Aesthetic Functionality

"Aesthetic functionality" refers to situations

where the feature may not provide a truly utilitarian advantage in terms of

product performance, but provides other competitive advantages. For example,

in

Brunswick Corp. v. British Seagull Ltd.

, 35 F.3d 1527,

1531, 1533, 32 USPQ2d 1120, 1122, 1124 (Fed. Cir. 1994),

cert.

denied

, 514 U.S. 1050 (1995), the Federal Circuit affirmed the

Board’s determination that the color black for outboard motors was

functional because, while it had no utilitarian effect on the mechanical

working of the engines, it nevertheless provided other identifiable

competitive advantages, i.e., ease of coordination with a variety of boat

colors and reduction in the apparent size of the engines.

The concept of "aesthetic functionality" (as

opposed to "utilitarian functionality") has for many years been the subject

of much confusion. While the Court of Customs and Patent Appeals (the

predecessor to the Court of Appeals for the Federal Circuit) appeared to

reject the doctrine of aesthetic functionality in

In re DC Comics,

Inc.

, 689 F.2d 1042, 1047-1050, 215

USPQ 394, 399-401

(C.C.P.A. 1982), the Supreme Court later referred to aesthetic functionality

as a valid legal concept in

TrafFix Devices, Inc. v. Mktg.

Displays, Inc.

, 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001).

The confusion regarding aesthetic functionality stems in part from

widespread misuse of the term "aesthetic functionality" in cases involving

ornamentation issues, with some courts having mistakenly expanded the

category of "functional" marks to include matter that is solely ornamental,

essentially on the theory that such matter serves an "aesthetic function" or

"ornamentation function." It is this incorrect use of the term "aesthetic

functionality" in connection with ornamentation cases that was rejected by

the Court of Customs and Patent Appeals.

See In re DC Comics,

Inc.

, 689 F.2d 1042, 1047-1050, 215

USPQ 394, 397, 399-401

(C.C.P.A

o include matter that is solely ornamental,

essentially on the theory that such matter serves an "aesthetic function" or

"ornamentation function." It is this incorrect use of the term "aesthetic

functionality" in connection with ornamentation cases that was rejected by

the Court of Customs and Patent Appeals.

See In re DC Comics,

Inc.

, 689 F.2d 1042, 1047-1050, 215

USPQ 394, 397, 399-401

(C.C.P.A. 1982) (majority opinion and Rich, J., concurring) (holding, in a

case involving features of toy dolls, that the Board had improperly

"intermingled the concepts of utilitarian functionality and what has been

termed ‘aesthetic functionality;’" and rejecting the concept of aesthetic

functionality where it is used as a substitute for "the more traditional

source identification principles of trademark law," such as the

ornamentation and functionality doctrines).

Where the issue presented is whether the

proposed mark is ornamental in nature, it is improper to refer to "aesthetic

functionality," because the doctrine of "functionality" is inapplicable to

such cases. The proper refusal is that the matter is ornamental and, thus,

does not function as a mark under §§1, 2, and 45 of the Trademark Act,

15 U.S.C. §§1051

,

1052

, and

1127

. See

TMEP

§§1202.03-1202.03(g)

regarding ornamentation.

The Supreme Court’s use of the term "aesthetic

functionality" in the

TrafFix

case appears limited to

cases where the issue is one of actual functionality, but where the nature

of the proposed mark makes it difficult to evaluate the functionality issue

from a purely utilitarian standpoint. This is the case with color marks and

product features that enhance the attractiveness of the product. The color

or feature does not normally give the product a truly utilitarian advantage

(in terms of making the product actually perform better), but may still be

found to be functional because it provides other real and significant

competitive advantages and, thus, should remain in the public domain.

See

Qualitex Co. v. Jacobson Prods. Co.

, 514 U.S

s that enhance the attractiveness of the product. The color

or feature does not normally give the product a truly utilitarian advantage

(in terms of making the product actually perform better), but may still be

found to be functional because it provides other real and significant

competitive advantages and, thus, should remain in the public domain.

See

Qualitex Co. v. Jacobson Prods. Co.

