Research References, 1 McCarthy on Trademarks and Unfair Competition Ch. 7...

1 McCarthy on Trademarks and Unfair Competition Ch. 7 Refs. (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

Research References

West's Key Number Digest

West's Key Number Digest, Trademarks 1051
West's Key Number Digest, Trademarks 1060
West's Key Number Digest, Trademarks 1064

Westlaw Databases
Trademark Trial and Appeal Board (TTABPP)
Federal Unfair Competition: Lanham Act 43a (UNFAIRCOMP)

Legal Encyclopedias
Am. Jur. 2d, Trademarks and Tradenames §§ 37 to 40, 56, 58, 62, 68, 73
C.J.S., Patents § 100
C.J.S., Patents § 103
C.J.S., Trade-Marks, Trade-Names, and Unfair Competition § 19
C.J.S., Trade-Marks, Trade-Names, and Unfair Competition §§ 50 to 52
C.J.S., Trade-Marks, Trade-Names, and Unfair Competition § 58
C.J.S., Trade-Marks, Trade-Names, and Unfair Competition § 60
C.J.S., Trade-Marks, Trade-Names, and Unfair Competition § 98
C.J.S., Trade-Marks, Trade-Names, and Unfair Competition §§ 125 to 127
C.J.S., Trade-Marks, Trade-Names, and Unfair Competition § 158
C.J.S., Trade-Marks, Trade-Names, and Unfair Competition § 161

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Research References, 1 McCarthy on Trademarks and Unfair Competition Ch. 7...

Treatises and Practice Aids

McKenney and Long III, Federal Unfair Competition: Lanham Act 43a §§ 3:4, 3:23, 4:3, 4:4, 4:6 to 4:10, 5:7, 5:9 to 5:11,
5:17 to 5:19, 5:21 to 5:23, 9:21
Hawes, Trademark Registration Practice §§ 1:4, 8:3, 12:3
Krugman, Trademark Trial and Appeal Board Practice and Procedure §§ 2:90, 2:91

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§ 7:1. [Reserved], 1 McCarthy on Trademarks and Unfair Competition § 7:1 (5th ed.)

1 McCarthy on Trademarks and Unfair Competition § 7:1 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

A. MULTIPLE MARKS ON ONE PRODUCT

§ 7:1. [Reserved]

References
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§ 7:2. Multiple marks of one owner, 1 McCarthy on Trademarks and Unfair...

1 McCarthy on Trademarks and Unfair Competition § 7:2 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

A. MULTIPLE MARKS ON ONE PRODUCT

§ 7:2. Multiple marks of one owner

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1060

Multiple Marks Can Identify a Product or Service. There is no doubt that a product or service can be identified by more
than one protectable trademark. The fact that the owner of a mark uses it in conjunction with other symbols or words does not
preclude the owner from owning trademark rights in each designation that the public recognizes as a mark.1

Over a century ago, Judge Learned Hand recognized that a seller is entitled to protection of as many separate marks as the
public in fact recognizes as source indicators:

Now, in principle, there is no possible ground for refusing to recognize any number of trade-marks which are
really such. That is to say, if a man can show that the public has in fact come to recognize six marks each as
separately indicating his manufacture, even though they are used together, it should be no concern of the court to
interfere. ….. Certainly if the public has solved that difficulty of more than one mark, the court becomes officious
in forbidding the maker from continuing to use what the public already understands.2

If each part of a separate combination of marks functions as a trademark, the owner can prevent confusing use of each separate
mark. For example, BLACK & WHITE Scotch whiskey is identified by both the words BLACK & WHITE and a picture of two
dogs—a white Westie and a black Scottie. Since these two marks independently identify and distinguish the product source,
the company can prevent confusingly similar use of BLACK & WHITE alone, even though defendant does not use an image
of the dogs.3

The question is whether the designation in question creates a commercial impression separate and distinct from all other material
appearing on packaging or in advertising.4 As the Trademark Board observed:

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§ 7:2. Multiple marks of one owner, 1 McCarthy on Trademarks and Unfair...

[I]t is settled that a product label can bear more than one trademark without diminishing the identifying function
of each portion. The salient question is whether the designation in question, as used, will be recognized in and
of itself as an indication of origin for this particular product. That is, does this component or designation create a
commercial impression separate and apart from the other material appearing on the label?5

Examples of Multiple Marks. A product or service may be identified by more than mark, such as juxtapositions of a:

• a word mark

• a distinctive logo or design

• a distinctive color motif on product, packaging or in advertising

• a distinctive slogan

• a distinctive mascot person or animal

• a distinctive musical theme or jingle

Background Designs. To be protectable as a separate mark, a background design that is always used in connection with word
marks must create a commercial impression on buyers separate and apart from the word marks. This is discussed at § 7:27. For
example, a geometrical shape that is always used as a background for a word or letter mark cannot serve as a separate mark
unless the background shape creates a commercial impression separate from the word or letter.

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Footnotes
1 Second Circuit
Kelly-Brown v. Winfrey, 717 F.3d 295, 310, 41 Media L. Rep. (BNA) 1881, 106 U.S.P.Q.2d 1875 (2d Cir.
2013) (Quoting treatise: “The fact that a slogan is used in conjunction with a previously existing trademark
does not mean that the slogan does not also function as a mark, for a product can bear more than one
trademark.”)
Fifth Circuit
Blue Bell, Inc. v. Farah Mfg. Co., Inc., 508 F.2d 1260, 1267, 185 U.S.P.Q. 1 (5th Cir. 1975) (“While goods
may be identified by more than one trademark, the use of each mark must be bona fide.”)
Sixth Circuit
Old Dutch Foods, Inc. v. Dan Dee Pretzel & Potato Chip Co., 477 F.2d 150, 154, 177 U.S.P.Q. 496 (6th
Cir. 1973) (“[T]he fact that a product bears more than one mark does not mean that each can not be a valid
trademark. In fact, not infrequently products have more than one trademark imprinted thereon.”)
Seventh Circuit
Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427, 435, 51 U.S.P.Q.2d 1920 (7th Cir.
1999) (“[A] product or organization may be designated by more than one trademark….”); SportFuel, Inc.
v. PepsiCo, Inc., 932 F.3d 589, 596 (7th Cir. 2019) (“Product packaging can include more than one source
indicator…. We look to multiple factors in how a defendant employs a challenged term or phrase to determine
whether it serves as a source indicator and therefore is used as a trademark.”)
Eighth Circuit
Layton Pure Food Co. v. Church & Dwight Co., 182 F. 24, 28–29 (C.C.A. 8th Cir. 1910) (A merchant has
the right to protection of more than one trademark.)
Ninth Circuit

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Carter–Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 800, 167 U.S.P.Q. 713 (9th Cir. 1970) (“A
product can bear more than one trademark….”); SunEarth, Inc. v. Sun Earth Solar Power Co., Ltd., 846 F.
Supp. 2d 1063, 1075, 106 U.S.P.Q.2d 1177 (N.D. Cal. 2012), subsequent determination, (9th Cir. 12-15466)
2012 WL 851238 (N.D. Cal. 2012) (“[I]t is well established that a product can bear more than one trademark,
that each trademark may perform a different function for consumers and recipients of the product.”);
Lucasfilm Ltd. LLC v. Ren Ventures Ltd., 126 U.S.P.Q.2d 1515, 2018 WL 2392963, *4 (N.D. Cal. 2018)
(“[Defendants] argue that ‘Sabacc’ is not a mark for Star Wars products because the ‘Star Wars’ mark on
those products is the source-identifier for the Star Wars franchise. As ‘it is well established that a product can
bear more than one trademark,’ the presence of the ‘Star Wars’ mark on products also bearing the ‘Sabacc’
mark does not, as a matter of law, mean ‘Sabacc’ cannot independently signify the Star Wars franchise.”)
Trademark Board. Amica Mutual Insurance Company v. R. H. Cosmetics Corp., 204 U.S.P.Q. 155, 161,
1979 WL 24882, *5 (T.T.A.B. 1979) (“It is well established that a product can bear more than one trademark,
that each trademark may perform a different function for consumers and recipients of the product, and that
each can be registered providing the mark as used, creates a separate and distinct impression in and of itself
and serves to identify and distinguish the product as it is encountered by consumers in the normal marketing
milieu for such goods.”).

Cal.
American Distilling Co. v. Bellows & Co., 102 Cal. App. 2d 8, 26, 226 P.2d 751, 762, 88 U.S.P.Q. 254
(1st Dist. 1951) (“There is also no merit in the argument that because respondent used other trade-marks or
brands in addition to that of ‘Bellows’ on its labels, that there can be no infringement by the word ‘Fellows’
on appellant's label. It is well established that the fact ‘that the owner of a trade-mark uses in association
with it accessory symbols or words does not deprive him of the right to it.’”)
2 Loonen v. Deitsch, 189 F. 487, 492 (C.C.S.D. N.Y. 1911).

3 Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 161, 136 U.S.P.Q. 508 (9th Cir. 1963)
(Reversing dismissal of case alleging that BLACK AND WHITE beer was an infringement. “The facts
are that [plaintiff] has two federal trademarks;—one is the Black & White mark … and the other, which it
registered at a later date, consisted of the combination of the words ‘Black & White’ and a picture of a pair
of Scottie dogs, one of them black and one of them white. …. This action was brought for infringement of
the first trademark using the words Black & White alone. …[T]he fact that the Scottie dogs do not appear
on defendants' beer is immaterial and irrelevant.”).

4 For a discussion of the “separate commercial impression” test in different contexts, see § 19:59
(“mutilation”) and §§ 7:26 to 7:29 (background designs).

5 The Procter & Gamble Company v. Keystone Automotive Warehouse, Inc., 191 U.S.P.Q. 468, 474, 1976
WL 20910 (T.T.A.B. 1976) (Procter & Gamble car wash detergent was sold with the mark DETAIL in large
letters and “Procter & Gamble Bumper to Bumper Car Care” in much smaller letters. The Board held that
P&G had created sufficient trademark rights in “Bumper to Bumper Car Care” to preclude registration to
another of “Bumper to Bumper” for auto parts).

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1 McCarthy on Trademarks and Unfair Competition § 7:3 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
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Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

A. MULTIPLE MARKS ON ONE PRODUCT

§ 7:3. [Reserved]

References
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1 McCarthy on Trademarks and Unfair Competition § 7:4 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

A. MULTIPLE MARKS ON ONE PRODUCT

§ 7:4. [Reserved]

References
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§ 7:5. Multiple marks of one owner—House marks, 1 McCarthy on Trademarks and...

1 McCarthy on Trademarks and Unfair Competition § 7:5 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

A. MULTIPLE MARKS ON ONE PRODUCT

§ 7:5. Multiple marks of one owner—House marks

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1060

House Mark Used with Product Marks. The most common situation of a plurality of marks appearing on one product is
when a company uses a “house mark” in combination with many different “product marks” which appear on different products
emanating from that “house.” Some examples are NESTLE CRUNCH chocolates, INTEL PENTIUM processor chips, APPLE
iPHONE smart phone, FORD MUSTANG auto and VASELINE INTENSIVE CARE hand lotion.

Validity of a Product Mark Always Used with a House Mark. The fact that a product mark is always used with a house mark
does not detract from the validity and strength of the product mark.1 For example, the house mark KELLOGG can appear on a
label along with the product mark POP-TARTS and not detract from the trademark strength of the product mark POP-TARTS.2
The Federal Circuit observed that a strong product mark does not lose its strength just because it usually appears along with a
house mark: “A unique arbitrary word mark does not lose its strength as a trademark when the manufacturer is identified along
with the branded product. Each identification may have trade significance.”3

The Federal Circuit remarked that because the strength or fame of the senior user's mark plays such a key role in many cases,
those who claim strength for a product mark that is usually used in tandem with a house mark must present evidence that the
product mark by itself has sufficient strength such that the junior user's mark is likely to trigger confusion. The court found
that although the product mark WAVE for audio equipment was usually used in the house-product composite of BOSE WAVE,
there was sufficient evidence that the product mark WAVE by itself was strong enough that the junior user's POWERWAVE
for amplifiers was likely to cause confusion.4

Registering a Mark as a “House Mark.” A mark can be registered and identified as a “house mark” with an explanation of
how the mark can be registered for a broad list of goods or services.5

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Footnotes
1 In re Royal Bodycare, Inc., 83 U.S.P.Q.2d 1564, 2007 WL 616034 (T.T.A.B. 2007) (“Cases have frequently
held that an applicant's use of its corporate name or house mark along with another trademark or trade name
does not create a unitary mark.” Permitting registration of the product mark NANOCEUTICAL separate
from the house mark RBC because the product mark creates a separate commercial impression).

2 Kellogg Company v. General Foods Corporation, 166 U.S.P.Q. 281, 1970 WL 9549, *3 (T.T.A.B. 1970)
(“That the primary or house mark ‘KELLOGG’ always appears on the labels, packages, and advertising
material does not detract from the trademark function of ‘POP-TARTS,’ per se, since it is always displayed in
large script and in a logo distinctly different from ‘KELLOGG’ and in a manner likely to create a commercial
impression separate and apart from ‘KELLOGG.’”). Accord: CSL Silicones, Inc. v. Midsun Group Inc., 301
F. Supp. 3d 328, 349 (D. Conn. 2018) (Using a product mark with a house mark does not diminish or impair
the priority date to be given the product mark.); Viacom International v. IJR Capital Investments, L.L.C.,
891 F.3d 178, 189, 127 U.S.P.Q.2d 1112 (5th Cir. 2018) (That a product mark always appears with a house
mark “does not threaten its status as a trademark.”).

3 Bridgestone Americas Tire Operations, LLC v. Federal Corp., 673 F.3d 1330, 1336, 102 U.S.P.Q.2d 1061
(Fed. Cir. 2012) (The product marks TURANZA and POTENZA for tires did not lose their strength just
because they always appeared with the house mark BRIDGESTONE. A likelihood of confusion was found
with applicant's MILANZA for tires.).

4 Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 U.S.P.Q.2d 1303 (Fed. Cir. 2002) (“If a product
mark is used in tandem with a famous house mark … has independent trademark significance, it should not
be a great burden to substantiate the point.”). Accord: Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 80
U.S.P.Q.2d 1810 (9th Cir. 2006) (Whether the product mark ROXY had independent trademark significance
when used with a house mark in the composite QUICKSILVER ROXY was an issue of fact dependent on
the manner of use); The H.D. Lee Company, Inc. v. Maidenform, Inc., 87 U.S.P.Q.2d 1715, 1727, 2008 WL
1976596 (T.T.A.B. 2008) (Opposer did not prove that its product mark ONE TRUE FIT was a strong mark
apart from the house mark LEE with which it was always used. Opposition was dismissed.); San Diego
County Credit Union v. Citizens Equity First Credit Union, 2021 WL 2104969, *8 (S.D. Cal. 2021), aff’d in
part, rev’d in part on other grounds, 65 F.4th 1012 (9th Cir. 2023) (Applying Quiksilver analysis and finding
that Citizens Equity First Credit Union had not established a separate service mark significance in the slogan
“NOT A BANK. BETTER” apart from the house mark.).

5 T.M.E.P. § 1402.03(b) (April 2017 ed.) (“In an application for registration of a house mark, the identification
of goods may include wording such as ‘a house mark for …..’ The examining attorney should require that the
applicant provide catalogues showing broad use of the mark or similar evidence to substantiate this claim.”).
See discussion of what qualifies as a “house mark” in In re Royal Bodycare, Inc., 83 U.S.P.Q.2d 1564, 2007
WL 616034, *4 (T.T.A.B. 2007).

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McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
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Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

A. MULTIPLE MARKS ON ONE PRODUCT

§ 7:6. [Reserved]

References
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1 McCarthy on Trademarks and Unfair Competition § 7:7 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

A. MULTIPLE MARKS ON ONE PRODUCT

§ 7:7. Multiple marks of one owner—Too many marks: more is less

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1060

Not Every Commercial Designation is a Trademark. There is a limit on the trademark significance of every word, number,
design, picture, slogan, and the like that appear on product packaging, advertising and internet pages. Not everything that
appears can be of trademark significance. In some cases, applicants for registration or plaintiffs in litigation try to carve out
of a label or promotional material some words here and a design there and claim exclusive rights to some or all of the pieces
as a “trademark.” But a word used in the middle of a sentence in an advertising message or a design used only as decorative
background on a web page is not likely to be perceived as a trademark, service mark or trade dress. To do the job of a trademark
or service mark, a designation must first create a commercial impression separate and apart from accompanying material.1

Not everything appearing on packaging or in advertising is a trademark constitutes a separate mark that can be registered. As the
Trademark Board observed: “[N]ot all words, devices, symbols and the like necessarily function as trademarks notwithstanding
that they may have been adopted with the intent of doing so …. Before there can be registrability, what an applicant seeks
to register must be used as a trademark.”2 As Trademark Board Member Lefkowitz noted, one cannot pry one piece out of
a “morass of figures and printed matter” appearing in an advertisement and claim it as a valid trademark. In such a case, he
observed that the claimed phrase “is so obfuscated in the whole scene that it is hardly likely to make any impact, much less a
significant impression on the individual encountering the advertisement.”3

Over-Reaching is Not Clever Strategy. A company that claims trademark significance in each and every element of advertising
and promotion is over-reaching and may alienate the judge whose protection is sought:

So now, from the standpoint of acquiring property rights in these many things by this plaintiff, it is like the boy of
the fable who reached into the jar to get nuts. The boy was so greedy and grabbed so many that he couldn't get his
hand out of the jar and lost them all. This plaintiff …. has attempted to adopt so many alleged trademarks, trade
names, trade slogans, and trade configurations that, if one were to understand this fully and speak intelligently

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about all the baits, slogans, boosts and names that have been used, it would be necessary to prepare a dictionary of
considerable size. … For example, I counted on one of the boxes used by plaintiff … eight separate and distinct
things in which plaintiff claims to have acquired property rights.4

Author's Comment. When a label or advertisement contains a cluttered morass of alleged marks in several words, slogans, colors
and designs, no one of these things is likely to make a significant trademark impression on customers. If a given designation is
a trademark, that should be immediately evident to the ordinary buyer. If it takes extended analysis and legalistic argument to
strive to attempt to prove that a designation has been used in a trademark sense, then it has not.

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Footnotes
1 In re Chemical Dynamics, Inc., 839 F.2d 1569, 1570, 5 U.S.P.Q.2d 1828 (Fed. Cir. 1988) (“[T]he applicant
therefore must show that the portion sought to be registered creates a separate and distinct commercial
impression, which thereby performs the trademark function of identifying the source of the merchandise to
the customers.”). See discussion at § 3:6.

2 In re Illinois Bronze Powder & Paint Co., 188 U.S.P.Q. 459, 462, 1975 WL 20850 (T.T.A.B. 1975). Accord:
In re Eagle Crest, Inc., 96 U.S.P.Q.2d 1227, 1229, 2010 WL 3441109 (T.T.A.B. 2010) (“It is well settled
that ‘not every designation that is placed or used on or in connection with a product necessarily functions
… as a trademark ….’”).

3 In re Morganroth, 208 U.S.P.Q. 284, 287-88, 1980 WL 30167 (T.T.A.B. 1980) (Rejecting registration of
the words “Natur-All-Ize Your Hair Coloring” when the phrase appeared in the body of an advertisement
for hair styling services. “Wishing does not make a trademark or service mark be. It must be used as such
…. The salient question is whether the designation in question, as used, will be recognized in itself as an
indication of origin for the particular product or service. That is, does this designation create a commercial
impression separate and apart from the other material appearing on the label or advertisement.”).

4 James Heddon's Sons v. Millsite Steel & Wire Works, 35 F. Supp. 169, 176, 47 U.S.P.Q. 106 (E.D. Mich.
1940), decree aff'd by, 128 F.2d 6, 53 U.S.P.Q. 579 (C.C.A. 6th Cir. 1942) (“Plaintiff has used slogans, words,
names, styles, shapes, colors and designs in such a wholesale and indiscriminate way that it can never by that
method build up its business around any one of them, and the public will never be deceived by somebody
else's use of one of them. A manufacturer cannot build a business up around a thousand slogans. He cannot
take a thousand words out of the dictionary and build a business around all of them and make the public
stay away from all of them….” Complaint dismissed.).

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McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
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Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

A. MULTIPLE MARKS ON ONE PRODUCT

§ 7:8. Co-Branding: One product with multiple marks of multiple owners

References
Co-Branding. A single product may be “co-branded” and have multiple marks owned by different firms to indicate their
respective goods or services that are incorporated into the sale of the final product. A common example is a manufacturer's
mark and retail merchant's mark combination in which a product has one mark identifying the manufacturer and another mark
identifying the retail merchant.1 For example, CALVIN KLEIN wearing apparel retailed by MACY'S. Co-branding can also
consist of services that are provided to those who buy goods. Thus there can be service supplier-product retailer co-branding
such as a STARBUCKS outlet advertising that it provides patrons with the Wi-Fi service of AT&T.

Ingredients in or Parts of a Product. Some co-branding may involve a product that contains parts or ingredients such as a
DELL personal computer labeled with both an INTEL INSIDE label (indicating that the processor is made by Intel) and a
WINDOWS label (indicating that the computer was sold with a pre-loaded Microsoft operating system.). Some LEXUS models
contain MARK LEVINSON sound systems and some CHRYSLER models contain HARMAN KARDON audio systems. Many
motion pictures indicate that the sound technology is from DOLBY laboratories and SAMSUNG mobile phones operate on
the ANDROID operating system.

Food ingredients can be co-branded, such as PILLSBURY chocolate chip cookie mix advertising it is made with HERSHEY
KISSES. Another example of co-branding is a promotional item such as a T-shirt imprinted with both the mark of a university
and the mark of the apparel manufacturer.2 Similar are toys or other items whose origin and sponsorship is identified by a
motion picture title or character name as well as by the trademark of the manufacturer of the item, such as a DARTH VADER
action figure made by HASBRO or a MICKEY MOUSE toy made by FISHER PRICE.3

Co-branded marking is entirely appropriate so long as the separate identifying function of both marks is apparent to customers,
either explicitly or implicitly.4

Multiple Marks Can Identify Different Entities Performing Different Functions. In holding that the name of a performing
group can be a trademark for sound recordings even though the mark of the record producer also appears, the Federal Circuit
observed that: “The marks of different entities may, of course, appear on a single product where they serve separate functions;
for example, manufacturer/distributor, ingredient/product, licensor/licensee.”5

Co-Branding Without Permission. A product maker can use the trademark of an ingredient without the permission of the
trademark owner so long as consumers are not confused or deceived into thinking that the maker of the ingredient is responsible
for the nature or quality of the finished product. Thus a maker of tuna salad was allowed to prominently state on its label that

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it was “Made with Bumble Bee Tuna.”6 But the trademark of a product cannot be used without license if the product is put to
use as a part of a new product in a way not intended by the maker.7

Different Ownership of Word Mark and Trade Dress. In some unusual instances, one entity may own the word trademark on
a product while a different entity owns the trade dress of the same product.8

Co-ownership of a Combined Mark. In some cases, the co-branding parties may wish to combine their separate marks into
a single composite mark and be co-owners of that double mark. That is risky and raises difficult issues of the validity of co-
ownership of a mark.9

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Footnotes
1 Regarding “merchant's marks” see §§ 16:46 to 16:47. See e.g. Yard-Man, Inc. v. Getz Exterminators, Inc.,
157 U.S.P.Q. 100 (T.T.A.B. 1968) (A lawn mower manufactured by Yard-Man, Inc. and exclusively retailed
by Sears, Roebuck & Co. was properly identified as “Product of Yard-Man, Inc., Jackson, Michigan for
Sears, Roebuck & Co.”).

2 University of Pittsburgh v. Champion Products Inc., 686 F.2d 1040, 1047, 215 U.S.P.Q. 921 (3d Cir. 1982),
cert. denied, 459 U.S. 1087, 74 L. Ed. 2d 933, 103 S. Ct. 571 (1982) (University of Pittsburg successfully
sued apparel maker Champion for selling wearing apparel imprinted with the university's name and logo.
“[W]hile the market for imprinted soft goods … exists as a result of Champion's efforts, the ultimate demand
for the product is a direct result of the efforts of Pitt to make its name widely known through athletic and
educational accomplishments. … [A] consumer does not desire a “Champion” T-shirt, he (or she) desires
a “Pitt” T-shirt.”). See University Book Store v. University of Wisconsin Board of Regents, 33 U.S.P.Q.2d
1385, 1994 WL 747886 (T.T.A.B. 1994) (College mascot imprinted on wearing apparel is protected as a
mark of the University of Wisconsin. “[T]o a significant segment of the purchasing public, the subject marks
signify applicant as the secondary source for apparel imprinted with those marks.”).

3 See §§ 3:4, 10:18 to 10:22; Bryer, Lebson & Montalvo, Shared Branding: Associated Use of Trademarks
and Trade dress Through Shared Retail Space, 105 Trademark Rep. 772 (2015).

4 Educational Development Corporation v. Educational Dimensions Corporation, 183 U.S.P.Q. 492, 495, 1974
WL 20009 (T.T.A.B. 1974) (“A product can bear more than one trademark.” EDC on educational materials
indicated the author of the materials and GINN or MACMILLAN identified the publisher or distributor.);
Safe-T Pacific Company v. Nabisco, Inc., 204 U.S.P.Q. 307, 315, 1979 WL 24888 (T.T.A.B. 1979) (The
law allows “the inclusion on the product of the distributor's trademark and trade name along with the
manufacturer's trademark so long as the effect thereof upon customers and prospective customers is not to
confuse them as to the source of the goods or to obliterate the distinction between the distributor and the
manufacturer ….”); Amica Mutual Insurance Company v. R. H. Cosmetics Corp., 204 U.S.P.Q. 155, 161,
1979 WL 24882 (T.T.A.B. 1979) (“[A] party other than a manufacturer, such as a merchant or distributor
of goods, may acquire rights in and to a trademark used in the sale or distribution of the manufactured
goods and … it does not make any difference that the manufacturer's mark may likewise appear on the
goods providing that the mark is used in such a manner as to perform its function of denoting the vendor
or distributor of the goods.”).

See Lefkowitz, Double Trademarking, 73 Trademark Rep. 11 (1983).

5 In re Polar Music Intern. AB, 714 F.2d 1567, 1571 n.3, 221 U.S.P.Q. 315 (Fed. Cir. 1983). See Cardon,
Co-Branding with Influencers is in Fashion and No Longer a Trademark Faux Pas, 108 Trademark Rptr.
1057, 1058 (2018) (“[T]he notion of co-branding has expanded to include the joinder of an untested fashion

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and celebrity social media influencer name with an established fashion house to cross-promote a product or
collection of products in the hope of attraction the influencer's digital audience.”).

6 Bumble Bee Seafoods, L.L.C. v. UFS Industries, Inc., 71 U.S.P.Q.2d 1684, 2004 WL 1637017 (S.D. N.Y.
2004) (defendant sold its tuna salad in five pound tubs only to delicatessen operators, not to consumers.
Plaintiff conceded that defendant was entitled to list in small type the Bumble Bee mark within the list of
ingredients but argued that it could not use it in the larger format shown in the illustration at § 25:35.50.).

7 Suzuki Motor Corp. v. Jiujiang Hison Motor Boat Mfg. Co., Ltd., 102 U.S.P.Q.2d 1555, 2012 WL 529967
(S.D. Fla. 2012) (Defendant installed a genuine SUZUKI snowmobile engine as the power plant in
defendant's inboard motorboat and touted the fact that its motor boat used a SUZUKI engine. Because
the engine was used for a purpose for which it was not designed, damage to plaintiff's reputation could
result. TRO was granted against use of the mark.). See Pepsico, Inc. v. #1 Wholesale, LLC, 84 U.S.P.Q.2d
1040, 2007 WL 2142294 (N.D. Ga. 2007) (Injunction and recall ordered where defendant had transformed
PepsiCo cola cans into so-called “stash cans” used to hide valuables (and often to conceal illegal drugs).
“[C]onsumers will mistakenly believe either that PepsiCo is the source of [defendant's] infringing safes or
that PepsiCo authorized them.”).

8 See discussion at § 8:2.

9 See discussion and cases at §§ 16:40 to 16:41.

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1 McCarthy on Trademarks and Unfair Competition § 7:9 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:9. Letters as trademarks

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1052

Letters as Non-Descriptive, Arbitrary Marks. Like any other symbol, an individual letter or a group of letters, not forming
a recognizable word, can function as a mark.1 An acronym or an arbitrary arrangement of letters may qualify for trademark
protection like any other type of “arbitrary” or “fanciful” mark, without need for proof of secondary meaning.2

Letters as Descriptive Designations Requiring a Secondary Meaning. Some letter combinations may be classified as directly
“descriptive” of the goods or services3 or as an abbreviation for a descriptive term.4 The validity and strength of letter marks
is discussed at § 7:11.

Letters as Generic Names. Some letter abbreviations may be classified in the “generic name” category and ineligible for any
trademark protection.5

Infringing Uses of Letter Combination Marks. The scope of protection of letter mark combinations is discussed at § 7:10. The
types of uses which may infringe various letter combination marks are discussed elsewhere in this treatise at §§ 23:33 to 23:35.

Alphanumeric Combinations. A combination of letters and numbers is capable of protection as a valid trademark and is subject
to the same rules as applied to numbers and letters alone.6

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Footnotes

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§ 7:9. Letters as trademarks, 1 McCarthy on Trademarks and Unfair Competition §...

1 Mishawaka Rubber & W. Mfg. Co. v. Bata Narodni Podnik, 42 C.C.P.A. 872, 222 F.2d 279, 287, 105 U.S.P.Q.
432 (1955) (“[A] single letter of the alphabet may constitute a valid trade-mark and the owner's monopoly
therein protected in courts of law and equity.” Letter “B” in red disc was a valid mark for rubber goods).

2 Electronic Communications, Inc. v. Electronic Components for Industry Co., 443 F.2d 487, 488, 170
U.S.P.Q. 118 (8th Cir. 1971) (“ECI” (acronym for Electronic Communications, Inc.) held an arbitrary and
fanciful mark which was infringed by a competitive use); Michelin Tire Corporation v. the General Tire
& Rubber Company, 202 U.S.P.Q. 294, 298, 1979 WL 24838, *6 (T.T.A.B. 1979) (“There is nothing …
in decisional law to preclude a single letter from functioning as a trademark and, in fact, from serving as
an arbitrary and strong mark.” Michelin used the trademark “X” on its steel belted tires and successfully
opposed registration of applicant's “STEELEX RADIAL” marks on tires.); Martahus v. Video Duplication
Services, Inc., 3 F.3d 417, 423, 27 U.S.P.Q.2d 1846 (Fed. Cir. 1993) (“An acronym or abbreviation made up
of the first letters of the words in the name of a business may have trade name or service mark significance.”);
AAA Alarm & Security Incorporated v. A3 Smart Home LP, 2021 WL 3857417, *2 (D. Ariz. 2021) (AAA
Alarm & Security versus AAA Smart Home security business. Preliminary injunction granted. “Here, the
AAA mark is likely arbitrary because there is no fundamental connection between the letters and security
services, and the letters offer no description of the products they are associated with.”).

3 Nature's Bounty, Inc. v. Basic Organics, 432 F. Supp. 546, 552, 196 U.S.P.Q. 622 (E.D. N.Y. 1977) (“B-100”
was descriptive of vitamins with 100 milligrams of vitamin B. “As B-100 cannot be said to have acquired a
secondary meaning, defendant has not infringed the trademark owned by plaintiff.”).

4 See § 11:32. (Descriptive abbreviations); T.M.E.P 1209.03(h) (Oct 2018 ed.) (“As a general rule, an acronym
or initialism cannot be considered descriptive unless the wording it stands for is merely descriptive of
the goods or services, and the acronym or initialism is readily understood by relevant purchasers to be
‘substantially synonymous’ with the merely descriptive wording it represents.”).

5 See § 12:37. (Generic name abbreviations.) For example: In re General Aniline & Film Corporation,
136 U.S.P.Q. 306, 1962 WL 8564 (T.T.A.B. 1962), (“pvp” was merely an abbreviation of the generic
name of the user's goods—polyvinylpyrrolidone and not registerable on the Supplemental Register.); In re
LG Electronics, Inc., 2017 WL 5197901, *7 (T.T.A.B. 2017) (non-precedential. “QLED” is a recognized
abbreviation for “quantum dot light emitting diode” display and is a generic name for an ingredient of mobile
phones and computers. Not registerable on the Supplemental Register.).

6 For example: RJ Machine Co., Inc. v. Canada Pipeline Accessories Co. Ltd., 116 F. Supp. 3d 795, 811 (W.D.
Tex. 2015) (50E is a valid mark for flow conditioners and is not a generic name.); Sorensen v. WD-40 Co.,
792 F.3d 712, 731, 115 U.S.P.Q.2d 1128 (7th Cir. 2015) (The mark “WD-40” for a lubricant is a “well-
known trademark.”). See §§ 7:11, 7:14.

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1 McCarthy on Trademarks and Unfair Competition § 7:10 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:10. Letters as trademarks—Scope of protection of letter combinations

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1052

Scope of Protection as a Strong Mark. Arrangements of letters have often been given a comparatively wide scope of protection
as relatively strong marks. This is based on the assumption that it is more difficult for buyers to remember a series of letters than
marks consisting of recognizable words.1 This difficulty makes confusion likely to follow when a very similar combination of
letters is used by another.2 This is also discussed in the chapter on likelihood of confusion at § 23:33. The Court of Customs
and Patent Appeals remarked:

We conclude that it is more difficult to remember a series of arbitrarily arranged letters than it is to remember
figures, syllables, or phrases, and that the difficulty of remembering such multiple-letter marks makes the
likelihood of confusion between such marks, when similar, more probable.3

Letter combinations that are arbitrary arrangements or are not a familiar acronym have no meaning as recognizable words.
This lends more weight to similarity in sight and sound: “Two names that look and sound similar will naturally seem even
more similar where there are no differences in meaning to distinguish them.”4 Many consumers recognize acronym brands as
trademarks but do not know what the letters stand for.5

Author's Comment: With Familiarity, Consumers May Distinguish Similar Letter Combinations. Given sufficient exposure
and familiarity, the public may learn to distinguish between similar commercial abbreviations. While the initials of television
broadcasting networks A.B.C. and N.B.C. and C.B.C. differ by only one letter, over time the public has learned to differentiate
the sources symbolized. Knowledgeable Southern Californians are likely to be able to distinguish these two universities: USC
and USD. (University of Southern California and University of San Diego).

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Footnotes
1 EA Engineering, Science, and Technology, Inc. v. Environmental Audit, Inc., 703 F. Supp. 853, 856, 12
U.S.P.Q.2d 1294, 1296 (C.D. Cal. 1989) (Plaintiff's mark “EA” for environmental consulting was a strong
mark. But a preliminary injunction was denied against a competitor's “EA” logo mark. “Plaintiff's ‘EA’
service mark is an inherently strong arbitrary mark. Arbitrary arrangements of letters have generally been
given a wide scope of protection …. Plaintiff's mark does not describe environmental services generally nor
is it suggestive or descriptive of any particular services offered by Plaintiff.”).

2 Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 1548, 14 U.S.P.Q.2d 1840, 1841 (Fed. Cir.
1990) (Finding a likelihood of confusion in TMS v. TMM for competitive specialized computer software.
“It is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures. ….
It is especially hard to distinguish between TMS and TMM when the marks only differ by the last letter.
Because it is hard to distinguish between these letters, the mark TMM is confusing with TMS.”); CAE, Inc.
v. Clean Air Engineering, Inc., 267 F.3d 660, 684, 60 U.S.P.Q.2d 1449 (7th Cir. 2001) (“The CAE mark is
an unpronounceable set of letters and thus falls into the category of letter marks generally accorded broader
trademark protection because ‘it is more difficult to remember a series of arbitrarily arranged letters than it
is to remember words, figures, phrases or syllables.’” Quoting treatise.).

3 Dere v. Institute for Scientific Information, Inc., 57 C.C.P.A. 875, 420 F.2d 1068, 1069, 164 U.S.P.Q.
347 (1970) (Applicant's “IAI” for book indexes was confusingly similar to Opposer's “ISI” magazine on
chemistry.). Accord: Edison Brothers Stores, Inc. v. Brutting E.B. Sport-International Gmbh, 230 U.S.P.Q.
530, 1986 WL 83596, *2 (T.T.A.B. 1986) (Referring to “the well-established principle of our trademark
law that confusion is more likely between arbitrarily arranged letters than between other types of marks.
This principle was set forth fifty years ago in the decision of the Court of Customs and Patent Appeals in
Crystal Corp. v. Manhattan Chemical Manufacturing Co., 75 F.2d 506, 25 U.S.P.Q 5, (1935).” The Board
cited many examples of similar letter combinations which were held confusingly similar. Here, “EB” was
confusingly similar to “EBS” logo.).

Compare: ADT LLC v. Alarm Protection Technology Flaorida, LLC, 646 Fed. Appx. 781, 787 (11th Cir.
2016) (ADT alarm and security service versus competitor APT: affirmed jury verdict of no infringement.
Jury instruction that “the law provides expanded protection for trademarks made up of acronyms or letter
combinations…” was erroneous but not prejudicial. “But the mark is not afforded ‘expanded’ protection as
a matter of law simply because it is a word or letter combination. Indeed, none of the cases on which ADT
relies describe the protection afforded to acronyms and letter combinations as ‘expanded.’”).

4 Kos Pharmaceuticals, Inc. v. Andrx Corp., 369 F.3d 700, 713, 70 U.S.P.Q.2d 1874 (3d Cir. 2004) (ADVICOR
and ALTOCOR are confusingly similar when both used for prescription cholesterol reducing drugs). See
The Christian Broadcasting Network, Inc. v. ABS-CBN International, 84 U.S.P.Q.2d 1560, 1569, 2007 WL
2253483, *10 (T.T.A.B. 2007) (To sustain an argument that the conflicting letters are recognizable acronyms
with different meanings. there must be some evidence to prove that the public is aware of the underlying
derivation of the letters. Here, there was no evidence that the public was aware of the meaning of the
conflicting initials).

5 Appliance buyers aware of the “LG” brand are probably not aware that it is an acronym for “Lucky Goldstar,”
resulting from a merger between Lucky and Goldstar. The company features the slogan “Life's good” to
promote some meaning to the two letters. Buyers of “Scotch Tape” and “Post-It” notes may be aware that
the maker is “3M” but unaware that it is an acronym for “Minnesota Mining and Manufacturing.” Drivers of
“BMW” autos may not be aware that it is an acronym for “Bayerische Motoren Werke” (“Bavarian Motor
Works.”). The “CVS.” chain of pharmacies and drug stores was originally called “Consumer Value Stores.”
The international delivery service “DHL” is an acronym of it three founders: Dalsey, Hillblom and Lynn.

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1 McCarthy on Trademarks and Unfair Competition § 7:11 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:11. Letters as trademarks—Validity and strength of letters and letter combinations

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1052

A Single Letter Can Serve as a Trademark. A single letter is capable of serving as a trademark. A single letter is also capable
of being classified as an arbitrary mark not requiring proof of a secondary meaning.1 But like any other designation, to achieve
trademark status, a single letter must be used in such a prominent manner as to identify and distinguish the goods or services.2

A Letter or Group of Letters Used as Part of a Composite. Whether a single letter or group of letters always used as part of a
composite mark functions separately as a mark depends upon the probable impact upon the consumer.3 For example, consumer
perception is determinative of whether a product mark consisting of letters is protectable as a separate trademark even though
it is always used as part of a composite including a house mark.4 But if the letters do not, by themselves, create a separate
commercial impression apart from the composite, then they do not function as a separate mark.5

Letters That Are a Recognizable Descriptive or Generic Abbreviation or Acronym. If a series of letters is a recognizable
abbreviation for a descriptive or generic term, then the abbreviation is also classified as descriptive or generic.6 For example,
“pvp” was held to be an abbreviation of the generic name of the user's goods—polyvinylpyrrolidone.7 Similarly, “B and
B” for Benedictine and brandy cocktail was held descriptive of the ingredients of the product.8 The letters “XL” as used in
PROCARDIA XL, the extended release version of PROCARDIA cardiovascular drug, were held to be descriptive.9

Letters that do not form an abbreviation of a recognizable generic name or description of the goods or services can be classified
as fanciful marks.10

Initials Indicating a Title or Degree. Initials used with a personal name may achieve trademark status, but only if they identify
the source of goods or services, not just indicate that that person is the recipient of a title or degree, such as J.D., M.D. or C.P.A.11

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Footnotes
1 Michelin Tire Corporation v. the General Tire & Rubber Company, 202 U.S.P.Q. 294, 298, 1979 WL 24838,
*6 (T.T.A.B. 1979) (“There is nothing … in decisional law to preclude a single letter from functioning as
a trademark and, in fact, from serving as an arbitrary and strong mark.” Michelin used the trademark “X”
on its steel belted tires and successfully opposed registration of applicant's “STEELEX RADIAL” marks
on tires.); Quality Semiconductor, Inc. v. QLogic Corp., 31 U.S.P.Q.2d 1627, 1994 WL 409483 (N.D. Cal.
1994) (Preliminary injunction against infringement by competitor of single letter “Q” used as trademark
for integrated circuits. “The Court finds that [the ‘Q’] mark is a relatively strong mark entitled to a wide
scope of protection.”); Star Industries, Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 383, 75 U.S.P.Q.2d 1098
(2d Cir. 2005) (Stylized letter “O” for orange flavored vodka. “The district court erred when it described
the Star ‘O’ as a basic geometric shape or letter, and therefore rejected inherent distinctiveness and required
a showing of secondary meaning.” But the mark was “weak” and not infringed by “O” on orange-flavored
rum.); ESPN, Inc. v. Quiksilver, Inc., 586 F. Supp. 2d 219, 225 (S.D. N.Y. 2008) (“A single letter can never
be other than ‘arbitrary,’ i.e., it could not be considered a generic term for a product or merely descriptive
of the product to which it is associated.” The letter “X” could be a valid mark for wearing apparel.); Team
Gordon, Inc. v. Specialized Bicycle Components, Inc., 98 U.S.P.Q.2d 1650, 2010 WL 5058624 (C.D. Cal.
2010) (Preliminary injunction granted against use of “S” logo on auto race car show and affiliated energy
drinks at the behest of owner of the “S” mark for bicycles. “[The moving party's] mark is stylized and
arbitrary. A single letter is always arbitrary.”).

2 Professional Sound Services, Inc. v. Guzzi, 349 F. Supp. 2d 722, 731-732, 77 U.S.P.Q.2d 1375 (S.D. N.Y.
2004), aff'd, 159 Fed. Appx. 270 (2d Cir. 2005) (“A single letter can never be other than ‘arbitrary,’ i.e.,
it could not be considered a generic term for a product or merely descriptive of the product to which it is
associated.” While the letter “S” was capable of trademark status, plaintiff failed to prove that it used “S”
as a trademark for its audio equipment).

3 Fulkerson v. the Muter Company, 135 U.S.P.Q. 379, 1962 WL 8667 (T.T.A.B. 1962) (The letter J did
not create an impression separate from the word JENSEN with which it was always used.); See § 19:59
(Registration and “mutilation.”).

4 Textron Inc. v. Cardinal Engineering Corporation, 164 U.S.P.Q. 397, 399, 1969 WL 8396, *4 (T.T.A.B.
1969) (“[W]hether or not a particular designation used on a product along with a house mark possesses a
separate trademark significance depends on the manner in which it is used and the commercial impression
engendered as a result of such use. … That is, will the designation, as used, be recognized in and of itself
as an indication of origin for the particular product?” “ZIP” held protectable as a separate mark for saws
even though used as part of a design with the house mark HOMELITE.). See In re Royal Bodycare, Inc.,
83 U.S.P.Q.2d 1564, 2007 WL 616034 (T.T.A.B. 2007) (“Cases have frequently held that an applicant's use
of its corporate name or house mark along with another trademark or trade name does not create a unitary
mark.” Permitting registration of the product mark NANOCEUTICAL separate from the house mark RBC
because the product mark creates a separate commercial impression). See § 7:5 regarding “house marks.”

5 For a discussion of the “separate commercial impression” test in different contexts, see §§ 19:59
(“mutilation”) and 7:26 to 7:29 (background designs). See Chemeon Surface Technology LLC v. Metalast
International, Inc., 2022 WL 1797316 (9th Cir. 2022) (Affirmed dismissal of infringement of alphanumeric
designations because they were not proven to be valid marks. They were always used with the house mark
and never used alone.).

6 See §§ 11:32 (Descriptive abbreviations) and 12:37 (Generic name abbreviations); T.M.E.P 1209.03(h) (Oct
2018 ed.) (“As a general rule, an acronym or initialism cannot be considered descriptive unless the wording it

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stands for is merely descriptive of the goods or services, and the acronym or initialism is readily understood
by relevant purchasers to be ‘substantially synonymous’ with the merely descriptive wording it represents.”).

7 In re General Aniline & Film Corporation, 136 U.S.P.Q. 306, 1962 WL 8564 (T.T.A.B. 1962) (Not
registerable on the Supplemental Register. “[Applicant's mark] is essentially the name of applicant's goods
and the recognized abbreviation for such goods. These designations, manifestly, are not proper subject matter
for trademark registration….”). See Electronics Corporation of America v. McGraw-Edison Company, 160
U.S.P.Q. 826, 1964 WL 10857 (T.T.A.B. 1964) (Opposition sustained: Letters “U/V” held merely descriptive
of flame detection equipment using ultraviolet radiation); In re Initial Teaching Alphabet Publications,
Inc., 153 U.S.P.Q. 684, 1967 WL 7657 (T.T.A.B. 1967) (“ITA” held an abbreviation of “initial teaching
alphabet,” the name of the product allegedly identified by the letters. The design display of the letters
was not itself distinctive. Refused registration on the Supplemental Register.); In re Buty-Wave Products
Co., Inc., 198 U.S.P.Q. 104, 1978 WL 21194 (T.T.A.B. 1978) (Letter “E” was descriptive of a vitamin
E ingredient in the cosmetic and toiletry field.); In Re Bedgear LLC, 2020 WL 564576, *3 (T.T.A.B.
2020) (non-precedential. “Generally, single letter marks may be considered inherently weak if the letter is
recognizable as an abbreviation for a descriptive or generic term. Single letter marks may also be shown
to be commercially weak due to widespread public use of the same or similar marks for similar goods.”
Registration for the letter “M” for mattresses was rejected as confusingly similar to registrations for “M.”).

8 Martell & Co. v. Societe Anonyme De La Benedictine, Distillerie De La Liqueur De L'Ancienne Abbaye
De Fecamp, 28 C.C.P.A. 851, 116 F.2d 516, 519, 48 U.S.P.Q. 116 (1941) (“‘B and B’ is a designation of
Benedictine and brandy in equal parts and … the designation has been popularly and exclusively so used in
the United States for approximately thirty years…. [thus] we think that the term is necessarily descriptive
of the said goods….”).

9 Pfizer Inc. v. Astra Pharmaceutical Products, Inc., 858 F. Supp. 1305, 1319, 33 U.S.P.Q.2d 1545 (S.D.
N.Y. 1994) (“Pfizer uses XL as a descriptive suffix—Pfizer uses XL to describes the utility, purpose,
function, qualities and characteristics of its product. No secondary meaning proven: summary judgment for
defendant.”).

10 Electronic Communications, Inc. v. Electronic Components for Industry Co., 443 F.2d 487, 488, 170
U.S.P.Q. 118 (8th Cir. 1971) (“ECI” (acronym for Electronic Communications, Inc.) held an arbitrary and
fanciful mark which was infringed by a competitor's use); American Hosp. Supply Corp. v. Advanced Health
Systems, Inc., 212 U.S.P.Q. 181, 1980 WL 30345, *2 (N.D. Ill. 1980) (The letters “AHS” composed a validly
registered trademark. “AHS is … a fanciful mark, for the letters standing alone do not describe the goods
or services with which the mark is used; the letters require explanation before they convey meaning. …A
consumer seeing the letters is likely to associate them with American.”); YKK Corp. v. Jungwoo Zipper Co.,
Ltd., 213 F. Supp. 2d 1195, 1200, 64 U.S.P.Q.2d 1192 (C.D. Cal. 2002) (“The YKK trademark [for zippers]
is extremely strong—it is comprised of an arbitrary arrangement of letters that serves no purpose other than
to identify YKK and the source of its products. YKK is derived from ‘Yoshida Kogyo Kabushikikaisha,’
the original company name, and is in no way either descriptive or suggestive of the company's products.”
Infringement was found on summary judgment.).

11 Society of Financial Examiners v. National Ass'n of Certified Fraud Examiners Inc., 41 F.3d 223, 227, 33
U.S.P.Q.2d 1328 (5th Cir. 1995), (Plaintiff's “CFE” was an abbreviation for “certified financial examiner.”
There was a triable issue of fact whether it was a generic name. “To secure protection, … ‘CFE’ must
invoke the source of the designation and not just intimate a financial examiner who has been certified. Like
J.D., M.B.A., Ph.D., and C.P.A., ‘certified financial examiner’ could be poised to fail this test.”). See §
19:93 regarding the use of initials as a certification mark for an organization that certifies the competence
of individuals.

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Works.

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§ 7:12. Letters as marks—Broadcast station call letters, 1 McCarthy on Trademarks and...

1 McCarthy on Trademarks and Unfair Competition § 7:12 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:12. Letters as marks—Broadcast station call letters

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1052

Radio or television station call letters can serve as a service mark for radio or television station services. In several cases, the
courts have treated broadcast call letters much as any other service mark combination of identifying letters.1 The target market
to analyze the issue of likely confusion between conflicting station call letter marks consists of both advertisers and listeners
or viewers.2

In 1984 the Federal Communications Commission removed itself as the arbiter of disputes over radio and television call letters.3
This explains the spate of call letter litigation after 1984.4

Radio station call letters are also federally registrable as service marks, especially since 1984.5

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 USA Network v. Gannett Co., 584 F. Supp. 195, 223 U.S.P.Q. 678 (D. Colo. 1984) (preliminary injunction
denied in USA CABLE NETWORK v. KUSA-TV, finding no likely confusion of either advertisers or
viewers); Pathfinder Communications Corp. v. Midwest Communications Co., 593 F. Supp. 281, 224
U.S.P.Q. 203 (N.D. Ind. 1984) (preliminary injunction granted, finding likely confusion in case of WMEE
v. WMCZ, both for FM radio stations); Draper Communications, Inc. v. Delaware Valley Broadcasters Ltd.
Partnership, 505 A.2d 1283, 229 U.S.P.Q. 161 (Del. Ch. 1985) (likely confusion found between WBOC-
TV and WBOT-TV for television stations, court noting that the FCC no longer serves as a forum for
resolving objections to call letter requests); Virginia Tech Foundation, Inc. v. Family Group, Limited V,
666 F. Supp. 856, 2 U.S.P.Q.2d 1961 (W.D. Va. 1987) (preliminary injunction denied in WVTF radio v.

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§ 7:12. Letters as marks—Broadcast station call letters, 1 McCarthy on Trademarks and...

WVFT television); Infinity Broadcasting Corp. v. Greater Boston Radio II, Inc. 32 U.S.P.Q.2d 1925 (D.
Mass. 1994) Infinity Broadcasting Corp. v. Greater Boston Radio II, Inc. 32 U.S.P.Q.2d 1925 (D. Mass.
1994) (preliminary injunction denied in WBCN hard rock AM radio versus WBCS country music FM);
In re Infinity Broadcasting Corporation of Dallas, 60 U.S.P.Q.2d 1214, 2001 WL 951738 (T.T.A.B. 2001)
(refusal of registration to KYNG for radio station as confusingly similar to KING for television station).

2 In re Infinity Broadcasting Corporation of Dallas, 60 U.S.P.Q.2d 1214, 2001 WL 951738 (T.T.A.B. 2001).

3 In 1984 the FCC rules regarding call letter approval and conflicts were changed. Since 1984 the FCC will
grant a request for particular call letters if the identical call sign is not already in use. The FCC said it would
no longer be a forum for the resolution of disputes between radio stations. See discussion in In re WSM,
Inc., 225 U.S.P.Q. 883 (T.T.A.B. 1985).

