Elizabeth W. King is a shareholder of Conley Rose, P.C. She has practiced law for 19 years and previously worked as an examining attorney. She has spoken extensively on the subject of trademark law, and has previously served as a member of the USPTO Subcommittee for the International Trademark Association. She can be reached at firstname.lastname@example.org. The author would like to thank Gregory L. Maag, Professor Paul M. Janicke, and Eileen Pape for their assistance in this article. This article is dedicated to the memory of the late Professor Richard J. Graving, South Texas College of Law, without whom the author would not be a lawyer.
For decades, trademark practitioners have wrestled with the functionality doctrine. The doctrine, though not formally codified until 1998,1 bars rights and registration to marks that are deemed “functional.” The doctrine applies to “nontraditional trademarks,” which can be designs of products themselves or special product features, including physical aspects of the design, colors, shapes, scents, holograms, packaging, and/or a combination of all of these things.2 There are several methods for determining if a mark is legally functional, but the most frequently cited definition was provided by the U.S. Supreme Court in the famous Inwood case, which defined a functional product or feature as one “essential to the use or purpose of the article or if it affects the cost or quality of the article.”3 This might at first blush seem relatively straightforward, but the doctrine, unevenly and confusingly applied through the decades, is an esoteric concept not easily understood by practitioners or judges. This article examines the doctrine—with an eye toward making it more useful and comprehensible—positing that with respect to all aspects of functionality analysis save for utility, the word “functional” is a misnomer that should be supplanted with the phrase “unfair competitive advantage.”
To understand the functionality doctrine and its evolution, it is imperative to appreciate that it is an offshoot of the overriding policy against unlawful monopolies first addressed in an early amendment to the Lanham Act.4 The dual purpose of the Lanham Act, to protect the public from confusion and to protect the rights of trademark holders, lives within a construct of a third compelling purpose of the Act: to deter anticompetitive behavior.5 And while the dilutive effects on competition as grounds for the doctrine are not specifically enunciated in the Act, § 33(b)(7) articulates that it is an absolute defense to a claim for infringement if the trademark violates the antitrust laws of the United States.6
From the beginning, it was understood that the Act must not serve as a conduit for unlawful monopolies.7 Indeed, it is the push against unlawful monopolies that represents the critical junction for the doctrine’s foundation and its logical expansion, because legitimate trademark rights are the sole form of intellectual property enforceable in perpetuity so long as the mark is in use.8 Because a valid mark will never expire, it is easy to see why any claimed product design mark should be deliberatively scrutinized with an eye toward unfair competitive advantage.
Prior to the 1998 Act, the United States Patent and Trademark Office (USPTO) had no specific statutory provisions from which to draw on to refuse marks that were deemed legally functional. These refusals were therefore issued under §§ 1, 2, and 45 of the Trademark Act; at the time, this was the most appropriate vehicle for implementing a policy that was consistent with common law.9 From the prosecution standpoint, this implementation set up a dual application for the word “function” in the trademark realm: Trademark Act §§ 1, 2, and 45 bar matter that fails to function as a trademark, in some cases permanently, but at least until the mark has achieved secondary source significance or has acquired distinctiveness. It most aptly applies to ornamental matter, which is matter that does not function as a mark without a showing of either secondary source significance (for example, a picture or slogan on a T-shirt that relates back to some other services offered by the mark holder) or acquired distinctiveness (for example, a design or a color on a product that over time becomes recognized as an indicator of source).
In contrast, the functionality doctrine bars matter that is fully capable of functioning as a mark, but for public policy reasons is not protectable. The conflicting uses of “function” have created confusion among practitioners and courts, as exemplified most recently in the 2011 “Betty Boop” decision from the Ninth Circuit (later withdrawn and replaced),10 which upon close reading appears to find the purported mark ornamental while mislabeling it “functional.”11 Accordingly, from the outset the common lexicon associated with the functionality doctrine and its cousin “ornamentation” has clouded the ability to ascertain which matter is not immediately protectable due to a lack of acquired distinctiveness or secondary source significance, and which matter is never protectable as a matter of law for public policy reasons regardless of distinctiveness. This article deals with the latter situation.
