Functionality doctrine: Difference between revisions

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{{Short description|Prevention of trademarking a product's features}}

In [[United States trademark law]], the '''functionality doctrine''' prevents [[manufacturer]]s from protecting specific features of a product by means of [[trademark]] law. This separates trademarks from [[patent]]s — trademarks serve to protect a [[firm]]'s [[reputation]] and [[goodwill]], whereas patents serve to protect processes, [[machine]]s, and material [[invention]]s.

{{Intellectual property}}

Under [[United States trademark law]], the '''functionality doctrine''' provides that product features that are functional cannot be protected as [[Trademark|trademarks]].<ref name=":0">{{Cite web |title=functionality doctrine (trademark) |url=https://www.law.cornell.edu/wex/functionality_doctrine_(trademark) |access-date=2024-11-10 |website=LII / Legal Information Institute |language=en |quote="The functionality doctrine is a rule in trademark law which states that functional product features cannot serve as a trademark. A product feature is considered functional if it is essential to the use or purpose of the product or if it affects the cost or quality of the product. For example, in Valu Engineering, Inc. v. Rexnord Corp., the court decided that certain conveyor belt shapes were functional due to their increased performance over alternative designs and were therefore not eligible to be considered a trademark."}}</ref> A product feature is considered functional if it is essential to the product’s use or purpose, or if it has an impact on the product’s cost or quality.<ref name=":0" /> The purpose of the doctrine is to encourage legitimate competition by ensuring a balance between trademark law and patent law.<ref>{{Cite web |title=1202.02(a)(ii) Purpose of Functionality Doctrine |url=https://tmep.uspto.gov/RDMS/TMEP/current#/result/TMEP-1200d1e914.html?q=Functionality%20Doctrine&ccb=on&ncb=off&icb=off&fcb=off&ver=current&syn=adj |access-date=2024-11-10 |website=tmep.uspto.gov |quote="The functionality doctrine, which prohibits registration of functional product features, is intended to encourage legitimate competition by maintaining a proper balance between trademark law and patent law."}}</ref>

A key case illustrating the functionality doctrine is ''[[TrafFix Devices, Inc. v. Marketing Displays, Inc.|Traffix Devices, Inc. v. Marketing Displays, Inc.]]'' (2001). In this case, the Supreme Court held that a dual-spring design for a road sign was not eligible for [[trade dress]] protection—a category within trademark law—because it served a purpose beyond “informing consumers that the sign stands are made by” the plaintiff.<ref name="Case_600">{{cite court|litigants=Traffix Devices, Inc. v. Marketing Displays, Inc.|vol=532|reporter=U.S.|opinion=23|pinpoint=|court=|date=2001|quote=|url=https://casetext.com/case/traffix-devices-inc-v-marketing-displays-inc|archive-url=https://web.archive.org/web/20210802113445/https://casetext.com/case/traffix-devices-inc-v-marketing-displays-inc|url-status=dead|archive-date=August 2, 2021|accessdate=2024-11-10}}</ref>

If a feature gives a producer a competitive advantage which is not related entirely to its function as a [[brand]] identifier, then it cannot be trademarked. The rationale behind this doctine is that product markets wouldn’t be truly competitive if newcomers couldn’t make product with a feature that consumers demand.

There are two branches of the functionality doctrine: utilitarian functionality and aesthetic functionality. The rationale behind functionality doctrine is that product markets would not be truly competitive if newcomers could not make a product with a feature that consumers demand. Utilitarian functionality provides grounds to deny federal trademark protection to product features which do something useful. Patent law, not trademark, protects useful processes, [[machine]]s, and material [[invention]]s. Patented designs are presumed to be functional until proven otherwise.<ref>''[[TrafFix Devices, Inc. v. Marketing Displays, Inc.]]'', 532 U.S. 23 (2001)</ref> Aesthetic functionality provides grounds to deny trademark protection to design features which are included to make the product more aesthetically appealing and commercially desirable. Aesthetic features are within the purview of [[copyright]] law, which provides protection to creative and original works of authorship.<ref>{{UnitedStatesCode|17|102}}(a)</ref>

==Utilitarian Functionality==

{{US-law-stub}}

{{also|Utilitarian design}}

[[Category:Trademark law]]

Courts will look to the following factors when determining utilitarian functionality:

* Whether a feature is essential to the use or purpose of the product; or

* Whether a feature affects the cost or quality of the product; or

* Whether granting of trademark for the exclusive use of the feature would put competitors at a significant non-reputation related disadvantage<ref>''[[Qualitex v. Jacobson Products]]'', 514 U.S. 159 (1995)</ref>

As of 2014 the federal circuit courts are split on their utilitarian functionality analysis. Most circuits, such as the Fifth Circuit<ref>''[[German Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH]]'', 289 F.3d 351 (5th Cir. 2002)</ref> and the Sixth Circuit<ref>''[[Antioch Co. v. Western Trimming Corp.]]'', 347 F.3d 150 (6th Cir. 2003)</ref> follow the Supreme Court's analysis in ''[[TrafFix Devices, Inc. v. Marketing Displays, Inc.]]'',<ref>532 U.S. 23 (2001)</ref> which focuses on whether the feature is essential to the use or purpose of the product. The Federal Circuit in contrast focuses its analysis on whether permitting a product feature to be trademarked would impair competitors.<ref>''[[Valu Engineering v. Rexnord Corp]]'', 278 F.3d 1268 (Fed. Cir. 2002)</ref>

==Aesthetic Functionality==

In the United States, the “functionality” doctrine exists to stop a party from obtaining exclusive trade dress or trademark rights in the functional features of a product or its packaging. The doctrine developed as a way to preserve the division between what trademark law protects and areas that are better protected by patent or copyright law. Thus, the functionality doctrine serves to prevent trademark owners from inhibiting legitimate competition <ref>{{Cite web |url=http://www.inta.org/INTABulletin/Pages/AestheticFunctionalityAfterLouboutin.aspx |title=Aesthetic Functionality After Louboutin |access-date=2015-04-27 |archive-date=2015-03-15 |archive-url=https://web.archive.org/web/20150315021653/http://www.inta.org/INTABulletin/Pages/AestheticFunctionalityAfterLouboutin.aspx |url-status=dead }}</ref>

When the aesthetic development of the good is intended to enhance the design and make the product more commercially desirable, trademark protection may be denied because the consumer is drawn to the design. The distinctiveness of the mark serves to identify the product rather than the source, and trademark protection becomes inappropriate. The underlying theory as aesthetics become integrated with functionality, the resulting product strongly resembles product design, which may receive no trademark protection absent secondary meaning.<ref>Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 445, 447–48 (S.D.N.Y. 2011)</ref>

This defense is generally seen in the fashion industry. Clothing brands can only be protected if they've acquired secondary meaning, and most of clothing design is held to be functional and is afforded no protection.<ref>{{Cite web|url=https://supreme.justia.com/cases/federal/us/529/205/|title = Wal-Mart Stores, Inc. V. Samara Brothers, Inc., 529 U.S. 205 (2000)}}</ref>

==See also==

* [[Idea-expression divide]]

* [[Trade dress]]

==References==

<references/>

[[Category:{{Trademark law]]}}

[[Category:United States trademark law]]

[[Category:Legal doctrines and principles]]