Utility Patent Leads to TTAB Affirmance of Functionality Refusal for Pet Toy Configuration

A utility patent once again provided strong evidence of the functionality of a product design, as the Board affirmed a Section 2(e)(5) refusal to register the product configuration shown below for "pet toys," finding the design to be de jure functional. According to the application, "the Mark consists of a three-dimensional configuration of a pet toy comprising at least one rope operatively associated with a rubberized plasticized center." In re The Kong Company, LLC, Serial No 78259826 (August 2, 2006) [not citable].


The Board first noted that the "functionality doctrine guards against the 'misuse' or 'over-extension' of trademark protection for product designs." Applying the CAFC's Morton-Norwich analysis, the Board considered (1) whether a utility patent discloses the utilitarian advantages of the design; (2) whether advertising materials tout the design's utilitarian advantages; (3) the availability of functionally-equivalent alternatives; and (4) whether the design results in a comparatively simple or cheap method of manufacture. In re Morton-Norwich Prods., Inc., 213 USPQ 9, 15-16 (CCPA 1982).

As to factor (1), the Board found that Applicant Kong's existing utility patent entitled "Therapeutic Pet Toy" constitutes "strong evidence" that the design is functional. The patent discloses a dental hygiene pet toy having a deformable elastomeric body and at least one grove forming a lip that will scrape plaque and other debris from a tooth and ginviva.

Drawings from Applicant's patent
Applicant Kong argued that the patent disclosed and claimed only "an individual feature" of its product, and it emphasized that the patent does not refer to any rope element. Moreover, Kong pointed out, the description in its trademark application did not refer to the functional features claimed in the patent.

Examining Attorney Michael Webster, noting the product description at Kong's own website, asserted that the grooves in the toy are "essential to the purpose of the pet dental toy and affect the cost and quality of the goods. The teeth cleaning function of the goods is the central advance of the overall product configuration."

The Board agreed with the PTO: the "rubberized plastic center" is the dominant element in applicant's mark; the grooves are the dominant feature of the center; and the body and the shape and positioning of the grooves, as depicted in the trademark drawing, are key elements of the patent. The fact that the description of the mark does not refer to the grooves or the shape of the body of the toy "in no way detracts from their importance in the mark as shown in the trademark drawing."

"In this case the grooved 'rubberized plasticized center' is the proverbial elephant in the middle of the living room. The grooved body itself is conspicuous, though applicant does not mention it. If applicant had truly intended to exclude the grooves or any other element of the mark, it could have done so by showing the grooves or other elements in broken line in its drawing."

The Board observed that the few arbitrary and nonfunctional features pointed out by Applicant are insufficient to render the overall design nonfunctional. "... the right to copy better working designs would, in due course, be stripped of all meaning if overall functional designs were accorded trademark protection because they included a few arbitrary and nonfunctional features."


Although the Board thought the patent evidence alone to be sufficient to establish functionality, it went on to consider the other three Morton-Norwich factors.

As to boastful advertising, the Board noted that Applicant's own website categorizes the product as "DENTAL KONG" and "extols the dental-hygiene utilitarian advantages of the product." Thus this factor also supported a finding of functionality.

As to alternative designs, Applicant claimed that there were many alternatives available, but the Board failed to find "a single example of a product which is functionally equivalent to applicant's product from the standpoint of dental hygiene." Applicant's evidence did show, however, that rope elements are "extremely common in pet toys," which reinforced the Board's conclusion that the grooved body is the dominant element in Applicant's mark.

Finally, the Board found that, even if Applicant's product is more expensive to manufacture than alternatives, "the functional advantages of Applicant's product in the area of dental health may very well outweigh any increase in cost." Therefore, the Board deemed this factor to be neutral.

Consequently, based on factors 1, 2, and 3, the Board affirmed the Section 2(e)(5) refusal to register.

Text Copyright John L. Welch 2006