Another issue that clouds understanding of the functionality doctrine is the tempting, but not truly accurate, comparison of functional product design marks to generic terms. This issue relates directly to the underpinnings of antitrust law and its connection to the Trademark Act. Two close variants of this comparison have appeared in the last 12 months: (1) “[F]unctionality is to product design marks what genericness is to word marks. Functional product features and generic terms are the antithesis of trademarks—they are incapable of serving as source indicators”;12 and (2) “[Functional marks] are like generic terms. It wouldn’t be fair for one producer to have a monopoly.”13 These may seem like fair analogies, but upon close inspection they aren’t. First, functional marks are often fully capable of serving as source indicators; the law simply precludes them from trademark protection as a matter of public policy. In contrast, generic terms are incapable of operating as trademarks, and the law simply mirrors that fact.14
With respect to the “unfair monopoly” assertion vis-à-vis generic terms, there are two instances that create the most tempting examples: first, where one producer is the sole user of a generic term;15 and second, where a trademark becomes genericized.16 However, taking a closer look at each example, it becomes apparent that the threat of a working monopoly tied to a generic term is basically nonexistent. If a producer were the sole maker of a product sold under generic nomenclature, the exclusivity would be tied to the production of the goods themselves, not the futile attempt to brand using generic terminology.17 And with respect to once-valid trademarks that have become generic, the transformation only occurs after members of the public start using the term in a generic fashion and the mark holder does not successfully take steps to reinforce the term as a mark both with respect to the public and its competitors. In this scenario, a once-trademarked term is used to describe competing products sold by different producers, i.e., after any monopoly has ended and competition has begun.18
No matter the pathway toward genericness, attempting to monopolize use of a generic term would be rather futile. Indeed, the existence of once-valid trademarks that have become genericized due to a failure to police their use underscores the fact that generic terms are those that have become part of the common lexicon and therefore not subject to substantially exclusive (i.e., monopolistic) use by the purported owner.19 Only distinctive-yet-functional marks can rightly be compared to unlawful monopolies: they are proscribed as a matter of law, not as a matter of operation. Or, to put it another way, generic terms are not trademarks as a matter of fact, whereas “functional” trademarks may well be indicators of source but are precluded from trademark protection as a matter of law.
The analogists of functional marks to generic terms should take heart because the confusion associated with the multiple trademark applications for the root word “function” is amplified by the fact that it is generally a misnomer even as applied to the functionality doctrine. The term “functional” accurately describes products or product features that are in some instances rather distinctive but at the same time quite useful and therefore not protectable as marks: “The product design is functional.” Yet the doctrine also bars nonuseful distinctive product design marks that confer an unfair competitive advantage to the mark holder.20 Accordingly, its once-narrow application, analyzed by asking whether the product design conferred a “functional advantage” to the mark holder, has been transmuted by an overriding public policy against anticompetition.21
In order to fully appreciate how the doctrine operates to preclude protection for certain marks, we should review the different constructs that courts have used. One landmark case, Morton-Norwich, analyzed functionality by listing key factors that should frame the determination on whether a product or feature is “functional”:22
Later, the U.S. Supreme Court clarified that if a product has utilitarian, cost, or quality advantages under the Inwood formulation, the existence of other designs is usually irrelevant.23 Beyond the forceful way in which the Court held that a mark with utilitarian, cost, or quality advantages would mandate a finding of functionality is the equally strong way in which the Court stated that generally there is no prohibition against copying products:
Trade dress protection must subsist with the recognition that in many instances there is no prohibition against copying goods and products. In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying. As the Court has explained, copying is not always discouraged or disfavored by the laws which preserve our competitive economy.24
To recap, there are three primary ways in which a product or feature might be found to be legally “functional” under the Inwood and TrafFix decisions and therefore precluded from trademark protection:
If any or a combination of these advantages are present, the product or feature is deemed legally “functional” and cannot be protected as a mark as a matter of law. Even though only the first factor (i.e., how the product “functions”) can accurately be described as a functional characteristic, the other two are equally important to the assessment.25 This is yet another reason why adopting a new lexicon, “unfair competitive advantage” would make the doctrine easier to understand and to apply. Certainly, the law allows for legal competitive advantages resulting from trademark rights, but it bears repeating that the Trademark Act has proscribed unfair competitive advantages since at least 1959.26 Ultimately, if more practitioners and more courts analyzed the doctrine with this modified lexicon, the determination would continue to take into account utility, cost, and quality, but would do so under a larger umbrella that more accurately represents the genesis of the analysis and the basis for the proscription against these types of marks.
