Long-Lok v. Safety Socket — Functional Fastener-Mark Challenge Survives, Abandonment Theory Does Not

Background

Long-Lok modifies aerospace fasteners by adding self-locking mechanisms. Safety Socket formerly manufactured fasteners and owns a registered design mark consisting of two diagonal knurled bands around a fastener head. After Safety Socket threatened infringement claims, Long-Lok sued to cancel the mark and obtain declaratory relief.

Long-Lok alleged two cancellation theories. First, the knurled bands are functional because they improve grip and affect how the fastener is used. Second, Safety Socket allegedly abandoned the mark after leaving manufacturing in 2023 without intending to resume. Safety Socket moved to dismiss the functionality and abandonment portions of the complaint.

The Court’s Holding

The court allowed the functionality theory to proceed. Although the “better grip” allegation was thin and Safety Socket argued that socket-head fasteners are turned with tools rather than by hand, that factual dispute could not be resolved on the pleadings. Functionality is generally fact-intensive, and Long-Lok had alleged a specific utilitarian advantage.

The abandonment theory failed as pleaded. A three-year period of nonuse can create a presumption of abandonment, but a shorter period is not automatically fatal if a plaintiff adequately alleges both nonuse and intent not to resume. Long-Lok did not. Its own allegations suggested that marked Safety Socket fasteners remained in commerce, and a trademark owner need not use a mark in precisely its original manner to preserve rights. The related declaratory-judgment count therefore also failed, though the court granted leave to amend.

Key Takeaways

• A product-design mark may face cancellation if the claimed feature provides a utilitarian advantage.
• Courts generally should not resolve disputed functionality facts at the motion-to-dismiss stage.
• Abandonment requires plausible facts supporting both discontinued use and intent not to resume; a change in business model alone may be insufficient.

Why It Matters

The decision separates two often-confused limits on trademark rights. Functionality prevents trademark law from controlling useful product features, while abandonment focuses on whether the owner stopped using the mark without intent to return. Manufacturers asserting product-configuration marks should document nonfunctional branding purposes and continuing commercial use, especially during business transitions.