Functionality

Functional matter cannot be protected as a

trademark.

15

U.S.C. §§1052(e)(5)

,

(f)

,

1064(3)

,

1091(c)

,

1115(b)

. A feature is functional as a matter of

law if it is "essential to the use or purpose of the article or if it

affects the cost or quality of the article."

TrafFix Devices,

Inc. v. Mktg. Displays, Inc.

, 532 U.S. 23, 32, 58 USPQ2d

1001, 1006 (2001) (citing

Qualitex Co. v. Jacobson Prods.

Co.,

514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995));

Inwood Labs., Inc. v. Ives Labs., Inc.

, 456 U.S.

844, 850 n.10, 214 USPQ 1, 4 n.10 (1982).

While some courts had developed a

definition of functionality that focused solely on "competitive need" –

thus finding a particular product feature functional only if competitors

needed to copy that design to compete effectively – the Supreme Court

held that this "was incorrect as a comprehensive definition" of

functionality.

TrafFix

, 532 U.S. at 33, 58 USPQ2d at

1006. The Court emphasized that where a product feature meets the

traditional functionality definition – that is, it is essential to the

use or purpose of the product or affects its cost or quality – then the

feature is functional, regardless of the availability to competitors of

other alternatives.

Id.

;

see also

Valu Eng'g, Inc. v. Rexnord Corp.

, 278 F.3d 1268,

1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002) ("Rather, we conclude that

the [

TrafFix

] Court merely noted that once a product

feature is found functional based on other considerations there is no

need to consider the availability of alternative designs, because the

feature cannot be given trade dress protection merely because there are

alternative designs available" (footnote omitted).)

However, since the preservation of

competition is an important policy underlying the functionality

doctrine, competitive need, although not determinative, remains a

significant consideration in functionality determinations.

Valu

Eng’g, Inc.

, 278 F.3d at 1278, 61 USPQ2d at 1428

ature cannot be given trade dress protection merely because there are

alternative designs available" (footnote omitted).)

However, since the preservation of

competition is an important policy underlying the functionality

doctrine, competitive need, although not determinative, remains a

significant consideration in functionality determinations.

Valu

Eng’g, Inc.

, 278 F.3d at 1278, 61 USPQ2d at 1428.

The determination that a proposed mark is

functional constitutes, for public policy reasons, an absolute bar to

registration on either the Principal or the Supplemental Register,

regardless of evidence showing that the proposed mark has acquired

distinctiveness.

See

TrafFix

, 532 U.S. at 29-33, 58 USPQ2d at 1005-07;

In re MK Diamond Prods., Inc.

, 2020 USPQ2d 10882,

at *18-19 (TTAB 2020) (quoting

In re Honeywell, Inc.

,

187 USPQ 576, 578 (TTAB 1975));

see also In re Controls

Corp. of Am.

, 46 USPQ2d 1308,

1312 (TTAB 1998)

(rejecting applicant’s claim that "registration on the

Supplemental Register of a de jure functional configuration is

permissible if the design is ‘capable’ of distinguishing applicant’s

goods"). Thus, if an applicant responds to a functionality refusal under

§2(e)(5) of the Trademark Act,

15

U.S.C. §1052(e)(5)

, by submitting an amendment

seeking registration on the Supplemental Register that is not made in

the alternative, such an amendment does not introduce a new issue

warranting a nonfinal Office action.

See

TMEP §714.05(a)(i)

. Instead, the

functionality refusal must be maintained and made final, if appropriate,

under §23(c) and §45 of the Act,

15

U.S.C. §§1091(c)

,

1127

, as that is the statutory authority

governing a functionality refusal on the Supplemental Register.

Additionally, for functionality refusals, the associated

nondistinctiveness refusal must be withdrawn.

See In re Heatcon,

Inc.

, 116 USPQ2d 1366,

1370 (TTAB 2015)

.

See

TMEP

§§1202.02(a)(v)–(a)(v)(D)

regarding

evidentiary considerations pertaining to functionality refusals.