, 514 U.S. 159, 165,

34 USPQ2d 1161, 1163-1164 (1995) (stating that a product color might be

considered functional if its exclusive use "would put competitors at a

significant non-reputation-related disadvantage," even where the color was

not functional in the utilitarian sense).

In

M-5 Steel Mfg., Inc. v. O’Hagin’s

Inc.

, 61 USPQ2d 1086,

1096 (TTAB 2001)

, the Board considered the proper use of the aesthetic

functionality doctrine in connection with product designs for metal

ventilating ducts and vents for tile or concrete roofs:

This case seems to involve elements of

both utilitarian and aesthetic functionality. Here, for example, there

is evidence of utility in applicant’s patent application, as well as

statements touting the superiority of applicant’s design in applicant’s

promotional literature, and statements that applicant’s design results

in reduced costs of installation. On the other hand, there is no

question that applicant’s roof designs which match the appearance of

surrounding roof tiles are more pleasing in appearance because the

venting tiles in each case are unobtrusive.

Citing extensively from the

TrafFix

,

Qualitex

, and

Brunswick

cases, the Board concluded that the product

designs were functional for a combination of utilitarian and aesthetic

reasons.

Id

. at 1097

er hand, there is no

question that applicant’s roof designs which match the appearance of

surrounding roof tiles are more pleasing in appearance because the

venting tiles in each case are unobtrusive.

Citing extensively from the

TrafFix

,

Qualitex

, and

Brunswick

cases, the Board concluded that the product

designs were functional for a combination of utilitarian and aesthetic

reasons.

Id

. at 1097.

Note that this type of functionality

determination – while employed in connection with a normally "aesthetic"

feature such as color – is a proper use of the functionality doctrine,

necessitating a §2(e)(5) refusal where the evidence establishes that a color

or other matter at issue provides identifiable competitive advantages and,

thus, should remain in the public domain. In

In re Florists’ Transworld

Delivery Inc

., 106 USPQ2d

1784 (TTAB 2013)

, for example, the record included evidence reflecting that,

in the floral industry, color has significance and communicates particular

messages (e.g., elegance, bereavement, Halloween), which extend to floral

packaging. The Board found, therefore, that the examining attorney had

demonstrated a competitive need for others in the industry to use black in

connection with floral arrangements and packaging therefor and concluded

that the proposed mark was functional under §2(e)(5). This is the opposite

of an ornamentation refusal, where the matter at issue serves no

identifiable purpose other than that of pure decoration.

Generally speaking, examining attorneys

should exercise caution in the use of the term "aesthetic functionality," in

light of the confusion that historically has surrounded this issue. In most

situations, reference to aesthetic functionality will be unnecessary, since

a determination that the matter sought to be registered is purely ornamental

in nature will result in an ornamentation refusal under §§1, 2, and 45 of

the Trademark Act, and a determination that the matter sought to be

registered is functional will result in a functionality refusal under

§2(e)(5)

ounded this issue. In most

situations, reference to aesthetic functionality will be unnecessary, since

a determination that the matter sought to be registered is purely ornamental

in nature will result in an ornamentation refusal under §§1, 2, and 45 of

the Trademark Act, and a determination that the matter sought to be

registered is functional will result in a functionality refusal under

§2(e)(5). Use of the term "aesthetic functionality" may be appropriate in

limited circumstances where the proposed mark presents issues similar to

those involved in the

Florists’ Transworld Delivery

,

M-5 Steel

, and

Brunswick

cases

discussed above – i.e., where the issue is one of true functionality under

§2(e)(5), but where the nature of the mark makes the functionality

determination turn on evidence of particular competitive advantages that are

not necessarily categorized as "utilitarian" in nature. Any such use of the

term "aesthetic functionality" should be closely tied to a discussion of

specific competitive advantages resulting from use of the proposed mark at

issue, so that it is clear that the refusal is properly based on the

functionality doctrine and not on an incorrect use of "aesthetic

functionality" to mean ornamentation.

See

TMEP §§1202.05

and

1202.05(b)

for additional discussion and case

references regarding the functionality issue in connection with color

marks.