The Board recently granted a petition to cancel a registration for a prison toothbrush design, finding the design to be de jure functional, and therefore not registrable under Section 2(e)(5) of the Lanham Act. The registrant owned a utility patent, which disclosed and claimed the design, asserting that it was both safer for use in correctional facilities and easier to hold.In order for a design to be registered as a trademark, the design must be non-functional and have acquired distinctiveness. In this case, the Board only addressed the first factor, citing the Supreme Court in TrafFix Devices, Inc. v. MarketingDisplays, Inc. that a utility patent is strong evidence that the features claimed are functional. The Board compared the language of the patent claim to the description of the design in the registration, and determined the design to be de jure functional, and thus unregistrable.

Sources: http://thettablog.blogspot.com/ http://ttabvue.uspto.gov/ttabvue/ttabvue-92051757-CAN-25.pdf

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