Equiper, LLC

This Opinion is Not a
Precedent of the TTAB
Mailed: July 30, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
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In re Equiper, LLC
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Serial No. 98448363
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Equiper, LLC, by Christen Shore of Arenstein & Andersen.
Gregory Gutierrez, Examining Attorney, Law Office 120,
Joshua Toy, Managing Attorney.
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Before Cohen, Lavache and O’Connor,
Administrative Trademark Judges.
Opinion by O’Connor, Administrative Trademark Judge:
Equiper, LLC (“Applicant”) seeks registration on the Principal Register of the
trade dress depicted below for (as amended) “wheels for office chairs,” in International
Class 20.1
1 Application Serial No. 98448363 was filed on March 13, 2024, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), averring first use anywhere and in commerce at least
as early as March 11, 2016. The application includes a claim of acquired distinctiveness based
on Applicant’s verified statement of five or more years’ use pursuant to Trademark Act
Section 2(f), 15 U.S.C. § 1052(f).
Citations to the prosecution file are to entries in the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system in .pdf format. Citations to the appeal record are to TTABVUE,
the Board’s online docketing system, also in .pdf format.

Serial No. 98448363
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The application contains the following amended description of the mark:
The mark consists of a three dimensional configuration
comprising trade dress for a wheel. The trade dress
includes the exterior configuration of an in-line style wheel
with five windowed spokes, a core having a series of arches
and a bracket that is generally triangular. One point of the
bracket is a standard corner. One point of the triangle is
adjacent the wheel and is rounded. One point of the
triangle includes a flange that extends at a right angle to
one of the lines of the triangle, then forms a second right
angle, then joins a second line of the triangle. The matter
depicted in broken lines is not claimed as a feature of the
mark and serves only to show the position or placement of
the mark.2
Color is not claimed as a feature of the mark.
The Examining Attorney has refused registration on the grounds of functionality
pursuant to Trademark Act Section 2(e)(5), 15 U.S.C. § 1052(e)(5), and nondistinctive
product design without a sufficient showing of acquired distinctiveness, pursuant to
2 Pursuant to a requirement in the initial Office Action, Applicant added language stating
that the mark is a three-dimensional configuration and that the matter depicted in broken
lines is not claimed as a feature of the mark and serves only to show the position or placement
of the mark.

Serial No. 98448363
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Sections 1, 2 and 45, 15 U.S.C. §§ 1051-52, 1127. As part of the initial Office action,
the Examining Attorney issued a request for information pursuant to Trademark
Rule 2.61(b), 37 C.F.R. § 2.61(b), including whether the applied-for mark was the
subject of any patents or patent applications. After Applicant responded with certain
of the requested information and further information in support of its claim of
acquired distinctiveness, the Examining Attorney issued a final refusal, attaching
additional evidence including a third-party utility patent covering one of the products
for which advertising was provided in the initial Office action.3 Applicant requested
reconsideration, which was denied, and then filed this appeal.
The appeal has been fully briefed and is ready for decision. We affirm the refusal
to register on grounds of functionality. We therefore do not reach the refusal to
register on grounds of nondistinctive product design and failure to make a sufficient
showing of acquired distinctiveness.
3 The final Office action also maintained the information requirement because Applicant’s
responses were deemed incomplete and/or insufficient. See May 13, 2025 Final Office Action,
TSDR 13. Applicant later satisfied this requirement in its request for reconsideration. See
October 3, 2025 Denial of Request for Reconsideration After Final, TSDR 2.

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I. Functionality - Applicable Law
Registration may be refused under Trademark Act Section 2(e)(5) if a proposed
mark “comprises any matter that, as a whole, is functional.” 15 U.S.C. § 1052(e)(5).
Generally, a product design is considered to be functional “if it is essential to the use
or purpose of the article or if it affects the cost or quality of the article.” TrafFix
Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23, 32 (2001) (quoting Qualitex Co. v.
Jacobson Prods. Co., 514 U.S. 159, 165 (1995) (quoting Inwood Labs., Inc. v. Ives
Labs., 456 U.S. 844, 850 n.10 (1982)).
Our determination of functionality is generally guided by the analysis first applied
in In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1341 (CCPA 1982) (the “Morton-
Norwich factors”). See, e.g., Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 1274
(Fed. Cir. 2002); In re Everson, No. 97104306, 2026 TTAB LEXIS 75, at *7-8
(considering factors set forth in Morton-Norwich to determine functionality).
Specifically, under the Morton-Norwich factors, we consider:
(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.
In re Becton, Dickinson & Co., 675 F.3d 1368, 1374 (Fed. Cir. 2012) (citing Valu Eng’g,
278 F.3d at 1274); see Morton-Norwich, 671 F.2d at 1340-41.

