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Functionality and Trade Dress Trademarks

Posted Tuesday, April 28, 2015 by Daniel Mills

There are two essential elements when it comes to getting a trademark for a product's design or in Trademark lingo "product configuration". The first element, is that the shape or configuration must indicate the source of the goods or services. This is a requirement of every trademark whether it is a word or logo trademark. The other element is that the design must NOT be functional. There is another crucial element that the product's design is distinctive, which will be the subject of another post, but one must overcome the functionality hurdle before answering the inherently distinctive question.

Whether the design is functional or not is more complicated than one might think. This post is to help sort out the basics of this distinction and provide a little bit of guidance to you if you are thinking about trademarking your product design. First, it is helpful to understand that there are three levels of functionality:

Nonfunctional is pretty simple, the design of the product or packaging cannot be utilitarian in any way. It must have no function. For example, if it is round, then it could have just as easily been square. The reason it is round is because of the look. The reason it is round can't have anything to do with round making it better in any way.

De Facto functional is when the shape or configuration is involved with the function of the product. A bottle of Coke® does function to hold the beverage for consumption, not to mention, keeping your hands from getting sticky. The shape of the bottle could be square however and still achieve the same function. The distinct shape doesn't add to or subtract from the true function of a bottle.

De Jure functional means that the design or configuration is functional as a matter of law. In other words, it meets a standard of functionality that has been determined by courts over the years. Functionality is now part of the Lanham Act Section 2(e)(5) in the list of reasons for refusal. If the product configuration or its packaging design is superior to other available designs for its intended purpose and, provides a competitive advantage, it is de jure functional. So if the bottle of Coke's curvy design helped keep it carbonated longer, taste better, colder, etc., then it would be de jure functional.

When it comes to trademark registrability for product shape, noted trademark attorney and blogger John L Welch begins with these three questions:

  1. Does the configuration or feature have utility? If yes, proceed to the next question. If no, the feature is ornamental and may be registrable. If the answer is no, you still must show acquired distinctiveness, but again, more on that in my next post.

  2. If the configuration or feature has utility, is the shape the only one that will work? If no, you may be eligible for a design patent.

  3. Even if there are alternative designs that will work, a product configuration or feature may be unregistrable as a trademark – i.e., de jure functional – if the design is "essential to the use or purpose of the device or ... affects the cost or quality of the device."

As with anything in the law, the specific details of any case will be the most important factors in determining the outcome, but these questions are great place to start the analysis. To read John L. Welch's post on this topic, click here.

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