trademarks: utilitarian and aesthetic...
TRANSCRIPT
Trademarks: Utilitarian and
Aesthetic Functionality Obtaining IP Protection for Trade Dress, Product Packaging and Product Configuration
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TUESDAY, JUNE 12, 2012
Presenting a live 90-minute webinar with interactive Q&A
Anthony L. Fletcher, Senior Principal, Fish & Richardson, New York
Janet A. Marvel, Partner, Pattishall McAuliffe Newbury Hilliard & Geraldson, Chicago
B. Brett Heavner, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
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5
Utilitarian Functionality,
or “How I Learned to Stop
Worrying and Love the Bomb”*
Janet Marvel
Pattishall, McAuliffe, Newbury
Hilliard & Geraldson LLP
*Apologies to Stanley Kubrick
6
Basics • No perpetual quasi-patent right. Qualitex Co.
v. Jacobson Prods. Co., 514 U.S. 159, 164-65 (1995).
• Trade dress is eligible for protection ONLY if it is nonfunctional.
• “The determination that a proposed mark is functional constitutes an absolute bar to registration.”
– In re Dietrich, 91 USPQ2d 1622 (TTAB 2009) (finding configuration mark of spoke pattern in bicycle wheel functional).
7
Codifying Functionality - I
• In 1998, functionality became a statutory
ground for opposing trade dress registration,
petitioning for cancellation of and defending
against even incontestable trade dress
registrations.
– 15 U.S.C. § 1052(e) (opposition)
– 15 U.S.C. § 1064(3) (cancellation)
– 15 U.S.C. § 1115(b) (defense against
incontestability)
8
Codifying Functionality - II
• In 1999, Congress amended the law to state
that, in cases of unregistered trade dress and
trade dress on the Supplemental Register,
the burden of proof to show non-functionality
would be on the party asserting trade dress
rights.
– 15 U.S.C. § 1125(a)(3)
• Advantageous to register trade dress.
9
In the USPTO
In an Office action, the Examining
Attorney has the burden to prove
functionality. TMEP §1202.02(a)(iv).
10
Supreme Court – TrafFix on
Functionality
A product feature is functional if:
• it is essential to the product’s purpose or use, or if it affects the cost or quality of the product
• Where the design is functional under the above formulation there is no need to proceed further to consider if there is a competitive necessity for the feature.
TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001).
11
Morton-Norwich Factors (1) the existence of a utility patent that discloses the utilitarian
advantages of the design sought to be registered;
(2) advertising by the applicant that touts the utilitarian advantages of the design;
(3) facts pertaining to the availability of alternative designs, and
(4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.
In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982). See also, Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 1275, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002).
12
Utility Patent
“A utility patent is strong evidence that the features therein claimed are functional. . . . [T]he strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who 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.”
–TrafFix Devices, 532 U.S. at 30-31
13
Touting Product Features in
Advertising
• Talking Rain Beverage Co., Inc. v. South
Beach Beverage Co., 349 F.3d 601, 604 (9th
Cir. 2003) - “Get a Grip.”
14
Advertising
Poly-America, LP v. Stego Industries, LLC, 2011 WL
3206687 (N.D. Tex. July 27, 2011): Stego Wrap is yellow for a reason. First, the natural extrusion of
Stego Wrap polyolefin plastic & additives is a clear plastic….Bright
yellow dye is added to distinguish Stego Wrap from these products.
Second, most vapor retarders are black poly laminations. Black
poly absorbs tremendous heat creating very hot jobsite conditions
for laborers. Third, punctures or tears (although unlikely) can be
seen and easily repaired in our bright yellow membrane.
Judgment after bench trial for defendant
15
Alternative Designs
In re Morton-Norwich Products, Inc., 671
F.2d 1332 (CCPA 1982)
NONFUNCTIONAL
16
Functionality in the USPTO
In re Becton, Dickinson and Co., 675 F.3d
1368 (Fed. Cir. 2012)
17
In re Becton, Dickinson
• The “Degree of Utility” Weighing of functional and non-functional features of a mark is “mandated.”
