Misty Everson and Christine Maynard

OCR transcription for search; preserved printed pages are authoritative

THIS OPINION ISA
PRECEDENT OF THE TTAB

Mailed: March 31, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

In re Misty Everson and Christine Maynard

Serial No. 97104306

Mark Terry of Mark Terry, P.A.,
for Misty Everson and Christine Maynard.

Joshua Sturman, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.

Before Lykos, Lavache, and Brock,
Administrative Trademark Judges.

Opinion by Lavache, Administrative Trademark Judge:

Misty Everson and Christine Maynard, joint applicants,! seek registration on the
Supplemental Register of the proposed three-dimensional product design displayed

below, for “pancakes; food, namely, pancakes,” in International Class 30.

1 In their appeal brief and the application record, the joint applicants have referred to
themselves in the singular form, “Applicant.” For clarity and convenience, we will do the
same in this opinion.

2 Application Serial No. 97104306 was filed November 2, 2021, seeking registration on the
Principal Register based on Applicant’s claimed bona fide intent to use the mark in commerce
under Trademark Act Section 1(b), 15 U.S.C. § 1051(b). On February 13, 2023, Applicant (1)
filed an amendment to allege use under Trademark Act Section 1(c), 15 U.S.C. § 1051(c),

Serial No. 97104306
2
The application includes the following mark description and stippling statement:
The mark consists of a three-dimensional product design of a round
pancake consisting of 8 uniform wedges. The broken lines depicting
the curved outer edges of the wedges indicate placement of the mark
on the goods and are not part of the mark.
The stippling is a feature of the mark and does not indicate color.3
Applicant submitted the following specimen showing how the proposed mark is
actually used in commerce:4
claiming December 17, 2022, as both the date of first use anywhere and the date of first use
in commerce, and (ii) amended the application to the Supplemental Register.
3 November 2, 2021 Application at TSDR 1. The Trademark Status and Document Retrieval
(TSDR) citations refer to the USPTO’s electronic file database for the involved application.
4 February 13, 2023 Amendment to Allege Use at TSDR 3. Applicant also submitted another
specimen, which is essentially identical to the one displayed above without the small
condiment containers that appear in the upper portion of the image. Id. at 2.

Serial No. 97104306
3
The Trademark Examining Attorney ultimately refused registration of
Applicant’s proposed mark under (i) Trademark Act Sections 23(c) and 45, 15 U.S.C.
§§ 1091(c), 1127, on the ground it is a generic product design configuration and thus
fails to function as a trademark, and (ii) Section 23(c), 15 U.S.C. § 1091(c), on the
ground that the proposed mark is a functional design for the identified goods.
When the Examining Attorney issued a final refusal of registration, Applicant
appealed and requested reconsideration, which the Examining Attorney denied.
Applicant then filed an appeal brief, but the Board subsequently granted the
Examining Attorney’s request to remand the application so that the cited statutory
basis for the failure-to-function refusal could be corrected through the issuance of a
new Office action.5 Applicant responded to that Office action and the Examining
Attorney issued a subsequent final Office action. The appeal then resumed and
Applicant was provided time to file a supplemental brief, but did not do so. The
Examining Attorney then filed a brief.
For the reasons explained below, we affirm the refusal under Section 23(c) on the
ground that Applicant’s proposed mark is a functional design for the identified goods.
We do not reach the other ground for refusal. Cf., e.g., In re DTI P’ship LLP, No.
5 The Examining Attorney explained in the remand request that “the failure to function
refusal must be reissued under Trademark Act Sections 23(c) and 45 because the application
was amended to seek registration on the Supplemental Register and the final refusal was not
issued under the correct statutory basis.” 8 TTABVUE 1.
The TTABVUE citations in this opinion refer to entries in the Board’s electronic docket. The
number preceding “TTABVUE” is the docket entry number and any numbers following
indicate the relevant page numbers within the docket entry. See, e.g., Turdin v. Trilobite,
Ltd., No. 94002505, 2014 TTAB LEXIS 17, at *6 n.6.

