Trademarks: Utilitarian and Aesthetic...

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

jmarvel@pattishall.com

*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

b.brett.heavner@finnegan.com

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)

63 63

Conclusion

• THANK YOU

• QUESTIONS?

– b.brett.heavner@finnegan.com

DEFENSIVE FUNCTIONALITY

OF TRADEMARKS

Anthony L. Fletcher, Fish & Richardson P.C., New York

212-641-2291

fletcher@fr.com

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.

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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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