• Utility patent bars are not limited to claims.
• Design patent: “Our law recognizes that the existence of a design patent for the very design for which trademark protection is sought ‘presumptively…indicates that the design is not de jure functional.’” Id. at 1375, citations omitted.
18
In re Becton, Dickinson
• Damaging advertising: The cap has “enhanced handling features.”
• Alternative designs are not relevant “because the feature cannot be given trade dress protection merely because there are alternative designs available.”
• But see dissent.
• No evidence regarding factor 4.
19
ERBE Elektromedizin GmbH v. Canady
Technology LLC, 629 F.3d 1278
(Fed. Cir. 2010)
• Blue color and black markings for flexible endoscopic probes for argon plasma coagulation and argon gas-enhanced electrocoagulation equipment.
• Third Circuit law.
• “[T]he existence of other, equally usable colors is relevant to determine whether a particular color is functional.”
• ERBE did not present enough evidence of non-functionality; summary judgment for defendant.
20
In re Charles N. Van Valkenburgh,
97 USPQ2d 1757, 1760 (TTAB 2011)
“We do not find it necessary that the configuration designs for which trademark protection is sought be ‘virtually identical to the invention described and claimed’ in the patent or that the patent must ‘cover’ all facets of the proposed marks. Instead we look to the features disclosed in the patent which have been incorporated into the present product designs and the teachings of the patent with respect to these features.”
21
Kistner Concrete Products, Inc. v.
Contech Arch Technologies, Inc.,
97 USPQ2d 1912 (TTAB 2011) • Patents establish
prima facie
functionality.
• Damaging
advertising: “Curved
top surface sheds
water and salts to
increase life cycle
length.”
22
In re Pelco Products, Serial No.
78/485,818 (Sept. 19, 2008)
(not precedential). • Brackets made of
metal for attaching
traffic signals to
mast arms.
• Examiner failed to
carry her burden
that the mark was
functional.
23
Functionality in the Courts
24
Specialized Seating, Inc. v.
Greenwich Industries, L.P.,
616 F.3d 722 (7th Cir. 2010)
Alternative Designs: The existence of many alternative designs did not mean that the plaintiff’s design was non-functional. It was not “the only way to do things” but “it represent[ed] one of many solutions to a problem.”
25
Jay Franco & Sons, Inc. v. Franek,
615 F.3d 855 (7th Cir. 2010)
• Judge Easterbrook asks:
Does it improve the product in some way so that ‘consumers would pay to have it, rather than be indifferent or pay to avoid it?
• Utility patents (here, owned by a third party) are “excellent cheat sheets” for determining utilitarian functionality.
26
Georgia-Pacific Consumer Products LP
v. Kimberly-Clark Corp.,
647 F.3d 723 (7th Cir. 2011)
27
Court sets forth a list of factors for determining whether a design is functional:
(1)the existence of a utility patent, expired or unexpired, that involves or describes the functionality of an item’s design element [emphasis added];
(2)the utilitarian properties of the item’s unpatented design elements;
(3)advertising of the item that touts the utilitarian advantages of the item’s design elements;
(4)the dearth of, or difficulty in creating, alternative designs for the item’s purpose;
(5)the effect of the design feature on an item’s quality or cost.
See also Telebrands Corp. v. Del Laboratories, Inc., 814 F. Supp. 2d 286 (S.D.N.Y. 2011) (“Ped Egg” patent application evidenced functionality).
28
Secalt S.A. v. Wuxi Shenxi Construction Machinery
Co., Ltd., 668 F.3d 677 (9th Cir. 2012)
29
Secalt
• Plaintiff's own engineers testified that the hoist's features were utilitarian.
• There were alternative designs, but they were functional too.
• Plaintiff's own advertising stated that its hoists were rectangular so they would not roll off of tables.
• All hoists cost pretty much the same, so the last factor was neutral.