Serial No. 97104306
4
76197868, 2003 TTAB LEXIS 171, at *10 (finding applicant’s failure to comply with
a requirement for information was a sufficient basis to refuse registration, and thus
declining to reach an additional ground of refusal based on mere descriptiveness); see
also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE § 1217 (2025)
(noting Board’s discretion to affirm a refusal of registration based on one of multiple
grounds).
I. Nature of the Proposed Mark
To facilitate our analysis, we first address the nature of Applicant’s proposed
mark. See, e.g., In re Palacio Del Rio, Inc., No. 88412764, 2023 TTAB LEXIS 183, at
*4; Kohler Co. v. Honda Giken Kogyo K.K., No. 91200146, 2017 TTAB LEXIS 450, at
*54; In re Heatcon, Inc., No. 85281360, 2015 TTAB LEXIS 360, at *14.
The Trademark Act takes a “flexible approach toward the concept of what
constitutes . . . a trademark.” In re Eagle Fence Rentals, Inc., No. 73463319, 1986
TTAB LEXIS 57, at *8. This is reflected in its definition of “trademark,” which
includes not just “any word [or] name,” but also any “symbol, or device, or any
combination thereof” used “to identify and distinguish . . . goods, including a unique
product, from those manufactured or sold by others and to indicate the source of the
goods, even if that source is unknown.” 15 U.S.C. § 1127.
Here, the mark drawing and mark description make clear that Applicant’s
proposed mark is a three-dimensional product design, which Applicant seeks to use
as trade dress for the identified goods. Wal-Mart Stores v. Samara Bros., 529 U.S.
205, 209 (2000) (“‘[T]rade dress’ . . . originally included only the packaging, or
‘dressing,’ of a product, but in recent years has been expanded by many courts of

Serial No. 97104306
5
appeals to encompass the design of a product.”). The specimens of record confirm that
understanding. See TRADEMARK MANUAL OF EXAMINING PROCEDURE § 1202.02 (Nov.
2025) (“A determination of whether the mark constitutes trade dress must be
informed by the application content, including the drawing, the description of the
mark, the identification of goods or services, and the specimen, if any.”).
In simpler terms, the proposed mark consists of a pancake cut into eight equal or
“uniform” wedges. However, we acknowledge Applicant’s argument that this broad
characterization may not adequately convey all of the claimed features of the
proposed mark,6 or those elements that are depicted in the drawing but not claimed.
With that in mind, we note that the mark drawing outlines the round shape of the
pancake in dotted lines, indicating Applicant does not claim the round shape as a
feature of the mark. See Trademark Rule 2.52(b)(4), 37 C.F.R. § 2.52(b)(4) (“The
applicant must . . . use broken lines to show any other matter not claimed as part of
the mark.”). But the mark description does describe the product design as a “round
pancake” and claims the wedge shape of the eight equal pieces, as well as their
placement in relation to the pancake. This effectively dictates that the pancake will
have a generally round shape, which is reflected in the specimens of record.7 In
addition, Applicant has indicated that the stippling displayed in the mark drawing is
6 See Applicant’s Brief, 6 TTABVUE 3 (“It is worth noting that Applicant’s mark is more than
just cutting a circular, shared food into eight equal, triangular slices.”).
7 This also takes into account the reality, as shown in the evidence of record, that the process
for making pancakes typically results in a round shape. In any event, because Applicant is
not claiming the outer shape of the pancake’s perimeter as a part of the mark, we are not
relying on it in our analysis.