At times, the product design or feature does not possess any utilitarian, cost, or quality advantages yet might still be precluded from trademark protection under the doctrine. In these cases, the court should consider whether protecting the product or feature as a mark would result in “significant non-reputation-related disadvantage” to the competition.27 This terminology applies to unfair competitive advantages not outlined in Inwood, most notably the controversial “aesthetic functionality” assessment as it relates to color.28
The controversy surrounding aesthetic functionality for color appears driven by two factors: (1) the failure to consistently frame “aesthetic functionality” considerations on the part of courts, which makes it harder to understand for practitioners;29 and (2) the disdain private practice lawyers have at times for a doctrine that takes away trademark rights on nonutilitarian product designs or features as a matter of public policy.30 The Bar and the judiciary are at a crossroads, with the judiciary attempting to circumvent unfair competitive advantages achieved through trademark rights on the one side, and much of the Bar who would like to lawfully monopolize a design or feature on the other. The resulting confusion as to what constitutes legal functionality, coupled with no uniform consistency on the lexicon used to formulate holdings, only further muddies the waters.
There have been several disparate analyses on what sort of designs or features would create “significant non-reputation-related disadvantage” for the competition if protected as marks. The Sixth Circuit presiding over the TrafFix dispute substituted the phrase “competitive necessity” for the consideration and then applied it only in relation to the three Inwood factors.31 Yet the Supreme Court in TrafFix clarified that the functionality analysis is not tied solely to those factors:
As explained in Qualitex, supra, and Inwood, supra, a feature is also functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device. The Qualitex decision did not purport to displace this traditional rule. Instead, it quoted the rule as Inwood had set it forth. It is proper to inquire into a “significant non-reputation-related disadvantage” in cases of esthetic functionality, the question involved in Qualitex. Where the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature. In Qualitex, by contrast, esthetic functionality was the central question, there having been no indication that the green-gold color of the laundry press pad had any bearing on the use or purpose of the product or its cost or quality.32
It appears from this portion of the TrafFix opinion that the Court considers “competitive necessity” at least relevant to ascertaining whether a color trademark is “functional,” i.e., creates a “significant non-reputation-related disadvantage” for the competition. However, the definition of “necessity” is not easy to crystallize as there are many factors at play, including the public interests associated with expanded choices (something a trademark right would preclude), the implication on visual aesthetics outside of the design itself, and/or the trade channels involved, any of which could be a deciding factor.33
In Deere & Co. v. Farmhand Co., the court determined that farmers’ aesthetic interests in having equipment match sufficiently demonstrated that allowing Deere & Co. to hold trademark rights to its famous green color would confer an unfair competitive advantage.34 In the Brunswick case, the Federal Circuit affirmed the Trademark Trial and Appeal Board’s conclusion that allowing trademark protection for the color black on boat motors would confer unfair competitive advantages because black coordinated with a variety of boat colors and optically made engines look smaller in the water.35 And most recently, the district court in Christian Louboutin quite correctly considered the trade channel implications, in this case the fashion industry, and the unfairly dilutive effects on competition within that industry to find that the claimed mark for a red lacquered sole on a shoe was aesthetically functional.36 The fact that the disputed registration failed to limit the claimed protection to a pantone or a shoe type also aided the court’s analysis. Yet the decision was hugely controversial for various reasons, including especially the court’s failure to use the language “competitive necessity” in its opinion.37
The functionality doctrine is at a critical juncture. There are members of the Bar who support its application only in those cases of utilitarian, cost, or quality advantages or where the infringer can prove a narrowly construed “competitive necessity.” And there are those who advocate a more conservative approach wary of granting perpetual monopolies on product features or designs.38
In some ways, one can analogize the passage of the Anti-Dilution Act, and its subsequent 2006 revision (which includes product designs or features), to the push for more expansive rights for these types of marks.39 And perhaps as a counterbalance to this push, recent court decisions seem to indicate that the doctrine is strengthening. After all, the Anti-Dilution Act could protect specific product designs or features across all trade channels if sufficiently famous.40 Indeed, the 2006 revision makes clear that only unregistered trade dress claimants must prove that the mark is famous and not functional. In much the way the Anti-Dilution Act protects famous marks without proof of likelihood of confusion, tighter limitations on how the functionality doctrine is applied would conceptually protect more designs without accounting for the potential consequences to the public as a result of fewer choices in product selection. The epic battle between diluting competition and diluting brand strength has never been so acute.