Defendant was awarded fees.
30
Great Neck Saw Manufacturers, Inc. v. Star
Asia U.S.A., LLC, 727 F. Supp. 2d 1038 (W.D.
Wash. 2010), aff’d 432 Fed. Appx. 963 (Fed.
Cir. 2011)
31
• “[T]he Court must examine the trade dress as
a whole, rather than parsing the constituent
parts.” Id. at 1059. See also Fiji Water Co.,
LLC v. Fiji Mineral Water USA, LLC, 741 F.
Supp. 2d 1165 (C.D. Cal. 2010).
• Utility patent was strong evidence of
functionality.
• Damaging advertising.
32
Fiji Water Co., LLC v. Fiji Mineral Water USA,
LLC, 741 F. Supp. 2d 1165 (C.D. Cal. 2010).
Fiji Water’s trade dress:
square bottle with “shoulders”; blue bottle cap, transparent outer front label with a pink accent in the corner; blue background with palm tree fronds on the inside of the back label; raindrop on front; “From the islands of Fiji/Natural Artesian Water,” prominent use of four letter, two syllable word FIJI, in block white lettering with a metallic outline around the letters.
33
Fiji Water
• Court must consider the trade dress as
a whole.
• Preliminary Injunction granted.
• Injunction forbidding use of the trade
dress or anything substantially similar
thereto.
34
Seirus Innovative Accessories, Inc. v. Gordini
U.S.A., Inc., 2012 WL 368044
(S.D. Cal. Feb. 3, 2012)
• “Trade dress”
features let the user
breathe and see.
• Summary judgment
for defendant.
35
Take-Aways
• Avoid “Post Hoc” Trade Dress.
• Be Careful with your Drawing See
Becton-Dickinson, supra, Ogosport LLC. v.
Maranda Enterprises LLC, 2012 WL 683111
(E.D. Wis. March 2, 2012), Mag Instrument,
Inc. v. Brinkmann Corp., 96 USPQ2d 1701
(TTAB 2010), aff’d per curiam, 2011 WL
5400095 (Fed. Cir. Nov. 9, 2011).
36
Take-Aways
• Properly Advertise: See Stuart Spector
Designs v. Fender Musical Instruments, 94 USPQ2d
1549, 1572 (TTAB 2009) (“‘Look for’ advertising
refers to advertising that directs the potential
consumer in no uncertain terms to look for a certain
feature to know that it is from that source. It does not
refer to advertising that simply includes a picture of
the product or touts a feature in a non source-
identifying manner.”)
37
A Case Study on Doing it
Right?
• purplepill.com
• “Ask your doctor if the purple pill is right
for you”
• Purple Plus Program
• 1-888-purplepill
38
Thank You
Questions?
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Best Practices To Avoid Aesthetic Functionality Problems
B. Brett Heavner
40 40
What is Aesthetic Functionality?
• TrafFix Devices, Inc. v. Marketing Displays, Inc.
(2001)
– The Supreme Court’s two part functionality test:
• Traditional rule”: “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.
• Aesthetic functionality: “exclusive use of a feature would put
competitors at a significant non-reputation-related
disadvantage.’”
41 41
What Is Aesthetic Functionality?
• What does TrafFix Mean? – Who knows? Is it functional if it looks desirable to
consumers?
– As a practical matter, courts favor Aesthetic Functionality
when the “Mark” appears to be the product itself or its
principal ornamental feature.
• a China Pattern (Pagliero)
• a decorative “roofing tile” vent (M-5 Steel)
42 42
What Is Aesthetic Functionality?
Effect of Aesthetic Functionality
Owner cannot establish rights in claimed “Mark”
– Feature does not actually identify “source”
– Functions as attractive feature only
– No chance to establish secondary meaning. • Christian Louboutin S.A. v. Yves Saint Laurent America
(S.D.N.Y. 2011)
• Bonazoli v. R.S.V.P., Inc. (D. R.I. 2005)
• Damn I’m Good Inc. v. Sakowitz (S.D. N.Y. 1981)
43 43
Preventative Measures
What can we learn from defendants who successfully fought aesthetic functionality attacks?
