In
United States trademark law
A trademark is a word, phrase, or logo that identifies the source of goods or services. Trademark law protects a business' commercial identity or brand by discouraging other businesses from adopting a name or logo that is "confusingly similar" to ...
, the functionality doctrine prevents
manufacturer
Manufacturing is the creation or production of goods with the help of equipment, labor, machines, tools, and chemical or biological processing or formulation. It is the essence of secondary sector of the economy. The term may refer to a ran ...
s from protecting specific features of a product by means of
trademark
A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others ...
law. 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
A machine is a physical system using Power (physics), power to apply Force, forces and control Motion, movement to perform an action. The term is commonly applied to artificial devices, such as those employing engines or motors, but also to na ...
s, and material
invention
An invention is a unique or novel device, method, composition, idea or process. An invention may be an improvement upon a machine, product, or process for increasing efficiency or lowering cost. It may also be an entirely new concept. If an i ...
s. Patented designs are presumed to be functional until proven otherwise. 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
A copyright is a type of intellectual property that gives its owner the exclusive right to copy, distribute, adapt, display, and perform a creative work, usually for a limited time. The creative work may be in a literary, artistic, education ...
law, which provides protection to creative and original works of authorship.
Utilitarian Functionality
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
As of 2014 the federal circuit courts are split on their utilitarian functionality analysis. Most circuits, such as the Fifth Circuit and the Sixth Circuit follow the Supreme Court's analysis in ''
TrafFix Devices, Inc. v. Marketing Displays, Inc.'', 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.
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
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.
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.
See also
*
Idea-expression divide
*
Trade dress
Trade dress is the characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers. Trade dress is an aspect of trademark law, which is a form of intelle ...
References
{{Trademark law
United States trademark law
Legal doctrines and principles