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“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.” Everson, 2026
TTAB LEXIS 75, at *8 (citing In re Heatcon, Inc., No. 85281360, 2015 TTAB LEXIS
360, at *13-14). The Morton-Norwich functionality considerations are not exclusive,
for functionality “depends on the totality of the evidence.” Valu Eng’g, 278 F.3d at
1273. A determination that a proposed configuration mark is functional constitutes
an absolute bar to registration on the Principal or Supplemental Registers, regardless
of any evidence of acquired distinctiveness. Trademark Act Sections 2(e)(5) and 23(c),
15 U.S.C. §§ 1052(e)(5), 1091(c); see TrafFix, 532 U.S. at 29; In re MK Diamond
Prods., No. 86813875, 2020 TTAB LEXIS 263, at *54 (“A shape or a configuration
which, in its concept, is essentially utilitarian and non-arbitrary cannot function as
a trademark under the provisions of the statute, either on the Principal or
Supplemental Register.”) (citing In re Honeywell, Inc., 1975 TTAB LEXIS 89, at *5)
(emphasis omitted).
The Examining Attorney must establish a prima facie case that Applicant’s
proposed trade dress mark is functional. Becton, Dickinson, 675 F.3d at 1374
(citations omitted); see TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 1202.02(a)(iv) (May 2026). The burden then shifts to Applicant to present
“competent evidence” to rebut the Examining Attorney’s prima facie case of
functionality, which requires proof by a preponderance of the evidence. Id.
Ultimately, the determination of functionality is a question of fact based on the

Serial No. 98448363
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totality of the evidence. Value Eng’g, 278 F.3d at 1273; accord CeramTec GmbH v.
CoorsTek Bioceramics LLC, 124 F.4th 1358, 1363 (Fed. Cir. 2025).
II. Evidence and Arguments
A. Existence of a Utility Patent Disclosing the Utilitarian
Advantages of the Design
A utility patent that claims the features of the proposed mark may be strong
evidence of the functionality of those features. See TrafFix, 532 U.S. at 29-30. The
patent’s specification and/or drawings may also provide evidence of functionality even
if the features are not explicitly claimed as part of the invention. See, e.g., Becton,
Dickinson, 675 F.3d at 1375 (under TrafFix, “statements in a patent’s specification
illuminating the purpose served by a design may constitute equally strong evidence
of functionality”). 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. MK
Diamond Prods., 2020 TTAB LEXIS 263, at *17 (“ownership of the utility patent is
not relevant”) (citation omitted).
The Examining Attorney made of record a copy of U.S. Patent No. 10434820 issued
on October 8, 2019, to Savruha, et al. (the “’820 Patent”).4 The Examining Attorney
and Applicant disagree on whether this patent discloses the utilitarian advantages of
the features of Applicant’s proposed mark. The Examining Attorney argues that, as
detailed in the final Office action, the ’820 Patent discloses the utilitarian advantages
of the overall wheel configuration as well as its specific features (albeit using different
4 May 13, 2025 Final Office Action, TSDR 16-28.

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terminology than Applicant’s mark description).5 These include “the ‘exterior rim’,
‘side wall’, ‘hub’, and ‘interior disk’ portions of the mark.”6 According to the Examining
Attorney, Applicant’s design has portions that “are highly similar and/or identical to
the portions claimed as functional in the Utility patent,” such that “strong evidence
exists that the design elements at issue are functional under the first factor.”7
At the outset, we note that there is no disagreement that Applicant’s proposed
mark is a “product design.”8 Indeed, Applicant conceded during prosecution that “the
design as a whole is functional.”9 On appeal, Applicant does not directly address the
Examining Attorney’s arguments with respect to the disclosures of the ’820 Patent.
Instead, Applicant states in its brief that its “extensive description of the absence of
the needed disclosure in the cited utility patent relating to Applicant’s design is
present in pages 3-5 of its Request for Reconsideration dated July 27, 2025.”10 The
Board has made clear that incorporation-by-reference statements such as this are not
adequate to present the arguments on appeal. In re Princeton Equity Grp. LLC, No.
97397212, 2025 TTAB LEXIS 242, at *8-9. “Parties whose briefs purport to
incorporate by reference arguments made during prosecution will be held to have
5 6 TTABVUE 4-5.
6 Id. (citing May 13, 2025 Final Office Action, TSDR 16-28).
7 May 13, 2025 Final Office Action, TSDR at 6-7 (citing ’820 Patent at 3, 8, 12 para. 7).
8 4 TTABVUE 12.
9 See July 27, 2025 Request for Reconsideration, TSDR 30 (“Applicant has not indicated that
its design as a whole is not functional. Indeed, it admits that the design as a whole is
functional. However, Applicant has recited its design as having various features that are
NOT functional.”).
10 4 TTABVUE 17.

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failed thereby to present whatever arguments the incorporation statement purports
to cover to the Board and will be deemed to have forfeited them.” Id. at *9. See also
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1203.02(g)
(June 2026). Applicant’s evidence presented and concessions made during
prosecution are part of the record that we review on appeal, see In re OEP Enters.,
No. 87345596, 2019 TTAB LEXIS 278, at *20-21, but we have considered only those
arguments about the alleged lack of disclosures in the ’820 Patent, if any, actually
made in Applicant’s briefs.11
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.12 Having carefully reviewed the ’820 Patent and as explained below,
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.
11 Applicant’s main brief also refers to an argument made during prosecution that little or no
weight should be given to the ’820 Patent, again directing the Board to pages of its Request
for Reconsideration. 4 TTABVUE 17, 18. This appears to refer to an argument made by
Applicant during prosecution that the ’820 Patent purportedly was procured by fraud. See
July 27, 2025 Request for Reconsideration, TSDR 27-28. Vague references in Applicant’s brief
that fail to even state the basis for the argument are insufficient to maintain that argument
on appeal. Any argument that we should disregard the ’820 Patent because it was procured
by fraud has been waived or forfeited and will not be considered. See Princeton Equity Grp.,
2025 TTAB LEXIS 242, at *9.
12 4 TTABVUE 15-16.

