Thanks for tuning in again for part two of my story from Benjamin Franklin Inn of Court meeting. This time, we turn to functionality. In short, you can’t trademark something that is functional. For example, you can’t trademark the color yellow gold for gold jewelry, because gold is naturally yellow gold.
There are two types of functionality:
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. This comes from a landmark Supreme Court case, TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001). Basically, what this is saying is if you have a product feature that is functional, patent it; don’t trademark it.
Aesthetic Functionality: Under “aesthetic functionality” visually attractive and aesthetically pleasing designs are “functional” and hence free for all to copy and imitate. 1938 Restatement of Torts, (s) 742. Aesthetic functionality arises when protection of a purported proprietary mark would “put competitors at a significant non-reputation related disadvantage.” See id. As usual, no one knows what this really means. So let me give you an example: the Bratz doll packaging (trapezoid shape with bright patterns) was aesthetically functional and therefore not protectable as a trademark. See Mattel Inc. v. MGA Entertainment Inc., 782 F.Supp 2d 911 (C.D. Cal. 2011).
Why can’t you trademark something that has functionality? Because trademark is a source identifier, meaning that trademarks help consumers identify the source of its goods or services. When something is used to make merchandise more decorative, it is not source identifying. Therefore, it cannot receive trademark protection.
This is a very complicated concept and it might seem backwards to many people. A big case relating to functionality is called Fleischer Studios Inc. v. A.V.E.L.A. Inc., 636 F.3d 115 (9th Cir. 2011). In that case, the plaintiff created Betty Boop and sued defendants for copyright and trademark infringement based on unauthorized use of the Betty Boop name and image. The 9th Circuit held that the plaintiff did not own copyright image of Betty Boop because it was in the public domain, but they own trademark rights to the word mark BETTY BOOP.
The 9th Circuit also held that the Betty Boop images on the defendant’s merchandise were decorative and not source identifying. That’s all dandy, until we get to this: the 9th Circuit went as far as to say that because the defendants could use the images of the Betty Boop character, it was also permitted to use the words BETTY BOOP to identify the character by name, and not to identify the source of the merchandise.
I think the court’s reasoning was sound, but it is a big slap in the face to Fleischer. This case is also interesting because you could basically apply the same reasoning to use images of other famous cartoon characters like Mickey Mouse and identify him by name without getting into trouble for copyright and trademark infringement.
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