Serial No. 97104306
6
a feature of the proposed mark, representing “a texture” and “a gradient of the
texture” of the pancake.8 As discussed later in this opinion, the claimed “texture”
appears to be a texture that is typical of pancakes. Lastly, Applicant points out that
the mark drawing shows “a certain proportion of radius to thickness,”9 which is also
generally reflected in the specimens of record.10
Now that we have defined the proposed mark for purposes of our analysis, we turn
to whether the mark, as a whole, is functional and thus cannot serve as an indicator
of source for Applicant’s goods.
II. Functionality
Under the Trademark Act, functional matter may not be registered on either the
Principal Register or the Supplemental Register. See 15 U.S.C. §§ 1052(e)(5), 1091(c);
Heatcon, 2015 TTAB LEXIS 360, at *9. Specifically, Section 2(e)(5) provides that “[n]o
trademark by which the goods of the applicant may be distinguished from the goods
of others shall be refused registration on the principal register on account of its nature
unless it . . . comprises any matter that, as a whole, is functional.”
15 U.S.C. § 1052(e)(5) (emphasis added). Likewise, Section 23(c) allows registration
8 Id.
9 Id.
10 The Examining Attorney asserts that the texture and proportion of radius to thickness of
the pancake, which Applicant refers to, “are not claimed in the description of the mark and
are not depicted in the specimen of record.” Examining Attorney’s Brief, 15 TTABVUE 6.
However, the mark drawing does include stippling, which is claimed as a feature of the mark,
and shows a particular proportion of radius to thickness, both of which are reflected in the
specimens of use. See In re Becton, Dickinson & Co., 675 F.3d 1368, 1371 (Fed. Cir. 2012)
(noting, without objection, that the Board considered elements of the proposed design that
were reflected in the mark drawing but not recited in the mark description).

Serial No. 97104306
7
on the Supplemental Register of “any trademark, symbol, label, package,
configuration of goods, name, word, slogan, phrase, surname, geographical name,
numeral, device, any matter that as a whole is not functional, or any
combination of any of the foregoing, but such mark must be capable of distinguishing
the applicant’s goods or services.” 15 U.S.C. § 1091(c) (emphasis added).
Regardless of the statutory basis for refusal, the rationale is the same: Functional
matter cannot serve as an indicator of source for goods. See Qualitex v. Jacobson
Prods. Co., 514 U.S. 159, 165 (1995) (noting that a functional product feature “cannot
serve as a trademark”); In re Penthouse Int’l, Ltd., 565 F.2d 679, 681 (CCPA 1977)
(“A feature dictated solely by ‘functional’ (utilitarian) considerations may not be
protected as a trademark . . . .” (quoting In re Deister Concentrator Co., 289 F.2d 496,
502 (CCPA 1961)). Therefore, the caselaw applying Section 2(e)(5) to potentially
functional matter is equally applicable to functionality refusals under Section 23(c).
See Heatcon, 2015 TTAB LEXIS 360, at *12 (noting that, even where the application
seeks registration on the Supplemental Register, “and the statutory authority for
refusal is Section 23, the case law applying Section 2(e)(5) and addressing
functionality refusals . . . remains equally applicable because the issue, functionality,
is the same”).
In addition, according to that caselaw, matter is functional “‘if it is essential to
the use or purpose of the article or if it affects the cost or quality of the article,’ that
is, if exclusive use of the feature would put competitors at a significant non-
reputation-related disadvantage.” Qualitex, 514 U.S. at 165 (quoting Inwood Labs. v.

Serial No. 97104306
8
Ives Labs., 456 U.S. 844, 850 n.10 (1982)). To determine whether a particular product
design is functional, we consider the evidence and arguments of record in view of the
evidentiary considerations set forth in In re Morton-Norwich Prods., Inc., 671 F.2d
1332 (CCPA 1982), which we refer to as the “Morton-Norwich factors.” See, e.g.,
Heatcon, 2015 TTAB LEXIS 360, at *12 (considering factors set forth in Morton-
Norwich to determine functionality).
Specifically, under the Morton-Norwich factors, we take into account:
(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.
Becton, 675 F.3d at 1374 (citing Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268,
1274 (Fed. Cir. 2002)); see Morton-Norwich, 671 F.2d at 1340-41.
“It is not required that all four factors be proven in every case, nor do all four
factors have to weigh in favor of functionality to support a refusal.” Heatcon, 2015
TTAB LEXIS 360, at *13-14. Moreover, these factors are not exclusive, as, ultimately,
the functionality determination “‘depends on the totality of the evidence.’” Id. at 813
(quoting Valu Eng’g, 278 F.3d at 1273).
A. Existence of a Utility Patent for the Design Claimed in the Mark
A utility patent covering the claimed features may be strong evidence of the
functionality of those features. See TrafFix Devices v. Mktg. Displays, 532 U.S. 23,

