Recommended Reading: Elizabeth W. King, "The Trademark Functionality Doctrine"

Elizabeth W. King's thoughtful article, "The Trademark Functionality Doctrine" appears in the Sept/Oct 2012 issue of Landslide Magazine, published by the ABA's Section of Intellectual Property Law. Ms. King is a Shareholder/Director of Conley Rose, P.C. in Houston, Texas.

Ms. King's article examines the functionality doctrine "with an eye to making it more useful and comprehensible." She observes that marks may be deemed "functional" and thus unprotectable, even though they are not "functional" in a utilitarian sense: think aesthetic functionality. She posits that "with respect to all aspects of functionality save for utility, the word 'functionality' is a misnomer that should be supplanted with the phrase 'unfair competitive advantage.'"

Ms. King maintains that the functionality doctrine is at a "critical juncture." Some practitioners support its application "only in those case of utilitarian, cost, or quality advantages or where the infringer can prove a narrowly construed 'competitive necessity.'" Others are wary of granting perpetual monopolies on product features or designs. "[T]ighter 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."

In summary, there are instances where as a matter of 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.

TTABlog note: Copyright 2012 by the American Bar Association and reproduced with permission.