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