By Elizabeth W. King
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.”