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As mentioned in Trade Dress Protection, when asserting trade dress infringement or unfair competition, the second prong of the three-part test requires a showing of the nonfunctionality of its trade dress. Therefore, a trade dress cannot be afforded protection if it is functional. This post explains trade dress functionality and its interpretation throughout the federal courts.
The doctrine of functionality dates back many years ago. In a 1982 case, the United States Supreme Court stated that “[i]n general terms, a product feature is functional if it is essential to the use or purpose of the article or it affects the cost of quality of the article.” Inwood Labs. v. Ives Labs., 456 U.S. 844, 850 n.10 (1982). In a 2001 case, when the issue was whether the existence of an expired utility patent prevented a claim of trade dress on that product’s design, the Supreme Court held that the existence of an expired utility patent is strong evidence that the product’s design was functional, but it did not prevent trade dress protection as a matter of law. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29-30 (2001).
In that same case, the court established two standards for when a design feature may be functional:
However, since the Supreme Court never fully explained how the test functioned, for example whether the standards were to be considered separately or together, courts are split on how to apply the two standards.
In the Sixth Circuit, which includes the state of Michigan, a court will first determine whether aesthetic functionality or traditional utilitarian functionality is at issue. If aesthetic functionality is at issue, the court will apply the competitive-necessity test. If traditional utilitarian functionality is at issue, the court will apply the essential-to-use-or-purpose or effect-on-cost-or-quality test.
While some jurisdictions require the plaintiff to assert a showing of nonfunctionality, courts tend to be split on which party has this burden. In 1999, Congress amended § 43(a) of the Lanham Act. Congress inserted § 43(a)(3), which states, “In a civil action for trade dress infringement under this Act for trade 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.” However, according to Vuitton et Fils S.A. v. J. Young Enterprises, Inc., if a plaintiff has a federally registered trademark or design feature, the burden of proof on functionality shifts to the defendant. 644 F.2d 769, 210 U.S.P.Q. 351, 212 U.S.P.Q. 85 (9th Cir. 1981). If the plaintiff’s mark is only registered on the federal Supplemental Register, the registrant has the same burden as a nonregistrant to prove that its mark is not functional because there is no presumption of validity. According to the International Trademark Association, “The Supplemental Register is reserved for nondistinctive marks that are capable of acquiring distinctiveness (i.e. “secondary meaning”), but have not yet done so.”
Check with an attorney in your area to determine where your jurisdiction falls within this split of opinions regarding the burden of proof to show the nonfunctionality of trade dress and the application of the two standards to determine when a design feature is functional.
For more information about trade dress, contact Revision Legal’s trademark attorneys through the form on this page or call (855) 473-8474.
Beyond the utilitarian functionality standard from Inwood Laboratories, courts have developed the aesthetic functionality doctrine: a product feature that confers a significant non-reputational competitive advantage is not protectable as trade dress even if it serves no utilitarian purpose. The Supreme Court addressed aesthetic functionality in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 169 (1995), noting that a color can be registered as trade dress as long as its use does not put competitors at a significant non-reputation-related competitive disadvantage. The aesthetic functionality doctrine applies with particular force in industries where appearance is the primary selling point — fashion, jewelry, furniture design, and consumer electronics.
The TrafFix Devices decision carries a significant practical implication: an expired utility patent is strong evidence — in some circuits, nearly conclusive evidence — that the patented design is functional. When a patent applicant claims that a particular feature makes the product work better, that claim is later used against any trade dress assertion covering the same feature. Courts reason that allowing trade dress to extend patent protection after the patent expires would undermine the constitutional bargain under which patents provide limited monopoly protection in exchange for public disclosure.
Businesses considering trade dress protection for product designs that were previously patented should audit their patent portfolio before filing a trade dress claim. If a utility patent claims the same feature at issue, the trade dress plaintiff must be prepared to argue that the feature’s functional aspects have been separated from its purely ornamental aspects — a difficult showing in most cases.
While the Ninth Circuit has favored a test that asks whether exclusive use of the feature would put competitors at a significant non-reputation-related competitive disadvantage, the Sixth Circuit has applied a “competitive need” formulation that examines whether the feature is necessary for competitors to copy in order to compete effectively. These two formulations produce similar results in most cases, but the competitive need test creates a slightly lower bar for plaintiffs asserting trade dress — particularly in cases involving product packaging and configuration where multiple alternative designs are feasible. Trade dress counsel must research the controlling circuit’s formulation before filing suit.
Companies seeking to build a defensible trade dress portfolio should create and preserve evidence of non-functionality from the outset. Useful evidence includes: (1) design process documents showing that the aesthetic feature was chosen for its source-identifying appeal rather than any utilitarian advantage; (2) evidence of alternative designs that would have achieved the same functional result; (3) marketing materials emphasizing the feature’s ornamental rather than utilitarian qualities; and (4) engineering reports or expert testimony confirming that competitor products are not disadvantaged by being unable to copy the feature. This evidence collection is far easier to do contemporaneously than to reconstruct years later when trade dress infringement litigation arises.
Color presents a unique functionality question in trade dress law. Because there are a limited number of colors, granting one company exclusive rights to a particular color in a particular market can place competitors at a disadvantage that goes beyond mere reputation effects. In industries where color conveys important safety or regulatory information — safety orange for construction equipment, red for stop lights, blue for cold water plumbing — courts have found that color is functional and therefore not protectable. But in markets where color serves purely as a brand identifier, color can acquire distinctiveness and be protected as trade dress. The key inquiry is always whether allowing one company to monopolize the color would impede competition in that specific product or service category.
Navigating the functionality doctrine requires careful analysis of your product’s design history, the competitive landscape, and the controlling legal standard in the relevant circuit. Whether you are asserting trade dress protection for the first time or defending against a functionality challenge in litigation, Revision Legal’s trademark attorneys have the experience to guide your strategy. Contact us today to discuss your trade dress rights.
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