The Kong Company, LLC

Trademark Trial and Appeal Board

Aug 2, 2006

No. 78259826 (T.T.A.B. Aug. 2, 2006)

Mailed:
August 2, 2006
JTW

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

In re The Kong Company, LLC
_____

Serial No. 78259826
_____

Brent P. Johnson and Christopher J. Hussin of Sheridan Ross,
P.C., for The Kong Company, LLC.

Michael Webster, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
______

Before Kuhlke, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On June 9, 2003, The Kong Company, LLC. (applicant)
applied to register the mark shown below for “pet toys” in
Class 28.

Applicant describes the mark as follows: “The mark consists
of a three-dimensional configuration of a pet toy comprising
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 78259826
2
at least one rope operatively associated with a rubberized
plasticized center.” The application also includes the
following statement: “The lining in the drawing is for
shading purposes to illustrate the curved nature of the
configuration.” Applicant claims both first use of the mark
anywhere and first use in commerce on July 31, 1991.
The examining attorney has finally refused registration
under Trademark Act Section 2(e)(5), 15 U.S.C. § 1052(e)(5),
on the ground that the mark is functional.1 Applicant has
appealed. Both applicant and the examining attorney have
filed briefs. Applicant did not request an oral hearing.
We affirm.
Functionality
Configurations of products, or product designs, may be
protected and registered as trademarks subject to certain
conditions. TrafFix Devices Inc. v. Marketing Displays
Inc., 532 U.S. 23, 58 USPQ2d 1001, 1004 (2001). The Supreme
Court has consistently proceeded with caution in according
trademark protection to product designs. In TrafFix the
Supreme Court states: “And in Wal-Mart, supra, we were

1 The use of the term “functional” in this opinion means “de jure
functional” as discussed in cases, such as, In re Morton-Norwich
Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982). As the
Board has stated, “. . . if the design of a product is so
utilitarian as to constitute a superior design which others in
the field need to be able to copy in order to compete
effectively, it is de jure functional and is precluded from
registration as a matter of public policy.” In re Caterpillar
Inc., 43 USPQ2d 1335, 1338 (TTAB 1997)(citations omitted).

Ser. No. 78259826
3
careful to caution against misuse or over-extension of trade
dress. We noted that product design almost invariably
serves purposes other than source identification.” Id.,
citing, Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S.
205, 54 USPQ2d 1065 (2000).
In this case we must consider whether applicant’s mark
satisfies the most basic condition related to the
registration of a product design as a trademark, the
“functionality” test. The functionality doctrine guards
against the “misuse” or “over-extension” of trademark
protection for product designs.
The Supreme Court has used a number of formulations to
articulate the functionality doctrine. For example, in
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d
1161, 1163-64 (1995) the Court stated, “a product feature is
functional if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article,
that is, if exclusive use of the feature would put
competitors at a significant non-reputation-related
disadvantage. (citation omitted)”
In Valu Engineering, the Court of Appeals for the
Federal Circuit confirmed that its long-standing test for
determining whether a particular product design is
functional remained viable after TrafFix, noting, “We do not
understand the Supreme Court’s decision in TrafFix to have
Ser. No. 78259826
4
altered the Morton-Norwich analysis.” Valu Engineering Inc.
v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1427 (Fed. Cir.
2002).
The Federal Circuit and its predecessor court, the
Court of Customs and Patent Appeals, have employed the
Morton-Norwich analysis or test for nearly twenty-five
years. Morton-Norwich identifies the following factors to
be considered in determining whether a particular design is
functional: “(1) the existence of a utility patent
disclosing the utilitarian advantages of the design; (2)
advertising materials in which the originator of the design
touts the design’s utilitarian advantages; (3) the
availability to competitors of functionally equivalent
designs; and (4) facts indicating that the design results in
a comparatively simple or cheap method of manufacturing the
product.” Morton-Norwich, 213 USPQ at 15-16.
In TrafFix, the Supreme Court addressed and clarified
the proper weight to be accorded a utility patent in that
analysis, as well as the role of alternative designs.
TrafFix Devices Inc. v. Marketing Displays Inc., 58 USPQ2d
at 1005. The Supreme Court notes, “A prior patent, we
conclude, has vital significance in resolving the trade
dress claim. A utility patent is strong evidence that the
features claimed therein are functional. . . Where the
expired patent claimed the features in question, one who
Ser. No. 78259826
5
seeks to establish trade dress protection must carry the
heavy burden of showing that the feature is not functional,
for instance by showing that it is merely an ornamental,
incidental, or arbitrary aspect of the device.” Id. As to
the role of alternative designs, the Federal Circuit
observes in Valu Engineering:
Nothing in TrafFix suggests that consideration of
alternative designs is not properly a part of the
overall mix, and we do not read the Court’s
observations in TrafFix as rendering the availability
of alternative designs irrelevant. Rather, we conclude
that the Court merely noted that once a product feature
is found functional based on other considerations,
there is no need to consider the availability of
alternative designs because the feature cannot be given
trade dress protection merely because there are
alternative designs available. But that does not mean
that the availability of alternative designs cannot be
a legitimate source of evidence to determine whether a
feature is functional in the first place.

