The Trademark Trial and Appeal Board recently issued a decision that underscores the delicate balance between branding and functionality. In In re Misty Everson and Christine Maynard, the Board rejected an application for a trademark based on the three-dimensional design of a pancake sliced into eight uniform wedges. The case highlights how internal marketing materials can inadvertently undermine a trademark application, even when the intent is to create a distinctive brand identity.
The Applicant sought to register the design on the Supplemental Register, arguing that the unique shape served as a source identifier. However, the Board found that the design was functional, not distinctive. The key factor in this determination was the Applicant’s own internal documents, including a Brand Style Guide. These materials described the design in terms of convenience, ease of use, and portability - terms that the Board interpreted as strong indicators of functionality.
The guide characterized the sliced pancake as "shareable," "dippable," and suitable for "life on the go." These descriptions, while seemingly innocuous, carried significant weight in the Board’s analysis. The Applicant later emphasized the design’s practical benefits, such as allowing consumers to eat without utensils and customize toppings slice by slice. These arguments, while aimed at appealing to customers, inadvertently provided the Board with clear evidence that the design was intended for functional purposes rather than as a source identifier.
This case serves as a reminder that the way a brand presents its design can have legal consequences. Marketing materials, pitch decks, and internal guides are not just tools for internal communication - they can become critical evidence in trademark disputes. When seeking trademark protection, it is essential to ensure that all internal documentation clearly distinguishes between functional benefits and source-indicating features.
Trademark confusability is a complex issue, particularly when it comes to product design. The line between a distinctive mark and a functional feature can be thin, and the burden of proof lies with the applicant. By carefully crafting internal materials and ensuring they do not inadvertently highlight functional advantages, businesses can better protect their brand identity and avoid costly refusals.