Purpose of Functionality Doctrine

The functionality doctrine, which prohibits

registration of functional product features, is intended to encourage

legitimate competition by maintaining a proper balance between trademark law

and patent law. As the Supreme Court explained, in

Qualitex Co. v.

Jacobson Prods. Co.

, 514 U.S. 159, 164-165, 34 USPQ2d 1161,

1163 (1995):

The functionality doctrine prevents

trademark law, which seeks to promote competition by protecting a firm’s

reputation, from instead inhibiting legitimate competition by allowing a

producer to control a useful product feature. It is the province of

patent law, not trademark law, to encourage invention by granting

inventors a monopoly over new product designs or functions for a limited

time, 35 U.S.C. Sections  154, 173, after which competitors are free to

use the innovation. If a product’s functional features could be used as

trademarks, however, a monopoly over such features could be obtained

without regard to whether they qualify as patents and could be extended

forever (because trademarks may be renewed in perpetuity).

In other words, the functionality doctrine

ensures that protection for utilitarian product features be properly sought

through a limited-duration utility patent, and not through the potentially

unlimited protection of a trademark registration. Upon expiration of a

utility patent, the invention covered by the patent enters the public

domain, and the functional features disclosed in the patent may then be

copied by others – thus encouraging advances in product design and

manufacture. In

TrafFix Devices, Inc. v. Mktg. Displays,

Inc.

, 532 U.S. 23, 34-35, 58 USPQ2d 1001, 1007 (2001), the

Supreme Court reiterated this rationale, also noting that the functionality

doctrine is not affected by evidence of acquired distinctiveness.

Thus, even when the evidence establishes that

consumers have come to associate a functional product feature with a single

source, trademark protection will not be granted in light of the public

policy reasons stated.

Id

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