Valu Engineering, 61 USPQ2d at 1428 (footnote omitted).
Accordingly, in this case we must analyze applicant’s
mark according to the Morton-Norwich factors to determine
whether applicant’s product-design mark is functional.
Utility Patents
Utility Patent No. 4,802,4442 (“the ‘444 Patent”) is
the key piece of evidence in this case. The patent is for a
“THERAPEUTIC PET TOY.” The patent “ABSTRACT” states the
following:

2 The application was filed on July 15, 1987, and the patent
issued on February 7, 1989. The patent was reissued on August
24, 1993 (Re. 34,352). The patent will expire on July 15, 2007.
Ser. No. 78259826
6
Disclosed is a dental hygienic pet toy for dental
prophylaxis on the teeth of a dog or other animal as
the toy is chewed by the carnivore. The toy includes
an elastomeric body having an outer surface and at
least one groove which opens out onto the open surface.
The groove is sized and configured so that a functional
prophylaxis lip will scrape plaque and other debris
from a tooth and gingiva of a carnivore which is
repeatedly inserted into and at least partially
withdrawn from the groove as the toy is chewed by the
animal. An oral hygiene substance may be provided
along the lip to enhance the benefit to the teeth and
gingiva.

The discussion of “BACKGROUND ART” in the patent
indicates that “very few pet toys have been designed with
features that are directed to improving a dog’s dental
health.”
The “DISCLOSURE OF THE INVENTION” refers, among other
things, to the “grooves” discussed in the abstract and also
refers to the “inner hollow core” of the body of the toy.
The patent states, “The hollow core enhances the tooth and
gingival scraping when a dog chews the toy by providing the
body with the capability of resiliently bowing into the
hollow core.” The bowing action results in “champing or
engagement of the tooth located in the groove which thereby
results in scraping of the tooth’s side and neck and the
dog’s gingiva surrounding the neck of the tooth.”
The “BEST MODE FOR CARRYING OUT THE INVENTION”
specifies, among other things, that “Appropriately designed
toys are sized to accommodate the different lengths and
width of mandible and maxilla seen in the various breeds of
Ser. No. 78259826
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dogs” and specifies preferred shapes and angles for the
grooves.
The patent includes the following drawings related to
the invention illustrating the key features, the grooves,
lips and the body:

The patent claims specify various details related to the
body and grooves of the “therapeutic pet toy” concluding
with Claim 23 which states:

23. A dental hygiene play toy for performing dental
prophylaxis on the teeth of a carnivore as said toy is
chewed by the carnivore, said toy comprising:
An elastomeric deformable body defining an outer
surface;
A plurality of parallel grooves formed in said
outer surface and having spaced sides; and
A functional prophylaxis lip formed between at
least one of said sides of each groove and
its intersection with said toy’s associated
adjacent outer surface, said lip partially
projecting over the opening of each groove
and will further project inwardly over each
groove when the carnivore bites down on said
body, said lip being sized and configured to
scrape a tooth as it is inserted into and
partially withdrawn from each groove as the
carnivore chews said toy.
Ser. No. 78259826
8
Applicant argues that, “The ‘444 Patent does not,
however, claim or disclose Applicant’s pet toy product
configuration. Instead it discloses and claims an
individual feature of Applicant’s overall product
configuration.” Applicant then argues that the overall
combination of features in its product design is not
functional even though the individual feature covered by the
patent is functional. Applicant states further, “. . .
Applicant seeks to register in the subject application ‘a
three-dimensional configuration of a pet toy comprising at
least one rope operatively associated with a
rubberized/plasticized center.’ Such a product
configuration is not the central advance of the ‘444
Patent.”
Applicant emphasizes that the patent does not refer to
any rope element. Applicant also relies heavily on the fact
that applicant did not refer to the functional features
claimed in the patent in describing its trademark, “Any
discussion of the actual shape and appearance of the
rubberized/plasticized element embodied in the present
trademark, however, is conspicuously absent.” Applicant
emphasizes that, “Nearly all of the claims and disclosures
are directed to the grooves of a pet toy.” And later
applicant argues, “The particular configuration of the
Ser. No. 78259826
9
grooves claimed in the utility patent can be used with truly
an infinite number of differently shaped pet toys.”
The examining attorney disputes applicant’s
characterization of its mark which minimizes the importance
of the features claimed in the patent. The essence of the
examining attorney’s argument is captured in the following:
In this case the only portion of Applicant’s chew toy
that may be non-functional are the ‘floss ropes’
attached to the ends of the rubberized chew toy. On
Applicant’s website, the goods are listed under KONG
DENTAL toys. The Applicant’s advertising states that
‘the grooves effectively squeegee clean dog’s teeth and
gum as they chew.’ . . . Clearly, Applicants (sic)
chew clean grooves are essential to the use or purpose
of the pet dental toy and affect the cost and quality
of the goods. The teeth cleaning function of the goods
is the central advance of the overall product
configuration.

