TTAB Affirms 2e5 Functionality Refusal of Fire Extinguisher Pressure Gauge Configuration, Despite Applicant's Design Patent

The Board affirmed a Section 2(e)(5) functionality refusal to register the product configuration shown below, for "fire extinguishing preparations," finding that applicant's advertising and its utility patents "establish the functional benefits of Applicant's proposed mark." "The mark consists of a three-dimensional configuration of a pressure gauge placed in the center of a recess on the bottom of product packaging." In re Kronebusch Industries, LLC, Serial No. 87621232 (December 30, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Applying the ever-popular Morton-Norwich factors, the Board found that applicant's advertising "confirms that one of the main utilitarian advantages of a recessed (concave) bottom to Applicant’s fire extinguisher is to protect the gauge in rough conditions." A second advantage touted by applicant is that the recessed placement of the gauge makes it easy for an inspector to quickly determine that the extinguisher is properly pressurized.

Applicant Kronebusch's patents, which claimed the "recessed bottom portion," explain that "the design allows the fire extinguisher to sit on a flat surface such that it protects the gauge from abuse and debris and promotes ease of inspection." It also "enables storage of the apparatus on a flat surface, in a variety of vehicles, cabinets, or other storage areas where storing traditional fire extinguishers is difficult." Of course, these utility patents constituted "strong evidence" that the design is de jure functional.

The Board found the third and fourth Morton-Norwich factors to be neutral, noting as to the third that once functionality is found based on other considerations, there is no need to consider available alternative designs.

Kronebusch conceded that the pressure gauge on a fire extinguishing apparatus is functional, but it contended that here the pressure gauge configuration is not functional vis-a-vis chemical preparations. The Board was not moved, pointing out that this argument was "effectively and squarely rejected in In re Creative Edge Design Grp., 2019 TTAB LEXIS 127." There, to avoid a functionality refusal, "the applicant also argued it had applied for a packing design in connection with milk,' and not for the jug itself." The Board observed in that case:

The fact that the configuration is for packaging for milk does not remove its utilitarian aspect from the applied-for goods. The stackability feature is a utilitarian advantage whether the applied-for goods are containers for milk or milk. This advantage begins when the containers are filled with milk, and continues as the milk is distributed to and then sold at the store. In In re Mars, Inc., [Ser. No. 77545810, 2013 TTAB LEXIS 4, at *22] (TTAB 2013), the applicant applied for registration of the three-dimensional configuration of packaging for “pet food.” The Board found it to be generic, in part, because the attributes “permit[ed] stacking of containers.”

For completeness, the Board noted that applicant owns a design patent, which "appears to cover" the proposed mark. The case law says that the existence of a design patent "'presumptively . . . indicates that the design is not de jure functional.’” In re OEP Enters., Ser. No. 87345596, 2019 TTAB LEXIS 278, *20-21 (TTAB 2019) (quoting Becton, Dickinson, 675 F.3d at 1375). However, the existence of a design patent is not dispositive of non-functionality. The "'fact that a device is or was the subject of a design patent does not, without more, bestow upon said device the aura of distinctiveness or recognition as a trademark.'" Id. (quoting Becton, Dickinson, 675 F.3d at 1375)."

The Board, however, looked at the totality of the evidence, including the utility patents and applicant’s advertising, finding that "the strong and explicit evidence that the applied-for mark has utilitarian benefits rebuts any presumption of non-functionality resulting from the existence of ’673 Design Patent."

And so, the Board affirmed the refusal.

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TTABlogger comment: It continues to be my view that the existence of a design patent should have no bearing on the issue of whether the proposed mark is functional in a trademark sense (i.e., de jure functional) because the respective standards for functionality are different. See Sarah Fackrell (Burstein), Faux Amis in Design Law, 105 TMR 1455 (2015). [pdf here].

Suppose applicant's pressure gauge was in some unique shape, like an octagon, rather than circular. Would the octagonal shape be de jure functional?

P.S. I like to use the Latin terms de jure functionality (i.e., Section 2(e)(5) and de facto functionality (mere utility), despite the USPTO's current rejection of those terms, because I think they are clear and concise.

Text Copyright John L. Welch 2025.