Serial No. 97104306
9
29-30 (2001). On the other hand, the absence of a utility patent covering the claimed
features of a proposed mark does not, by itself, establish that the proposed mark is
nonfunctional. See id. at 35; In re Gibson Guitar Corp., No. 75513342, 2001 TTAB
LEXIS 835, at *4 n.3 (“Although the existence of a utility patent could weigh against
applicant in terms of showing that the configuration is de jure functional, the absence
of such a patent simply has no weight in our analysis.”).
Here, the record does not contain any evidence of the existence of a utility patent
for the features claimed in Applicant’s proposed mark, and neither the Examining
Attorney nor Applicant otherwise address the first factor in their briefs.11 Therefore,
this factor is inapplicable.
B. Advertising Touting the Utilitarian Advantages of the Design
Claimed in the Mark
Next, we consider any advertising materials of record “in which the originator of
the design touts the design’s utilitarian advantages.” Becton, 675 F.3d at 1374. Under
this factor, the Examining Attorney points to a “Brand Style Guide” produced and
made of record by Applicant, explaining how to “message” the features and benefits
of a pancake sold in sliced form.12 Specifically, this guide indicates that such a
pancake should be touted as a “new team-sized meal option” that is “shareable,”
11 During prosecution, the Examining Attorney’s first Office action included an information
requirement, which, inter alia, requested “[a] written statement as to whether the applied-
for mark, or any feature(s) thereof, is or has been the subject of a design or utility patent or
patent application.” August 12, 2022 Nonfinal Office Action at TSDR 3. In response to this
requirement, Applicant answered “None.” February 13, 2023 Response to Nonfinal Office
Action at TSDR 19. We interpret Applicant’s response as indicating that the mark, or any
feature of it, is not and was not the subject of a design or utility patent or patent application.
12 See February 13, 2023 Response to Nonfinal Office Action at TSDR 8.

Serial No. 97104306
10
“dippable,” and “[a]ny time-able.”13 As to the “slice” format, in particular, the guide
emphasizes messaging such as “Why stack your pancakes when you can share them
by the slice?” and “Save a few slices for tomorrow.”14 The guide also suggests
advertising a sliced pancake as “being meant for life on the go.”15
While the “Brand Style Guide” is somewhat inchoate,16 and appears to be for
internal use by Applicant and perhaps its affiliates, it nonetheless reflects Applicant’s
own understanding and explanation of the advantages of the proposed pancake
product design and Applicant’s plans for advertising those advantages to others.17
Applicant elaborated on this explanation in response to the Examining Attorney’s
request for additional information about the features embodied in the proposed
mark.18 Among other things, Applicant stated that “[t]he pancake . . . experience
extends beyond the sit-down to eat experience,” likening it to a “social pizza eating
experience where everyone grabs a slice and dips it into sauce,” and thus “[t]here isn’t
a need for a plate or utensils.”19 Applicant further explained that the claimed “design
13 Id.
14 Id.
15 Id.
16 One of the guide’s pages includes placeholder language instead of actual relevant text. See
id. at 13.
17 For this reason, we find the “Brand Style Guide” to be probative on the question of
functionality, regardless of whether it is perhaps more accurately characterized as something
other than “advertising.” See In re OEP Enters., No. 87345596, 2019 TTAB LEXIS 278, at
*11 (“The Morton-Norwich categories ‘are not exclusive, however, for functionality depends
upon the totality of the evidence.’” (quoting Kohler, 2017 TTAB LEXIS 450, at *62)).
18 See February 13, 2023 Response to Nonfinal Office Action at TSDR 19-21.
19 Id. at 19-20.