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The ’820 Patent claims an invention relating to casters for moving furniture, such
as office chairs, in which the casters are visible in a dark environment. The Summary
of the Invention explains that “[t]he term ‘caster’ includes any type of support
structure for a furniture article which enables the furniture article to be rollingly
displaced or moved on a support surface. Thus, a caster includes a device having at
least one wheel, roller, or the like.”13
Claim 1 reads:
1. A caster system, comprising:
a housing portion including:
first and second side walls defining an operational space
therebetween; and
an upper wall including a central bore;
a rolling assembly disposed in said operational space, said
rolling assembly being rotatable relative to said first and
second side walls, and including:
a hub;
a rigid interior disk surrounding said hub; and
an exterior rim formed of a resilient material having at
least one coloring agent embedded therein; and
a vertical connection assembly, including a shaft adapted
to be fixed to a furniture article and to extend through said
central bore in said upper wall,
wherein said housing portion is rotatable about said shaft
of said vertical connection assembly, and
13 May 13, 2025 Final Office Action, TSDR 24 (col. 2, lines 16-20) (when citing to the ’820
Patent we include both the page in TSDR and the page, column and/or line numbers in the
patent itself).

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wherein said coloring agent is adapted to be luminescent
or phosphorescent in a dark environment.14
We consider the claims and disclosures of the ’820 Patent in view of Applicant’s
proposed mark, depicted in solid lines in the mark drawing, below left,15 as well as
drawings of the patent’s invention, including Figure 2, below right.16
14 Id. at 27 (col. 7, line 55-col. 8, line 7).
15 Applicant contends that its design “is as stated in words” in its application. 4 TTABVUE
15. However, in analyzing Applicant’s mark, we must consider the mark as it appears in the
drawing. See Trademark Rule 2.52, 37 C.F.R. § 2.52 (“A drawing depicts the mark sought to
be registered.”). We also bear in mind the mark description, but “the drawing of the mark,
not the words an applicant uses to describe it, controls what the mark is.” In re Change Wind
Corp., No. 86046590, 2017 TTAB LEXIS 233, at *15 n.6. See TMEP § 807. See also Kohler
Co. v. Honda Giken Kogyo K.K., No. 91200146, 2017 TTAB LEXIS 450, at *57 n.48.
16 May 13, 2025 Final Office Action, TSDR 20 (’820 Patent, drawing sheet 3). The drawing
shows an optional braking system that is not present in Applicant’s design.

Serial No. 98448363
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Claim 1 discloses the utilitarian nature of the basic design seen in Applicant’s
proposed mark and its essential features of a bracket or side wall,17 wheel or rolling
assembly, hub, core or interior disk, and exterior rim. That these features are claimed
in the patent is strong evidence of their functionality.
Even apart from its claims, the ’820 Patent discloses features of the proposed mark
as having utilitarian purposes. Patent Figure 2 shows a side wall that, while not
identical, has similarities in shape, size and placement to the bracket of the proposed
mark. As seen in both the mark drawing and patent Figure 2, the bottom of the
bracket is attached to and holds the wheel or rolling assembly, such as by an axle
(depicted in broken lines in the mark drawing).18 The flat top of the bracket or side
wall attaches the wheel to the furniture article by a vertical connection assembly.19
The wheel of Applicant’s mark has a hub with windowed spokes, four of which are
visible and are shown in solid lines extending from the center of the wheel. The wheel
depicted in patent Figure 2 also has a hub with similar windowed spokes of which
17 In his brief the Examining Attorney also refers to this as a “hinge.” See, e.g., 6 TTABVUE
5, 10. In this decision we use the terms “bracket,” used in Applicant’s mark description, and
“sidewall,” used in the ’820 Patent.
18 See May 13, 2025 Final Office Action, TSDR 25 (’820 Patent col. 4, lines 55-58) (“Rolling
assembly 40 is adapted to be disposed within the operational space and to be connected to
side walls 14 and 16 of housing 12 by an axle shaft 54 adapted to be threaded through bores
18 of the side walls and bore 48 of hub 42.”). Applicant’s witness confirmed that the brackets
“hold the wheel assembly.” July 27, 2025 Request for Reconsideration, TSDR 42 (Lehoe July
2025 Decl. ¶ 36).
19 See May 13, 2025 Final Office Action, TSDR 27 (’820 Patent Claim 1, col. 8, lines 1-3). In
Applicant’s drawing, the vertical connection assembly (seen in broken lines) is shown sitting
on the top of the bracket.

Serial No. 98448363
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four spokes, or portions thereof, can be seen extending from the center of the wheel.20
Finally, Applicant’s mark drawing depicts a core with a series of arches (nine full
arches and two partial arches are visible), shown in faded solid lines, presumably
because Applicant’s product uses clear polyeurythane for the wheel’s tire as seen in
Applicant’s specimen.21 Figure 1a of the ’820 Patent, reproduced below, shows that
the patented design also has an interior disk or core surrounding the hub of the wheel,
with cutouts in the shape of elongated ovals (three ovals and a portion of a fourth are
visible in patent Figure 1a). These ovals are similar in shape to the arches seen within
the core of the proposed mark, repeated again below left for ease of reference.
20 Id. at TSDR 24 (’820 Patent col. 2, lines 36-37) (explaining that the rolling assembly
includes a hub); see also id. at 27 (Claim 1, ’820 Patent col. 7, line 64). It can be inferred from
the mark drawing and the patent drawing that a fifth windowed spoke is present in the
design but is obscured from view by the bracket or side wall.
21 The drawing for a three-dimensional design mark should show the mark in black on a white
background, unless the mark includes color. See Trademark Rule 2.52(b), 37 C.F.R. § 2.52(b).
“Usually, a drawing of a trade dress mark is depicted in a three-dimensional manner that
gives the appearance of height, width, and depth to the mark.” TMEP § 1202.02(c)(i).
Although not discussed by Applicant or the Examining Attorney, we interpret the faded solid
lines in the mark drawing to indicate the depth of the wheel’s core. Because the core located
within the wheel is visible, the exterior rim is necessarily clear or translucent.