Are there common themes?
44 44
Successful Defenses
1. Wax seal is registered.
2. Proper use of TM or ® in advertising
3. Wax seal featured prominently in advertising
4. Widespread press discussion of Wax seal as mark.
5. Multiple options to seal bottle
6. Multiple colors to chose from for seal
7. No competitive disadvantage
8. Reasonable enforcement (red only)
Maker’s Mark Distillery v.
Diageo North America (6th Cir. 2012)
45 45
Successful Defenses
1. Roof type of feature used as TM in restaurant field
2. Cost savings not related to services
3. Roof featured prominently in advertising
4. Roof attracts customers, but no evidence it is the only way to so. No competitive disadvantage
5. May be trademark and still be aesthetically pleasing (trademarks are not required to be ugly or boring)
Doyle v. Al Johnson’s Swedish Restaurant (TTAB 2012)
46 46
Successful Defenses
1. Trademark is registered, and registrations covers type of designs consumers used to as source identifier
2. Proper use of TM or ®
3. Well-organized and documented licensing program
4. Active policing program
5. Trademark known as source-identifier first, ornamental/aesthetic aspect is secondary
Gucci America Inc. v. Guess?, Inc. (S.D.N.Y. 2012)
47 47
Preventative Measures
What can we learn from unsuccessful defenses?
In many cases, the trademark owners with “aesthetic functionality” problems exhibited poor trademark management, failed to treat their “marks” as “MARKS,” made unfortunately admissions, or over-reached in trademark claims or enforcement litigation.
A review of successful “aesthetic functionality” attacks reveals a clear list of “do’s” and “don’ts” for trademark owners.
48 48
What Went Wrong?
1. Failure to register trademarks: Most (but not all) trademarks deemed “aesthetically functional” were common law marks (no presumption of validity).
49 49
What Went Wrong?
2. Failure to use “marks” in a manner calculated to lead consumers to view them as “Trademarks.”
a) Text of labels and advertising submitted did not appear to
contain TM symbol next to feature to show it is a “trademark.”
b) Text of advertising/brochures did not appear to contain written notice indicating that feature was claimed to be a “trademark” owned by plaintiff.
[as reproduced or described in decision]
In re The Original Red Plate Co. (TTAB 1984)
In re Manco, Inc., (TTAB 1992)
50 50
What Went Wrong?
2. Failure to use “marks” in a manner calculated to lead consumers to view them as “Trademarks.”
(continued)
c) No use of mark on hang tags, labels, or packaging:
i. In Damn I’m Good, original boxes and order cards only listed corporate name “Creative Products Inc. Proper labels were added only after “aesthetic functionality” issue raised at PTO.
ii. The records of other cases include no submissions of tags, packaging, or labels bearing the mark.
Damn I’m Good v. Sakowitz (S.D.N.Y. 1981)
51 51
What Went Wrong?
2. Failure to use “marks” in a manner that would lead consumers to view them as “Trademarks.”
(continued) d) Advertising fails to use mark as a source indicator:
i. Pamphlet uses “mark” as message not a source indicator: “The perfect way to simply say…YOU ARE SPECIAL TODAY.” Held not to be a mark for personalized plates .
The Original Red Plate Co.
iii. Advertisements fail to mention trapezoidal and heart shaped shape doll box or bring it to consumers attention as source identifier. Suggests container shapes are frequently aesthetically functional [perhaps an over-statement]
Mattel, Inc. v. MGA Entertainment (C.D. Cal. 2011)
52 52
What Went Wrong?
3. Unfortunate admissions by owner that the mark is primarily aesthetic
Advertisements tout the aesthetic features of “mark.”
Roof vent is “functional in design, camouflages the
existence of vents, and is aesthetically pleasing.”