Serial No. 97104306
11
allows pancakes . . . to be eaten seated, standing up, or walking,” such that “[n]o
utensils are needed, and it targets a family-sized serving.”20 According to Applicant,
the “design allows family members to reach in to grab a slice or use a pie server to
obtain a piece” of the pancake and enables “d[]ipping into a sauce such as maple syrup
or blueberry compote.”21
Applicant is not the only one to “tout[] the design’s utilitarian advantages.” Becton,
675 F.3d at 1374. The Examining Attorney has made of record excerpts from fourteen
third-party websites, featuring pancake recipes and including photographs of
pancakes cut into roughly equal wedges, often eight equal wedges.22 Some of these
photographs,23 reproduced below, show how serving pancakes in this form allows
each wedge to be topped with a different topping. Indeed, the website featuring the
photograph on the left below calls its wedged pancake creation a “Breakfast Pancake
Pizza” and encourages the reader to “[t]urn an ordinary pancake into a pizza with
endless amounts of toppings.”24 The website featuring the photograph on the right
below notes that the provided recipe turns a “healthy banana oat pancake . . . into a
fruity pancake pizza with a selection of delicious toppings.”25
20 Id. at 20.
21 Id. at 21. Although Applicant uses the wording “dripping,” “dipping” appears to be what
Applicant intended.
22 See August 23, 2023 Final Office Action at TSDR 8-157.
23 Id. at 21, 33.
24 Id. at 19.
25 Id. at 25.

Serial No. 97104306
12
The Examining Attorney also made of record the Facebook post below, from a
third-party pancake restaurant, which suggests that the “method” involving the
slicing of a pancake into eight wedges “seems to have merit, especially for sharing!”26
26 Id. at 89 (highlighting added).

Serial No. 97104306
13
Having reviewed all evidence and arguments relevant to the second Morton-
Norwich factor, we agree with the Examining Attorney that Applicant’s own
marketing materials and statements directly address, and express, the utilitarian
advantages of the proposed product design, namely, facilitating more convenient
serving, sharing, consumption, and transporting of the pancake. Cf., e.g., In re
Loggerhead Tools, LLC, No. 85700986, 2016 TTAB LEXIS 260, at *9-12 (finding
instances of applicant touting a utilitarian advantage of the claimed motion feature
of a tool persuasive in the functionality determination); Heatcon, 2015 TTAB LEXIS
360, at *22-24 (deeming references in applicant’s brochure to the utilitarian
advantages of the claimed design to be probative). And the third-party evidence
discussed above provides additional support for the conclusion that the product
design embodied in the proposed mark offers certain utilitarian advantages, namely,
shareability and customization of toppings on the individual wedges or slices. See,
e.g., Heatcon, 2015 TTAB LEXIS 360, at *25-26 (considering third-party references
to the advantages of the design at issue).
We find that Applicant’s arguments to the contrary—that “there is no practical
advantage to the [design’s] eight equal slices” and that the claimed design would “not
confer any functional benefit like easier handling or consumption”27—contradict its
own materials and prior statements in the record, which clearly emphasize the utility
27 Applicant’s Brief, 6 TTABVUE 9. Applicant argues that eight equal slices are claimed in
the proposed product design and that the “consumer wouldn’t be disadvantaged if the
pancake was served whole or in fewer slices.” Id. We address these arguments later in this
opinion.

Serial No. 97104306
14
of a design that provides individual slices, particularly equal slices. See Kistner
Concrete Prods. v. Contech Arch. Techs., Inc., No. 92048733, 2011 TTAB LEXIS 8, at
*41 (“If a seller advertises the utilitarian advantages of a particular feature of its
product, this constitutes strong evidence of functionality.”).
Accordingly, this Morton-Norwich factor strongly supports a conclusion that the
applied-for mark is functional.
C. Availability of Functionally Equivalent Designs
The third factor to consider is the availability of designs that are functionally
equivalent to the design claimed in the proposed mark. See Becton, 675 F.3d at 1374.
Applicant argues that “there [are] many ways to present pancakes and that using 8
slices is only one of many,” pointing to the evidence of record, which “shows many
alternative ways of presenting pancakes (sometimes 6, sometimes 7 and sometimes
10 slices, sometimes with fruit placed on top, etc.).”28 Applicant also made of record a
number of third-party website excerpts including photographs of pancakes presented
in a stacked configuration, in some cases with a wedge cut out of the entire stack.29
For example:30
28 Id. at 10.
29 See July 18, 2023 Response to Nonfinal Office Action at TSDR 11-37.
30 Id. at 11, 22, 29, 33.