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22
The Examining Attorney does not point to any explicit discussion in the ’820
Patent of the purpose of the hub, spokes, interior disk or arches/cutouts and we find
none. We take judicial notice that “hub” is defined as “the central part of a circular
object (such as a wheel or propeller)”23 and “spoke” is defined as “any of the small
radiating bars inserted in the hub of a wheel to support the rim.”24 “Rim” is defined
22 May 13, 2025 Final Office Action, TSDR 18 (’820 Patent drawing sheet 1).
23 See MERRIAM-WEBSTER DICTIONARY, https://www.merriam-webster.com/dictionary/hub.
The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed form or regular fixed editions. Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imps. Co., No. 91061847, 1982 TTAB LEXIS 146, at *7, aff’d, 703 F.2d 1372
(Fed. Cir. 1983).
24 See https://www.merriam-webster.com/dictionary/spoke.

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as “the outer part of a wheel joined to the hub usually by spokes”25 or “[a] circular
metal structure around which a wheel tire is fitted.”26
These definitions, and the figures and specification of the patent itself,
demonstrate that a hub with spokes extending to a core (or interior disk) have
utilitarian purposes because they form portions of the essential structure of the wheel
and likely provide it with support. The patent figures seen above show the hub with
bars (or spokes) radiating from the center of the wheel to the interior disk. The patent
specification explains that the “assembly includes a hub, a rigid interior disk
surrounding the hub, and an exterior rim . . . .”27 “Interior disk 44 is typically formed
of a hard and/or rigid material, and is surrounded by an exterior rim 46 formed of
resilient material.”28 The clear import of this text, and the figures, is that the hub
with spokes supports the inner disk or core, which itself supports the exterior rim.
Moreover, the ’820 Patent shows that the shapes, proportions and placement of
the overall wheel, bracket, hub with spokes, and core are dictated largely by their
functions. For example, as seen in both the mark drawing and the patent figures, the
wheel, hub, and core/interior disk are all round to enable rolling of the wheel. The
bracket is adjacent to the wheel and of a particular size and shape so that it can
25 See https://www.merriam-webster.com/dictionary/rim.
26 See THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE,
https://ahdictionary.com/word/search.html?q=rim (all definitions accessed July 30, 2026).
27 May 13, 2025 Final Office Action, TSDR 24 (col. 2, lines 36-37).
28 Id. at 25 (col. 4, lines 47-49).

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attach to and support the wheel, while permitting it to roll, and has a flat top or upper
wall to support the vertical connection assembly. The bottom part of the generally
triangular bracket is rounded, which is the most natural shape to accommodate the
round axle connection. The spokes are inside the hub and extend to the interior disk
so that they can support the interior disk which in turn supports the rim. The
foregoing evidence demonstrates that these features are not merely arbitrary,
ornamental or incidental, but are essential to the use or purpose of the product. See,
e.g., Change Wind, 2017 TTAB LEXIS 233, at *11 (applied-for mark for wind turbines
and wind-powered electricity generators held functional where “both the disclosures
and the claims of the patent reveal that the shape of the housing and the use of helical
wings and their placement are not merely arbitrary, ornamental, or incidental, but
serve an essential function in the invention for the [turbine], and that these features
are necessary for its use”).
Applicant nonetheless argues that the first Morton-Norwich factor is neutral or
weighs in its favor because its mark was the subject of design patent applications,
which were rejected on grounds other than functionality.29 A design patent that
covers the applied-for mark may be evidence of non-functionality. OEP Enters., 2019
TTAB LEXIS 278, at *20-21 (citing Becton, Dickinson, 675 F.3d at 1375). However,
there are two problems with Applicant’s argument. First, Applicant only provided
evidence of design patent applications, not of issued design patents. Applicant cites
29 4 TTABVUE 17-18; July 27, 2025 Request for Reconsideration, TSDR 39-40, 49-324, Lehoe
July 2025 Decl. ¶¶ 8-10, Appendices A and B.

Serial No. 98448363
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no authority, and we are aware of none, for the proposition that design patent
applications are evidence that a design is not functional. Design patents, if issued,
may support a finding of nonfunctionality, but Applicant has merely submitted design
patent applications and it is undisputed that no design patents actually issued.30 Cf.
In re Team Jesus LLC, No. 88105154, 2020 TTAB LEXIS 503, at *17 n.29 (noting that
a trademark “application would be evidence only of the fact that it was filed, and
therefore has no probative value”). In addition, Applicant’s design patent applications
claimed wheels with rims in the colors red and blue, respectively.31 Even if the design
patent applications could have probative value of non-functionality, it would be
minimal because the designs feature color and therefore are not the same as the
proposed mark. See Becton, Dickinson, 675 F.3d at 1375 (“similar” design patents did
not overcome evidence of utility patents that underscored the functionality of
significant elements of proposed mark).
The first Morton-Norwich factor supports a finding that Applicant’s proposed
mark, as a whole, is functional.
B. Advertising Touting the Utilitarian Advantages of the Design
The record also includes advertising of both Applicant and third parties that the
Examining Attorney contends touts the utilitarian features of the design. This
advertising includes:
30 See July 27, 2025 Request for Reconsideration, TSDR 40, Lehoe July 2025 Decl. ¶¶ 9-10
(stating that the design patent applications are currently abandoned).
31 Id. at 39-40, 49-324, Lehoe July 2025 Decl. ¶¶ 8-10, Appendices A and B.