Based on our review of the entire record, we concur
with the examining attorney. The “rubberized plasticized
center” is the dominant element in applicant’s mark. The
“grooves,” including the lip, are, in turn, the dominant
feature of the “rubberized plasticized center.” The body
and the particular shape and position of the grooves, as
depicted in applicant’s trademark drawing, are also the key
elements of the ‘444 Patent.
The fact that applicant omits mention of the grooves
and the shape of the center or body of the toy in its
description of the mark in no way detracts from their
Ser. No. 78259826
10
importance in the mark as shown in the trademark drawing.3
In this case the grooved “rubberized plasticized center” is
the proverbial elephant in the middle of the living room.
The grooved body itself is conspicuous, though applicant
does not mention it. If applicant had truly intended to
exclude the grooves or any other element from the mark it
claims here, it could have done so by showing the grooves or
other elements in broken lines in its drawing. See 37
C.F.R. § 2.52(b)(4). See also In re Controls Corp. of
America, 46 USPQ2d 1308, 1312 (TTAB 1998); In re Famous
Foods, Inc., 217 USPQ 177, 177 (TTAB 1983). Applicant
elected not to do so.
A comparison of the mark, as shown in the trademark
drawing above, and the invention, as identified and shown in
the patent drawings above, illustrates that both include the
grooved body. There is no ambiguity in the trademark
drawing.
On the other hand, applicant’s description of its mark
lacks precision. Applicant’s description inflates the
importance of the ropes attached to the ends of the grooved
body of the therapeutic pet toy. Applicant begins its
description of the actual mark as follows, “. . . at least

