incontestable trademarks

Trade Dress Functionality

By Eric Misterovich

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Photo credit: utahca

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.

Two Standards to Determine Functionality

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:

  1. when it is essential to the function of the product or affects its cost or quality; and
  2. when the feature is a competitive necessity.” Id. at 32-33.

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.

Trade Dress Interpretation in the Sixth Circuit

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.

Which Party has the Burden of Proof?

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.

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