In summary, there are instances where as a matter public policy trademark rights will be proscribed even if the mark serves no utilitarian purpose. The current structure of functionality analysis dictates that one first apply the three Inwood factors and then consider whether protecting the mark would lead to “significant non-reputation-related disadvantage” for the competition. Under the totality of the circumstances, approaching the analysis in a broader context using “unfair competitive advantage” as a framework makes the doctrine more comprehensible. The phrase is cleaner and more accurate than “functionality” and also more encompassing.
1. Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, § 201, 112 Stat. 3064, 3069 (effective Oct. 30, 1998). As outlined in TMEP § 1202.02(a)(i), the Technical Corrections to Trademark Act of 1946 codified the doctrine in the following areas:
• Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5), prohibits registration on the Principal Register of “matter that, as a whole, is functional.”
• Section 2(f) of the Act, 15 U.S.C. § 1052(f), provides that matter that, as a whole, is functional may not be registered even on a showing that it has become distinctive.
• Section 23(c) of the Act, 15 U.S.C. § 1091(c), provides that a mark that, as a whole, is functional may not be registered on the Supplemental Register.
• Section 14(3) of the Act, 15 U.S.C. § 1064(3), lists functionality as a ground that can be raised in a cancellation proceeding more than five years after the date of registration.
• Section 33(b)(8) of the Act, 15 U.S.C. § 1115(b)(8), lists functionality as a statutory defense to infringement in a suit involving an incontestable registration.
U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure § 1202.02(a)(i) (8th ed. Oct. 2011) [hereinafter TMEP].
2. 15 U.S.C. § 1127; see also Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209–10 (2000) (discussing 15 U.S.C. § 1127).
3. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982). The three primary cases from the U.S. Supreme Court on the doctrine of functionality are: TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995); and Inwood, 456 U.S. 844. The Inwood Court’s definition of functionality was derived from Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 232 (1964), and Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 122 (1938).
4. 60 Stat. 438 (1946) (codified at 15 U.S.C. § 1115(b)(7) (1959)). See Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 201–02 (1985) (“[I]f ‘monopolization’ of an incontestable mark threatens economic competition, § 33(b)(7), 15 U.S.C. § 1115(b)(7), provides a defense on the grounds that the mark is being used to violate federal antitrust laws.”); Phi Delta Theta Fraternity v. J.A. Buchroeder & Co., 251 F. Supp. 968, 978 (W.D. Mo. 1966) (“Both Senator Hawkes and Senator O’Mahoney emphasized that Section 33(b)(7) meant exactly what it said. Senator Hawkes stated that ‘when the trade-mark is used to violate the antitrust laws, then such violation of the laws can be used as a defense against one who sues for infringement.’” (citation omitted)); Daniel M. McClure, Trademarks and Competition: The Recent History, 59 Law & Contemp. Probs. 13, 30 (1996) (writing that the doctrine of functionality “falls right at the intersection of trademark protection and competition”); Note, The Besmirched Plaintiff and the Confused Public: Unclean Hands in Trademark Infringement, 65 Colum. L. Rev. 109, 111 & n.41 (1965) (“Senator Wiley, whose bill would have repealed § 33(b)(7), stated: ‘The bill will eliminate the inequitable defense . . . since both public and private remedies for antitrust violations lie under other acts and do not properly form a part of a trade-mark act.’” (citations omitted)).
5. Phi Delta Theta Fraternity, 251 F. Supp. at 978; see also 15 U.S.C. § 1125(a)(3); In re Deister Concentrator Co., 289 F.2d 496, 504 (C.C.P.A. 1961) (“‘The extent to which the owner of . . . a mark is given exclusive rights in it is determined by a tension between the desire to secure to producers the benefits of their labors by preventing consumer, deception as to the source of goods, and the desire to keep free the means of expression necessary for effective competition.’” (quoting Developments in the Law: Trade-Marks and Unfair Competition, 68 Harv. L. Rev. 814, 816 (1955)).
6. Timken Roller Bearing Co. v. United States, 341 U.S. 593, 599 (1951) (“A trademark cannot be legally used as a device for Sherman Act violation. Indeed, the Trade Mark Act of 1946 itself penalizes use of a mark ‘to violate the antitrust laws of the United States.’” (footnote omitted)).
8. Qualitex, 514 U.S. at 164–65.
9. TMEP, supra note 1, § 1202.02(a)(i).
10. Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 636 F.3d 1115 (9th Cir. 2011).
