’s
time. It would be especially inappropriate
to direct the district judge to issue a
preliminary injunction when issues other than
functionality remain to be addressed. Eco
contends, for example, that Honeywell
bamboozled the Patent and Trademark Office
when seeking registration during the 1980s,
and material deceit would scotch this
enforcement action whether or not the trade
dress is functional. We do not express any
Serial No. 74734496
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view on that issue, or any ultimate view
about functionality; it is enough to say that
the record compiled to date adequately
supports the district judge’s interlocutory
decision.

The Seventh Circuit posed the question of whether the
shape of Honeywell’s thermostat is so clearly non-functional
that the district judge abused his discretion by failing to
enjoin Eco’s competing round thermostat, and then answered
this question in the negative. While we are cognizant of
the high standard of review by the Appeals Court of this
interlocutory ruling on a motion for preliminary injunction,
the Seventh Circuit’s affirmance clearly does not strengthen
the case applicant has made the centerpiece of its argument
in the instant case against our finding res judicata as to
the issue of de jure functionality.
As discussed by applicant, and in this decision, infra,
there has been twenty years of additional usage of this
product design since the adverse decision by the Board and
Court of Appeals for the Federal Circuit. That may well
provide additional support for applicant’s ongoing claim of
acquired distinctiveness. However, we are not convinced
that any positive change in the levels of de facto
recognition by consumers of the design of this speaker
enclosure has any effect on the conclusion that the design
is de jure functional. Certainly applicant has not made the
Serial No. 74734496
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argument that the relevant “laws of physics”10 have changed
over the past twenty years. A design feature that is shown
by way of an exhaustive analysis of a utility patent to be
de jure functional does not become not de jure functional by
the mere passage of time,11 more years of promotion or ever
increasing sales of the goods, etc.
Accordingly, we find that Bose’s current appeal is
barred by claim preclusion. 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 de jure
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. Hence, we affirm the refusal of the Trademark

10 In re Bose Corporation, 227 USPQ at 4.
11 Applicant has not made an argument herein similar to that
advanced by Honeywell, that, for example, due to technological
changes, what was once functional for loudspeakers (in the 1960’s
and 1970’s) may now, these decades later, be nothing more than
ornamental. Specifically, Honeywell had pointed out that the
transistor was not invented until 1947, the year after Honeywell’s
utility patent issued. At the time “The Round” was designed, the
innards contained operating parts that were a complex, electro-
mechanical linkage. While the circular casing and dial may have
been related in a functional way to the operating parts of this
pre-war device, thermostats in recent decades have been controlled
by ever-smaller microprocessors – not “complex, electro-mechanical
linkages.”
Serial No. 74734496
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Examining Attorney to register this matter based upon the
doctrine of res judicata.
4. Registration is proscribed by Section 2(e)(5) of the Act
In its appeal brief and at oral argument, the Trademark
Examining Attorney took the position that this claimed mark
is absolutely barred from registration under Section 2(e)(5)
of the Lanham Act as amended (See Office action of May
2003). However, Lanham Act Section 2(e)(5) applies only to
applications filed after October 30, 1998. Technical
Corrections to Trademark Act of 1946 (TCTA), Pub. L. No.
105-330, Section 201(b), 112 Stat. 3064 (1998). Given the
filing date of this application (September 26, 1995),
Section 2(e)(5) clearly does not apply to this application.
Hence, we reverse the refusal of the Trademark Examining
Attorney to register this matter based upon Section 2(e)(5)
of the Act.
5. This design consists of a de jure functional configuration
of a loudspeaker