Serial No. 98448363
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Printout from Applicant’s website theofficeoasis.com, which states:
Guaranteed Not to Damage Floors - Encased with soft,
smooth polyurethane, our wheels are gentle enough to use
on hardwood, carpet, tile, and more without leaving any
scratches or marks. No chair mat necessary!
Quick and Easy Installation - No tools needed!
Universal standard size can be used as replacement wheels
for most task chairs and stools. Simply pull your old wheels
out and pop these in. Fits in Herman Miller, Aeron, Hon,
and countless other brands.
Support Up to 650 LBS - Constructed with high-grade
steel, the support brackets boast long-lasting durability
and support up to 650 lbs. as a set of 5.32
Printouts from third party websites, including:
Stealtho.store.com states “Smooth and Quiet Rolling with No
scratches.”33
Crandalloffice.com states “These roller blade casters improve rolling
smoothness beyond the twin wheel casters, will help protect your floor, and
will significantly decrease rolling noise on hard surfaces.”34
Staples.com listing for Lifelong product states “The chair casters are
encased with a gentle polyurethane material to ensure that the wheels do
not scratch or leave marks on the floor. So that you don’t need chair mats
any longer. They are universal fit and easy to install. The casters are
designed to enable you to glide freely through you[r] office without any
squeaky noise of any kind.” And “[t]hey can support up to 650 pounds.”35
Slipstickfeet.com states that the wheels are “Safe On All Floors – No need
for a chair mat, these premium rubber castor (sic) wheels are safe rolling
on hardwood, laminate, vinyl, tile, slate, carpet and protect all types of
floors from rolling chairs” and “Smooth & Quiet Rolling – Clear/Black 3”
rubber rollerblade wheels roll silently smooth, have full swivel action for
easy manoevrability.” The “heavy-duty castor (sic) wheels are durably
32 October 22, 2024 Nonfinal Office Action, TSDR 13.
33 Id. at 17. The Stealtho website states that the product is patented under the ’820 Patent.
Id. at 20.
34 Id. at 28.
35 Id. at 32.

Serial No. 98448363
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designed for years of smooth rolling floor protection” and a set of 5 “will
support up to 500 lbs.”36
Officelogixshop.com states “These wheels are designed to provide a
seamless and efficient movement across various floor surfaces, reducing
physical strain and ensuring ease of movement in your office or workspace.”
Key features include “Smooth and Quiet Rolling: . . . Our caster wheels are
engineered for the smoothest and quietest rolling, ideal for hard surfaces;”
“Safety and Floor Protection: Designed with floor protection in mind, these
casters ensure your floors remain scratch-free;” and “Supports Heavy
Weights: Each part is made from superior grade steel, safely supporting
weights of up to 500 lbs.”37
The Examining Attorney contends that these third parties
all extol specific utilitarian advantages of the applied-for
product design. Applicant’s competitors explain that their
wheel enclosures are smooth rolling and won’t scratch
floors. They also explain that the brackets are durable and
have load-bearing capacity, in many cases identical to the
capacity applicant’s brackets claim. Furthermore, all of the
competitors explain that the overall design makes it tool-
free for installation. As a result, strong evidence indicates
applicant’s mark is functional.38
In response, Applicant argues that the second Morton-Norwich factor is neutral
or weighs in its favor because the ability of the wheels to support a particular weight
and their non-marking nature “are dependent only on the materials selected for the
product, not the non-functional, source-identifying features.”39 Specifically, Applicant
states
Applicant’s design has metal parts and non-metal parts. In
particular, the outer wheel is made of urethane. Urethane
is a non-marking material. It is non-marking whether the
outer wheel is sized and shaped like Applicant’s design or
36 Id. at 34.
37 Id. at 36-37.
38 Id. at 5. See also 6 TTABVUE 10.
39 4 TTABVUE 18.

Serial No. 98448363
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like another’s design. The wheel will be non-marking in
any design. Similarly, Applicant’s bracket, axle, and
interior hub are made from a particular type of steel. This
steel has particular strength properties. It makes no
difference whether the bracket, axle, and interior hub are
shaped like Applicant’s design or like another’s design. It
will hold the same weight in any design.40
Although Applicant’s brief does not cite evidence supporting this contention, as
seen above, both the ’820 Patent and advertising evidence do state that the materials
used, such as steel and polyurethane, contribute to the wheels’ weight bearing
capacity and ability to roll smoothly on surfaces without leaving marks. This does not
mean, however, that the features of Applicant’s design can be rendered in any shape
or design such that the shapes are non-functional.
We acknowledge that Applicant’s advertising, like that of third parties, mentions
product features that are not claimed as part of the mark. In addition to the materials
used, these include the ability to “pull your old wheels out and pop these in,” referring
to the vertical connection assembly shown in broken lines in the mark drawing. But
this does not detract from the utilitarian aspects of the mark that are also mentioned
in the advertising, such as the wheels’ “universal standard size,” “support brackets,”
and improved “rolling smoothness beyond the twin wheel casters.” In assessing
whether the proposed mark as a whole is functional, we also consider the testimony
of Applicant’s founder, Kevin Lehoe, about Applicant’s design. Mr. Lehoe confirmed
the utilitarian aspects of features such as the bracket, which holds the wheel
assembly. Mr. Lehoe testified that
40 Id. at 19.