4 As to frequency designations, see § 7:17.

5 In re WSM, Inc., 225 U.S.P.Q. 883 (T.T.A.B. 1985).

End of Document © 2024 Thomson Reuters. No claim to original U.S. Government

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§ 7:13. Letters as marks—Telephone number letter..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:13 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:13. Letters as marks—Telephone number letter combinations

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1052

Alphanumeric Marks That Include a Generic Name. An alphanumeric telephone number may be used in such a way as to
become a trademark.1 Some courts have said that even a telephone number/letter composite that includes a generic name of
goods can be protected as a trademark. The Second Circuit Court of Appeals affirmed a preliminary injunction preventing
defendant from using the slogan/number “1-800-MATTRESS” in the New York area where plaintiff, a retail mattress dealer,
had a 628-8737 number in various New York area codes, featuring the slogan “DIAL-A-MATTRESS and drop the last S for
savings.” The court held that:

Telephone numbers may be protected as trademarks, and a competitor's use may be enjoined as both trademark
infringement and unfair competition… [T]he telephone number 1-800-628-8737 was confusingly similar to
plaintiff's telephone number 628-8737. … Plaintiff does not lose the right to protection against defendant's use
of a confusingly similar number and a confusingly similar set of letters that correlate with that number on the
telephone dial just because the letters spell a generic term.2

Similarly, an attorney in New York was preliminarily enjoined from using outside the New York area a toll-free (800) telephone
number in connection with advertising using the term DIAL LAWYERS. This was held to infringe on plaintiff Minnesota
attorney's registered mark DIAL LAWYERS used with (612) 529-9377.3

The Third Circuit expressly disagreed with the view that even if the letters corresponding to a telephone number spell out a
generic term, the term may still be protected as a trademark.4 However, if the alphanumeric consists of a composite that includes
the generic term, the composite can be classified as descriptive and protectable upon proof of secondary meaning.5

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The USPTO Position on Alphanumeric Marks. In 1994 the Patent and Trademark Office took the position that an examining
attorney should refuse registration if an applicant applies to register a generic or descriptive term with telephone numerals,
such as 800 or 900 followed by a generic or descriptive word. The PTO's position is that: “The fact that the mark is in the
form of a telephone number is insufficient, by itself, to render a mark distinctive.”6 Thus, the Trademark Board affirmed: a
descriptiveness rejection of an ITU application for “888 PATENTS” for patent legal services.7 However, the Federal Circuit's
2001 decision in the MATTRESS case cast doubt on the validity of the PTO's position. There, the court held that “1-888-M-A-
T-R-E-S-S” was not a generic name and was registrable for the service of retail telephone sales of mattresses. The court said
that the PTO had not proven that the public refers to the class of shop-at-home mattress retailers as “1-888-M-A-T-R-E-S-S.”
Rather, said the court, more likely generic names would be “telephone shop-at-home mattresses” or “mattresses by phone.”8

All-Numerical Phone Number as a Trademark. The Trademark Board held that an all numerical Short Message Service (SMS)
text messaging number (242242) was registerable for search engine services and was not descriptive, even though on the phone
dial the numbers also spelled out the name of the owner: CHA CHA.9

Alphanumeric Mark Infringes Word Mark. An alphanumeric phone number can also be an infringement of a traditional word
mark. For example, use of the telephone number “A-1-800-263-7422,” which could be dialed as “1-800-AMERICA(N),” was
listed in the Yellow Pages under “Airline Companies” and was held to be an infringement. It was said to be an intentional effort
to confuse customers into thinking that they were booking a flight through plaintiff American Airlines.10

Using Similar Phone Number. In the Holiday Inns case, defendant successfully argued that while Holiday Inns had trademark
rights in its alphanumeric designation 1-800-HOLIDAY, it did not have protectable rights in the telephone numeric equivalent of
1-800-465-4329. Thus, the competitive defendant was not an infringer when it used the number 1-800-405-4329 to book hotel
reservations. Defendant used this number because potential Holiday Inn customers frequently mis-dialed by unintentionally
substituting the number zero for the letter “O” in HOLIDAY, thus mistakenly dialing the exchange 405 instead of the correct
exchange 465. By reserving this “complimentary” number, defendant thus intercepted these mis-dialing potential customers
of Holiday Inns. The Sixth Circuit found no trademark infringement on the ground that defendant “never used a mark or a
deceptively similar copy of a mark owned by Holiday Inns—an essential element of proof of a Lanham Act violation.”11
The court appeared to take the position that customer mistake previously existed and was not caused by defendant, who took
advantage of that mistake and confusion to its own competitive advantage.12

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Footnotes
1 See Children's Legal Services PLLC v. Kresch, 87 U.S.P.Q.2d 1765, 2008 WL 1901245 (E.D. Mich.
2008) (Court found that it was appropriate to tack on the earlier use of the alphanumeric suggestive mark
“1-888-4MYCHILD” (for legal services for medical malpractice in pregnancy and childbirth) to the later
use of “1-800-4MYCHILD,” the change characterized as “only a trivial alteration” of the mark).

2 Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675, 11 U.S.P.Q.2d 1644 (2d Cir. 1989). Accord: Dial-A-
Mattress Operating Corp. v. Mattress Madness, 841 F. Supp. 1339 (E.D.N.Y. 1994), recons. denied, 847 F.
Supp. 18 (E.D.N.Y. 1994), ops. combined at, 33 U.S.P.Q.2d 1961, 1965 (E.D.N.Y. 1994) (same plaintiff as
in 1989 case obtained preliminary injunction against another's use of DIAL-A-MATTRESS). In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001) (The designation “1-888-M-
A-T-R-E-S-S” is held not generic and is registrable for the service of retail telephone sales of mattresses.).

3 Murrin v. Midco Communications, Inc., 726 F. Supp. 1195, 13 U.S.P.Q.2d 1815 (D. Minn. 1989) (defendant
used the same mark and number in five New York City area codes; the parties conflicted in both wanting to
use the mark and number with a nation-wide 800 number). See Bell v. Kidan, 836 F. Supp. 125, 28 U.S.P.Q.2d

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§ 7:13. Letters as marks—Telephone number letter..., 1 McCarthy on...

1077 (S.D.N.Y. 1993) (718-CALL-LAW v. 800-LAW-CALL; motion for preliminary injunction denied);
Express Mortgage Brokers, Inc. v. Simpson Mortgage, Inc., 31 U.S.P.Q.2d 1371 (E.D. Mich. 1994) (while
“369-CASH” is descriptive of mortgage brokerage services, secondary meaning was proven; defendant's
“1-800-760-CASH” is likely to cause confusion and preliminary injunction was granted).

4 Dranoff-Perlstein Associates v. Sklar, 967 F.2d 852, 23 U.S.P.Q.2d 1174 (3d Cir. 1992). Accord: 800 Spirits
Inc. v. Liquor by Wire, Inc., 14 F. Supp. 2d 675 (D.N.J. 1998) (Plaintiff, user of “800-SPIRITS” for gift
delivery of alcoholic beverages could not prevent competitor from using “1-800-SPIRITED” as a mark and
phone number, even though plaintiff did not have the telephone number of 800-SPIRITS. The designations
are generic and plaintiff cannot foreclose a competitor from using a toll-free mnemonic number that spells
a generic term.); 555-1212.com, Inc. v. Communication House Intern., Inc., 157 F. Supp. 2d 1084, 59
U.S.P.Q.2d 1453 (N.D. Cal. 2001) (555-1212.com is descriptive as used for telephone directory assistance
Web site: no secondary meaning proven).

5 Thus while “injury” is a generic name of attorney's personal injury services, the court held that the composite
term INJURY-1 is descriptive and protectable on proof of secondary meaning.

6 T.M.E.P. § 1209.03(l) (2013).

7 In re Page, 51 U.S.P.Q.2d 1660 (T.T.A.B. 1999) (“[T]he 888 prefix in the mark does not have any source-
identifying significance. Rather, in our view, the numbers will be readily perceived as nothing more than
the prefix used in a toll-free telephone number.”).

8 In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001) (the court
characterized the designation as a mnemonic combining numbers with a word). Distinguished in: In
re Martin Container, Inc., 65 U.S.P.Q.2d 1058, 2002 WL 1285909 (T.T.A.B. 2002), adhered to on
reconsideration, 2002 WL 2022676 (T.T.A.B. 2002), appeal dismissed, 56 Fed. Appx. 491 (Fed. Cir. 2003)
(CONTAINER.COM is unregistrable as a mark for dealing in metal shipping containers because it is a
generic name combined with a generic top level domain designator.).

9 ChaCha Search Inc. v. Grape Technology Group Inc., 105 U.S.P.Q.2d 1298, 2012 WL 6929402 (T.T.A.B.
2012) (“[T]he 242242 mark does not identify an ingredient, quality, characteristic, function, feature, purpose
or use of the specified services.”).

10 American Airlines, Inc. v. A 1-800-A-M-E-R-I-C-A-N Corp., 622 F. Supp. 673, 228 U.S.P.Q. 225 (N.D. Ill.
1985) (defendant was preliminarily enjoined from using the numeric phone number or its letter equivalent).
See Kelley Blue Book v. Car-Smarts, Inc., 802 F. Supp. 278, 24 U.S.P.Q.2d 1481, 1492 (C.D. Cal.
1992) (defendant's phone number marks 1-800-BLUE-BOOK and 1-900-BLU-BOOK are infringements
of plaintiff's KELLEY BLUE BOOK); U-Haul International, Inc. v. Kresch, 35 U.S.P.Q.2d 1317 (E.D.
Mich. 1994) (plaintiff used the telephone number “800-GO-U-HAUL” or 800-468-4285; defendant, a
former dealer, used the number 800-468-4255, which could be dialed as “800-GO-U-HALL,” but there
was no evidence that defendant advertised the spelled-out version or intended to do so; that customers who
misspelled “haul” as “hall” reached defendant when intending to call plaintiff was not sufficient to require
for an injunction); AT&T Corp. v. Synet, Inc., 45 U.S.P.Q.2d 1656 (N.D. Ill. 1997) (telephone alphanumeric
“1-800-ATT-INET” for Internet services is an infringement of the AT&T trademark).

11 Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619, 39 U.S.P.Q.2d 1181 (6th Cir 1996) (the court did
not consider defendant's number 405-4329 to be the legal equivalent of “H0LIDAY” (spelled with a zero),
which would be the legal equivalent of “HOLIDAY”—spelled with an “O”). Accord: DaimlerChrysler AG
v. Bloom, 315 F.3d 932, 65 U.S.P.Q.2d 1359 (8th Cir. 2003) ("Holiday Inns is virtually indistinguishable
from the present case and we find it persuasive." A telephone number (1-800-637-2333) that could spell
out 1-800-MERCEDES was held not to be an infringement of the MERCEDES trademark. An ex-dealer
licensed the phone number to existing Mercedes dealers to use it.).

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§ 7:13. Letters as marks—Telephone number letter..., 1 McCarthy on...

12 Author's Comment: The court did not discuss the point that unless a competitor utilized the “complimentary”
telephone number, the customer mis-dialing that normally occurred would not result in a competitive
diversion of business away from the trademark owner. For example, if a stock broker had the Holiday Inns
“complimentary” number, no lodging business would be diverted away from Holiday Inns as a result of
mis-dialing. But when a competitor inserts itself into a stream of normally occurring customer confusion or
mistake, a harmful diversion of trade occurs.

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§ 7:14. Numbers as marks, 1 McCarthy on Trademarks and Unfair Competition §...

1 McCarthy on Trademarks and Unfair Competition § 7:14 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:14. Numbers as marks

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1056

One or more numbers, either alone or in combination with other designations, can achieve trademark status to identify and
distinguish the source of goods and services. For well over a century, numbers have been recognized as trademarks in American
law.1 Numbers can be trademarks if used alone,2 as part of an alphanumeric combination3 or spelled out in letters, such as
“TEN.”4

The main challenge faced by a claim of trademark status in a numerical mark is if it is used to indicate a style of grade of product.
If a numerical mark is used solely to indicate a particular style, model or grade of product, then it is not a valid trademark because
it does not do the job of identifying the goods of this seller from those of others.5 Style and grade designations are placed by
the law in the category of “descriptive” designations which, to achieve trademark status, require proof of the acquisition of a
“secondary meaning.”6 Thus a numerical mark can play two roles: (1) to differentiate one grade, model or type from another
in this seller's line; and (2) upon acquisition of a secondary meaning, to also identify and distinguish the goods of this seller
from those marketed by other sellers.

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Shaw Stocking Co. v. Mack, 12 F. 707, 711 (C.C.N.D. N.Y. 1882); William H. Keller, Inc., v. Chicago
Pneumatic Tool Co., 298 F. 52, 59 (C.C.A. 7th Cir. 1923) (“There can be no question but what a number
may become a good trade-mark, if its primary adoption be solely to indicate origin.” But numbers “50,”
“60,” “80,” “90,” were not valid trademarks where they were understood by the trade to only indicate sizes
of tools.).

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§ 7:14. Numbers as marks, 1 McCarthy on Trademarks and Unfair Competition §...

2 In re Barry Wright Corp., 155 U.S.P.Q. 671, 1967 WL 7309 (T.T.A.B. 1967) (“8-48” was a registerable
mark for computers.); CSL Silicones, Inc. v. Midsun Group Inc., 301 F. Supp. 3d 328, 355 (D. Conn. 2018)
(“570” was an inherently distinctive unregistered mark for silicone coating. The number was arbitrary and
did "not relate to any inherent physical, chemical or other characteristic of” the product. Held infringed by
competitor's use of the same number for similar product.).

3 In re Standard Kollsman Industries Inc., 156 U.S.P.Q. 346, 1967 WL 7418 (T.T.A.B. 1967) (Registered
marks such as “SK-97,” “SK-128” and “SK-98” were not just model designations for hi-fidelity speakers,
but were also used as valid trademarks.); RJ Machine Co., Inc. v. Canada Pipeline Accessories Co. Ltd.,
116 F. Supp. 3d 795, 811 (W.D. Tex. 2015) (50E is a valid mark for flow conditioners and is not a generic
name.); Sorensen v. WD-40 Co., 792 F.3d 712, 731, 115 U.S.P.Q.2d 1128 (7th Cir. 2015), cert. denied, 136
S. Ct. 801, 193 L. Ed. 2d 712 (2016) (The mark “WD-40” for a lubricant is a “well-known trademark.”).

4 Television Enterprise Network, Inc. v. Entertainment Network, Inc., 630 F. Supp. 244, 229 U.S.P.Q. 47
(D.N.J. 1986) (TEN is an arbitrary mark as used for a television marketing business. Competitor's use of
TEN was preliminarily enjoined.). See Southland Corp. v. Schubert, 297 F. Supp. 477, 160 U.S.P.Q. 375
(C.D. Cal. 1968) (“7-ELEVEN” for food markets is a valid mark which was infringed.).

5 See § 7:16, 11:36. (Style and grade designations.).

6 See §§ 11:38. (Secondary meaning for Style and Grade Designations.).

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§ 7:15. Numbers as marks—Validity and strength of..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:15 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:15. Numbers as marks—Validity and strength of number marks

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1056

As early as 1882, the courts recognized that numbers, like any other visual symbol, could function as a mark:

[I]f for a long period of time he had used the same figures in combination, as “3214,” to distinguish his own goods
from those of others, so that the public had come to know them by these numerals, he would be protected.1

Numbers, like any symbol, are capable of being descriptive of the goods on which they are used, and thus require proof of
secondary meaning for protection or registration. For example, the mark “76” used by Union Oil Co. was held to be descriptive
of gasoline in that 76 is within the range of numbers used to indicate octane and Baume ratings of gasoline.2 Other number
designations found to be descriptive are:

• “pH 3.5” described the degree of acidity of a drug3

• “3-0'S” for car wheel rims that are 30 inches in diameter4

• “300-850” for credit scoring services5

• 5-HOUR ENERGY “energy shot” drink6

• 5-MINUTE glue which sets in five minutes7

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A number can be used in combination with letters or words to present an arbitrary composite mark. For example, “V-8” was held
to be an arbitrary mark as used on vegetable juice,8 as was CHANEL No. 5 on perfume.9 An example of a well-known number
mark is “4711” for cologne. The mark originated in 1792, when the Muelhens family made cologne at 4711 Glockengasse,
in Cologne, Germany.10

If a number combination mark is strong and widely-recognized, it may be infringed by another's mark that uses a different
number. For example, plaintiff CENTURY 21 real estate brokerage chain proved a case of infringement by a junior user's use of
CENTURY 31 for a competing real estate brokerage.11 Similarly, the makers of the famous “A.1” brand steak sauce prevailed
against the maker of “A.2” brand meat sauce.12

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Shaw Stocking Co. v. Mack, 12 F. 707, 711 (C.C.N.D. N.Y. 1882).

2 In re Union Oil Co., 88 F.2d 492 (C.C.P.A. 1937). See §§ 11:36 to 11:42.

3 Wise v. Bristol-Myers Co., 107 F. Supp. 800, 94 U.S.P.Q. 327 (S.D. N.Y. 1952).

4 In re Vanilla Gorilla, L.P., 80 U.S.P.Q.2d 1637, 2006 WL 1968609 (T.T.A.B. 2006) (“We have no doubt that
if prospective purchasers of car rims were to encounter the term ‘3-0'S’ on thirty inch car rims, they would
immediately understand that the term is merely descriptive of these goods.”).

5 Fair Isaac Corp. v. Experian Information Solutions, Inc., 650 F.3d 1139, 1148, 99 U.S.P.Q.2d 1776, 2011-2
Trade Cas. (CCH) ¶ 77567 (8th Cir. 2011) (300-850 described the range of plaintiff's credit rating system. No
secondary meaning was found. “[T]here is no genuine issue of fact that consumers in this market immediately
understand ‘300–850’ to describe the qualities and characteristics of FICO's credit score—that the credit
score will be within the range of 300–850.”).

6 Innovation Ventures, LLC v. N2G Distributing, Inc., 779 F. Supp. 2d 671, 98 U.S.P.Q.2d 1549 (E.D. Mich.
2011), aff'd 763 F.3d 524, 112 U.S.P.Q. 2d 1423 (6th Cir. 2014) (Plaintiff's mark was on the Supplemental
Register and plaintiff conceded that the mark was descriptive. Secondary meaning was proven and a jury
finding that defendant's “6 HOUR ENERGY” mark for a competing product was an infringement was
affirmed.).

7 Devcon Corp. v. Woodhill Chemical Sales Corp., 455 F.2d 830, 172 U.S.P.Q. 417 (1st Cir. 1972).

8 Standard Brands v. Smidler, 151 F.2d 34, 36, 66 U.S.P.Q. 337 (C.C.A. 2d Cir. 1945) (“V-8” was a valid
mark for vegetable juice and was infringed by its use by defendant on vitamins.).

9 Chanel, Inc. v. Suttner, 109 U.S.P.Q. 493 (S.D.N.Y. 1956) (mark “C No. 5” held infringement); see also Smith
v. Chanel, Inc., 402 F.2d 562, 159 U.S.P.Q. 388 (9th Cir. 1968); Chanel, Inc. v. Jules V. Riviere Perfumes,
Inc., 8 F. Supp. 473 (D.N.Y. 1934). See Nelson Chemicals Company v. Stiles-Kem Sales Corporation, 165
U.S.P.Q. 285, 1970 WL 9895 (T.T.A.B. 1970) (SOLO held protectable trademark even though always used
in combination with grade numbers; e.g., SOLO 50, SOLO 100, SUPER SOLO, etc.).

10 Mulhens & Kropff v. Ferd Muelhens, 43 F.2d 937, 6 U.S.P.Q. 144 (C.C.A. 2d Cir. 1930).

11 Century 21 Real Estate Corp. v. Magee, 19 U.S.P.Q.2d 1530 (C.D. Cal. 1991) (summary judgment for
plaintiff).

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12 Nabisco Brands, Inc. v. Kaye, 760 F. Supp. 25, 19 U.S.P.Q.2d 1465 (D. Conn. 1991) (both products were
sauces used to enhance the flavor of meats; summary judgment for plaintiff).

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§ 7:16. Numbers as marks—Numbers as style or grade..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:16 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:16. Numbers as marks—Numbers as style or grade designations

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1056

Use of Numbers as Style or Grade Designation: Dual Use is Possible. Designations used to indicate style or grade are placed
by the law in the category of “descriptive” designations which, to achieve trademark significance, require proof that they have
acquired distinctiveness through secondary meaning.1 If numbers are used solely and only to indicate size, capacity, model,
style or grade, then they are being used only in a descriptive sense.2 For example, the numbers “2668” were held used solely
as a non-trademark style number for a certain type of pen point. The number was so used as to indicate or describe a certain
style or model of product, not to distinguish this brand of product from others.3

A numerical designation has the ability to play two roles: (1) A descriptive role—to differentiate one grade, model or type from
another in this seller's line; and (2) A trademark role—upon acquisition of a secondary meaning, to identify and distinguish the
goods of this seller from those marketed by other sellers. An early decision explained this distinction:

It is very clear that no manufacturer would have the right exclusively to appropriate the figures 1, 2, 3, and 4,
or the letters A, B, C, and D, to distinguish the first, second, third and fourth quality of his goods, respectively.
… It is equally clear, however, that if for a long period of time he had used the same figures in combination, as
‘3214,’ to distinguish his own goods from those of others, so that the public had come to know them by these
numerals, he would be protected.4

Numerical Style and Grade Designations and Intent to Use Applications to Register. The Federal Circuit approved of the
presumption that in the context of an ITU application to register, numbers that might be used in such a way as to be a descriptive
model designation are not merely descriptive in the absence of evidence of how the numbers are actually used.5 A competitor
who alleges that the numbers are descriptive style, grade or model numbers cannot challenge an ITU application on this

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§ 7:16. Numbers as marks—Numbers as style or grade..., 1 McCarthy on...

ground, because no use has yet taken place. Without evidence of actual use by applicant, it cannot be determined if the number
designations are merely descriptive or not.

Numerical Style and Grade Designations in Infringement Litigation. In infringement litigation, where plaintiff's number
designation has been used as a style or model number, such a number cannot be deemed inherently distinctive. In such a case,
secondary meaning must be proven to achieve trademark status.6

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 See § 11:36.

2 Textron Inc. v. Omark Industries, Inc., 208 U.S.P.Q. 524, 527, 1980 WL 30173 (T.T.A.B. 1980) (“[W]hile
the numbers appearing on the chains [for chain saws] as for example, 10, 12, 51, 52, 61, 62, 72, 73 and 91 are
not directly descriptive of the pitch and gauge of the chains, nevertheless, they designate particular numbers
in a code which in turn indicate the particular pitch and gauge of the chains.” No secondary meaning was
proven and Opposition to registration was sustained.); Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317,
1330, 92 U.S.P.Q.2d 1340 (Fed. Cir. 2009) (The number 5000 did not serve as a trademark, only as a grade
designation to distinguish one model of food blender from another in the VITA-MIX series. “A mark is not
inherently distinctive if it serves as a grade designation rather than an indication of the source of the goods.”
There was no evidence of secondary meaning.).

3 Ex Parte the Esterbrook Pen Company, 109 U.S.P.Q. 368, 1956 WL 8058 (Comm'r Pat. & Trademarks 1956)
(“[A]ll of the advertisements show that ‘2668’ is a style number, and a style number only, used to differentiate
a ‘general writing’ pen point from the other points identified by other numbers in its line. At no time has the
number ‘2668’ been featured predominantly or in any manner different from the other style numbers.”).

4 Shaw Stocking Co. v. Mack, 12 F. 707, 711 (C.C.N.D. N.Y. 1882).

5 Eastman Kodak Co. v. Bell & Howell Document Management Products Co., 994 F.2d 1569, 1574, 26
U.S.P.Q.2d 1912 (Fed. Cir. 1993) (“Once B & H files its statement of use with specimens of actual use, the
PTO will refuse registration if the marks are, indeed, used in a merely descriptive fashion, just as the PTO
would deny such a mark registration in a use-based application.”).

6 Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384, 392, 35 U.S.P.Q.2d 1449 (2d Cir. 1995) (“Under
these circumstances, T-50 cannot at once be a model number and also be considered an arbitrary mark for
purposes of trademark protection …. [W]e hold that the district court was clearly erroneous in concluding
that T-50 is ‘not known or regarded as a model number’ and is ‘arbitrary’ for purposes of trademark
protection[.]”).

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§ 7:17. Numbers as marks—Broadcast frequency designations, 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:17 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:17. Numbers as marks—Broadcast frequency designations

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1056

Radio station frequency designation numbers may be used by the station as a service mark. Since the FCC designates whole
numbers to AM stations, an AM station that adopts a mark such as RADIO 920 will not generally find other stations using
the same number.1 But for FM stations, the FCC designates frequencies in such a way that no FM station has a whole number
frequency. For example, one FM station may operate at 106.7 megahertz and another in the same market at 107.5 megahertz. It
is industry custom for FM stations to round off such a frequency designation (up or down) to a whole number. If the stations at
106.7 and 107.5 both round off to 107 and use 107 to identify their station, a possible service mark conflict arises. To date, the
courts have found that such numbers were used by some stations only in a utilitarian descriptive sense to designate approximate
position on the FM dial and that no secondary meaning was proven on the facts.2

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 M. B. H. Enterprises, Inc. v. WOKY, Inc., 633 F.2d 50 (7th Cir. 1980) (whole number AM frequency is
“plainly” a service mark). See Walt-West Enterprises, Inc. v. Gannett Co., 695 F.2d 1050, n.11, 217 U.S.P.Q.
1206 (7th Cir. 1982).

2 Covenant Radio Corp. v. Ten Eighty Corp., 35 Conn. Supp. 1, 390 A.2d 949, 203 U.S.P.Q. 451 (1977) (station
at 95.7 megahertz using term “stereo 96” could not obtain preliminary injunction against other station at
96.5 from using WTIC-FM 96 or “96 ticks”); Walt-West Enterprises, Inc. v. Gannett Co., 695 F.2d 1050,
217 U.S.P.Q. 1206 (7th Cir. 1982) (station at 106.7 using term FM 107 could not prevent another station at
107.5 from using FM 107). See In re Maximedia Corp., 196 U.S.P.Q. 335 (T.T.A.B. 1977) (call letters of
low-power, non-FCC licensed radio station may be registered as a mark).

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§ 7:17.50. Internet domain names, 1 McCarthy on Trademarks and Unfair Competition...

1 McCarthy on Trademarks and Unfair Competition § 7:17.50 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:17.50. Internet domain names

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1044

Is a Domain Name a Trademark? A novice in trademark law sometimes asks: “Is a domain name a trademark?” The correct
answer is: “A domain name can become a trademark if it is used as a trademark to identify and distinguish a single source.” As
explained elsewhere in this treatise, an “Internet domain name” identifies a place on the Internet where a “web site” is located.1
In the same way that a business sometimes desires to have a prestige business address, a business wants a prestige address in
cyberspace that corresponds to the trade name of the company or to a company trademark. Like a street address or telephone
number, every domain name serves the purely technological function of locating a web site in cyberspace.2 However, a domain
name does not become a trademark or service mark unless it is also used to identify and distinguish the source of goods or
services.3 Out of the millions of domain names, probably only a small percentage also play the role of a trademark or service
mark.4 As the Tenth Circuit observed: “It is thus normally difficult for a plaintiff to show that, beyond serving this logistical
location-identifying function, the domain name is also ‘used to identify and to distinguish goods or services.’”5

Street Addresses and Telephone Numbers as a Metaphor for Domain Names. Often used as legal metaphors for domain names
are telephone numbers, street addresses and radio station call letters. All of these are designations that permit one to locate
and communicate with a place or person, but without more, such designations do not perform the function of trademarks. For
example, unless a telephone number or its letter equivalent is featured in advertising as an identifier of a source of goods or
services, it cannot be registered or protected as a mark.6 The same is true of street addresses7 and radio station call letters.8

The .com Top Level Domain. The most popular generic top level domain indicator for commercial use in the United States is
the “.com” (or “dot-com”) top level domain. The “.com” indicator was created as an abbreviation for “commercial” and was
originally meant only for commercial entities. But the flood of applications for domain names quickly overwhelmed any attempt

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to maintain a restriction. The boundaries of uses of the .com, .net and .org domains have not been enforced since 1995, when
it was decided to suspend screening to reduce delays in processing registrations.9

Web Sites are Like On-Line Newspapers or Magazines. Many web sites are essentially on-line newspapers or magazines,
offering information about social or commercial topics.10 Magazine titles, newspaper titles, and titles of newspaper columns are
protectable as trademarks or service marks.11 The fact that the reader does not pay (directly) is not a requirement for trademark
status.12 Almost all publications are financially supported in part by advertising revenues. The fact that a publication is supported
wholly by advertising revenues should not preclude service mark status for the mark identifying the source of the publication.

The USPTO takes the position that because the web site owner is not delivering a tangible product (like a hard copy issue
of a magazine) to the customer, an e-magazine is a service. Thus, the content provider is rendering the service of providing
information online.13 The Federal Circuit held that use of a designation as a menu item on a web site was use as a service mark
for the service of “providing access to online computer services offering computer industry news, commentary and product
reviews.” The Court noted that menu items are the mechanisms by which users obtained access to the information: “In a very
literal sense, the subject mark was the designation by which AOL provides users access to the Internet news and information
service.”14

A Top Level Domain Indicator Such as .com Generally Has No Trademark Significance. The USPTO takes the position
that only in an unusual case could the Top Level Domain indicator “.com” or any of the other top level domain indicators
be registered as a mark.15 In addition, adding a gTLD to an otherwise unregistrable designation cannot transform it into a
registerable trademark.16 That is, a gTLD will almost always be viewed as a mere address, not as a commercial source indicator.
The average person that uses the internet is aware of the standard format for a domain name and knows that a gTLD designation
such as “.com” is a part of every Internet domain name identifier.17 Courts and the Trademark Board agree that a gTLD will
usually have no trademark significance.18 For example, the Trademark Board refused registration on the Supplemental Register
to the “.cam” gTLD as a mark for various types of legal, business and technical internet services.19 The Board noted that
applicant failed to promote consumer recognition as a source identifier and used the “.cam” designation as a gTLD, not in a
trademark sense.20 The Federal Circuit affirmed the Trademark Board's refusal to register the “.sucks” gTLD as a mark for
domain name services.21

The Fourth Circuit in the Booking.com case that was affirmed by the Supreme Court held that the .com TLD by itself has
no trademark significance and that simply “appending .com to [a generic name] does not render the resulting domain name
non-generic because the inquiry is whether the public primarily understands the term as a whole to refer to the source or the
proffered service.”22

Author's Note: The author agrees that only rarely has a top level domain designation any ability to distinguish one source from
another. Because such a top level domain indicator has no source indicating significance, it cannot serve as a trademark. The
same is true of other nondistinctive modifiers used in domain names, such as “http://www” and “html.”

Combination of a TLD and a Generic Name as a Generic Combination. As discussed in § 12:39.50, until the 2020 Supreme
Court decision in the Booking.com case, the U.S.P.T.O. took the position that the combination of a generic name with a Top
Level Domain (such as “hotel.com” for reserving hotel rooms online or “sportsbetting.com” for online wagering on sports) was
almost always to be categorized as a generic name combination excluded from registration as a mark for the product or service
named. But in the 2020 Booking.com decision, the Supreme Court disapproved of the U.S.P.T.O. argument that all generic
plus TLD combinations are inevitably to be classified as “generic names.” The Supreme Court said that if there is convincing
evidence that the combination is not perceived by consumers as a generic name, then it may be classified as a descriptive mark

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§ 7:17.50. Internet domain names, 1 McCarthy on Trademarks and Unfair Competition...

and registered and protected if secondary meaning is proven.23 But in such cases, a generic plus TLD combination will be
highly descriptive and require very persuasive evidence that it has acquired a secondary meaning.24

Comparing a Mark Containing a Domain Name with a Conflicting Mark. In adjudging a likelihood of confusion between
a mark containing a domain name and a conflicting mark, it is proper to give the top level domain portion of the mark little
weight because it is merely a location indicator.25 Thus, for example, the fact that the hypothetical marks ALPHA.COM and
GAMMA.COM both contain the same TLD does not make them confusingly similar. The converse is also true. For example, the
fact that the hypothetical trademark LEXUSWHEELS.COM for tires contains a TLD does not make it any the less confusingly
similar to the senior user's LEXUS for automobiles.

Author's Comment on Using a Domain Name as a Trademark. The key to legal protection and registration of a domain name
as a mark is to use it in advertising and promotion to identify and distinguish the user's goods or services, not solely as a domain
name. If a domain name is used only like a telephone number and business address, inconspicuously printed in small letters
on e-mail stationery and links in online ads, then it is being used only as a domain name—to tell how to contact the person
or business on the internet. That is not use as a trademark or service mark. The question is whether the designation has been
used in a place and format that customers are used to recognizing as the format and location where a trademark usually appears.
The traditional markers are: larger-sized print, all capital letters or initial capitals, distinctive or different print style, color and
prominent position on label or advertising copy. The key is whether the designation claimed as a protectable mark has been
used to make such a visual impression that the viewer would see it as a symbol of origin separate and apart from anything else.
Only then does it perform the role of a mark to identify and distinguish source. If it takes extended thinking and analysis and
prolonged legalistic analysis and argument to attempt to prove that a designation such as a domain name has been used in a
trademark or service mark sense, then it has not.26

Proper Use as a Mark Sufficient for Registration. The U.S.P.T.O.'s rules on proper use of a designation as a mark on an internet
web page are discussed in § 16:32.70. The Trademark Board refused to register on the Supplemental Register as a service mark
for legal services the domain name “www.eilberg.com.” The legal services were rendered by applicant William H. Eilberg and
the specimens consisted of use as “email:[email protected]” on business cards and letterheads along with, and in the same size
type as, telephone and fax numbers. The Trademark Board held that this usage of the domain name did not function as a service
mark to identify and distinguish applicant's legal services because thus use solely served to indicate the location on the internet
where applicant's web site appeared.27

The Trademark Manual, citing the Eilberg case, emphasizes that if the proposed mark is solely used in a manner that would
likely be perceived as merely an address at which to make Internet contact with the applicant, then registration will be refused.28

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 See § 25A:11. The separate issue of whether unpermitted use of a designation as a domain name infringes
upon another's trademark rights in is discussed in §§ 25A:42 to 25A:43.

2 Reno v. American Civil Liberties Union, 521 U.S. 844, 117 S. Ct. 2329, 2335, 138 L. Ed. 2d 874, 25
Media L. Rep. (BNA) 1833 (1997) (“Each [Web page] has its own address—‘rather like a telephone
number.’”); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1044, 50
U.S.P.Q.2d 1545 (9th Cir. 1999) (“Each web page has a corresponding domain address, which is an identifier
somewhat analogous to a telephone number or street address.”); United States Patent and Trademark Office
v. Booking.com B. V., 140 S. Ct. 2298, 2303, n.1 (2020) (“A domain name identifies an address on the

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Internet. The rightmost component of a domain name—‘.com’ in ‘Booking.com’—is known as the top-level
domain. Domain names are unique; that is, a given domain name is assigned to only one entity at a time.”).

3 See § 25A:18 (“Domain name registration does not create a valid trademark.”); Data Concepts, Inc. v.
Digital Consulting, Inc., 150 F.3d 620, 627, 47 U.S.P.Q.2d 1672, 1998 FED App. 0241P (6th Cir. 1998)
(Merritt, J., concurring: “When a domain name is used only to indicate an address on the Internet and not to
identify the source of specific goods and services, the name is not functioning as a trademark.”); Brookfield
Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1052, 50 U.S.P.Q.2d 1545, 1555
(9th Cir. 1999) (the mere registration of a designation as a domain name with the intent to use it commercially
does not establish “use” of the designation as a trademark in order to establish priority over a rival); Newborn
v. Yahoo!, Inc., 391 F. Supp. 2d 181, 190, 76 U.S.P.Q.2d 1845 (D.D.C. 2005) (The mere registration of a
domain name with a domain name registrar by itself does not confer trademark rights); In re Supply Guys,
Inc., 86 U.S.P.Q.2d 1488, 1493, 2008 WL 618622 (T.T.A.B. 2008) (Use of “leading edge toners” as part of
the internet address “www.leadingedgetoners.com” was not use as a trademark for goods sold on the web
site.); Kerodin v. ServiceMagic, Inc., 106 U.S.P.Q.2d 1425, 2013 WL 951754 (D. Md. 2013) (Registration
as a domain name creates no trademark rights. Failure to allege use of domain name as a trademark results
in dismissal of Complaint.).

4 If used properly, a domain name can qualify as a registerable and protectable trademark or service mark.
For example: St. Luke's Cataract and Laser Institute, P.A. v. Sanderson, 573 F.3d 1186, 1206, 91 U.S.P.Q.2d
1302 (11th Cir. 2009) (Domain name “laserspecialist.com” was properly used as a service mark for cosmetic
laser surgery services and was infringed by a physician who left the plaintiff surgery center and used the
domain name to promote his solo practice.).

5 Underwood v. Bank of America Corporation, 996 F.3d 1038, 1059, 109 Fed. R. Serv. 3d 1191 (10th Cir. 2021)
(Use of the domain name “my24erica.com” did not serve as a mark to identify virtual assistant services.).

6 See discussion of telephone numbers used as trademarks at § 7:13.

7 See §§ 7:14, 14:3. If used and advertised to identify and distinguish a single source, a street address can
become a valid mark. For example, the famous mark “4711” for cologne originated as a street address in
Cologne, Germany. Mulhens & Kropff v. Onnen, 17 C.C.P.A. 831, 37 F.2d 435, 4 U.S.P.Q. 150 (1930).

8 See § 7:17.

9 Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264, 266, 57 U.S.P.Q.2d 1547 (4th Cir.
2001) (“NSI stopped enforcing the .com/.net distinction over a year before [defendant] registered vw.net [in
October 1996].”). See § 25A:11.

10 SLY Magazine, LLC v. Weider Publications L.L.C., 529 F. Supp. 2d 425, 86 U.S.P.Q.2d 1243 (S.D. N.Y.
2007), judgment aff'd, 346 Fed. Appx. 721 (2d Cir. 2009) (Treating the title of an on-line magazine the
same as if it were a hard copy magazine. Plaintiff owner of the on-line magazine SLY (aimed at young,
urban women) sued the publisher of the hard-copy magazine SLY (aimed at men over 40 and affiliated with
the actor Sylvester “Sly” Stallone) for infringement of a mark in the title. No infringement or dilution was
found.).

11 See § 10:6.10. See, e.g., Metro Pub., Ltd. v. San Jose Mercury News, 987 F.2d 637, 640, 21 Media L. Rep.
(BNA) 1150, 25 U.S.P.Q.2d 2049 (9th Cir. 1993) (The Metro newspaper had a column called PUBLIC EYE
and sued the San Jose Mercury newspaper for naming a weekly tabloid EYE: “[A] column name, because
it serves to identify the column as the product of a particular writer or paper and to distinguish it from
surrounding copy and the features of competing publications, is entirely consistent with [the Lanham Act's]
definition [of a trademark].”). This has been the rule for over a century. New York Herald Co v. Star Co,
146 F. 204 (C.C.S.D. N.Y. 1906), aff'd, 146 F. 1023 (C.C.A. 2d Cir. 1906) (“It is not disputed, it could not
be seriously disputed under the authorities, that the title of a publication may become a trademark.”).

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12 Trademark rights can be acquired in marks for goods which are distributed without charge or given away
as promotional items. See § 19:118.

13 T.M.E.P. § 1202.07(b)(Oct 2018 ed.) (“An on-line publication is considered a service rather than a product.”).
See T.M.E.P. § 1402.11(a)(ii) (Oct 2018 ed.) (“The service of providing information via the Internet is
classified in the class of the service-related subject matter of the information.”).

14 On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 1088, 56 U.S.P.Q.2d 1471 (Fed. Cir. 2000)
(Use of the term ONLINE TODAY by AOL as an on-screen menu item was used to “provide access” to
the named computer information services. AOL, owner of ONLINE TODAY for an electronic publication,
successfully opposed registration of ON-LINE TODAY for an Internet service provider.).

15 T.M.E.P. § 1215.02(d) (July 2021 ed) (“A mark composed solely of a gTLD for domain-name registry
operator or registrar services fails to function as a trademark because consumers are predisposed to view
gTLDs as merely a portion of a web address rather than as an indicator of the source of domain-name registry
operator and registrar services. Therefore, registration of such marks must initially be refused … on the
ground that the gTLD would not be perceived as a mark. However, the applicant may, in some circumstances,
avoid or overcome the refusal by providing evidence that the mark will be perceived as a source identifier. In
addition, the applicant must show that: (1) it has entered into a currently valid Registry Agreement with the
Internet Corporation for Assigned Names and Numbers (‘ICANN’) designating the applicant as the Registry
Operator for the gTLD identified by the mark and (2) the identified services will be primarily for the benefit
of others.”).

16 T.M.E.P. § 1209.03(m) (July 2021 ed) (“Because gTLDs generally indicate the type of entity using a given
domain name and therefore serve no source-identifying function, their addition to an otherwise unregistrable
mark typically cannot render it registerable.”).

17 T.M.E.P. § 1215.02 (Oct 2018 ed.) (“[T]he average person familiar with the Internet recognizes the format
for a domain name and understands that ‘http,’ ‘www,’ and a TLD are a part of every URL.”).

18 Apple Computer v. Tvnet.net, Inc., 90 U.S.P.Q.2d 1393, 2007 WL 2460995 (T.T.A.B. 2007) (The “.net” top
level domain portion of a composite mark is a generic name and cannot form the “dominant” portion of the
composite VTUNES.NET, which is confusingly similar to ITUNES for competitive goods and services.);
Borescopes R U.S. v. 1800Endoscope.com, LLC, 728 F. Supp. 2d 938, 952, 98 U.S.P.Q.2d 1033 (M.D. Tenn.
2010) (The “.com” TLD has no trademark significance in comparing two conflicting domain names.). See
§ 12:39.50 (Domain name-generic combinations).

See Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 584–585, 2000-1 Trade Cas. (CCH) ¶ 72775
(2d Cir. 2000) (Existing gTLDs such as .com and .net are not protected “speech” under the First Amendment
because they are currently limited to “three letter afterthoughts … which are lacking in expressive content
…. [W]e do not preclude the possibility that certain domain names and new gTLDs could indeed amount
to protected speech.”).

19 In re AC Webconnecting Holding B.V., 2020 WL 5544272, *5 (T.T.A.B. 2020) (“Unless there is evidence
in the record indicating to the contrary, we observe that gTLDs almost invariably would be perceived by
consumers as serving purposes other than source-identification. This is because gTLDs function as a portion
of an Internet domain name and consumers are highly conditioned to view a gTLD as signifying that function.
As a result, consumers would not perceive such gTLDs as trademarks.”).

20 In re AC Webconnecting Holding B.V., 2020 WL 5544272, *10 (T.T.A.B. 2020) (Applicant did not seek
“to promote consumer recognition of its .CAM designations as source identifiers for its recited services.
Applicant indicates that it displays the .CAM designations on various websites; however, the webpages in
the record display or discuss .CAM as a gTLD.”).

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21 In re Vox Populi Registry Ltd., 25 F.4th 1348, 1352 (Fed. Cir. 2022) (“Substantial evidence supports the
Board's finding that ‘consumers will view [the standard character mark .SUCKS] as only a non-source
identifying part of a domain name, rather than as a mark.’” The T.T.A.B. said that “[C]onsumers will view
it as only a non-source identifying part of a domain name, rather than as a mark.” The court also affirmed
the T.T.A.B. decision that refused registration to a pixelated font version of “.sucks.”).

22 Booking.com B.V. v. United States Patent and Trademark Office, 915 F.3d 171, 185 (4th Cir. 2019), aff'd,
140 S. Ct. 2298 (2020) (The Court of Appeals disagreed with the District Court's suggestion that a Top
Level Domain indicator such as “.com” has trademark significance when it appears in a domain name.
“Where the proposed mark is a composite that includes .com, we clarify that, contrary to the district court's
suggestion, .com does not itself have source-identifying significance when added to an SLD like booking.”).

23 United States Patent and Trademark Office v. Booking.com B. V., 140 S. Ct. 2298 (2020).

24 In re GJ & AM, LLC, 2021 WL 2374670, *16–18 (T.T.A.B. 2021) (Denied registration for
COOKINPELLETS.COM for barbeque grill cooking pellets. as “highly descriptive” and applicant failed to
prove a secondary meaning.); In re Sausser Summers, PC, 2021 WL 2392480 (T.T.A.B. 2021) (Refusing
registration of ONLINETRADEMARKATTORNEYS.COM for legal services as being highly descriptive
and lacking a secondary meaning. The evidence of a secondary meaning fell “far short of carrying applicant's
heavy burden.”).

25 T.M.E.P. § 1215.09 (Oct 2018 ed.) (“When analyzing whether a domain name mark is likely to cause
confusion with another pending or registered mark, the examining attorney must consider the marks as a
whole, but generally should accord little weight to the TLD portion of the mark.”); CCBN.com, Inc. v. c-
call.com, Inc., 73 F. Supp. 2d 106, 53 U.S.P.Q.2d 1132 (D. Mass. 1999) (The fact that conflicting marks
share the “.com” suffix is irrelevant “because ‘.com’ is a generic locator for domain names of Web sites
dedicated to commercial use.”); Apple Computer v. Tvnet.net, Inc., 90 U.S.P.Q.2d 1393, 2007 WL 2460995
(T.T.A.B. 2007) (The “.net” top level domain portion of a composite mark is a generic term and cannot form
the “dominant” portion of the composite VTUNES.NET, which was confusingly similar to the senior user
of ITUNES for competitive goods and services.).

26 See § 3:4 (Using a designation as a trademark, service mark or trade dress) and § 3:7 (Trademark use on
an internet web page).

27 In re Eilberg, 49 U.S.P.Q.2d 1955, 1998 WL 1015894 (T.T.A.B. 1998). Accord: In re Vicki Roberts, 87
U.S.P.Q.2d 1474, 2008 WL 1944634 (T.T.A.B. 2008) (The only use of the slogan “I rest my case” by
the attorney-applicant was embedded in applicant's web site address www.irestmycase.com, as used on
letterheads. This was not a trademark or service mark use: it “simply serves as an address ….”).

28 T.M.E.P. § 1215.02(a) (Oct 2018 ed.) (“If the proposed mark is used in a way that would be perceived as
nothing more than an Internet address where the applicant can be contacted, registration must be refused.
Examples of a domain name used only as an Internet address include a domain name used in close proximity
to language referring to the domain name as an address, or a domain name displayed merely as part of the
information on how to contact the applicant.”).

End of Document © 2024 Thomson Reuters. No claim to original U.S. Government

Works.

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§ 7:17.70. Internet hashtags, 1 McCarthy on Trademarks and Unfair Competition §...

1 McCarthy on Trademarks and Unfair Competition § 7:17.70 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:17.70. Internet hashtags

References
What is a “Hashtag”? A “hashtag” is a form of metadata consisting of a word or phrase prefixed with the “hash” symbol
“#” (e.g. #Sacramento, #painting, and #iplaw). Hashtags are often used on social-networking sites to identify or facilitate a
search for a keyword or topic of interest.1 Hashtags are used in social media by businesses to promote products and disseminate
news. A memorable hashtag can create its own media channel for a trademark owner.

Using Another's Trademark and Adding a Hashtag Can be an Infringement. Using another's trademark along with a hashtag
can create a likelihood of confusion of association and constitute trademark infringement.2

Is a Hashtag a Trademark? A designation containing the hash symbol (#) or the term “HASHTAG” can be registered and
protected as a trademark or service mark only if it performs the job of identification: to identify one source and distinguish it
from other sources.3 If a designation containing the hash symbol is used solely to identify a topic on social media and not in a
commercial sense to identify and distinguish goods or services, then it is not being used as a trademark or service mark.4

In the author's view, asking “Is a hashtag a trademark” is the wrong question. The proper question is: “Is this particular use
of a hashtag a trademark use because it identifies and distinguishes a source?” Asking “Is a hashtag a trademark” is similar
to questions like: “Is a domain name a trademark?” or “Is a personal name a trademark?” The correct response to all these
questions is that it depends on the way that the designation is used. For example, the vast majority of people's personal names
are not used as a trademark. But a few are, such as CHRISTIAN DIOR and DONNA KARAN in fashion and HILTON and
MARRIOTT for hotel chains.

The Hashtag Symbol # Has No Inherent Source-Indicating Function. The USPTO Trademark Manual states that generally,
the hash symbol #and the wording HASHTAG do not provide any source-indicating function because they merely facilitate
categorization and searching within online social media.5 The Trademark Board agrees that a hashtag usually has little or no
trademark significance.6 Social-media participants are usually directed to search a particular subject by typing, for example,
“hashtag ipexpo,” where IP Expo is the subject.

Adding a Hashtag Does Not Convert an Unregisterable Designation into a Valid Trademark or Service Mark. Adding a
hashtag symbol to a generic name or a descriptive word does not change the nature of the generic name or descriptive word so
that it becomes a valid trademark.7 Giving the example of #SKATER for skateboarding equipment as being merely descriptive,
the Trademark Manual states that: “[I]f a mark consists of the hash symbol or the term HASHTAG combined with wording that
is merely descriptive or generic for the goods or services, the entire mark must be refused as merely descriptive or generic.”8
The hash symbol is not a magic wand that can transform a nonregisterable designation into a valid trademark.

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This is similar to adding a generic top-level domain indicator to a generic or descriptive word. A top level domain indicator
like “.com” does not turn an otherwise unregisterable designation into a distinctive, registrable trademark. Thus, for example,
adding a “.com” to a generic name, such as <bankingnews.com> does not change the basic generic nature and the composite will
probably be found generic and unregisterable for the service of providing information in the field of banking. The USPTO takes
the position that the Top Level Domain indicator “.com” (or most of the other generic top level domain indicators) generally
adds nothing to the distinctiveness of the designation as a trademark or service mark.9 For example, adding “.com” to “hotels”
to create “hotels.com” for the service of reserving hotel rooms on the internet does not create a registerable service mark.10

Case Law Precedent on the Trademark Status of Hashtags. To date, case law on point has not lent clarity: it is contradictory,
unclear and offers little guidance. In some of the cases, it is unclear if the judge is ruling that no hashtag can ever serve as
a trademark (which is not the law) or saying that this particular use of a hashtag does not qualify as a trademark use or an
infringing use—which is the law, depending upon the facts.11 Other courts treat a hashtag usage of a designation confusingly
similar to plaintiff's mark as no different from any other infringing use.12 For example, the Trademark Board held that applicant's
“#WILLPOWER” for clothing was confusingly similar to the registered mark for clothing of WILLPOWER WEAR with a
design of two mountains and the words “HAVE THE WILL….” The Board rejected the applicant's argument that the presence
of the hash symbol in its mark sufficiently differentiated it from the cited registration.13

The Trademark Board has made it clear that if a term has not been used in a trademark sense, it cannot be registered and
adding a hashtag will not change the result. In fact, adding a hashtag will reinforce the view that the term is not being used
in a trademark sense at all. The Board affirmed a refusal to register the term “#MAGICNUMBER108” for T-shirts because
it had been widely used by many to express support for the Chicago Cubs baseball team which in 2016 won its first World
Series in 108 years.14 Similarly, the Trademark Board denied registration for “#LAW” for legal referral services because of a
failure to use it as a trademark.15

Author's comment: If a company already has a registration for its mark—such as BLUEBIRD for restaurant services, it is not
clear what, if any, advantage is gained by registering “#bluebird” for the same services. If a competitor were to use the hashtag
“#bluebird” for a commercial social networking site in a way that was likely to cause confusion, it should be an infringement
of the BLUEBIRD registered mark. Sherwin raised the possibility that hashtags might be registered in order to make it easier
for a company to threaten social media users when discussions on a company social media site go “off track” and criticize the
company or its policies.16

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 See Twitter, Inc. v. Skootle Corp., 2012 WL 2375486, *1 (N.D. Cal. 2012) (“Twitter service is widely used
for monitoring current trends and developing news stories, which is facilitated by the use of keywords with
the ‘#’ symbol (‘hashtag’ in Twitter parlance).”).

2 Public Impact, LLC v. Boston Consulting Group, Inc., 169 F. Supp. 3d 278, 290-295 (D. Mass. 2016)
(Prohibiting on a preliminary injunction, defendant consulting services' use on Twitter of “@4PublicImpact”
as its username and the hashtag “#publicimpact” as an infringement of plaintiff's registered mark PUBLIC
IMPACT for educational consulting services.); Align Technology, Inc. v. Strauss Diamond Instruments,
Inc., 2019 WL 1586776, *6 (N.D. Cal. 2019) (Use of plaintiff's mark with a hashtag in ads for defendant's
replacement device that fit with plaintiff's dental machine did not qualify as a nominative fair use. Likely
confusion was found and preliminary injunction granted. “[T]he hashtags constitute more of the [plaintiff's]
marks than is reasonably necessary to identify [plaintiff's] product…. [T]he hashtags with [plaintiff's] marks
indicate an association with” plaintiff's products.); Reflex Media, Inc. v. Richard Easton Limited, 2022

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§ 7:17.70. Internet hashtags, 1 McCarthy on Trademarks and Unfair Competition §...

WL 17095158, *4 (D. Nev. 2022) (“Defendant’s use of Plaintiffs’ trademarks as hashtags to promote his
competing business … infringes Plaintiffs’ marks.” Granted summary judgment of infringment and awarded
damages.).

3 See § 3:4 (“To be a Trademark, a Designation Must Do the Job of a Trademark.”).

4 T.M.E.P. § 1202.18(a) (Jan 2017 ed.) (“If the specimen shows the hash symbol or the term HASHTAG in a
proposed mark as merely a tag used to reference or organize keywords or topics of information to facilitate
searching a topic, the relevant public will not view the hash symbol or the term HASHTAG in the mark as
identifying the source of the goods or services. In such cases, registration must be refused.”).

5 T.M.E.P. § 1202.18 (Jan 2017 ed.). See Roberts, Tagmarks, 105 Cal L Rev 599, 658 (2017) (“Most tagmarks
simply fail to function as distinctive marks, suggesting that current U.S.P.T.O. policies and practices are not
adequately aligned with consumer perception.”).

6 In re i.am.symbolic, LLC, 127 U.S.P.Q.2d 1627, 1633, 2018 WL 3993582 (T.T.A.B. 2018) (“We agree
that, as stated there [in T.M.E.P § 1202.18], a hash symbol or the word HASHTAG generally adds little
or no source-indicating distinctiveness to a mark.” In this case, the Board found that in the designation
“#WILLPOWER” for clothing, “the hash symbol does not have source-indicating distinctiveness and at
most simply appears as the social media tool to create metadata tag.”); In re Deporter, 2019 WL 460492,
*7 (T.T.A.B. 2019) (“Where a hashtag is used as part of an online social media research term, it generally
serves no source-indicating function, because it ‘merely facilitate[s] categorization and searching within
online social media.’”).

7 T.M.E.P. § 1202.18 (Jan 2017 ed.) (“[T]he addition of the term HASHTAG or the hash symbol (#) to an
otherwise unregistrable mark typically will not render it registrable.”); In re Deporter, 2019 WL 460492,
*7 (T.T.A.B. 2019) (“[T]he addition of the term HASHTAG or the hash symbol (#) to an otherwise
unregisterable term typically will not render the resulting composite term registerable.”).

