When it comes to protecting the unique look and feel of your product, trade dress can be a powerful tool. However, the interplay between trade dress and functionality means not all aspects of a product’s design can receive trade dress protection. One key limitation is the functionality doctrine, which prevents companies from monopolizing functional features through trademark law. Let’s explore this important concept and its implications for businesses.
Understanding Trade Dress and Functionality
Trade dress refers to the overall visual appearance of a product or its packaging that signals its source to consumers. This can include elements like shape, color, texture, and graphics. However, for a feature to qualify for trade dress protection, it must be both distinctive and non-functional. Trade dress is entitled to protection if among other things, it is not “functional.” 15 U.S.C. § 1052(e)(5). The functionality doctrine exists to maintain a balance between trademark law and patent law. It ensures that companies cannot use trade dress to indefinitely protect functional features that should be available for competitors to use once any relevant patents expire.
Trade Dress and Functionality – Two Types
Utilitarian Functionality
Under the test for “utilitarian” functionality, “a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982). A product feature is considered to have utilitarian functionality if it:
- Is essential to the use or purpose of the product
- Affects the cost or quality of the product
For example, the shape of a tire tread that improves traction would likely be deemed utilitarian and thus not protectable as trade dress.
Aesthetic Functionality
Aesthetic functionality applies when a feature makes a product more appealing or desirable to consumers for reasons unrelated to source identification. Under the test for “aesthetic” functionality, a product feature is functional if “exclusive use of the feature” puts “competitors at a significant non-reputation-related disadvantage.” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995). If granting exclusive use of that feature would put competitors at a significant non-reputation-related disadvantage, it may be considered aesthetically functional.
Key Considerations for Businesses
When seeking trade dress protection, companies should:
- Focus on non-functional, distinctive elements of their product design
- Avoid promoting utilitarian benefits of design features in advertising
- Consider alternative designs that could achieve the same function
- Be prepared to demonstrate acquired distinctiveness for product configurations
Recent Legal Developments
Courts stuggle with the application of the functionality doctrine. In one case, the Third Circuit departed from the test above and applied a new definition of functionality to Glico’s registered trade dress for Pocky, a popular snack food that combines a biscuit with a chocolate or cream coating in a fanciful design was functional and thus not protectable as trade dress, despite its distinctivness.
Conclusion
While trade dress can be a valuable form of intellectual property protection, businesses must be mindful of the functionality doctrine. Focusing protection efforts on truly non-functional, distinctive elements of product design is key to developing a strong and enforceable trade dress portfolio. Contact us if you would like help navigating the complex interplay between aesthetics, functionality, and brand protection in product design.