TTAB affirms refusal to register Mars' pet food container design

United States of America

When can a product’s packaging also serve as an indication of origin (ie, a brand) that is registrable on the Principal Register? This question was addressed by the Trademark Trial and Appeal Board (TTAB) in the precedential opinion of In re Mars Inc (Serial No 77545810, January 14 2013). 

US law provides that registration of a product or package design may be denied if it “comprises any matter that, as a whole, is functional” (see Section 2(e)(5) of the Trademark Act, 15 USC §1052(e)(5). The US Supreme Court has held that a product feature is functional and cannot serve as a trademark “when it is essential to the use or purpose of the device or when it affects the cost or quality of the device”. This prohibition is founded on public policy that functional features of packaging should remain available for use by all competitors. 

A determination of functionality generally involves consideration of the following non-exclusive factors, known as the Morton-Norwich factors:

  1. whether a utility patent exists that discloses the utilitarian advantages of the design sought to be registered;
  2. whether applicant’s advertising touts the utilitarian advantages of the design;
  3. whether alternative designs are available that serve the same utilitarian purpose; and
  4. whether the design results from a comparatively simple or inexpensive method of manufacture.

In the present case, Mars created its package configuration to serve as an indication of origin for its product. It filed an intent-to-use trademark application for the package configuration below for “pet food”. The alleged mark was described therein as follows:

"The mark consists of a three-dimensional configuration of packaging for pet food that consists of a cylindrical, inverted pet food container. The top of the container is rounded with two concentric ridges that form the inner and outer lip of the top of the container. The bottom of the container has a wider ridged lip. The inverted nature of the container is claimed as a feature of the mark."


The examining attorney held the configuration to be functional and rejected the application under Section 2(e)(5). Mars disagreed and filed an ex parte appeal and a request for reconsideration, which was denied by the examiner. 

As support for the final rejection based on the Morton-Norwich factors, the examiner relied on, and entered into the record, a number of technical canning papers and third-party patents to show the functional advantages of ridged can tops and bottoms. Mars argued that “its mark has not been the subject of any design or utility patent or patent application”. However, the TTAB noted under Morton-Norwich factor one that third-party (utility) patents may be relied upon as evidence of functionality; a patent is potentially relevant if it covers the feature at issue, regardless of the owner. The examiner reviewed four third-party patents which Mars argued were distinguishable and not relevant. The TTAB agreed with the examiner that the patents were relevant under factor one to the question of the asserted functionality of Mars' alleged mark. The patents and technical literature of record showed the functional role of the ridges and/or beading of Mars' design, while the stacking benefit of the flared lip at the bottom of Mars' container was clear not only from one of the patents, but also from the uses of a flared lip at the bottom and the raised outer lip at the top that would also allow the stacking of one container on top of another.

As this was an intent-to-use trademark application, no advertising was introduced. Morton-Norwich factor two was therefore neutral.

With regard to Morton-Norwich factor three, Mars introduced several alternative pet food container designs to show that the design sought to be registered is but one of several designs and is not needed by competitors.  The examiner argued that, because a patent established the functionality of Mars' configuration, and the functionality at issue did not concern aesthetic functionality, the availability of alternative can designs was simply not relevant. Even if it were relevant, the cylindrical design in Mars' trademark was superior to the square and rectangular alternate designs suggested by Mars. The metal can’s design offered advantages over pet food pouches or bags because cans are physically stronger, impervious to rodents, the decay of food was possible to detect by examining the container, the canning process did not require additives or preservatives and ensured the flavour and freshness of the food. The TTAB agreed with the examiner on this factor.

With regard to the final Morton-Norwich factor, Mars argued that its design did not result from a comparatively simple or inexpensive method of manufacture. In fact, manufacturing its non-standard pet food container was more expensive. The examiner, relying on case law, concluded that assertions by Mars that the design did not reduce manufacturing costs or increases manufacturing costs failed to rebut the other evidence that the configuration was functional. Accordingly, the examiner concluded that Morton-Norwich factors one, three and four weighed in favour of the functionality refusal. 

The TTAB discounted Mars' arguments, finding that they told nothing about the simplicity of manufacture or costs of manufacturing each container, but were based on production volumes. The TTAB found that the evidence did not show that Mars' configuration results in a cheaper or easier method of manufacture. In affirming the refusal, the TTAB made it clear that to hold otherwise would inhibit legitimate competition by, in effect, granting a monopoly to what was essentially a very basic design for an inverted can.

Brian Edward Banner, The Banner Firm LLC, Washington DC

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