8 T.M.E.P. § 1202.18 (Jan 2017 ed.).

9 T.M.E.P. § 1215.01 (Jan 2017 ed.). See § 7:17.50.

10 In re Hotels.com, L.P., 573 F.3d 1300, 1304, 91 U.S.P.Q.2d 1532 (Fed. Cir. 2009) (“We agree with the
T.T.A.B. that for the mark here at issue, the generic term ‘hotels’ did not lose its generic character by
placement in the domain name HOTELS.COM.”). See § 12:39.50 for examples of other unregisterable
generic name combinations such as “mattress.com” for online retail store's services of selling mattresses and
beds. The combination would be understood by the public to name such services. In re 1800Mattress.com
IP, LLC, 586 F.3d 1359, 1364, 92 U.S.P.Q.2d 1682 (Fed. Cir. 2009) (“[B]ecause [applicant] presented no
evidence that ‘.com’ evoked anything but a commercial internet domain, this is not a case in which the
addition of ‘.com’ affects the genericness of the mark.”).

11 Eksouzian v. Albanese, 116 U.S.P.Q.2d 1972, 2015 WL 4720478 (C.D. Cal. 2015) (Party to a settlement
contract who agreed not to use the mark CLOUD PEN did not breach by using the mark as part of the
hashtag #cloudpen. It is not clear if the court was holding that the use was not a breach because this particular
use of the designation was not a trademark use and therefore not in breach or more broadly if no hashtag
can ever serve as a trademark. The court said: “hashtags are merely descriptive devices, not trademarks ….
[P]lainffs did not materially breach the [agreement] by using the generic descriptor ‘pen’ in close association
with ‘CLOUD’ as a hashtag on Instagram.”). See AOP Ventures, Inc. v. Steam Distribution, LLC, 2016 WL
7336730, *12 (C.D. Cal. 2016) (Reading the Eksouzian case in the narrower sense. Use of plaintiff's mark as
a hashtag only on social media sites was not an infringement. “Plaintiff has offered no evidence Defendants
used the mark DRIP CLUB on its advertisements or products, as opposed to using it as a hashtag.”).

12 Public Impact, LLC v. Boston Consulting Group, Inc., 169 F. Supp. 3d 278, 290-295 (D. Mass. 2016),
appeal dismissed, (1st Cir. 16-1400) (Oct. 18, 2016) (Prohibiting on a preliminary injunction, defendant

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§ 7:17.70. Internet hashtags, 1 McCarthy on Trademarks and Unfair Competition §...

consulting services' use on Twitter of “@4PublicImpact” as its username and the hashtag “#publicimpact”
as an infringement of plaintiff's registered mark PUBLIC IMPACT for educational consulting services.
“Although [defendant] contends it does not use the hashtag #publicimpact as a mark, a review of the
materials submitted reveals that plaintiff has a substantial likelihood of success in proving otherwise ….
because [defendant] and plaintiff are competitors, it is likely that even a sophisticated consumer could be
confused.”). See Fraternity Collection, LLC v. Fargnoli, 2015 WL 1486375 (S.D. Miss. 2015) (Refusing to
dismiss clothing designer's trademark and false advertising claims based on defendant's competitive use of
plaintiff's FRATERNITY COLLECTION mark in hashtags “#fratcollection” and “#fraternitycollection” on
social media. “The Court accepts for present purposes the notion that hashtagging a competitor's name or
product in social media posts could, in certain circumstances, deceive consumers.”).

13 In re i.am.symbolic, LLC, 127 U.S.P.Q.2d 1627, 1633, 2018 WL 3993582 (T.T.A.B. 2018) (In the
applicant's designation “#WILLPOWER” for clothing, “the hash symbol does not have source-indicating
distinctiveness and at most simply appears as the social media tool to create metadata tag.”).

14 In re Deporter, 2019 WL 460492, *9 (T.T.A.B. 2019) (“Here, the evidence shows that
#MAGICNUMBER108 is perceived as part of an online social media trend related to the phrase ‘magic
number 108,’ expressing affiliation with the Chicago Cubs baseball team and their 2016 World Series win
after 108 years rather than as an identification of source for the goods identified in the application.”).

15 In re Pound Law, LLC, 2022 WL 16960106 (T.T.A.B. 2022) (Specimens showed uses such as “Dial #LAW
(#529) on your cell phone.” Evidence showed that “#LAW” was commonly used as a hashtag in the legal
field. “We find that consumers viewing or listening to the multimedia specimens would perceive #LAW
as a mnemonic cell phone number, not as the source of the services being promoted.” Specimens did “not
show service mark use because they present #LAW as a mnemonic for the telephone number #529, by which
prospective clients may contact a lawyer at the Morgan & Morgan law firm, not as a source-indicator for
legal or legal referral services.”).

16 Sherwin, #Havewereallythoughtthisthrough? Why Granting Trademark Protection to Hashtags is

Unnecessary, Duplicative and Downright Dangerous, 29 Harv J L & Tech 455, 475 (2016) (“Because
marketers do not need to trademark their hashtagged terms to protect them from commercial use by
competitors, we should not hand companies a tool that might very well be used to suppress critical discussion
they would rather not see.” The author gives some examples of company social media sites where users
turned the discussion to criticize the company's products, but the author offers no examples of companies
that tried to use a hashtag registration to stop such critical media users.).

End of Document © 2024 Thomson Reuters. No claim to original U.S. Government

Works.

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§ 7:18. Abbreviations and nicknames as marks, 1 McCarthy on Trademarks and Unfair...

1 McCarthy on Trademarks and Unfair Competition § 7:18 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:18. Abbreviations and nicknames as marks

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1052

Abbreviations as Trademarks. Americans are prone to abbreviate recognized trademarks and to use nicknames. Such
abbreviations and nicknames are just as entitled to legal protection as the original full trademark.1 If the public has come to
shorten a trademark into a nickname, then the nickname is entitled to independent legal protection as a mark.

Some examples of nicknames and abbreviations held protectable as trademarks:

• COKE for Coca-Cola2

• BEETLE for a style of Volkswagen automobile3

• BUD for BUDWEISER beer4

• HOG for large Harley-Davidson motorcycles5

• MET for Metropolitan Opera6

• MOMA for Modern Museum of Art7

• “S&P” for Standard and Poor's financial services8

In common use are acronyms or abbreviations made up of the first letters of a corporate or business name, such as I.B.M. or
N.B.C. Such company abbreviations have often been protected as marks.9

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§ 7:18. Abbreviations and nicknames as marks, 1 McCarthy on Trademarks and Unfair...

Fig. 7:18A. TRADEMARK LOGOS OF COCA-COLA AND COKE

Trademark Nicknames. In a sense, abbreviations of well-known marks are “nicknames” and may be protectable as independent
marks, if so recognized. For example, VW is a recognized abbreviation for the VOLKSWAGEN car, and is protectable as a
trademark.10 Other examples include: OPRY for “Grand Ole Opry” country and western music show,11 A & P for Atlantic and
Pacific supermarkets,12 and HO-JO for Howard Johnson restaurants and food products.13 If an abbreviation is likely to create
the same commercial impression on buyers as the original, the user can trace back his first use to use of the original for priority
purposes.14 A mere assertion that the public has come to refer to a company or product by a nickname or abbreviation is itself
insufficient, in the absence of actual evidence to this effect.15

The common propensity to abbreviate terms can contribute to a finding of likely confusion when either customers or the
conflicting parties drop qualifying words, leaving only the confusingly similar root terms. For example, senior user Schering
Corporation was abbreviated to “Schering” and junior user Schering AG was abbreviated to “Schering.” The court concluded
that: “In effect, these two names are the same.”16

Use Only by the Public. One court has said that it is “doubtful” whether a manufacturer can claim protection for an abbreviation
that only the public and not the manufacturer has used.17 Other decisions indicate that where, as a result of use by customers,
the trade or by the news media, an abbreviation has become identified in the public mind with a particular company, then that
abbreviation is a protectable trademark, even if the company itself has not formally used the abbreviation as a trademark.18
The Federal Circuit takes this view, stating that abbreviations and nicknames used only by the public do create enforceable
trademark rights in the mark that the public has modified.19

Brody has noted that some courts are hesitant to recognize trademark rights created solely by public use because it seems contrary
to the rule that the owner of a mark must use it. But he responds that since the nickname and the full mark are viewed by the
public as equivalents with the same meaning, then the nickname has been in fact “used” in its equivalent format by the owner.20

The author agrees with the line of cases that uphold trademark rights in nicknames and abbreviations used only by the public. In
the author's opinion, an abbreviation should be protectable from infringement if in the public mind the abbreviation identifies a
company or its product, even if the company itself has not used the abbreviation in a formalistic way as a trade name, trademark
or service mark. It is public use that will set the stage for confusion, which is the evil to be remedied in trademark cases.

The Seventh Circuit agreed with the author's view and held that public use of a variation of a mark creates priority rights in the
owner of the underlying mark; rights which are superior to those of another who first made actual use. In that case, in January
1995 the Los Angeles Rams professional football team announced that it was moving to St. Louis and would be known as
the “St. Louis Rams.” The team and the league did not make trademark use of the mark “St. Louis Rams” or file a federal
application until April 1995, while plaintiff, an entrepreneur in Wisconsin, obtained a Wisconsin state registration in February
and filed a federal ITU application in March. The court held that the team and the league had priority because immediately
following the January 1995 announcement of the relocation, the public associated the designation “St. Louis Rams” with the

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§ 7:18. Abbreviations and nicknames as marks, 1 McCarthy on Trademarks and Unfair...

team and that association inured to create priority and exclusive trademark and service mark rights in the team, trumping the
plaintiff's later activity under the mark:21

[C]ourts have recognized that “abbreviations and nicknames of trademarks or names used only by the public give
rise to protectable rights in the owners of the trade name or mark which the public modified.” … Such public use
of a mark is deemed to be on behalf of the mark's owners.22

However, it must be remembered that only in the most extraordinary situation could public usage ever transform a generic name
into a trademark. As the Second Circuit observed: “The public has no more right than a manufacturer to withdraw from the
language a generic term, already applicable to the relevant category of products, and accord it trademark significance, at least
as long as the term retains some generic meaning.”23

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Institute for Justice v. Media Group of America, LLC, 117 U.S.P.Q.2d 1042, 2015 WL 7758845 (E.D.
Va. 2015) (Quoting treatise that Americans are prone to abbreviate trademarks. “IJ” was a recognized
abbreviation of plaintiff Institute for Justice. Court granted a preliminary injunction against use of “IJ” mark
used by the “Independent Journal Review.”).

2 Coca-Cola Co. v. Busch, 44 F. Supp. 405, 410, 52 U.S.P.Q. 377 (E.D. Pa. 1942) (“[T]he abbreviation of
the trademark … is equally as much to be protected as the trademark itself.”); Coca-Cola Co. v. Pace, 283
F. Supp. 291, 293, 157 U.S.P.Q. 485 (W.D. Ky. 1968) (“I can find nothing on which to conclude that the
public, in using the word ‘Coke’ in making a purchase of a soft drink, is not expressly intending to buy the
plaintiff's product.”); Coca-Cola Co. v. Stewart, 621 F.2d 287, 289, 206 U.S.P.Q. 1, 29 Fed. R. Serv. 2d 1562
(8th Cir. 1980) (“Coca-Cola Co. … sells carbonated beverages … under the federally registered trademarks
‘Coke’ and ‘Coca-Cola.’ By common consent, these are two of the most widely recognized trademarks in
the world today.”); Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250, 1254-1255, 216 U.S.P.Q. 579, 1982-83
Trade Cas. (CCH) ¶ 65051, 11 Fed. R. Evid. Serv. 1746 (9th Cir. 1982) (COKE is a valid trademark, not
a generic name); AmCan Enterprises, Inc. v. Renzi, 32 F.3d 233, 235, 31 U.S.P.Q.2d 1793 (7th Cir. 1994)
(“‘Coca-Cola’ and ‘Coke’ are similar names but properly so because they denote the same product sold by
the same firm”).

3 Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 2 U.S.P.Q.2d 1264 (1st Cir. 1987) (THE
BEETLE BARN for an auto repair shop found to be an infringement.).

4 Anheuser-Busch, Inc., v. Power City Brewery, 28 F. Supp. 740, 743, 42 U.S.P.Q. 512 (W.D. N.Y. 1939)
(“‘Bud’ has long been used as an abbreviation or nickname of ‘Budweiser’ and as such is ordinarily
associated with the plaintiff's product. It has acquired a secondary meaning and plaintiff is entitled to the
same protection in its use as it is regarding the parent word.”); Anheuser-Busch, Inc. v. Caught-on-Bleu,
Inc., 288 F. Supp. 2d 105, 72 U.S.P.Q.2d 1500, 2003 DNH 173 (D.N.H. 2003), aff'd, 105 Fed. Appx. 285
(1st Cir. 2004), cert. denied, 125 S. Ct. 1639, 161 L. Ed. 2d 477 (U.S. 2005) (Summary judgment finding
infringement of BUD for beer by use of BILLY BUDD for ale).

5 Harley-Davidson Motor Co. v. Pierce Foods Corp., 231 U.S.P.Q. 857, 1986 W.L. 83737 (T.T.A.B. 1986)
(applicant's use of HARLEY-HOG for pork meat is likely to cause confusion with opposer's trademarks);
Harley-Davidson, Inc. v. Seghieri, 1993 WL 645930 (N.D. Cal. 1993) (HOG is a trademark which is
infringed by THE HOG FARM for a motorcycle repair and parts shop). Contra: Harley-Davidson, Inc. v.
Grottanelli, 164 F.3d 806, 49 U.S.P.Q.2d 1458 (2d Cir. 1999) (“hog” held to be a generic nickname for
large motorcycles and could not be appropriated as a mark by Harley-Davidson); H-D Michigan, Inc. v. Top

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§ 7:18. Abbreviations and nicknames as marks, 1 McCarthy on Trademarks and Unfair...

Quality Service, Inc., 496 F.3d 755 (7th Cir. 2007) (distinguishing Grottanelli and finding that HOG is not
a generic name of a motorcyclist club.). See § 12:11.

6 Metropolitan Opera Ass'n v. Metropolitan Artists, Inc., 27 Misc. 2d 572, 212 N.Y.S.2d 435, 128 U.S.P.Q. 556
(1961), aff'd, 13 A.D.2d 480, 214 N.Y.S.2d 648 (1st Dep't 1961); Metropolitan Opera Ass'n v. Metropolitan
Opera Ass'n, 81 F. Supp. 127, 79 U.S.P.Q. 386 (D. Ill. 1948).

7 Museum of Modern Art v. MOMACHA IP LLC, 339 F. Supp. 3d 361 (S.D. N.Y. 2018) (The Museum was
known by its acronym, MOMA, for nearly 50 years and had acquired a secondary meaning. Preliminary
injunction granted against MOMACHA art gallery and café.).

8 S&P Global Inc. v. S&P Data LLC, 2022 WL 3098096, *2 (D. Del. 2022) (“Plaintiffs' marks are
commercially and conceptually strong.” Mark was infringed by “S&P DATA” for call center services for
large companies.).

9 See, e.g., Martahus v. Video Duplication Servs., Inc., 3 F.3d 417, 27 U.S.P.Q.2d 1846 (Fed. Cir. 1993) (VDS,
abbreviation for Video Duplication Services, successfully petitioned to cancel registration of VCDS, an
abbreviation for Video Cassette Duplication Services.). See cases discussed at §§ 7:9 to 7:13, 23:33 to 23:35.

10 Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350, 161 U.S.P.Q. 769 (9th Cir. 1969),
supplemental op., 413 F.2d 1126 (9th Cir. 1969). See Volkswagenwerk Aktiengesellschaft v. Brewer,
170 U.S.P.Q. 560 (D. Ariz. 1971) (VOLKS protected). Similarly, the nickname BUG has been protected
as a nickname for VOLKSWAGEN autos. See Volkswagenwerk Aktiengesellschaft v. Rickard, 175
U.S.P.Q. 563 (N.D. Tex. 1972), modified, 492 F.2d 474, 181 U.S.P.Q. 611, 182 U.S.P.Q. 129 (5th Cir.
1974) (THE BUG SHOP enjoined); Volkswagenwerk Aktiengesellschaft v. Thermo-Chem Corp., 185
U.S.P.Q. 561 (T.T.A.B. 1975) (V.W. prevented registration of BUG COOLER for auto oil cooling system);
Volkswagenwerk Aktiengesellschaft v. Lieffring Industries, Inc., 188 U.S.P.Q. 650 (T.T.A.B. 1975) (V.W.
prevented registration of WUNDERBUG for V.W. auto conversion kit); Volkswagenwerk Aktiengesellschaft
v. Advance Welding & Mfg. Corp., 193 U.S.P.Q. 673 (T.T.A.B. 1976) (V.W. obtained cancellation of
registration of TULE BUG for rough-country vehicle); Volkswagenwerk AG v. Hoffman, 489 F. Supp.
678, 209 U.S.P.Q. 398 (D.S.C. 1980) (summary judgment granted against use of THE BUG HOUSE);
Volkswagenwerk Aktiengesellschaft v. Bug Hospital, Inc., 208 U.S.P.Q. 887 (D. Mass. 1979) (summary
judgment granted against use of BUG HOSPITAL and BUG HOUSE).

11 WSM, Inc. v. Bailey, 297 F. Supp. 870, 161 U.S.P.Q. 817 (M.D. Tenn. 1969). But compare WSM, Inc. v.
Hilton, 724 F.2d 1320, 221 U.S.P.Q. 410 (8th Cir. 1984) (OPRY held to be a generic name for a style of
country music performance).

12 Great Atlantic & Pacific Tea Co. v. A & P Trucking Corp., 29 N.J. 455, 149 A.2d 595, 121 U.S.P.Q. 55
(1959). See Planned Parenthood Federation, Inc. v. Problem Pregnancy of Worcester, Inc., 398 Mass. 480,
498 N.E.2d 1044, 1 U.S.P.Q.2d 1465 (1986) (“PP” is an acronym for PLANNED PARENTHOOD and has
secondary meaning as it is strongly associated with Planned Parenthood; held infringed.).

13 Gunter v. Howard D. Johnson Co., 161 U.S.P.Q. 233 (T.T.A.B. 1969); Howard Johnson Co. v. Ho-Jo
Campsites, Inc., 273 F. Supp. 447, 156 U.S.P.Q. 661 (M.D. Fla. 1967).

14 Vacuum-Electronics Corp. v. Electronic Engineering Co., 150 U.S.P.Q. 215 (T.T.A.B. 1966) (Electronic
Engineering Co. abbreviated to EECO).

15 Caterpillar Tractor Co. v. Katrak Vehicle Co., 172 U.S.P.Q. 409 (T.T.A.B. 1971) (no evidence of public
use of CAT or CAT TRAC as nickname for Caterpillar Tractor; but evidence of independent use of CAT
introduced).

16 Schering Corp. v. Schering Aktiengesellschaft, 667 F. Supp. 175, 4 U.S.P.Q.2d 1596 (D.N.J. 1987),
remanded without op., 870 F.2d 652 (3d Cir. 1988), on remand, 709 F. Supp. 529 (D.N.J. 1988).

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§ 7:18. Abbreviations and nicknames as marks, 1 McCarthy on Trademarks and Unfair...

17 Continental Corrugated Container Corp. v. Continental Group, Inc., 462 F. Supp. 200, 203 U.S.P.Q. 993
(S.D.N.Y. 1978) (however, the court recognized that a nickname or abbreviation is protectable when the
seller has encouraged such usage through advertising).

18 Coca-Cola Co. v. Busch, 44 F. Supp. 405, 410, 52 U.S.P.Q. 377 (D. Pa. 1942) (COKE is a widely used
abbreviation for the trademark COCA-COLA and is protected as a mark: “I feel that the abbreviation of
the trademark which the public has used and adopted as designating the product of [the Coca-Cola Co.]
is equally as much to be protected as the trademark itself.”); American Stock Exchange, Inc. v. American
Express Co., 207 U.S.P.Q. 356 (T.T.A.B. 1980) (AM EX CO was used by the public to refer to the American
Express Company); Big Blue Products, Inc. v. International Business Machines Corp., 19 U.S.P.Q.2d 1072
(T.T.A.B. 1991) (IBM may be able to prove that the designation BIG BLUE was a trade name identifying
IBM because of use in the trade, news media, and public even prior to first actual use as a trademark by
IBM in 1988).

19 National Cable Television Ass'n v. American Cinema Editors, Inc., 937 F.2d 1572, 19 U.S.P.Q.2d 1424 (Fed.
Cir. 1991) (“Such public use by others inures to the claimant's benefit and, where this occurs, public use can
reasonably be deemed use ‘by’ that party in the sense of a use on its behalf.”).

20 P.M. Brody, What's in a Nickname? Or, Can Public Use Create Private Rights?, 95 Trademark Rptr 1123,
1164 (2005) (“[T]he Public Use Rule is consonant with the priority principle of trademark law, as well as the
consumer protection principle”). See Gibbons, Crowdsourcing a Trademark: What the Public Giveth, the
Courts May Taketh Away, 35 Hastings Comm. & Ent. L.J. 35 (2012) (“[S]ocial media technologies amplify
the ability of consumers to affect brand image and nomenclature.”). See George & Co. LLC v. Imagination
Entertainment Ltd., 575 F.3d 383, 403, 91 U.S.P.Q.2d 1786 (4th Cir. 2009) (“[T]he Public Use doctrine
generally is confined to instances in which the public modifies a well-known brand into a nickname or
abbreviation.”).

21 Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427, 51 U.S.P.Q.2d 1920 (7th Cir. 1999)
(the court added that the team and the league had prior rights in the term RAMS, regardless of the city
affiliation of the team).

22 188 F.3d. at 434, quoting from National Cable Television Ass'n. v. American Cinema Editors, Inc., 937 F.2d
1572, 1577, 19 U.S.P.Q.2d 1424 (Fed. Cir. 1991). Author's Comment: Note that plaintiff's filing of a federal
ITU application could not cut off the prior common law rights of the team and the league, because a federal
trademark application and registration can never wipe out prior common law rights. See § 16:18.50.

23 Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, 49 U.S.P.Q.2d 1458 (2d Cir. 1999). See § 12:11.

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§ 7:19. Slogans as trademarks, 1 McCarthy on Trademarks and Unfair Competition §...

1 McCarthy on Trademarks and Unfair Competition § 7:19 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:19. Slogans as trademarks

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1055

A “slogan” is usually defined as a relatively short advertising phrase which accompanies other marks such as house marks
and product line marks.1 To achieve trademark or service mark status, a slogan must be used in such a way as to identify and
distinguish the seller's goods and services from those of others. If so used, slogans have long been registered2 and protected
against uses by others which are likely to confuse purchasers.3 For example, use of the slogan “Where There's Life … There's
Bugs” on insecticide floor wax was enjoined as an infringement of Anheuser-Busch's slogan for beer “Where There's Life …
There's Bud.”4

Length of Slogan. As a rule of thumb, the longer the slogan, the less the probability that it functions as a trademark and the
greater the probability that the slogan is only advertising copy—protectable, if at all, by copyright law.5

Merely Informational Slogans. If a slogan serves merely to convey information and not to identify and distinguish a single
source of goods or services, then it has not been used as a protectable trademark.6 Unless the advertiser takes some steps to
emphasize, set apart and draw attention to informational or commonly used words or images, the chances are that viewers
will see it as just another bit of merchandising puffery or informational message and not as an indicator of origin. Even when
prominently displayed, these kind of indicia may not perform the job of identifying source. This is discussed at § 3:5. For
example, “Drive Safely” was held not used as a trademark for VOLVO autos.7 The slogan “Proudly Made In USA” used on
REMINGTON electric shavers was not used as a trademark, but merely to tell the buyer the place where the product was made.8

The Trademark Board remarked that while some commonly used informational phrases such as “Sale Today” or “We Sell at
Low Prices” would probably never be perceived as marks, the slogan “Take A Closer Look” was separately featured in such
a way as to be used as a service mark for banking services.9

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§ 7:19. Slogans as trademarks, 1 McCarthy on Trademarks and Unfair Competition §...

Author's Comment. As a matter of free competition policy, it should be close to impossible for one competitor to achieve
exclusive rights in such common and informational advertising slogans as “Shop and Compare,” “Family Bargains,” “½ Off
Sale,” or “Two for the Price of One.” This is discussed at §§ 7:22 and 7:23.

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Hugo Boss Fashions, Inc. v. Federal Ins. Co., 252 F.3d 608, 618, 59 U.S.P.Q.2d 1161 (2d Cir. 2001) (House
mark BOSS did not qualify as a “trademarked slogan” in a liability insurance policy. “[T]he relevant federal
cases indicate that ‘trademarked slogans’ are phrases used to promote or advertise a house mark or product
mark, in contradistinction to the house or product mark itself.”).

2 In re Wilderness Group, Inc., 189 U.S.P.Q. 44, 1975 WL 20891 (T.T.A.B. 1975) (“[I]t has long been held
that slogans are registrable on the Principal Register when used to identify the goods of an applicant and
distinguish them from those of others.”). See Application of E. Kahn's Sons Co., 52 C.C.P.A. 1201, 343 F.2d
475, 145 U.S.P.Q. 215 (1965) (Slogan “The Weiner the World Awaited” held a valid registerable trademark
for bacon); Application of Marriott Corp., 517 F.2d 1364, 1368, 186 U.S.P.Q. 218 (C.C.P.A. 1975) (Slogan
“We Smile More” was a registerable service mark for Marriott hotel services. “Nor do we view the slogan
‘We Smile More’ as descriptive of hotel, restaurant, or convention services.”).

3 Allstate Ins. Co. v. Allstate Inc. Co., 307 F. Supp. 1161, 163 U.S.P.Q. 597 (N.D. Tex. 1969) (Registered
slogan “You Are In Good Hands With Allstate” for insurance was protected against likelihood of confusion
caused by use of ALLSTATE and the same slogan on automatic car wash equipment.); Anheuser-Busch,
Inc. v. Customer Co., Inc., 947 F. Supp. 422, 39 U.S.P.Q.2d 1850 (N.D. Cal. 1996) (BUDWEISER beer
slogan “The King of Beers” held infringed by “The Beer of Beers.” Preliminary injunction granted.).

4 Chemical Corp. of America v. Anheuser-Busch, Inc., 306 F.2d 433, 438, 134 U.S.P.Q. 524, 2 A.L.R.3d 739
(5th Cir. 1962) (“We are aware of the fact that the Court should not be swayed by its instinctive reaction …
that this is a brazen and cheap effort by the defendant below to capitalize on the good will created by the
tremendous expenditure in advertising by the plaintiff. This, of course, is not enough to warrant the grant of
relief, but any conduct that is of such a nature as to fairly reek with unfairness and a callous indifference to
the damage that might occur to others from the action taken by it will naturally be examined most carefully
by a trial court and by an appellate court whose duty it is to determine whether such conduct falls afoul of
any established legal principles.”).

5 See §§ 6:17.50, 6:19; In re Peabody Management, Inc., 2005 WL 1787222 (T.T.A.B. 2005) (non-
precedential. A 182 word story about a hotel was not registerable as a “trademark” for hotel services: “That
a story is associated with a hotel does not mean, however, that the story functions as a source identifier for
hotel and related services.”); In re Light, 662 Fed. Appx. 929 (Fed. Cir. 2016) (Pro se application to register
as a trademark for children's books, a page of 660 words listing more than 90 character names. Federal
Circuit affirmed refusal to register because such a large number of words fails to serve as a trademark.).

6 In re Superba Cravats, Inc., 149 U.S.P.Q. 852, 1966 WL 7230 (T.T.A.B. 1966) (Slogan “Soil It—Wash It—
Never Needs Pressing” for neckties held merely informative advertising that did not function as a mark.).

7 In Re Volvo Cars of North America Inc., 46 U.S.P.Q.2d 1455, 1998 WL 239298 (T.T.A.B. 1998) (Board
noted that the words were as common and familiar as “Have a nice day” or “Don't Worry” and just as unlikely
to be perceived as a trademark. “The record is devoid of any direct evidence whatever to indicate that the
purchasing public recognizes the phrase DRIVE SAFELY as a source indicator of applicant's automobiles
….”).

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§ 7:19. Slogans as trademarks, 1 McCarthy on Trademarks and Unfair Competition §...

8 In re Remington Products Inc., 3 U.S.P.Q.2d 1714, 1987 WL 124304 (T.T.A.B. 1987) (“While applicant
may have had substantial sales and advertising of its product, that does not prove recognition by the public
of the subject slogan as a trademark. There is nothing in the record to indicate that purchasers recognize
the slogan as a source indicator.”).

9 In re First Union National Bank, 223 U.S.P.Q. 278, 1984 WL 63565 (T.T.A.B. 1984) (The slogan was used
“in a way which creates a commercial impression separate and apart from the other material with which it
appears in the advertisement.”).

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§ 7:20. Slogans as trademarks—Slogans used with or..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:20 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:20. Slogans as trademarks—Slogans used with or incorporating product mark or house mark

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1055

Slogan Used with a Product Mark or House Mark. In most cases, a slogan is used in addition to another mark such as a product
mark or house mark. The fact that a slogan is used in conjunction with a product mark or house marks does not prevent the
slogan from also functioning as a separate mark. There is no doubt that a product can bear more than one trademark.1 The issue
is whether the slogan creates a commercial impression separate and apart from another mark.

The Court of Customs and Patent Appeals held that Clairol's slogan “Hair Color So Natural Only Her Hairdresser Knows For
Sure” used on hair coloring preparations, was registrable on the Principal Register as a trademark. The Court held that the
slogan was “merely descriptive” but had acquired a secondary meaning in the marketplace as a result of extensive advertising
and use: “[W]e do not think the board erred in concluding that Clairol's slogan has made an impact upon the purchasing public
as an indication of origin, separate from and in addition to the impact of its ‘Miss Clairol’ mark.”2 The court in the Clairol case
remarked on the difficulty of determining whether a slogan has been used as a trademark.3

Slogan Incorporating a Product Mark or House Mark. A slogan might also incorporate a separate trademark, such that both
the slogan and the mark will be protectable.4 For example, the slogan “You are in good hands with ALLSTATE” incorporated
a house mark.5

Slogans, House Marks and the Likelihood of Confusion. While slogans are capable of serving as trademarks, often they serve a
subsidiary role to the merchant's main product mark or house mark. If both parties to a dispute over similar slogans prominently
feature their main marks, the likelihood of confusion can be avoided. For example, the Ninth Circuit affirmed a summary
dismissal of a claim of infringement of plaintiff's slogan “Where Pets Are Family” for a veterinary clinic. Defendant Petsmart
used the same slogan “Where Pets Are Family” for a pet supply store in the same town and leased space to a veterinary clinic.

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§ 7:20. Slogans as trademarks—Slogans used with or..., 1 McCarthy on...

The prominent use of plaintiff's main mark CRITTER CLINIC and defendant's PETSMART mark served to prevent likely
confusion. “The parties present distinct commercial entities by placing their greatest emphasis on their unique business names.”6

In the author's view, while such a use of another's slogan may not constitute infringement, this is not the same thing as saying
that famous and strong slogans can be freely appropriated by a competitor just by using its own mark. Such hypothetical mis-
uses as “Fly The Friendly Skies Of DELTA” or “Just Do It—REEBOK” are probably likely to cause confusion and mistake
among the public.

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 See § 7:1. See Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway and Sons, 523 F.2d 1331, 1338,
186 U.S.P.Q. 436 (2d Cir. 1975) (Registered slogan “Steinway—The Instrument Of The Immortals” for
pianos held a strong mark that was infringed. The slogan was “entitled to the full protection of the trademark
laws.”).

2 Roux Laboratories, Inc. v. Clairol, Inc., 57 C.C.P.A. 1173, 427 F.2d 823, 828-829, 166 U.S.P.Q. 34
(1970) (The Court rejected opposer's contention that the slogan was incapable of achieving any trademark
significance. “Applicant's slogan is no doubt laudatory and somewhat descriptive of the desired result to be
obtained from the use of applicant's product. On the other hand, it is not so highly laudatory or descriptive
as to be incapable of acquiring distinctiveness as a trademark.”).

3 Roux Laboratories, Inc. v. Clairol, Inc., 57 C.C.P.A. 1173, 427 F.2d 823, 828, 166 U.S.P.Q. 34 (1970) (“The
determination of whether a given slogan is a registrable trademark is a matter which historically has not
been free of difficulty. …. The mere fact that a combination of words or a slogan is adopted and used by
a manufacturer with the intent Clairol has manifested here—that it identify its goods and distinguish them
from those of others—does not necessarily mean that the slogan accomplishes that purpose in reality.”).
See Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 804, 167 U.S.P.Q. 713 (9th Cir. 1970)
(Defendant's SURE deodorant did not infringe plaintiff's deodorant slogan “Use ARRID to be sure.” “The
most this court could say is that there might be a possibility of confusion as to the source of plaintiff's and
defendant's deodorant; there is certainly no likelihood of such confusion.”).

4 Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway and Sons, 523 F.2d 1331, 1338, 186 U.S.P.Q.
436 (2d Cir. 1975) (Registered slogan “Steinway—The Instrument Of The Immortals” for pianos held a
strong mark that was infringed. The slogan was “entitled to the full protection of the trademark laws.”).

5 Allstate Ins. Co. v. Allstate Inc. Co., 307 F. Supp. 1161, 163 U.S.P.Q. 597 (N.D. Tex. 1969) (Registered
slogan “You Are In Good Hands With Allstate” protected against likelihood of confusion caused by use of
ALLSTATE and the same slogan on automatic car wash equipment.).

6 Cohn v. Petsmart, Inc., 281 F.3d 837, 843, 61 U.S.P.Q.2d 1688, 58 Fed. R. Evid. Serv. 1085, 114 A.L.R.5th
719 (9th Cir. 2002). Accord: TPW Management, LLC v. Yelp Inc., 121 U.S.P.Q.2d 1602, 2016 WL 6216879
(N.D. Cal. 2016) (The same slogan “We Know Just The Place” was used by both parties who provided similar
rental management services. But because each party paired the slogan with its company name and logo,
this weighed “heavily against finding a likelihood of confusion.” Preliminary injunction denied.); Servpro
Industries Incorporated v. Zerorez of Phoenix LLC, 339 F. Supp. 3d 898 (D. Ariz. 2018), appeal dismissed,
2019 WL 5105468 (9th Cir. 2019) (The same slogan “‘Like It Never Happened’ was used by both parties for
cleanup and restoration services. Because each party used the ‘very weak’ slogan as a ‘secondary identifier,’
no likelihood of confusion was found. Summary dismissal.”).

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§ 7:21. Slogans as marks—Descriptive slogans, 1 McCarthy on Trademarks and Unfair...

1 McCarthy on Trademarks and Unfair Competition § 7:21 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:21. Slogans as marks—Descriptive slogans

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1055

Slogans That Describe the Goods or Services. A slogan that directly refers to a characteristic of the goods or services is likely
to be put into the “descriptive” category1 and require poof of a secondary meaning for validity.2 The Ninth Circuit held that the
slogan “Escape From the Ordinary” was descriptive of “extraordinary” clothing and no secondary meaning was proven.3

The slogan “Your Financial Security Is Our Business” for insurance planning services was held by the Trademark Board to be
a suggestive, non-descriptive mark eligible for registration. The Board stated that slogans may be “ingenious, clever, catchy,
trite, dull, nonsensical and the like,” but to be registrable as a mark, a slogan need not be a literary work of art. All that is
required is that the slogan serves to identify and distinguish a source of goods or services.4 The slogan “From Maine's Cool
Breeze To The Florida Keys” for moving services was held to be “bad poetry,” but was held to be non-descriptive and merely
suggestive as a service mark.5

A Descriptive Slogan Can Acquire a Secondary Meaning. As with any descriptive designation, proof that a secondary meaning
exists will suffice to give protection to a descriptive slogan. Thus, even though the slogan “Extra Strength Pain Reliever” used
on EXCEDRIN analgesic was descriptive, it was given protection by a New York state court. Survey evidence was relied on
as proof that the slogan had achieved a sufficient degree of identification with the product to prove a secondary meaning.6
The court held that the slogan had achieved the same degree of association with the product as did “Put a Tiger in Your Tank”
with ESSO fuel, “Progress Is Our Most Important Product” with General Electric and “The Champagne of Bottled Beer” with
MILLER beer.

Highly Descriptive Self-Laudatory Slogans. Many slogans will be viewed as not only descriptive, but “highly descriptive.” As
discussed at § 7:22, both the courts and the Trademark Board take the position that for “highly descriptive” designations, a greater
than usual evidentiary burden is placed on the user to establish the existence of a secondary meaning (acquired distinctiveness).7

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§ 7:21. Slogans as marks—Descriptive slogans, 1 McCarthy on Trademarks and Unfair...

The Supplemental Register. A descriptive slogan can be registered on the federal Supplemental Register merely if it is merely
capable of someday acquiring secondary meaning and becoming a valid trademark.8 To be allowed Supplemental Register
registration, a descriptive slogan needs only a potential for achieving a secondary meaning and some minimal degree of
creativity.9

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 See § 11:1.

2 See In re Illinois Bronze Powder & Paint Co., 188 U.S.P.Q. 459, 1975 WL 20850, *4 (T.T.A.B. 1975) (Slogan
“Go Ahead—Try And Fingernail This!” on paint sample on spray can held not registerable as a trademark
for paint. “[T]he evidence offered by applicant falls far short of indicating consumer recognition, or even
trade recognition of the cap design and slogan as an indication of origin for applicant's paint products.”).

3 Norm Thompson Outfitters, Inc. v. General Motors Corp., 448 F.2d 1293, 1299, 171 U.S.P.Q. 328 (9th
Cir. 1971) (“[T]he slogan is descriptive and has not acquired a secondary meaning, and therefore, is not
a valid common law trademark….” General Motors use of the same slogan to advertise autos was not an
infringement.). See Application of Standard Oil Co., 47 C.C.P.A. 829, 275 F.2d 945, 947, 125 U.S.P.Q. 227
(1960) (“Guaranteed Starting” as a service mark for automobile winterizing service was not registerable
because not used as a trademark. “[T]he ordinary customer reading the advertisements displayed by an
automobile service station would take the words at their ordinary meaning rather than read into them some
special meaning distinguishing the services advertised from similar services of other station operators.”).

4 In re Sottile, 156 U.S.P.Q. 655, 1968 WL 8080, *2 (T.T.A.B. 1968). See In re Joseph Bancroft & Sons Co.,
129 U.S.P.Q. 329, 1961 WL 7923 (T.T.A.B. 1961) (Slogan “The Test is in the Touch” for clothing held a
valid mark and registrable. “While the [slogan] may, in effect, recite a factor to be considered in making
a determination of quality merchandise, it is, nevertheless, an alliterative slogan which possesses a certain
degree of originality.”); Application of Kopy Kat, Inc., 498 F.2d 1379, 1381, 182 U.S.P.Q. 372 (C.C.P.A.
1974) (Slogan “We Print-It In A Min-It” for printing services was held not merely descriptive. It did not
have to be disclaimed from a composite.); In re Wilderness Group, Inc., 189 U.S.P.Q. 44, 1975 WL 20891
(T.T.A.B. 1975) (“Let Your Hips Shoulder The Load” was not descriptive and was registrable on Principal
Register for hiking equipment).

5 In re Lincoln Park Van Lines, 149 U.S.P.Q. 313, 1966 WL 7196 (T.T.A.B. 1966) (“True, the mark comprises
bad poetry but nevertheless it is suggestive in connotation rather than descriptive.”). See In re Brock
Residence Inns, Inc., 222 U.S.P.Q. 920, 1984 WL 63072 (T.T.A.B. 1984) (Slogan “For A Day, A Week, A
Month Or More!” held not registrable on Supplemental Register for hotel services. “[T]he designation is so
highly descriptive and informational in nature that purchasers are unlikely, either now or in the future, to
perceive it as an indication of the origin of applicant's services.”); In re Melville Corporation, 228 U.S.P.Q.
970, 1986 WL 83650 (T.T.A.B. 1986) (“Brand Names For Less” not registrable for clothing store services
on the Principal Register because it is a “typical promotional phrase.” “[I]t is so highly descriptive that the
circumstantial evidence of record of acquired distinctiveness is insufficient to demonstrate that the slogan
distinguishes applicant's services from those of others.”).

6 Bristol-Myers Co. v. Approved Pharmaceutical Corp., 149 U.S.P.Q. 896, 1966 WL 7631, *6 (N.Y. Sup 1966)
(“The substantiality of the association ratio of ‘Excedrin’ with its slogan, as shown by the survey, establishes
that it has achieved a degree of identification with plaintiff's product which amounts to a ‘secondary
meaning.’”).

7 See In re Yarnell Ice Cream, Llc, 2019 WL 3183842, *21–22 (T.T.A.B. 2019) (“SCOOP” for ice cream
was highly descriptive for ice cream and acquired distinctiveness was not proven. In addition a “failure to

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§ 7:21. Slogans as marks—Descriptive slogans, 1 McCarthy on Trademarks and Unfair...

function” rejection was also affirmed because SCOOP “merely informs purchasers of the serving size of
the goods.”).

8 In re Pevely Dairy Company, 128 U.S.P.Q. 13, 1960 WL 7932 (T.T.A.B. 1960) (Slogan “Scoop of the Month”
for ice cream held registrable on Supplemental Register. (“[T]he slogan is original with applicant, and it has
a certain double entendre which bestows upon it some degree of originality in connection with applicant's
product.”)). See discussion of the Supplemental Register at §§ 19:32 to 19:43.

9 In re Hills Bros. Coffee, Inc., 120 U.S.P.Q. 537, 1959 WL 5979 (T.T.A.B. 1959) (Slogan “No Work … No
Waste … Good Taste” for coffee registered on Supplemental Register. “Generally speaking, only a modicum
of distinctiveness is required to qualify a slogan for registration on the Supplemental Register, and it will
ordinarily suffice for the purpose if the slogan possesses some degree of ingenuity in its phraseology in
connection with the goods.”); In re Milk Foundation, 170 U.S.P.Q. 50, 1971 WL 16739 (T.T.A.B. 1971)
(“Every Body Needs Milk” for promoting the dairy industry held “not so trite” as to be unregistrable on
Supplemental Register.).

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§ 7:22. Slogans as marks—Boasting and self-laudatory slogans, 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:22 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:22. Slogans as marks—Boasting and self-laudatory slogans

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1055

Self-Laudatory Slogans. It is difficult, but not impossible, for a self-laudatory slogan to achieve trademark status by acquiring
a secondary meaning. These are commonly encountered slogan constructions such as these hypothetical examples:

“America's Favorite Cookie”

“The Greatest Thai Restaurant in Los Angeles”

“The Convention Center's Most Comfortable Hotel”

“The Most Effective Electric Truck in the World”

“The Best Customer Support of any Business Database.”

These kind of boasting, self-laudatory slogans fall into the descriptive category.1

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§ 7:22. Slogans as marks—Boasting and self-laudatory slogans, 1 McCarthy on...

For example, the self-laudatory slogan “America's Best Popcorn!” was held to be a merely descriptive slogan which could
not be registered without convincing evidence of having acquired a secondary meaning.2 But if applicant supplies persusive
evidence of a secondary meaning, even a self-laudatory slogan is registerable.3

Some slogans will be so trite and common that they will not be perceived by customers as marks. That is, the ordinary consumer
would not take an often encountered advertising phrase to identify a single source. This is discussed at § 7:23.

Highly Descriptive Self-Laudatory Slogans. Many self-laudatory slogans will be viewed as not only descriptive, but “highly
descriptive.” Both the courts and the Trademark Board take the position that for “highly descriptive” designations, a greater than
usual evidentiary burden is placed on the user to establish the existence of a secondary meaning (acquired distinctiveness). The
Federal Circuit has instructed the Trademark Board that before it determines if a descriptive term has acquired distinctiveness
(secondary meaning) it “must first determine whether the proposed mark is highly descriptive rather than merely descriptive.”4
This means that in only a few instances could highly descriptive or self-laudatory slogans amass sufficient consumer
identification with a single source to achieve trademark status.5 This is discussed at § 12:22.

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 See § 11:17 (“Marks that extol some feature or attribute of the goods or services are ‘laudatory’ and fall
into the descriptive category.”).

2 In re Wileswood, Inc., 201 U.S.P.Q. 400, 1978 WL 21282 (T.T.A.B. 1978) (“[T]he phrases in question are
only self-awarded laudations of applicant's product …. When an expression consists of merely laudatory
words, it is not entitled to protection as a trademark in the absence of compelling proof that is has acquired a
secondary meaning to the general public…. ‘America's Best Popcorn!’ and ‘America's Favorite Popcorn!’ …
are merely laudatory epithets describing the claimed quality and popularity of applicant's product, for neither
of which has any, let alone compelling, evidence of secondary meaning been shown.”). See In Re Western
Industries, Inc., 2013 WL 3001475 (T.T.A.B. 2013) (Non-precedential. Rejecting ITU application to register
self-laudatory slogan “Premium. Reliable. Performance.” for cooking ovens. “[T]he relevant purchasing
public would understand the mark to describe applicant's products as high-quality, reliable products that
efficiently perform the desired functions of cooking appliances.”).

3 Taylor Brothers, Inc. v. the Pinkerton Tobacco Company, 231 U.S.P.Q. 412, 1986 WL 83710 (T.T.A.B. 1986)
(AMERICA'S BEST CHEW for chewing tobacco held a descriptive phrase, but registrable on the Principal
Register because applicant supplied convincing proof of a secondary meaning. Distinguishing prior case
concerning “America's Freshest Ice Cream” for ice cream because in the tobacco case, the generic name of
the goods was not part of the slogan.).

4 Royal Crown Company, Inc. v. The Coca-Cola Company, 892 F.3d 1358, 1365, 127 U.S.P.Q.2d 1041 (Fed.
Cir. 2018).

5 Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1360, 57 U.S.P.Q.2d 1720 (Fed. Cir. 2001)
(HOOVER's self-laudatory phrase “Number One In Floorcare” was not proven to have acquired a secondary
meaning. “Because substantial evidence supports the board's factual findings that Hoover's unregistered
mark is not inherently distinctive and has not acquired distinctiveness, the board properly held that Hoover
did not have a trademark on which a likelihood of confusion count could be based.”). See Best Vacuum, Inc.
v. Ian Design, Inc., 2005 WL 1185817, *4 (N.D. Ill. 2005) (Denying preliminary injunction against alleged
infringement of “Best Vacuum” for vacuum cleaner sales. “[T]he Court is immediately skeptical that ‘Best
Vacuum’ can ever acquire secondary meaning.”).

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End of Document © 2024 Thomson Reuters. No claim to original U.S. Government

Works.

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§ 7:23. Slogans as marks—Common phrases used as a slogan, 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:23 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:23. Slogans as marks—Common phrases used as a slogan

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1055

Commonly-Used Commercial Phrases and Slogans Rarely Achieve Trademark or Service Mark Significance. As discussed
at § 7:19, it is very difficult for one competitor to achieve exclusive trademark rights in such common advertising slogans as
“Shop and Compare,” “Family Bargains,” “½ Off Sale,” or “Two for the Price of One.” These kind of common merchandising
phrases should be free for all competitors to use so long as they are truthful.

The Eleventh Circuit affirmed a summary dismissal that the slogan “Don't Pay More” for used car sales was weak and not
infringed by a competitor's use of the same words. Many local used car dealers used the same phrase in advertising.1

As discussed at § 7:22, many commonly-used self-laudatory slogans (“Our products are the Best!”) will be viewed as not only
descriptive, but “highly descriptive.” Both the courts and the Trademark Board take the position that for “highly descriptive”
designations, a greater than usual evidentiary burden is placed on the user to establish the existence of a secondary meaning
(acquired distinctiveness).

Failure to Use a Slogan in a Trademark Sense. In many cases, commonly used slogans cannot be registered or protected as
valid trademarks because they are not used in a trademark sense and will not be perceived by customers as trademarks. Both
the U.S.P.T.O. and the Trademark Board use the terminology “failure to function” when referring to a use of a designation in
a non-trademark manner. That is, when refusing to register a designation because the evidence shows it has not been used as
a trademark, the ground of rejection is that there is a “failure to function” as a trademark.2 The Trademark Board observed
that: “Many of the Board's failure to function cases have dealt with phrases in the American vernacular that were found to be
incapable of functioning as marks due to their nature.”3

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The slogan “Goin' The Extra Mile” used by vehicle tire dealers was held not infringed under Lanham Act § 43(a) by “We Go
That Extra Mile” used in advertising by defendant AMOCO gas stations. The rule of thumb is that the more commonly a phrase
is used in everyday parlance, the less the likelihood that it will be recognized by customers as a mark.4 In that case, the plaintiff's
slogan was held to be used descriptively to convey a message, not to serve as a mark.5 Similarly, it was held that the laudatory
slogan “We Treat You Right” used by DAIRY QUEEN fast food outlets could not be used as a basis for a preliminary injunction
to prevent defendant's use of the slogan in renting home television and audio equipment. The court viewed the slogan as too
commonly used to justify exclusive rights: “[W]e see no advance to the public interest in permitting an enterprise to monopolize
one form of announcing, ‘Hey, we are good.’”6

Political Slogans. A similar policy applies to political slogans, which when applied to things like bumper stickers and t-shirts,
do not usually serve as trademarks for those goods.7

Commonly Used Phrases. In many cases, a common phrase will not be used in a trademark sense. For example, just printing
a commonly used slogan like “Have a Good Day!,” “How Ya Doin?” or “Keep Calm and Carry On” on a T-shirt or coffee
mug will not result in a trademark use. In denying registration to the phrase “God Bless the USA.” as a mark for decorative
goods such as pillows, the Trademark Board stated that: “Consumers ordinarily take widely-used, commonplace messages at
their ordinary meaning, and not as source indicators, absent evidence to the contrary.”8 That is, such common phrases only
serve to convey a social or political message and do not serve to identify and distinguish a single source of goods or services.
Therefore, they fail to function as marks. “Widely used commonplace messages are those that merely convey ordinary, familiar
concepts or sentiments and will be understood as conveying the ordinary concept or sentiment normally associated with them,
rather than serving any source-indicating function.”9 Several such common phrases appear in the list of phrases held not used
as valid marks at § 3:5.

If an entertainer so popularizes a phrase that it becomes closely identified with that entertainer and their goods or services, then
that phrase can be registered as a mark.10

In affirming an award of attorney's fees to the prevailing defendant, the Ninth Circuit agreed with the District Court that the
plaintiff artist who used the phrase “Life is Beautiful” did not use it as a trademark, but as part of his art:

Indeed, the ubiquitous phrase “life is beautiful” is a well-used trope that appears in a variety of different media,
including books and movies and the record does not show that the phrase denotes [plaintiff] Guetta's work, even
in the context of pop art. At best, “life is beautiful” was an element of Guetta's art, not a branding strategy or a
designation of origin and so was not entitled to trademark protection.11

Popular Slang Phrases Used as Slogans Are Weak Trademarks. Even if federally registered, some slogans that are popular
slang phrases are weak marks with a very small area of exclusivity. For example, summary judgment for defendant was affirmed
where plaintiff alleged that its registered slogan “Come On Strong” for clothing was infringed by defendant's use of “Come On
Strong” in its advertising of men's clothing.12 The Second Circuit held there was no triable issue of likelihood of confusion,
noting that popular slang phrases will be given a narrow scope of trademark protection:

“COME ON STRONG” and variations of that phrase … is a common slang term, the general use of which plaintiff
cannot prevent by registering it in connection with certain goods. … Plaintiff offered no proof that [defendant]
used “COME ON STRONG” as a trademark or as anything other than a slang term describing a presumably
desirable effect.13

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Sports Slogans. The Seventh Circuit held that the Chicago Tribune newspaper made a non-infringing classic fair use of plaintiff's
federally registered but descriptive slogan “The Joy Of Six” by reproducing its front page (including the headline “The Joy Of
Six”) on t-shirts, posters and other memorabilia. The newspaper's use was in a descriptive sense to express pleasure in the Windy
City associated with the Chicago Bulls winning their sixth NBA championship. “[Plaintiff] cannot appropriate the phrase to
herself and thereby prevent others from using the phrase in a descriptive sense, as defendants did here.”14

Some motivational sports slogans can fall into the category of designations not used as trademarks. The Trademark Board
held that the numbers “40-0” were not a trademark for wearing apparel, but only a message expressing support, admiration or
affiliation with a college basketball team that either achieved a perfect record in a single season or aspired to do so.15

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Off Lease Only, Inc. v. Lakeland Motors, LLC, 825 Fed. Appx. 722, 729 (11th Cir. 2020) (The plaintiff's
federal registration was for the three words in a distinctive color scheme and arrangement. It disclaimed any
right to the words themselves.).

2 See § 3:4 regarding proper use of a designation as a trademark or service mark.

3 In re Yarnell Ice Cream, Llc, 2019 WL 3183842, *21–22 (T.T.A.B. 2019) (“SCOOP” for ice cream was
highly descriptive for ice cream and acquired distinctiveness was not proven. In addition a “failure to
function” rejection was also affirmed because SCOOP “merely informs purchasers of the serving size of
the goods.”).

4 Reed v. Amoco Oil Co., 611 F. Supp. 9, 12, 225 U.S.P.Q. 876 (M.D. Tenn. 1984) (“The more common a
phrase is, the more it appears in everyday parlance, less is the likelihood that the phrase identifies the source
of a certain product, and less is the likelihood that it deserves trademark protection absent a strong showing
of a protectable interest by the party who first used the phrase and claims trademark infringement.”).

5 Reed v. Amoco Oil Co., 611 F. Supp. 9, 13, 225 U.S.P.Q. 876 (M.D. Tenn. 1984) (Preliminary injunction
denied. “The Court holds that in relation to the general public, the plaintiffs are not likely to succeed in
showing a secondary meaning for the phrase ‘Goin’ the extra mile.”).

