The Expanding Frontiers of the Functionality Doctrine in Trademark

PRESENTATION TITLE
The Expanding Frontiers of the Functionality
Doctrine in Trademark Litigation
Ted Davis
Kilpatrick Townsend & Stockton LLP
TDavis@KilpatrickTownsend.com
Functionality Defined
The functionality doctrine prevents trademark law,
which seeks to promote competition by protecting
a firm s reputation, from instead inhibiting
legitimate competition by allowing a producer to
control a useful product feature. It is the province
of patent law, not trademark law, to encourage
invention by granting inventors a monopoly over
new product designs or functions for a limited
time.
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164
(1995).
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Functionality Defined
In general terms, a product feature is functional,
and cannot serve as a trademark, if it is essential
to the use or purpose of the article or if it affects
the cost or quality of the article…. [A] functional
feature is one the exclusive use of which would
put competitors at a significant non-reputationrelated disadvantage.
TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S.
23, 32 (2001) (internal quotation marks, citations, and
alterations omitted).
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Rosetta Stone Ltd. v. Google Inc., 730
F. Supp. 2d 531 (E.D. Va. 2010)
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Rosetta Stone Ltd. v. Google Inc., 730
F. Supp. 2d 531 (E.D. Va. 2010)
Uses of trademarks by Google s AdWords program
are functional because:
•  the marks perform an essential indexing
function for Google, advertisers, and
consumers alike; and
•  an alternative system would be too
expensive.
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Rosetta Stone Ltd. v. Google Inc., 730
F. Supp. 2d 531 (E.D. Va. 2010)
The traditional focus of the functionality inquiry has
been on the validity of the plaintiff s mark:
• 
It is ... clear that eligibility for protection ...
depends on nonfunctionality, Two Pesos, Inc.
v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992);
•  To be a valid trademark, a mark must not only
be source-denoting, but it must also be
nonfunctional, Genesee Brewing Co. v. Stroh
Brewing Co., 124 F.3d 137, 145 n.5 (2d Cir.
1997);
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Rosetta Stone Ltd. v. Google Inc., 730
F. Supp. 2d 531 (E.D. Va. 2010)
The traditional focus of functionality inquiries has
been on the validity of the plaintiff s mark:
•  The trade dress at issue here is invalid here ...
[because] it is functional, Aromatique, Inc. v.
Gold Seal, Inc., 28 F.3d 863, 874 (8th Cir.
1994); and
•  The registration of the symbol as a trade-mark
was invalid because of its functional
feature .... Sylvania Elec. Prods., Inc. v. Dura
Elec. Lamp Co., 247 F.2d 730, 733 (3d Cir.
1957).
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Fleischer Studios, Inc. v. A.V.E.L.A.,
Inc., 2011 WL 631449 (9th Cir. 2011)
The Plaintiffs Licensed Products
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Fleischer Studios, Inc. v. A.V.E.L.A.,
Inc., 2011 WL 631449 (9th Cir. 2011)
The Defendants Products
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Fleischer Studios, Inc. v. A.V.E.L.A.,
Inc., 2011 WL 631449 (9th Cir. 2011)
Even a cursory examination, let alone a close
one, of the articles themselves, the defendant s
merchandising practices, and any evidence that
consumers have actually inferred a connection
between the defendant s product and the
trademark owner, reveal that [the plaintiff] is not
using Betty Boop as a trademark, but instead as a
functional product.
Fleischer Studios, 2011 WL 631449, at *7 (internal
quotation marks and citation omitted).
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Fleischer Studios, Inc. v. A.V.E.L.A.,
Inc., 2011 WL 631449 (9th Cir. 2011)
The plaintiffs uses are aesthetically functional
because:
•  the Betty Boop character is a prominent
feature of the plaintiffs goods;
•  the plaintiffs never designated their
merchandise as official ; and
•  the plaintiffs failed to document any actual
confusion between the parties respective
goods.
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Telebrands Corp. v. Del Labs., 719 F.
Supp. 2d 283 (S.D.N.Y. 2010)
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Maker s Mark Distillery, Inc. v. Diageo N.
Am., Inc., 703 F. Supp. 2d 671 (W.D. Ky.
2010)
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Specialized Seating, Inc. v. Greenwich
Indus., 616 F.3d 722 (7th Cir. 2010)
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Jay Franco & Sons, Inc. v. Franek,
615 F.3d 855 (7th Cir. 2010)
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Competing Presumptions in the
Functionality Inquiry
Congress and courts have adopted differing
approaches where registrations and related utility
patents are concerned:
•  a plaintiff lacking a federal registration bears the
burden of proving nonfunctionality, 15 U.S.C. §1125
(a)(3);
•  a related utility patent is strong evidence of
functionality that adds great weight to the statutory
presumption that [unregistered] features are deemed
functional, TrafFix Devices, Inc. v. Marketing
Displays, Inc., 532 U.S. 23, 29-30 (2001);
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Competing Presumptions in the
Functionality Inquiry
Congress and courts have adopted differing
approaches where registrations and related utility
patents are concerned:
•  an incontestable registration is conclusive evidence
that the registered mark is valid, 15 U.S.C. § 1115(b);
•  the claims of a related utility patent are presumptively
functional, Specialized Seating, 616 F.3d at 726; and
•  an incontestably registered trade dress itself can be
presumptively functional based on a related utility
patent. Jay Franco & Sons, 615 F.3d at 861.
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Thank You
Ted Davis
Kilpatrick Townsend & Stockton LLP
TDavis@KilpatrickTownsend.com
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