TTABlog Collection of Section 2(e)(5) Functionality Decisions

Here is a collection of Section 2(e)(5) functionality cases. Obviously, Section 2(e)(5) refusals are difficult to overcome. Often the Board catches sight of a utility patent and that's all she wrote. Note that four of the seven reversals occurred in 2012! Does this suggest that the PTO Examining Corps needs a refresher course in the difference between de facto and de jure functionality?



Of course, functionality is only one hurdle that product configuration or other trade dress must clear in order to reach the registrability finish line. The other is distinctiveness. Three product configuration marks that cleared the functionality hurdle tripped over the distinctiveness bar. For a general discussion of "trade dress" that remains applicable today, see my 2004 article entitled "Trade Dress and the TTAB: If Functionality Don't Get You, Nondistinctiveness Will."


Functionality refusal affirmed:

• Precedential No. 10: Finding Aesthetic Functionality, TTAB Affirms 2(e)(5) Refusal of Black Color for Floral Packaging
• Precedential No. 7: TTAB Affirms Refusal to Register Peppermint Flavor and Scent for Nitroglycerin Spray
• Precedential No. 3: TTAB Affirms Alternative Refusals to Register Pet Food Container Design, Finding it Functional or Non-Distinctive
•  TTAB Grants Cancellation Petition, Finding Prison Toothbrush Design to be De Jure Functional
• TTAB Affirms Functionality Refusal of Plastic Suction Cup Configuration 
• CAFC Hears Oral Argument in Mag Instrument v. Brinkmann Appeal Re Functionality
• TTAB Enters Summary Judgment Under Section 2(e)(5), Cancelling Registration for Baseball Training Glove Design Due to Functionality 
• Divided CAFC Panel Affirms TTAB's Becton, Dickinson Functionality Ruling
• Precedential No. 2: TTAB Cancels Supplemental Registration for Shape of Culvert Unit Due To Functionality
• Precedential No. 1: TTAB Affirms 2(e)(5) Functionality Refusal of Motorcycle Stand Design
• Precedential No. 32: TTAB Finds Bands on Mag Rechargeable Flashlight Functional, Lacking in Acquired Distinctiveness
• TTAB Affirms Refusal of "Closure Cap Configuration Mark" on Functionality and Nondistinctiveness Grounds
• TTAB Affirms Section 2(e)(5) Functionality Refusal of Bird Feeder Design
• Precedential No. 28: TTAB Affirms 2(e)(5) Functionality Refusal of Bicycle Spoke Design
• TTAB Finds Design of "MOI" Putter Head Functional Under Section 2(e)(5)
• Applicant's Own Boastful Advertising Leads TTAB to Find Tray Design Functional
• Precedential No. 6: TTAB Affirms Section 2(e)(5) Functionality Refusal of Shape of Metal Spray Nozzle
• Precedential No. 4: TTAB Rules that a Sound Emitted by Goods in Normal Course of Operation Cannot Be Inherently Distinctive
• CAFC Affirms TTAB's Res Judicata Ruling re Functionality of Bose Speaker Design
• TTAB Finds Toilet Plunger Designs De Jure Functional
• TTAB Affirms Eight Functionality Refusals for Elevator Roller Guide Configurations
• TTAB Affirms Refusals to Register the Reversing Motion of a Watchcase
• Utility Patent Leads to TTAB Affirmance of Functionality Refusal for Pet Toy Configuration
• Citable No. 36: TTAB Deems Earplug Configuration Functional Based on Expired Patent
• TTAB Affirms Functionality Refusal of the Color Red for Fake Weapons
• TTAB Affirms Refusal to Register Bose Speaker Shape (Again)
• TTAB Nixes Baby Carrier Shape As Functional

Functionality refusal reversed:

• TTAB Reverses Section 2(e)(5) Functionality Refusal of Wavy Exercise Hoop
• TTAB Reverses Refusal to Register Hershey Bar Product Configuration
• TTAB Torpedoes 2(e)(5) Functionality Refusals of Four US Navy Pixilated Fabric Patterns
• TTAB Reverses Functionality Refusal of 3M Hand Sanitizer Dispenser, But Affirms Failure-to-Function Refusal
• TTAB Finds Flashlight Casing Not De Jure Functional but Lacking in Distinctiveness
• TTAB Reverses Functionality Refusal of Shape of Traffic Signal Bracket, but Affirms Nondistinctiveness Refusal
• Citable No. 41: TTAB Finds Drawing of Product Not Functional for Design Services