6 American Dairy Queen Corp. v. RTO, Inc., 16 U.S.P.Q.2d 1077, 1990 WL 103649, *2 (N.D. Ill. 1990). See
Captain Tony's Pizza, Inc. v. Domino's Pizza, Inc., 23 U.S.P.Q.2d 1552, 1992 WL 218673 (W.D. N.Y. 1992)
(Summary judgement of no infringement of registered slogan “Any Way You Want It” for a pizza franchise
business. Pizza competitor's use of the slogan to describe pizza with as many toppings as customer wants
was not an infringement. Both parties used the slogans only in connection with their own house marks and
defendant's use was held to be a “fair use.”).

7 In re Hulting, 107 U.S.P.Q.2d 1175, 2013 WL 5407310 (T.T.A.B. 2013) (Political slogan “No More RINOs”
was not registerable as a trademark for bumper stickers, t-shirts and political pins. RINO was an abbreviation
for “Republican in Name Only,” a slogan of the conservative wing of the Republican Party. “[C]onsumers
will not perceive this wording as applied to applicant's goods as a source indicator pointing uniquely to
applicant.”). See In re Gillard, 2019 WL 646095, *10 (T.T.A.B. 2019) (Non-precedential) (Refusing to
register for wearing apparel the word “#covfefe,” a typographical error and nonsense word from a President
Trump tweet. “[I]t [is] clear that ‘#covfefe,’ does not function as a trademark for applicant's identified goods
because the word ‘#covfefe’ has been widely used by the public in dialogue and on merchandise in a non-
source identifying manner….”).

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§ 7:23. Slogans as marks—Common phrases used as a slogan, 1 McCarthy on...

8 In re Lee Greenwood, 2020 WL 7074687 (T.T.A.B. 2020) (The Board noted that the phrase “God Bless the
USA” appeared on dozens of articles, from coffee mugs to decorative pillows. “[T]he record indicates that
the phrase GOD BLESS THE USA is displayed, not as a source indicator, but as an expression of patriotism,
affection, or affiliation with the United States of America.”). See In re Manco Inc., 24 U.S.P.Q.2d 1938,
1992 WL 368706 (T.T.A.B. 1992) (THINK GREEN was not registerable for weather stripping. “[R]ather
than being regarded as an indicator of source, the term ‘THINK GREEN’ would be regarded simply as a
slogan of environmental awareness and/or ecological consciousness, particularly as applied to applicant's
paper and weather stripping products.”); In Re Volvo Cars of North America Inc., 46 U.S.P.Q.2d 1455, 1998
WL 239298 (T.T.A.B. 1998) (“Drive Safely” was not used as a trademark for VOLVO autos. Board noted
that the words were as common and familiar as “Have a nice day” or “Don't Worry” and just as unlikely to
be perceived as a trademark.); In Re Texas With Love, Llc, 2020 WL 6689657, *7 (T.T.A.B. 2020) (“Texas
Love” for shirts and hats did not serve as a trademark. “Texas Love” was a well-recognized expression
of “enthusiasm and support for or from Texas or Texans, and would be perceived as such when used on
Applicant's identified goods….”); In re D2K IP, 2023 WL 2496309 (T.T.A.B. 2023) (non-precedential.
“Have a Great Day” could not be registered as a trademark for coffee cups. This was “is a widely used
message that fails to function as a mark for Applicant’s goods.”).

9 In re Mayweather Promotions, LLC, 2020 WL 6689736, *7 (T.T.A.B. 2020) (Refusing registration for “Past
Present Future” for T-shirts. “The record before us indicates that PAST PRESENT FUTURE has been widely
used in various commercial settings to convey a familiar concept, namely one that is used to describe or
recount the PAST (history/background), PRESENT (current state) and anticipated FUTURE (direction) of
a person, animal, idea, or concept in a lineal fashion based on a timeline. Additionally, the marketplace
evidence shows that consumers have been exposed to PAST PRESENT FUTURE used on t-shirts to convey
a common message, which reinforces our finding that consumers are unlikely to associate that term with a
particular source for t-shirts.”).

10 In re Lizzo LLC, 2023 WL 1507238 (T.T.A.B. 2023) (Reversed examiner’s “failure to function” rejection of
the phrase “100% THAT BITCH” for wearing apparel. Applicant-entertainer Lizzo popularized the phrase
as a part of a song she recorded. “[T]he evidence here does not demonstrate that applicant’s proposed
mark is used in general parlance or that it conveys a common social, political, patriotic, religious or other
informational message…. But more importantly, … we find that most consumers would perceive 100%
THAT BITCH used on the goods in the application as associated with Lizzo rather than as a commonplace
expression.”).

11 Amusement Art, LLC v. Life Is Beautiful, LLC, 768 Fed. Appx. 683, 687 (9th Cir. 2019) (The plaintiff
artist's trademark claim was dismissed on summary judgment.).

12 B & L Sales Associates v. H. Daroff & Sons, Inc., 421 F.2d 352, 165 U.S.P.Q. 353 (2d Cir. 1970). See Cohn v.
Petsmart, Inc., 281 F.3d 837, 843, 61 U.S.P.Q.2d 1688, 58 Fed. R. Evid. Serv. 1085, 114 A.L.R.5th 719 (9th
Cir. 2002) (Summary dismissal of claim of infringement of slogan “Where Pets Are Family” for veterinary
clinic by defendant's use of slogan “Where Pets Are Family” for pet supply store which leased space to
a veterinary clinic in the same town. The prominent use of plaintiff's main mark CRITTER CLINIC and
defendant's PETSMART served to prevent likely confusion.); Servpro Industries Incorporated v. Zerorez
of Phoenix LLC, 339 F. Supp. 3d 898 (D. Ariz. 2018), appeal dismissed, 2019 WL 5105468 (9th Cir.
2019) (The same slogan “Like It Never Happened” was used by both parties for cleanup and restoration
services. Because each party used the commonly used the “very weak” slogan as a “secondary identifier,”
no likelihood of confusion was found. Summary dismissal.).

13 B & L Sales Associates v. H. Daroff & Sons, Inc., 421 F.2d 352, 354, 165 U.S.P.Q. 353 (2d Cir.
1970). See Maidenform, Inc. v. Munsingwear, Inc., 195 U.S.P.Q. 297, 1977 WL 22713, n.3 (S.D. N.Y.
1977) (“Underneath It All” for women's underwear held a valid and suggestive slogan with creative and
imaginative elements, distinguishing the B & L Sales case); In re Fabfitfun, Inc., 127 U.S.P.Q.2d 1670, 1676,
2018 WL 4043156 (T.T.A.B. 2018) (“I'm Smoking Hot” for cosmetics was not confusingly similar to the

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§ 7:23. Slogans as marks—Common phrases used as a slogan, 1 McCarthy on...

cited registration for “Smokin' Hot Showtime” for cosmetics. “Smoking hot” for cosmetics was a weak mark
and often used by third parties.).

14 Packman v. Chicago Tribune Co., 267 F.3d 628, 641, 29 Media L. Rep. (BNA) 2409, 60 U.S.P.Q.2d 1245
(7th Cir. 2001) (Plaintiff had registered the phrase for “entertainment services” and used it in a small way to
advertise gatherings of family and friends to attend basketball games. “As [plaintiff] herself admitted, ‘the
joy of six’ is a phrase commonly used to describe the emotions associated with six of anything.”).

15 University of Kentucky v. 40-0, LLC, 2021 WL 839189 (T.T.A.B. 2021) (Sustaining Opposition to
registration. “Applicant's proposed mark ‘40-0’ is merely informational in nature ….. Consumers understand
such a widely used, commonplace message as conveying the ordinary concept or sentiment normally
associated with it, rather than serving any source-indicating function.”). See In re Deporter, 2019 WL
460492, *9 (T.T.A.B. 2019) (Affirmed a refusal to register the term “#MAGICNUMBER108” for T-shirts
because it had been widely used by many to express support for the Chicago Cubs baseball team which in
2016 won its first World Series in 108 years.).

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Works.

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§ 7:24. Symbols and designs which are decorative or..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:24 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:24. Symbols and designs which are decorative or ornamental

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(1)

Decorative and Ornamental Designs Can Achieve Trademark Status. Marks do not have to consist of letters, numbers or
words. Any picture, design or symbol may be capable of playing the role of a trademark: identifying goods and services and
distinguishing them from those offered for sale by others. In fact, some of the earliest marks were not words at all, but pictorial
symbols, such as cattle brands, the silversmith's hallmark and the sword-makers' logo.1

Merely because a design is pleasing to the eye and serves a decorative purpose does not mean that that design cannot also serve
a trademark purpose.2 A symbol or design that is ornamental and decorative can in addition be a valid trademark.3 But if a
design is solely or merely ornamental and does not also identify and distinguish source, then it cannot be given the status of
a valid trademark.4

Visual Attractiveness of a Design is No Detriment to Trademark Status. The law does not demand that a design feature be
crude, ugly or repellent in order to serve a trademark purpose. The best design marks are those that combine visually attractive
“ornamentation” with the trademark purpose of identification of source. As Judge Sloviter observed, if incidental ornamentally
were a bar to trademark protection, the absurd result would be that: “The more appealing the design, the less protection it would
receive …. [I]t would be unfortunate were we to discourage use of a spark of originality which could transform an ordinary
product into one of grace.”5

Determining Whether a Design is Merely Ornamental. The “merely ornamental” objection is not an independent public policy
bar to trademark protection: it is a specialized application of the key enquiry as to whether a given design is or is not perceived
by customers as a symbol of origin. To be a trademark, a design or ornamentation must do the job of a trademark: to identify and
distinguish a source. Trademark usage is typically immediately evident. Usually, when viewed in context, if it is not immediately
obvious that this ornamental design is being used as an indication of origin, then probably it is not.6

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§ 7:24. Symbols and designs which are decorative or..., 1 McCarthy on...

If customers perceive a design solely and only as attractive ornamentation, then the design is not a trademark. If customers
perceive a design as not only attractive, but also as an indicator of source, then it is a trademark. The issue is not one of a public
policy against “aesthetic functionality,” but one of public perception.7

Proving That an Ornamental Design is Perceived as a Trademark. Usually, the proponent of exclusive rights in an ornamental
design satisfies its burden of proof by pointing out that it has used the design in such a size, placement and manner that both
customers and competitors are likely to recognize it as an indication of origin. While this is circumstantial evidence, it is usually
persuasive. But in a borderline case where it is not at all obvious that the designation has been used as a mark, other evidence
(such as secondary meaning-type circumstantial evidence or a survey) may be necessary to prove trademark perception.8 While
in theory, there are two separate issues of whether a decorative design is also a mark and whether a design mark is inherently
distinctive, in practice, the two issues often compress into one.9

Example: The Swift Polka Dot Label. The Court of Customs and Patent Appeals held that a design of horizontal red bands
with white polka dots on a cleanser label served as a trademark as well as being ornamental and decorative.10

Fig. 7:24A. SWIFT'S CLEANSER LABEL AS USED

Fig. 7:24B. SWIFT'S CLEANSER BACKGROUND DESIGN HELD REGISTRABLE AS TRADEMARK

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§ 7:24. Symbols and designs which are decorative or..., 1 McCarthy on...

The court noted that to distinguish whether an ornamental design also serves as a trademark requires a highly fact-dependent
analysis and a close examination of the probable impression made on the buying public:

Since the line between mere ornamentation and ornamentation which is merely an incidental quality of a trademark
is not always clearly ascertainable, the application of legal principles to fit one situation or the other requires
proper reflection upon the impression likely to govern the ordinary purchaser in the marketplace. For that reason,
the merits of each case of the character here presented must be individually and accordingly adjudged.11

The court distinguished a 1940 decision that held that a series of black and white stripes on a battery was purely ornamental
and was not a trademark.12

Examples: Rings on Tires. The Swift polka-dot design was distinguished where the Court of Customs and Patent Appeals
refused to register a mark consisting of three narrow white concentric rings on the outer surface of a tire. Such a minor variation
of the standard “white-wall” tire was said to constitute mere ornamentation lacking trademark significance. Whereas the polka-
dot border of the Swift case was not a common label design, the familiar use of concentric rings on tires would be regarded
by consumers as mere ornamentation and decoration.13 Similarly, the Trademark Board held that a gold concentric ring on the
sidewall of a black tire was merely ornamental and not registrable as a mark for tires.14

Examples: Designs on T-Shirts. When words or designs are used on T-shirts, it is a highly fact-intensive determination of
whether these symbols are solely decorative ornamentation, or in addition serve as a trademark indicating a “secondary source”:

The “ornamentation” of a T-shirt can be of a special nature which inherently tells the purchasing public the source
of the T-shirt, not the source of manufacture but the secondary source. Thus, the name “New York University”
and an illustration of the Hall of Fame, albeit it will serve as ornamentation on a T-shirt will also advise the
purchaser that the university is the secondary source of that shirt. … In the case before us, the T-shirt is ornamented
with applicant's trademarks, and considering the nature of T-shirts, that particular ornamentation can serve as
an indication of a secondary source of origin. The matter sought to be registered is an arbitrary symbol and can
and does function as a trademark. As used on the T-shirts, we conclude that the mark serves as an identifier of
a secondary source and as such is registrable.15

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In some instances a word and design logo is used on T-shirts in such a way as to be merely attractive ornamentation, “not likely
to be perceived as anything other than part of the thematic whole of the ornamentation of applicant's shirts.” In that case, the
Trademark Board noted that size, location, dominance and significance of the logo were all factors to be weighed.16 In some
instances, the use of cute or amusing phrases on T-shirts will be viewed as mere message decoration and not have any trademark
significance.17 While use of wording on a T-shirt as part of a decorative image or design points towards merely ornamental
use, the placement of wording alone on the breast or sleeve points towards trademark use.18

Example: Decorative Designs on Other Wearing Apparel. A decorative design on wearing apparel which is also the
recognizable logo of a wearing apparel designer or maker (such as the Ralph Lauren Polo Player logo or the Nike “swoosh”)
is immediately recognized as a trademark use.19

Because a claim to the design and appearance of wearing apparel is a claim to exclusive rights in product design, under the rule
in the Supreme Court's 2000 Wal-Mart case, a secondary meaning must always be proven.20 For example, the Federal Circuit
held that a foldable flap at the area of the rear pockets on pants was product design under the Wal-Mart rule.21 The Trademark
Board held that a wave design covering the torso of a sweatshirt or jacket was not registerable as a trademark for sweatshirts
and jackets: it would be perceived merely as ornamentation of the clothing.22 The design is illustrated in Fig. 7:24C.

Fig. 7:24C. LULULEMON DESIGN ON JACKET HELD TO BE MERELY DECORATION AND NOT
REGISTRABLE AS TRADEMARK

Image 3 within document in PDF format.

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§ 7:24. Symbols and designs which are decorative or..., 1 McCarthy on...

Other Examples of Merely Decorative Designs. The Trademark Board held that while a design on chinaware can serve both
an ornamental and a trademark purpose, a particular floral design on dishes served solely a decorative purpose. There was no
evidence that the maker ever promoted or drew attention to the floral design so as to encourage buyers to view it as an indicator
of origin.23 Similarly, the Board held that a red, green, and gold container that looked like a wrapped Christmas gift was not a
registerable mark for Christmas tree lights because it was a common design used only as ornamentation.24

The Trademark Board found that a stylized auto racing checkered flag design was registrable as a trademark for wearing apparel:
it “is likely to be perceived as not only an attractive ornamental design but also as an indication of origin.”25 The District Court
in New York held that candy in the shape of a fish did not qualify as protectable trade dress for several reasons, including that
it would be perceived as merely an ornamental design: “The fish-shaped animal design of the [plaintiff's] Swedish Fish is a
classic example of a design that is not used to identify source, but rather to render the product itself more appealing, especially
to children.”26

Challenges to Incontestable Registrations. A challenge to the validity of an incontestably registered mark on the ground that
it is merely and only ornamental as to the goods for which it is registered was not permitted under the rationale of the Supreme
Court's 1985 Park ‘N Fly case.27

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Footnotes
1 See § 5:1.

2 In re Corning Glass Works, 6 U.S.P.Q.2d 1032, 1988 WL 252473 (T.T.A.B. 1988) (“A design which has
ornamental value may nevertheless be registered if it also functions as a trademark.”); In re Paramount
Pictures Corporation, 217 U.S.P.Q. 292, 1983 WL 51777 (T.T.A.B. 1983) (The use of STAR TREK
television series-movie title mark does serve as a trademark when used in a decorative way with a picture
from a STAR TREK episode on towels, sheets and pillow cases. “[T]he Lanham Act does not exclude
registration of a mark simply because it has an ornamental as well as a source indicating purpose.”).

3 Second Circuit
Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204, 5 Media L. Rep. (BNA)
1814, 203 U.S.P.Q. 161 (2d Cir. 1979) (Cheerleaders uniform can serve as a trademark. “[T]he fact that an
item serves or performs a function does not mean that it may not at the same time be capable of indicating
sponsorship or origin, particularly where the decorative aspects of the item are nonfunctional.”)
Ninth Circuit
Vuitton Et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769, 775, 210 U.S.P.Q. 351 (9th Cir. 1981), also
published at, 212 U.S.P.Q. 85, 1981 WL 481427 (9th Cir. 1981) (Louis Vuitton logo design covering the
surface of goods such as handbags may be both aesthetically pleasing and decorative and at the same time
serve as a trademark indicating origin. “[A] trademark which identifies the source of goods and incidentally
serves another function may still be entitled to protection.”)
Federal Circuit
Application of Swift & Co., 42 C.C.P.A. 1048, 223 F.2d 950, 954, 106 U.S.P.Q. 286 (1955) (“[T]he mere
fact that it renders the label to which it is applied more ornamental than it would otherwise be without that
device thereon does not per se dictate a conclusion that it has no trade-mark function.”); Application of
David Crystal, Inc., 49 C.C.P.A. 775, 296 F.2d 771, 772, 132 U.S.P.Q. 1 (1961) (“Merely because a design
is ornamental does not preclude it from becoming a valid trademark capable of distinguishing the goods
upon which it is placed.”)
Trademark Manual
T.M.E.P. § 1202.03 (“Matter that serves primarily as a source indicator, either inherently or as a result
of acquired distinctiveness, and that is only incidentally ornamental or decorative, can be registered as a
trademark.”)
Trademark Board
In re the Procter & Gamble Co., 105 U.S.P.Q.2d 1119, 1127, 2012 WL 6064533 (T.T.A.B. 2012) (Bottle and
cap of bottle for mouthwash held to be both decorative and an inherently distinctive trademark. “[T]o the
extent they are decorative or ornamental in nature, they are only incidentally so.”)
4 Second Circuit
American Basketball Ass'n v. AMF Voit, Inc., 358 F. Supp. 981, 985, 177 U.S.P.Q. 442 (S.D. N.Y. 1973),
aff'd without opinion, 487 F.2d 1393, 180 U.S.P.Q. 290 (2d Cir. 1973) (Red, white and blue panels on
basketball held merely ornamental and no secondary meaning was proven. “This change in coloration of the
tan panels of previous basketballs was merely decorative or ornamental.”)
Ninth Circuit
Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1262, 58 U.S.P.Q.2d 1881 (9th Cir. 2001) (“[A]
product feature whose only impact is decorative and aesthetic, with no source-identifying role, cannot be
given exclusive rights under trade dress law.” Citing treatise.)
Eleventh Circuit
Major Pool Equipment Corp. v. Ideal Pool Corp., 203 U.S.P.Q. 577, 1979 WL 25007 (N.D. Ga. 1979) (design
on swimming pool liner held merely pleasing ornamentation)
Federal Circuit
Application of Soccer Sport Supply Co., Inc., 507 F.2d 1400, 1402, 184 U.S.P.Q. 345 (C.C.P.A. 1975) (Black
and white panels on soccer ball held merely ornamental and secondary meaning was not proven. “[A] design

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which is a mere refinement of a commonly-adopted and well-known form of ornamentation for a class of
goods would presumably be viewed by the public as a dress or ornamentation for the goods.”)
Trademark Board
In re Chung, Jeanne & Kim Company, Inc., 226 U.S.P.Q. 938, 941–942, 1985 WL 72090 (T.T.A.B. 1985)
(One stripe and six stripe sports shoe designs are mere ornamentation. “[W]e conclude that applicant's
‘one-stripe’ and ‘six-stripe’ designs are not unique or unusual in the field of athletic or sports shoes; that
they are, instead, ‘a mere refinement of a commonly-adopted and well-known form of ornamentation’ for
this particular class of goods ‘viewed by the public as a dress or ornamentation for the goods’; and hence
that, far from being inherently distinctive as applied to applicant's goods, these two designs are clearly
nondistinctive.”); In re Petersen Manufacturing Co., 2 U.S.P.Q.2d 2032, 1987 WL 123834 (T.T.A.B. 1987)
(“[T]he designs are merely decorative, ornamental features of the back of the container for applicant's goods,
and would be perceived as such, rather than source-identifying trademarks.”); In re F.C.F. Inc., 30 U.S.P.Q.2d
1825, 1994 WL 262248 (T.T.A.B. 1994) (a picture of roses is not used as a trademark for cosmetics when
used in a purely ornamental and decorative way to cover most of the surface of containers for the product); In
re Lululemon Athletica Canada Inc, 105 U.S.P.Q.2d 1684, 2013 WL 326567 (T.T.A.B. 2013) (Wave design
covering the torso of a sweat shirt or jacket was not registerable as a trademark for sweat shirts and jackets:
it would be perceived merely as ornamentation of the clothing.)
N.Y.
Ventura Travelware, Inc. v. Baltimore Luggage Co., 66 Misc. 2d 646, 322 N.Y.S.2d 93 (Sup 1971), judgment
aff'd, 38 A.D.2d 794, 328 N.Y.S.2d 811 (1st Dep't 1972) (colored stripe design on luggage held merely
ornamental and unprotectable)
5 Keene Corp. v. Paraflex Industries, Inc., 653 F.2d 822, 825, 211 U.S.P.Q. 201 (3d Cir. 1981).

6 See discussion of the indicators of trademark use at § 3:3.

7 See §§ 7:79 to 7:81.

8 See discussion of proving trademark use at § 3:3. See discussion of direct and circumstance evidence of
secondary meaning at § 15:30.

9 See § 7:25. See, e.g., In re Lululemon Athletica Canada Inc, 105 U.S.P.Q.2d 1684, 2013 WL 326567
(T.T.A.B. 2013) (Considering as one issue whether a design on a jacket was merely ornamental and whether
it was inherently distinctive. It was found to be a purely ornamental use and was not inherently distinctive.).

10 Application of Swift & Co., 42 C.C.P.A. 1048, 223 F.2d 950, 106 U.S.P.Q. 286 (1955).

11 Application of Swift & Co., 42 C.C.P.A. 1048, 223 F.2d 950, 954, 106 U.S.P.Q. 286 (1955).

12 In re Burgess Battery Co., 27 C.C.P.A. 1297, 112 F.2d 820, 821-822, 46 U.S.P.Q. 39 (1940) (“The primary
object of such design or ornamentation not being for the exclusive purpose of indicating origin or ownership
in a trade-mark sense, the design or ornamentation cannot be considered as a valid trade-mark.”). See
Campbell Soup Co. v. Armour & Co., 175 F.2d 795, 81 U.S.P.Q. 430 (3d Cir. 1949) (Campbell's soup label
of solid red and white parallel bands held not used as a registerable trademark.).

13 Application of General Tire & Rubber Co., 56 C.C.P.A. 867, 404 F.2d 1396, 160 U.S.P.Q. 415 (1969),
distinguished in Application of World's Finest Chocolate, Inc., 474 F.2d 1012, 1015, 177 U.S.P.Q. 205
(C.C.P.A. 1973) (candy bar package design held registerable as a trademark and General Tire & Rubber
distinguished on basis of evidence of secondary meaning and customer recognition). Compare Application
of Data Packaging Corp., 59 C.C.P.A. 776, 453 F.2d 1300, 172 U.S.P.Q. 396 (1972) (colored band on
computer tape reels held registrable on Principal Register).

14 Goodyear Tire & Rubber Co. v. Vogue Tyre & Rubber Co., 47 U.S.P.Q.2d 1748, 1998 WL 574165 (T.T.A.B.
1998) (“[C]urrent customers for tires have no reason to understand that these colored bands are now
trademarks, rather than merely ornamentation, as they have always been.”).

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15 In re Olin Corporation, 181 U.S.P.Q. 182, 1973 WL 19761 (T.T.A.B. 1973) (corporate logo of stylized “O”
on T-shirts held registerable as a trademark for T-shirts). See In re Expo ‘74, 189 U.S.P.Q. 48, 1975 WL
20893 (T.T.A.B. 1975) (EXPO '74 registered as trademark for T-shirts sold by promoters of 1974 World's
Fair in Spokane, Washington); In re Paramount Pictures Corporation, 213 U.S.P.Q. 1111, 1113, 1982 WL
52018 (T.T.A.B. 1982) (Words MORK AND MINDY with images of the two characters of the television
series used on T-shirts held registerable as a trademark for T-shirts. “[T]he broad and liberal interpretation
of our law is that, where such a sign also serves a source indicating function, it should be regarded as
acceptable subject matter for registration.”); In re Wielinski, 49 U.S.P.Q.2d 1754, 1759, 1998 WL 998961
(T.T.A.B. 1998) (Applicant was an organization for collectors of DIAMOND T antique vehicles. Applicant's
use of DIAMOND T on T-shirts identifies applicant, not as the source of manufacture of the shirt, but as the
secondary source of authorization of the use of the mark on the shirt.); Macy's Inc. v. Strategic Marks, LLC,
117 U.S.P.Q.2d 1743, 2016 WL 374147 (N.D. Cal. 2016) (Name of department store on T-shirts and tote
bags was a trademark use, not a mere “ornamental use.”); Major League Baseball Players Assn. v. Chisena,
2023 WL 2986321, *20 (T.T.A.B. 2023) (Words “Here Comes the Judge” and “All Rise!” on T-shirts and
other apparel referring to the New York Yankees baseball player Aaron Judge served as a secondary source of
sponsorship. “[T]hese judicial phrases and symbols signified Mr. Judge to the relevant consuming public….
This public would certainly be familiar with the merchandising practice of a popular athlete sponsoring and
authorizing fan memorabilia….”).

See In re Paramount Pictures Corporation, 217 U.S.P.Q. 292, 293, 1983 WL 51777 (T.T.A.B. 1983) (STAR
TREK held registerable as a trademark for towels, sheets, pillow cases and comforters. “[I]t is clear that
it performs a trademark function and is recognizable as such to the extent that the public would associate
articles on which it appears as having a common origin.”); see discussion at § 3:4.

16 In re Astro-Gods Inc., 223 U.S.P.Q. 621, 1984 WL 63582 (T.T.A.B. 1984) (The words “ASTRO GODS”
used with images of Greek-Roman deities and signs of the Zodiac was likely to be perceived as part of
the ornamentation of applicant's T-shirts.). See T.M.E.P. § 1202.03 (2012) (“The examining attorney must
also consider the size, location, and dominance of the proposed mark, as applied to the goods, to determine
whether ornamental matter serves a trademark function.”).

17 Go Pro Ltd. v. River Graphics, Inc., 2006 WL 898147 (D. Colo. 2006) (The humorous phrase “Here
Fishy, Fishy” on T-shirts (probably aimed at a market of fishermen) was “merely ornamental and is not
a trademark.” Summary dismissal granted, but use on container labels, invoices and catalogues raised an
issue of fact as to trademark usage.). See In re Dimitri's Inc., 9 U.S.P.Q.2d 1666, 1988 WL 252334 (T.T.A.B.
1988) (SUMO on T-shirts and baseball caps is not registrable because it was part of ornamentation and was
not used in a trademark sense, primarily because the word always appeared with a stylized picture of sumo
wrestlers.); Grupke v. Linda Lori Sportswear, Inc., 921 F. Supp. 987, 40 U.S.P.Q.2d 1088 (E.D. N.Y. 1996),
on reconsideration in part, 1996 WL 525284 (E.D. N.Y. 1996) (picture of cats on T-shirt is not protectable
trade dress because it does not indicate source).

18 See Bobosky v. Adidas AG, 843 F. Supp. 2d 1134, 1146, 105 U.S.P.Q.2d 1938 (D. Or. 2011) (“By contrast,
here the phrase WE NOT ME appears in small print on one sleeve of [plaintiff's] shirt without any
corresponding imagery. … In fact, other than a medium-size logo over the breast, there is no other design
on the shirt whatsoever, reinforcing the notion that WE NOT ME is more likely to function as source
identification than aesthetic ornamentation.” Denied summary dismissal.).

19 See U.S. Polo Ass'n, Inc. v. PRL USA Holdings, Inc., 800 F. Supp. 2d 515, 528, 101 U.S.P.Q.2d 1487 (S.D.
N.Y. 2011), aff'd, 511 Fed. Appx. 81 (2d Cir. 2013) (“[B]oth the PRL Polo Player Logo and ‘POLO’ word
mark are arbitrary with regard to fragrances and so their inherent distinctiveness is robust.”).

20 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 207, 120 S. Ct. 1339, 146 L. Ed. 2d 182, 54
U.S.P.Q.2d 1065 (2000) (The Supreme Court categorized children's clothing “decorated with appliques of
hearts, flowers, fruits and the like” as product design which required proof of secondary meaning.). See §§
7:103, 8:12.

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21 In re Slokevage, 441 F.3d 957, 962, 78 U.S.P.Q.2d 1395 (Fed. Cir. 2006) (“Just as the product design in Wal-
Mart consisted of certain design features featured on clothing, Slokevage's trade dress similarly consists
of design features, holes and flaps, featured in clothing, revealing the similarity between the two types of
design.”).

22 In re Lululemon Athletica Canada Inc, 105 U.S.P.Q.2d 1684, 1691, 2013 WL 326567 (T.T.A.B. 2013) (While
the design on the garment resembled the standard Lululemon wave design logo in a circle, it was significantly
different in appearance. “In short, the wave design that applicant uses in other contexts is not the same
mark that applicant now seeks to register. Accordingly, these past uses and registrations cannot be used by
applicant to show that the design in the application is distinctive, rather than ornamental, because they do
not show use of the same mark.”).

23 In re Villeroy & Boch S.A.R.L., 5 U.S.P.Q.2d 1451, 1987 WL 123870 (T.T.A.B. 1987). See In re Petersen
Manufacturing Co., 2 U.S.P.Q.2d 2032, 1987 WL 123834 (T.T.A.B. 1987) (ordinary designs and drawings
showing use of the product on the back of product's container were held only instructions and decoration,
not a trademark).

24 In Re J. Kinderman & Sons Inc., 46 U.S.P.Q.2d 1253, 1998 WL 177477 (T.T.A.B. 1998) (“[A]pplicant's
designs, which consist of stars and the colors red, green and gold, and indeed resemble wrapped Christmas
presents, are a mere refinement of a form of ornamentation for Christmas merchandise. As such, purchasers
and prospective purchasers for applicant' goods would be unlikely to regard these designs as identifying
and distinguishing applicant's Christmas tree lights and indicating their source.”). Accord: In re File, 48
U.S.P.Q.2d 1363, 1998 WL 750353 (T.T.A.B. 1998) (tubular lights running lengthwise down a bowling alley
lane are merely decorative and would not be regarded as serving as a mark for bowling alley services).

25 In re Watkins Glen International, Inc., 227 U.S.P.Q. 727, 1985 WL 71939 (T.T.A.B. 1985) (“[M]atter
which serves as part of the aesthetic ornamentation of goods, such as shirts, hats, patches and the like may
nevertheless be registered as a trademark for such goods if it also serves a source-indicating function.”).
Compare: HBP, Inc. v. American Marine Holdings, Inc., 290 F. Supp. 2d 1320, 68 U.S.P.Q.2d 1798 (M.D.
Fla. 2003), aff'd, 129 Fed. Appx. 601 (11th Cir. 2005) (“A black and white checkered flag is a generic symbol
for racing. [The promoter of the Daytona auto races] cannot and has not trademarked the checked flag in
isolation ….”).

26 Malaco Leaf, AB v. Promotion In Motion, Inc., 287 F. Supp. 2d 355, 364 (S.D. N.Y. 2003) (Summary
dismissal granted.).

27 Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 U.S.P.Q.2d 1475, 1988 WL 252486 (T.T.A.B. 1988).
See § 32:143.

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1 McCarthy on Trademarks and Unfair Competition § 7:25 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:25. Distinctive designs and symbols

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(1)

Inherently Distinctive Designs. Symbols and designs that are inherently distinctive can be registered and protected as marks
without the need for proof of secondary meaning.1 Unregistered marks and trade dress that are inherently distinctive are
protectable under Lanham Act § 43(a), 15 U.S.C.A. § 1125(a) without proof of secondary meaning.2 The test of whether trade
dress is inherently distinctive is discussed at § 8:13. Symbols and designs that are not inherently “distinctive” can only achieve
trademark status upon sufficient proof of secondary meaning.3

A very well-known logo design is the CHEVROLET logo, which has been used and registered both by itself and also with the
word mark CHEVROLET superimposed.4 In the author's opinion, it is inherently distinctive.

Fig. 7:25A. CHEVROLET DESIGN LOGO

Protection Upon Proof of a Secondary Meaning. Even if not inherently distinctive, a design can become a valid trademark
and be registered and protected against infringement by proof of acquired distinctiveness: secondary meaning.5 For example,

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the blue “cornflower” design of the Corning Glass Works was found not to be inherently distinctive, in view of the many flower
designs used on tableware and cookware. But the design was held registrable with survey evidence proving secondary meaning.6
After registration, a federal court issued a preliminary injunction against a competitor's use of the flower design.7

Fig. 7:25B. STYLIZED CORNFLOWER DESIGN HELD NOT INHERENTLY DISTINCTIVE (SECONDARY
MEANING PROVEN)

The Trademark Board held that the guitar head shapes illustrated were valid trademarks for guitars, were not merely ornamental
designs and had acquired a secondary meaning.8

Fig. 7:25C. GUITAR HEAD SHAPES FOUND TO BE TRADEMARKS (SECONDARY MEANING PROVEN)

Decorative Designs of and on Wearing Apparel. Because a claim to the design and appearance of wearing apparel is a claim
to exclusive rights in product design, under the rule in the Supreme Court's 2000 Wal-Mart case, a secondary meaning must
always be proven.9 For example, the Federal Circuit held that a foldable flap at the area of the rear pockets on pants was product
design under the Wal-Mart rule.10

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Designs and Shapes Used with Varying Word Marks. When a product shape or design is sold by the authority of plaintiff
under several different word marks (e.g., by “private labeling” for others), it is more difficult for plaintiff to prove acquisition
of secondary meaning—that is, that the shape or design identifies a single source.11

Distinctive Design, But Only a Narrow Scope of Protection. Even if design qualifies for trademark protection, because of
extensive third party use of similar designs, the scope of exclusivity may be narrow.12 For example, the Trademark Board has
held that because of the common use of various stripe designs on sports shoes made by different manufacturers, any one such
design may be a relatively “weak” mark having a narrow scope of protection.13 But even a relatively “weak” mark can be
infringed by a junior user's very similar mark on competitive goods.14

Images of Real Objects: Ownership of the Mark or the Object? To possess valid trademark rights in a picture of a real object,
it is not necessary that the trademark owner have an ownership right in the actual real or personal property that is pictured. For
example, to use a picture of the Golden Gate Bridge or of the Presidential White House as a mark for bread, the trademark
owner need not have any ownership rights in those objects.15

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Footnotes
1 Examples include: Application of Esso Standard Oil Co., 49 C.C.P.A. 1351, 305 F.2d 495, 497, 134
U.S.P.Q. 402 (1962) (“We consider the red, white and blue ‘ESSO’ label with its distinctive proportions and
arrangement of elements to be inherently distinctive.”); AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1537, 1
U.S.P.Q.2d 1161 (11th Cir. 1986) (ice cream bar wrapping of square size, bright coloring, pebbled texture
with images of polar bear and sunburst held to be an inherently distinctive trade dress); Computer Care v.
Service Systems Enterprises, Inc., 982 F.2d 1063, 1069, 25 U.S.P.Q.2d 1020 (7th Cir. 1992) (appearance of
sales brochures, reminder letters and reports held inherently distinctive trade dress because it is “unique in
the car service industry”); Nabisco, Inc. v. PF Brands, Inc., 50 F. Supp. 2d 188, 200 (S.D. N.Y. 1999), aff'd
191 F.3d 208, 51 U.S.P.Q.2d 1882 (2d Cir. 1999) (Fish-shaped “goldfish” crackers: “Because the Goldfish
are inherently distinctive, there is no need to address whether the product design has acquired a secondary
meaning.”).

See Restatement Third, Unfair Competition § 16, comment b (1995) (“Trade dress that is unique and
prominent can thus be inherently distinctive. If the trade dress is descriptive (see § 14) or inconspicuous,
or not sufficiently different from that used by others to justify a conclusion of inherent distinctiveness,
trademark rights will depend upon proof of distinctiveness through evidence of secondary meaning.”).

2 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S. Ct. 2753, 120 L. Ed. 2d 615, 23 U.S.P.Q.2d
1081 (1992) (“The general rule regarding distinctiveness is clear: An identifying mark is distinctive and
capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through
secondary meaning.”).

3 See e.g. Application of Hehr Mfg. Co., 47 C.C.P.A. 1116, 279 F.2d 526, 528, 126 U.S.P.Q. 381 (1960)
(“[U]nless a design is inherently distinctive it is registrable only if sufficient evidence is presented to show
that it has acquired secondary meaning as a trademark ….” Non-inherently distinctive square red label
was registered upon sufficient evidence of secondary meaning); Application of David Crystal, Inc., 49
C.C.P.A. 775, 296 F.2d 771, 778, 132 U.S.P.Q. 1 (1961) (colored bands around top of men's socks was not
inherently distinctive: evidence was not sufficient to prove secondary meaning); The Board of Trustees of the
University of Alabama v. Pitts, 107 U.S.P.Q.2d 2001, 2015, 2013 WL 4397047 (T.T.A.B. 2013) (“Because
the Seabrook factors demonstrate opposer's use of the Houndstooth Pattern is not inherently distinctive, it
can only be recognized as a trademark upon proof of acquired distinctiveness.” No secondary meaning was
proven.).

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4 This logo is sometimes referred to as the “bowtie” design. Logo design registered alone, Reg. No. 95,398
(Feb. 17, 1914); word CHEVROLET registered alone, Reg. No. 95,990 (Mar. 31, 1914); design and word
composite, Reg. 190,028 (Sept. 30, 1924).

5 See §§ 15:1 and following.

6 The Federal Glass Company v. Corning Glass Works, 162 U.S.P.Q. 279, 1969 WL 9105 (T.T.A.B. 1969).

7 Corning Glass Works v. Jeannette Glass Co., 308 F. Supp. 1321, 164 U.S.P.Q. 435 (S.D. N.Y. 1970), opinion
aff'd, 432 F.2d 784, 167 U.S.P.Q. 421 (2d Cir. 1970).

8 Yamaha International Corp. v. Hoshino Gakki Co., Ltd., 231 U.S.P.Q. 926, 1986 WL 83747 (T.T.A.B. 1986),
aff'd, 840 F.2d 1572, 6 U.S.P.Q.2d 1001 (Fed. Cir. 1988). See Gibson Guitar Corp. v. Paul Reed Smith
Guitars, LP, 423 F.3d 539, 76 U.S.P.Q.2d 1372, 2005 Fed. App. 0387P (6th Cir. 2005) (no infringement of
registered mark in shape of Les Paul single cutaway guitar); Stuart Spector Designs, Ltd. v. Fender Musical
Instruments, 94 U.S.P.Q.2d 1549, 2009 WL 1017284 (T.T.A.B. 2009) (Sustaining opposition to registration
of shape of FENDER Telecaster, Stratocaster and Precision base guitar bodies on the ground the shapes were
so common as to be generic or alternatively, had not achieved secondary meaning.); Gibson Brands, Inc.
v. Armadillo Distribution Enterprises, Inc., 121 Fed. R. Evid. Serv. 173 (E.D. Tex. 2023) (Upholding jury
verdict of infringment of headstock and guitar body product design trade dress of several models.).

9 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 207, 120 S. Ct. 1339, 146 L. Ed. 2d 182, 54
U.S.P.Q.2d 1065 (2000) (The Supreme Court categorized children's clothing “decorated with appliques of
hearts, flowers, fruits and the like” as product design which required proof of secondary meaning.). See
discussion at § 7:24.

10 See In re Slokevage, 441 F.3d 957, 962, 78 U.S.P.Q.2d 1395 (Fed. Cir. 2006) (“Just as the product design in
Wal-Mart consisted of certain design features featured on clothing, Slokevage's trade dress similarly consists
of design features, holes and flaps, featured in clothing, revealing the similarity between the two types of
design.”); In re Lululemon Athletica Canada Inc, 105 U.S.P.Q.2d 1684, 2013 WL 326567 (T.T.A.B. 2013)
(Wave design covering the torso of a sweat shirt or jacket was not registerable as a trademark for sweat
shirts and jackets: it was not inherently distinctive and would be perceived merely as ornamentation of the
clothing. Illustrated in § 7:24.).

11 See § 8:14.

12 See § 11:85 for discussion of “crowded” trademark markets.

13 See, e.g., Puma-Sportschuhfabriken Rudolf Dassler, K.G. v. Superga S.P.A., 204 U.S.P.Q. 688, 1979 WL
24900 (T.T.A.B. 1979) (shoe stripe design limited to substantially identical mark); In re the Lucky Company,
209 U.S.P.Q. 422, 1980 WL 39048 (T.T.A.B. 1980); Puma-Sportschuhfabriken Rudolf Dassler Kg v. Roller
Derby Skate Corporation, 206 U.S.P.Q. 255, 1980 WL 30121 (T.T.A.B. 1980); In re Chung, Jeanne &
Kim Company, Inc., 226 U.S.P.Q. 938, 1985 WL 72090 (T.T.A.B. 1985) (One stripe and six stripe sports
shoe designs are mere ornamentation and not inherently distinctive. Evidence of secondary meaning held
insufficient. But “star and stripe” design held a registerable trademark.).

14 See § 11:76. See, e.g., ASICS Corp. v. Wanted Shoes, Inc., 75 U.S.P.Q.2d 1303, 2005 WL 1691587 (C.D.
Cal. 2005) (preliminary injunction granted against infringement of registered stripe design on sports shoes).

15 See, e.g., Pebble Beach Co. v. Tour 18 I, Ltd., 942 F. Supp. 1513, 1531, 1541 (S.D. Tex. 1996), judgment
aff'd as modified, 155 F.3d 526, 48 U.S.P.Q.2d 1065 (5th Cir. 1998) (The owner of a golf course can possess
trade dress and trademark rights in the image of a lighthouse that is near the green of the famous Harbour
Town golf course Hole 18, even though plaintiff did not own the physical structure of the lighthouse; plaintiff

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§ 7:25. Distinctive designs and symbols, 1 McCarthy on Trademarks and Unfair...

“featured the lighthouse in various corporate logos and has placed these logos on a wide array of promotional
materials.”). See § 7:100.

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§ 7:26. Designs, shapes, and symbols as background for..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:26 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:26. Designs, shapes, and symbols as background for word marks

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(1)

Tests for determining whether a background design is protectable as a separate mark are discussed below.

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Works.

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§ 7:27. Designs, shapes, and symbols as background for..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:27 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:27. Designs, shapes, and symbols as background

for word marks—Separate commercial impression test

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(1)

Background Design for a Word Mark. The issue of whether an applicant for registration has improperly “mutilated” its
trademark and attempted to register only a background design for a word mark is usually resolved by the “separate commercial
impression test”: does the designation sought for registration create a commercial impression separate and apart from other
material appearing with it? If it does, then there is no “mutilation.” The “mutilation” issue is discussed at § 19:59.

To be registered and protected as a separate mark, a background design that is always used in connection with word marks must
create a commercial impression on buyers separate and apart from the word marks for the design.1 For example, a geometrical
shape that is always used as a background for a word or letter mark cannot serve as a mark by itself unless the shape creates a
separate commercial impression on the ordinary buyer. This is discussed at § 7:29.

A design that is background for word marks cannot be capable of separate trademark significance if the design and the word
mark so blend together that they create a single impression upon an ordinary buyer. Obviously, the more fanciful and distinctive
the background design, the more likely it is to create a separate impression and not just blend into the background.

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Application of Schenectady Varnish Co., 47 C.C.P.A. 1156, 280 F.2d 169, 126 U.S.P.Q. 395 (1960) (Cloud
and lightning flash design used with word mark SCHENECTADY had attained a secondary meaning and
was registrable as separate mark); In re Interstate Bakeries Corporation, 153 U.S.P.Q. 488, 1967 WL 7646
(T.T.A.B. 1967) (Inherently distinctive checkered gingham design covering bread wrapper held a registrable
mark for bakery products); In re Kerr-McGee Corporation, 190 U.S.P.Q. 204, 1976 WL 20926 (T.T.A.B.

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§ 7:27. Designs, shapes, and symbols as background for..., 1 McCarthy on...

1976) (Simple escutcheon design background for word marks was not registerable for gasoline station
services. “[The design] falls far short of the level of distinctiveness required for registration on the Principal
Register.”).

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§ 7:28. Designs, shapes, and symbols as background for..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:28 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:28. Designs, shapes, and symbols as background for

word marks—Comment: tests for background designs

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(1)

When trademark significance is claimed in a design used as background for word, letter or number marks, the ultimate issue is
whether the design itself is “distinctive.” This breaks up into three separate sub-issues:

(1) To be a trademark, any decorative or ornamental aspect of the design must be incidental to its principal impact of identifying
and distinguishing the source of the goods.1

(2) To be a trademark, the background design must create a separate commercial impression upon the ordinary buyer. This
impression must be totally separate and apart from that created by the other marks placed on the background design.2 The
design must emerge out of the “background” and “hit the buyer in the eye” such that it is likely to guide the buyer in purchasing
decisions. This is obviously a subjective judgment to make. The decision-maker will likely make his or her own inference based
on his or her own reaction to a label. However, persuasive evidence would be a competent consumer survey and evidence of
the seller's vigorous “look for” promotion of the design in advertising.3

(3) If the design is “inherently distinctive,” it is automatically deserving of trademark significance, like any other fanciful
mark (assuming elements (1) and (2) have been satisfied).4 If the design is not so uncommon or unusual as to be “inherently
distinctive,” protection can be granted only upon sufficient proof to establish secondary meaning. That is, there must be some
proof that buyers have come to use the design to identify one single, albeit anonymous, source of the goods or services. Such
secondary meaning can be proven by introducing evidence of the seller's promotion and advertising and perhaps consumer
surveys of buyers' reactions.5

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§ 7:28. Designs, shapes, and symbols as background for..., 1 McCarthy on...

Footnotes
1 See § 7:24.

2 See §§ 7:26 to 7:29.

3 See § 7:28.

4 See § 7:25.

5 See §§ 15:5 to 15:10.

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§ 7:29. Designs, shapes, and symbols as background for..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:29 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:29. Designs, shapes, and symbols as background for word

marks—Inherently distinctive and nondistinctive designs

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(1)

When Secondary Meaning is Required. As a part of the “separate commercial impression” test, and pursuant to the rule in
design cases,1 a noninherently distinctive shape cannot function as a separate mark unless secondary meaning is proven in the
shape per se, divorced from any word marks.2 Consumer survey evidence is obviously relevant to both the issue of “separate
commercial impression” and the issue of secondary meaning of the design, if it is not distinctive in and of itself.3

Common Geometric Shapes. Most common geometric shapes are regarded as not being inherently distinctive, in view of the
common use of such shapes in all areas of advertising.4 Thus, such ordinary shapes as circles, ovals, squares, etc., either when
used alone or as a background for a word mark, cannot function as a separate mark unless (1) the shape is likely to create a
commercial impression on the buyer separate from the word mark or any other indicia and (2) the shape is proven to have
secondary meaning—that is, consumer recognition and association between the shape alone and the seller. The policy behind
this rule seems clear: no one seller should be allowed to appropriate such commonplace shapes as circles, squares, and ovals and
claim only he can use such a shape as a background for his word mark. The rationale is that such designs have been so widely
and commonly used as mere decorative graphic elements that the origin-indicating ability of such designs has been diminished.5

In finding that the circular shape of a beach towel was not protectable as trade dress because it was functional, the Seventh
Circuit added that a circle was not the kind of simple design that should be given an exclusive right: “A circle is the kind of basic
design that a producer like Jay Franco adopts because alternatives are scarce and some consumers want the shape regardless of
who manufactures it. There are only so many geometric shapes; few are both attractive and simple enough to fabricate cheaply.”6

Common Geometric Shape Alone or as Background. The same rules apply whether a common geometric shape is used alone
or as a background for a word mark. As the Trademark Board commented: “It simply makes no sense to say that an equilateral

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§ 7:29. Designs, shapes, and symbols as background for..., 1 McCarthy on...

triangle, when used in association with a word, is inherently nondistinctive and then to say that an equilateral triangle, when
used by itself, is inherently distinctive.”7 But the Second Circuit has cautioned that if a common geometric shape, such as an
“O,” is sufficiently stylized or designed in some way, then it could be classified as inherently distinctive and not be in need
of secondary meaning.8

The rule of geometric designs has sometimes been stretched to include other designs commonly found on certain products. For
example, a red heart affixed to the left breast of a teddy bear, by analogy to the rule of common geometric designs, was held
not to be inherently distinctive and no secondary meaning was proven.9

“Look For” Promotion. To obtain trademark significance for such shapes, strong evidence consists of the fact that the seller
has so emphasized the background design or shape that consumers identify its products when they see the design alone, apart
from any other marks on the label.10

Unusual Background Designs. A background design or shape that is so fanciful as to be inherently distinctive can function as
a mark without the need for proof of secondary meaning. The issue is whether this shape is so unusual for this type of goods
or services that its distinctiveness can be assumed. It is also necessary that such a distinctive shape be so used as to create a
separate commercial impression on buyers apart from any other element (words, letters, numbers, etc.) used in combination
with the shape.11

Fig. 7:29A. SYMBOL AND WORD MARK

Fig. 7:29B. BACKGROUND DESIGN HELD INHERENTLY DISTINCTIVE12

Fig. 7:29C. SYMBOL AND WORD MARK—ANOTHER EXAMPLE

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§ 7:29. Designs, shapes, and symbols as background for..., 1 McCarthy on...

Fig. 7:29D. BACKGROUND SYMBOL HELD INHERENTLY DISTINCTIVE—ANOTHER EXAMPLE13

Fig. 7:29E. DESIGN AND WORD MARK WITH DISTINCTIVENESS OF DESIGN PROVEN THROUGH
SECONDARY MEANING EVIDENCE14

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Footnotes
1 See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 120 L. Ed. 2d 615, 112 S. Ct. 2753, 23
U.S.P.Q.2d 1081 (1992), reh'g denied, 505 U.S. 1244, 120 L. Ed. 2d 947, 113 S. Ct. 20 (1992). See § 7:25.

2 In re E. J. Brach & Sons, 256 F.2d 325, 118 U.S.P.Q. 308 (C.C.P.A. 1958); In re Schenectady Varnish Co.,
280 F.2d 169, 126 U.S.P.Q. 395 (C.C.P.A. 1960); In re F. H. Noble & Co., 122 U.S.P.Q. 621 (T.T.A.B. 1959)
(leaf scroll design on trophy figure held registrable as had obtained trademark significance in minds of retail
dealers, although merely ornamental to ultimate buyers); Samson Cordage Works v. Puritan Cordage Mills,
243 F. Supp. 1, 140 U.S.P.Q. 119, 145 U.S.P.Q. 602 (W.D. Ky. 1964) (spiral pattern of spots on sash cord
acquired secondary meaning and given protection); Marcalus Mfg. Co. v. Watson, 156 F. Supp. 161, 115
U.S.P.Q. 232 (D.D.C. 1957), aff'd, 258 F.2d 151, 118 U.S.P.Q. 7 (D.C. Cir. 1958) (secondary meaning not
proven for red oval design); In re Kerr-McGee Corp., 190 U.S.P.Q. 204 (T.T.A.B. 1976) (registration of
escutcheon design refused); In re Flex-O-Glass, Inc., 194 U.S.P.Q. 203 (T.T.A.B. 1977) (red circle in yellow
rectangle held registrable upon proof of secondary meaning); In re Library Restaurant, Inc., 194 U.S.P.Q.
446 (T.T.A.B. 1977) (background design did not present separate commercial impression); In re Volante
International Holdings, 196 U.S.P.Q. 188 (T.T.A.B. 1977) (background design found inseparable from word
mark); In re Wendy's International, Inc., 227 U.S.P.Q. 884 (T.T.A.B. 1985) (background design for word
and picture marks was held neither inherently distinctive nor sufficiently distinctive to create a separate
commercial impression in the absence of proof of secondary meaning).

3 See § 32:158 and following sections about the use of survey evidence.

4 Second Circuit
Star Industries, Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 75 U.S.P.Q.2d 1098 (2d Cir. 2005), cert. denied,
547 U.S. 1019, 126 S. Ct. 1570 (2006) (“Common basic shapes or letters” are not inherently distinctive and
need proof of secondary meaning.); Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 79

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§ 7:29. Designs, shapes, and symbols as background for..., 1 McCarthy on...

