Trademark and Unfair Comp.

Boston College Law School

September 14, 2004

Trade Dress - Part 2

Trade Dress & Product DesignTrade Dress Product Design

Functionality

• Lanham Act § 2(e)(5)– No trademark … shall be refused registration

… unless it --• (e) Consists of a mark which, … (5) comprises any

matter that, as a whole, is functional

Functionality

• When is something “functional”?– Essential to the use or purpose of the article– Affects the cost or quality of the product– Exclusive use of the feature would put

competitors at a significant non-reputation-related disadvantage

In re Weber-Stephen3 U.S.P.Q.2d 1659 (T.T.A.B. 1987)

Evidence of functionality• Existence of utility patents• Advertising touting utility• Existence of alternatives• Cost to manufacture

In re Weber-Stephen3 U.S.P.Q.2d 1659 (T.T.A.B. 1987)

TrafFix v. MDI121 S. Ct. 1255 (2001)

Policy Considerations

Functionality

Functional Non-Functional

Low

HighPotential forConfusion

Harm toCompetition

No Protection

Leatherman Tool v. Cooper199 F.3d 1009 (9th Cir. 1999)

Functionality - Summary

• When is something “functional”?– Essential to the use or purpose of the article– Affects the cost or quality of the product

• Factors to consider– Existence of utility patent– Statements in advertising– Existence of alternative designs– Cost of manufacturing

Hypothetical

Hypothetical

Hypothetical

Patent, Copyright, Trademark

Patent Copyright

TrademarkFunctionality

Doctrine

Useful ArticleDoctrine

ProductDesign

FictionalCharacters

ComputerSoftware

Administrative Details

• No class on Thursday

• Next Assignment– III.A Use in Commerce