Functionality doctrine

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In United States trademark law, the functionality doctrine prevents manufacturers from protecting specific features of a product by means of trademark law. [1] There are two branches of the functionality doctrine: utilitarian functionality and aesthetic functionality. The rationale behind functionality doctrine is that product markets would not be truly competitive if newcomers could not make a product with a feature that consumers demand. Utilitarian functionality provides grounds to deny federal trademark protection to product features which do something useful. Patent law, not trademark, protects useful processes, machines, and material inventions. Patented designs are presumed to be functional until proven otherwise. [2] Aesthetic functionality provides grounds to deny trademark protection to design features which are included to make the product more aesthetically appealing and commercially desirable. Aesthetic features are within the purview of copyright law, which provides protection to creative and original works of authorship. [3]

A trademark is a word, phrase, or logo that identifies the source of goods or services. Trademark law protects a business' commercial identity or brand by discouraging other businesses from adopting a name or logo that is "confusingly similar" to an existing trademark. The goal is to allow consumers to easily identify the producers of goods and services and avoid confusion.

Trademark recognizable sign, design or expression which identifies products or services

A trademark, trade mark, or trade-mark is a recognizable sign, design, or expression which identifies products or services of a particular source from those of others, although trademarks used to identify services are usually called service marks. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher, or on the product itself. For the sake of corporate identity, trademarks are often displayed on company buildings.

Machine tool using energy to perform an intended action

A machine is a mechanical structure that uses power to apply forces and control movement to perform an intended action. Machines can be driven by animals and people, by natural forces such as wind and water, and by chemical, thermal, or electrical power, and include a system of mechanisms that shape the actuator input to achieve a specific application of output forces and movement. They can also include computers and sensors that monitor performance and plan movement, often called mechanical systems.

Contents

Utilitarian Functionality

Courts will look to the following factors when determining utilitarian functionality:

As of 2014 the federal circuit courts are split on their utilitarian functionality analysis. Most circuits, such as the Fifth Circuit [5] and the Sixth Circuit [6] follow the Supreme Court's analysis in TrafFix Devices, Inc. v. Marketing Displays, Inc. , [7] which focuses on whether the feature is essential to the use or purpose of the product. The Federal Circuit in contrast focuses its analysis on whether permitting a product feature to be trademarked would impair competitors. [8]

TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), was a United States Supreme Court decision in the area of trademark law, holding that a functional design could not be trademarked, and that a patented design was presumed to be functional.

Aesthetic Functionality

In the United States, the “functionality” doctrine exists to stop a party from obtaining exclusive trade dress or trademark rights in the functional features of a product or its packaging. The doctrine developed as a way to preserve the division between what trademark law protects and areas that are better protected by patent or copyright law. Thus, the functionality doctrine serves to prevent trademark owners from inhibiting legitimate competition [9]

When the aesthetic development of the good is intended to enhance the design and make the product more commercially desirable, trademark protection may be denied because the consumer is drawn to the design. The distinctiveness of the mark serves to identify the product rather than the source, and trademark protection becomes inappropriate. The underlying theory as aesthetics become integrated with functionality, the resulting product strongly resembles product design, which may receive no trademark protection absent secondary meaning. [10]

This defense is generally seen in the fashion industry. Clothing brands can only be protected if they've acquired secondary meaning, and most of clothing design is held to be functional and is afforded no protection. [11]

See also

Related Research Articles

Trade dress is a legal term of art that generally refers to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers. Trade dress is a form of intellectual property.

An industrial design right is an intellectual property right that protects the visual design of objects that are not purely utilitarian. An industrial design consists of the creation of a shape, configuration or composition of pattern or color, or combination of pattern and color in three-dimensional form containing aesthetic value. An industrial design can be a two- or three-dimensional pattern used to produce a product, industrial commodity or handicraft.

The idea–expression divide or idea–expression dichotomy limits the scope of copyright protection by differentiating an idea from the expression or manifestation of that idea.

Copyright misuse is an equitable defense against copyright infringement in the United States allowing copyright infringers to avoid infringement liability if the copyright holder has engaged in abusive or improper conduct in exploiting or enforcing the copyright. Copyright misuse is comparable to, and draws from precedents under, the older doctrine of patent misuse, which dates back to the early years of the 20th century and derives from the more general equity doctrine of "unclean hands", which bars a party from obtaining equitable relief against another when the party has acted improperly.

Scène à faire is a scene in a book or film which is almost obligatory for a genre of its type. In the U.S. it also refers to a principle in copyright law in which certain elements of a creative work are held to be not protected when they are mandated by or customary to the genre.

International News Service v. Associated Press, 248 U.S. 215 (1918), also known as INS v. AP or simply the INS case, is a 1918 decision of the United States Supreme Court that enunciated the misappropriation doctrine of federal intellectual property common law—that a "quasi-property right" may be created against others by one's investment of effort and money in an intangible thing, such as information or a design. The doctrine is highly controversial and criticized by many legal scholars, but it has its supporters.

<i>Kirkbi AG v Ritvik Holdings Inc</i>

Kirkbi AG v. Ritvik Holdings Inc., popularly known as the Lego Case, is a decision of the Supreme Court of Canada. The Court upheld the constitutionality of section 7(b) of the Trade-marks Act which prohibits the use of confusing marks, as well, on a second issue it was held that the doctrine of functionality applied to unregistered trade-marks.

Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995), was a United States Supreme Court case in which the Court held that a color could meet the legal requirements for trademark registration under the Lanham Act, provided that it has acquired secondary meaning in the market.

<i>Mallinckrodt, Inc. v. Medipart, Inc.</i>

Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700, is a decision of the United States Court of Appeals for the Federal Circuit, in which the court appeared to overrule or drastically limit many years of U.S. Supreme Court precedent affirming the patent exhaustion doctrine, for example in Bauer & Cie. v. O'Donnell.

Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), is a decision of the United States Supreme Court in which the Court reaffirmed the validity of the patent exhaustion doctrine, and in doing so made uncertain the continuing precedential value of a line of decisions in the Federal Circuit that had sought to limit Supreme Court exhaustion doctrine decisions to their facts and to require a so-called "rule of reason" analysis of all post-sale restrictions other than tie-ins and price fixes. In the course of restating the patent exhaustion doctrine, the Court held that the exhaustion doctrine is triggered by, among other things, an authorized sale of a component when the only reasonable and intended use of the component is to practice the patent and the component substantially embodies the patented invention by embodying its essential features. The Court also overturned, in passing, the part of decision below that held that the exhaustion doctrine was limited to product claims and did not apply to method claims.

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989), is a decision of the United States Supreme Court holding a state anti-plug molding law preempted because it partially duplicated and therefore interfered with the balance Congress had struck by federal patent law. The decision reaffirmed the Supreme Court's earlier decision in Sears, Roebuck & Co. v. Stiffel Co. (1964), which held a state unfair competition law preempted on the same ground.

Inwood Laboratories Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982), is a United States Supreme Court case, in which the Court confirmed the application of and set out a test for contributory trademark liability under § 32 of the Lanham Act.

Typefaces, fonts, and their glyphs raise intellectual property considerations in copyright, trademark, design patent, and related laws. The copyright status of a typeface—and any font file that describes it digitally—varies between jurisdictions. In the United States, the shapes of typefaces are not eligible for copyright, though the shapes may be protected by design patent. Typefaces can be protected in other countries, including the UK, Germany, and France, by industrial design protections that are similar to copyright or design patent in that they protect the abstract shapes. Additionally, in the US and in some other countries, computer fonts—the digital instantiation of the shapes as vector outlines—may be protected by copyright on the computer code that produces them. The name of a typeface may also be protected as a trademark.

Canadian intellectual property law governs the regulation of the exploitation of intellectual property in Canada. Creators of intellectual property gain rights either by statute or by the common law. Intellectual property is governed both by provincial and federal jurisdiction, although most legislation and judicial activity occur at the federal level.

Under Canadian trade-mark law, the "doctrine of functionality" provides that features that are primarily functional in nature cannot be registered as trade-marks. The doctrine of functionality reflects the purpose of trade-mark, which is the protection of the distinctiveness of the wares and services associated with a trade-mark. Unlike patents, trade-marks do not protect the utilitarian features of products. The doctrine of functionality is reflected in section 13(2) of the "Trade-marks Act", which provides that: "No registration of a distinguishing guise interferes with the use of any utilitarian feature embodied in the distinguishing guise". On the basis of functionality, courts have denied trade-mark protection for such features as the pattern of knobs on LEGO blocks and the shape of the head of an electric razor.

The misappropriation doctrine is a U.S. legal theory conferring a "quasi-property right" on a person who invests "labor, skill, and money" to create an intangible asset. The right operates against another person "endeavoring to reap where it has not sown" by "misappropriating" the value of the asset. The quoted language and the legal principle come from the decision of the United States Supreme Court in International News Service v. Associated Press, 248 U.S. 215 (1918), also known as INS v. AP or simply the INS case.

Matal v. Tam, 582 U.S. ___ (2017), is a United States Supreme Court case in which the Court affirmed unanimously the judgment of the Court of Appeals for the Federal Circuit that the provisions of the Lanham Act's prohibiting the registration of trademarks that may "disparage" persons, institutions, beliefs, or national symbols with the United States Patent and Trademark Office violated the First Amendment.

References

  1. ↑ Functionality doctrine at Wex, from the Legal Information Institute
  2. ↑ TrafFix Devices, Inc. v. Marketing Displays, Inc. , 532 U.S. 23 (2001)
  3. ↑ 17 U.S.C.   § 102(a)
  4. ↑ Qualitex v. Jacobson Products , 514 U.S. 159 (1995)
  5. ↑ German Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH , 289 F.3d 351 (5th Cir. 2002)
  6. ↑ Antioch Co. v. Western Trimming Corp. , 347 F.3d 150 (6th Cir. 2003)
  7. ↑ 532 U.S. 23 (2001)
  8. ↑ Valu Engineering v. Rexnord Corp , 278 F.3d 1268 (Fed. Cir. 2002)
  9. ↑ http://www.inta.org/INTABulletin/Pages/AestheticFunctionalityAfterLouboutin.aspx
  10. ↑ Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 445, 447–48 (S.D.N.Y. 2011)
  11. ↑ https://supreme.justia.com/cases/federal/us/529/205/
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