TTAB Upholds Section 2(e)(5) Functionality Refusal of Office Chair Wheel Configuration

The Board put the brakes on Applicant Equiper, LLC's attempt to register a mark comprising the three-dimensional configuration of an office chair wheel (shown immediately below). The Board, relying in part on a third-party utility patent, found the configuration to be functional under Section 2(e)(5). In re Equiper, LLC, Serial No. 98448363 (July 30, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The CCPA's Morton-Norwich decision sets forth the following four factors to be considered when assessing functionality under Section 2(e)(5):

1. the existence of a utility patent disclosing the utilitarian advantages of the design; 
2. advertising materials in which the originator of the design touts the design’s utilitarian advantages;
3. the availability to competitors of functionally equivalent designs; and
4. facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

The Board observed that a utility patent that claims the features of a proposed mark may be strong evidence of the functionality of those features. Furthermore, the patent’s specification and/or drawings may provide evidence of functionality even if the features are not explicitly claimed as part of the invention. "To be relevant under the first Morton-Norwich factor, the utility patent need not be owned by the applicant, but may be owned by a third party."

The crux of Applicant’s argument appears to be that the features of the wheel design claimed as its trade dress are not functional because they can be made in other shapes or designs and these non-functional shapes or designs outweigh the functional characteristics. Having carefully reviewed the [third-party] ’820 Patent . . .  we agree with the Examining Attorney that it discloses both the utilitarian advantages of Applicant’s overall design and of significant features claimed by Applicant as part of its trade dress, supporting a finding that the proposed mark, as a whole, is functional.

As to the second factor, Examining Attorney Gregory Gutierrez submitted advertising of both applicant and third parties that touted the utilitarian features of the design and supported a finding that the proposed mark, as a whole, is functional.

Since the first two factors were met, the Board did not need to consider the third and fourth factors. For the sake of completeness, however, the Board considered them anyway and found them to be neutral.

Applicant’s overall design and the significant features thereof are, as a whole, functional. Any non-functional features, such as specific shapes used by Applicant, are outweighed by the significant functional features. See, e.g., Heatcon, 2015 TTAB LEXIS 360, at *35-37 (citing Becton, Dickinson, for the proposition that the Board is to weigh functional and non-functional matter in determining whether a mark in its entirety is overall functional).

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TTABlogger comment: Why aren't statement made in the specification of a third-party patent inadmissible hearsay? Of course, a patent applicant will make assertions regarding the benefits of its design. Why should a trademark applicant be tarred and feathered with third-party statements? PS: I like to see a clear discussion of de facto functionality versus de jure functionality.

Text Copyright John L. Welch 2026.