In the event we should be reversed on appeal on the
issue of res judicata, we examine again, in the alternative,
the question of de jure functionality of the applied-for
matter. This determination is a question of fact, and
depends on the totality of the evidence presented in each
Serial No. 74734496
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particular case. Valu Engineering, Inc. v. Rexnord Corp.,
278 F.3d 1268, 61 USPQ2d 1422 (Fed. Cir. 2002). For more
than two decades, this Board and our reviewing Court have
applied the “Morton-Norwich” factors when determining
whether a particular product design is functional. In re
Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9
(CCPA 1982).
5.1. Morton-Norwich factor one: the existence of a utility patent
that discloses the utilitarian advantages of the design sought to
be registered

This factor continues to be most important in the
instant case. Applicant’s relevant patents repeatedly
disclose the utilitarian advantages of this particular
design. The United States Supreme Court has reaffirmed that
if the product configuration sought to be registered as a
mark is the subject of a utility patent that discloses the
feature’s utilitarian advantages, then the applicant bears
an especially “heavy burden of overcoming the strong
evidentiary inference of functionality.” TrafFix Devices,
Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d
1001, 1005 (2001).
Applicant is the owner of two expired utility patents
that have been made a part of this record (Patent No.
3,582,553 (‘553) and Patent No. 4,146,745 (‘745)) disclosing
Serial No. 74734496
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the utilitarian advantages of the design sought to be
registered.
As argued by the Trademark Examining Attorney, the ‘553
patent explicitly claims the pentagonal shape of the
applied-for design. The drawings (Figures 2, 3 and 9) of
this patent show the pentagonal shape of the claimed
invention. The DETAILED DESCRIPTION OF PREFERRED
EMBODIMENTS identifies a specific angle of the rear panels
which form the pentagonal shape of the goods:
Referring to Figure 3, [e]ach of the rear
panels includes four loudspeakers … on the
left, and … on the right …. [E]ach rear
panel is a ¾ inch piece of plywood about 10½
inches by about 10¾ inches forming an angle
of 120 degrees so that the angle between each
of the rear panels and the wall upon which
they direct sound for reflection is
substantially 30 degrees.

Claim 12 of the applicant’s ‘553 patent specifically
claims the pentagonal shape of the design sought to be
registered:
A loudspeaker system in accordance with claim
9 wherein said rear baffles are contiguous
flat panels forming an angle, and said
loudspeaker cabinet comprises a pair of side
panels each interconnecting a respective
normally vertical edge of said front panel
with a normally vertical edge of a respective
rear baffle flat panel to define said
internal volume as of pentagonal cross
section and interconnecting generally
parallel top and bottom panels to coact
therewith and define said internal volume.
[Emphasis added.]
Serial No. 74734496
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The pentagonal loudspeaker enclosure design sought to
be registered is also the preferred embodiment of
applicant’s ‘745 expired utility patent (viz., it is not
claimed in this latter patent since the ‘553 patent is part
of the prior art). Thus, the front-page figure of the ‘745
patent is a top view of the loudspeaker enclosure
configuration which applicant seeks to register, shown in a
cut-away, cross section so that the internal structure and
features are visible.
Consistent with earlier decisions on this matter, the
Trademark Examining Attorney argues convincingly that the
pentagonal shape of the loudspeaker enclosure has inherent
utilitarian value. As seen herein, the patented technology
requires that the drivers be placed into two panels
connected as a precise angle (e.g., 120°) in a specially-
shaped enclosure. If the back of a loudspeaker enclosure
having a square or rectangular cross section is replaced
with two, angled panels, this necessarily results in a
pentagonally-shaped enclosure.
5.2. Morton-Norwich factor two: advertising by the applicant
that touts the utilitarian advantages of the design of its 901
speakers