Serial No. 97104306

Betty

Locke

BUTTERMILK

PANCAKE MIX @

Original Buttermilk
Pancakes - (Full Stack)

$7.99
690 Cal

15

Serial No. 97104306
16
In short, Applicant’s evidence can be categorized into two general types of
proposed alternative designs: (1) a stacked configuration (sometimes with wedges cut
from the entire stack) and (2) a sliced, but not stacked, configuration with more, or
fewer, than eight slices. According to Applicant, this evidence shows that there are
alternative designs in terms of presenting pancakes, such that “there is no
‘competitive need’ in the industry for the Applicant’s particular product design.”31
The Examining Attorney, on the other hand, argues that we need not consider the
availability of alternative designs at all because the other evidence of record,
particularly Applicant’s own statements and marketing materials, establishes the
functionality of the features embodied by the proposed product design.32 In pressing
this argument, the Examining Attorney relies on the general principle that the
“availability of alternative designs does not convert a functional design into a non-
functional design.” Kohler, 2017 TTAB LEXIS 450, at *111 (quoting Kistner, 2017
TTAB LEXIS 450, at *53).
We agree with the Examining Attorney that, as a general matter, alternative
designs need not be considered if the other evidence of record establishes
functionality. See Becton, 675 F.3d at 1376 (stating that there is no need to consider
availability of alternative designs “if functionality is found based on other
considerations”). However, for completeness we have considered all of the evidence of
record, including Applicant’s evidence of potential alternative designs. See Valu
31 Applicant’s Brief, 6 TTABVUE 10.
32 See Examining Attorney’s Brief, 15 TTABVUE 11.

Serial No. 97104306
17
Eng’g, 278 F.3d at 1273 (“Functionality is a question of fact, and depends on the
totality of the evidence.” (internal citations omitted)); see also Becton, 675 F.3d at
1376 (noting that the Board considered evidence of potential alternative designs even
though functionality could be found based on other considerations).
Applicant’s evidence and arguments do not convince us that the availability of
alternative designs renders the proposed product design nonfunctional. To be
relevant in our analysis, the alternative designs proffered by Applicant must be
“functionally equivalent” to the design in the proposed mark. Becton, 675 F.3d at
1374; see also Heatcon, 2015 TTAB LEXIS 360, at *30-33 (finding evidence of
alternative designs unpersuasive because the designs did not “provide the same
utilitarian benefit”). Here, in Applicant’s own words, the design embodied in the
proposed mark “allows pancakes . . . to be eaten seated, standing up, or walking,”
such that “[n]o utensils are needed, and it targets a family-sized serving,” “allow[ing]
family members to reach in to grab a slice or use a pie server to obtain a piece” of the
pancake and dip it “into a sauce such as maple syrup or blueberry compote.”33 And,
as mentioned above, some of the Examining Attorney’s evidence of record
demonstrates that the sliced configuration, particularly when applied to larger
pancakes, allows each slice to be customized with different toppings, thus catering to
individual preferences. Applicant has not established that the alternative stacked
configuration offers the same utilitarian benefits as the proposed design, at least with
respect to facilitating more convenient serving, sharing, consuming, and transporting
33 February 13, 2023 Response to Nonfinal Office Action at TSDR 20-21.

Serial No. 97104306
18
of the pancake. Thus, we do not consider the stacked configuration to be a functionally
equivalent design.
Applicant’s other proposed alternative design—pancakes sliced but not stacked—
differs from Applicant’s design only in terms of the number of slices in the pancake.
Applicant focuses on the fact that eight equal slices are claimed in the applied-for
product design, arguing that the “consumer wouldn’t be disadvantaged if the pancake
was served whole or in fewer slices, but the eight slices become a unique
characteristic that identifies the pancake product.”34 Again, however, we must
consider the utilitarian advantages of the configuration claimed in the proposed
mark. And we find that, consistent with the statements made in Applicant’s “Brand
Style Guide” and in its response to the Examining Attorney’s request for information,
both the drawing of the mark and the specimens of use show that the eight equal
slices claimed in the applied-for configuration can result in eight appropriately-sized
servings, especially when the pancake is large (or family-size) and shared among a
group of people. As Applicant itself states, “[t]he number of slices in a pancake is
usually determined by practical considerations, like the size of the pancake, [or] the
desired portion size.”35
On that point, we acknowledge that, depending on the size of the pancake, six
equal slices or ten equal slices, for instance, might provide similar functionality as
Applicant’s design, but, when it comes to family-size, or shareable, pancakes, such as
34 Applicant’s Brief, 6 TTABVUE 9.
35 Id. at 8.