Serial No. 98448363
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Our casters are manufactured through a multi-step process
that involves both functional and aesthetic design
considerations. First, steel is stamped and cut into our
custom designed bracket shape. These brackets are then
bent in a die to create two 90-degree angles so they can hold
the wheel assembly. Next, we stamp our company logo,
“The Office Oasis,” onto one side of each bracket. The
brackets go through a heat-treatment process to improve
strength and durability. Traditionally, caster brackets are
left in their raw silver metal finish, but we chose to add an
additional step: electro-coating the brackets black. This
was done not out of necessity for function, but to create a
sleek, modern look that distinguishes our product from
standard casters.41
Certainly, the use of steel and the manufacturing process can improve the
strength and durability of the product. But this does not mean that other attributes
of the claimed features, such as their shape, proportions and placement, make “no
difference.”
Mr. Lehoe continued,
Separately, we create the wheel core using ABS plastic
through injection molding. While the core could have been
any shape and color to perform its function, we
intentionally designed an aesthetic spoked wheel pattern
and chose to mold it in black for a clean, modern
appearance.42
For the reasons stated above, we disagree that the core could be in any shape; it
naturally has to be round to surround the wheel’s hub and hold the outer rim. And,
as noted, color is not claimed in Applicant’s proposed mark.
41 July 27, 2025 Request for Reconsideration, TSDR 42-43, Lehoe July 2025 Decl. ¶ 36.
Neither the company logo nor black brackets are claimed in Applicant’s proposed mark.
42 Id.

Serial No. 98448363
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We find no evidence in the record disclosing a utilitarian purpose for the windowed
spokes or arches seen inside the core, but note that both the ’820 Patent (as seen in
Figure 1a) and many of the third-party products43 have hubs with spokes, often with
windows, and cores with similar shaped cutouts. These include:
Holkie
44
RidRed
45
43 See, e.g., October 22, 2024 Nonfinal Office Action, TSDR 31 (Lifelong); 34 (Slipstick). See
also May 13, 2025 Final Office Action, TSDR 30 (Holkie); 37 (Seddox); 46 (Office Owl); 74,
113 (Hosali); 87 (RidRed); 125 (Bright Field); 138 (AllGreen); 152 (Phyulls); 165 (Tesumi);
and 186 (OfficeSpin).
Applicant conceded during prosecution that “A standard inline skate wheel typically has five
windowed spokes. Accordingly, it would be common to use a wheel that has the same basic
overall shape and size as a standard inline skate wheel and has the same general spoke
configuration as the inline skate wheel.” Jan. 29, 2025 Response to Office Action, TSDR 8.
44 May 13, 2025 Final Office Action, TSDR 30.
45 Id. at 87.

Serial No. 98448363
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Office Owl
46
Hosali
47
Lifelong
48
Brightfield
49
Allgreen
50
Tesumi
51
46 Id. at 49.
47 Id. at 77.
48 Id. at 103.
49 Id. at 125.
50 Id. at 138.
51 Id. at 165.

Serial No. 98448363
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That third party products feature hubs with spokes, many having windows, and
cores with arched cut-outs that are similar in shape to comparable features in the
applied-for mark indicates that those shapes are superior and have utilitarian
advantages. See In re Audemars Piguet Holding SA, No. 90045780, 2025 TTAB
LEXIS 1, at *31 (evidence of hundreds of third-party watches with round faces “shows
widespread use of round watch faces, indicating that it is the most utilitarian shape
of all and is needed to compete effectively in the watch market”); see also Change
Wind, 2017 TTAB LEXIS 233, at *26 (“It is probative of functionality that others in
the industry use similar designs; they do not have to be identical.”) (citing Becton,
Dickinson, 675 F.3d at 1376). Indeed, the drawings of the ’820 Patent, and
advertisements for the product covered by it,52 show a finished product in which the
cut-outs are not visible, indicating that the cut-outs serve a utilitarian purpose,
rather than an arbitrary or ornamental one.
Finally, Mr. Lehoe explained,
The outer wheel material is polyurethane, which we
selected not only for its functional performance on hard
floors, but also for its visual appeal. Other soft materials
like rubber, thermoplastic elastomer (TPE), or silicone
could have been used purely for floor protection and rolling
performance, but we chose polyurethane because it offers a
clearer, glass-like appearance that enhances the premium
look of our product. In the final assembly, the bracket,
wheel with its ball bearing, swivel ball bearings, axle, and
caster stem are combined to produce the finished caster
wheel product.53
52 See October 22, 2024 Nonfinal Office Action, TSDR 17, 20.
53 July 27, 2025 Request for Reconsideration, TSDR 43, Lehoe July 2025 Decl. ¶ 36.