A review of applicant’s advertisements reveals that
they tout the utilitarian advantages of the product design
Serial No. 74734496
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sought to be registered. For example, the text on pages two
and three of a brochure attached to the applicant’s December
19, 1996 response, entitled “Bose® The Bose 901® Series VI
Direct/Reflecting Speaker System,” states: “901 Acoustic
Matrix enclosure: This patented enclosure is a complex
injection-molded structure with 14 independent acoustic
regions that act as sound-enhancing elements.” In a
brochure entitled Bose® The Limited Edition Bose® 901®
Concerto Direct/Reflecting Speaker System, the applicant
states, “[t]he Bose® 901 speaker system: A host of patented
technologies working together.”
The record touts “forty years of research” and “Over
1000 Advances” or “over 1000 improvements made since the
first 901 speaker revolutionized the audio world.”12 These
advances or improvements certainly involve phenomenal
changes in audio technology, signal processing, sound
equalization, etc., and may well include, for example, the
touted “complex injection-molded structure with 14
independent acoustic regions.” However, of the “Three
Acoustic Design Principles Developed by Bose,” the first is
“re-create a balance of reflected and direct sound similar
to that found in a concert hall” and the second is “Use

12 “Introducing The Bose® Lifestyle® 901 Music System,” page 7
of 8.
Serial No. 74734496
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multiple full-range drivers.”13 Accordingly, in spite of all
the advances applicant has made to the speakers that may
well be unrelated to the shape of the speaker enclosure, we
find that the pentagonal shape of this enclosure and the
precise placement on the back panels of eight full-range
drivers, as claimed in applicant’s expired patents, continue
to be the essential features of these highly-acclaimed
speakers.
5.3. Morton-Norwich factor three: facts pertaining to the
availability of alternative designs

In determining whether a feature is functional, this
factor of the Morton-Norwich test considers the availability
to competitors of feasible alternative designs – i.e.,
whether the design is superior to other designs.
The pentagonal shape of this enclosure and the precise
placement on the back panels of eight full-range drivers are
the reasons applicant claims the device works as it does, so
detailed speculation about other designs need not be
undertaken, according to the Supreme Court in the TrafFix
decision:
There is no need, furthermore, to engage, as
did the Court of Appeals, in speculation
about other design possibilities, such as
using three or four springs which might serve
the same purpose. 200 F.3d, at 940. Here,

13 Id.
Serial No. 74734496
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the functionality of the spring design means
that competitors need not explore whether
other spring juxtapositions might be used.
The dual-spring design is not an arbitrary
flourish in the configuration of MDI’s
product; it is the reason the device works.
Other designs need not be attempted.

Because the dual-spring design is functional,
it is unnecessary for competitors to explore
designs to hide the springs, say by using a
box or framework to cover them, as suggested
by the Court of Appeals. Ibid. The dual-
spring design assures the user the device
will work. If buyers are assured the product
serves its purpose by seeing the operative
mechanism, that in itself serves an important
market need. It would be at cross-purposes
to those objectives, and something of a
paradox, were we to require the manufacturer
to conceal the very item the user seeks.

TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S.
23, 58 USPQ2d 1001, 1007 (2001).
As noted by the Trademark Examining Attorney, the
Supreme Court in TrafFix reaffirms the traditional rule of
Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456
U.S. 844, 214 USPQ 1 (1982), that “a product feature is
functional if it is essential to the use or purpose of the
article or if it affects the cost or quality of the
article.” 532 U.S. at 32, 58 USPQ2d at 1006.
Regarding the third Morton-Norwich factor, the Federal
Circuit has explained that:
We did not in the past under the third factor
require that the opposing party establish
that there was a “competitive necessity” for
Serial No. 74734496
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the product feature. Nothing in TrafFix
suggests that consideration of alternative
designs is not properly part of the overall
mix, and we do not read the Court’s
observations in TrafFix as rendering the
availability of alternative designs
irrelevant. Rather, we conclude that the
Court merely noted that once a product
feature is found functional based on other
considerations there is no need to consider
the availability of alternative designs,
because the feature cannot be given trade
dress protection merely because there are
alternative designs available. But that does
not mean that the availability of alternative
designs cannot be a legitimate source of
evidence to determine whether a feature is
functional in the first place.