Serial No. 97104306
19
the one featured in Applicant’s specimens of use, the eight-equal-slices configuration
is one of a very few superior designs for the utilitarian advantages Applicant itself
touts. This same eight-slice configuration is commonly used with pizzas, pies, and
cakes, as shown in the Examining Attorney’s evidence.36 Therefore, allowing
“exclusive use of the feature would put competitors at a significant non-reputation-
related disadvantage,” Qualitex, 514 U.S. at 165, and thus hinder competition. See In
re Bose, 772 F.2d 866, 872 (Fed. Cir. 1985) (“If the feature asserted to give a product
distinctiveness is the best, or at least one, of a few superior designs for its de facto
purpose, it follows that competition is hindered. Morton-Norwich does not rest on
total elimination of competition in the goods.”); In re Van Valkenburgh, No. 77025789,
2011 TTAB LEXIS 1, at *20 (“[T]he mere fact that other designs are available does
not necessarily mean that applicant’s design is not functional.”).
Accordingly, we find that this factor supports a conclusion that the proposed mark
is functional.
D. Whether the Method of Manufacturing is Comparatively Simple or
Cheap
Under the fourth Morton-Norwich factor, evidence demonstrating that a proposed
design results from a comparatively simple or cheap method of manufacture may
support a conclusion that the design is functional. See Kohler, 2017 TTAB LEXIS 450,
at *113 (indicating that “evidence that a product feature makes the product cheaper
to manufacture may be probative in showing functionality”). However, even if a
36 See, e.g., April 18, 2023 Nonfinal Office Action at TSDR 8-9, 31-32, 47-48, 60-61, 74-75.

Serial No. 97104306
20
design actually costs more to produce, that higher cost does not necessarily render
the design nonfunctional if it otherwise results in a product of superior quality. See
OEP Enters., 2019 TTAB LEXIS 278, at *44-45 (“[E]vidence that a design costs more,
or has no impact on cost, is irrelevant if the design is found to work better.”); Kohler,
2017 TTAB LEXIS 450, at *113-14 (indicating that “evidence that [a design] does not
affect its cost is not necessarily proof of nonfunctionality”).
Neither the Examining Attorney nor Applicant point to any evidence concerning
the cost or complexity of producing pancakes with the design in the proposed mark,
nor did we find any in the record. Applicant merely argues that “due to the
arbitrariness of the eight slices design . . . it could not possibly affect the cost or
quality of pancakes.”37 In view of our discussion above, we do not agree that the design
is arbitrary. But we find that there is nothing in the record to support a finding that
the comparative cost or complexity of a design that involves cutting a round pancake
into eight equal slices is a probative factor on the question of functionality here.
E. Other Considerations
1. Texture Claimed as a Feature of the Mark
As we mentioned above, the application includes a statement that the stippling in
the mark drawing is a feature of the mark, and Applicant has explained that the
stippling represents “a texture” and “a gradient of the texture” of the pancake.38 In
other words, Applicant is claiming the texture of the pancake as a feature of the
37 Applicant’s Brief, 6 TTABVUE 9 (emphasis omitted).
38 Id. at 3.