M-5 Steel Mfg, Inc. v. O’Hagin’s, Inc. (TTAB 2001)
53 53
What Went Wrong?
3. Unfortunate admissions that the mark is primarily aesthetic
Christian Louboutin admitted that red was attractive because it gave shoes “energy,” it was “sexy,” and it attracts men. Admitted that color selection is a significant aspect of fashion.
Christian Loutoutin S.A. v. Yves St. Laurent (S.D.N.Y. 2011)
54 54
What Went Wrong?
4. Adopting as “mark” feature that is already widely used as decoration in industry.
In fashion industry, color serves an aesthetic function not present in other industries. Court held that color red cannot function as a trademark despite registrations and public recognition of unique red sole.
[Possibly wrongly decided?]
Christian Loutoutin S.A. v. Yves St. Laurent (S.D.N.Y. 2011)
55 55
What Went Wrong?
4. Adopting as “mark” feature that is already widely used in non-trademark sense in the industry.
THINK GREEN was already a catch phrase to show environmental concern, as was the color green, hence combination would not be viewed as a trademark by consumers for environmentally friendly mailing and shipping cardboard boxes. [Is this utilitarian rather than aesthetic?]
In re Manco, Inc.
56 56
What Went Wrong?
5. Overreaching in claims and/or enforcement
Christian Louboutin sought to enforce rights against ALL shades of red. And, sought to enforce against YSL monochromatic shoe where sole is clearly not functioning as trademark for YSL. Court sympathized with YSL since it already made monochromatic shoes in other colors.
Fed into “competitive disadvantage argument.
Christian Loutoutin S.A. v. Yves St. Laurent (S.D.N.Y. 2011)
57 57
Alternative Measures
Use Copyright Protection
• Benefits
– No requirement of “source identifier”
– Can still be protected if it “puts competitor at a disadvantage”
– Exists from creation of work/character/graphics
– Easy to register
– Can be combined with trademark rights in licenses and merchandising agreements (recommended)
58 58
Alternative Measures
Use Copyright Protection
• Drawbacks and Risks
– Must have chain of title perfected
original artists, graphics firms, employees
– May not protect all types “marks” and trade dress
Not works inseparable from useful items (Heart Spoons)
Catchphrases are too short/not original (Damn I’m Good)
Single colors (Louboutin)
– Different infringement tests (maybe not same protection)
Substantial similarity (examination of styles, characteristics)
Likelihood of confusion
– IT ENDS!!! (Pagliero v. Wallace China)
59 59
Alternative Measures
Using Copyright And Trademarks In Tandem
Well settled that protections are separate, so may assert both rights in the same property
Can you assert trademark rights in expired copyright?
Dastar Corporation v Twentieth Century Fox Films (2003)
• Rejected attempt to create “right of attribution” in Lanham Act (Lanham Act does not cover anti-plagerism)
• Expired copyright was for entire film, not proposed trademark
• 9th Circuit took dicta out of context
Supremes did say that there should be no ersatz trademark action in place of copyright action.
Supremes did say that Lanham Act protects origin of goods and services, not origin of ideas (such as a film or book).
Supremes did NOT say that a non-copyrighted design could never function as a trademark for goods and services.
60 60
Alternative Measures
Using Copyright And Trademarks In Tandem
Examples of works in “public domain” serving as trademarks Frederick Warn & Co. v. Book Sales Inc. (S.D.N.Y. 1979)
• Expired Peter Rabbit drawing can be mark for children’s toys and clothing
E.F. Pritchard Co. v. Consumers Brewing Co. (6th Cir.)
• Expired Dickens illustration can be logo for beer
Tempo Comm., Inc. v. Columbian Art Works, Inc. (N.D. Ill. 1983)
• Expired calendar format could be trade dress
61 61
Litigation Strategy
Be Prepared For Enforcement
1. Conduct Pilot Survey before litigation
• Do you believe that defendant had to have permission to use feature?
