Prior Patenting of Functional Trademark Invalidates the Mark
Specialized Seating, Inc. v. Greenwich Indus., L.P., 472 F. Supp.2d 999 (N.D. Ill. Feb. 2, 2007) (Holderman, C.J.).
Judge Holderman held declaratory judgment defendant's, Greenwich Industries ("Greenwich"), trademark invalid and held that Greenwich committed fraud on the USPTO while prosecuting its trademarks. Declaratory judgment plaintiff, Specialized Seating ("Specialized"), and Greenwich are competing manufacturers of folding chairs.* Greenwich has a trademark to a configuration of a folding chair with certain physical characteristics. Because Greenwich secured patents for most or all of the features identified in its trademark, the Court held that Greenwich's trademark was functional and, therefore, invalid. In addition to having held patents on the claimed features, Greenwich had also touted the functional benefits of the features in advertising.
The Court also held that Greenwich committed fraud on the USPTO because it only disclosed one of its four patents which covered functional elements of the claimed mark. In a first Office Action the Examiner rejected the mark as functional and requested that Greenwich identify any patents that cover elements of the mark. In response to that request, Greenwich disclosed only one of its four patents and distinguished it. The Examiner rejected the mark again and posed interrogatories to Greenwich, which Greenwich answered without disclosing its three other patents. The mark was ultimately issued on a Request for Reconsideration, without disclosure of Greenwich's remaining three patents. The Court held that Greenwich deliberately misled the USPTO by not disclosing its other three patents during prosecution of its mark.
* Specialized's founder and president was previously the President of the entity that became Greenwich's folding chair business. Specialized and Greenwich had a long history of litigation prior to this suit, which has all been resolved through various settlements or voluntary dismissals of suit.
