You Cannot Trademark the Shape of Your Pancakes — And Your Own Marketing Copy Is the Reason Why
The first precedential trademark decision from the Trademark Trial and Appeal Board in 2026 involves a round pancake, eight equal wedges, a pitch about shareability, and a cautionary tale that applies to every product developer who has ever looked at their distinctive product design and thought: I should trademark this.
The answer, in a surprising number of cases, is no. And the most reliable way to guarantee that answer is to spend your marketing budget explaining exactly why your product's shape works so well.
That is what happened here, and the result is a TTAB opinion that is pleasant to read, not because the outcome is surprising — it is not — but because the applicants did such an enthusiastic job of undermining their own application.
The Pancake
Misty Everson and Christine Maynard developed a pancake product configured as a round cake pre-scored in eight uniform wedges. Picture a pizza. Now make it a pancake. That is the product. They called it "team-sized," they pitched it as "shareable" and "dippable," and they applied to register the configuration as a trademark with the United States Patent and Trademark Office.
They applied to the Supplemental Register, not the Principal Register. A brief word on that distinction, because it matters: the Supplemental Register is, charitably speaking, the waiting room of trademark registration. It does not provide the presumptions of validity, the nationwide priority, or the incontestability that Principal Register marks eventually earn. It is primarily used by applicants who want to use the ® symbol and preserve their rights while they wait for their mark to acquire distinctiveness, or by applicants seeking to lay groundwork for international registrations. It is a lesser form of protection.
The applicants could not get even that.
Functionality and the Marks That Cannot Be Trademarked
A product configuration — the shape of the thing itself — is a recognized form of trade dress, and it can sometimes be protected as a trademark. The Coca-Cola bottle. The Hermès Birkin silhouette. The Christian Louboutin red sole. These are real examples of product configuration or design elements that courts have treated as source-identifiers worthy of protection.
What they have in common is that consumers recognize them as brand signals independent of whether the design makes the product work better. Nobody buys a Birkin because the handle placement is ergonomically superior. They buy it because it signals something about the buyer. That is trade dress doing what trade dress is supposed to do.
The law draws a firm line at functionality. A product feature is functional — and therefore off-limits to trademark protection — if it is essential to the use or purpose of the article, or if it affects the cost or quality of the article. This comes from the Supreme Court, which has addressed the issue multiple times. The theory behind the rule is straightforward: if you could lock up effective product designs through trademark registration, competitors could not make competing products that work as well, and that is bad for consumers and for competition in ways trademark law is not designed to enable. Patents have time limits. Trademarks, in theory, do not.
So the courts are careful about product configuration marks, and the TTAB applies a four-factor test from a case called In re Morton-Norwich Products when evaluating whether a configuration is functional. The factors are: (1) whether there is a utility patent disclosing the utilitarian advantages of the design; (2) whether advertising materials tout the design's utilitarian advantages; (3) whether alternative designs are available; and (4) whether the design results from a simple or cheap manufacturing method.
Everson and Maynard had no patent. They had competing alternative designs — nothing requires a pancake to have eight wedges specifically. Manufacturing considerations were unremarkable. On three of the four Morton-Norwich factors, the analysis might have gone their way, or at least been a close call.
And then the USPTO pulled out their marketing materials.
The Part Where the Applicants Explained, in Their Own Words, Why Their Pancake Shape Was Excellent
Everson and Maynard, to their credit as entrepreneurs if not as trademark applicants, were extremely good at explaining why their eight-wedge pancake configuration was the right design. Their marketing described the product as a "new team-sized meal option." It was "shareable." It was "dippable." It was, remarkably, "any time-able." The configuration allowed family members to "reach in to grab a slice or use a pie server to obtain a piece" for dipping in syrup or other toppings.
Every single one of those phrases is a description of a functional benefit. The shape enables sharing. The shape enables dipping. The shape enables easy individual-portion access. The eight equal wedges are not there to remind you of the Everson-Maynard brand — they are there because that is how the product works.
The TTAB's analysis on the advertising factor was effectively over at that point. When your advertising is a catalog of utilitarian virtues, you have not made a trademark record. You have made a functionality record. The Board had no difficulty affirming the refusal.
To put it plainly: the applicants were so good at selling their pancake that they talked themselves out of a trademark. There is a lesson there, and it extends well past the breakfast food industry.
Why the Supplemental Register Does Not Save You From Functionality
Some trademark practitioners operate under the impression that functionality is a Principal Register problem and that the Supplemental Register offers a workaround. This impression is wrong, and the pancake decision makes the point clearly.
Section 23(c) of the Lanham Act provides that nothing can be registered on the Supplemental Register that is not eligible for registration on the Principal Register, with the sole exception of marks that have not yet acquired distinctiveness. Functionality is not a distinctiveness question. It is a categorical bar. A functional mark cannot be registered anywhere in the USPTO's registration system, on either register, regardless of how long it has been in use or how well-known the design has become. Coca-Cola's bottle is famous precisely because it has been in continuous use for over a century and is still protectable. Eight pancake wedges that the applicants themselves describe as optimal for sharing and dipping are functional, and no amount of commercial success changes that.
The Broader Application
The pancake case is easy to find charming — there is something almost endearing about two entrepreneurs who developed a shareable pancake and wanted to protect it. But the principle the Board applied matters across every product category where configuration is commercially significant, and the mistake Everson and Maynard made is extraordinarily common.
For a tool company whose ergonomic handle is described in advertising as improving grip and reducing fatigue: that handle configuration is almost certainly functional, and the marketing copy saying so is exhibit one in the USPTO's refusal.
For a container manufacturer whose bottle shape is touted as better at preventing spills or easier to pour: the shape is functional, the marketing proves it, and the trademark application will not survive.
For a consumer product company whose industrial design choices are described in press releases as performance-enhancing: same problem.
The practical rule of thumb is this. If the best argument for why a product's design should be legally protected is also the best argument for why consumers should buy the product, those two arguments are probably in conflict with each other. Marketing that describes design-as-function is marketing that destroys a trademark application.
What Actually Works
Genuine product configuration trademark protection requires a design element that consumers have come to associate with a single source independent of any functional benefit — and proving that association requires substantial evidence. Years of exclusive use. Significant sales volume and market share. Advertising that emphasizes the design as a brand identifier, not a performance feature. Consumer survey evidence showing actual recognition. The cases where courts protect product configurations — the Birkin, the Louboutin sole, the Hershey's Kiss shape — involve configurations where consumer recognition of the design as a brand signal is documented and longstanding.
Getting there is possible, but it is a different project than filing a trademark application and expecting registration. And if you have spent your marketing budget explaining why your design works better than the competition's, you will need to unwind that narrative before a distinctiveness argument can gain traction.
For product configurations whose primary commercial value is functional rather than source-identifying, utility patent protection is the right framework. Patents protect novel and nonobvious functional improvements, with a time-limited monopoly that the system explicitly contemplates. Trademark law is not a permanent extension of patent rights, and applying for trademark protection in functional product features does not create rights — it generates refusals and, occasionally, precedential TTAB opinions that defense lawyers will cite for years.
The Bottom Line
The TTAB looked at a round pancake divided into eight uniform wedges, read the applicants' own description of why that configuration was superior for sharing, dipping, and family-style eating, and said: that is a functional design feature, not a trademark.
The decision is correct. the lesson is important. And if you are currently drafting marketing copy for a product while simultaneously planning to file a product configuration trademark application, you may want to have a trademark attorney read both documents before you publish either one.
Jonathan L.A. Phillips handles trademark prosecution, trade dress counseling, and TTAB proceedings for clients around the world. He can be contacted Here.