Serial No. 98448363
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To the extent the clear rim through which the core/interior disk can be seen is part of
Applicant’s proposed mark, Mr. Lehoe testified that Applicant chose polyurethane
both for its functional performance and its visual appeal. The design of the ’820
Patent and third-party designs also employ polyurethane, stating that it is resilient,
non-scratching, smooth rolling, quiet and durable.54 See, e.g., Heatcon, Inc., 2015
TTAB LEXIS 360, at *27-28 (competitor advertising about benefits of design sought
to be registered, including ease of operation and safety, supported functionality).
Applicant’s own advertising touts the utilitarian advantages of “soft, smooth
polyurethane.”55 And at least as to the design of the ’820 Patent, there is no indication
that polyurethane has any purpose other than a functional one, because the product
made pursuant to the invention does not have clear outer wheels.
The record shows that polyurethane wheels can be clear, translucent (in various
colors), or opaque (in various colors).56 The clear wheels may have some visual appeal
and most readily enable one to see the core with arches. However, as seen in
Applicant’s specimen, an excerpt of which is reproduced below, even with clear wheels
the core is less visually prominent than the overall wheel, hub and bracket that
houses them.
54 See May 13, 2025 Final Office Action, TSDR 26 (’820 Patent col. 6, lines 37-38) (noting that
the exterior rim “may be formed of any suitable resilient material, such as polyurethane”).
See also id. at 31 (Holkie); 47 (Office Owl); 74-75 (Hosali); 87-88 (RidRed); 125-26
(Brightfield); 138 (Allgreen); 162-63 (Tesumi).
55 Applicant’s Specimen, TSDR 2.
56 See, e.g., Jan. 29, 2025 Response to Office Action, TSDR 33 (showing Applicant’s product
offered with clear, translucent blue or red, and solid black or white wheels).

Serial No. 98448363
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Any non-functional aesthetic appeal of a core with arches that is visible through a
clear rim is relatively insignificant in the context of the overall design and does not
outweigh the significant functional attributes of Applicant’s proposed mark.
We find that the second Morton-Norwich factor, including advertising of both
Applicant and third parties, supports a finding that Applicant’s proposed mark, as a
whole, is functional.
C. Third and Fourth Morton-Norwich Factors
For the reasons set forth above, the evidence relating to the first two Morton-
Norwich factors supports a finding of functionality. Therefore, we need not consider
the remaining two Morton-Norwich factors. See Becton, Dickinson, 675 F.3d at 1376
(“since the patent and advertising evidence established functionality, the Board did
not need to analyze whether alternative designs exist[ed]”); Valu Eng’g, 278 F.3d at
1276 (as to the third factor, if functionality is found based on other considerations,

Serial No. 98448363
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there is “no need to consider the availability of alternative designs, because the
feature cannot be given trade dress protection merely because there are alternative
designs available”). Nonetheless, in the interest of completeness, we briefly address
Applicant’s evidence going to these factors.
With respect to alternative designs, Mr. Lehoe testified that he investigated and
found examples of other products that “are dissimilar in appearance, but have the
same functional characteristics as Applicant’s design,” showing that “the function is
not related to the aesthetic appearance,”57 referencing the four products seen below:
Omyoffice
58
Sytopia
59
57 July 27, 2025 Request for Reconsideration, TSDR 43-44, 351-82, Lehoe July 2025 Decl.
¶¶ 38-42, Appendices H-K.
58 Id. at 351.
59 Id. at 359.

Serial No. 98448363
- 27 -
Nefish
60
WBD Weibida
61
Mr. Lehoe states that each of these products
has a dissimilar set of spokes, a dissimilar bracket, and a
dissimilar core. It is described as being safe for all floors,
smooth rolling, having long-lasting durability and
supporting [the respective number of] lbs. Accordingly, the
function can be performed through a product with a
dissimilar appearance. Therefore, the appearance is not
functional. To the best of Applicant’s knowledge, the
[respective third party] design and Applicant’s design are
equally efficient and competitive.62
We are not persuaded. “To be relevant in our analysis, the alternative designs
proffered by Applicant must be ‘functionally equivalent’ to the design in the proposed
mark.” Everson, 2026 TTAB LEXIS 75, at *15-16 (citing Becton Dickinson, 675 F.3d
at 1374 and Heatcon, 2015 TTAB LEXIS 360, at *30-33 (finding evidence of
alternative designs unpersuasive because the designs did not “provide the same
utilitarian benefit”)). Each of the alternative designs cited by Mr. Lehoe uses two
60 Id. at 368.
61 Id. at 376.
62 Id. at 43-44, Lehoe July 2025 Decl. ¶¶ 38-42.

Serial No. 98448363
- 28 -
wheels, rather than a single wheel as in Applicant’s design. There is evidence
indicating that a single wheel design is superior,63 and that the designs are therefore
not functionally equivalent. See Bose Corp., 772 F.2d at 872 (that feature is the best
or one of a few superior designs supports functionality).
During prosecution, Applicant proffered the following two additional alternatives:
Stealtho (’820 Patent design) Lifelong
64
The Examining Attorney acknowledged that “arbitrary and nonfunctional
differences in certain elements of the design exist among competitors, such as slope
of the ‘side wall’ or shape of the ‘exterior rim’, ‘hub’, and ‘interior disk’” but concluded
that “these minor differences do not affect the overall functionality of applicant’s
design.”65 We agree. “[A] mark possessed of significant functional features should not
qualify for trademark protection where insignificant elements of the design are non-
functional.” Becton, Dickinson, 675 F.3d at 1372 (affirming finding of functionality of
63 See October 22, 2024 Nonfinal Office Action, TSDR 28 (Crandall Office Furniture website)
(“roller blade style casters improve rolling smoothness beyond the twin wheel casters”); May
13, 2025 Final Office Action, TSDR 88 (Amazon listing for RidRed product) (“single-wheel
design not only enhances the aesthetic appeal of the office chair but also provides a more
even weight distribution on each wheel, thereby improving the chair’s stability”).
64 Jan. 29, 2025 Response to Office Action, TSDR 9-10, 28, Lehoe Jan. 2025 Decl. ¶ 30.
65 May 13, 2025 Final Office Action, TSDR 8.

