Nearly anything can function as a trademark, but product features that are functional cannot be protected by common law trademark rights or registered trademarks at the USPTO.
A trademark can be nearly anything that is a source identifier for goods or services. Traditionally people think of brands such as COCA-COLA or GOOGLE as source identifying words for soda or internet searching, and therefore are trademarks. But sounds, colors, and scents can all be registered trademarks. This makes sense because when someone hears the NBC chimes or sees pink home insulation they know the company behind those products. However, a feature of a product that allows it to function or is only aesthetically pleasing cannot be registered as a trademark.
Owens-Corning’s trademark registration, as seen in TESS, for the color pink in connection with home insulation along with a specimen showing their pink trademark in commerce
There are two related but different ways a product feature can be deemed functional and therefore cannot be a common law or registered trademark. Utilitarian functionality is where the United States Patent and Trademark Office (USPTO), or a court, determines whether the product feature functions in a way that allows a person to use the product. Aesthetic functionality is where the USPTO, or a court, determines whether the product feature is merely an aesthetically appealing feature that makes the product more desirable but has no source identifying feature.
Utilitarian functionality tests are where courts or the USPTO determine whether a feature of a product is essential to its use, and therefore the correct area of intellectual property law to protect the feature is patent law. Courts will determine a trademark is functional where:
A feature is essential to the use of the product; or
A feature changes the cost or quality of the product; or
Granting trademark registration for the product feature would put competitors at a significant disadvantage.
In other words, the more essential the product feature is to the functioning of the product the more likely the feature will not be granted trademark rights. So even though colors can be trademarks, the color orange for a cone cannot be a trademark because orange serves a functional purpose, i.e. so people can more easily see the cone.
Evidence of a trademark being functional include previous patents. For example, a company tried to sue a competitor for trademark infringement based on the competitor using a similar “dual spring” design for a sign holder. A patent, shown below, for the dual spring stand was evidence that the stands “look” was functional. The Supreme Court held that because the “look” was functional, as evidenced by the previous parent registration, the dual spring design cannot act as a trademark.
The previous patent of a dual spring design (left) for a sign holder was evidence that dual spring design could not act as a trademark (right)
Aesthetic functionality tests are where courts or the USPTO determine whether a feature of a product is merely aesthetically pleasing, and therefore the correct area to protect the aesthetic feature of the product would be copyright law. The test for determining if something is a trademark or part of the aesthetic functionality of the product is whether the feature serves an aesthetic purpose wholly independent of any source identifying function. For example, a certain pattern or design on a shirt may be aesthetically pleasing and the reason someone purchases the shirt, but does not inform consumers in and of itself who manufactured the shirt.
However, where an aesthetically pleasing element of a product becomes so well known with a particular brand, courts have held that it can function as a trademark. The courts reason that when someone sees an aesthetically pleasing design feature of a product that lets them know who produced the product, the feature serves a source identifying role. In trademark law, when a design element that becomes so well known and associated with a certain brand or manufacturer it has gained “secondary meaning” and can be a protected trademark. The most popular example of this is the Louboutin shiny red heel on their line of high heeled women’s shoes. There is current litigation in the European Union whether the red heel can be a protected trademark, but here in the U.S., it is registered on the principal register at the USPTO.
Louboutin trademark registration, as seen in the USPTO’s TESS database, for red heels on women’s high heeled shoes.
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