• Trademark Validity: Trade Dress, Product Designs, & Features

    Trademark Validity: Trade Dress, Product Designs, & Features

    Whether a trademark is protectable or registrable depends on its validity. In turn, the validity of a mark depends on the subject matter of the mark and whether it is distinctive of the goods or services in the relevant market. When the subject matter of the mark is trade dress or a feature of the product, the validity determination becomes more complicated than when the trademark subject matter is in a more traditional form like a word or logo. If the trademark is a functional feature of the product or packaging it can not be protected by trademark law. There are two forms of functionality: utilitarian functionality and aesthetic functionality. Each has its own rules for determining when a feature is functional. If the feature is not functional then the next inquiry is whether the mark is distinctive.

    Trademark law recognizes only certain subject matter as being protectable, and this is largely determined by whether protection will further the policy goals of trademarks. Trademarks are designed to avoid consumer confusion and harm to the reputation of the producers of goods, but this protection is not intended to stifle competition. Part of the reason trademarks protects what it does is to allow for more efficient markets by ensuring a degree of reliable information is preserved in the mark. These markets would be hampered if producers could monopolize the functional features of their products under the aegis of trademarks. Moreover, the protection of useful ideas is enshrined in the Constitution, codified by congress, and governed under the law of patents. Courts are reluctant—to say the least—to trample on the Constitution or on Congress’s statutory schemes. Extending trademark protection to useful ideas would potentially allow the trademark owner to monopolize for all time what Congress has seen fit to limit to 20 years.

    It is clear that functional features are not protectable, but what constitutes functionality requires a factual inquiry. Functionality is broken into two distinct categories: utilitarian functionality and aesthetic functionality. A product feature serves a utilitarian function when it is essential to the use or purpose of the article, or if it affects the quality or cost of the article. Use or purpose refers to those features which are required for the product to function properly. For instance, the blades on a fan are required for it to function as a fan, thus no person could monopolize the use of them by calling it a trademark feature. Quality or cost refers to those features which affect the quality of the article’s functioning and the cost of manufacturing. To continue with the above example, having a slight screw on fan blades increases the air-flow from the blades and thereby increases quality, thus this feature is unlikely to be protected as a trademark. A ‘cost’ example might be a fan manufacturer who seeks to trademark plastic fan blades, but because fan blades are much more expensive in other materials the manufacturer may not trademark this feature. It is important to remember that even though functional features are not protected as trademarks, they are still protectable as patents or trade secrets, and through other laws of unfair competition.

    Aesthetic functionality acts as a sort of catch-all for features that are not utilitarian, but allowing a manufacturer to monopolize the feature would stifle competition and hamper the market. If exclusive use of a feature would put competitors at a significant non-reputation-related disadvantage, then it is aesthetically functional and can not be trademarked. For instance, a car manufacturer could not trademark the color black for its vehicles. Black is such a desirable color for cars that other manufacturers would be put at a significant disadvantage if they could not sell black cars. On the other side of this are aesthetic features which are non-functional. For instance, an insulation manufacturer could trademark the color pink for their products because the color of the insulation is unrelated to its desirable qualities.

    Like words and logos, non-functional trade dress or product features must also be distinctive. Trade dress (product packaging) distinctiveness is determined largely in the same manner as words and logos. If the packaging is generic to the type of goods then it will not be protectable, but if it is unique or unusual to the field and clearly serves as a source identifier then it is more likely to be protected. If a product feature is in question, such as the color of insulation, then secondary meaning is required for trademark protection. Secondary meaning is when a product characteristic becomes so closely tied with the manufacturer that the public sees it as a source identifier.
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