• Other questions to establish consumer recognition as “mark” and not merely ornamental feature? Similar to secondary meaning survey: Does this feature bring to mind any particular manufacturer or manufacturers?
62 62
Litigation Strategy
Be Prepared For Enforcement
2. Industry Expert
• Typical consumer in field would be accustomed to viewing feature as source identifier and not mere decoration
3. Affidavits from Dealers and Consumers identifying feature as source identifier
• High volume if possible
• Not identical or “fill in the blank”
• Explain why feature is a source identifier
4. Educate employees to find and report “actual confusion” and maintain records of same (including “simple inquiries” about feature)
DEFENSIVE FUNCTIONALITY
OF TRADEMARKS
Anthony L. Fletcher, Fish & Richardson P.C., New York
212-641-2291
Defensive Functionality of Trademarks
Doctrine is entirely judge-made;
there is no statutory, or even
regulatory, authority for it; nor is it
in any way related to the utilitarian
and aesthetic functionality already
discussed.
65
The doctrine in simplest terms:
Use that otherwise would infringe a
trademark will not infringe if the use
of the original trademark or the
putative infringing trademark is a
“functional” use.
66
The doctrine in its simplest terms (cont.)
There is no accepted definition of
“functional” in this instance.
Its meaning, if any, must be gleaned
from existing case law
67
CASE ONE:
Pagliero v. Wallace China Co. Ltd., 198 F.2d 339 (9th Cir.
1952):
“Functional in this sense might be said to connote other than a
trademark purpose. If the particular ingredient is an
important ingredient in the commercial success of the
product, the interest in free competition permits its
imitation in the absence of a patent or copyright . . . .”
(emphasis added)
68
CASE TWO:
In re Penthouse Intl., Ltd., 565 F.2d 679 (C.C.P.A. 1977):
“Penthouse is not merely trying to register a jewelry design as
a trademark: it seeks to register its established mark used as a
jewelry design.”
“Registration of the mark for other products is “prima facie
evidence that it is capable of recognition as a trademark, and
sales therefore could be triggered by recognition of the mark as
well as its attractiveness.”
69
CASE THREE:
Boston Professional Hockey Ass’n., Inc. v. Dallas Cap &
Emblem Mfg., Inc., 360 F. Supp. 459 (N.D. Tex. 1973):
“The designs of the plaintiff’s symbol[s] can be characterized
as functional because they have become ‘an important
ingredient in the commercial success of the product. When an
artistic rendition creates a demand in the market which is
unrelated to its feature as an indicia of source, the law will not
afford that design protection under the trademark law. In the
instant case, the registered trademark is, in effect, the product
itself. . . .”
70
CASE THREE (continued):
Boston Professional Hockey Ass’n., Inc. v. Dallas Cap &
Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975), cert. denied,
423 U.S. 868 (1975):
“The short answer to defendant’s arguments is that the
emblems sold because they bore the identifiable trademarks of
plaintiffs. . . .”
71
CASE FOUR:
International Order of Job’s Daughters v. Lindeburg & Co.,
633 F.2d 912 (9th Cir. 1980).
“[T]he name ‘Job’s Daughters’ and the Job’s Daughters
insignia are indisputably used to identify the organization, and
members . . . wear the jewelry to identify themselves a
members. In that context, the insignia are trademarks of Job’s
Daughters. But in the context of this case, the name and
emblem are functional aesthetic components of the jewelry, in
that they are being merchandised on the basis of their intrinsic
value, not as a designation of origin or sponsorship.”
72
CASE FOUR (Continued)
“It is not uncommon for a name or emblem that serves as a
collective mark or trademark also to be merchandised for its
own intrinsic utility to consumers. We commonly identify
ourselves by displaying emblems expressing allegiances. . . .
[I]t would be naïve to conclude that the name or emblem is
desired because consumers believe that the product somehow
originated with or was sponsored by the organization the name
signifies.”
