IP Law Daily, TRADEMARK—TTAB: TTAB affirms refusal of pancake product design mark on functionality grounds, (Apr 3, 2026)

By Patricia K. Ruiz, J.D.

The Board found the mark’s eight-slice pancake configuration functional under Section 23(c) of the Trademark Act.

The Trademark Trial and Appeal Board affirmed the refusal to register a three-dimensional pancake product design on the Supplemental Register, concluding that the proposed configuration is functional and therefore not eligible for trademark protection. The Board determined that the asserted trade dress consisted of product design features that provide utilitarian advantages and thus cannot serve as an indicator of source under the Trademark Act (In re Misty Everson, No. 97104306 (T.T.A.B. Mar. 31, 2026)).

Refusal. The applicants sought registration of a three-dimensional product design for “pancakes; food, namely, pancakes” in International Class 30. The application covered a pancake divided into eight uniform wedges, with broken lines depicting the curved outer edges to indicate placement and stippling identified as a claimed feature of the mark. The examining attorney refused registration under Sections 23(c) and 45 of the Trademark Act on the ground that the proposed mark was a generic product design that failed to function as a trademark, and under Section 23(c) on the ground that the design was functional.

Reconsideration. After the examining attorney issued a final refusal, the applicants appealed and sought reconsideration. The Board granted a remand to allow the examining attorney to correct the statutory basis for the failure-to-function refusal in light of the amendment to the Supplemental Register. Following issuance of a new final refusal and additional briefing, the appeal resumed. The Board affirmed the refusal solely on the functionality ground under Section 23(c), declining to reach the refusal based on genericness and failure to function as a trademark.

The Board characterized the proposed mark as a three-dimensional product design sought to be protected as trade dress. The Board noted that, although the round outer shape was not claimed as part of the mark, the configuration consisted of a pancake cut into eight equal wedges, along with claimed textural features depicted by stippling.

Functionality. Applying the functionality doctrine, the Board explained that matter is functional if it is essential to the use or purpose of the article or affects its cost or quality, such that exclusive use would place competitors at a significant non-reputation-related disadvantage. With respect to utility patents, the record contained no evidence that the claimed features were the subject of a utility patent, and neither party relied on that factor. The Board therefore treated it as inapplicable.

Turning to advertising and statements touting utilitarian advantages, the Board relied on materials submitted by the applicant, including a brand style guide and written responses to information requests, describing advantages of the sliced pancake format. According to the decision, these materials referenced features such as shareability, ease of serving, the ability to eat without utensils, portability, and the ability to customize toppings on individual slices. The Board also cited third-party evidence showing pancakes sliced into wedges and described by others as conducive to sharing and topping customization.

On the availability of alternative designs, the applicants argued that pancakes could be presented in stacked or differently sliced configurations. The Board acknowledged the evidence but found that the alternatives did not offer the same utilitarian benefits identified in the record, particularly with respect to serving, sharing, consuming, and transporting a large or family-sized pancake. The Board concluded that the eight-slice configuration was one of a limited number of designs capable of providing those advantages.

The Board found no probative evidence regarding whether the design resulted in a simpler or cheaper method of manufacture. It also addressed claimed textural features, finding that the texture depicted was typical of pancakes and a by-product of the manufacturing process, and therefore functional. The Board rejected arguments based on the applicants’ intent in adopting the design and cited precedent stating that intent does not negate functionality where utilitarian advantages are present. The Board also stated that prior third-party registrations cited by the applicants were not binding and involved different marks and goods.

Based on the totality of the evidence, the Board concluded that the proposed mark, taken as a whole, was functional as applied to the identified goods. The Board affirmed the refusal to register the mark.

The Case is Serial No. 97104306.

Judge: NA.

Attorneys: Mark Terry (Mark Terry, P.A.) for Misty Everson. Joshua Sturman for the USPTO.

Cases: Trademark USPTO