Trade dress is the overall appearance of a product. To learn about the basics of trade dress, see our firm page entitled: What Is Trade Dress And How Can It Be Protected? Examples of trade dress include but are not limited to the design of a product, the packaging in which the goods are sold, the color of the goods or the packaging and the flavor of the goods or product. When an applicant applies to register trade dress for goods or services, the examining attorney must consider the issue of distinctiveness and functionality. This page will focus on the doctrine of functionality. If it is determined that the subject trade dress is functional, the mark will be refused on both the Principal Register and the Supplemental Register, even if it can be proven that it has acquired distinctiveness. See In re Pingel Enterprise Inc., 46 U.S.P.Q.2d 1811, 1998 WL 320157 (TTAB 1998).
The doctrine of functionality has generated a lot of confusion. We are hoping to bring clarity to this topic. In order for the trade dress to be registered, there cannot be any feature of the trade dress that is critical to the use of the product, nor can any feature affecting the cost or quality of the article such that it would prevent third-parties from competing. For example, it was held that painting a blade of a snowplow orange was protectable as trade dress because there are many other bright colors and patterns available to competitors. See In re Shuttsco Inc., 54 U.S.P.Q.2d 1055, 2000 WL 328157 (TTAB 2000). Often a court will look to see if there is or was a utility patent for the claimed features and if so this is persuasive evidence that the features are functional.
There was an amendment to the Lanham Act on October 30, 1998 that explicitly provided a ground for trademark registration refusal due to functionality of a feature of the mark. Before October 1998 there was no statutory ground to refuse a trademark application based on functionality and instead prior to this date the Examining Attorney would refuse due to the mark failing to function as trademark. Laws evolve and in this area the distinction between "de jure" and "de facto" functionality is seldom used any longer in practice. However, if you read older decisions you will see reference to this distinction. De facto functionality means that the design of a product has a function, but it may not necessarily defeat registrability. De facto functional features may be entitled to trademark protection while de jure functional features are not protectable. De jure functionality means that the product has a particular shape because it works better in this shape.
The examining attorney has the burden of proof on this issue. The Examiner must establish a prima facie case that the subject trade dress is functional to maintain a Section 2(e)(5) functionality refusal. The burden then shifts to the applicant to present sufficient evidence to rebut the Examiner's refusal. The functionality determination is a question of fact, and depends on the totality of the evidence presented. Examiners may require additional information from the applicant such as copies of any patents (if there is a utility patent on the feature the subject of the trade dress this will weigh in favor of functionality), copies of advertising or promotional material and any material relating to the features embodied in the mark (if the applicant promotes utilitarian advantages this will weigh in favor of functionality). Moreover, the Examining Attorney will inquire if there are alternative designs available (if there are alternative designs available this weighs in favor of registration showing there is no competitive need for applicant's particular design) and whether the features make the product easier or less expensive to manufacture.
The question concerning whether a product's feature is functional should not be confused with whether the product performs a function. The relevant inquiry is whether the product is functional under the factors in In re Morton-Norwich Products, Inc. 671 F.2d 1332, 213 U.S.P.Q. 9 (C.C.P.A. 1982). See our page entitled What Is Trade Dress And How Can It Be Protected for a list of the "Morton-Norwich" factors. A trade dress application is one of the more challenging types of applications to prosecute at the United States Patent & Trademark Office and applicants should consult trademark counsel before filing an application of this type.