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TTAB’s Res Judicata Ruling Regarding Speaker Design Functionality Withstands Challenge


In In re Bose Corp. (No, 06-1173; February 8, 2007), a Federal Circuit panel affirms the Trademark Trial and Appeal Board's refusal to register Bose's speaker design mark pursuant to the doctrine of res judicata , based on the Court's earlier refusal to register as functional Bose's previous application for the same mark and the same goods (“Bose I”).

On appeal from the TTAB's decision in this case, Bose asserted that application of res judicata was improper because the facts and circumstances had changed since Bose I. In particular, Bose asserted that (1) in Bose I, the Court did not consider the “curved front edge” present in the instant application; (2) an intervening Supreme Court decision in TrafFix Devices v. Marketing Displays , 532 U.S. 23 (2001) changed the legal standard of inquiry for functionality of trade dress, and (3) in the instant application, the TTAB failed to consider additional evidence of an absence of promotional material touting the utilitarian aspects of the mark.

The Court disagrees with each of Bose's arguments. Regarding the “curved front edge,” the Court finds that it expressly considered the “bowed” front edge of the design in Bose I, and, contrary to Bose's assertions, “ 'bowed' is simply another term for ‘curved,' and the picture of the design at issue in Bose I depicts the same curved edge as the design in the present application.” The Court also finds that the decision in Trafix “does not affect the prior functionality analysis in Bose I,” and that, under Trafix , Bose's utility patent, which expressly claims a loudspeaker system with angled baffles and a pentagonal cross-section, is “strong evidence” of functionality. Lastly, the Court finds that while Bose's promotional materials do not tout the advantages of the curved front edge, the mark at issue is the overall pentagonal-shaped design, and that “the promotional advertisements did clearly promote the functional reason for the overall design.”


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