Aesthetic Functionality and Trade Dress

In the United States, one can register the look of a product or product packaging if it is distinctive as a trademark. This is called trade dress, and famous examples of this include the shape of the Coca-Cola bottle and the signature baby blue color of Tiffany’s brand jewelry boxes (see related blog on trade dress in the adult entertainment industry). In a leading case regarding trade dress and the look and feel of Mexican restaurants, the U.S. Supreme Court has held that trade dress “involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics,” among others. Two Pesos, Inc.  v. Taco Cabana, Inc., 505 U.S. 763 (1992).

One way registrability of trade dress is limited is through the concept of “functionality”. U.S. law will not grant trademark protection to the design of a product or product packaging if that design was primarily motivated with functional considerations. Because patent and copyright law already protect novel inventions and aesthetic creations, one is not permitted to gain additional protection through acquiring trademark protection. “Functionality” in this sense includes not only usefulness by the end user and product designs which decrease production costs, but also aesthetic functionality. 

Qualitex Dry Cleaning Pad

In a leading case involving the registration of and litigation based on color as trade dress, the U.S. Supreme Court supported the notion that the “ultimate test of aesthetic functionality…is whether the recognition of trademark rights would significantly hinder competition.” Qualitex Company v. Jacobson Products Company, Inc., 514 U.S. 159 (1995). The case involved a gold-greenish color, applied to dry cleaning pads and typically sold to professional laundry cleaners, and pictured in this blog post. The Court  distinguished practical functionality (use of color to distinguish different types of medication) from the functionality of satisfying the “noble instinct for giving the right touch of beauty to common and necessary things.” The Court then held that if either functionality was found, courts must then examine whether use of that trade dress would hinder competition. This is assessed by examining whether the trade dress would allow one competitor  “to interfere with legitimate (non-trademark related) competition through actual or potential exclusive use of an important product ingredient.”

The Qualitex case seems to provide a framework for the analysis of aesthetic functionality, however, a look at subsequent opinions issued by lower courts shows a different story. Since the 1992 Qualitex opinion, several Federal Circuit Courts (courts of second instance) have issued varying interpretations of aesthetic functionality. On one end of the spectrum, the Second Circuit has denied trade dress protection in a design where the primary purpose of the plaintiff’s design “was aesthetic rather than source-identifying”. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir. 1995). On the other end of the spectrum, the Fourth Circuit refused to accept the doctrine altogether: “[T]his court has no reason to think that the Fourth Circuit would be inclined to adopt such a policy.” Devan Designs, Inc. v. Palliser Furniture Corp., 27 U.S.P.Q.2d 1399 (4th Cir. 1993).

While it is clear that aesthetic functionality is a bar to trade dress protection in the U.S., guidance provided by case law as to the determination of aesthetic functionality is ambiguous. In fact, a leading U.S. trade mark authority has even characterised aesthetic functionality as a “fading theory”. McCarthy on Trademarks and Unfair Competition, § 7:80.

– ck

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