## Facts

- Morton-Norwich applied to register, on the Principal Register, the configuration of a plastic spray-bottle container used for household cleaners and insecticides, claiming first use in commerce in 1974.
- The bottle shape was used across a “family” of products, with variations in bottle color by product but the same overall configuration.
- Morton-Norwich owned a design patent covering the bottle configuration and a utility patent covering the spray mechanism.
- The examining attorney refused registration, concluding the configuration was not distinctive, lacked proof of acquired distinctiveness, and was “merely functional” and thus incapable of serving as a trademark.
- Morton-Norwich submitted evidence of extensive sales (over 132 million units by 1978) and affidavits asserting that consumers associated the container design with Morton-Norwich.
- The Trademark Trial and Appeal Board affirmed the refusal on the ground that the configuration was primarily functional.
- Morton-Norwich appealed to the Court of Customs and Patent Appeals.

## Issues

1. Whether the spray-bottle configuration is de jure functional—i.e., dictated primarily by functional considerations—such that it is unregistrable regardless of secondary meaning.
2. If the configuration is not de jure functional, whether it is distinctive, including whether it has acquired secondary meaning as a source identifier.

## Decision

- The court reversed the Board’s functionality holding, concluding the record did not support a finding that the overall bottle configuration was de jure functional.
- The court held that the agency analysis improperly treated ordinary, de facto utility of containers as a bar to registration without showing that this specific design was competitively necessary or among a few superior designs.
- The court remanded to the Board for a determination of distinctiveness, including acquired distinctiveness, because the Board had not adequately decided that issue.

## Legal Principles

- A product design may be de facto functional (it performs a function) yet still registrable; only de jure functionality bars trademark registration.
- A feature is de jure functional when its particular design is dictated by function such that granting exclusive rights would hinder competition (e.g., because it is the best or one of a few superior designs).
- Evidence relevant to de jure functionality commonly includes: (1) utility patents disclosing utilitarian advantages, (2) advertising touting utilitarian advantages, (3) availability of alternative designs, and (4) whether the design yields a comparatively simple or inexpensive method of manufacture.
- A utility patent may be probative of functionality only to the extent it claims or teaches the utilitarian advantages of the specific design sought to be protected.
- A design patent may support an inference of non-functionality, but it is not conclusive for trademark purposes.
- If a product-configuration mark is not barred by functionality, registrability depends on whether the configuration identifies source, including through acquired distinctiveness.

## Conclusion

The court rejected a conclusory functionality refusal for a spray-bottle configuration, distinguishing de facto from de jure functionality and identifying evidentiary considerations for assessing competitive necessity; it sent the case back for a focused determination whether the configuration had become distinctive of the applicant’s goods.


In re Morton-Norwich Prods., Inc., 671 F.2d 1332 (C.C.P.A. 1982)