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Law School Case Brief

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

Rule:

The owner of a fixture, machine, or device, patented or unpatented, who has obtained a trade in it, may simply exclude others from taking away that trade when they deceive the purchasing public as to the origin of the goods sold by them. The exception to this rule states that public has a right to copy those necessary elements of mechanical construction, essential to the practical operation of a device, and which cannot be changed without either lessening the efficiency or materially increasing expense.

Facts:

Appellant sought to register a certain container configuration as a trademark. The examiner found that the trademark was not distinctive and that it was merely functional, utilitarian, and non-arbitrary. Therefore, the examiner refused to register plaintiff's configuration on the principal register. The United States Patent and Trademark Office sustained the examiner's refusal to register appellant's spray bottle container. Appellant sought review.

Issue:

Did the United States Patent and Trademark Office properly reject the trademark application of the appellant for being merely functional?

Answer:

No.

Conclusion:

The decision of the board was reversed, and the case was remanded where the United States Patent and Trademark Office failed to produce evidence to show that the useful nature of appellant's container rendered the container functional. The court held that although the container was highly useful and performed its intended functions in an admirable way, that was not enough to render the design of the container functional where the United States Patent and Trademark Office failed to produce evidence to show that the shape of appellant's container was required to be as it was for any functional reason. Instead, the evidence demonstrated that the same functions could be performed by other shapes without sacrificing appellant's container's functional advantage.

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