No, the bottle shape isn't 'functional' in a way that blocks a trademark. The court said the company can try to trademark its bottle shape. The court explained there's a big difference between a design that simply has a function (like any bottle) and a design that is 'legally functional.' A design is only 'legally functional' if it's so good that other companies absolutely have to copy it to be able to compete. Since lots of other spray bottle shapes work just as well, protecting this one specific shape doesn't stop other companies from selling their own spray cleaners. It doesn't hurt competition.

No, the shape of the spray bottle isn't just for making it work better, so it might be able to be trademarked. I'm sending this case back to the trademark office to look at it again. They need to think about whether people recognize this bottle shape as belonging to Morton-Norwich. Just because a shape is useful doesn't mean it can't be trademarked. We have to look at whether other companies need to use that exact shape to compete. In this case, other companies are making spray bottles that work just as well but look different. The specific shape of this bottle isn't necessary for it to work as a spray bottle. The trademark office made a mistake by thinking that if a shape is useful, it automatically can't be trademarked. They also mixed up two different ideas: whether the shape is necessary for the product to work, and whether people recognize the shape as belonging to one company. These are separate questions that need to be looked at separately.

No. The container configuration is not de jure functional because its design is not dictated by utilitarian considerations to the extent that it would hinder competition. The court distinguished between de facto functionality (a design has a useful function) and de jure functionality (a design is unprotectable as a matter of law). A design is de jure functional only if it is 'superior in function... or economy of manufacture,' and the 'crux of the matter' is whether protecting the design would hinder competition by preventing others from competing effectively. Here, the evidence shows that numerous alternative container shapes are available to competitors that perform the same function equally well. The bottle shape and the rhomboidal design of the spray top are arbitrary and not dictated by the function they perform. Granting trademark protection to this specific configuration would not impinge upon the rights of others to compete, as they do not need to copy this particular design to market a functional spray cleaner.

No, the configuration of the container is not primarily functional and can potentially be protected as a trademark. I reverse the board's decision on functionality and remand for a determination of distinctiveness. The concept of 'functionality' in trademark law is complex and must be carefully applied. A design is functional in the legal sense (de jure functional) if it is essential to the use or purpose of the article or affects its cost or quality. However, the mere existence of utility does not make a design functional; we must consider the degree of design utility. In this case, there is no evidence that the specific shape of Morton-Norwich's bottle was required for any functional reason. The evidence shows that competitors use a variety of other shapes for similar products without sacrificing any functional advantage. The spray top's design is also arbitrary and not dictated by the internal mechanism. Allowing trademark protection for this design would not hinder competition, as others can produce functionally identical spray containers with different appearances. The board and examiner failed to provide clear reasons for finding the design functional, and their decision appears to conflate the issues of functionality and distinctiveness. These are separate requirements that must be kept distinct. A design can be non-distinctive yet still be legally non-functional. We are remanding the case for the board to properly consider the distinctiveness issue, including the survey evidence, which was not fully addressed in their initial decision.

In re Morton-Norwich Products, Inc.

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