11. Id. at 1124 (“Even a cursory examination, let alone a close one, of ‘the articles themselves, the defendant’s merchandising practices, and any evidence that consumers have actually inferred a connection between the defendant’s product and the trademark owner,’ reveal that A.V.E.L.A. is not using Betty Boop as a trademark, but instead as a functional product.”). The original opinion in Fleischer Studios was later withdrawn and supplanted by Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958 (9th Cir. 2011), which upheld the lower court on other grounds. It seems apparent that initially the court was attempting to hold that the claimed mark was merely ornamental and not likely to be perceived as an indicator of source. However, its reasoning likely driven at least in part by the confusing historical underpinnings of the functionality doctrine, the court instead labeled the mark “functional,” widely regarded as a legal mistake. Deborah S. Cohn, Mere Ornamentation and Aesthetic Functionality: Causing Confusion in the Betty Boop Case?, 101 Trademark Rep. 1218, 1219 (2011).
12. Id.; see also BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 1569 (Fed. Cir. 1995) (“A generic term cannot be registered as a trademark because such a term cannot function as an indication of source.”).
13. Anandashankar Mazumdar, Conferences: Until Revised, 2011 Decision Reviving Aesthetic Functionality Was Year’s “Worst,” Pat. Trademark & Copyright L. Daily, Apr. 10, 2012 (quoting Anne Gilson LaLonde, speaker and author of Gilson on Trademarks), http://news.bna.com/ptdm/PTDMWB/split_display.adp?fedfid=25802612&vname=ptdbulallissues&fcn=6&wsn=499888000&fn=25802612&split=0 (last accessed Apr. 11, 2012). See also In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1569 (Fed. Cir. 1987) (“To allow trademark protection for generic terms, i.e., names which describe the genus of goods being sold, even when these have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.”); 3 Peter K. Yu, Intellectual Property and Information Wealth: Trademark and Unfair Competition Law 435 (2007); McClure, supra note 4, at 30 (“Judge Posner noted that ‘generic’ names are not subject to trademark protection because the manufacturer there ‘is trying to monopolize a scarce input, for there usually are only one or two words in common usage to describe a given product (such as ‘car’ and ‘automobile’).’” (quoting W.T. Rogers Co. v. Keene, 778 F.2d 334, 339 (7th Cir. 1985))).
14. BellSouth, 60 F.3d at 1569.
15. TMEP, supra note 1, § 1212.06(e)(i): (“When the applicant is the only source of the goods or services, use alone does not automatically represent trademark recognition and acquired distinctiveness.”); see also id. § 1209.03(c) (sole user of generic term).
16. Haughton Elevator Co. v. Seeberger (Otis Elevator Co.), 85 U.S.P.Q. 80 (Comm’r Pat. 1950) (finding “Escalator” to have become genericized).
17. A.J. Canfield Co. v. Honickman, 808 F.2d 291, 299 (3d Cir. 1986) (“If chocolate fudge soda is the relevant product class, identification by the public of the term chocolate fudge soda with Canfield would prove only the obvious point that Canfield has been the sole producer of the product, and would not establish trademark status.”).
18. Donald F. Duncan, Inc. v. Royal Tops Mfg. Co., 343 F.2d 655, 659–60 (7th Cir. 1965) (finding “yo-yo” to be generic); DuPont Cellophane Co. v. Waxed Prods. Co., 85 F.2d 75, 81–82 (2d Cir. 1936) (finding “cellophane” to be generic); Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921) (Learned Hand, J.) (“The single question, as I view it, in all these cases, is merely one of fact: What do the buyers understand by the word for whose use the parties are contending? If they understand by it only the kind of goods sold, then, I take it, it makes no difference whatever what efforts the plaintiff has made to get them to understand more. He has failed, and he cannot say that, when the defendant uses the word, he is taking away customers who wanted to deal with him, however closely disguised he may be allowed to keep his identity. So here the question is whether the buyers merely understood that the word ‘Aspirin’ meant this kind of drug, or whether it meant that and more than that; i.e., that it came from the same single, though, if one please anonymous, source from which they had got it before.”); see also Eric E. Johnson, Trademark Law and Generic Terms, Museum Intell. Prop., http://www.museumofintellectualproperty.org/exhibits/ genericness.html (last visited July 20, 2012).