Serial No. 97104306
21
product design embodied in the mark. However, based on the many other
photographs of pancakes in the record, we find that the texture Applicant claims is
simply the texture that typically results from the process of making pancakes. In
other words, it is akin to a by-product of the manufacturing process. Therefore, we
find that the claimed texture feature is functional.39 Cf., e.g., McGowen Precision
Barrels, LLC v. Proof Rsch., Inc., No. 92067618, 2021 TTAB LEXIS 167, at *80, *84-
85 (finding respondent’s trade dress functional because, inter alia, it resulted from
the manufacturing process for the relevant products); Saint-Gobain Corp. v. 3M Co.,
No. 91119166, 2007 TTAB LEXIS 82, at *78 (finding the purple color of applicant’s
sandpaper functional where, inter alia, it was a natural by-product of the
manufacturing process).
2. Applicant’s Intent
Applicant argues that “[c]utting circular pancakes into eight equal, triangular
slices is a decision that applicant made not out of necessity or practicality, but with
the intention of creating a distinct product presentation that would identify and
distinguish its goods (pancakes) in the market.”40 According to Applicant, “[t]his
makes it an arbitrary choice serving as a trademark.”41
However, as the Examining Attorney correctly counters, a product design may be
functional regardless of an applicant’s intent in adopting it and irrespective of the
39 Similarly, based on the evidence of record, we view the mark drawing’s depiction of the
pancake’s “certain proportion of ratio to thickness” (Applicant’s Brief, 6 TTABVUE 3) as
representative of a pancake’s typical shape.
40 Applicant’s Brief, 6 TTABVUE 8 (emphasis deleted).
41 Id. (emphasis deleted).

Serial No. 97104306
22
actual practicality of the design. See, e.g., OEP Enters., 2019 TTAB LEXIS 278, at
*44-45 (indicating that a design may be functional even if it costs more to produce);
In re Pingel Enter. Inc., No. 74421666, 1998 TTAB LEXIS 21, at *39 (“That applicant,
despite the inherent advantages of a design which is simple and less expensive to
manufacture than other petcocks, has, however, deliberately chosen a more complex
and expensive manner in which to manufacture its product does not mean that the
configuration thereof is not de jure functional.”). In any event, Applicant’s arguments
regarding the reasons for adopting the mark are belied by its own prior statements
and marketing materials touting the utilitarian advantages of the product design.
3. Prior Third-Party Registrations
Applicant made of record a handful of prior third-party registrations issued by the
USPTO for marks that Applicant characterizes as “configurations for food products,”
and asserts that these prior registrations justify registration of Applicant’s proposed
mark.42 While Applicant appears to have submitted these registrations to argue
against the Examining Attorney’s other ground for refusal, we nonetheless note that
we are not persuaded by this evidence when it comes to functionality. First, the
registrations are for different marks with different features, which are applied to
different goods. Second, even if the marks were similar, we are not bound by prior
decisions of examining attorneys to register other marks. In re Nett Designs Inc., 236
F.3d 1339, 1342 (Fed. Cir. 2001) (“Even if some prior registrations had some
42 Id. at 6-7.

Serial No. 97104306
23
characteristics similar to [Applicant’s] application, the [USPTO’s] allowance of such
prior registrations does not bind the Board or this court.”).
III. Conclusion
Based on all of the arguments and evidence of record, which we have considered
in relation to the Morton-Norwich factors, we find that the proposed mark comprises
matter that, as a whole, is functional as applied to the identified goods. Applicant’s
own marketing materials and statements tout the product design’s utilitarian
advantages, namely, facilitating more convenient serving, sharing, consuming, and
transporting of the pancake. And the evidence shows that the product design
embodied in the proposed mark is one a very few superior designs that can provide
those advantages. In other words, cutting pancakes, especially larger ones, into eight
equal slices provides certain utilitarian advantages that cannot be realized through
most other potential designs. See Bose, 772 F.2d at 872. Thus, registration of the
proposed mark must be refused to “protect[] competitors against a disadvantage
(unrelated to recognition or reputation) that trademark protection might otherwise
impose, namely their inability reasonably to replicate important non-reputation-
related product features.” Qualitex, 514 U.S. at 169.
Decision: We affirm the refusal to register Applicant’s proposed mark under
Trademark Act Section 23(c) on the ground that it is a functional design for the
identified goods. We therefore do not reach the refusal under Trademark Act Sections
23(c) and 45, on the ground that the proposed mark is a generic product design
configuration and fails to function as a trademark for the identified goods.