TTAB Affirms Section 2(e)(5) Functionality Refusal of Pen Holder Configuration

The Board upheld a refusal to register the product configuration shown below, for pen and pencil holders, concluding that the design is de jure functional under Section 2(e)(5). Examining Attorney Tarah Hardy Ludlow had (provisionally) accepted Applicant Pen Pal's Section 2(f) claim, but maintained the functionality refusal. In re Pen Pal, LLC, Serial No. 90730679 (June 22, 2023) [not precedential] (Opinion by Judge Melanye K. Johnson).

Pen Pal described the proposed mark as follows: "the three-dimensional configuration of specific design features of a pen or pencil holder; The applied-for mark comprises the exterior surface of an upper portion of the holder; The applied-for mark further comprises the rectangular base of the holder; The applied-for mark does not comprise the interior surface of the upper portion of the holder or the end portions of the slot where a pen or pencil may be inserted into the holder."

Applying the ever-popular Morton-Norwich factors, the Board began with a detailed review of Pen Pal's abandoned utility patent application. It found that "'the exterior surface of an upper portion of the holder' and 'the rectangular base of the holder' constitute essential or integral parts of the invention and offer a utilitarian advantage": the rectangular base functions to keep the holder upright, and the exterior surfaces of the upper portions of the holder serve to secure the  writing instrument in the holder so that it does not roll away from, or fall out of, the holder. "Furthermore, Applicant’s overall design is dictated by the function it performs — holding a pen, pencil, or other cylindrical writing instrument."

As to the second Morton-Norwich factor, Pen Pal's advertising touts the utilitarian advantage of its design: "Pen Pal’s design was perfected to hold a pen securely while at the same time allowing the pen to be easily inserted and removed from the holder." (emphasis by the Board).

Because the rectangular base and exterior upper surfaces of Applicant’s holder make the holder’s design functional, there was no need for the Board to consider alternative designs. And the Board considered the fourth Morton-Norwich factor to be neutral, because there was no evidence that Pen Pal's design is comparatively simple or inexpensive to manufacture.

Observing that the Morton-Norwich factors are not exclusive, the Board considered as probative a third-party website that touted the utilitarian advantages of Pen Pal's product.

Finally, Pen Pal pointed to its four design patents as presumptive proof that the proposed mark is not de jure functional. The Board, however, observed that "ownership of a design patent does not, in itself, establish that a product feature is non-functional; such ownership can be outweighed by other evidence supporting a functionality determination." Moreover, it found the patents to be non-probative because they did not disclose the same design.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Another proposed product configuration mark bites the dust. Remember that just because a feature has utility (i.e., it is de facto functional) doesn't mean that it's functional in a trademark sense (de jure functional). Did the Board apply that distinction?

Text Copyright John L. Welch 2023.