3 The acceptability of applicant’s description of the mark is not
before us in this appeal as a ground for refusal. The examining
attorney has accepted it. However, we must address the
description because applicant has relied on that description, in
part, in its arguments regarding functionality.
Ser. No. 78259826
11
one rope operatively associated with . . .” The
“rubberized plasticized center,” the elephant, is at the end
of the rope and at the end of the description. There is no
mention of the grooved feature of the center. However, it
is evident that the grooved center or body is the dominant
element in the mark as shown in the drawing.
In a previous case this Board has noted the serious
problems with the issuance of a registration for a product-
design mark with ambiguities in either the description of
the mark or the features claimed. The Board stated, “A
registration of the instant configuration without any formal
description of applicant’s mark or explanation of the
elements which applicant claims function as its mark would,
we believe, hinder competitors who would not know if the
features which they are using in their products, whose
overall configurations are not dissimilar from that of the
applicant, subject them to a suit for trademark
infringement.” In re R. M. Smith, Inc., 219 USPQ 629, 633-
34 (TTAB 1983), aff’d, 734 F.2d 1482, 222 USPQ 1 (Fed. Cir.
1984). Here we have at least the benefit of a clear
drawing, but the ambiguous description could indeed cause
confusion as to what is being claimed.
Applicant also argues that its mark, when viewed overall, is
nonfunctional. In its reply brief applicant delineates the “non-
functional” features, “Applicant’s product configuration
Ser. No. 78259826
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comprises a number of arbitrary and/or incidental non-functional
features including, without limitation, the shape of the
rubberized element, the position of that element in relation to
the rope, and the number and configuration of grooves formed on
the toy.” Applicant then argues that its mark is not functional
overall in view of these “nonfunctional” features.
We find this argument unpersuasive. “The shape of the
rubberized element” is claimed in the ‘444 Patent, as is the
“configuration of the grooves.” That is to say, the grooves,
including their configuration and position, are what the body is
all about, according to the patent. The grooved body is also the
dominant element in the trademark. Likewise, the ropes, as shown
in applicant’s drawing and in its product, are clearly
subordinate to the grooved body. More generally, to the extent
the trademark includes features not covered by the patent, such
as the ropes, those features are incidental and of little
importance in determining whether the mark is functional overall.
As the Federal Circuit has stated, “The case law of this
court and its predecessor also establishes that before an overall
product configuration can be recognized as a trademark, the
entire design must be arbitrary or non de jure functional.
Petersen Mfg. Co. v. Central Purchasing Inc., 740 F.2d 1541,
1550, 222 USPQ 562, 569 (Fed. Cir. 1984); In re Minnesota Mining
and Mfg. Co., 335 F.2d 836, 142 USPQ 336 (CCPA 1964). The reason
for this rule is self evident – the right to copy better working
designs would, in due course, be stripped of all meaning if
overall functional designs were accorded trademark protection
Ser. No. 78259826
13
because they included a few arbitrary and nonfunctional features.
See Petersen Mfg. Co., 740 F.2d at 1550, 222 USPQ at 569; In re
R. M. Smith, 734 at 1484, 222 USPQ at 2-3.” Textron, Inc. v.
U.S. International Trade Commission, 753 F.2d 1019, 224 USPQ 625,
628-29 (Fed. Cir. 1985). See also In re Vico Prods. Mfg. Co.,
Inc., 229 USPQ 364 (TTAB 1985). In this case the ropes and other
elements applicant points to are but “a few arbitrary and
nonfunctional features” and insufficient to render the overall
design nonfunctional.
Accordingly, we conclude that the ‘444 Patent is clear
evidence that applicant’s mark is functional. Furthermore,
though applicant argues otherwise, we conclude that this is a
case like TrafFix where the patent provides “strong
evidence” that the product design is functional. TrafFix
Devices Inc. v. Marketing Displays Inc., 58 USPQ2d at 1005.
Although the patent evidence by itself could suffice to
establish that applicant’s mark is functional, we will
examining the other Morton-Norwich factors. The evidence of
record on those factors, in fact, is fully consistent with
the utility-patent evidence.
Advertising
Under this factor, we will consider evidence regarding
“advertising materials in which the originator of the design
touts the design’s utilitarian advantages.” The examining
attorney has pointed to evidence of applicant touting the
functional advantages of its design on applicant’s website.
Ser. No. 78259826
14
Specifically, as the examining attorney noted, applicant’s
website categorizes the product as “DENTAL KONG” and extols
the dental-hygiene utilitarian advantages of its product.
The advertising boasts that “the patented ‘chew-clean’
grooves effectively squeegee clean dog’s teeth and gums as
they chew.” This evidence is unambiguous. It touts the
utilitarian advantages of the product design. See In re
Caterpillar, Inc., 43 USPQ2d at 1340. Here too applicant
minimizes the importance of the grooves relative to the
overall mark and product design arguing that it touts the
advantages of the grooves only, not the overall product. We
find these arguments unpersuasive. Applicant argues,
contrary to logic, as if the grooves could somehow exist
without the body. In fact, applicant’s reference to the
grooves in its advertising indicates the paramount
importance of this feature. As we have indicated, the body
of the product is central to the overall product and the
grooves are what the center or body of the product is all
about. There is no evidence that the grooves could be
implemented effectively without a body generally conforming
to what is shown in the ‘444 Patent, the trademark drawing
and applicant’s product.
Accordingly, we conclude that the advertising evidence
indicates that applicant’s mark is functional.
Ser. No. 78259826
15