Valu Engineering, 61 USPQ2d at 1427 (footnote omitted).
Consistent with this analysis, the 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. In re Bose Corporation, 215 USPQ at 1127.
To the extent we do consider the availability of other
shapes for speaker enclosures, we view with some skepticism
the testimony of Bose Chief Engineer, Sherwin Greenblatt,
repeatedly recited by applicant herein, that this speaker
enclosure could be designed to be “octagonal,” or to have a
“triangular cross section [with] increased height.” Neither
an octagonal nor a triangular structure, with their
respective eight- or three-panel shapes, would provide
Serial No. 74734496
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naturally the precise placement of the two sets of four
full-range drivers at a 120° angle required by the patented
technology. On the other hand, putting rear panels at a
120° angle inside such arbitrarily-shaped enclosures would
result in increased costs and major inefficiencies in the
manufacturing and shipping processes. These purported
alternatives appear to us to be “unfeasible, uneconomical or
otherwise disadvantageous.” In re Bose Corporation, 215
USPQ at 1127.
5.4. Morton-Norwich factor four: facts pertaining to whether
the design results from a comparatively simple or inexpensive
method of manufacture

As noted by the Trademark Examining Attorney,
applicant’s ‘553 utility patent, under the heading
LOUDSPEAKER SYSTEM, claims the configuration design in the
present case:
The present invention relates in general to
loudspeaker systems and more particularly
concerns a novel compact loudspeaker system
that is compact and relatively easy and
inexpensive to manufacture and provides
realistic reproduction of sound with
negligible distortion. [Emphasis supplied.]

Again, we agree with the Trademark Examining Attorney
that this fourth Morton-Norwich factor weighs against the
applicant.
Serial No. 74734496
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Accordingly, when applying the four Morton-Norwich
factors to the instant case, each one of the factors weighs
against the applicant. Therefore, we find that applicant’s
proposed mark is functional.
6. If not de jure functional, applicant’s claim of acquired
distinctiveness under §2(f) is allegedly inadequate

As argued by applicant, and as noted earlier in this
opinion, on remand from the Court of Appeals for the Federal
Circuit, the Board found, in the alternative, that the
involved loudspeaker had de facto acquired distinctiveness
sufficient to support registration of the mark under Section
2(f) of the Lanham Act.14 There is nothing in this record
indicating that applicant has not continued to enjoy
substantially exclusive use of this loudspeaker
configuration over the past twenty-two years, and in its
promotional efforts, continues to do all the things the
Board found convincing of de facto acquired distinctiveness
in 1983 (e.g., consistently picturing the speaker cabinet
with the perspective that highlights the pentagonal shape of
the enclosure, etc.). In re Bose Corporation, 216 USPQ at
1005.
Hence, if we should be reversed on appeal on the
questions of claim preclusion and of de jure functionality,

14 In re Bose Corporation, 216 USPQ 1001 (TTAB 1983).
Serial No. 74734496
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we feel constrained to agree with this earlier determination
by the Board. Accordingly, on this refusal, we reverse the
position of the Trademark Examining Attorney.
Decision: We reverse the Trademark Examining Attorney
on his refusals to register based upon the following
grounds: that the applicant has failed to comply with a
requirement to submit evidence allegedly missing from the
record; that applicant has failed to comply with the
requirement to submit an acceptable drawing of the proposed
mark and to explain the nature of two vertical dashed lines
that appear in the drawing; that registration is proscribed
by Section 2(e)(5) of the Trademark Act; and that even if
this matter should be found not to be de jure functional,
applicant’s claim of acquired distinctiveness under Section
2(f) of the Trademark Act is insufficient to support
registration.
On the other hand, we affirm the refusals to register
on the Principal Register on the grounds that under the
doctrine of res judicata, applicant has already had a full
and fair opportunity to prosecute this proposed mark for
identical goods; and that the proposed design consists of a
de jure functional configuration of a loudspeaker system.
Accordingly, registration to applicant is hereby refused.