73
CASE FIVE:
Bi-Rite Enterprises, Inc. v. Button Master, 555 F. Supp. 1188
(S.D.N.Y. 1983):
“. . . [M]arks that are exploited only for their functional value
and not to confuse the public receive no protection under
unfair competition laws. Functionality in this context means
that consumers desire the mark for its intrinsic value and not as
a designation of origin.”
74
Definitions:
in-trin-sic . . . Adjective: 1. belonging to a thing by its very
nature: the intrinsic value of a gold ring. –dictionary.com.
Intrinsic value . . . the inherent value of a thing, without any
special features that might alter its market value. The intrinsic
value of a silver coin, for example, is simply the value of the
silver in it. -- Black’s Law Dictionary
75
CASE SIX:
University of Pittsburgh v. Champion Products, Inc., 566 F.
Supp. 711 (W.D.Pa. 1983)
“The Pitt insignia prominently emblazoned on Champion’s
soft goods are functional in that they allow the wearer to
express allegiance to Pitt, and are essential features of the
products because the products could not perform their purpose
without the Pitt insignia.”
76
CASE SEVEN:
Traffix Devices v. Marketing Displays, Inc., 523 U.S. 23
(2001):
“. . . [In] general terms, a product feature is ‘functional,’ and
cannot serve as a trademark, ‘if it essential to the use or
purpose of the article.’ . . . Expanding upon the meaning of this
phrase, we have observed that a functional feature is one the
‘exclusive use of [which] would put competitors at a
significant non-reputation related disadvantage.’ . . . It is
proper to inquire into a ‘significant non-reputation related
disadvantage’ in cases of aesthetic functionality. . . .”
77
Conclusion 1:
There is no single, clear standard to apply to determine
whether a trademark used by someone other than its owner,
without the owner’s consent, is a “functional,” and therefore
non-infringing, use. The following formulations have been
advanced:
“other than a trademark purpose”
“an important ingredient in the commercial success of the
product”
Its “demand in the market . . . is unrelated to its feature as an
indicia of source”
78
Conclusion 1 (continued):
“the . . . trademark is, in effect, the product itself”
the trademark is “merchandised for its own intrinsic utility to
consumers”
“consumers desire the mark for its intrinsic value and not as a
designation of origin”
“are essential features of the products because the products
could not perform their purpose without” the trademark
79
Conclusion 2:
What appears to be clear, or at least
discernible, is that in every case of a trademark
being held to be used in a functional, and
therefore non-infringing, sense, it is used
because the good will and reputation of the
known trademark adds appeal, and therefore
value, to the product or service in connection
with which the purportedly functional
trademark is used.
80
Conclusion 3:
Section 33(b)(8) of the Trademark Act provides that a
registered trademark, even if the registration is incontestable,
is subject to the “defense or defect”: “That the mark is
functional.”
Section 43(a)(3) provides that “[i]n a civil action for trade
dress infringement . . . for traded dress not registered on the
principal register, the person who asserts trade dress protection
has the burden of proving that the matter sought to be
protected is not functional.”
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Conclusion 3 (continued):
If the Supreme Court is correct in Traffix that at least in cases
of aesthetic functionality – and defensive functionality has yet
to be asserted to be utilitarian – it is proper to inquire into the
“significant, non-reputation-related disadvantage” of being
precluded from using the purportedly functional trademark –
then the accused loses every single time.
The disadvantage of being precluded from using
someone’s trademark is, of necessity, reputation-related, since
trademarks by their nature embody reputation and good will of
their owner or user.
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A Coda
In his chapter on defensive aesthetic functionality [§ 7.82],
Professor J. Thomas McCarthy quotes a commentator who had
earlier (1985) “concluded that [defensive aesthetic
functionality] was a misguided and mischievous legal theory
that should be jettisoned: ‘Its nomenclature confuses an
already complicated subject (functionality). Its tests are
meaningless (and wrong). It is a doctrine, whatever its
parameters, of uncertain applicability. It appears to serve no
useful or necessary purpose. It should be buried.’”
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