U.S.P.Q.2d 1481 (2d Cir. 2006) (“Basic geometric shapes, basic letters and single colors are not protectable
as inherently distinctive … . These symbols may be protected only upon a showing of secondary meaning.”)
Fifth Circuit
Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 246-247, 95 U.S.P.Q.2d 1333 (5th Cir. 2010) (A
five pointed star within a circle was not inherently distinctive. “The record evidence is replete with similar
or identical five-pointed stars, both raised and set in circles, and used in similar manners, such that … no
reasonable jury could find that the Star Symbol is even a mere refinement of this commonly adopted and
well-known form of ornamentation.” No secondary meaning was proven.)
Seventh Circuit
Dow Corning Corp. v. Applied Power Industries, Inc., 322 F. Supp. 943, 167 U.S.P.Q. 730 (N.D. Ill. 1970)
(rectangle)
Ninth Circuit
Apple Growers Ass'n v. Pelletti Fruit Co., 153 F. Supp. 948, 115 U.S.P.Q. 169 (N.D. Cal. 1957) (diamond)
D.C. Circuit
Marcalus Mfg. Co. v. Watson, 258 F.2d 151, 118 U.S.P.Q. 7 (D.C. Cir. 1958) (oval)
Federal Circuit
Application of Hillerich & Bradsby Co., 40 C.C.P.A. 990, 204 F.2d 287, 97 U.S.P.Q. 451 (1953) (oval);
Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 U.S.P.Q. 289 (C.C.P.A. 1977) (oval
background design held not inherently distinctive and not possessed of secondary meaning)
Trademark Board
In re Anton/Bauer Inc., 7 U.S.P.Q.2d 1380, 1988 WL 252362 (T.T.A.B. 1988) (parallelogram); In re The
American Academy, 64 U.S.P.Q.2d 1748, 2002 WL 1160436 (T.T.A.B. 2002) (“[O]rdinary geometric shapes
such as circles, ovals, squares, stars, etc. are generally regarded as nondistinctive and protectable only on
proof of acquired distinctiveness.”); Nike, Inc. (Substituted For Official Starter LLC) v. WNBA Enterprises,
LLC, 85 U.S.P.Q.2d 1187, 2007 WL 763166 (T.T.A.B. 2007) (While star designs are not usually inherently
distinctive, a composite of a star and the letter “S” is strong and applicant's mark for competitive goods was
likely to cause confusion.)
5 In re B & J Mfg. Co., 196 U.S.P.Q. 707 (T.T.A.B. 1977) (star design held nonregistrable in absence of
evidence of purchaser recognition of design as a mark); see Permatex Co. v. California Tube Products, Inc.,
175 U.S.P.Q. 764 (T.T.A.B. 1972) (background “swirl” design held inherently distinctive sufficient to sustain
opposition to registration of similar design for a different word mark).

6 Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 861, 96 U.S.P.Q.2d 1404 (7th Cir. 2010).

7 Guess ?, Inc. v. Nationwide Time, Inc., 16 U.S.P.Q.2d 1804 (T.T.A.B. 1990) (An equilateral triangle used as a
mark for watches falls in the category of a common, basic geometric shape which is inherently nondistinctive
and thus needs proof of secondary meaning. Approving of the rule in the treatise, the Board remarked
that the same rule applies whether a basic shape is used alone or as background for a word mark: No
secondary meaning was proven.). See § 7:33. Compare Guess?, Inc. v. Tres Hermanos, 993 F. Supp. 1277,
45 U.S.P.Q.2d 1179 (C.D. Cal. 1997) (distinguishing the Board decision and holding to be an infringer a
defendant who used on jeans the same inverted white triangle with red edging placed in the same location
on the jeans as did plaintiff).

8 Star Industries, Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 75 U.S.P.Q.2d 1098 (2d Cir. 2005), cert. denied,
126 S. Ct. 1570, 164 L. Ed. 2d 298 (U.S. 2006) (while plaintiff's “O” was sufficiently stylized by shading,
border, and thickness to be more than a basic geometric shape to be inherently distinctive, it was a weak
mark and was not infringed).

9 Wiley v. American Greetings Corp., 762 F.2d 139, 226 U.S.P.Q. 101 (1st Cir. 1985). See Amazing Spaces,
Inc. v. Metro Mini Storage, 608 F.3d 225, 246-247, 95 U.S.P.Q.2d 1333 (5th Cir. 2010) (A five pointed star
within a circle was not inherently distinctive, the court quoting this treatise's discussion of the rule about
common geometric shapes.).

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§ 7:29. Designs, shapes, and symbols as background for..., 1 McCarthy on...

See Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 716 F.2d 854, 221 U.S.P.Q. 536 (1st Cir. 1983) (“V” design
on sports shoes was held not inherently distinctive, noting that many competitors use close variations of
such designs; no secondary meaning proven).

10 See, e.g., In re Haggar Co., 217 U.S.P.Q. 81 (T.T.A.B. 1982) (background design not inherently distinctive,
but secondary meaning proven). See discussion of “Look for” promotion at § 7:30.

11 In re E. J. Brach & Sons, 256 F.2d 325, 118 U.S.P.Q. 308 (C.C.P.A. 1958); Permatex Co. v. California
Tube Products, Inc., 175 U.S.P.Q. 764 (T.T.A.B. 1972) (“Swirl” design); In re W. B. Roddenbery Co., 135
U.S.P.Q. 215 (T.T.A.B. 1962); In re Omni Spectra, Inc., 143 U.S.P.Q. 458 (T.T.A.B. 1964); Dow Corning
Corp. v. Applied Power Industries, Inc., 322 F. Supp. 943, 167 U.S.P.Q. 730 (N.D. Ill. 1970) (dicta). See In
re Esso Standard Oil Co., 305 F.2d 495, 134 U.S.P.Q. 402 (C.C.P.A. 1962); Hygienic Products Co. v. Coe,
85 F.2d 264 (D.C. Cir. 1936) (distinctive yellow rectangle with blue border). See § 7:25.

12 In re W. B. Roddenbery Co., 135 U.S.P.Q. 215 (T.T.A.B. 1962).

13 In re Omni Spectra, Inc., 143 U.S.P.Q. 458 (T.T.A.B. 1964).

14 In re Raytheon Co., 202 U.S.P.Q. 317 (T.T.A.B. 1979) (oval background design held not inherently
distinctive but distinctiveness proven through evidence of secondary meaning by customer questionnaires).
Compare In re Anton/Bauer, Inc., 7 U.S.P.Q.2d 1380 (T.T.A.B. 1988) (parallelogram background design
is not inherently distinctive and secondary meaning is not proven; the Raytheon case was distinguished as
resting upon evidence of customer perception which was missing in this case).

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§ 7:30. “Look for” promotion, 1 McCarthy on Trademarks and Unfair Competition §...

1 McCarthy on Trademarks and Unfair Competition § 7:30 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:30. “Look for” promotion

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(1)

The Importance of Drawing Attention to the Designation. Relevant to the “separate commercial impression” test is any
evidence that the seller has promoted its background design, product shape or pattern in advertising.1 For example, if the seller
has advertised: “Look for the polka-dot label,”2 this would support an inference that buyers did look for such a label design,
and thus it does serve as a trademark to indicate source and quality. In many of the cited cases, the presence or absence of “look
for” promotion appeared to be a critical element. Thus, a firm that seriously intends to attain trademark significance in a given
design or shape would be well advised to engage in such advertising and promotion.3

The Evidentiary Significance of No “Look For Promotion.” A package or product feature like shape or color will not normally
be perceived by buyers as an indicator of origin. The same is true of commonly used packaging background designs, such as
squares, circles and stars. Therefore, as the Second Circuit observed, “if a manufacturer wishes to retain Lanham Act protection
for a product feature, it bears the burden of insuring that consumers view the feature in predominantly source-identifying
terms.”4 The most effective way to accomplish this is through “look for” advertising which draws the shopper's attention to
this particular feature. Since the burden is on the company that argues that a particular feature or designation is its exclusive
trademark or trade dress property, it is incumbent on that company to prove that an otherwise unremarkable feature has achieved
the status of a source indicator. “Look for” advertising is the best way to accomplish this.

Many decisions have noted the absence of “look for” promotion in finding that a design or product shape either: (1) is not used as
a trademark; or (2) lacks secondary meaning; or (3) is too weak a mark to result in a likelihood of confusion caused by another.5

For example, the Trademark Board has relied on the lack of “look for” advertising in these cases:

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§ 7:30. “Look for” promotion, 1 McCarthy on Trademarks and Unfair Competition §...

• The shape of a file card was not used as a trademark, the Board noting that “nowhere in applicant's materials is there any
indication to purchasers that the configuration of applicant's new card is intended to serve as a trademark.”6

• The image of a bird was not promoted separate from the words BIRDS EYE so as to be strong enough to create a likelihood
of confusion with a junior user of a bird design.7

• The appearance of a two-colored drug capsule had not achieved a secondary meaning, the Board emphasizing that the color
was not promoted as a source indicator.8

• A fluting design on a beverage can was not proven to have acquired a secondary meaning, the Board remarking on the lack
of any advertising drawing attention to that aspect of the product appearance.9

• The product shape of a light emitting diode was held not to have any secondary meaning, the Board noting the “significant
deficiency” of a lack of look for advertising promoting the product shape as a trademark.10

• No secondary meaning was proven in the colors of the case, bezel and strap of digital watch, the Board noting the lack of any
promotion of the colors to identify applicant as the source.11

• No secondary meaning was proven in a color-coding system to match colored laboratory pipettes and colored pipette tip
containers to ensure use of the proper sized tip on a pipette, the Board noting the lack of “look for” promotion.12

• The shape of a design inset into an eyeglass earpiece was found not to have acquired a secondary meaning, the Board saying
that the “chief reason” was the absence of “look for” promotion of the earpiece design as a trademark.13

• The design of an umbrella with a vented mesh insert did not acquire a secondary meaning, the Board noting that applicant's
advertising did not use “look for” language to focus attention on the design as a source identifier.14

• Two bands on the barrel of a rechargeable flashlight were found not to have acquired a secondary meaning, the Board stating
that “perhaps the most damaging” aspect was the absence of any “look for” advertising attempting to create a link between
the bands and a single source.15

• A T-shaped gasoline station structure used to enclose the pumps and display a sign and logo had not acquired a secondary
meaning, the Board noting that applicant failed in advertising or promotion to draw customers' attention to the shape of that
structure as indicating source.16

• A hounds-tooth pattern on a fedora worn by and associated with University of Alabama college football coach “Bear” Bryant
was not proven to have been used as a trademark by the university, the Board noting the absence of “look for” promotion.17

• The product design of a concession trailer for selling shaved ice sno-cones was not proven to have acquired a secondary
meaning, the T.T.A.B. noting the lack of “look for” promotion.18

“Look for” Advertising Can Be Important in Proving Trademark Significance. Several decisions have noted the presence of
look for advertising in upholding the trademark significance of a design. Some examples are:

• A colored narrow annular band on computer tape reels was found to have a secondary meaning and to serve as a trademark
for computer tape reels, the court pointing to advertising that said: “Recognize them by the color-coded Saturn ring around
the hub.”19

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§ 7:30. “Look for” promotion, 1 McCarthy on Trademarks and Unfair Competition §...

• A herringbone cross-hatch design for synthetic fibers was found to have acquired a secondary meaning, the Board noting
advertising that said: “Look for the cross hatch trademark … a sign of Chicopee quality.”20

• An inverted Y design sewn into JOCKEY men's underpants was found to serve as a trademark for the garments, the Board
noting advertising featuring the design and saying: “Look for this mark on the garment.”21

• The gold and black colors of a mist-making machine were found to serve as a mark for the machines, the Board remarking
that “applicant, in its advertising, has sought to develop trademark recognition of its gold and black configuration by using
in its advertising material and price lists such phrases as ‘Gold and Black Means AFA,’ and ‘Look for the characteristic gold
and black that identifies the Fogmaster 7401 Mist-Jet Fogger.’”22

• In enjoining an imitation of the shape of LIFESAVERS candy with a hole, the court noted that advertising had consistently
emphasized the distinctive candy shape and hole in the middle.23

Advertising and Promotion That Lacks a “Look For” Component. Advertising which promotes the functional features of
the trade dress or which fails to promote an association between product and source does not support a finding of secondary
meaning.24 To the contrary, such advertising “supports instead the inference that consumers consider the claimed trade dress a
desirable feature of the product and not primarily a signifier of source.”25

If advertising merely pictures a product shape but fails to draw attention to it as a source identifier, then such advertising does
not support trademark status in the product shape.26 As the First Circuit observed: “To be probative of secondary meaning, the
advertising must direct the consumer to those features claimed as trade dress.”27 Similarly, if advertising only lauds the aesthetic
attraction and appeal of a product design, it is not evidence of secondary meaning: “It has marketed its design precisely for its
beauty, not because it alerted consumers to its source.”28

“Look For” Advertising is Important But Not Always Determinative. It cannot be flatly stated that a design or product shape
can never constitute a protectable trade dress or trademark unless there is explicit “look for” advertising. Other evidence may
be sufficient to support the trademark significance of an otherwise undistinguished design or product shape.29 For example,
the Trademark Board said that “look for” promotion was not fatal in a market where it was common industry practice for
manufacturers of keys and door hardware to use the key head shape and design as an indication of source. In that case, the
Board found secondary meaning in a particular key head design even in the absence of “look for” promotion.30

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 662, 36 U.S.P.Q.2d 1065, 1071 (7th Cir. 1995)
(“Advertising which encourages consumers to identify the claimed trade dress with the particular producer
(‘look for the oval head’) is some evidence of secondary meaning. … If a good deal of such advertising
is done, the presumption is that at least some of it will take and some consumers will make the suggested
connection.”); Stuart Spector Designs, Ltd. v. Fender Musical Instruments, 94 U.S.P.Q.2d 1549, 2009 WL
1017284 (T.T.A.B. 2009) (“‘Look for’ advertising refers to advertising that directs the potential consumer
in no uncertain terms to look for a certain feature to know that it is from that source. It does not refer
to advertising that simply includes a picture of the product or touts a feature in a non-source identifying
manner.” Sustained opposition to registration of the shape of FENDER Telecaster, Stratocaster and Precision
guitar bodies. Fender did not “direct viewers to look for that body outline to know it comes from applicant.”
Secondary meaning not proven.).

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2 See e.g. In re Jockey International, Inc., 192 U.S.P.Q. 579, 583, 1976 WL 21154 (T.T.A.B. 1976) (An
inverted Y design sewn into JOCKEY men's underpants was found to serve as a trademark for the garments.
Advertising featured the design: “Look for this mark on the garment.” “[C]ustomers and prospective
purchasers were further alerted to this mark in applicant's literature, advertising and promotional material
by use of the phrase ‘known the world over by this symbol’ in association with the inverted-Y.”); In re ic!
berlin brillen GmbH, 85 U.S.P.Q.2d 2021, 2008 WL 853849 (T.T.A.B. 2008) (Shape of a design inset into
an eyeglass earpiece had not acquired a secondary meaning. The “chief reason” was the absence of “look
for” promotion of the earpiece design as a trademark. “[T]here is nothing to indicate [in the advertising]
that the ultimate purchasers would view this particular feature as anything more than a component of the
eyeglass/sunglass frame.”).

3 The Board of Trustees of the University of Alabama v. Pitts, 107 U.S.P.Q.2d 2001, 2017, 2013 WL 4397047
(T.T.A.B. 2013) (“The Board and other courts have long noted the importance of such [look for] advertising
in establishing the existence of acquired distinctiveness.”).

4 Fabrication Enterprises, Inc. v. Hygenic Corp., 64 F.3d 53, 6 n.9, 35 U.S.P.Q.2d 1753 (2d Cir. 1995) (color-
coded exercise bands: triable issue of fact existed as to whether they were functional).

5 First Circuit
Yankee Candle Co., Inc. v. Bridgewater Candle Co., Inc., 99 F. Supp. 2d 140, 55 U.S.P.Q.2d 1393 (D. Mass.
2000) (No secondary meaning in product trade dress: “[Plaintiff] has pointed to no advertising emphasizing
[the product line's] design or configuration as a product identifier.”); I.P. Lund Trading ApS v. Kohler Co.,
118 F. Supp. 2d 92, 105, 56 U.S.P.Q.2d 1776 (D. Mass. 2000) (No secondary meaning found in faucet trade
dress because: “It has marketed its design precisely for its beauty, not because it alerted consumers to its
source.”)
Second Circuit
Mennen Co. v. Gillette Co., 565 F. Supp. 648, 220 U.S.P.Q. 354 (S.D. N.Y. 1983), judgment aff'd, 742 F.2d
1437 (2d Cir. 1984) (no secondary meaning in stripe design, noting absence of “look for” ads); Calvin Klein
Co. v. Farah Mfg. Co., Inc., 229 U.S.P.Q. 795, 1985 WL 3953 (S.D. N.Y. 1985) (no secondary meaning in
pant's back pocket design due in part to failure to advertise the design as an identifying symbol)
Fourth Circuit
TBL Licensing, LLC. v. Vidal, 644 F. Supp. 3d 190, 2022 WL 17573906, *7 (E.D. Va. 2022) (The design of a
heavy duty boot was found both functional and alternatively, lacking a secondary meaning. “The advertising
evidence that TBL offers in this case is notable for the lack of ‘look for’ advertising…. [N]ever did it
advertise that consumers should look for any of the things it now claims constitute protectable trade dress
as source-identifiers….”)
Seventh Circuit
Turtle Wax, Inc. v. First Brands Corp., 781 F. Supp. 1314, 22 U.S.P.Q.2d 1013, 1022 (N.D. Ill. 1991) (“[T]he
Court is unpersuaded by plaintiff's suggestion that it can establish secondary meaning simply by means of
an advertising and promotional campaign which only displays but does not emphasize the trade dress of
its product.”); Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 662, 36 U.S.P.Q.2d 1065, 1071 (7th
Cir. 1995) (“Advertising that touts a product feature for its desirable qualities and not primarily as a way to
distinguish the producer's brand is not only not evidence that the feature has acquired secondary meaning,
it directly undermines such a finding.”)
Ninth Circuit
Sykes Laboratory, Inc. v. Kalvin, 610 F. Supp. 849 (C.D. Cal. 1985) (Cosmetic container did not achieve
secondary meaning because company “never promoted its design separate and apart from the trademark
name.”); First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1 U.S.P.Q.2d 1779, 87 A.L.R. Fed. 1 (9th
Cir. 1987) (No secondary meaning in yellow jugs for Prestone antifreeze due in part to failure to stress color
and shape of jug in advertising: “It did not, for example, urge consumers to look for the ‘familiar yellow
jug.’”); DCNL Inc. v. Almar Sales Co., 47 U.S.P.Q.2d 1406, 1997 WL 913941 (N.D. Cal. 1997), aff'd, 178
F.3d 1308 (Fed. Cir. 1998) (Failure of plaintiff in advertising to direct attention to the design of its hair brush
as a source identifier supports finding of no secondary meaning in trade dress.)
Eleventh Circuit

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Brooks Shoe Mfg. Co., Inc. v. Suave Shoe Corp., 716 F.2d 854, 221 U.S.P.Q. 536 (11th Cir. 1983) (no
secondary meaning in running shoe design, noting absence of “image advertising” featuring the design)
Federal Circuit
Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 n.8, 196 U.S.P.Q. 289, n.8 (C.C.P.A. 1977)
(failure to separately advertise a design is relevant); Textron, Inc. v. U.S. Intern. Trade Com'n, 3 Fed. Cir.
(T) 72, 753 F.2d 1019, 6 Int'l Trade Rep. (BNA) 1742, 224 U.S.P.Q. 625 (1985) (no secondary meaning
in machine design where no evidence that ads “focused buyers' attention on the shape of the machine”);
New England Butt Co. v. International Trade Com'n, 3 Fed. Cir. (T) 103, 756 F.2d 874, 6 Int'l Trade Rep.
(BNA) 1939, 225 U.S.P.Q. 260 (1985) (machine shape held functional where advertising promotes utilitarian
aspects but does not emphasize any nonutilitarian aspects)
Int'l Trade Comm'n
In re Certain Vacuum Bottles and Components Thereof, 219 U.S.P.Q. 637, 1982 WL 54201 (Int'l Trade
Comm'n 1982) (The International Trade Commission, finding that shape of vacuum bottle did not serve as
a trademark, noted the absence of advertising featuring the shape of the bottle. It also noted the principle
that ads showing both the bottle shape and the word mark are not proof of secondary meaning in the bottle
shape itself.)
6 Oxford Pendaflex Corporation v. Rolodex Corporation, 204 U.S.P.Q. 249, 257, 1979 WL 24884 (T.T.A.B.
1979).

7 General Foods Corporation v. Ito Yokado Co., Ltd., 219 U.S.P.Q. 822, 827, 1983 WL 50169 (T.T.A.B. 1983)
(“The bird design has not been promoted in away that would direct purchasers or prospective purchasers to
look for the design in particular in selecting frozen foods in the market place.”).

8 In re Star Pharmaceuticals, Inc., 225 U.S.P.Q. 209, 212, 1985 WL 71999 (T.T.A.B. 1985) (“[W]e can find no
evidence that applicant has promoted recognition of its particular color combination as a source indicator.”).

9 In re American National Can Co., 41 U.S.P.Q.2d 1841, 1845, 1997 WL 109226 (T.T.A.B. 1997) (“Absent
from applicant's advertising is any promotion of fluting as an indication of the source of its beverage
container.”).

10 In re Visual Communications Co., 51 U.S.P.Q.2d 1141, 1145, 1999 WL 459209 (T.T.A.B. 1999) (“The
more significant deficiency, however, is the lack of any evidence of promotion by applicant of the product
configurations as trademarks.” While the promotional literature illustrated the products, there was no
reference “to the product designs as a means of recognizing applicant as the source ….”).

11 In re Sunburst Products Inc., 51 U.S.P.Q.2d 1843, 1848, 1999 WL 731369 (T.T.A.B. 1999) (“Applicant has
not shown that it has promoted its color scheme as a trademark in its catalogs … The color scheme has
simply not been advanced as a means of recognizing applicant as the source of its watches …..”).

12 In re Integra Biosciences Corp., 2022 WL 225424, *13 (T.T.A.B. 2022) (“There is no ‘look for’ advertising
calling a consumer's attention to the color of the insert rack as a means to identify the source.”).

13 In re ic! berlin brillen GmbH, 85 U.S.P.Q.2d 2021, 2008 WL 853849 (T.T.A.B. 2008) (“[T]here is nothing
to indicate [in the advertising] that the ultimate purchasers would view this particular feature as anything
more than a component of the eyeglass/sunglass frame.”). Accord: In re Fantasia Distribution, Inc., 120
U.S.P.Q.2d 1137, 1145, 2016 WL 5866950 (T.T.A.B. 2016) (A repeating pattern of rows of diamonds on an
electronic smoking device was found not to have acquired a secondary meaning, noting the lack of “look
for” advertising. Registration was refused.).

14 In Re OEP Enterprises, Inc., 2019 WL 3941266, *30 (T.T.A.B. 2019) (The umbrella design trade dress was
also held to be functional.).

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15 Mag Instrument, Inc. v. The Brinkmann Corporation, 96 U.S.P.Q.2d 1701, 1723, 2010 WL 3253200
(T.T.A.B. 2010) (“The Board and other courts have long taken notice of the importance of such
advertisements in regard to configuration or product design marks.”).

16 In re Chevron Intellectual Property Group LLC, 96 U.S.P.Q.2d 2026, 2031, 2010 WL 5010883 (T.T.A.B.
2010).

17 The Board of Trustees of the University of Alabama v. Pitts, 107 U.S.P.Q.2d 2001, 2017, 2013 WL 4397047
(T.T.A.B. 2013) (While the fans associated a hounds-tooth fedora with coach “Bear” Bryant, the university
did not prove that it had used the hounds-tooth pattern as a trademark for products sold or licensed by the
university.).

18 In re Snowizard, Inc., 2018 WL 6923620, *2 (T.T.A.B. 2018) (“Here, the record is devoid of ‘look for’
advertising.”).

19 Application of Data Packaging Corp., 59 C.C.P.A. 776, 453 F.2d 1300, 1304, 172 U.S.P.Q. 396 (1972)
(“Appellant's advertising clearly shows that it intended to develop trademark recognition of its color-coded
rings, and the affidavits which it has submitted persuade us, absent any evidence to the contrary, that its
design is indeed being recognized in the industry as indicative of source or origin with appellant.”).

20 In re Johnson & Johnson, 186 U.S.P.Q. 559, 1975 WL 24053 (T.T.A.B. 1975) (design was held not to be
mere background for a word mark).

21 In re Jockey International, Inc., 192 U.S.P.Q. 579, 583, 1976 WL 21154 (T.T.A.B. 1976) (“[C]ustomers and
prospective purchasers were further alerted to this mark in applicant's literature, advertising and promotional
material by use of the phrase ‘known the world over by this symbol’ in association with the inverted-Y.”).

22 In re the Afa Corporation, 196 U.S.P.Q. 772, 775, 1977 WL 22616 (T.T.A.B. 1977).

23 Nabisco Brands, Inc. v. Conusa Corp., 722 F. Supp. 1287, 1289, 11 U.S.P.Q.2d 1788 (M.D. N.C. 1989),
aff'd, 892 F.2d 74, 14 U.S.P.Q.2d 1324 (4th Cir. 1989) (Preliminary injunction granted against imitation
of the shape of LIFESAVERS candy with a hole. “From the beginning of the manufacture of Lifesavers,
advertising promoting the product has emphasized its distinctive shape and hole in the middle.”).

24 Devan Designs, Inc. v. Palliser Furniture Corp., 25 U.S.P.Q.2d 1991, 1997, 1992 WL 511694, *7 (M.D.
N.C. 1992), aff'd, 998 F.2d 1008, 27 U.S.P.Q.2d 1399 (4th Cir. 1993) (“When advertisements promote the
functional and decorative features of a product without promoting an association between good and producer,
it is not helpful in establishing secondary meaning.”); Continental Laboratory Products, Inc. v. Medax
Intern., Inc., 114 F. Supp. 2d 992, 1001, 56 U.S.P.Q.2d 1548 (S.D. Cal. 2000) (Advertising the space-saving
and environmental advantages of the product “does not engender consumer identification with the [product]
design… .”); Kohler Co. v. Honda Giken Kogyo K.K., 125 U.S.P.Q.2d 1468, 1517, 2017 WL 6547628
(T.T.A.B. 2017) (Advertising which only shows the product configuration without drawing attention to the
feature alleged to constitute a trademark or trade dress does not quality as “look for” advertising.).

25 Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 36 U.S.P.Q.2d 1065, 1071-72 (7th Cir. 1995) (“To the
extent this advertising draws attention to the [product feature claimed as trade dress] at all, as opposed to the
clearly functional barbed locking mechanism, it is only to tout claimed functional and aesthetic advantages”;
no secondary meaning found.).

26 Turtle Wax, Inc. v. First Brands Corp., 781 F. Supp. 1314, 22 U.S.P.Q.2d 1013, 1022 (N.D. Ill. 1991) (“[T]he
Court is unpersuaded by plaintiff's suggestion that it can establish secondary meaning simply by means of
an advertising and promotional campaign which only displays but does not emphasize the trade dress of its
product.”); In re Pingel Enterprise, Inc., 46 U.S.P.Q.2d 1811 (T.T.A.B. 1998) (product shape was pictured
only to illustrate the goods. Found insufficient was fine print on back of packaging stating: “The appearance
of this valve is a trademark of Pingel Enterprise Inc.”); In re Edwards Ski Products Inc., 49 U.S.P.Q.2d 2001
(T.T.A.B. 1999) (“While the product design may be shown on each and every advertisement, there is no

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§ 7:30. “Look for” promotion, 1 McCarthy on Trademarks and Unfair Competition §...

indication that potential purchasers would view this as more than a picture of the goods.”); Stuart Spector
Designs, Ltd. v. Fender Musical Instruments Corporation U.S. Music Corporation, 94 U.S.P.Q.2d 1549,
1572, 2009 WL 804142 (T.T.A.B. 2009) (“Look for” advertising is not advertising that merely includes a
picture of the alleged product shape mark or “touts a feature in a non source-identifying manner.”).

27 Yankee Candle Co., Inc. v. Bridgewater Candle Co., LLC, 259 F.3d 25, 59 U.S.P.Q.2d 1720 (1st Cir. 2001)
(“Merely ‘featuring’ the relevant aspects of the product in advertising is no more probative of secondary
meaning than are strong sales… .” No secondary meaning was found where advertising contained pictures
of the products incorporating the alleged trade dress but did not direct the viewer to look for any particular
aspect.); In re Koninklijke Philips Electronics N.V., 112 U.S.P.Q.2d 1177, 1187, 2014 WL 5035509 (T.T.A.B.
2014) (“‘Look for’ advertising refers to advertising that directs the potential consumer in no uncertain terms
to look for a certain feature to know that it is from that source.” Applicant failed to prove secondary meaning
in the design of an electric toothbrush.).

28 I.P. Lund Trading ApS v. Kohler Co., 118 F. Supp. 2d 92, 56 U.S.P.Q.2d 1776 (D. Mass. 2000) (no secondary
meaning found in faucet product trade dress).

29 Yamaha International Corp. v. Hoshino Gakki Co., 231 U.S.P.Q. 926 (T.T.A.B. 1986), aff'd, 840 F.2d 1572,
6 U.S.P.Q.2d 1001 (Fed. Cir. 1988) (Guitar head shapes were held to be valid trademarks for guitars even in
the absence of efforts to explicitly stress and promote the head designs. The constant promotional display
of full product pictures serves as a vehicle for stimulating recognition of the head shape designs, given the
custom of guitar players to note, recall and identify the source of guitars by the head shape.).

30 In re The Black & Decker Corporation, 81 U.S.P.Q.2d 1841, 2006 WL 3825183 (T.T.A.B. 2006); In re
Koninklijke Philips Electronics N.V., 112 U.S.P.Q.2d 1177, 1187 n.6, 2014 WL 5035509 (T.T.A.B. 2014)
(Failure to use “look for” advertising is not dispositive if there is proof that industry practice “is to recognize
certain configurations as source indicators.” Applicant failed to prove secondary meaning in the design of
an electric toothbrush.).

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§ 7:31. Repetition of mark, 1 McCarthy on Trademarks and Unfair Competition §...

1 McCarthy on Trademarks and Unfair Competition § 7:31 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:31. Repetition of mark

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(1)

Multiple Repetition of Mark as Background. Use of a mark repeated many times as mere background for a label has been held
not to be distinctive enough to qualify as a separate mark, apart from the single mark itself.1 For example, the mark PICOT had
already been registered. Applicant sought registration for a label that repeated the word “Picot” about 750 times. Registration
on the Principal Register was refused on the ground that the mere repetition of a mark does not result in a severable, distinctive
mark.2

Uniform repetition of even a distinctive design over the entire surface of a package, label or product may, by its very deadening
repetition, lose distinctiveness. That is, a pattern or design repeated over and over may look like “wallpaper” to the buyer, who
sees it as mere background ornamentation which any seller might be likely to use.3 However, if a seller uses a mark in multiple
format on its labels, this is a proper trademark use sufficient to register the single mark itself.4

Repetition of a Descriptive or Generic Term. Repeating a generic name or a descriptive term does not turn an otherwise invalid
designation into a protectable trademark.5 As the Trademark Board observed: “It is settled that a mark's mere repetition of a
merely descriptive word does not negate the mere descriptiveness of the marks as a whole.6 The same principle should apply
to a generic name. For example, merely repeating a generic name such as CHAIRS! CHAIRS! CHAIRS! in connection with
the sale of chairs will not create a protectable mark.7

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Footnotes

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§ 7:31. Repetition of mark, 1 McCarthy on Trademarks and Unfair Competition §...

1 Ex Parte the Standard Register Company, 78 U.S.P.Q. 337, 1948 WL 3626 (Comm'r Pat. & Trademarks
1948) (Uniform repetition of the letter “S” as background on a business form was not registrable because
it was a background design which would not be recognized as a separate mark. “[T]he fact that a mark is
used more than once on the goods does not prevent its functioning as a trade mark. This general proposition
is also considered sound providing it is used as a trade mark and may function and be recognized as such
which is not the case in the specimens submitted herewith.”).

2 Ex Parte Picot Laboratories, Inc., 86 U.S.P.Q. 277, 1950 WL 4236 (Comm'r Pat. & Trademarks 1950) (The
repetition of the mark on the label was held likely to be perceived merely as a background design, not as
a separate mark.).

3 See § 7:32.

4 Diamond Alkali Co. v. Dundee Cement Co., 343 F.2d 781, 145 U.S.P.Q. 211 (C.C.P.A. 1965) (letter mark
“D” repeated on label ten times each in three rows). Compare In re Keeper Chemical Corp., 177 U.S.P.Q.
771 (T.T.A.B. 1973) (Diamond Alkali Rule does not mean that repetition of mark makes the mark merely
ornamental or decorative). See Vuitton et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769, 210 U.S.P.Q.
351, 212 U.S.P.Q. 85 (9th Cir. 1981) (multiple repetition of design mark on luggage held proper subject
of trademark).

5 In re Disc Jockeys Inc., 23 U.S.P.Q.2d 1715, 1992 WL 205047 (T.T.A.B. 1992) (“DJDJ” for disc jockey
services for parties is merely descriptive. “Nothing new or different is imparted by the simple repetition of
the descriptive expression DJ.”); In re LC Trademarks, Inc., 121 U.S.P.Q.2d 1197, 1199, 2016 WL 7655545
(T.T.A.B. 2016) (Applicant could not prove that the descriptive mark DEEP!DEEP!DISH PIZZA for pizza
had acquired a secondary meaning and could be registered. The repetition of the word “deep” would likely
be viewed by customers “as an emphatic description of the bountiful quality of applicant's deep dish pizza.”).

6 In re Litehouse, Incorporated, 82 U.S.P.Q.2d 1471, 2007 WL 458528 (T.T.A.B. 2007) (CAESAR! CAESAR!
held an descriptive term for salad dressing).

7 See discussion of repetition of a generic name at § 12:39.

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§ 7:32. Repeating pattern covering product or packaging, 1 McCarthy on Trademarks...

1 McCarthy on Trademarks and Unfair Competition § 7:32 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:32. Repeating pattern covering product or packaging

References
Validity of Repeating Pattern Marks. A design or pattern that covers all or a part of a package or product is usually tested
for trademark significance according to the “separate commercial impression” and “inherently distinctive” tests applicable to
background designs in general. This subject overlaps with that of the validity of a design that consists of a repetition of word
or design marks as discussed in § 7:30.

Although a statement of the applicable general legal principle is easy, applying it to a given use of a pattern can be difficult.
The difficulty is to estimate the effect of the design or pattern on the ordinary buyer. Will the repeating pattern be perceived
only as attractive ornamentation or will it also be likely to be seen as an indicator of origin of goods coming from a single
source (a trademark)?

Because of the wide range of factual settings for design patterns, different results are to be expected. For example, the following
patterns were held valid trademarks suitable for registration: a checkered gingham pattern covering wrappers for bakery goods;1
an overall diamond design covering the entire surface of “quilted” aluminum foil;2 a colored cross-hatch design covering the
surface of a disposable cloth;3 and an interlocking circle and square design imprinted onto paper towels.4

By comparison, held not to be registrable as a trademark was a stipple spray pattern covering auto exhaust parts,5 a series of
black and white stripes covering a battery,6 and a hounds-tooth pattern covering a hat.7

The repeating use of a logo on fashion goods, while serving an ornamental purpose, can also serve as a valid mark. For example,
the Ninth Circuit found that functionality was no bar to a valid trademark and trade dress in the Louis Vuitton “LV” and floral
design logo that covered the surface of luggage and handbags, noting that: “There is no limitation on the percentage of a product's
surface area which may be covered by a trademark.”8

The Functionality Bar. A trademark on a design uniformly covering a product may be invalid as being “functional.” For
example, the Seventh Circuit found an embossed quilt-like diamond lattice design on toilet paper was functional, largely because
the design was disclosed in five utility patents which referred to the utilitarian advantages of such an embossed design.9

The “Wallpaper” Effect. A repeating pattern design may, by uniform repetition over the surface of a package or product, lose
its distinctiveness by repetition such that the buyer sees it as mere ornamentation that any seller might be likely to use. The
deadening repetition of even a distinctive design may create a “wallpaper” effect on the buyer, who sees the pattern as mere
ornamentation, not serving to indicate source.10

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§ 7:32. Repeating pattern covering product or packaging, 1 McCarthy on Trademarks...

Supplemental Registration. A pattern that uniformly covers a product may be capable of serving as a trademark and hence
be registrable on the Supplemental Register, so long as it has the capability to serve a trademark purpose and does not solely
constitute ornamentation.11

The USPTO Examination Guide for Repeating Pattern Marks. In June, 2015 the USPTO released a guide for the examination
of repeating pattern marks, which it defined as a repeated designation “forming a pattern that is displayed on the surface of goods,
on product packaging, or on materials associated with the advertising or provision of services. The pattern may appear over the
entire surface of the relevant item or on just a portion of it.”12 The Guide cautions that while it is possible for a repeating pattern
to be so unusual as to be inherently distinctive, “because of the ornamental and typically non-distinctive nature of repeating
patterns, consumers often do not perceive these patterns as source indicators, in which case they may not be registered on the
Principal Register without proof of acquired distinctiveness.”13 For example, the Trademark Board held that a repeating pattern
of rows of diamonds on an electronic smoking device was not inherently distinctive. The Board noted that the product was
“crowded with wording and design elements, including the diamond pattern which blends with the other elements of trade dress
and does not make a distinct commercial impression as a source indicator.”14

The Test of Likelihood of Confusion. The infringement of a trademark design covering a product is generally determined by
comparing the overall commercial impression of the conflicting designs.15

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 In re Interstate Bakeries Corporation, 153 U.S.P.Q. 488, 1967 WL 7646 (T.T.A.B. 1967) (held to be an
inherently distinctive pattern, and if not, had acquired secondary meaning. “Applicant's checkered gingham
design with its distinctive proportions and arrangement of elements is an arbitrary and eye catching device
and … [is] inherently distinctive on its face and hence registrable on the Principal Register.”).

2 In re Kaiser Aluminum & Chemical Corporation, 153 U.S.P.Q. 145, 1967 WL 7616 (T.T.A.B. 1967)
(registered only after rehearing on sufficient proof of secondary meaning under § 2(f)).

3 In re Johnson & Johnson, 186 U.S.P.Q. 559, 1975 WL 24053 (T.T.A.B. 1975). Compare Standard Terry
Mills, Inc. v. Shen Mfg. Co., 803 F.2d 778, 231 U.S.P.Q. 555 (3d Cir. 1986) (“Windowpane check” pattern
on a kitchen towel is not a protectable trade dress because it is “functional” as being a “favorite pattern for
kitchen textiles” and “compatible with contemporary kitchen decor.”).

4 Fort James Operating Company v. Royal Paper Converting, Inc., 83 U.S.P.Q.2d 1624, 2007 WL 1676779
(T.T.A.B. 2007) (The registered design was relied on to successfully oppose the registration of a similar
design for paper products.).

5 In re Walker Manufacturing Company, 141 U.S.P.Q. 366, 1964 WL 7840 (T.T.A.B. 1964) (design held not
inherently distinctive and created no separate commercial impression on buyers).

6 In re Burgess Battery Co., 27 C.C.P.A. 1297, 112 F.2d 820, 822, 46 U.S.P.Q. 39 (1940) (“[A]ppellant's design
is merely a colored label or dress of black and white alternating stripes, the office of which (design) is not
to point out distinctly the origin or ownership of the articles to which the label is affixed.”). See In re Lynes,
122 U.S.P.Q. 614, 1959 WL 6218 (T.T.A.B. 1959) (SANTA CLAUS WAS HERE printed at random on
Christmas wrapping paper held mere overall decoration).

7 The Board of Trustees of the University of Alabama v. Pitts, 107 U.S.P.Q.2d 2001, 2013, 2013 WL 4397047
(T.T.A.B. 2013) (Opposer could not prove common law rights in the pattern. The pattern was not inherently
distinctive and opposer could not prove the acquisition of a secondary meaning.).

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§ 7:32. Repeating pattern covering product or packaging, 1 McCarthy on Trademarks...

8 Vuitton Et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769, 210 U.S.P.Q. 351 (9th Cir. 1981), also
published at, 212 U.S.P.Q. 85, 1981 WL 481427 (9th Cir. 1981) (“The fact that Vuitton's design covers
the entire surface of its products is also not dispositive of the issue of functionality.” Registered design
covering the surface of luggage and handbags was not functional and was eligible for trademark protection if
secondary meaning was proven.). See Citc Industries Inc. v. Levi Strauss & Co., 216 U.S.P.Q. 512, 1982 WL
52035 (T.T.A.B. 1982) (Design on shoe sole was not proven to serve as a trademark. “[T]he sole covered
with applicant's batwing mark in a manner which the record shows is not noticeably dissimilar from the trade
practice use of functional shapes and configurations is not inherently distinctive and will not be registered
in the absence of a showing of acquired secondary meaning …. Here, there is no such evidence.”).

9 Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723, 729, 99 U.S.P.Q.2d 1538
(7th Cir. 2011) (“[W]e find that the ‘central advance’ claimed in the utility patents is embossing a quilt-
like diamond lattice filled with signature designs that improves (perceived) softness and bulk, and reduces
nesting and ridging. This is the same ‘essential feature’ claimed in the trademarks.”). See §§ 7:63 et seq.

10 In re F.C.F. Inc., 30 U.S.P.Q.2d 1825, 1994 WL 262248 (T.T.A.B. 1994) (A picture of roses was not used
as a trademark for cosmetics when used in a purely ornamental and decorative way to cover most of the
surface of containers for the product. “[P]urchasers and prospective customers for applicant's goods would
be unlikely to regard applicant's rose design as identifying and distinguishing its cosmetics and indicating
their source.”).

11 Application of Todd Co., 48 C.C.P.A. 1009, 290 F.2d 597, 600, 129 U.S.P.Q. 408 (1961) (repeating pattern
of green parallel lines on safety paper for official documents held registrable on Supplemental Register. “[I]t
has long been the practice in this industry to utilize distinctive over-all surface designs to indicate origin of
safety-paper products and to advertise that they are intended to do so. The fact that they incidentally serve
to ornament a paper surface does not necessarily destroy their ability to indicate origin.”).

12 USPTO Examination Guide 1-15, “Repeating Pattern Marks,” (June 2015), incorporated into T.M.E.P. §
1202.19 (Apr 2016 ed.). The Guide recognizes that a repeating pattern may constitute a service mark as well
as a trademark. T.M.E.P. § 1202.19(a)(iv) (Apr 2016 ed.).

13 USPTO Examination Guide 1-15, “Repeating Pattern Marks,” p. 2 (June 2015), incorporated into T.M.E.P.
§ 1202.19(e)(1)(Apr. 2016 ed.) (The Guide gives as an example of an inherently distinctive pattern mark
Dior's pattern of offset letters spelling out “Dior” used on part of the packaging for cosmetics. Reg. No.
2,963,354 (registered June 21, 2005)).

14 In re Fantasia Distribution, Inc., 120 U.S.P.Q.2d 1137, 1142, 2016 WL 5866950 (T.T.A.B. 2016)
(“Applicant's mark merely repeats a basic diamond shape to form a highly conventional pattern of rows and
columns.” The pattern was found not to have acquired a secondary meaning and registration was refused.).

15 Fort James Operating Company v. Royal Paper Converting, Inc., 83 U.S.P.Q.2d 1624, 2007 WL 1676779
(T.T.A.B. 2007) (A registration of an interlocking circle and square design imprinted onto paper towels was
relied on to successfully oppose the registration of a similar design for paper products. “[I]n the case of
design marks, the question of likelihood of confusion must be decided on the basis of the visual similarity
of the marks. … [T]his is a subjective determination and must take into account the overall commercial
impressions created by the marks rather than any detailed analysis thereof.”).

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§ 7:33. Geometric shapes, 1 McCarthy on Trademarks and Unfair Competition §...

1 McCarthy on Trademarks and Unfair Competition § 7:33 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:33. Geometric shapes

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(1)

Ordinary geometric shapes such as circles, ovals, squares, etc., even when not used as a background for other marks, are regarded
as nondistinctive and protectable only upon proof of secondary meaning.1 “A circle or a ball as a trademark is publici juris
where it has not acquired a secondary meaning.”2 A series of three dimensional cubes molded into the surface of glassware was
rejected as a trademark, on the ground that on such a product the design was mere surface ornamentation, devoid of trademark
significance to buyers.3

However, uncommon or unusual shapes and symbols that contain some minimum amount of inventiveness or fancifulness can
be regarded as inherently distinctive and protected as such, without the need for proof of secondary meaning.4 The issue is
whether this shape is so unusual for this type of goods or services that its distinctiveness can be assumed. An example of a
design that is fanciful and distinctive is illustrated in Fig. 7:33A.

Fig. 7:33A. FANCIFUL DESIGN USED ON SUNBEAM APPLIANCES5

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§ 7:33. Geometric shapes, 1 McCarthy on Trademarks and Unfair Competition §...

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Footnotes
1 See cases cited in § 7:29.

2 Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 119 F.2d 316, 49 U.S.P.Q. 419 (6th Cir. 1941),
rev'd on other grounds, 316 U.S. 203, 86 L. Ed. 1381, 62 S. Ct. 1022, 53 U.S.P.Q. 323 (1942), reh'g denied,
316 U.S. 712, 86 L. Ed. 1777, 62 S. Ct. 1287 (1942).

3 In re Fostoria Glass Co., 147 U.S.P.Q. 76 (T.T.A.B. 1965).

4 In re Dairy Queen of Georgia, Inc., 134 U.S.P.Q. 136 (T.T.A.B. 1962) (star-shaped figure with representation
of face held distinctive). See Brunswick-Balke-Collender Co. v. American Bowling & Billiard Corp., 150
F.2d 69, 65 U.S.P.Q. 148 (2d Cir. 1945), cert. denied, 326 U.S. 757, 90 L. Ed. 455, 66 S. Ct. 99, 67 U.S.P.Q.
359 (1945) (red crown on neck of bowling pin); O. & W. Thum Co. v. Dickinson, 245 F. 609 (6th Cir. 1917),
cert. denied, 246 U.S. 664, 62 L. Ed. 928, 38 S. Ct. 334 (1918) (involved geometric figure protected).

5 In re Sunbeam Corp., 120 U.S.P.Q. 304 (T.T.A.B. 1959).

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§ 7:34. Geometric shapes and symbols as strong or weak marks, 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:34 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:34. Geometric shapes and symbols as strong or weak marks

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(1)

Weak Common Designs. Pursuant to the “strong-weak” distinction,1 simple geometric shapes, even if given protection, are
accorded a narrow scope of trademark or trade dress protection, both as to scope of product and to variation in design. Thus,
such marks are said to be relatively “weak.”2 Probably falling in the same category are commonly used designs and icons such
as the yellow “smiley face.”3

Unusual Shapes. An unusual design or symbol that is inherently distinctive and displays some degree of inventiveness will be
regarded as a “strong” mark entitled to a wide scope of protection.4

When a distinctive symbol appears in use by a junior user, it suggests an inference of conscious imitation. As one court stated
of defendant's use of an involved geometric design:

Why, out of the exhaustless variety of geometric figures and of methods of grouping should the defendant
Dickinson have adopted figures and grouping substantially like those of plaintiff's mark? A purpose to appropriate
a trademark in substantial part could scarcely be more manifest.5

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Footnotes
1 See §§ 11:73 to 11:78.

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§ 7:34. Geometric shapes and symbols as strong or weak marks, 1 McCarthy on...

2 Apple Growers Ass'n v. Pelletti Fruit Co., 153 F. Supp. 948, 115 U.S.P.Q. 169 (D. Cal. 1957); Marcalus Mfg.
Co. v. Watson, 258 F.2d 151, 118 U.S.P.Q. 7 (D.C. Cir. 1958) (oval); Jenkins Bros. v. Newman Hender &
Co., 289 F.2d 675, 129 U.S.P.Q. 355 (C.C.P.A. 1961) (diamond); Arnold, Schwinn & Co. v. Evans Products
Co., 302 F.2d 765, 133 U.S.P.Q. 548 (C.C.P.A. 1962) (circle and cross); Daimler-Benz Aktiengesellschaft v.
Ford Motor Co., 143 U.S.P.Q. 453 (T.T.A.B. 1964) (no confusion between Mercedes Benz “star” ornament
and Lincoln Continental “star” ornament); American Can Co. v. Marcal Paper Mills, Inc., 152 U.S.P.Q. 772
(T.T.A.B. 1967) (oval); Hupp Corp. v. AER Corp., 157 U.S.P.Q. 537 (T.T.A.B. 1968); Dow Corning Corp.
v. Applied Power Industries, Inc., 322 F. Supp. 943, 167 U.S.P.Q. 730 (N.D. Ill. 1970) (rectangle); Seabrook
Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 U.S.P.Q. 289 (C.C.P.A. 1977) (oval, leaf-shaped
background for word marks); Guess ?, Inc. v. Nationwide Time, Inc., 16 U.S.P.Q.2d 1804 (T.T.A.B. 1990)
(common geometric shapes, such as a triangle, are accorded a narrow scope of protection, both as to product
line and variation in design, quoting treatise).

3 Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302, 1315, 86 U.S.P.Q.2d 1835 (N.D. Ga. 2008) (Wal-Mart
did not prove that it owned common law trademark rights in the yellow “smiley face” image.).

4 See American Sunbathing Ass'n v. American Health Alliance, 157 U.S.P.Q. 586 (T.T.A.B. 1968); Permatex
Co. v. California Tube Products, Inc., 175 U.S.P.Q. 764 (T.T.A.B. 1972).

5 O. & W. Thum Co. v. Dickinson, 245 F. 609 (6th Cir. 1917), cert. denied, 246 U.S. 664, 62 L. Ed. 928, 38
S. Ct. 334 (1918).

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§ 7:35. Descriptive designs, symbols, and pictures, 1 McCarthy on Trademarks and...

1 McCarthy on Trademarks and Unfair Competition § 7:35 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:35. Descriptive designs, symbols, and pictures

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(1)

Descriptive designs, symbols and pictures are discussed below.

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§ 7:36. Images that describe goods or services, 1 McCarthy on Trademarks and Unfair...

1 McCarthy on Trademarks and Unfair Competition § 7:36 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:36. Images that describe goods or services

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(1)

An Image of the Goods Can Fall into the “Descriptive” Category. A picture that is merely a representation of the goods
themselves is regarded as merely descriptive of the goods.1 For example, a picture of an apple and a half, with a drop flowing
from the half apple, is descriptive of apple juice because it immediately conveys the message of what the product is. “It is hard
to conceive of a more explicit symbol or design for apple juice.”2

Similar is a picture showing results obtained from using the product or that illustrates use of the product.3 The following images
were found to be descriptive:

• a picture of an eight ball and a pool cue—descriptive of billiard parlor services4

• a picture of a scuba tank—descriptive of underwater diving tour services5

• a picture of a duck splashing in water—descriptive of “duck” sightseeing tours conducted in amphibious “duck”-like vehicles6

• an image of Labrador retriever dog—descriptive of software that searches and retrieves Internet data7

• an image of a cow—descriptive of dairy products8

• an image of a tobacco leaf—descriptive of cigar wraps9

Image of Goods Must be Used in a Trademark Manner. In some cases, an image of the goods will not be protectable or
registerable as a trademark because it is not used in a trademark manner.10

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§ 7:36. Images that describe goods or services, 1 McCarthy on Trademarks and Unfair...

A Fanciful or Stylized Representation of the Goods May Not Be “Descriptive”. An illustration of a product which creates an
overall arbitrary and fanciful impression can serve as a valid trademark. For example, Planters Peanut Company's symbol of
a top-hatted little man with a peanut body was held not to be merely an illustration of a peanut, but a fanciful and protectable
mark indicating origin.11

In a similar manner, a stylized and fanciful illustration that merely suggests but does not directly describe or illustrate the
product can be a valid mark.12 Thus, illustrations that merely hint at or suggest the product are not regarded as “descriptive.”
An example is the combination of silver foil, a royal blue color, an arctic sun and a polar bear, which, while suggesting frosty
eating pleasure for ice cream bars, is not a picture that is directly “descriptive” of the product.13

However, to be considered as “descriptive,” an image of the goods “need not be completely accurate, realistic or true-to-life”
so long as the image immediately conveys the key features of the product.14

An Image of Distinctively Shaped Goods. A picture of a distinctively shaped product can be protected so as to prevent confusion
of source or affiliation. Under this approach, a picture of a Volkswagen auto has been protected as a mark.15

Images of Commonplace Objects Associated with the Goods. A pictorial representation on a label may be so commonplace as
to be incapable of creating a separate commercial impression in a buyer's mind. For example, a picture of a chef and a salad
bowl on a salad dressing label,16 or a picture of food on a container for that food.17 Thus, the Ninth Circuit found that a picture
of a grape leaf on a bottle of wine was not itself a protectable mark because many wine bottlers for a long time had used a
depiction of grape leaves to decorate their wares. Consequently, “it has lost the power to differentiate brands.”18

A Composite Including an Image of the Goods. A pictorial representation of goods may be a part of a composite mark, the
totality of which is distinctive.19 This is pursuant to the rule that the commercial impression of a trademark is derived from the
composite mark as a whole, not from a dissected and separate consideration of the various elements.20 Thus, a fanciful picture
used in combination with a descriptive word may result in a composite mark that is nondescriptive in totality.21

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Footnotes
1 Application of Singer Mfg. Co., 45 C.C.P.A. 1002, 255 F.2d 939, 1004, 118 U.S.P.Q. 310 (1958) (“It is, of
course, true that a design consisting merely or essentially of a pictorial representation of the goods on which
it is used is descriptive, and is not a valid trademark.”); In re Harry N. Abrams, Inc., 223 U.S.P.Q. 832,
1984 WL 63592 (T.T.A.B. 1984) (picture of a gnome, which was a substantially accurate representation of
pendants and earrings in the gnome shape, was “descriptive”); Duramax Marine, LLC v. R.W. Fernstrum &
Co., 80 U.S.P.Q.2d 1780, 2006 WL 2263820 (T.T.A.B. 2006) (illustration of the goods was not registerable
for custom manufacturing services because it was descriptive and lacked secondary meaning under § 2(f));
In re The Swatch Group Mgmt. Svcs. AG, 110 U.S.P.Q.2d 1751, 2014 WL 1679139 (T.T.A.B. 2014), aff'd,
599 Fed. Appx. 959 (Fed. Cir. 2015) (“A design which consists merely of an illustration of one's product is
unregisterable under Section 2(e)(1) just as merely descriptive wording would be.” Word TOURBILLION
with an image of a tourbillion (which was a part of the inner works of applicant's watches) was a descriptive
composite and not registerable for watches.); In re Ocean Technology, Inc., 2019 WL 6245131, *8 (T.T.A.B.
2019), adhered to on denial of reconsideration, 2020 WL 919219 (T.T.A.B. 2020) (“[A] visual representation
is merely descriptive under Section 2(e)(1) of the Trademark Act if it consists merely of a picture or
illustration of the goods or services, or of something that is an important feature or characteristic of them.”

