Thursday, May 30, 2013

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:

Functionality refusal reversed:


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