Alternative Designs
Next we must consider evidence related to “the
availability to competitors of functionally equivalent
designs.” In this regard applicant argues that “the utility
patent can be used with truly an infinite number of
differently shaped pet toys.” To support this position,
applicant has provided copies of four design patents for its
therapeutic pet toys, which apparently also incorporate the
subject matter claimed in the ‘444 Patent. Each of the
design patents includes the same language in the CLAIM
section, “The ornamental design for the pet toy, as shown
and described.” This is the only claim. The descriptions
in turn merely refer to the drawings. The record also
includes numerous examples of available pet toys from web-
based catalogues.
As we noted, the utility patent indicates that “very
few pet toys have been designed with features that are
directed to improving a dog’s dental health.” The utility
patent provides only one example of prior art, a ring-shaped
device which bears no similarity to applicant’s products.
As we also noted, the utility patent indicates that the
invention would vary in size according to the breed of dog.
In fact, applicant’s advertising indicates that the product
is available in different sizes.
Ser. No. 78259826
16
In its reply brief applicant sums up its argument with
regard to alternative designs, as follows, “. . . the record
is replete with evidence of the availability of alternative
designs. . . Indeed, while the evidence of record shows that
competitors’ products employ the same basic features of
Applicant’s products, all of the products look different
from each other, and importantly, different from Applicant’s
product configuration. In other words, Applicant’s product
configuration is not required for effective competition in
the pet toy industry and the protection of that
configuration does not hinder competition.”
For purposes of applicant’s argument on this factor we
must focus on “functionally equivalent” designs. The many
examples of pet toys on the market in the record reflect the
statement in the ‘444 Patent that “very few pet toys have
been designed with features that are directed to improving a
dog’s dental health.” We do not see a single example of a
product which is functionally equivalent to applicant’s
product from the standpoint of dental hygiene. Accordingly,
we find no support for applicant’s position in this
evidence.
In fact, the only functionally equivalent designs of
record are those reflected in applicant’s own design
patents. We also find this evidence unpersuasive. In fact,
to the extent that the designs of those products differ from
Ser. No. 78259826
17
one another, the differences may provide advantages with
respect to use with dogs of a particular breed or size, or
indeed the suitability of the particular design for use with
dogs of different breeds or sizes. For example, the
specific design shown in Fig. 3 of the ‘444 Patent above and
in one of applicant’s design patents (Exh. D) employs a
tapered grooved body which widens toward the middle and
narrows at each end. This design may render the product
suitable for use with dogs of different breeds and sizes.
In any event, we find applicant’s own design patents
unpersuasive to establish the availability of functionally
equivalent designs.
In fact, none of the many examples from the web
catalogues either claim the dental-health advantages
associated with applicant’s product, nor do any of the many
products have a grooved body which is in any way similar to
applicant’s mark. Of course, the ‘444 Patent is still in
force; this may explain the absence of similar products.
The examples of existing products in the record does
indicate that rope elements are extremely common in pet
toys. This evidence is not helpful to applicant on the
alternative-design factor or otherwise. It is the grooved
body or center of applicant’s product which is functional.
The common use of ropes only reinforces our conclusion that
the grooved body or center is the dominant element in
Ser. No. 78259826
18
applicant’s mark and product design. We reject applicant’s
argument that such an assessment of this element is out of
bounds for purposes of the functionality determination
because the examining attorney had accepted applicant’s
claim of acquired distinctiveness.4 It is appropriate and
necessary to consider the significance of the rope element
for purposes of the functionality determination.
Accordingly, based on all relevant evidence of record
we conclude that there are no significant alternative
functionally equivalent designs to the product design shown
in applicant’s mark.
Simpler or Cheaper Method of Manufacture
Applicant has provided an affidavit from its manager
and founder stating that alternative pet-toy products with
ropes are equally or less costly than applicant’s product at
issue here. This evidence is offered to establish that
applicant’s design does not result in a “comparatively
simple or cheap method of manufacturing the product.” Even
if applicant’s design is more expensive to manufacture than
the ordinary pet toy, the functional advantages of
Applicant’s product in the area of dental health may very

4 While the acceptance of applicant’s claim of acquired
distinctiveness is not before us in this appeal, we note that the
evidence submitted was very limited. Also, caution is in order
in concluding that a mark is either nonfunctional or distinctive
while the utility patent remains in force. Cf. Eco Mfg. LLC v.
Honeywell Intl. Inc., 357 F.3d 649, 69 USPQ2d 1296 (7th Cir.
2003).

Ser. No. 78259826
19
well outweigh any increase in cost. See In re American
National Can Co., 41 USPQ2d 1841, 1844-45 (TTAB 1997).
Therefore, we conclude that this factor is neutral.
Conclusion
Accordingly, based on the totality of the evidence
bearing on the Morton-Norwich factors, we conclude that
applicant’s mark is functional. We conclude so based
principally on the ‘444 Patent, applicant’s touting of the
functional advantages of the design and the limited
availability of functionally equivalent alternatives.5
Decision: The refusal to register the mark under
Trademark Act Section 2(e)(5) is affirmed.

5 In its reply brief applicant argued at length that the
examining attorney had failed to make a prima facie showing that
applicant’s mark is functional. Obviously, we have concluded
that the examining attorney not only made a prima facie showing
but that applicant has failed to meet its burden in rebutting
that showing.