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§ 7:36. Images that describe goods or services, 1 McCarthy on Trademarks and Unfair...

The same rule applies to whether an image is merely informational and fails to serve as a trademark. Realistic
image of a crab merely informs buyer as to the nature of the goods—crabmeat.).

2 Ginger Group, Ltd. v. Beatrice Cos., 678 F. Supp. 555, 6 U.S.P.Q.2d 1373 (E.D. Pa. 1988) (no secondary
meaning found where no evidence of an attempt to create public identification of source with the picture).
See Ellison Educ. Equip. v. Accu-Cut Systems, Inc., 769 F. Supp. 1090, 22 U.S.P.Q.2d 1181 (D. Neb.
1991), related proceeding, 903 F. Supp. 1350, 37 U.S.P.Q.2d 1563 (D. Neb. 1995) (logo consisting of an
international “no” sign [circle with slash] covering a pair of scissors is a descriptive term conveying the
message that the product does something that scissors do without the need for scissors; no secondary meaning
proven).

3 Thomas J. Lipton, Inc. v. Borden, Inc., 72 Misc. 2d 757, 340 N.Y.S.2d 328, 176 U.S.P.Q. 129 (1972)
(a photograph of the use of a product on a label “cannot be the exclusive property of one company”);
In re International Spike, Inc., 196 U.S.P.Q. 447 (T.T.A.B. 1977) (drawing of person using product is
informational instruction for use and merely descriptive); In re Custom Trim Products, Inc., 182 U.S.P.Q.
235 (T.T.A.B. 1974) (picture of goods in use is merely descriptive); In re Cotto-Waxo Co., 127 U.S.P.Q. 168
(T.T.A.B. 1960) (picture of manner in which floor sweeping compound used); In re Vari-Krom, Inc., 121
U.S.P.Q. 273 (T.T.A.B. 1959) (simulated marble background for paint which produces that result).

4 In re Eight Ball, Inc., 217 U.S.P.Q. 1183 (T.T.A.B. 1983).

5 In re Underwater Connections, Inc., 221 U.S.P.Q. 95 (T.T.A.B. 1983).

6 Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 28, 87 U.S.P.Q.2d 1385 (1st Cir. 2008)
(image was found to be “highly descriptive” and “weak” and not infringed by a different duck image).

7 Labrador Software Inc. v. Lycos Inc., 32 F. Supp. 2d 31, 49 U.S.P.Q.2d 1952 (D. Mass. 1999) (no secondary
meaning proven, court noting widespread use of retriever dog references by Internet related companies).

8 Lawrence v. P E Sharpless Co, 203 F. 762, 766 (E.D. Pa. 1913), aff'd, 208 F. 886 (C.C.A. 3d Cir. 1913)
(“[T]he symbol of a cow is generic, in that it is descriptive of the class of products produced of the milk of
the cow…. All dealers in dairy products or manufacturers of dairy products could, with equal truth, represent
the cow as the source of their product. Surely the figure of a cow could not be exclusively appropriated by
a dealer in milk or cream.”).

9 Robinson v. Hot Grabba Leaf, LLC, 2019 WL 1915759, *10 (T.T.A.B. 2019) (Tobacco leaf design used
along with the descriptive term “Grabba leaf” results in a composite that is descriptive of cigar wraps. No
secondary meaning was proven.).

10 In re Ratcliff Hoist Company, Inc., 157 U.S.P.Q. 118, 1968 WL 8101 (T.T.A.B. 1968) (Image of hoist was
used only as an illustration of the goods, not as a mark for the goods. “[T]he mere representation of an
article of applicant's merchandise fails to function as a trademark for its goods.”). See In re Keep A Breast
Foundation, 123 U.S.P.Q.2d 1869, 1881, 2017 WL 3575872 (T.T.A.B. 2017) (Three dimensional breast cast
was not used to identify the source of breast cancer awareness and fundraising services. The breast cast “will
be perceived as part of the services rather than as a mark designating the source of the services.”).

11 Planters Nut & Chocolate Co. v. Crown Nut Co., 305 F.2d 916, 134 U.S.P.Q. 504 (C.C.P.A. 1962).

12 In re Chemical Development Corp., 121 U.S.P.Q. 527 (T.T.A.B. 1959) (fanciful representation of the effect
of use of a product is registrable); In re United States Bedding Co., 153 U.S.P.Q. 425 (T.T.A.B. 1967)
(design in shape of bed spring held not a mere picture of the goods); In re Curtiss-Wright Corp., 183
U.S.P.Q. 621 (T.T.A.B. 1974) (stylized representation of Wankel-type rotary engine held registrable); In re
Laitram Corp., 194 U.S.P.Q. 206 (T.T.A.B. 1977) (fanciful design mark for conveyor belt and sprockets
held not an actual descriptive representation of the goods); In re Universal Filters, Inc., 218 U.S.P.Q. 456
(T.T.A.B. 1983) (A stylized cross-section picture of a flow meter was held not “functional.” But since
it shows how the device works, it is descriptive. Applicant's proof of distinctiveness was sufficient and

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§ 7:36. Images that describe goods or services, 1 McCarthy on Trademarks and Unfair...

registration granted.); In re LRC Products, Ltd., 223 U.S.P.Q. 1250 (T.T.A.B. 1984) (stylized picture of
gloves held not descriptive; illustrations of prior decisions on stylized pictures of goods); Giltspur Expo
Industries, Inc. v. Expo Communications, Inc., 227 U.S.P.Q. 394 (T.T.A.B. 1985) (stylized picture of cross-
section of connector held not descriptive or functional).

13 AmBrit, Inc. v. Kraft, Inc., 805 F.2d 974, 1 U.S.P.Q.2d 1161 (11th Cir. 1986), reported at 812 F.2d 1531 (11th
Cir. 1986), cert. denied, 481 U.S. 1041, 95 L. Ed. 2d 822, 107 S. Ct. 1983 (1987) (but royal blue alone is not
protectable: as a color suggestive of coldness, it is used by many ice cream producers). See In re American
Red Magen David for Israel, 222 U.S.P.Q. 266 (T.T.A.B. 1984) (a red six-pointed star of David for fund
raising services for Israeli medical supplies held only suggestive of the beneficiaries of the services).

14 In re The Swatch Group Mgmt. Svcs. AG, 110 U.S.P.Q.2d 1751, 2014 WL 1679139 (T.T.A.B. 2014),
aff'd, 599 Fed. Appx. 959 (Fed. Cir. 2015) (Word TOURBILLION with an image of a tourbillion (which
was a part of the inner works of applicant's watches) was a descriptive composite and not registerable for
watches. While the image was not a completely accurate or realistic rendering of all of the intricate parts
of a tourbillion, “most of the fundamental components … are represented [in the mark] with a high level of
graphic clarity….[and it] immediately conveys the singular idea of a tourbillion.”).

15 Volkswagenwerk Aktiengesellschaft v. Rickard, 175 U.S.P.Q. 563 (N.D. Tex. 1972), modified, 492 F.2d
474, 181 U.S.P.Q. 611, 182 U.S.P.Q. 129 (5th Cir. 1974) (silhouette of distinctive shape of VW auto held
protectable as against use in advertising by repair shop not affiliated with Volkswagenwerk). Compare
Volkswagenwerk Aktiengesellschaft v. Rose'Vear Enterprises, Inc., 592 F.2d 1180, 201 U.S.P.Q. 7 (C.C.P.A.
1979) (VW vehicle shape had acquired a secondary meaning synonymous with VOLKSWAGEN, VW, BUG
and BEETLE, but defendant's caricature held not likely to cause confusion). See Fotomat Corp. v. Photo
Drive-Thru, Inc., 425 F. Supp. 693, 193 U.S.P.Q. 342 (D.N.J. 1977) (representation of place of business).
See §§ 7:100 to 7:102.

16 In re Rod's Food Products, Inc., 125 U.S.P.Q. 495 (T.T.A.B. 1960); see Burger Chef Systems, Inc. v.
Sandwich Chef, Inc., 608 F.2d 875, 203 U.S.P.Q. 733 (C.C.P.A. 1979) (no confusion likely between pictures
of chef's head).

17 Southern California Fish Co. v. White Star Canning Co., 45 Cal. App. 426, 187 P. 981 (1920) (picture of
fish on tuna can); Chun King Sales, Inc. v. Oriental Foods, Inc., 136 F. Supp. 659, 108 U.S.P.Q. 400 (D. Cal.
1955), aff'd in part and rev'd in part, 244 F.2d 909, 113 U.S.P.Q. 404 (9th Cir. 1957); Heinz v. Lutz, 146 Pa.
592, 23 A. 314 (1892). See §§ 23:26 to 23:28.

18 Kendall-Jackson Winery Ltd. v. E.&.J. Gallo Winery, 150 F.3d 1042, 47 U.S.P.Q.2d 1332 (9th Cir. 1998)
(while a particular depiction of a multicolored grape leaf could serve as a valid mark, the grape leaf depictions
of the parties were so different that confusion was not likely).

19 Jantzen Knitting Mills v. West Coast Knitting Mills, 18 C.C.P.A. 843, 46 F.2d 182, 8 U.S.P.Q. 40 (1931),
reh'g denied, 47 F.2d 954 (C.C.P.A. 1931) (JANTZEN picture of girl wearing bathing suit was valid mark
for swim suits but limited to “the figure of a girl in substantially the position shown in its registered mark,
and not to the figure of a diving girl generally.”); Judson Dunaway Corp. v. Hygienic Products Co., 178 F.2d
461, 84 U.S.P.Q. 31 (1st Cir. 1949) (Image of a woman pouring contents of the product into a toilet bowl was
a valid trademark for a toilet bowl cleaner, but was not infringed by a different image of a woman pouring
from a can into a toilet bowl.); In re McIlhenny Company, 152 U.S.P.Q. 716, 1967 WL 7532 (T.T.A.B.
1967) (registration for entire package of TABASCO sauce, including picture of bottle, word marks and
instructions).

20 See §§ 11:26 to 11:28.

21 In re Miller International Co., 312 F.2d 819, 136 U.S.P.Q. 445 (C.C.P.A. 1963) (composite of stylized picture,
fanciful design and words “Stereo-Fidelity” held registrable composite mark for phonograph records).
Compare: In re The Swatch Group Mgmt. Svcs. AG, 110 U.S.P.Q.2d 1751, 1762, 2014 WL 1679139

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§ 7:36. Images that describe goods or services, 1 McCarthy on Trademarks and Unfair...

(T.T.A.B. 2014), aff'd, 599 Fed. Appx. 959 (Fed. Cir. 2015) (Word TOURBILLION with an image of a
tourbillion (a part of applicant's watches) was a descriptive composite and not registerable. The combination
of word and image “reinforces the singular impression of the mark as a whole” as being descriptive of
watches and watch repair services.).

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§ 7:37. Descriptive, generic or functional images, 1 McCarthy on Trademarks and...

1 McCarthy on Trademarks and Unfair Competition § 7:37 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:37. Descriptive, generic or functional images

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(1)

Descriptive Images. Designs, pictures and symbols that directly convey information about some function, quality, characteristic
or use of the product or service are classified as descriptive and therefore registrable or protectable only upon proof of acquiring
a secondary meaning.1 Some images may be as descriptive of a product as are words. For example, a pine-tree shape of an
air freshener describes the piney scent of the product.2 Or an image may be so widely used and so closely associated with
a product or service that it is the equivalent of descriptive words. For example, a picture of an apple and a half, with a drop
flowing from the half apple, is descriptive of apple juice because it immediately conveys the message of what the product is.
But a fanciful depiction describing the goods can be non-descriptive and serve as a good trademark, such as Planters Peanut
Company's famous symbol of a top-hatted little man with a peanut body.

As discussed in § 7:36, a picture that is merely an accurate picture of the goods themselves is regarded as merely descriptive
of the goods.3

Generic or Functional Images. An illustration of the goods or something closely associated with the product could be classified
as in the same category as a generic name and hence incapable of trademark protection.4

An accurate image of a functional and utilitarian product can be regarded as the equivalent of the utilitarian shape itself. If it
is the equivalent of the shape, then the picture itself is “functional” and should not be capable of appropriation as a trademark
for one seller of that product.5

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§ 7:37. Descriptive, generic or functional images, 1 McCarthy on Trademarks and...

Footnotes
1 See § 11:16.50. See, e.g., In re Eight Ball, Inc., 217 U.S.P.Q. 1183, 1983 WL 51789 (T.T.A.B. 1983) (picture
of an eight ball and pool cue found to be merely descriptive of billiard parlor services); Labrador Software,
Inc. v. Lycos, Inc., 32 F. Supp. 2d 31, 49 U.S.P.Q.2d 1952 (D. Mass. 1999) (Labrador retriever dog image for
software that searches and retrieves Internet data was descriptive and no secondary meaning proven, court
noting widespread use of retriever dog references by internet related companies); Boston Duck Tours, LP v.
Super Duck Tours, LLC, 531 F.3d 1, 28, 87 U.S.P.Q.2d 1385 (1st Cir. 2008) (Image of a duck splashing in
water is descriptive of “duck” sightseeing tours conducted in amphibious “duck”-like vehicles.); DuoProSS
Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 1252, 103 U.S.P.Q.2d 1753 (Fed. Cir. 2012)
(The descriptive word SNAP combined with the image of a “snapped” exclamation point was descriptive
of medical syringes in which the user “snaps” off the plunger to seal the needle to protect accidental sticks
to health care workers.).

2 Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267, 36 U.S.P.Q.2d 1855 (2d Cir. 1995) (Defendant's
use was a fair use because it described two aspects of its product: (1) the shape described the pine scent of
the air freshener; and (2) a Christmas tree is traditionally a pine tree, widely used to denote the Christmas
holiday season).

3 E.G. Kim Seng Co. v. J & A Importers, Inc., 810 F. Supp. 2d 1046, 1058–1059, 104 U.S.P.Q.2d 1290
(C.D. Cal. 2011) (No trade dress protection for a picture of a bowl of Vietnamese food on a package
of the same food. The picture was descriptive of the contents and lacked proof of secondary meaning.
Summary judgment of dismissal.); In re The Swatch Group Mgmt. Svcs. AG, 110 U.S.P.Q.2d 1751, 2014
WL 1679139 (T.T.A.B. 2014), aff'd, 599 Fed. Appx. 959 (Fed. Cir. 2015) (“A design which consists merely
of an illustration of one's product is unregisterable under Section 2(e)(1) just as merely descriptive wording
would be.” Word TOURBILLION with an image of a tourbillion (which was a part of the inner works of
applicant's watches) was a descriptive composite and not registerable for watches.).

4 The Ninth Circuit held that a picture of a grape leaf on a bottle of wine was not itself a protectable mark
because so many wine bottlers have for so long a time used a depiction of grape leaves to decorate their
wares that “it has lost the power to differentiate brands.” Kendall-Jackson Winery, Ltd. v. E. & J. Gallo
Winery, 150 F.3d 1042, 1048, 47 U.S.P.Q.2d 1332 (9th Cir. 1998) See § 12:34.

5 See § 7:77.

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§ 7:38. Shape and location of label, 1 McCarthy on Trademarks and Unfair...

1 McCarthy on Trademarks and Unfair Competition § 7:38 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

B. TYPES OF MARKS

§ 7:38. Shape and location of label

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1059

As with pictures of commonplace geometric shapes,1 a label that is an ordinary shape cannot itself serve a trademark function
unless it creates a separate commercial impression upon the buyer and has achieved secondary meaning.2 However, there is no
reason why an inventively shaped label could not serve as a trademark if buyers identified it as such.

The mere location of a label, per se, cannot function as a trademark.3 That is, one seller cannot obtain the right to prevent
competitors from putting any kind of label in a certain location on merchandise. However, a distinctive location of a label plus
a definition of the shape of the label may function as a trademark, provided that sufficient evidence of secondary meaning is
introduced to prove that buyers so recognize that this shape of label in this location on the product serves to indicate origin.
Thus, a given seller may obtain the exclusive right to prevent competitors from using a certain shape label in a certain distinctive
location.

Up until 1960, the Trademark Office refused to recognize trademark rights in the location of any label.4 However, in 1960, the
Court of Customs and Patent Appeals held that a seller could claim trademark rights in a label of defined shape in a defined
location, provided secondary meaning was proven.5 The court stated that:

[W]hile granting that a “location” per se cannot be a trademark, we do not see why a particular “tag” (which is
what the application calls for), particularly located on particular goods, cannot indicate origin. For this reason we
think that the Assistant Commissioner's opinions go too far if they are intended to hold that what is sought to be
registered can under no circumstances perform the function of indicating origin.6

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§ 7:38. Shape and location of label, 1 McCarthy on Trademarks and Unfair...

In that case, applicant sought registration of a trademark in a location (in a vertical position near the waistband of men's trousers)
of a rectangular cloth label. But, having held that the mark was not inherently incapable of serving as a trademark, the court
went on to affirm a refusal to register since evidence of secondary meaning was insufficient. Pursuant to this rule, in the LEVI
Case, the Trademark Board allowed registration of a small marker or tab affixed to the exterior of LEVI garments at the hip
pocket in the location illustrated in Fig. 7:38A.7

Fig. 7:38A. LEVI PANTS POCKET TRADEMARK

In litigation, the LEVI pocket tab was held to be a valid trademark, not primarily functional and not merely decorative or
ornamental.8 The ability of the tab, in a defined location on pants, to serve as a trademark was not affected by the fact that the
tab often carried a separate trademark symbol on it. Illustrating that each placement is fact-specific, the courts found that no
trademark significance was proven for a Levi's tab on a shirt pocket,9 or on a shoe.10

The LEVI pants pocket tab was held infringed by a competitor's placement of a similar tab at the bottom of a right rear patch
pocket.11 Thus, when location is an element of a trademark, infringement can occur when a junior user places a similar label in
a slightly different location which will still cause likely confusion. Whereas in word mark cases, one compares the similarities
and differences of the conflicting words,12 in label shape and location cases, one compares the similarities and differences in
shape and location on the basis of the placement of the label on the “geography” of the product.

A distinctive arcuate stitching pattern on the rear pocket of Levi's pants (see Fig. 7:38B) was found to be a valid trademark
which was held to be infringed on a summary judgment for Levi's.13

Fig. 7:38B. LEVI PANTS POCKET ARCUATE DESIGN

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§ 7:38. Shape and location of label, 1 McCarthy on Trademarks and Unfair...

The C.C.P.A. refined the applicable law in the Le Blanc Trumpet case,14 which upheld registration of a mark described as a
medallion in the position shown on a trumpet. (See Fig. 7:38C.)

Fig. 7:38C. LE BLANC TRUMPET MEDALLION

Evidence that customers recognized the particular configuration and location of the medallion as a trademark was sufficient
to prove secondary meaning. In a prior decision,15 the C.C.P.A. had indicated that if the label served as a vehicle for a very
prominent word mark, the visual significance of the label and location might be far outweighed by the word mark thereon. That
is, buyers would look for the word mark and not for the particular location of the label. However, in the Le Blanc Trumpet case,
it was shown that this was mainly a matter of the weight to be given to evidence of consumer recognition.16 This approach
sounds very much like the “separate commercial impression” test applied to background designs.17

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 See §§ 7:26 to 7:29.

2 Ex parte Kuner-Empson Co., 114 U.S.P.Q. 509 (Comm'r Pat. 1957) (registration refused for label with V-
shaped base; held mere ornamentation and decoration).

3 Ex parte Kotzin, 111 U.S.P.Q. 161 (Comm'r Pat. 1956).

4 Ex parte Kotzin, 111 U.S.P.Q. 161 (Comm'r Pat. 1956).

5 In re Kotzin, 276 F.2d 411, 125 U.S.P.Q. 347 (C.C.P.A. 1960).

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§ 7:38. Shape and location of label, 1 McCarthy on Trademarks and Unfair...

6 In re Kotzin, 276 F.2d 411, 125 U.S.P.Q. 347 (C.C.P.A. 1960).

7 In re Levi Strauss & Co., 165 U.S.P.Q. 348 (T.T.A.B. 1970).

8 Levi Strauss & Co. v. Blue Bell, Inc., 200 U.S.P.Q. 434 (C.D. Cal. 1978), aff'd, 632 F.2d 817, 208 U.S.P.Q.
713 (9th Cir. 1980). Accord: Guess?, Inc. v. Tres Hermanos, 993 F. Supp. 1277, 45 U.S.P.Q.2d 1179 (C.D.
Cal. 1997) (held to be an infringer was defendant who used on jeans the same inverted white triangle with red
edging placed in the same location on the jeans as did plaintiff; defendant’ use of the word “yield” in place
of plaintiff's GUESS? did not avoid confusing similarity); Levi Strauss & Co. v. GTFM, Inc., 196 F. Supp.
2d 971, 62 U.S.P.Q.2d 1394 (N.D. Cal. 2002) (Rejecting challenge to the validity of the tab registrations:
“The words of the registrations, taken in conjunction with the drawing, provide clear notice of the scope
of the Tab mark.”).

9 Levi Strauss & Co. v. Blue Bell, Inc., 216 U.S.P.Q. 606 (N.D. Cal. 1982), aff'd in part and vacated in part, 732
F.2d 676, 221 U.S.P.Q. 525 (9th Cir. 1984), reh'g granted, op. withdrawn, 734 F.2d 409 (9th Cir. 1984) and
aff'd in part and vacated in part, en banc, 778 F.2d 1352, 228 U.S.P.Q. 346 (9th Cir. 1985) (en banc, affirmed
that there is no secondary meaning and no infringement of Levi shirt pocket tab under federal claim).

10 It was held that an orange tab in a defined location on shoes is not registrable, the court pointing to a lack of
proof of secondary meaning and emphasizing extensive use of a shoe tab by others. Genesco, Inc. v. Levi
Strauss & Co., 219 U.S.P.Q. 1205 (T.T.A.B. 1983), aff'd, 742 F.2d 1401, 222 U.S.P.Q. 939 (Fed. Cir. 1984)
(“Levi's use of a tab on shoes has been neither first nor exclusive.”).

11 See illustration of defendant's placement at Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 208 U.S.P.Q.
713 (9th Cir. 1980).

12 See §§ 23:19 to 23:20.

13 Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 631 F. Supp. 735, 228 U.S.P.Q. 648 (S.D.N.Y. 1985),
aff'd, 799 F.2d 867, 230 U.S.P.Q. 831 (2d Cir. 1986) (the Levi stitching pattern is “a very strong mark”).
Compare Calvin Klein Co. v. Farah Mfg. Co., 229 U.S.P.Q. 795 (S.D.N.Y. 1985) (no secondary meaning
proven in Calvin Klein “inverted omega stitching” on rear pocket of pants); Bachellerie v. Z. Cavaricci, Inc.,
762 F. Supp. 1070, 20 U.S.P.Q.2d 1282 (S.D.N.Y. 1991) (shape and location of label on pants; no secondary
meaning proven and case dismissed); In re Right-On Co., Ltd., 87 U.S.P.Q.2d 1152, 2008 WL 1777470
(T.T.A.B. 2008) (pocket stitching design is not inherently distinctive: It is a version of a commonly-used
design on pants pockets. “There are a multitude of variations of aches, checks, swoops, waves and other
linear designs registered or in use on jeans pockets.”).

14 In re G. Le Blanc Corp., 429 F.2d 989, 166 U.S.P.Q. 561 (C.C.P.A. 1970).

15 In re Kotzin, 276 F.2d 411, 125 U.S.P.Q. 347 (C.C.P.A. 1960).

16 In re G. Le Blanc Corp., 429 F.2d 989, 166 U.S.P.Q. 561 (C.C.P.A. 1970).

17 See §§ 7:26 to 7:29.

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§ 7:38.50. Author's Comment: The need for uniformity in..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:38.50 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

I. USUAL TRADEMARK FORMATS

C. TRADEMARK USAGE

§ 7:38.50. Author's Comment: The need for uniformity in trademark usage

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1108
West's Key Number Digest, Trademarks 1133

Almost every established trademark owner has a “trademark style manual”—a book of approved and uniform visual appearances
in which the company's marks and logos should be displayed. Why do most companies do this? What bad things might happen
if there is no uniform guide and the company marks appear in a plethora of different sizes, shapes, typefaces and colors?

Sometimes graphic designers and advertising agencies want to make a “new statement” with an established trademark or logo
by showing it in a different way. Sometimes they wish to add a display of a trademark or logo in different sizes or colors, or take
a few letters out of a word mark and twist them into a new graphic design or to turn the company logo into a cartoon animal
mascot. Why should extreme caution be exercised in changing the visual appearances of marks in these ways when the public
will see the company marks, logos and trade dress in a range of differing impressions?

The goal of every trademark owner should be to always feature its word mark in a uniform size, style, color and font. The same
applies to nonword marks such as logos, pictures and mascots, as well as to trade dress. Only uniform and consistent appearance
will allow uses of the mark to continue to imprint the image of the mark in the public mind as an easily and quickly recognized
symbol. This is the primary reason why many companies impress upon employees, advertisers and retailers the importance of
showing their marks only in a uniform format and style as reflected in a trademark usage manual.

Uniformity of usage means easy and instant recognizability. Consistent and uniform visual use strengthens both the legal,
marketing and economic value of the trademark. Allowing company marks to be used as just a trunk full of letters and images
that can be truncated, moved around and mixed up differently will destroy that uniformity and to some extent lessen the strength
of the mark. And if a company leads by its example to show that its trademarks can be sliced up, distorted and disfigured, others
will follow, including both competitors and the media.

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Some companies (especially internet-based firms) favor “fluid marks”—those that change frequently in appearance. This
approach presents a challenge to the trademark attorney asked to enforce a mark that is in constant flux as to appearance and
content.1

When a mark or trade dress consists of a wide range of different packaging and promotional images for a number of different
products, it is more difficult to prove that there is a common denominator among those various images which identifies plaintiff
as the source.2 In that event, the ability to succeed in trademark infringement claims and to enforce the trademark would be
attenuated to some extent which can never be accurately known or measured. For example, if a company's mark is shown in a
series of visually attractive but confusingly abstract, twisted images where the mark is barely recognizable, such usages cannot
be counted as “uses” of the original marks sufficient to rely on in order to preclude use by another. Caution should be exercised
in varying the kind of images of the marks that are presented to the public.

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Footnotes
1 Pearson, Fluid Trademarks and Dynamic Brand Identities, 104 Trademark Rptr 1411 (2014) (“Brand owners
are increasingly flouting the conventional wisdom that trademark rights are best built by using the same
presentation of a mark, without significant change, over and over. They are adopting fluid, interactive
trademarks that change and delight consumers.”).

2 See e.g. Walt Disney Co. v. Goodtimes Home Video Corp., 830 F. Supp. 762, 29 U.S.P.Q.2d 1047 (S.D.
N.Y. 1993) (The Court held that Walt Disney's video cassette packages for its Classic Animated Features
collection did not have a consistent overall look which consumers associated with Walt Disney. “I find
that Disney's videocassette packages do not have a consistent overall look, and therefore the trade dress
that Disney alleges GoodTimes infringed does not exist.”); Shelbyco Inc. v. Western Trimming Corp., 43
U.S.P.Q.2d 1140, 1997 WL 377982 (D. Utah 1997) (Claiming trade dress in the overall look of a line of
60 different products, plaintiff was unable to prove “that there is a consistent overall look found in all of
its specialty paper and that this look is entitled to trade dress protection. . . . [T]he only consistent feature
in [plaintiff's] trade dress is the display of commonplace, ordinary shapes in various colors.”); Rose Art
Industries, Inc. v. Swanson, 235 F.3d 165, 57 U.S.P.Q.2d 1125 (3d Cir. 2000) (Plaintiff must first prove
that its various types of products or packaging have a “consistent overall look” that constitutes its alleged
trade dress trademark. “A plaintiff, seeking protection for a series or line of products, must first demonstrate
that the series or line has a recognizable and consistent overall look.”); Farouk Systems, Inc. v. AG Global
Products, LLC, 2016 WL 1322315, *4 (S.D. Tex. 2016), appeal dismissed (5th Cir. 16-20289)(July 14, 2016)
(A red and black color combination of a heated hair brush product was not used in a consistent way: claim
dismissed on summary judgement. “Because [plaintiff] does not use the red and black color combination in
any consistent manner …. the red and black combination does not enjoy protection as trade dress.”).

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§ 7:39. Color as element of trademark, 1 McCarthy on Trademarks and Unfair...

1 McCarthy on Trademarks and Unfair Competition § 7:39 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:39. Color as element of trademark

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(2)

Asserting an Exclusive Right to Use of a Color. The issue discussed in the following sections is the extent to which a seller can
legitimately obtain an exclusive right under the law of trademarks in a color, either alone or in combination with other colors
or designs. Color has always been an integral part of the successful marketing of goods and services. But to what extent can a
seller have a legal right to prevent others in the market from use of a similar color?

The most difficult claim to successfully assert is the exclusive right to use of a single color of a product. For example, can a
seller of structural insulation obtain the exclusive right to color its insulation pink? Can the color pink serve to indicate source
in the same way as does a word or picture?

The State of the Law. In the 1995 Qualitex case, the Supreme Court resolved a split of authority and held that a single color of a
product is capable of being registered and protected as a trademark. As discussed at § 7:44, to achieve the status of a trademark,
a single color must be proven to have acquired distinctiveness as a mark. In other words, a single color must have acquired a
“secondary meaning” to qualify as a valid and registerable trademark.

Color Combinations and Color Confined to a Specific Design. When a color is confined to a distinctive design or different
colors are used in combinations, a different analysis is used than that for a claim to exclusive trademark rights in a single color.
This is discussed in § 7:45.

Claiming Color in a Trademark Registration. As a matter of strategy, an applicant should not limit a trademark registration
to a particular color unless that color is an essential and distinguishing element of the mark. A mark not limited to one color
in effect covers the mark as it appears in any color.1 If the trademark owner includes a particular color as an element of the
registration, the owner may effectively restrict its rights to preventing use of that mark only in that color.2

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§ 7:39. Color as element of trademark, 1 McCarthy on Trademarks and Unfair...

Registration in a Defined Color Can Limit the Scope of the Presumption of Validity. Most courts hold that the presumption
of validity given by registration is limited to the exact format and appearance of the mark as registered.3 This means that the
presumption of validity of words or designs depicted in a registration in a specific color is limited to those words or designs
in the color depicted.4

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Footnotes
1 Application of Data Packaging Corp., 59 C.C.P.A. 776, 453 F.2d 1300, 1302, 172 U.S.P.Q. 396 (1972)
(“[T]here is no reason why an applicant should not be able to obtain a single registration of a design mark
covering all the different colors in which it may appear, that is to say, not limited to a particular color.”).

2 See § 7:45.30.

3 See § 32:137.

4 Kelly-Brown v. Winfrey, 43 Media L. Rep. (BNA) 1513, 114 U.S.P.Q.2d 1311, 2015 WL 997700 (S.D.
N.Y. 2015), aff'd 659 Fed. Appx. 55, 120 U.S.P.Q. 2d 1010 (2d Cir. 2016) (Presumption of validity of a
registration in “special form” light blue distinctive font is limited to only that exact font and color.).

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§ 7:40. A single color as a trademark—Introduction, 1 McCarthy on Trademarks and...

1 McCarthy on Trademarks and Unfair Competition § 7:40 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:40. A single color as a trademark—Introduction

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(2)

The Old Rule: A Single Color Could Not be a Trademark. Under the traditional rule, the single color of a product was not
capable of protection as a trademark.1 The traditional rule was supported by the rationales of “color depletion” and “shade
confusion.” The “color depletion” rationale posited that there are only a few easy discernable colors and once all are taken in
an industry, the new entrant may be deprived of a needful element of competition. The “shade confusion” rationale posited that
determination of the issue of likelihood of confusion between shade of colors was too elusive and subjective.

The Supreme Court Changes the Rule: A Single Color is Capable of Becoming a Trademark. In 1985, the Federal Circuit
Court of Appeals rejected the traditional rule and held that the single color of a product is capable of being registered as a
trademark.2 For the next ten years, some circuits followed the Federal Circuit and other adhered to the traditional rule.3 Finally,
in 1995, in the Qualitex case, the Supreme Court resolved the split of opinion, favoring the Federal Circuit rule and holding that
a single color of a product is capable of being registered and protected as a trademark.4 However, the court cautioned that the
color depletion rule could, in the proper case, be invoked as a form of the defense of functionality.

To be Registered as a Trademark, a Color Must be Confined to a Defined Shape, Design or Product. The issue discussed
here is whether a seller can legitimately obtain exclusive rights under the law of trademarks in the single color of its product.
The issue is not whether a seller of goods or services can claim what could be called a “floating color”: that is, a color per se,
divorced from the coloration of a specific product or container. To the author's knowledge, no court has granted a company the
exclusive right to use a color per se, apart from being defined as the coloration of a specific product, shape or design. The Patent
and Trademark Office will not register a color in the abstract and requires a drawing showing how the color will be ap plied to
a product or package.5 The PTO applies the same rule of specificity to service marks.6

The Federal Circuit has observed that a mark defined as a single color of one object is a materially different mark from a mark
defined as the same color of a different object. In that case, the amendment of an application from the color blue for a vehicle

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§ 7:40. A single color as a trademark—Introduction, 1 McCarthy on Trademarks and...

rental building to the color blue for buildings, signs, uniforms, and other promotional materials was rejected as a material
alteration of the mark as originally applied for.7

Single Color as a Service Mark. A single color can acquire a secondary meaning as a mark to identify services by being featured
in advertising and applied to articles used to render the services. For example, the color brown is used as a service mark of the
United Parcel Service (UPS) delivery service. Brown is the color of UPS delivery trucks and uniforms of its delivery persons
and “brown” has become the nickname of the company.8 In the wireless provider market, telecommunications companies use
color as an integral part of identity in marketing their services. For example, Verizon uses red, Sprint uses yellow, AT&T uses
orange and T-Mobile uses magenta. A court issued a preliminary injunction against a competitor's use of a plum color as an
infringement of plaintiff T-Mobile's magenta color widely used in T-Mobile's advertising.9

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Footnotes
1 See § 7:41.

2 See § 7:42.

3 See § 7:43.

4 See § 7:44.

5 T.M.E.P. § 1202.05(d)(i) (Apr 2016 ed.) (“In most cases, the proposed color mark drawing will consist of
a representation of the product or product package… The object depicted on the drawing should appear
in broken or dotted lines. The broken or dotted lines inform the viewer where and how color is used on
the product or product package, while at the same time making it clear that the shape of the product, or
the shape of the product package, is not claimed as part of the mark.”). See In re International Flavors and
Fragrances Inc., 47 U.S.P.Q.2d 1314 (T.T.A.B. 1998), aff'd, 183 F.3d 1361, 51 U.S.P.Q.2d 1513 (Fed. Cir.
1999) (“[T]he Office does not now permit the registration of color per se, that is, a drawing consisting merely
of a particular color in the absence of a showing of how the color is or will be used on or in connection with
the goods or services. … For example, an applicant seeking to register the color blue in connection with a
farm implement must submit a drawing of the farm implement lined for the color blue rather than simply
a drawing of a swatch of the color blue.”).

6 T.M.E.P. § 1202.05(d)(ii) (Apr 2016 ed.) (“As with color used on goods, a color service mark does not
consist of color in the abstract. Rather, the mark consists of color used in a particular manner, and the context
in which the color is used is critical to provide notice of the nature of the mark sought to be registered.
Therefore, as with color marks used on goods, a drawing, supplemented with a written description of the
mark, is required.”) Author's Note: For example, the United Parcel Service Registration No. 2131693 for
the services of “motor vehicle transportation and delivery of personal property” describes the mark as: “The
mark consists of the color brown applied to the vehicles used in performing the services.” The drawing
shows a delivery van in the color brown.

7 In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 U.S.P.Q.2d 1121 (Fed. Cir. 2001) (“[A] word mark retains its
same appearance when used on different objects, but color is not immediately distinguishable as a service
mark when used in similar circumstances.”) See Cedar Valley Exteriors, Inc. v. Professional Exteriors, Inc.,
119 U.S.P.Q.2d 1445, 2016 WL 3629078 (D. Minn. 2016) (A discrepancy between the written description
and the drawing as to the use of the single color orange must be resolved in favor of the drawing. The
registration was limited by the court to uses of the color as shown the registration drawing: on a polo shirt
and on a yard sign.).

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§ 7:40. A single color as a trademark—Introduction, 1 McCarthy on Trademarks and...

8 The color brown as applied to delivery trucks is registered as a service mark Registration 2131693, registered
January 27, 1998, claiming a first use date of 1917.

9 T-Mobile US, Inc. v. AIO Wireless LLC, 991 F. Supp. 2d 888, 903 (S.D. Tex. 2014) (“Using large swaths
or blocks of plum as a prominent part of its marketing campaign, Aio asks consumers to ‘Say goodbye to
T–Mobile, Say hello to Aio.’ …. Aio, like T–Mobile, brims with broad swaths of bold, bright dark reddish-
purple-pink that leaves a vivid impression. The result is to make Aio's use of broad swaths of monochromatic
Pantone 676C confusingly similar to T–Mobile's use of broad swaths of monochromatic Pantone Process
Magenta.”).

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§ 7:41. Color as element of trademark—The old rule..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:41 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:41. Color as element of trademark—The old rule

prohibiting a single color from becoming a trademark

References
The Old Rule: A Single Color Could Not be a Trademark. Under the old rule, the single color of a product was not capable
of protection as a trademark. The traditional rule was supported by the rationales of “color depletion” and “shade confusion.”
Under the old rule, one seller could not make a product in a single color and claim that any similar product in that color was its
exclusive trademark property.1 As the Supreme Court stated in an early case: “if color be made the essential feature, it should
be so defined, or connected with some symbol or design, that other manufacturers may know what they may safely do.”2

Color Could be a Component of a Design. Even under the old rule, a color could be an essential element in an arrangement of
colors, symbols or words.3 This is still a widely used method of incorporating color as a distinctive part of a mark.4

The Color Monopolization and Depletion Argument. The first rationale for the old ban on a seller appropriating a single color
was that since there are so few basic colors available, in any given line of commerce, they would soon all be taken. This is why
the traditional rule was sometimes known as the “color depletion” or “color monopolization” rule. As one court stated: “If they
may thus monopolize red in all of its shades the next manufacturer may monopolize orange in all its shades and the next, yellow
in the same way. Obviously, the list of colors will soon run out.”5 While in scientific theory there may be hundreds of shades,
the ordinary person can probably distinguish only a few basic colors. Other practical limitations in an industry may limit the
range of colors available for a product or package.6

The Shade Confusion Argument. The other policy reason supporting the traditional rule was that if a color per se could
be appropriated as a trademark symbol, determination of infringement would degenerate into deciding questions of “shade
confusion” between closely similar color shades.7

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Footnotes
1 James Heddon's Sons v. Millsite Steel & Wire Works, 128 F.2d 6, 9, 53 U.S.P.Q. 579 (C.C.A. 6th Cir. 1942)
(“Color, except in connection with some definite, arbitrary symbol or in association with some characteristics
which serve to distinguish the article as made or sold by a particular person is not subject to trademark
monopoly.”); Life Savers Corp. v. Curtiss Candy Co., 182 F.2d 4, 9, 85 U.S.P.Q. 440 (7th Cir. 1950)
(abrogated by, Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 115 S. Ct. 1300, 131 L. Ed. 2d
248, 34 U.S.P.Q.2d 1161 (1995)) (“‘That a man cannot acquire a trade-mark by color alone has been stated
a good many times in decisions and textbooks.’ …. As a rule color cannot be monopolized to distinguish
a product.”); Norwich Pharmacal Co. v. Sterling Drug, Inc., 271 F.2d 569, 572, 123 U.S.P.Q. 372 (2d Cir.

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§ 7:41. Color as element of trademark—The old rule..., 1 McCarthy on...

1959) (“That a color may become someone's exclusive property as a perpetual monopoly in connection with
a specific product has been rejected by the courts throughout the years.”); NutraSweet Co. v. Stadt Corp.,
917 F.2d 1024, 16 U.S.P.Q.2d 1959 (7th Cir. 1990) (abrogated by, Qualitex Co. v. Jacobson Products Co.,
Inc., 514 U.S. 159, 115 S. Ct. 1300, 131 L. Ed. 2d 248, 34 U.S.P.Q.2d 1161 (1995)) (“As a rule color cannot
be monopolized to distinguish a product.”).

2 A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166, 171, 26 S. Ct. 425, 50 L. Ed.
710 (1906) (abrogated by, Hurn v. Oursler, 289 U.S. 238, 53 S. Ct. 586, 77 L. Ed. 1148, 17 U.S.P.Q. 195
(1933)), superseded by statute as stated in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 115
S. Ct. 1300, 131 L. Ed. 2d 248, 34 U.S.P.Q.2d 1161 (1995) (trademark claimed in wire rope with one strand
of different color than the rest; held invalid as too vaguely defined, and no particular color designated. “[A]
trademark which may be infringed by a streak of any color, however applied, is manifestly too broad.”). See
Wire Rope Corporation of America, Inc. v. Secalt S.A., 196 U.S.P.Q. 312, 1977 WL 22574 (T.T.A.B. 1977)
(noting custom in the industry to use a colored strand to indicate source).

3 Mershon Co. v. Pachmayr, 220 F.2d 879, 883, 105 U.S.P.Q. 4 (9th Cir. 1955) (“We do not hold that color
alone can be protected as a mark, but certainly color can be an element of a mark…”); Dallas Cowboys
Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204 n.6, 5 Media L. Rep. (BNA) 1814, 203
U.S.P.Q. 161 (2d Cir. 1979) (“Although color alone is not capable of becoming a trademark, a combination
of colors together with a distinctive arbitrary design may serve as a trademark.”).

4 See discussion at § 7:45 (Color in connection with defined designs and in combinations.).

5 Campbell Soup Co. v. Armour & Co., 175 F.2d 795, 798, 81 U.S.P.Q. 430 (3d Cir. 1949), cert. denied, 338
U.S. 847, 94 L. Ed. 518, 70 S. Ct. 88, 83 U.S.P.Q. 543 (1949) (abrogated by, Qualitex Co. v. Jacobson
Products Co., Inc., 514 U.S. 159, 115 S. Ct. 1300, 131 L. Ed. 2d 248, 34 U.S.P.Q.2d 1161 (1995)), See
Diamond Match Co. v. Saginaw Match Co., 142 F. 727 (C.C.A. 6th Cir. 1906), cert. denied, 203 U.S. 589,
51 L. Ed. 330, 27 S. Ct. 776 (1906) (“The primary colors, even adding black and white, are but few. If two
of these colors can be appropriated for one brand of tipped matches, it will not take long to appropriate the
rest.”); First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1 U.S.P.Q.2d 1779, 1781, 87 A.L.R. Fed. 1
(9th Cir. 1987) (“Under the color depletion theory, there are a limited number of colors in the palette which
may be depleted if trademark registrants are allowed to prevail.”).

6 See Summerfield, Color as a Trademark and the Mere Color Rule: The Circuit Split for Color Alone, 68 Chi.-
Kent L. Rev. 973, 996-997 (1993) (For example, only a certain number of colors are available for children's
toys because of government toxicity standards and dark colors are unattractive for containers of many food
products, such as milk and ice cream. “Dark-colored packages tend to look used, and people do not want to
buy goods that look as if they had been handled a lot.”).

7 See, e.g., NutraSweet Co. v. Stadt Corp., 917 F.2d 1024, 1027, 16 U.S.P.Q.2d 1959 (7th Cir. 1990), cert.
denied, 499 U.S. 983, 113 L. Ed. 2d 735, 111 S. Ct. 1640 (1991) (abrogated by, Qualitex Co. v. Jacobson
Products Co., Inc., 514 U.S. 159, 115 S. Ct. 1300, 131 L. Ed. 2d 248, 34 U.S.P.Q.2d 1161 (1995)) (a policy
supporting the “general rule” is that “infringement actions could soon degenerate into questions of shade
confusion”); Qualitex Co. v. Jacobson Products Co., Inc., 13 F.3d 1297, 1302, 29 U.S.P.Q.2d 1277 (9th
Cir. 1994), rev'd, 514 U.S. 159, 115 S. Ct. 1300, 131 L. Ed. 2d 248, 34 U.S.P.Q.2d 1161 (1995). (Were
the traditional color depletion rule not followed, “we could well become involved in ‘shade confusion’. …
Drawing distinctions between close shades of color could present unnecessary problems.”).

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§ 7:42. Color as element of trademark—The anti-single..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:42 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:42. Color as element of trademark—The anti-single color rule crumbles and falls

References
1985: The Federal Circuit in the Pink Insulation Case Rules That a Single Color Can be Registered as a Mark. In 1985 the
Court of Appeals for the Federal Circuit became the first court to explicitly reject the traditional anti-single color rule. Collapsing
the “color depletion” argument and the “functionality rule” together, the court held that the overall color of a product was not
precluded from registration as a trademark. The color pink for fiberglass insulation made by Owens-Corning was held eligible
for registration upon proof of secondary meaning. Secondary meaning could be shown through advertising promotion because
“pink has no utilitarian purpose and does not deprive competitors of any reasonable right or competitive need.”1 A vigorous
dissent by Judge Bissell argued for the rule that the color must be confined to “some definite arbitrary symbol or design.”

The Federal Circuit later ruled that the functionality rule may prevent registration of a single color when it serves a utilitarian
need. The court held that an all-black outboard motor was a functional use of color and not registerable because black has the
special functional attributes of decreasing the apparent size of the motor and ensuring compatibility with many different boat
colors.2 The topic of colors that serve a functional purpose is discussed in § 7:49.

The most challenging issue for asserting a trademark in a single color is the basic rule of mainstream trademark law: does the
color in fact serve as a trademark to customers? The scope of the holding in the Owens-Corning case was considerably tempered
by the majority's observation that the overall color of a product is “usually perceived [only] as ornamentation” and that “color
marks carry a difficult burden in demonstrating distinctiveness and trademark character.”3 It has proven to be difficult for most
firms to make the strong showing of promotion of a single color which Owens-Corning did in this case with its extensive “Pink
Panther” promotion.4

1985-1995. A Decade of a Split of Authority: Some Courts Adhered to the Old Anti-Color Rule. From 1985 until the 1995
Supreme Court decision in Qualitex, while some courts followed the Federal Circuit,5 most courts kept to the old rule.6 For
example, the Ninth Circuit in 1987 invoked the “color depletion” argument and affirmed denial of a preliminary injunction
against an imitation of the PRESTONE yellow colored one-gallon jugs of automobile antifreeze.7

1995: The Supreme Court Resolves the Split of Authority. In 1995, in the Qualitex case, the Supreme Court resolved the split
of authority and held that a single color of a product is capable of being registered and protected as a trademark. The impact
of this case is discussed in a following section: § 7:44.

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Footnotes

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§ 7:42. Color as element of trademark—The anti-single..., 1 McCarthy on...

1 In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1122, 227 U.S.P.Q. 417 (Fed. Cir. 1985).

2 Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532, 32 U.S.P.Q.2d 1120 (Fed. Cir. 1994), cert.
denied, 514 U.S. 1050, 131 L. Ed. 2d 309, 115 S. Ct. 1426 (1995). Cited as an example of a functional use
of color in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 115 S. Ct. 1300, 131 L. Ed. 2d 248,
34 U.S.P.Q.2d 1161 (1995).

3 In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227 U.S.P.Q. 417 (Fed. Cir. 1985).

4 See e.g. Edward Weck Inc. v. Im Inc., 17 U.S.P.Q.2d 1142, 1990 WL 354567 (T.T.A.B. 1990) (insufficient
evidence to prove trademark significance for the color green for surgical instruments under the rule in Owens-
Corning).

5 Master Distributors, Inc. v. Pako Corp., 986 F.2d 219, 223, 25 U.S.P.Q.2d 1794 (8th Cir. 1993) (“If [plaintiff]
can establish all the normal trademark requirements in the blue color of its Blue Max leader splicing tape,
that shade may be protected against infringement. … It is highly improbable that every distinguishable color
shade has already been selected and would be subject to trademark protection.”).

6 See, e.g. AmBrit, Inc. v. Kraft, Inc., 805 F.2d 974 (11th Cir. 1986), opinion superseded, 812 F.2d 1531, 1
U.S.P.Q.2d 1161 (11th Cir. 1986), cert. denied, 481 U.S. 1041, 95 L. Ed. 2d 822, 107 S. Ct. 1983 (1987)
(Royal blue is suggestive of coldness and in widespread use by ice cream producers. An injunction forbidding
the use of royal blue is too broad and must be narrowed. “The general rule is that no seller can foreclose
others absolutely from using any particular color.”); NutraSweet Co. v. Stadt Corp., 917 F.2d 1024, 1927,
16 U.S.P.Q.2d 1959 (7th Cir. 1990), cert. denied, 499 U.S. 983, 113 L. Ed. 2d 735, 111 S. Ct. 1640 (1991)
(abrogated by, Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 115 S. Ct. 1300, 131 L. Ed. 2d
248, 34 U.S.P.Q.2d 1161 (1995)) (The color blue for restaurant packets of sugar substitute could not be
the exclusive right of NutraSweet. “[T]here is no need to change the law …. Although color alone cannot
be protected as a trademark, it may be protected if it is used in connection with some symbol or design or
impressed in a particular design, such as a circle, square, triangle, a cross or a star.”).

7 First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383, 1 U.S.P.Q.2d 1779, 87 A.L.R. Fed. 1 (9th Cir.
1987) (“[Plaintiff] would in effect be getting a trademark on the color yellow as a background color for
an ordinary shaped container … [T]his would deplete a primary color available to competitors and deprive
them of a competitive need.”).

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§ 7:43. [Reserved], 1 McCarthy on Trademarks and Unfair Competition § 7:43 (5th ed.)

1 McCarthy on Trademarks and Unfair Competition § 7:43 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:43. [Reserved]

References
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§ 7:44. The 1995 Qualitex rule—A single color mark must..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:44 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:44. The 1995 Qualitex rule—A single color mark must have a secondary meaning

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(2)

A Single Color Can be a Trademark But Must Have a Secondary Meaning. In 1995, in the Qualitex case, the Supreme Court
resolved the previous split of opinion and held that a single color of a product is capable of being registered and protected as
a trademark.1 Noting that shapes, sounds and even scents have been regarded as candidates for trademark status, the Court
said that it did not believe that there was a public policy reason with sufficient weight to bar any and all product colors from
trademark status.2

In the Qualitex case, the Ninth Circuit Court of Appeals had reversed the district court's injunction based on a registered
trademark in the “gold/green” color of a pad used on dry cleaning presses by professional cleaners.3 Thus, the Ninth Circuit
adhered to the traditional color depletion rule and refused to follow the Federal and Eighth Circuits.4 The Supreme Court
reversed unanimously, stating that: “We now hold that there is no rule absolutely barring the use of color alone.”5

Shade Depletion and Shade Confusion Arguments Rejected. The Supreme Court rejected the color depletion and shade
confusion arguments as sufficient rationales underlying the traditional ban on a single product color as a trademark. The practical
problem of resolving an issue of shade confusion was said to be no more difficult than determining whether differences in word
marks would cause a likelihood of confusion.6 The Court converted the color depletion argument from a rationale for a blanket
prohibition on single color marks into the basis for a possible functionality defense in an appropriate case:

This argument is unpersuasive, however, largely because it relies on an occasional problem to justify a blanket
prohibition. When a color serves as a mark, normally alternative colors will likely be available for similar
use by others. See, e.g., Owens-Corning, 774 F.2d, at 1121 (pink insulation). Moreover, if that is not so—if a
“color depletion” or “color scarcity” problem does arise—the trade mark doctrine of “functionality” normally
would seem available to prevent the anticompetitive consequences that [defendant's] argument posits, thereby
minimizing that argument's practical force.7

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§ 7:44. The 1995 Qualitex rule—A single color mark must..., 1 McCarthy on...