Serial No. 98448363
- 29 -
design of closure cap for blood collection tubes where patent “explained the utilitarian
advantages of at least two prominent features of the cap design, namely, the circular
opening and the ribs”; Board properly gave less weight to less prominent features).
See also OEP Enters., 2019 TTAB LEXIS 278, at *11-12 (“The statutory terminology
‘as a whole’ refers to the entirety of the mark itself and does not mean that one can
avoid a finding of functionality simply because the configuration includes a
nonfunctional feature.”) (cleaned up; internal citations omitted); Change Wind, 2017
TTAB LEXIS 233, at *22 (“Functionality does not prohibit registration only of the
specific design with the best functionality, it prohibits registration of all functional
designs because, unless they are subject to patent protection, the public should be
able to copy them. Protection of functional designs is the purview of the Patent Act.”).
Lastly, the fourth Morton-Norwich factor considers facts indicating that the
design results in a comparatively simple or cheap method of manufacturing. Mr.
Lehoe testified that
Applicant does not believe that its manufacturing
processes are any more efficient or competitive than those
used by others in the industry. Applicant believes that its
manufacturing processes may be less efficient and
competitive than those used by others in the industry,
because Applicant requires high quality materials and
specifications. However, Applicant is not aware of the trade
secret processes, costs, and relationships built between
others and their manufacturers, so Applicant cannot say
with certainty what manufacturing process might be
deemed more “efficient” or “competitive” as those words are
used in the Office Action dated October 22, 2024.66
66 July 27, 2025 Request for Reconsideration, TSDR 43, Lehoe July 2025 Decl. ¶ 37.

Serial No. 98448363
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The Examining Attorney argues that this testimony carries little, if any, weight
because it is unsupported, conclusory and self-serving. We agree. The testimony is
also equivocal, and does not attribute any lesser efficiency in Applicant’s
manufacturing process to the design claimed as Applicant’s mark. This evidence does
not support a finding of non-functionality under the fourth Morton-Norwich factor.
Cf. Becton, Dickinson, 675 F.3d at 1376 (Board did not err in refusing to weigh fourth
Morton-Norwich factor in its analysis where the evidence consisted of only two
declarations averring that the design features did not lower manufacturing cost).
The third and fourth Morton-Norwich factors are neutral.
D. Additional Matter Raised in Applicant’s Reply
In its reply, Applicant attempts to break the design depicted in its drawing down
into twelve discrete features that it contends are non-functional.67 Nowhere in the
prosecution history or Applicant’s main brief are these arguments made. Issues
raised for the first time in Applicant’s reply will not be considered. See, e.g., Fuji Photo
Film Co. v. Jazz Photo Corp., 394 F.3d 1368, 1375 n.4 (Fed. Cir. 2005) (refusing to
consider arguments raised for the first time in reply brief and not addressed in
opening brief as those arguments are considered to have been waived). To the extent
any of these features were raised by Applicant before its reply brief, they have been
addressed in our discussion above.
67 7 TTABVUE 4-5.

Serial No. 98448363
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Further, Applicant states in its reply “[i]f the Trademark Trial and Appeal Board
can suggest to Applicant the type of evidence that would be satisfactory and necessary
to convince the Trademark Trial and Appeal Board of the non-functionality and
distinctiveness of Applicant’s Mark, Applicant would welcome the Board’s guidance
to Applicant and a remand to the Examining Attorney to present the evidence that it
would deem persuasive.”68 There are many problems with this request. “First, the
record should be complete before appeal, Trademark Rule 2.142(d), 37 C.F.R. §
2.142(d) . . . . Second, once a final decision issues on an appeal, prosecution will not
be re-opened except to enter a disclaimer. Trademark Rule 2.142(g), 37 C.F.R. §
2.142(g). Third, we generally do not consider remand requests embedded in briefs;
rather, they should be made by separate request, preferably before any briefs are
filed. Fourth, requests for remand should be accompanied by a showing of good cause,
and Applicant has not even attempted to show good cause for a remand at this final
stage of the appeal.” In re Ralph’s Famous Italian Ices Franchise Corp., No. 90302728,
2026 TTAB LEXIS 185, at *19-20 (internal case citations omitted). See also In re
Hollywood Lawyers Online, No. 87847482, 2014 TTAB LEXIS 167, at *25 (burying
request for remand in reply brief is not sufficient for the Board to treat it as a request
for remand). Applicant’s request for a remand is denied.
III. Summary and Conclusion
Based on all of the record evidence and arguments in relation to the Morton-
Norwich factors, we find that the evidence going to the first two factors, including the
68 Id. at 10.

Serial No. 98448363
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utility patent and advertising of both Applicant and third parties, supports a finding
that 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 proposition that Board is to weigh
functional and non-functional matter in determining whether a mark in its entirety
is overall functional). Applicant has not rebutted this showing. The third and fourth
Morton-Norwich factors are neutral and Applicant’s other evidence and arguments
fail to overcome the evidence showing that the proposed mark, as a whole, is
functional.
Decision:
The refusal to register Applicant’s proposed mark under Trademark Act Section
2(e)(5), 15 U.S.C. § 1052(e)(5), is affirmed.