Skip to main content

Is Your Desired Mark Functional?

 

Are you considering seeking trademark registration for the shape, color, design, configuration, or even the overall appearance of your product? Or do you want to assess potential challenges of your unregistered trademark? If so, you may want to consider if your desired mark is serving a functional purpose prior to applying for trademark registration.  Under the Lanham Act, the federal law that governs trademarks, if a product feature is functional, it is ineligible for trademark protection.[1] 

 

Types of Functionality 

            There are two types of functionality that courts may consider when denying protection on functionality grounds – utilitarian functionality and aesthetic functionality. Utilitarian functionality, sometimes called mechanical functionality, refers to features that impact the way a product works or is manufactured. All courts will deny protection if a product feature serves a utilitarian function. According to the utilitarian test, a product feature is functional if it either is essential to the use or purpose of the article or affects the cost or quality of the article.[2] In other words, if the product feature makes the product work better or makes it cheaper, it is probably functional. In the above image the traffic cones are bright orange. The manufacturer did not pick the color for its visual appeal, rather the bright hue was chosen because it’s easier for driver’s to see the color, especially in the dark. Because of the bright orange, drivers can more easily recognize and avoid the areas of the road that are marked off. Since the color makes the product work better and is necessary for the purpose of the cone, the cone manufacturers would not be approved for trademark registration if the producers sought registration of the color in connection with the cones. Further, courts also may consider four other factors that suggest a product feature is functional in a utilitarian manner – a utility patent that discloses the utilitarian advantages of the design, advertising that touts the utilitarian advantages of the design, availability of alternative designs and whether the design is from a comparatively simple or inexpensive method of manufacture.[3]

            Compared to utilitarian functionality, aesthetic functionality is more controversial and more amorphous. Some courts all together reject the aesthetic functionality doctrine. But for courts that accept the doctrine, generally, aesthetic functionality impacts the way a product looks or the aesthetic appeal of a product. The product features may have components that are functional in both an aesthetic and utilitarian manner. For instance, as mentioned above, the color of the traffic cones serve a utilitarian purpose, but if the stripes on the cone were purely for an aesthetic purpose, registration of the cone design may be challenged on aesthetic functionality grounds. Another example is the “John Deere green” color used on farm loaders, which the court determined to be aesthetically functional, and thus, unprotectable, because farmers prefer to match the color of all of the farming equipment.[4] Aesthetic functionality depends on consumer acceptance. In this case, consumers of farm loaders had been trained to only purchase farm loaders in specific colors including “John Deere green.” If no competitors were able to use that color for farm loaders, competitors would be at a disadvantage because the feature had become “an important ingredient in the commercial success of the product.”[5] To assess aesthetic functionality, courts consider whether protecting the protected feature would put competitors at a “significant, non-reputation related disadvantage.”[6]

 Trade Dress 

            Functionality is most often an issue when applying for registration of trade dress. Different courts have different definitions for trade dress, but generally trade dress encompasses “the total image of a product, which may include features such as size, shape, color or color combinations, texture, graphics.”[7] The main categories of trade dress include product packaging, product design, color, business exterior and interiors, and sounds and scents. For example, the iconic red and yellow Happy Meal box created by McDonald’s is trade dress. Under the Lanham Act, the plaintiff has the burden of proving their trade dress is non-functional.[8] So, if you are seeking trademark protection of trade dress, you want to be especially cognizant of the functional aspects of your product feature.

 Purpose of the Functionality Doctrine

             It is important to consider why functional product features are ineligible for trademark protection to understand the underpinnings of trademark and how the USPTO will assess your trademark application. Firstly, the functionality doctrine works to maintain the boundary between patents and trademarks. Utility patents have a usefulness requirement and protection only lasts for 20 years from the date of filing whereas trademark protection lasts indefinitely. Thus, the legislature does not want to permit producers to usurp the limit on utility patents by acquiring trademark protection on the same product feature. Additionally, the functionality doctrine works to bolster competition by preventing creators from gaining a monopoly on a product's functional elements and features.[9] Competitors are thus able to more freely compete in the market of a specific type of product when their functional features are incapable of trademark protection. For instance, if a consumer goods company found that dividing a laundry detergent pod into laundry detergent, softener, and fragrance allows the different components to release in the wash at the most optimal time for cleaning clothing and could gain trademark protection on that product design, no other competitor could construct their product in the same way. These competitors would then be at a significant competitive disadvantage indefinitely.

By: Sophia Guirguis

[2] Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982)

[3] In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-41 (C.C.P.A. 1982)

[4] Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 217 U.S.P.Q. 252 (S.D. Iowa 1982)

[5] ​​Pagliero v. Wallace China, 198 F.2d 339, 343 (9th Cir.1952)

[6] TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33 (2001)

[7] John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983)