Color Depletion and the Bar of Functionality. The Supreme Court in the Qualitex case said that while the possibility of color
depletion was too remote to support a complete ban on all single color trademarks, it could, in an appropriate case, serve as
the basis for a functionality defense. Such a functionality bar can preclude abstract and sweeping claims to not only a single
color, but also to combinations of basic colors. For example, a court held that John Deere & Co. could not claim exclusive
trade dress rights in every possible shade and combination of the colors green and yellow for lawn and garden equipment. Such
a broad claim was rejected as "functional," in that it could start a trend in the lawn and garden equipment market that could
deplete all colors "until there were no alternatives left." However, Deere could establish trade dress rights in a specific shade
and combination of green and yellow as applied to specific parts of lawn and garden equipment.8

The Supreme Court in the 1995 Qualitex case was well aware that sometimes color can be a utilitarian aspect of a product. In
such a case, color is "functional" and barred from trademark or trade dress exclusive rights. The Court concluded that “ordinarily,
[the functionality doctrine] should prevent the anticompetitive consequences of [defendant's] hypothetical ‘color depletion’
argument, when, and if, the circumstances of a particu lar case threaten ‘color depletion.’”9

A Single Color Trademark Must Have Acquired a Secondary Meaning. Prior to the Supreme Court's 2000 Wal-Mart decision,
some commentators read the Court's 1995 Qualitex opinion as not clearly holding that a single color can ever be so unusual
as to be “inherently distinctive” and hence protectable without proof of secondary meaning.10 Any uncertainty came to an end
when the U.S. Supreme Court in its Wal-Mart decision cleared up once and for all any lingering doubts about the rule in the
Qualitex case. In Wal-Mart, the Supreme Court looked back to its previous decision and stated that in Qualitex, it had held that
no single color can ever be inherently distinctive. Single color always requires proof of secondary meaning.11

Because a single color is usually perceived by buyers as only ornamentation, it is difficult to prove that a color has achieved a
secondary meaning denoting it as a source indicator.12 The Trademark Board has said that where the use of colors is common in a
market segment, then applicant will have a difficult burden in proving that one specific color has achieved a secondary meaning
identifying a particular source.13 But if a single color of a product is unique in this market, secondary meaning may be proven.14

No General Rule Against Single Color Marks in Any Particular Industry. The Second Circuit said that the Supreme Court in
its Qualitex decision “specifically forbade the implementation of a per se rule that would deny protection for the use of a single
color as a trademark in a particular industrial context.” The Second Circuit rejected the lower court's statement that a single
color of wearing apparel is inherently aesthetically functional and can never serve a trademark role in the fashion industry.15
The court found that plaintiff Christian Louboutin's high-fashion signature red shoe sole contrasting with the color of the shoe
upper had achieved a secondary meaning but was not infringed by defendant Yves Saint Laurent's monochrome red shoe with
both upper and sole in a single red color.16

The Supreme Court's Color Rule Applies to Both Color on a Product and Color on Packaging. The Tenth Circuit held that
the Supreme Court's ruling that a single color of a product cannot be classified as inherently distinctive applies to both the color
of a product and the color of product packaging.17

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Footnotes
1 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 131 L. Ed. 2d 248, 115 S. Ct. 1300, 34 U.S.P.Q.2d 1161
(1995). See Minnesota Mining and Manufacturing Co. v. Beautone Specialties, Co., Ltd., 82 F. Supp. 2d

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§ 7:44. The 1995 Qualitex rule—A single color mark must..., 1 McCarthy on...

997, 53 U.S.P.Q.2d 1878 (D. Minn. 2000) (Qualitex “did not mark a sudden change in trademark law” so as
to justify a 12-year delay in suing for infringement of a mark in the single color of yellow for sticky notes).

2 “If a shape, a sound, and a fragrance can act as symbols why, one might ask, can a color not do the same?”
514 U.S. at 162.

3 Qualitex Co. v. Jacobson Prods. Co., 13 F.3d 1297, 29 U.S.P.Q.2d 1277 (9th Cir. 1994), cert. granted, in
part, 512 U.S. 1287, 129 L. Ed. 2d 935, 115 S. Ct. 40 (1994), rev'd, 514 U.S. 159, 131 L. Ed. 2d 248, 115
S. Ct. 1300, 34 U.S.P.Q.2d 1161 (1995).

4 However, the Ninth Circuit said it would protect a single product color as part of “trade dress,” even if “trade
dress” only consists of combination of color and a word mark. The Ninth Circuit defined “trade dress” here
as the color in combination with the word mark SUN GLOW. Defendant copied the color and used the word
mark MAGIC GLOW. Trade dress infringement was found.

5 514 U.S. at 162.

6 “We do not believe, however, that color, in this respect, is special.” 514 U.S. at 167.

7 514 U.S. at 167 (“Although sometimes color plays an important role (unrelated to source identification) in
making a product more desirable, sometimes it does not.” 514 U.S. at 165).

8 Deere & Co. v. MTD Holdings Inc., 70 U.S.P.Q.2d 1009, 2004 WL 324890 (S.D. N.Y. 2004) ("[I]f this
court were to grant Deere exclusive trademark protection over the general use of basic colors (green and
yellow), such protection would significantly hinder competition by limiting the range of adequate alternative
designs available to other manufacturers. Therefore, under the doctrine of functionality,. the court cannot
grant Deere such broad protection."). See Deere & Co. v. FIMCO Inc., 302 F. Supp. 3d 837 (W.D. Ky.).

9 514 U.S. at 170. In the author's view, one difficulty with this rule is that often, it will not be until product
color becomes a standard means of brand identification in an industry and most of the standard colors are
taken that it becomes obvious that “color depletion” threatens to be an anti-competitive reality. Therefore,
the courts should be sensitive to apply the color depletion functionality rule as a preventative one to head off
such anti-competitive problems before they become a reality. See: A. Bartow, The True Colors of Trademark
Law: Greenlighting a Red Tide of Anti-Competition Blues, 97 Kentucky L.J. 263 (2008) (criticizing the
result of the Qualitex decision.).

10 The Second Circuit even prior to Wal-Mart read Qualitex to hold that trademark or trade dress rights in a
single color for a product can be achieved only upon a showing of secondary meaning. E.g. Knitwaves,
Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 36 U.S.P.Q.2d 1737 (2d Cir. 1995) (In Qualitex, the Supreme
Court held that a single color is capable of trademark status “only when it acquires secondary meaning”);
Forschner Group, Inc. v. Arrow Trading Co., Inc., 124 F.3d 402, 43 U.S.P.Q.2d 1942 (2d Cir. 1997) (A single
color “is never inherently distinctive” and is protectable “only when it has attained secondary meaning.” No
secondary meaning was proven in the red handle of a Swiss army knife.).

11 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 120 S. Ct. 1339, 1344, 146 L. Ed. 2d 182, 54
U.S.P.Q.2d 1065, 1068 (2000) (“Indeed, with respect to at least one category of mark—colors—we have
held that no mark can ever be inherently distinctive. [citing Qualitex ]… We held that a color could be
protected as a trademark, but only upon a showing of secondary meaning.”). Applied in: Clam Corp., Inc.
v. Innovative Outdoor Solutions, Inc., 89 U.S.P.Q.2d 1314, 2008 WL 5244845 (D. Minn. 2008) (Registered
blue color for ice fishing shelters was valid but not infringed. TRO denied.).

12 Mana Products, Inc. v. Columbia Cosmetics Mfg., Inc., 65 F.3d 1063, 1070, 36 U.S.P.Q.2d 1176 (2d Cir.
1995) (“The color black does not act as a symbol and distinguish Mana's compacts from its competitors.
It does not identify plaintiff as the source because there are countless numbers of cosmetic companies that
sell black compacts. … [B]lack is as common a color for a makeup case as brown is for a paper bag.”).
See Sazerac Co. v. Skyy Spirits Inc., 37 U.S.P.Q.2d 1731, 1995 WL 814250 (E.D. La. 1995), aff'd without

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§ 7:44. The 1995 Qualitex rule—A single color mark must..., 1 McCarthy on...

opinion, 95 F.3d 53 (5th Cir. 1996) (vodka bottle in blue cobalt color cannot be protected as trade dress
because of proof of “many other alcohol products, including vodka, that use a cobalt blue bottle”); In re
Dimarzio, Inc., 2021 WL 5822579, *4 (T.T.A.B. 2021) (“While there is no fixed rule for the amount of proof
necessary to demonstrate acquired distinctiveness, ‘[t]he burden of proving that a color mark has acquired
distinctiveness is substantial.’” Applicant failed to prove it had acquired a secondary meaning for cream
color for electric guitar pickups. Competitors also sold cream colored pickups.); In re Integra Biosciences
Corp., 2022 WL 225424, *7 (T.T.A.B. 2022) (“Consumers usually perceive color, whether a single overall
color, or multiple colors applied in a specific and arbitrary fashion, as an ornamental feature of the goods.”
Applicant failed to prove a secondary meaning in a color coding system to match colored laboratory pipettes
and colored pipette tip containers to ensure use of the proper sized tip on a pipette.).

13 In re Howard S. Leight and Associates Inc., 39 U.S.P.Q.2d 1058, 1996 WL 352967 (T.T.A.B. 1996) (“Where
the use of colors is common in a field, an applicant has a difficult burden in demonstrating distinctiveness
of its claimed color.” Brightly colored reddish-orange hue of safety earplugs was not registerable as mark
because functional and even if not, had not acquired secondary meaning because safety earplugs come
in many colors.). See In re Florists Transworld Delivery, Inc., 2013 WL 2951796, *10 (T.T.A.B. 2013)
(Black colored box could not be registered as a mark for floral arrangements: evidence was not sufficient to
prove a secondary meaning. Because black is commonly used as a symbol of mourning and condolences,
the applicant “bears a heavy burden in this case to establish that the applied-for matter has acquired
distinctiveness and is perceived as a trademark for its goods.”); In re General Mills IP Holdings II, LLC,
124 U.S.P.Q.2d 1016, 1024, 2017 WL 4082590 (T.T.A.B. 2017) (General Mills failed to prove a secondary
meaning in its yellow packaging for CHEERIOS oat cereal.); In re Grypmat, Inc., 2022 WL 16757740
(T.T.A.B. 2022) (non-precedential. “Where, as here, there is evidence showing that the use of colors is
common in a field, an applicant has a more difficult burden in demonstrating distinctiveness of its claimed
color.” Applicant could not prove that the orange color of its tool trays had acquired a secondary meaning.).

14 In re Hodgdon Powder Co., Inc., 119 U.S.P.Q.2d 1254, 2016 WL 4474327 (T.T.A.B. 2016) (Color white
for preformed gunpowder charges for muzzle loading firearms sold as WHITE HOTS was proven to have
acquired a secondary meaning and was registered. Gunpowder is typically black or grey. Applicant was the
only maker of white gunpowder of this type and used the slogan “The Only White Gunpowder.”).

15 Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 224, 103 U.S.P.Q.2d
1937 (2d Cir. 2012). See § 7:80.

16 Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 228, 103 U.S.P.Q.2d
1937 (2d Cir. 2012) (While the court said that it did not “address” the issue of “likelihood of consumer
confusion,” at the same time it held that the accused monochrome shoe was “neither a use of, nor confusingly
similar to, the Red Sole mark.”).

17 Forney Industries, Inc. v. Daco of Missouri, Inc., 835 F.3d 1238, 1247, 120 U.S.P.Q.2d 1035 (10th Cir.
2016) (While the issue in the Supreme Court decision in Qualitex “was the product's color, not the color of a
package, nothing in the opinion suggests that the distinction matters. Then in Wal-Mart the Court held that a
product's design could not be inherently distinctive. ….. In doing so the Court reaffirmed that ‘color[ ] is not
inherently distinctive’ (again making no distinction between color on a package or color of the product).”).
See In re Forney Industries, Inc., 955 F.3d 940 (Fed. Cir. 2020) (While agreeing with the Tenth Circuit that
a multi-color design on packaging is capable of being inherently distinctive, the court said nothing about a
single color design on packaging.); In re Integra Biosciences Corp., 2022 WL 225424, *8 (T.T.A.B. 2022)
(As a general rule, a color coding system on product packaging is capable of being classified as inherently
distinctive. But here, the color system was neither inherently distinctive nor had it achieved a secondary
meaning. Application for registration was rejected.).

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§ 7:44.50. Examples of single color registrations, 1 McCarthy on Trademarks and...

1 McCarthy on Trademarks and Unfair Competition § 7:44.50 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:44.50. Examples of single color registrations

References
Some examples of single color registrations for widely-known marks that have been registered after the 1995 Supreme Court
Qualitex decision include:

• BROWN applied to vehicles, identifying the delivery services of the United Parcel Service.1

• CANARY YELLOW applied to adhesive notes, identifying the goods as those of Minnesota Mining and Manufacturing Co.
(MMM).2

• RED applied to knobs on cooking appliances of the Wolf Appliance Co.3

• LACQUERED RED applied to the sole of footwear.4

• ROBIN'S EGG BLUE applied to catalog covers, identifying the catalog services of Tiffany and Company.5
Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 U.S. Registration 2131693, registered Jan. 27, 1998, claiming a date of first use of 1917.

2 U.S. Registration 2390667, registered Oct. 3, 2000, claiming a date of first use of 1978.

3 U.S. Registration 3485025, registered Aug. 12, 2008, claiming a first use date of Feb 28, 2000. Wolf
Appliance, Inc. v. Viking Range Corp., 686 F. Supp. 2d 878, 94 U.S.P.Q.2d 1798 (W.D. Wis. 2010)
(preliminary injunction granted against use by Viking).

4 U.S. Registration 3361597, registered January 1, 2008 claiming a first use date of 1992. See Christian
Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 103 U.S.P.Q.2d 1937 (2d Cir.
2012) (While plaintiff's registration was not limited to a contrasting red sole of footwear, the court exercised
its power under Lanham Act § 37, 15 U.S.C.A. § 1119 to rectify the register by limiting the mark and its
registration to a red sole that contrasted with the color of the shoe upper. The court found that plaintiff
Christian Louboutin's high-fashion signature red shoe sole contrasting with the color of the shoe upper had
achieved a secondary meaning but was not infringed by defendant Yves Saint Laurent's monochrome red
shoe with both upper and sole in a single red color.).

5 U.S. Registration 2416794, registered Jan. 2, 2001, claiming a date of first use of 1939.

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Works.

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§ 7:45. Color combinations and color in a defined design, 1 McCarthy on Trademarks...

1 McCarthy on Trademarks and Unfair Competition § 7:45 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:45. Color combinations and color in a defined design

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(2)

Color Combinations and Color Confined to a Specific Design. Prior to the 1995 Qualitex decision, a single color was not
protected. This meant that claims to an exclusive trademark or trade dress right in one color used as a background on a package
or as the color of a product were usually rejected.1 However, when color was applied in a defined design or when several colors
were combined in a pattern, even prior to Qualitex, the courts viewed the design as a candidate for trademark or trade dress rights.

The degree of distinctiveness of the colored design can directly contribute to the degree of legal strength of the design as a
trademark or trade dress. When secondary meaning is needed, the more unusual and elaborate the design, the more likely that it
will be perceived as an indicator of source and not mere decoration. Commonplace or conventional colored designs may have
little distinctiveness in the marketplace and little strength as trademarks in the courts.

Example: Green and Yellow Color Combination for Agricultural Equipment. Judge Russel in Kentucky found that a
competitor of Deere had both infringed and diluted Deere's common law and registered marks in a green and yellow color
combination for agricultural equipment. Survey evidence supported the decision. Defendant was enjoined from using on its
agricultural equipment a confusingly similar combination of green and yellow colors.2

Can Some Color Combinations Be Classified as Inherently Distinctive? The Supreme Court in Qualitex held that a single
product color could not be classified as inherently distinctive. It must have acquired a secondary meaning in order to be protected
as a trademark.3 But the Supreme Court said nothing about whether a combination of colors confined to a distinctive design
could be classified as inherently distinctive. The Tenth Circuit in the Forney case drew a clear line rule: “[W]e hold that the
use of color in product packaging can be inherently distinctive (so that it is unnecessary to show secondary meaning) only
if specific colors are used in combination with a well-defined shape, pattern, or other distinctive design.”4 The court read
Supreme Court precedent as encouraging judges to create clear rules for finding inherent distinctiveness in border line trade
dress cases. The court said that Supreme Court precedent encouraged courts to not adopt “vague, litigation-friendly tests for

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§ 7:45. Color combinations and color in a defined design, 1 McCarthy on Trademarks...

inherent distinctiveness.”5 The Tenth Circuit found that Forney's red, yellow, white and black combination of colors used on
packaging for metalworking parts was not proven to be a valid trade dress. The Forney color combination was not inherently
distinctive, had not acquired a secondary meaning, was not sufficiently defined by plaintiff and had appeared in a number of
varying formats over the years.6

The Federal Circuit agreed with the Tenth Circuit that a multi-color design on packaging is capable of being inherently
distinctive. The court said that a defined design of black, red and yellow on packaging for metalworking parts was capable of
registration without proof of a secondary meaning if the Trademark Board determined that the design met the Seabrook test.7
That is, is the design so unusual that one can assume without proof that it will automatically be perceived by customers as an
indicator of origin—a trademark?8

Colors of Taxicabs. In apparent discordance with the older rule that the color of a product itself was not protectable, in the taxicab
cases, the courts were quite liberal in granting protection for the color of business vehicles.9 A more recent case protecting a
red and black taxicab color combination was in accord with the traditional rule, for color combinations are not barred by the
color depletion rule.10

Confining Color to a Defined Design. Although the uniform color of a product itself was usually not capable of trademark
protection under the traditional rule, color applied to a product in a defined design could result in a composite so distinctive as
to warrant protection.11 However, merely coating the top of a fence post with a reflective material was held to be unprotectable
because it was no “design” at all and was also functional.12

The Federal Circuit held that a design of multiple colors on packaging is capable of trademark registration as being inherently
distinctive. There is no requirement that the colors be confined in a “peripheral shape or border.”13

Colors of Drug Capsules. In the pharmaceutical drug color cases, drug firms have asserted trademark rights in the color or
colors of drug capsules and have usually prevailed.14

Campbell's Red and White Soup Cans. In the Campbell Soup case,15 the court held that Campbell Soup Co. could not claim
any exclusive rights in a label horizontally divided into the colors red and white:

Color is a perfectly satisfactory element of a trademark if it is used in combination with a design in the form, for
example, of a picture or a geometrical figure. … The mere division of a label into two background colors, as in
this case, is not, however, distinct or arbitrary.16

The court distinguished the Barbasol case, which upheld the trademark significance of a shaving cream box having diagonal
blue, white, and red stripes forming a border for a panel of blue.17

Examples of Marks in Color Combinations and in Defined Colored Designs. Many decisions have held that various
combinations of colors or defined shapes in a certain color are protectable trademarks:

• Agricultural equipment: green and yellow combination18

• Bowling pin: red crown on neck of bowling pin19

• Champagne: MUMM's champagne with white label with red stripe running diagonally from upper left to lower right, edged
in gold, with the words in gold “Cordon Rouge”20

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§ 7:45. Color combinations and color in a defined design, 1 McCarthy on Trademarks...

• Charitable services: color red for six-pointed star of David21

• Computer hardware: black and white cow spots22

• Cooking appliances: red knobs23

• Fruit punch: pale blue can with picture of glass of red fruit punch24

• Garden chemicals: horizontal red, yellow, and white bands on bottle25

• Health insurance: blue shield design26

• Internet search engine: Words “Go” and “TO” in white font stacked vertically in a green circle against a square yellow
background27

• Personal accessories: GUCCI green-red-white stripes as used on watches, handbags, clothing and watches28

• Sports shoes: blue rectangular label attached to the heel or instep29

• Tape recording device: light colored rectangular panel on the face of the device30

• Taxi cab: registration for checkered band around taxi cab body31

• Wearing apparel: red, black, and white used in a particular graphic display in a logo32

• Wearing apparel: two color scheme used to identify a university33

Commonplace versus Distinctive Colored Designs. The more distinctive and arbitrary the design upon which a color is imposed,
the more likely that buyers will really “see” the design. But if the design is a commonplace band, square, circle, etc., the buyer
is more likely to regard it as mere background ornamentation or decoration.34 The design and color composite must be so
distinctive, or so widely advertised, that it catches the buyer's eye. It might be distinctive on its own, or the seller might so
advertise the design as to cause buyers to look for the design-color combination. For example, the seller might advertise: “Look
for the yellow label with the red star.”35

Distinctive Colored Designs: Extent of Protection. Even if color is an integral element of a symbol (or word) mark, the symbol
may be sufficiently distinctive as to prevent its use by a competitor even in connection with a different color. For example, the
Fifth Circuit Court of Appeals held that the mark BLUE SHIELD with a shield design for medical insurance was infringed by
RED SHIELD with a similar shield design for medical insurance. The court said, “It is the words and the symbols which are
confusingly similar, not the ink applied by the printing press.”36

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 See § 7:40.

2 Deere & Company v. FIMCO Inc., 302 F. Supp. 3d 837 (W.D. Ky. 2017), injunction modified, 301 F. Supp.
3d 704 (W.D. Ky. 2018).

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§ 7:45. Color combinations and color in a defined design, 1 McCarthy on Trademarks...

3 See § 7:44.

4 Forney Industries, Inc. v. Daco of Missouri, Inc., 835 F.3d 1238, 1248, 120 U.S.P.Q.2d 1035 (10th Cir.
2016). See Farouk Systems, Inc. v. AG Global Products, LLC, 2016 WL 1322315, *5 (S.D. Tex. 2016),
appeal dismissed, (5th Cir. 16-20289) (July 14, 2016) (Assuming without discussion that a red and black
color combination of a heated hair brush product required a secondary meaning. It was not proven and claim
dismissed on summary judgement.).

5 835 F.3d at 1253. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 215, 120 S. Ct. 1339,
146 L. Ed. 2d 182, 54 U.S.P.Q.2d 1065 (2000) (“To the extent there are close cases, we believe that courts
should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring
secondary meaning.”).

6 “In short, Forney has used the combination of red, yellow, white, and black in such diverse ways that there is
no consistent shape, pattern, or design we can discern from its description of its mark or from the examples
it provides.” 835 F.3d at 1253.

7 In re Forney Industries, Inc., 955 F.3d 940, 946 (Fed. Cir. 2020) (“We conclude that the Board erred in stating
that a multi-color product packaging mark can never be inherently distinctive.”).

8 See discussion of the Seabrook test at § 8:13.

9 See, e.g., Luxor Cab Mfg. Corp. v. Leading Cab Co., 125 Misc. 764, 211 N.Y.S. 886 (1925), aff'd, 215
A.D. 798, 213 N.Y.S. 847 (1926). See also Southwestern Bell Tel. Co. v. Nationwide Independent Directory
Service, Inc., 371 F. Supp. 900, 182 U.S.P.Q. 193 (W.D. Ark. 1974) (yellow colored pages protected as part
of YELLOW PAGES word mark). See § 7:48.

10 Transportation, Inc. v. Mayflower Services, Inc., 769 F.2d 952, 227 U.S.P.Q. 47 (4th Cir. 1985) (RED TOP
taxi cabs' red and black color scheme was found to have acquired secondary meaning and to be infringed
by a very similar red and black taxi cab design used by a competitor; injunction prohibiting defendant from
using any red and black combination for its taxi cabs was affirmed as necessary to prevent further customer
confusion).

11 In re Tec Torch Co., 143 U.S.P.Q. 124 (T.T.A.B. 1964) (registration for three welding torch cables colored
red, black, and blue, respectively); In re Ritchie Mfg. Co., 170 U.S.P.Q. 291 (T.T.A.B. 1971) (red and yellow
applied to arbitrarily selected portions of the product itself held registrable as a trademark); Quabaug Rubber
Co. v. Fabiano Shoe Co., 567 F.2d 154, 195 U.S.P.Q. 689 (1st Cir. 1977) (elongated yellow octagon on boot
soles and heels held a valid mark); In re AFA Corp., 196 U.S.P.Q. 772 (T.T.A.B. 1977) (gold and black colors
on product held registrable); Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 216 U.S.P.Q. 102
(3d Cir. 1982) (six primary colors on faces of RUBIK'S CUBE puzzle protected as against imitator); Vision
Sports, Inc. v. Melville Corp., 888 F.2d 609, 12 U.S.P.Q.2d 1740 (9th Cir. 1989) (the colors red, black, and
white used in a particular graphic display in a logo are protectable as trade dress; such a defined use of color
does not trigger “color depletion” concerns).

12 In re Pollak Steel Co., 314 F.2d 566, 136 U.S.P.Q. 651 (C.C.P.A. 1963); see Plastilite Corp. v. Kassnar
Imports, 508 F.2d 824, 184 U.S.P.Q. 348 (C.C.P.A. 1975) (yellow and orange fishing float held not an
inherently distinctive color application and no secondary meaning proven); Plastilite Corp. v. Airlite Plastics
Co., 390 F. Supp. 1141, 185 U.S.P.Q. 313 (D. Neb. 1975), rev'd, 526 F.2d 1078, 189 U.S.P.Q. 327 (8th Cir.
1975), cert. denied, 425 U.S. 938, 48 L. Ed. 2d 179, 96 S. Ct. 1671, 200 U.S.P.Q. 128 (1976).

13 In re Forney Industries, Inc., 955 F.3d 940, 947, (Fed. Cir. 2020) (The court held that the T.T.A.B. erred in
requiring that a combination of black, red and yellow on packaging for metalworking parts had to be confined
in a “peripheral shape or border.” The applicant's mark was defined as “the color red fading into yellow in
a gradient, with a horizontal black bar at the end of the gradient.” The court emphasized that the mark did
not consist of those three colors in any format, “but instead seeks to protect only the particular combination

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§ 7:45. Color combinations and color in a defined design, 1 McCarthy on Trademarks...

of these colors, arranged in a particular design, as shown in the drawing submitted for its proposed mark.”).
See Forney Industries, Inc. v. Daco of Missouri, Inc., 835 F.3d 1238, 1247, 120 U.S.P.Q.2d 1035 (10th Cir.
2016) (A Forney combination of colors used on packaging was not proven to be a valid trade dress. The
color combination was not inherently distinctive, had not acquired a secondary meaning, was not sufficiently
defined by plaintiff and had appeared in a number of varying formats over the years.).

14 See, e.g., SK&F, Co. v. Premo Pharmaceutical Laboratories, Inc., 625 F.2d 1055, 206 U.S.P.Q. 964 (3d Cir.
1980) (maroon and white color of diuretic drug capsule held protectable trade dress); Ciba-Geigy Corp. v.
Bolar Pharmaceutical Co., 547 F. Supp. 1095, 215 U.S.P.Q. 769 (D.N.J. 1982), aff'd, 719 F.2d 56 (3d Cir.
1983), cert. denied, 465 U.S. 1080, 79 L. Ed. 2d 763, 104 S. Ct. 1444 (1984). See Smithkline Beckman Corp.
v. Pennex Products Co., 605 F. Supp. 746, 225 U.S.P.Q. 963 (E.D. Pa. 1985) (where a trademark is asserted
in the color orange of a type of nonprescription aspirin, defendant does not infringe if its container is opaque
and customers cannot see that its tablets are orange; but if the container is translucent, then likely confusion
is possible); American Home Products Corp. v. Barr Laboratories, Inc., 656 F. Supp. 1058, 3 U.S.P.Q.2d
1194 (D.N.J. 1987), aff'd, 834 F.2d 368, 5 U.S.P.Q.2d 1073 (3d Cir. 1987) (no infringement of color/shape
of ADVIL brown ibuprofen tablets where copier's brown tablet was of a significantly different shape).

Compare Ives Laboratories, Inc. v. Darby Drug Co., 638 F.2d 538, 209 U.S.P.Q. 449 (2d Cir. 1981), rev'd,
remanded, 456 U.S. 844, 72 L. Ed. 2d 606, 102 S. Ct. 2182, 214 U.S.P.Q. 1 (1982) (court of appeals
improperly reversed district court's findings regarding contributory infringement). See Cooper, “Trademark
Aspects of Pharmaceutical Product Design,” 70 Trademark Rep. 1 (1980); “Symposium on the Ives Case,”
72 Trademark Rep. 118 (1982); Weinberg, “Drug Color Copying in the Wake of Ives: A Comment on Two
Decisions,” 72 Trademark Rep. 285 (1982); discussion at § 7:50.

15 Campbell Soup Co. v. Armour & Co., 175 F.2d 795, 81 U.S.P.Q. 430 (3d Cir. 1949), cert. denied, 338 U.S.
847, 94 L. Ed. 518, 70 S. Ct. 88, 83 U.S.P.Q. 543 (1949).

16 Campbell Soup Co. v. Armour & Co., 175 F.2d 795, 799, 81 U.S.P.Q. 430 (3d Cir. 1949), cert. denied, 338
U.S. 847, 94 L. Ed. 518, 70 S. Ct. 88, 83 U.S.P.Q. 543 (1949). See The Black & Decker Corporation v.
Positec USA Inc., 115 U.S.P.Q.2d 1472, 2015 WL 4183775 (N.D. Ill. 2015) (Black & Decker sufficiently
defined as its trade dress a two-toned black and yellow combination applied to its DeWALT power tools.).

17 Barbasol Co. v. Jacobs, 160 F.2d 336, 339, 72 U.S.P.Q. 350 (C.C.A. 7th Cir. 1947) (“A barber pole, so we
think, is not descriptive of anything unless it be a barber pole. It is not even descriptive of a barber shop,
although no doubt suggestive of such. But even if it be assumed that it is descriptive of a barber shop, it
would not be descriptive of a shaving cream any more than of brushes, razors, combs and all the other goods
and services usually found in such a shop.”).

18 Deere & Company v. FIMCO Inc., 302 F. Supp. 3d 837 (W.D. Ky. 2017), injunction modified, 301 F.
Supp. 3d 704 (W.D. Ky. 2018) (Court found both infringement and dilution of Deere's green and yellow
color combination. Defendant was enjoined from using on agricultural equipment a confusingly similar
combination of green and yellow colors.).

19 Brunswick-Balke-Collender Co. v. American Bowling & Billiard Corp., 150 F.2d 69, 65 U.S.P.Q. 148
(C.C.A. 2d Cir. 1945).

20 G.H. Mumm Champagne v. Eastern Wine Corporation, 142 F.2d 499, 61 U.S.P.Q. 337 (C.C.A. 2d Cir. 1944).

21 In re American Red Magen David for Israel, 222 U.S.P.Q. 266, 1984 WL 63036 (Trademark Trial & App. Bd.
1984) (held that color red for six-pointed star of David was “well within the permissible range of protectable
arrangements of color,” citing treatise).

22 Gateway Inc. v. Companion Products Inc., 68 U.S.P.Q.2d 1407, 2003 WL 22508907 (D.S.D. 2003),
judgment modified on other grounds, 2003 WL 23532885 (D.S.D. 2003) and judgment aff'd, 384 F.3d 503,

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72 U.S.P.Q.2d 1591 (8th Cir. 2004), reh'g and reh'g en banc denied, (Oct. 25, 2004) (infringement of the
mark was found by similar use on computer accessories).

23 Wolf Appliance, Inc. v. Viking Range Corp., 686 F. Supp. 2d 878, 94 U.S.P.Q.2d 1798 (W.D. Wis. 2010)
(Preliminary injunction granted. Wolf had a registered trademark for the red knobs.).

24 RJR Foods, Inc. v. White Rock Corp., 201 U.S.P.Q. 578, 1978 WL 21389 (S.D. N.Y. 1978), aff'd on point,
603 F.2d 1058, 203 U.S.P.Q. 401 (2d Cir. 1979).

25 Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695, 212 U.S.P.Q. 904 (5th Cir. 1981).

26 National Ass'n of Blue Shield Plans v. United Bankers Life Ins. Co., 362 F.2d 374, 150 U.S.P.Q. 80 (5th Cir.
1966) (BLUE SHIELD with a shield design for medical insurance was infringed by RED SHIELD with a
similar shield design for medical insurance.).

27 GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 53 U.S.P.Q.2d 1652 (9th Cir. 2000) (“It is precisely the
identical colors that create the confusion: white script in a green circle on a yellow square.”).

28 Gucci America, Inc. v. Dart, Inc., 715 F. Supp. 566, 12 U.S.P.Q.2d 1912 (S.D. N.Y. 1989) (the GUCCI color
design mark consisting of green-red-white stripes as used on watches, handbags, clothing and watches is
a strong mark).

29 Keds Corp. v. Renee Intern. Trading Corp., 888 F.2d 215, 12 U.S.P.Q.2d 1808 (1st Cir. 1989) (A blue
rectangular label attached to the heel or instep of a sports shoe is a protectable trademark. “[C]olor in
combination with a distinctive design or shape may be trademarked if it develops a secondary meaning.”
Such a defined use of color does not trigger “color depletion” concerns.).

30 In re Graham Magnetics, Incorporated, 226 U.S.P.Q. 876, 1985 WL 72087 (Trademark Trial & App. Bd.
1985) (light colored rectangular panel on the face of a tape recording device is a defined application of color
and registrable).

31 Ex Parte Checker Cab Manufacturing Corporation, 99 U.S.P.Q. 480, 1953 WL 5161 (Comm'r Pat. &
Trademarks 1953).

32 Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 12 U.S.P.Q.2d 1740 (9th Cir. 1989) (the colors red,
black, and white used in a particular graphic display in a logo are protectable as trade dress; such a defined
use of color does not trigger “color depletion” concerns).

33 Board of Supervisors of LA State University v. Smack Apparel Co., 438 F. Supp. 2d 653, 211 Ed. Law Rep.
809, 82 U.S.P.Q.2d 1122 (E.D. La. 2006), aff'd, 550 F.3d 465, 89 U.S.P.Q. 2d 1338 (5th Cir. 2008) (summary
judgment of infringement by selling without a license items of wearing apparel bearing the distinctive two
color designs and logos of various universities).

34 Ventura Travelware, Inc. v. Baltimore Luggage Co., 66 Misc. 2d 646, 322 N.Y.S.2d 93, 100 (Sup 1971),
judgment aff'd, 38 A.D.2d 794, 328 N.Y.S.2d 811 (1st Dep't 1972) (Colored stripe design on luggage held
not to be a trademark. “It cannot be concluded that a series of decorative stripes of particular colors affixed
to luggage, substantially adding to the attractiveness, salability and price of the luggage constitute a valid
trademark.”); American Basketball Ass'n v. AMF Voit, Inc., 358 F. Supp. 981, 177 U.S.P.Q. 442 (S.D. N.Y.
1973), aff'd, 487 F.2d 1393, 180 U.S.P.Q. 290 (2d Cir. 1973) (Red, white, and blue panels on basketball held
not inherently distinctive and without a secondary meaning); Application of Soccer Sport Supply Co., Inc.,
507 F.2d 1400, 184 U.S.P.Q. 345 (C.C.P.A. 1975) (Black and white panels on soccer ball held not inherently
distinctive and without a secondary meaning).

35 First Circuit

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Quabaug Rubber Co. v. Fabiano Shoe Co., Inc., 567 F.2d 154, 161, 195 U.S.P.Q. 689 (1st Cir. 1977)
(“Advertising the color as Quabaug has done can serve to make such a mark more distinctive.” Yellow
octagon on sole of shoe was a valid mark which was infringed.)
Ninth Circuit
First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383, 1 U.S.P.Q.2d 1779, 87 A.L.R. Fed. 1 (9th Cir.
1987) (No secondary meaning found for yellow jugs of antifreeze, due in part to failure to draw attention to
color of jug in advertising: It did not, for example, urge consumers to look for the ‘familiar yellow jug.’”)
Tenth Circuit
Forney Industries, Inc. v. Daco of Missouri, Inc., 2015 WL 3457807, *5 (D. Colo. 2015), aff'd, 2016 WL
4501941 (10th Cir. 2016) (Dismissing on summary judgment claim of trade dress in red and yellow color
combination for metalworking products for failure to show a secondary meaning, noting the absence of
advertising drawing attention to the colors. “Forney's advertising utterly fails to mention the color mark or
to emphasize it in any fashion so as to promote an association between Forney's product and its source.”)
Federal Circuit
Application of Swift & Co., 42 C.C.P.A. 1048, 223 F.2d 950, 953, 106 U.S.P.Q. 286 (1955) (Red and white
polka dot label was registered for cleanser noting that the legend on the label was used extensively in
advertising: “Pick the Polka Dot package cleanser.”); Application of Data Packaging Corp., 59 C.C.P.A.
776, 453 F.2d 1300, 1304, 172 U.S.P.Q. 396 (1972) (Contrasting ring of color on computer tape reel was
registerable, noting the advertising: “Recognize them by the color-coded saturn ring around the hub.”
Secondary meaning proven)
Trademark Board
In re the Afa Corporation, 196 U.S.P.Q. 772, 775, 1977 WL 22616 (T.T.A.B. 1977) (Product advertised as
“Gold and Black Means AFA” and “Look for the characteristic gold and black that identifies the Fogmaster
7401 Mist-Jet Fogger.” Reversed a refusal to register gold and black for a mist making machines.)
Regarding “look for” advertising of trade dress or color see § 7:30.

36 National Ass'n of Blue Shield Plans v. United Bankers Life Ins. Co., 362 F.2d 374, 150 U.S.P.Q. 80 (5th Cir.
1966). See discussion of the scope of rights in color marks at § 7:45.70.

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1 McCarthy on Trademarks and Unfair Competition § 7:45.30 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:45.30. Defining and narrowing the definition of color in a registration

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(2)

Indicating and Defining Color in a Trademark Registration. Every trademark registration, including one which comprises
color as an essential element, must include a "clear drawing" of the mark.1 Over the years, there have been changes in the
method of creating a drawing for a registration of a mark that is limited to one or more colors. Prior to 1999, color was indicated
in a black and white drawing by various symbolic "linings" or types of cross-hatchings that indicated certain colors. After a
1999 rule change, the previous symbolic linings for color were no longer to be used. After the 1999 changes, where color was
a feature of the mark, the applicant was required to submit a written statement explaining where the color or colors appear and
the nature of the colors.

In 2003, the rules were changed again. The USPTO began accepting drawings in color on November 2, 2003. Starting on that
date, the Office would no longer accept black and white drawings with a color claim, or drawings that show color by use of
lining patterns.2 After the 2003 rule change, color drawings had to be accompanied by the following: (1) a color claim naming
the colors that are a feature of the mark; and (2) a separate statement describing where the color or colors appear on the mark.
For example, a properly worded color claim would read as follows: "The color orange is claimed as a distinctive feature of the
mark."3 A properly worded description would read as follows: "The color orange appears in <specify portion of mark on which
color or colors appear>." If applicant claims and describes the mark as consisting of color but in response to a requirement by
the Examiner fails to provide a drawing showing the color described, the application will be rejected.4

Author's Comment: Strategy on When to Indicate Color in a Registration. The basic rule of thumb is that an applicant should
not submit a drawing in color unless that color is an essential and distinguishing element of the mark. Many marks often appear
on labels and advertisements in color. However, the applicant should not restrict the registration drawing to a particular color
or colors unless color is a key and distinctive element of the mark. A mark not limited to one color in effect covers the mark
as it appears in any color. If the trademark owner includes a particular color as an element of the registration, the owner may
effectively re strict its rights to preventing use of that mark only in that color. At least, efforts to prevent use of the mark in other
colors will be more difficult than if the registration was not limited as to a particular color at all.

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Judicial Power to Narrow the Definition of Color in a Registration. Under Lanham Act § 37, 15 U.S.C.A. § 1119, in any case
involving a registered mark, a federal court has the power to “rectify the register” with respect to a registration owned by a party
to the case.5 This means that a court can narrow the scope of the exclusive right to use of color as defined in a registration if the
court believes the existing definition is excessively broad. The best known example of this occurring is in the well-known case
where a high-fashion shoe designer owned a registration for lacquered red applied to the sole of footwear.6 While plaintiff's
registration was not limited to a contrasting red sole of footwear, the Second Circuit court of appeals believed the registration
to be overly broad and exercised its power to rectify the register by limiting the mark and its registration to a red sole that
contrasted with the color of the shoe upper.7 The court found that plaintiff Christian Louboutin's high-fashion signature red
shoe sole contrasting with the color of the shoe upper had achieved a secondary meaning but was not infringed by defendant
Yves Saint Laurent's monochrome red shoe with both upper and sole in a single red color.

Similarly, a court narrowed down a registration that was so broadly worded that it covered any shade of orange on any article of
clothing or advertisement as used in any aspect of the construction industry. The court limited the registration to nonfunctional
construction uses and to the specific article of clothing and yard sign shown in the registration drawing.8

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 37 C.F.R. 2.21(a)(3). See § 19:58.

2 37 C.F.R. § 2.52(b)(1).

3 A color mark registration can be specifically identified by the use of a Pantone number. T.M.E.P. § 808.02
(April 2016 ed) (“[G]reater precision in identifying the color may be critical in accurately describing the mark
…”) See § 7:45.70 for discussion of the Pantone color system. For example: In re Medline Industries, Inc.,
2020 WL 1485709 (T.T.A.B. 2020) (Trademark Board found no likelihood of confusion between different
shades of green for medical gloves. Supplemental Register applicant's “subdued, pale” green in Pantone
2274C was not confusingly similar to the cited Supplemental Registration for “bright, attention-grabbing”
green in Pantone 7488U for medical gloves. “Pantone designations are not required to identify particular
shades of color, but have been recognized as serving that function.”).

4 In re Rainier Enterprises, LLC, 2019 WL 6525198 (T.T.A.B. 2019).

5 See § 31:109.

6 U.S. Registration 3361597, registered January 1, 2008 to Christian Louboutin S.A., claiming a first use date
of 1992.

7 Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 228, 103 U.S.P.Q.2d
1937 (2d Cir. 2012) (“Because we conclude that the secondary meaning of the mark held by Louboutin
extends only to the use of a lacquered red outsole that contrasts with the adjoining portion of the shoe, we
modify the Red Sole Mark …. insofar as it is sought to be applied to any shoe bearing the same color ‘upper’
as the outsole.”).

8 Cedar Valley Exteriors, Inc. v. Professional Exteriors, Inc., 119 U.S.P.Q.2d 1445, 2016 WL 3629078 (D.
Minn. 2016) (The color orange was held functional when on items such as safety vests because it serves an
important safety function increasing visibility on a dangerous construction site. The registration was limited
to services related to installing structure siding and roofing. The registration was limited to uses as shown
the registration drawing: on a polo shirt and on a yard sign.).

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1 McCarthy on Trademarks and Unfair Competition § 7:45.70 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:45.70. Color infringement—Scope of rights in a color mark and “shade confusion”

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(2)

How to Determine Infringement of Color Marks? Largely unexplored in the case law is the question of the scope of
exclusionary rights when a mark consists of a single color or a combination of colors. Is a registration showing a shovel with a
reddish orange handle infringed by a rake with a handle in a yellowish orange color? Is a candy package trade dress dominated by
a dark purple oval infringed by a competitive candy package with a light purple circle? These are some of the most unpredictable
and troublesome issues of infringement in trademark law. Of course, the law says that the ultimate decision is in the eyes and
minds of customers. The test of infringement is: would the reasonably prudent customer be likely to be confused by the similar
color as to source, sponsorship, affiliation or approval?1

Deciding Issues of "Shade Confusion." These kinds of issues exemplify "shade confusion." This was one of the grounds for
the now defunct traditional rule that the single color of a product was never capable of protection as a trademark. The "shade
confusion" rationale posited that determination of the issue of likelihood of confusion between shades of colors was too elusive
and subjective.2 This was unsuccessfully argued in the 1995 Supreme Court decision in Qualitex as a reason supporting the
traditional rule against single color marks.3 However, the Supreme Court rejected the shade confusion argument as a sufficient
rationale underlying the traditional ban on a single product color as a trademark. The practical problem of resolving an issue
of shade confusion was said by the Court to be no more difficult than determining whether differences in word marks would
cause a likelihood of confusion:

We do not believe, however, that color, in this respect, is special. Courts traditionally decide quite difficult
questions about whether two words or phrases or symbols are sufficiently similar, in context, to confuse buyers. …
We do not see why courts could not apply those standards to a color, replicating, if necessary, lighting conditions
under which a colored product is normally sold. … Indeed, courts already have done so in cases where a trademark
consists of a color plus a design, i.e., a colored symbol such as a gold stripe (around a sewer pipe), a yellow strand
of wire rope, or a 'brilliant yellow' band (on ampules).4

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Even prior to the Qualitex case, some issues of shade confusion arose to a limited extent.5

Can Consumers Distinguish Between Two Sources by Two Different Gradations in Shades of Color? Some courts believe
that consumers have no difficulty distinguishing different sources by subtle differences in shades, such as an accused “light
gray” being distinguishable from plaintiff's “gray teal blue”6 or tennis racquet handle gauze tape in a purple hue “almost teal”
as distinguishable from plaintiff's tennis racquet handle grip tape that was “generally light blue.”7

But recognizing that ordinary consumers may not be able to distinguish between sources by differing shades of “blue,” the
Trademark Board held that an applicant's medical instrument in the color “teal” was likely to cause confusion with the prior
registration of a similar medical device (used in conjunction with the applicant's device) and using the color “blue” applied to
the length of the product in the same way. The Board said that while “teal” was generally described as a shade of “greenish blue”
or “bluish green,” the cited prior registration in “blue” would be considered as “any shade that would fall under the general
term ‘blue.’” This included “teal.”8

The Trademark Board in the Medline case found no likelihood of confusion between different shades of green for medical gloves.
An examiner refused registration on the Supplemental Register for the color green for medical gloves as being confusingly
similar to an existing Supplemental Registration for the color green for medical gloves. Applying the traditional duPont
confusion factors, the Trademark Board reversed, noting the widespread non-trademark use of various shades of green for
medical gloves. The Board found applicant's “subdued, pale” green in Pantone 2274C was not confusingly similar to the
registered “bright, attention-grabbing” green in Pantone 7488U.9 Genericness and functionality were not in issue in this case,
as they would be if a Supplemental registration was challenged in a Petition to Cancel.10

Defining Shades Scientifically. There do exist scientifically accurate methods for objec tively defining color shades, whether or
not the human eye can distinguish them. For example, the Pantone Matching System (PMS) is an ink matching technique widely
used by graphic designers in which PMS numbers designate colors. The Pantone formula guide, a three-guide set consisting of
1,114 solid Pantone colors on coated, uncoated and matte stock, shows corresponding printing ink formulas for each color that
can be used for color identification, matching, and quality control.11 A Pantone designation can be used to define a color in a
trademark registration.12 In the Medline case noted above, the different Pantone designations loomed large in the decision that
two shades of green for medical gloves would not be likely to cause confusion.

Some courts have used the Pantone system as a method of defining the limits of trademark protection of a color and giving the
defendant an objective benchmark for complying with an injunction.13 Under this approach, a court could define the scope of a
trademark in a color as, for example, ten numbered shades on each side of Pantone color number 165. For example, in issuing a
Preliminary injunction against defendant's use of a plum color as infringement of plaintiff T-Mobile's magenta color, the court
forbid the use of “Pantone 676C and confusingly similar shades in its advertising, marketing and store design.”14 Litigants have
used the Pantone system in settlement agreements to define the scope of rights in color marks.15

Author's Opinion: The legal scope of a trademark in color is not defined in scientifically objective terms, like the claims of a
utility patent. The test of infringement is not how many Pantone shades the defendant is distant from the senior user's mark,
but whether the reasonably prudent customer would be likely to be confused as to source, sponsorship, affiliation or approval.
Some courts blithely assume that because there are hundreds of scientifically identifiable shades, consumers can distinguish
between them to identify hundreds of different commercial sources by fine variations in shade and that therefore colors will
never be "depleted" and no one will be confused.16 In the author's opinion, this is a unrealistic view which erroneously assumes
that the first competitor in a market to establish a primary color such as "red" as its distinguishing color will stand by and not

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sue (and likely win) when a competitor enters with a different shade of red, the junior user arguing in defense that its "yellowish
red" is not confusingly similar to the senior user's "bluish red."

Anyone who has gone shopping in a paint store and been unable to distinguish between fine variations of shades will appreciate
the attitude of a judge or juror asked to find that "yellowish red" does not infringe "bluish red." To complicate matters further,
scientific studies have revealed that men perceive colors differently than women, creating a significant gender divide in color
recognition.17

If the decision maker thinks that the ordinary purchaser or user will see the color as a source indicator, and see them as close
enough as to be likely to confuse source or affiliation, then infringement will be found. even though the color shades are not
identical.18

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Weems Industries, Inc. v. Teknor Apex Company, 2023 WL 2333901, *10 (N.D. Iowa 2023) (Plaintiff
asserted infringment of its registered mark for a chartreuse color for water hoses. While the registration was
for a particular shade, a product color mark does not give an exclusive right to use all shades of that basic
color. Infringment is determined by the classic test of likelihood of confusion.).

2 See § 7:41.

3 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 115 S. Ct. 1300, 131 L. Ed. 2d 248, 34 U.S.P.Q.2d
1161 (1995) ("First, Jacobson says that, if the law permits the use of color as a trademark, it will produce
uncertainty and irresolvable court disputes about what shades of a color a competitor may lawfully use.
Because lighting (morning sun, twilight mist) will affect perceptions of protected color, competitors and
courts will suffer from 'shade confusion' as they try to decide whether use of a similar color on a similar
product does, or does not, confuse customers and thereby infringe a trademark. Jacobson adds that the 'shade
confusion' problem is 'more difficult' and 'far different from' the 'determination of the similarity of words
or symbols.'" 514 U.S. at 167).

4 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 167-168, 115 S. Ct. 1300, 131 L. Ed. 2d 248,
34 U.S.P.Q.2d 1161 (1995).

5 See, e.g., The Youngstown Sheet and Tube Company v. Tallman Conduit Company, 149 U.S.P.Q. 656, 1966
WL 7215 (TTAB 1966) (two sewer pipe manufacturers both used a colored band around the end of a pipe-one
gold, the other orange); Youngstown Sheet and Tube Company v. Armco Steel Corporation, 170 U.S.P.Q.
162, 1971 WL 16756 (TTAB 1971) (registration of orange fence post unsuccessfully opposed by owner
of registration of mark for orange band on metal pipe); In re Hodes-Lange Corporation, 167 U.S.P.Q. 255,
1970 WL 9589 (TTAB 1970) (comparing "brilliant yellow" band with "bronzy gold" band); Wire Rope
Corporation of America, Inc. v. Secalt S.A., 196 U.S.P.Q. 312, 1977 WL 22574 (TTAB 1977) (registration of
red and yellow strands in wire rope unsuccessfully opposed by owner of registration for red strand); Amsted
Industries, Inc. v. West Coast Wire Rope & Rigging, Inc., 2 U.S.P.Q.2d 1755, 1987 WL 123828 (T.T.A.B.
1987) (likely confusion was found between opposer's wire rope with two adjacent strands of yellow as
compared with applicant's wire rope with adjacent strands of yellow and yellowish green); In re Amsted
Industries Inc., 972 F.2d 1326, 24 U.S.P.Q.2d 1067 (Fed. Cir. 1992) (no confusion likely between orange
color of plastic sheath wrapped around wire rope and orange strand in six strand wire rope).

6 Regal Jewelry Co., Inc. v. Kingsbridge Intern., Inc., 999 F. Supp. 477, 47 U.S.P.Q.2d 1074 (S.D. N.Y. 1998)
(rejecting plaintiff's argument that because the colors of the two parties are both shades of “gray,” confusion

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is likely, the court found plaintiff's position overly broad because it would “prevent other manufacturers
from using many shades of gray as a background color for their packaging”).

7 Unique Sports Products, Inc. v. Ferrari Importing Co., 100 U.S.P.Q.2d 1948, 2011 WL 5156798 (N.D. Ga.
2011), aff'd in part, vacated in part, 720 F.3d 1307, 107 U.S.P.Q.2d 1531 (11th Cir. 2013) (Plaintiff's federally
registered “light blue” color for its product was a valid mark, but not infringed. Vacating as “unnecessary”
the decision that the non-infringed mark was valid.).

8 In re Cook Medical Technologies LLC, 105 U.S.P.Q.2d 1377, 2012 WL 6967733 (T.T.A.B. 2012) (The
Board noted that applicant had the option of filing a petition to “restrict” the cited registration in order to
narrow the definition of “blue” to a specific shade if it would avoid a likelihood of confusion.). See § 20:44.

9 In re Medline Industries, Inc., 2020 WL 1485709, *9 (T.T.A.B. 2020) (Note that this case concerned only
the Supplemental Register for non-trademarks with the potential to acquire distinctiveness and become a
trademark. “[W]e find … that the third-party non-trademark uses of shades of green on medical gloves tend
to impair the cited Supplemental Register mark's ability to acquire distinctiveness, and to limit its scope of
protection if it did acquire distinctiveness.”).

10 In re Medline Industries, Inc., 2020 WL 1485709, *8 (T.T.A.B. 2020) (“To the extent that the third-party
materials displaying green gloves specifically discuss the green color of the gloves, they refer only to possible
functional benefits, not source identification.”).

11 See www.pantone.com. See also Henry, "Right Hat, Wrong Peg: Re Owens-Corning Fiberglas Corp. and
the Demise of the Mere Color Rule," 76 Trademark Rep. 389, 402 (1986) (describing the scientific basis
for distinguishing and defining color shades).

12 T.M.E.P. § 808.02 (Oct 2018 ed.) (A Pantone designation can be used to define a color in a registration
“because greater precision in identifying the color may be critical in accurately describing the mark….”).

13 In an injunction barring use of trade dress graphics, defendant was required to use "a discernibly different
pink, at least 40 percent different in terms of PMS tones. Plaintiff did not prove secondary meaning in the
pink shade apart from its use in a defined graphic design as trade dress. Olay Co., Inc. v. Cococare Products,
Inc., 218 U.S.P.Q. 1028, 1983 WL 62351 (S.D. N.Y. 1983), motion for clarification of injunction denied,
rejecting argument that injunction was too uncertain or vague, Olay Co., Inc. v. Cococare Products, Inc.,
223 U.S.P.Q. 122, 1983 WL 44369 (S.D. N.Y. 1983); Clam Corp., Inc. v. Innovative Outdoor Solutions,
Inc., 89 U.S.P.Q.2d 1314, 2008 WL 5244845 (D. Minn. 2008) (No infringement of registered color for blue
ice fishing shelters by use of different shades of blue with other colors. Court defined the contesting blues
by their Pantone numbers.).