19. Bayer, 272 F. at 509.
20. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164–65 (1995); see also Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 98 (S.D. Iowa 1982), aff’d, 721 F.2d 253 (8th Cir. 1983) (“It is not only fair to imitate nonpatented functional products, it is necessary to our form of economy.”).
21. In re Deister Concentrator Co., 289 F.2d 496, 505 (C.C.P.A. 1961); see also In re Mogen David Wine Corp., 328 F.2d 925, 930, 933 (C.C.P.A. 1964) (Rich, J., concurring). Apple Inc. revived the “functional advantage” theory in its U.S. trademark application serial no. 77,389,539, seeking to register the product configuration of an iPod Shuffle®. See Amendment/Response at 6–7, U.S. Trademark Application Serial No. 77,389,539 (Dec. 18, 2008).
22. In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1334–41 (C.C.P.A. 1982). It should be noted that the Morton-Norwich decision was issued prior to the codification of the functionality doctrine or the issuance of the TrafFix, Qualitex, or Inwood decisions by the U.S. Supreme Court. However, the factors identified in Morton-Norwich continue to provide some usefulness in framing a functionality analysis, particularly factors 1, 2, and 4. See, e.g., TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33 (2001); Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274 (Fed. Cir. 2002).
23. TrafFix, 532 U.S. at 31 (finding that “the disclosure of a feature in the claims of a utility patent constitutes strong evidence of functionality”); id. at 24 (“[When a mark] is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature.”); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982).
24. TrafFix, 532 U.S. at 29.
25. Id. at 32–33; Inwood Labs., 456 U.S. at 850 n.10.
26. 15 U.S.C. § 1115(b)(7) (Lanham Act § 33(b)(7)).
27. TrafFix, 532 U.S. at 33; Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995).
28. Qualitex, 514 U.S. at 165.
29. Color is usually an ornamental feature of a product. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1124 (Fed. Cir. 1985). Once it acquires distinctiveness as a mark, it might still be precluded from protection based on the doctrine of functionality. The relationship between ornamentation and aesthetic functionality often confuses courts and practitioners, as was evidenced by the initial Ninth Circuit ruling in the Betty Boop case, Fleischer Studios. In other instances, courts have been assailed for finding color to be aesthetically functional without using the specific language “significant non-reputation-related disadvantage” assessed through the prism of “competitive necessity.” See Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445 (S.D.N.Y. 2011) rev’d in part, aff’d in part, and remanded by 2012 WL 3832285 (2d Cir. Sept. 5, 2012); Brief of Amicus Curiae International Trademark Association in Support of Vacatur and Remand, Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., No. 11-3303-cv (2d Cir. Nov. 14, 2011) [hereinafter INTA Brief].
30. INTA Brief, supra note 29.
31. Mktg. Displays, Inc. v. TrafFix Devices, Inc., 200 F.3d 929, 940 (6th Cir. 1999).
32. TrafFix, 532 U.S. at 33.
33. Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1531–33 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995); Christian Louboutin, 778 F. Supp. 2d at 453–57; Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 98 (S.D. Iowa 1982), aff’d, 721 F.2d 253 (8th Cir. 1983); In re Orange Commc’ns, Inc., 41 U.S.P.Q.2d 1036 (T.T.A.B. 1996).
34. Deere & Co., 560 F. Supp. at 98.
35. Brunswick, 35 F.3d at 1533.
36. Christian Louboutin, 778 F. Supp. 2d at 456–58. At the preliminary injunction hearing, the district court ordered Louboutin to show cause why its registration should not be cancelled for functionality. The case is pending appeal in the Second Circuit on dual grounds: whether the district court failed to give a presumption of validity to the registration and whether the district court erred in finding the color functional without using the catchphrase “competitive necessity” in its analysis.
37. INTA Brief, supra note 29.
39. 15 U.S.C. § 1125(c); Trademark Dilution Revision Act of 2006, Pub. L. No. 109-312, 120 Stat. 1730 (codified as amended in scattered sections of 15 U.S.C.).
40. Just prior to the passage of the Trademark Dilution Revision Act of 2006, courts throughout the country were pushing back against the notion that the Act could even apply to a nontraditional mark that had acquired distinctiveness. Jerome Gilson & Anne Gilson LaLonde, Cinnamon Buns, Marching Ducks and Cherry-Scented Racecar Exhaust: Protecting Nontraditional Trademarks, 95 Trademark Rep. 773, 819 (2005).