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]
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.
[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)