14 T-Mobile US, Inc. v. AIO Wireless LLC, 991 F. Supp. 2d 888, 932 (S.D. Tex. 2014) (“Aio, like T–Mobile,
brims with broad swaths of bold, bright dark reddish-purple-pink that leaves a vivid impression. The result
is to make Aio's use of broad swaths of monochromatic Pantone 676C confusingly similar to T–Mobile's
use of broad swaths of monochromatic Pantone Process Magenta.” 991 F. Supp.2d at 903.).

15 Newborn Brothers and Company, Inc., 2002 WL 1899729 (TTAB 2002) (settlement agreement not to sell
nondrip caulking guns in certain Pantone shades of yellow—specifically 77 listed shades).

16 See, e.g., Master Distributors, Inc. v. Pako Corp., 986 F.2d 219, 25 U.S.P.Q.2d 1794 (8th Cir. 1993) ("Until
secondary meaning has been established in every distinguishable shade of color … there will always be an
option available to a new market entrant." Court noted a color atlas listed 1,266 colors.).

Some judges think that because technology can produce more shades, consumers are able to distinguish
between them: "While there may be attractive arguments in favor of the color depletion theory, this Court
concludes that it is not a persuasive theory in light of available contemporary technology. There are a myriad
of colors and shades available for products today that were certainly not available in the past." DAP Products,

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Inc. v. Color Tile Mfg., Inc., 821 F. Supp. 488, 27 U.S.P.Q.2d 1365, 1369 (S.D. Ohio 1993) (preliminary
injunction granted against use of 3½-gallon red bucket containing mastic adhesive).

17 Smithsonian magazine, March 2013, citing behavioral studies done by vision specialist Israel Abramov at
CUNY's Brooklyn College (“[M]en require a slightly longer wavelength to see the same hue as women; an
object that women experience as orange will look slightly more yellowish to men, while green will look
slightly more blue-green to men.”).

18 T-Mobile US, Inc. v. AIO Wireless LLC, 991 F. Supp. 2d 888, 922 n.11 (S.D. Tex. 2014) (Quoting
treatise and issuing preliminary injunction against use of a color that was not the same identical shade
as that of plaintiff.); SafeRack, LLC v. Bullard Company, 350 F. Supp. 3d 438 (D.S.C. 2018), report and
recommendation adopted, 2019 WL 460699 (D.S.C. 2019) (Summary judgment of infringement of mark for
color orange for railings of fall prevention equipment, even though the accused orange was a different shade.
“The fact that the marks may use different shades of the color does not preclude a finding of similarity.”).

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1 McCarthy on Trademarks and Unfair Competition § 7:46 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:46. Trademark rights in design of nonspecified color

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(2)

Early decisions appeared to say that a design, even though adequately defined, could not be appropriated as a “colored” design
without defining the exact color claimed.1 However, later decisions of the Trademark Board did grant registrations to marks
consisting of things such as bands of “contrasting colors.”2

In the 1972 Data Packaging decision,3 the C.C.P.A. distinguished prior cases and held that a mark described as an annular
band on a computer tape reel of a color that contrasts with that of the reel, was sufficiently described, although not defined in
any specified color. The court inter preted cases like the Leschen Rope case,4 as not laying down any general principle that a
trademark registration could not be obtained in a nonspecified color, but rather holding that it was the breadth and indefiniteness
of the registration that rendered it too broad. Thus, the C.C.P.A. held that a registration can cover a colored element not limited
to a particular color, as long as the description of the mark is “neither indefinite nor unduly broad.” The C.C.P.A. posited the
test as one of clarity of description to the trade:

A competing manufacturer can ascertain from reading the description of the mark in [the] application exactly
what design [he] regards as his trademark and can govern its selection of its own trademark accordingly with no
fear of inadvertent infringement. Similarly, while appellant may have pre-empted a very desirable trademark, that
is often true, and there is no reason here, in contrast to the “Leschen Rope” cases, to suspect that appellant is
somehow engrossing the field of available trademarks for application to computer tape reels.5

In the CROSS pen cases, it was held that Cross had trademark rights in a colored conical top of a pen against a pen barrel of
contrasting color.6 The use of the color black, followed by use of gold and silver, was held to be a continual use of essentially the
same mark, covering the application of any color to the pen top. By use of different colors at different times, the user acquired
the right to use all of the different colors. Such a right first accrued as of the date of the first use of any of the colors to the pens.

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§ 7:46. Trademark rights in design of nonspecified color, 1 McCarthy on Trademarks...

However, sometimes a claim to contrasting colors of any hue may amount to an indefinite and potentially overreaching right
of exclusion. In denying a preliminary injunction against an alleged infringement of plaintiff's LE CLIC camera trade dress
consisting, in part, of “unusual contrasting color combinations of bold colors,” the court said:

Absent a specifically defined, color-definite, and stable visual appearance, an alleged trade dress cannot receive
protection. To hold otherwise and grant plaintiff trade dress protection for combi nations of unspecified contrasting
colors would allow the plaintiff to monopolize all combinations of contrasting colors. … [P]laintiff's alleged trade
dress consumes so much of the rainbow of available colors that trademark protection must be denied.7

Similarly, a court refused to find protectable trademark or trade dress rights in a “rainbow” concept of identifying tourist
guidebooks by color according to the language of the book. For example, the cover of plaintiff's Spanish language version had
a two-inch band in green, the English version was red, the German brown, and the Italian orange. The defendant's guidebooks
also used a color-coding system, but used different colors to indicate the language. The court found that the color-coding idea
was a mere generalized business concept that was not sufficiently concrete to constitute protectable trade dress.8

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Footnotes
1 A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166, 50 L. Ed. 710, 26 S. Ct. 425
(1906); International Braid Co. v. Thomas French & Sons, Ltd., 150 F.2d 142, 66 U.S.P.Q. 109 (C.C.P.A.
1945) (colored bands on venetian blind webs).

2 In re Dassler, 134 U.S.P.Q. 265 (T.T.A.B. 1962) (registration of lines on athletic shoes in “contrasting
colors”); In re Levi Strauss & Co., 165 U.S.P.Q. 348 (T.T.A.B. 1970); Federal Glass Co. v. Corning Glass
Works, 162 U.S.P.Q. 279 (T.T.A.B. 1969) (registration of flower design in any color).

3 In re Data Packaging Corp., 453 F.2d 1300, 172 U.S.P.Q. 396 (C.C.P.A. 1972).

4 A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166, 50 L. Ed. 710, 26 S. Ct. 425
(1906). See A. Leschen & Sons Rope Co. v. American Steel & Wire Co., 55 F.2d 455 (C.C.P.A. 1932).

5 In re Data Packaging Corp., 453 F.2d 1300, 172 U.S.P.Q. 396 (C.C.P.A. 1972). Accord: In re Eagle Fence
Rentals, Inc., 231 U.S.P.Q. 228 (T.T.A.B. 1986) (held registrable as a trademark for the service of renting
fences was a design of alternately colored strands of vertical wires in a chain link fence; the fence wire
strands were of two contrasting, but not specified, colors).

6 T & T Mfg. Co. v. A.T. Cross Co., 178 U.S.P.Q. 497 (T.T.A.B. 1973), modified, 449 F. Supp. 813, 197
U.S.P.Q. 763 (D.R.I.), aff'd, 587 F.2d 533, 201 U.S.P.Q. 561 (1st Cir. 1978), cert. denied sub nom. A.T. Cross
Co. v. Quill Co., 441 U.S. 908, 60 L. Ed. 2d 377, 99 S. Ct. 2000, 202 U.S.P.Q. 320 (1979); A.T. Cross Co. v.
TPM Distributing, Inc., 226 U.S.P.Q. 521 (D. Minn. 1985) (held that Cross has a trademark in a conical top
of a pen that is of contrasting color to the barrel; confusion survey resulting in 43% and 34% identification
of defendant's pens with Cross proved likely confusion).

7 Keystone Camera Products Corp. v. Ansco Photo-Optical Corp., 667 F. Supp. 1221, 3 U.S.P.Q.2d 1797
(N.D. Ill. 1987). Compare Canon U.S.A., Inc. v. Saber Sales Corp., 220 U.S.P.Q. 1003 (E.D.N.Y. 1983)
(preliminary injunction issued against imitation of plaintiff's cameras in various colors). See Al-Site Corp. v.
VSI International Inc., 174 F.3d 1308, 50 U.S.P.Q.2d 1161 (Fed. Cir. 1999) (No secondary meaning proven
in color coding system where plaintiff changed its color coding trade dress “from time to time.”).

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8 Casa Editrice Bonechi, S.R.L. v. Irving Weisdorf & Co., 45 U.S.P.Q.2d 1360 (S.D.N.Y. 1997). The
appearance of defendant's books in issue in the 1997 decision was a redesign of an earlier design found to be
infringing. In an earlier decision, the court found infringement when the defendant's first version of its book
design used the same color to denote each language, in addition to other similarities. Casa Editrice Bonechi
S.R.L. v. Irving Weisdorf & Co., 37 U.S.P.Q.2d 1417 (S.D.N.Y. 1995).

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§ 7:47. Color of liquid products, 1 McCarthy on Trademarks and Unfair Competition §...

1 McCarthy on Trademarks and Unfair Competition § 7:47 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:47. Color of liquid products

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(2)

Claims to trademark rights in the color of a liquid product or medicinal preparation have usually been refused. The Second
Circuit Court of Appeals found that the makers of pink-colored PEPTO-BISMOL stomach remedy had no exclusive right to
the color pink for such products.1 The district court had enjoined defendant from using the color pink for a liquid stomach
preparation. In reversing the injunction, the court of appeals stated:

[C]an the color pink be monopolized in connection with an upset stomach remedy? That a color may become
someone's exclusive property as a perpetual monopoly in connection with a specific product has been rejected
by the courts throughout the years.2

In an early COCA-COLA case, the Supreme Court stated that the color of the beverage is free for all to use, provided no
“extrinsic deceiving element” is involved on defendant's part.3

A preliminary injunction against sale of a look-alike private label version of LISTERINE mouthwash was denied, the court
opining that one part of the alleged trade dress, the amber color, was unprotectable as functional. This was said to be because
the amber color functioned to signify any unflavored, medicinal mouthwash.4

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Footnotes
1 Norwich Pharmacal Co. v. Sterling Drug, Inc., 271 F.2d 569, 123 U.S.P.Q. 372 (2d Cir. 1959), cert. denied,
362 U.S. 919, 4 L. Ed. 2d 739, 80 S. Ct. 671, 124 U.S.P.Q. 535 (1960). Compare Winthrop Chemical Co.

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v. American Pharmaceutical Co., 94 F.2d 587 (2d Cir. 1938) (use of pink as color of tube of same size and
shape as plaintiff's tube enjoined as part of plan to palm off products).

2 Norwich Pharmacal Co. v. Sterling Drug, Inc., 271 F.2d 569, 123 U.S.P.Q. 372 (2d Cir. 1959), cert. denied,
362 U.S. 919, 4 L. Ed. 2d 739, 80 S. Ct. 671, 124 U.S.P.Q. 535 (1960).

3 Coca-Cola Co. v. Koke Co. of America, 254 U.S. 143, 65 L. Ed. 189, 41 S. Ct. 113 (1920) (Holmes, J.).
See William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 68 L. Ed. 1161, 44 S. Ct. 615 (1924) (no
exclusive right in chocolate color of medicinal liquid); G. W. Cole Co. v. American Cement & Oil Co., 130
F. 703 (7th Cir. 1904) (all oil of same color).

4 Warner-Lambert Co. v. McCrory's Corp., 718 F. Supp. 389, 12 U.S.P.Q.2d 1884 (D.N.J. 1989) (“[T]he
amber color has taken on a particular significance in the mouthwash industry. An amber liquid signifies an
unflavored, medicinal mouthwash. … Thus, Warner-Lambert can have no monopoly on the use of an amber
color for unflavored mouthwash.”).

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§ 7:48. Color in combination with building designs and..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:48 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:48. Color in combination with building designs and business vehicles

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(2)

Colors can be protected as an element of a distinctive building design which serves a trademark function. For example, Eastman
Kodak Co. obtained limited protection of its yellow, black and red trade dress as against the use of these colors on a kiosk from
which Kodak film was sold.1

The color of business vehicles can also be an element of appearance which functions as a trademark.2 For example, use of
yellow for taxicabs has been protected by several courts,3 as have other color combinations for taxicabs.4 A checkered band
around the body of a taxicab was registered by the Checker Cab Co. as a trademark.5

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Footnotes
1 Eastman Kodak Co. v. Fotomat Corp., 317 F. Supp. 304, 165 U.S.P.Q. 444 (N.D. Ga. 1969), appeal
dismissed, 441 F.2d 1079 (5th Cir. 1971) (it should be noted that in this litigation, Kodak claimed the
exclusive right to use of the color yellow in connection with photographic materials and services). See
Fotomat Corp. v. Houck, 166 U.S.P.Q. 271 (Fla. Super. Ct. 1970); Eastman Kodak Co. v. Royal-Pioneer
Paper Box Mfg. Co., 197 F. Supp. 132, 130 U.S.P.Q. 466 (E.D. Pa. 1961) (protection for KODAK yellow
packages with red and black design); Esso Standard Oil Co. v. Bazerman, 99 F. Supp. 983, 90 U.S.P.Q. 52
(D.N.Y. 1951); §§ 7:100 to 7:102.

2 See § 7:102.

3 See, e.g., Yellow Cab Transit Co. v. Louisville Taxicab & Transfer Co., 147 F.2d 407, 64 U.S.P.Q. 348 (6th
Cir. 1945). For other YELLOW CAB cases, see § 7:102.

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Compare New York Good Humor, Inc. v. Standard Commercial Body Corp., 145 Misc. 752, 260 N.Y.S.
167 (1932), aff'd, 237 A.D. 859, 261 N.Y.S. 933 (1932) (no exclusive rights in color white for Good Humor
uniforms and trucks).

4 See, e.g., Luxor Cab Mfg. Corp. v. Leading Cab Co., 125 Misc. 764, 211 N.Y.S. 886 (1925), aff'd, 215 A.D.
798, 213 N.Y.S. 847 (1926); Transportation, Inc. v. Mayflower Services, Inc., 769 F.2d 952, 227 U.S.P.Q.
47 (4th Cir. 1985) (RED TOP taxi cabs' red and black color scheme was found to have acquired secondary
meaning and to be infringed by a very similar red and black taxi cab design used by a competitor).

5 Ex parte Checker Cab Mfg. Corp., 99 U.S.P.Q. 480 (Comm'r Pat. 1953).

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§ 7:49. Functional uses of colors are not protectable, 1 McCarthy on Trademarks and...

1 McCarthy on Trademarks and Unfair Competition § 7:49 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:49. Functional uses of colors are not protectable

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(2)

A color that performs some utilitarian function in connection with a product cannot be appropriated as a trademark under the
general rule that no functional feature can be a valid trademark. In the Supreme Court's 1995 Qualitex case holding that there is
no legal impediment to a single color serving as a valid trademark,1 the Court repeated its formulation of functionality from the
1982 Inwood case. That formulation said that a color is functional and unprotectable if it is either “essential” to the article or
if “affects the cost or quality of the article.”2 The Qualitex court noted in passing that the green-gold color of the dry cleaning
press pads in that case served no utilitarian function. While it was important that a pad have some color “to avoid noticeable
stains,” the plaintiff was not claiming exclusive rights in pads of any color, only in those of a green-gold color.3 However,
neither the Inwood nor the Qualitex definitions of “functionality” are the last word from the Supreme Court, which refined the
concept further in the 2001 Traffix precedent.4

In some cases, the functionality bar for colors will overlap with the generic bar.5 For example, as indicated in the first example
below, the amber color of mouthwash cannot be the exclusive property of any one seller both in the sense that the color is
“functional” in signifying an unflavored, medicinal flavor as well as being a “generic” indication of the flavor of the mouthwash.

Examples of Functional Use of Colors. The following is a list of examples of product colors held to be unprotectable because
they were held to be functional:

• Amber mouthwash: functional because amber liquid signifies an unflavored, medicinal mouthwash6

• Black bottle for soft drink: functional as keeping out light and keeping consumer from seeing contents7

• Black on treads of ladder: functional because it does not show wear and dirt8

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• Black outboard motor: functional because black has the attributes of decreasing the apparent size of the motor and ensuring
compatibility with many different boat colors9

• Blue dot on photo flashbulb: change of color indicates air seal leak10

• Blue nitrogen fertilizer: functional because users of fertilizer and the scientific community use the color blue to designate
nitrogen and hence there is a competitive need to dye nitrogen fertilizer the color blue11

• Blue endoscopic probes used for gastrointestinal conditions: plaintiff failed to prove that the color blue did not make the probe
more visible against human tissue when seen though an endoscopic camera12

• Brown colored tire repair product: functional due to a red lead component essential to the manufacturing process13

• Brownish-pink line on ophthalmic lens: functional in reducing light reflection and refraction14

• Brown chocolate ice cream and other flavor-indicating colors15

• Color coded replacement parts for automobile transmissions: functional in assisting in their installation16

• Color coding system that indicated the size of a mixing tip used in dental applications was functional because it affected the
use and quality of the product17

• Color-coding system to match colored laboratory pipettes and colored pipette tip containers to ensure use of the proper sized
tip on a pipette18

• Gold edges on a high quality cook book eliminated unsightly differences in the colors of the page ends19

• Gold and silver colored disposable plastic serving platters: functional in providing a luxurious look20

• Gray in promotional materials advertising surgical instruments: functional because “it highlights the design of the instruments
in [plaintiff's] catalogs"21

• Green farm accessories: functional because farmers like to have accessories color-coordinated with their John Deere green
tractors22

• Orange markings on medical feeding tubes for newborns were functional to indicate enteral use only to prevent misconnections
by medical personnel23

• Pink ceramic hip implants where the color was a natural byproduct of the functional chromium used in the device24

• Pink wound bandages and dressings to blend with skin tones of Caucasian or “white” people25

• Purple for sandpaper: functional in a field where color is often used to distinguish the grit size of the abrasive26

• Rainbow of colored candles arranged on a shelf27

• Red and shiny gray in a poultry feeder mechanism28

• Red filter on end of flashlight: functional in serving as a safety and warning light29

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• Reddish-orange hue of safety earplugs: functional because such a bright color aided in monitoring for employee compliance
with health and safety regulations30

• Reflective coating on the top end of a metal fence post: functional because it is the simplest and least expensive way to apply
reflective coating to a fence post31

• Various colors of medicinal capsules and tablets32

• White handle for professional cutlery: functional because it assists in determining cleanliness of the handle33

• White uniforms and trucks of GOOD HUMOR ice cream vendors: aids in visibility34

• Yellow and orange pay telephone booths: functional in increasing visibility to pedestrians and motorists35

• Yellow packaging for sucralose sweetener36

• Yellow for vapor barrier: functional for easier identification of holes and gaps37

Examples of Nonfunctional Use of Colors. To be contrasted is the following list of colors which were held to be nonfunctional:

• Blue design motif for retail newsstand: not functional38

• Brown and clear color of drug capsule39

• gold color for box and tube of NEOSPORIN antibiotic medication40

• Six primary colors on faces of RUBIK's CUBE puzzle: held not functional and protected as against imitator41

• Specific colors to denote different language versions of guidebook: held not functional and are protectable as part of trade
dress42

• Orange for railings of fall prevention equipment43

Look to Functionality of the Overall Combination. Under the general rule of trade dress, if the plaintiff defines its trade dress
as a combination of elements, the combination can be nonfunctional even though some individual elements may be functional.
Thus, the Seventh Circuit said that while the colors of individual parts of a folding table might be functional, it is error to focus
on the individual ele ments rather than the overall trade dress combination, which is protectable.44

Aesthetic Functionality. Using the theory of “aesthetic functionality,” a few courts have expanded the meaning of “functional”
to include merely ornamental features which “function” to improve the appearance of goods and help sell them,45 while the
majority of courts have defined “functionality” to cover only features that directly contribute to the utilitarian functionality
of a product.46 However, to constitute a trademark or trade dress, a color or a design involving colors must in fact serve to
identify and distinguish source and not merely or solely serve a decorative purpose. For example, while color is a prominent
feature of many advertisements and catalogs, a background use of color hardly ever serves as protectable trade dress giving
exclusive rights.47

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The Second Circuit rejected the lower court's statement that a single color of wearing apparel is inherently aesthetically
functional and can never serve a trademark role in the fashion industry.48 The court found that plaintiff Christian Louboutin's
high-fashion signature red shoe sole contrasting with the color of the shoe upper had achieved a secondary meaning but was
not infringed by defendant Yves Saint Laurent's monochrome red shoe with both upper and sole in a single red color.49 The
court affirmed the decision denying a preliminary injunction.50

Case Examples of Functionality of Colors. In a case cited by the Supreme Court, apparently with approval, the Federal Circuit
held that an all-black outboard motor was functional and not registerable because black has the special functional attributes
of decreasing the apparent size of the motor and ensuring compatibility with many different boat colors.51 The Fourth Circuit
held that the colors red and shiny gray were functional and unprotectable as trade dress as used in a poultry feeder mechanism
because evidence showed the birds were attracted to those colors.52

In the COCO-QUININE case,53 the United States Supreme Court stated that there was no exclusive right to use chocolate as
an ingredient for a quinine preparation. The chocolate served a functional purpose in this usage and anyone could duplicate its
appearance as long as adequate labeling precautions were taken to prevent confusion of source:

Chocolate is used as an ingredient not alone for the purpose of imparting a distinctive color, but for the purpose
also, of making the preparation particularly agreeable to the palate, to say nothing of its effect as a suspending
medium. While it is not a medicinal element in the preparation, it serves a substantial and desirable use, which
prevents it from being a mere matter of dress. It does not merely serve the incidental use of identifying the
respondent's preparation … , and it is doubtful whether it should be called a nonessential. The petitioner or anyone
else is at liberty, under the law, to manufacture and market an exactly similar preparation containing chocolate,
and to notify the public that it is being done.54

In an early case involving colored kitchen match heads and tips, the court noted that such a use of red and blue colors was
functional, in that a color must be used to distinguish the striking tip of the match from the head of the match.55

Color Used Solely to Indicate Aspects Such as Size, Capacity or Strength. When color is used only to indicate a characteristic
of the product, such as size, capacity or strength, it is functional.56 The Trademark Board will take the color depletion theory
in account in connection with the rule of functionality.

The following color coding systems were held to be functional and could not serve as valid trademarks and trade dress:

• The Trademark Board held that the color green for wrappers for band saw blades was unregistrable as functional because it
constituted one of a series of colors coding for types and sizes of blades.57

• The Federal Circuit held that a color coding system used to indicate the diopter strength of eyeglasses was functional and
did not serve as a trademark.58

• The Trademark Board held that the color deep purple for sandpaper was functional in a field where color is often used to
distinguish the grit size of the abrasive.59

• The Second Circuit reversed a district court bench trial decision that plaintiff had a valid trademark for a color coding system
that indicated the size of a mixing tip used in dental applications. The court held that the colors were functional because they
affected the use and quality of the product.60

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§ 7:49. Functional uses of colors are not protectable, 1 McCarthy on Trademarks and...

Color Used to Enhance Safety or Comply with Regulations. The Board held that the bright reddish-orange hue of safety
earplugs was not registerable as mark because such a color functionally aided in monitoring for employee compliance with
health and safety regulations.61 But the Ninth Circuit reversed and remanded a functionality summary dismissal of a claim
of infringement of a color mark of fluorescent green-yellow workers' protective ear plugs because the district court gave
insufficient recognition to the importance of alternative colors.62 The federal court in Los Angeles found that orange markings
on medical feeding tubes for newborns were functional to indicate enteral use only, in order to prevent mis-connections by
medical personnel.63

Color Used to Increase Visibility. The Trademark Board held unregisterable as functional both orange colored and yellow
colored pay telephone booths. Those bright colors were found to be functional because their high visibility in many different
lighting conditions makes them more clearly discernible to the driver or pedestrian.64 These kinds of utilitarian colors for phone
booths should be free for all competitors to use.

Color was found to be functional in adding visibility in the surgical context for blue endoscopic probes used for gastrointestinal
conditions. The Federal Circuit held that plaintiff failed to prove that the color blue did not make the probe more visible against
human tissue when seen though an endoscopic camera.65

Psychologically Functional Use of Color. The meaning of “functional” in the context of a color for a medicinal preparation was
considerably expanded in the PEPTO-BISMOL case when the court inferred that merely the purported soothing “psychosomatic
effect” of the color pink for a stomach upset remedy might be characterized as “functional.”66 However, a caveat is in order
against judges and lawyers making such a psychological conclusion without objective evidence. How does anyone know
exactly what reaction the color pink produces in people with upset stomachs? It may make them feel worse, depending upon
their subjective reactions to various colors—which vary widely among different people. A similar assessment of functional
psychological reaction to color was made by a court that inferred that pastel shades in facial tissues create a mental impression
of “softness” and denied any trademark rights in such shades.67

Traditional Functional Use of Color. Some colors may be functional in that they are traditional when they appear in a given
context, such as red and green used for ribbons and bows on Christmas presents.68 Another example would be the use of red for
heart designs used in connection with Valentine's Day greeting cards and gifts, such as a red for a heart-shaped box of chocolates.

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 See § 7:44.

2 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 166, 115 S. Ct. 1300, 131 L. Ed. 2d 248, 34
U.S.P.Q.2d 1161 (1995).

3 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 166, 115 S. Ct. 1300, 131 L. Ed. 2d 248, 34
U.S.P.Q.2d 1161 (1995) (The Court noted with approval that the trial court found “no competitive need in
the press pad industry for the green-gold color, since other colors are equally useable.”).

4 See discussion of the various ways the Supreme Court has defined “functionality” at § 7:69 and discussion
of the Traffix decision at § 7:89.

5 See discussion of generic and descriptive colors at § 7:52.

6 Warner Lambert Co. v. McCrory's Corp., 718 F. Supp. 389, 12 U.S.P.Q.2d 1884 (D.N.J. 1989) (Amber color
of LISTERINE was functional: “[T]he amber color has taken on a particular significance in the mouthwash

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§ 7:49. Functional uses of colors are not protectable, 1 McCarthy on Trademarks and...

industry. An amber liquid signifies an unflavored, medicinal mouthwash. … Thus, Warner-Lambert can
have no monopoly on the use of an amber color for unflavored mouthwash.”).

7 California Crushed Fruit Corp. v. Taylor Beverage & Candy Co., 38 F.2d 885 (W.D. Wis. 1930).

8 Black & Decker Mfg. Co. v. Ever-Ready Appliance Mfg. Co., 518 F. Supp. 607, 213 U.S.P.Q. 842 (E.D.
Mo. 1981), aff'd, 684 F.2d 546, 215 U.S.P.Q. 97 (8th Cir. 1982).

9 Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532, 32 U.S.P.Q.2d 1120 (Fed. Cir. 1994). Compare
L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 52 U.S.P.Q.2d 1307 (Fed. Cir. 1999) (Court held that the
color compatibility of a brick finish on the plate of an interior lighting fixture with the color and decor of
the furnishings does not alone make the design functional. “Mere taste or preference cannot render a color
—unless it is ‘the best or at least one, of a few superior designs’—de jure functional.”). See M-5 Steel Mfg.,
Inc. v. O'Hagin's Inc., 61 U.S.P.Q.2d 1086, 2001 WL 1167788 (T.T.A.B. 2001) (Following Brunswick case:
shape of roof vent is functional because the vents “blend in or match the roof tiles with which they are used
better than alternative products.”).

10 Sylvania Elec. Products, Inc. v. Dura Elec. Lamp Co., 247 F.2d 730, 114 U.S.P.Q. 434 (3d Cir. 1957).

11 Nor-Am Chemical Co. v. O. M. Scott & Sons Co., 4 U.S.P.Q.2d 1316, 1987 WL 13742 (E.D. Pa. 1987).

12 ERBE Elektromedizin GmbH v. Canady Technology LLC, 629 F.3d 1278, 1289, 97 U.S.P.Q.2d 1048 (Fed.
Cir. 2010).

13 North Shore Laboratories Corp. v. Cohen, 721 F.2d 514, 221 U.S.P.Q. 17 (5th Cir. 1983). See Pebble Beach
Co. v. Tour 18 I Ltd., 155 F.3d 526, 549, n.17, 48 U.S.P.Q.2d 1065 (5th Cir. 1998) (Noting that while that
part of the North Shore reasoning concerning the Sears-Compco rule was no longer the law, the ruling in
North Shore that the color of the tire repair product was both functional and lacked a secondary meaning
remained good law. “Each of these findings would independently bar Lanham Act protection to the color
of the tire-patch product.”).

14 Bausch & Lomb Incorporated v. Univis, Inc., 132 U.S.P.Q. 213, 1961 WL 7881 (T.T.A.B. 1961).

15 Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197, 1204, 70 U.S.P.Q.2d 1707, 64 Fed. R.
Evid. Serv. 617 (11th Cir. 2004) (Colors indicated flavor, such as pink signifying strawberry, white for vanilla
and brown for chocolate. The District Court properly took judicial notice of the fact that color indicates
flavor of ice cream.). See Vital Pharmaceuticals, Inc. v. Monster Energy Company, 2019 WL 5212859,
*6 (S.D. Fla. 2019) (Colors in trade dress were functional because they indicated the flavor of the energy
drink. “Because the overall impression of [plaintiff's] trade dress conveys the flavor of the drink,” it was
probably functional. Preliminary injunction denied.), later proceedings, 2021 WL 3371942, *15 (S.D. Fla.
2021) (Judgment for defendant of no infringement. “[U]using colors to distinguish between different flavors
serves a useful, non-arbitrary purpose.”).

16 Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 225 U.S.P.Q. 458, 227 U.S.P.Q. 598, 82
A.L.R. Fed. 97 (9th Cir. 1985) (the court upheld a jury verdict which expressly found that Transgo's color-
coded springs served primarily to help rebuilders install Transgo's auto transmission kits rather than to
designate Transgo as the kits' manufacturer). See Kasco Corp. v. Southern Saw Service Inc., 27 U.S.P.Q.2d
1501, 1993 WL 306149 (Trademark Trial & App. Bd. 1993) (Applicant's various color coded wrappers,
including the green wrapper at issue “serve to enable purchasers and users of the blades to quickly identify
and distinguish one blade type from another. Thus, the various colored wrappers have a functional or
utilitarian purpose.”).

17 Sulzer Mixpac AG v. A&N Trading Company, 988 F.3d 174, 183 (2d Cir. 2021) (“The evidence … firmly
establishes that the colors signify diameter, which in turn assists users with selecting the proper cartridge for

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§ 7:49. Functional uses of colors are not protectable, 1 McCarthy on Trademarks and...

their needs…. [T]he colors enable users to quickly match the proper mixing tip with the proper cartridge,
and thereby improve the operation of the goods.”).

18 In re Integra Biosciences Corp., 2022 WL 225424, *18–19 (T.T.A.B. 2022) (“[T]he [five colors of] Pastel
Tints ensure that customers use the proper pipette tips on the respective pipettes and that the proper pipette
tips are ordered when new ones are needed and, thus, are essential to the use of the pipette tips.”).

19 Publications Intern., Ltd. v. Landoll, Inc., 164 F.3d 337, 49 U.S.P.Q.2d 1139 (7th Cir. 1998), cert. denied,
526 U.S. 1088, 119 S. Ct. 1498, 143 L. Ed. 2d 652 (1999) (Gold edges on a high quality cook book were
said to be “aesthetically functional.” However, in the author's opinion they could as well have been dubbed
utilitarian in that gilding the pages eliminated unsightly differences in the colors of the page ends.).

20 Sabert Corp. v. Ullman Co., Inc., 53 U.S.P.Q.2d 1597, 1999 WL 1115048 (S.D. N.Y. 1999), aff'd without
pub. op. 216 F.3d 1073 (2d Cir. 2000) (“If this court were to uphold plaintiff's trade dress, it could potentially
result in a permanent monopoly for plaintiff in the specialized market for disposable platters designed to
imitate the look of real silver and gold.”).

21 Specialty Surgical Instrumentation, Inc. v. Phillips, 844 F. Supp. 1211, 30 U.S.P.Q.2d 1309 (M.D. Tenn.
1994).

22 Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 217 U.S.P.Q. 252 (S.D. Iowa 1982), aff'd, 721 F.2d 253
(8th Cir. 1983). But see Deere & Company v. FIMCO Inc., 239 F. Supp. 3d 964, 999-1003, 97 Fed. R. Serv.
3d 53 (W.D. Ky. 2017) (The 1982 Deere case is no longer valid because it was decided before the Supreme
Court decisions in Qualitex and Traffix. Since the 1982 Deere case, courts “have rejected the argument that
a mere desire to match, alone, is sufficient for a finding of aesthetic functionality.” Summary judgement
granted that Deere's green and yellow color combination for agricultural equipment was not functional and
not disabled from trademark protection.), after trial Deere & Company v. FIMCO Inc., 302 F. Supp. 3d 837
(W.D. Ky. 2017), injunction modified, 301 F. Supp. 3d 704 (W.D. Ky. 2018) (Court found both infringement
and dilution of Deere's green and yellow color combination.).

23 Acacia, Inc. v. NeoMed, Inc., 103 U.S.P.Q.2d 1898, 2012 WL 3019948 (C.D. Cal. 2012).

24 Coorstek Bioceramics LLC v. Ceramtec GMBH, 2022 WL 17547263 (T.T.A.B. 2022) (non-precedential. A
Supplemental registration for the color was cancelled. The color pink as applied to the chemical composition
of ceramic hip implant components was functional because when chromium oxide is added, it naturally
appears in that color. Chromium oxide contributed to the hardness of the material. The registrant’s utility
patents and advertising claims were the primarily source of evidence. Note: A District court also found the
color to be functional, but was reversed on appeal as not having personal jurisdiction over defendant. C5
Medical Werks, LLC v. CeramTec GmbH, 249 F. Supp. 3d 1210, 1215 (D. Colo. 2017), rev'd and remanded,
937 F.3d 1319 (10th Cir. 2019)).

25 In re Ferris Corp., 59 U.S.P.Q.2d 1587, 2000 WL 33417507 (T.T.A.B. 2000) (“[T]he applied-for color ‘pink’
is one of the best or at least one of the few superior ‘flesh colors’ available for wound dressings.”).

26 Saint-Gobain Corp v. 3M Co, 90 U.S.P.Q.2d 1425, 1447, 2007 WL 2509515 (T.T.A.B. 2007) (“In the field
of coated abrasives, color serves a myriad of functions, including color coding, and the need to color code
lends support for the basic finding that color, including purple, is functional in the field of coated abrasives
having paper or cloth backing.”).

27 Yankee Candle Co., Inc. v. Bridgewater Candle Co., Inc., 99 F. Supp. 2d 140, 55 U.S.P.Q.2d 1393 (D. Mass.
2000), aff'd on other grounds, 259 F.3d 25, 59 U.S.P.Q.2d 1720 (1st Cir. 2001) (“The visual arrangement of
candles, on shelves, by color, is manifestly functional and therefore not protectable under the Lanham Act.”).

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28 CTB, Inc. v. Hog Slat, Inc., 954 F.3d 647, 669, (4th Cir. 2020) (Evidence showed the birds were attracted to
those colors. The combination was nothing “more than the amalgamation of two wholly functional colored
design elements.” Summary dismissal of the trade dress claim was affirmed.).

29 U.S. Elec. Mfg. Corp. v. Bright Star Battery Co., 6 N.Y.S.2d 690 (Sup 1938).

30 In re Howard S. Leight and Associates Inc., 39 U.S.P.Q.2d 1058, 1996 WL 352967 (Trademark Trial &
App. Bd. 1996). But compare Moldex-Metric, Inc. v. McKeon Products, Inc., 891 F.3d 878 (9th Cir. 2018)
(Reversing and remanding a functionality summary dismissal of a claim of infringement of a color mark of
fluorescent green-yellow workers' protective ear plugs because the district court gave insufficient recognition
to the importance of alternative colors.).

31 Application of Pollak Steel Co., 50 C.C.P.A. 1045, 314 F.2d 566, 570, 136 U.S.P.Q. 651 (1963) (Not
registerable on the Supplemental Register. “To permit appellant to assert trademark rights in its alleged mark
would clearly have the effect of unjustifiably giving appellant a perpetual monopoly on the simplest and
cheapest use of a simple process of applying a functional reflective coating to a functionally designed metal
fence post.”).

32 See drug color cases cited at § 7:50. See, e.g., Upjohn Co. v. Schwartz, 246 F.2d 254, 114 U.S.P.Q. 53 (2d
Cir. 1957) (size, shape and color of medicinal capsules or tablets held functional and incapable of acquiring
secondary meaning).

33 Russell Harrington Cutlery, Inc. v. Zivi Hercules, Inc., 25 U.S.P.Q.2d 1965, 1992 WL 470477 (D. Mass.
1992) (white colored handle for professional cutlery held functional because it assists in the essential
determination as to whether a knife handle is clean, plaintiff's advertising touting the sanitary qualities of
its knives, claiming that they are “easy to keep clean”).

34 New York Good Humor v. Standard Commercial Body Corp., 145 Misc. 752, 260 N.Y.S. 167, 168-69 (Sup
1932), aff'd, 237 A.D. 859, 261 N.Y.S. 933 (2d Dep't 1932) (“Plaintiff can claim no monopoly in painting
trucks white, and lettering them in black … . [T]he truck is white with black lettering, for the reason that
it will be more conspicuous at night, during which time Nadel sells his product, from vantage points on
the highways.”).

35 In re Orange Communications Inc., 41 U.S.P.Q.2d 1036, 1996 WL 754044 (Trademark Trial & App. Bd.
1996) (“[H]ere the colors orange and yellow are performing a desirable function and competitors should
be free to use them. Registration to applicant would affect the ability of competitors to compete because
they would have to devise other means of making pay telephones and telephone booths more noticeable
to the public.”).

36 McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350, 85 U.S.P.Q.2d 1545 (3d Cir. 2007),
on remand, 566 F. Supp. 2d 378, 88 U.S.P.Q.2d 1594 (E.D. Pa. 2008) (The court implied, but did not hold,
that the color yellow was a functional or generic indicator of sucralose sweetener and was not a trademark
of the market leader SPLENDA.). See discussion of this case at § 7:52.

37 Poly-America, L.P. v. Stego Industries, LLC, 482 Fed. Appx. 958, 104 U.S.P.Q.2d 1639 (5th Cir. 2012)
(nonprecedential).

38 In re Hudson News Co., 39 U.S.P.Q.2d 1915, 1996 WL 528561 (Trademark Trial & App. Bd. 1996) (blue
design motif for retail newsstand services was held not functional, but was not registrable because not proven
to have been used as a service mark).

39 Marion Laboratories, Inc. v. Michigan Pharmacal Corp., 338 F. Supp. 762, 173 U.S.P.Q. 410 (E.D. Mich.
1972), aff'd, 473 F.2d 910 (6th Cir. 1973) (brown and clear color of drug capsule held nonfunctional but
no relief on the facts).

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§ 7:49. Functional uses of colors are not protectable, 1 McCarthy on Trademarks and...

40 Johnson & Johnson v. Actavis Group hf, 87 U.S.P.Q.2d 1125, 2008 WL 228061 (S.D. N.Y. 2008), as
corrected, (Feb. 21, 2008) (rejecting argument that gold was functional as indicating an antibiotic ingredient).

41 Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 216 U.S.P.Q. 102 (3d Cir. 1982); In re Certain
Cube Puzzles, 219 U.S.P.Q. 322, 1982 WL 54200 (Int'l Trade Comm'n 1982) (the color pattern on a “Rubik's
Cube” puzzle toy is a protectable trademark use of color and is not functional; secondary meaning was found
through survey evidence); CBS, Inc. v. Logical Games, 719 F.2d 1237, 5 Int'l Trade Re. 1467, 221 U.S.P.Q.
498 (4th Cir. 1983) (CBS/Ideal Toy has secondary meaning in U.S. in the “Rubik's Cube”).

42 Casa Editrice Bonechi, S.R.L. v. Irving Weisdorf & Co., Ltd., 37 U.S.P.Q.2d 1417, 1995 WL 528001 (S.D.
N.Y. 1995) (no protectable rights in the mere concept of color-coding different language versions where
defendant changed to a different color for each language).

43 SafeRack, LLC v. Bullard Company, 350 F. Supp. 3d 438 (D.S.C. 2018), report and recommendation
adopted, 2019 WL 460699 (D.S.C. 2019) (Summary judgment of infringement of mark for color orange for
railings of fall prevention equipment. Competitors used other colors such as metallic gray or yellow.).

44 Vaughan Mfg. Co. v. Brikam Intern., Inc., 814 F.2d 346, 1 U.S.P.Q.2d 2067 (7th Cir. 1987) (“It strains the
imagination to assert that someone designing such a table from scratch would ineluctably choose a yellow
border, a masonite top of Vaughan's color, a black frame, and various brass pieces in the shapes that Vaughan
uses, or that one seeking to buy a folding picnic table would necessarily prefer such a table over all others.”).
See § 7:76.

45 Ventura Travelware, Inc. v. Baltimore Luggage Co., 66 Misc. 2d 646, 322 N.Y.S.2d 93 (1971), aff'd, 38
A.D.2d 794, 328 N.Y.S.2d 811 (1st Dep't 1972) (colored stripe design on luggage held merely ornamental,
and therefore “functional”). See §§ 7:79 to 7:80.

46 In re Data Packaging Corp., 453 F.2d 1300, 172 U.S.P.Q. 396 (C.C.P.A. 1972) (colored band on computer
tape reel held nonfunctional); In re Hudson News, 39 U.S.P.Q.2d 1915 (T.T.A.B. 1996), aff'd without pub.
opinion (Fed. Cir. 1997) (blue design motif for retail newsstand services was held not functional, but was
not registerable because not proven to have been used as a service mark); Board of Supervisors of LA State
University v. Smack Apparel Co., 438 F. Supp. 2d 653, 211 Ed. Law Rep. 809, 82 U.S.P.Q.2d 1122 (E.D.
La. 2006), aff'd, 550 F.3d 465, 89 U.S.P.Q. 2d 1338 (5th Cir. 2008) (Summary judgment of infringement
by selling without a license items of wearing apparel bearing the distinctive two color designs and logos of
various universities. The color designs were not “functional.”).

47 See, e.g., Ellison Educ. Equip. v. Tekservices, Inc., 903 F. Supp. 1350, 37 U.S.P.Q.2d 1563, 1569 (D. Neb.
1995) (Plaintiff's use of purple, green, blue and red silhouettes to display its wares in a catalog does not
give trade dress rights of exclusion because “they do not act as symbols for [plaintiff]. Instead, the colors
serve the function of displaying the cut out shapes of the plaintiff's dies in its catalog.”). See discussion of
trademark use at § 3:3.

48 Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 103 U.S.P.Q.2d 1937
(2d Cir. 2012). See § 7:80.

49 Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 228, 103 U.S.P.Q.2d
1937 (2d Cir. 2012) (While plaintiff's registration was not limited to a contrasting red sole of footwear, the
court exercised its power under Lanham Act § 37, 15 U.S.C.A. § 1119 to rectify the register by limiting the
mark and its registration to a red sole that contrasted with the color of the shoe upper. The court said it would
not address whether the contrasting red sole mark was aesthetically functional.). See § 30:109.

50 Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 228, 103 U.S.P.Q.2d
1937 (2d Cir. 2012) (While the court said that it did not “address” the issue of “likelihood of consumer
confusion,” at the same time it held that the accused monochrome shoe was “neither a use of, nor confusingly
similar to, the Red Sole mark.”).

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§ 7:49. Functional uses of colors are not protectable, 1 McCarthy on Trademarks and...

51 Brunswick Corp. v. British Seagull, 35 F.3d 1527, 1532, 32 U.S.P.Q.2d 1120 (Fed. Cir. 1994), cert. denied,
514 U.S. 1050,131 L. Ed. 2d 309, 115 S. Ct. 1426 (1995). Cited as an example of a functional use of color in
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 131 L. Ed. 2d 248, 115 S. Ct. 1300, 34 U.S.P.Q.2d 1161
(1995). See L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 52 U.S.P.Q.2d 1307 (Fed. Cir. 1999) (Court
held that the color compatibility of a brick finish on the plate of an interior lighting fixture with the color and
decor of the furnishings does not alone make the design functional. “Mere taste or preference cannot render
a color—unless it is ‘the best or at least one, of a few superior designs’—de jure functional.”). See § 7:44.

52 CTB, Inc. v. Hog Slat, Inc., 954 F.3d 647, 669 (4th Cir. 2020) (Each color red and shiny gray was functional
as was the combination of the colors. The combination was nothing “more than the amalgamation of two
wholly functional colored design elements.” Summary dismissal of the trade dress claim was affirmed.).

53 William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 68 L. Ed. 1161, 44 S. Ct. 615 (1924). Distinguished
in Ives Laboratories, Inc. v. Darby Drug Co., 638 F.2d 538, 209 U.S.P.Q. 449 (2d Cir. 1981), rev'd on other
grounds, remanded, 456 U.S. 844, 72 L. Ed. 2d 606, 102 S. Ct. 2182, 214 U.S.P.Q. 1 (1982).

54 William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 68 L. Ed. 1161, 44 S. Ct. 615 (1924). See James
Heddon's Sons v. Millsite Steel & Wire Works, Inc., 128 F.2d 6, 50 U.S.P.Q. 465, 53 U.S.P.Q. 579 (6th Cir.
1942), cert. denied, 317 U.S. 674, 87 L. Ed. 541, 63 S. Ct. 79, 55 U.S.P.Q. 493 (1942) (color on artificial
fish lures may be functional).

55 Diamond Match Co. v. Saginaw Match Co., 142 F. 727, 729 (C.C.A. 6th Cir. 1906) (“The two colors,
therefore, serve not only a useful purpose but an essential function, for the very essence of the tipped match
is the tip itself, which must be marked out by a color of its own. The head and tip thus distinguished, each
by its own color, is therefore a common characteristic of all tipped matches ….”).

56 Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 227 U.S.P.Q. 598 (9th Cir. 1985), cert. denied,
474 U.S. 1059, 88 L. Ed. 2d 778, 106 S. Ct. 802 (1986) (color coded replacement parts for automobile
transmissions were held functional in assisting in their installation); Spraying Systems Co. v. Delavan, Inc.,
762 F. Supp. 772, 19 U.S.P.Q.2d 1121, 1128 (N.D. Ill. 1991), aff'd, 975 F.2d 387, 24 U.S.P.Q.2d 1181 (7th
Cir. 1992) (color coding system used to designate the capacities of spray nozzles is a functional use of color
and cannot be protected); Kasco Corp. v. Southern Saw Serv., Inc., 27 U.S.P.Q.2d 1501 (T.T.A.B. 1993)
(color coded wrappers are functional because they enable purchasers and users of saw blades to quickly
identify and distinguish one blade type from another). See Fabrication Enters. v. Hygenic Corp., 64 F.3d
53, 35 U.S.P.Q.2d 1753 (2d Cir. 1995) (plaintiff claimed trade dress in different colored exercise bands, the
color indicating the degree of resistance; while defendant claimed the colors were functional as an industry
standard, contrary evidence required a trial and a reversal of the dismissal on summary judgment).

See §§ 7:52; 11:41.

57 Kasco Corp. v. Southern Saw Serv., Inc., 27 U.S.P.Q.2d 1501 (T.T.A.B. 1993) (Applicant's various color
coded wrappers, including the green wrapper at issue “serve to enable purchasers and users of the blades
to quickly identify and distinguish one blade type from another. Thus, the various colored wrappers have
a functional or utilitarian purpose.”).

58 Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 50 U.S.P.Q.2d 1161 (Fed. Cir. 1999) (“To give one competitor
an exclusive right to practice color coding would give it a significant advantage over other companies.”).

59 Saint-Gobain Corp v. 3M Co, 90 U.S.P.Q.2d 1425, 1447, 2007 WL 2509515 (T.T.A.B. 2007) (“[C]olor
serves a myriad of functions, including color coding, and the need to color code lends support for the basic
finding that color, including purple, is functional in the field of coated abrasives ….”).

60 Sulzer Mixpac AG v. A&N Trading Company, 988 F.3d 174, 183 (2d Cir. 2021) (“The evidence … firmly
establishes that the colors signify diameter, which in turn assists users with selecting the proper cartridge for

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§ 7:49. Functional uses of colors are not protectable, 1 McCarthy on Trademarks and...

their needs…. [T]he colors enable users to quickly match the proper mixing tip with the proper cartridge,
and thereby improve the operation of the goods.”).

61 In re Howard S. Leight & Assocs., 39 U.S.P.Q.2d 1058 (T.T.A.B. 1996). Compare: SafeRack, LLC v. Bullard
Company, 350 F. Supp. 3d 438 (D.S.C. 2018), report and recommendation adopted, 2019 WL 460699
(D.S.C. 2019) (Summary judgment of infringement of mark for color orange for railings of fall prevention
equipment. The color was held not functional and not mandated for safety reasons. Competitors used other
colors such as metallic gray or yellow.).

62 Moldex-Metric, Inc. v. McKeon Products, Inc., 891 F.3d 878, 886 (9th Cir. 2018) (“Our case law shows
that we continue to consider the existence or nonexistence of alternative designs as probative evidence of
functionality or nonfunctionally.”).

63 Acacia, Inc. v. NeoMed, Inc., 103 U.S.P.Q.2d 1898, 2012 WL 3019948 (C.D. Cal. 2012).

64 In re Orange Communications, Inc., 41 U.S.P.Q.2d 1036 (T.T.A.B. 1996) (“[H]ere the colors orange and
yellow are performing a desirable function and competitors should be free to use them. Registration to
applicant would affect the ability of competitors to compete because they would have to devise other means
of making pay telephones and telephone booths more noticeable to the public.”).

65 ERBE Elektromedizin GmbH v. Canady Technology LLC, 629 F.3d 1278, 1289, 97 U.S.P.Q.2d 1048 (Fed.
Cir. 2010) (“ERBE fails to present a genuine issue of material fact that the color blue does not make the probe
more visible through an endoscopic camera or that such a color mark would not lead to anti-competitive
effects.” ERBE had a Supplemental Registration.).

66 Norwich Pharmacal Co. v. Sterling Drug, Inc., 271 F.2d 569, 123 U.S.P.Q. 372 (2d Cir. 1959), cert. denied,
362 U.S. 919, 4 L. Ed. 2d 739, 80 S. Ct. 671, 124 U.S.P.Q. 535 (1960).

67 Doeskin Products, Inc. v. Levinson, 132 F. Supp. 180, 105 U.S.P.Q. 329 (D.N.Y. 1955). Compare In re
Hudson News, 39 U.S.P.Q.2d 1915 (T.T.A.B. 1996) (blue design motif for retail newsstand services was
held not functional because even if blue is psychologically soothing color, that “does not necessarily mean
that these people, as customers in applicant's newsstand, will buy more products”).

68 Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 31 U.S.P.Q.2d 1481 (8th Cir. 1994) (red and green cords used
to tie the ends of a pillow-shaped bag of potpourri is not protectable “because such colors are traditionally
used for products relating to Christmas and are therefore neither distinctive nor nonfunctional”). See In re
J. Kinderman & Sons Inc., 46 U.S.P.Q.2d 1253 (T.T.A.B. 1998) (Red, green, and gold container that looks
like a wrapped Christmas gift is not a registerable mark for Christmas tree lights because it is a common
design and used only as ornamentation. “It is common knowledge that stars and the colors red, green and
gold are associated with the Christmas holiday.”).

End of Document © 2024 Thomson Reuters. No claim to original U.S. Government

Works.

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§ 7:50. Drug capsule colors, 1 McCarthy on Trademarks and Unfair Competition §...

1 McCarthy on Trademarks and Unfair Competition § 7:50 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:50. Drug capsule colors

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(2)

In the drug color cases, pharmaceutical drug firms have asserted trademark rights in the color or colors of drug capsules.1
Imitators have defended by arguing that imitation is legal because the colors are “functional.” The drug color “functionality”
argument is based on the fact that in many states, a prescribing physician is permitted the choice of either prescribing only by
brand name (“dispense as written”) or by permitting the pharmacist to substitute a less expensive “generic” drug which may be
bioequivalent (“substitution permissible”).2 Thus, if a physician prescribes as “substitution permissible,” and if the pharmacist
initially fills the order with the brand name drug (in, for example, maroon and white capsules), and if on a refill the pharmacist
legally substitutes a “generic drug” (in, for example, red and orange capsules), the argument is that patient confusion, resistance
and anxiety will result.

A companion argument is that color facilitates identification of type of medicine by patients and by others in emergency
situations such as an overdose. On this basis, the imitator drug firms argue that they must be allowed to copy the “functional”
drug capsule colors of their competitors. To date, this “functionality” argument has generally been rejected on the ground that
color has nothing to do with the utilitarian performance of the drug.3

However, in a 2003 decision, the Third Circuit distin-guished precedent and affirmed the denial of a preliminary injunction
against the imitative coloring of a generic drug. The court found that the plaintiff failed to carry its burden of proving
nonfunctionality. The evidence indicated that the drug colors were functional in identifying correct dosage and promoting patient
acceptance of a generic substitution.4

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes

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§ 7:50. Drug capsule colors, 1 McCarthy on Trademarks and Unfair Competition §...

1 Drug capsule colors are also capable of federal registration as a trademark. In re Star Pharmaceuticals, Inc.,
225 U.S.P.Q. 209 (T.T.A.B. 1985) (while a multicolored drug capsule can serve as a registrable trademark,
applicant failed to prove acquisition of secondary meaning in this particular color combination, noting the
absence of “look for” promotion); In re American Home Products Corp., 226 U.S.P.Q. 327 (T.T.A.B. 1985)
(medicinal tablet with three colored layers held not inherently distinctive, but sufficient secondary meaning
was shown for registration by advertising and promotion of the color combination); Astrazeneca AB v.
Dr. Reddy's Laboratories, Inc., 145 F. Supp. 3d 311, 117 U.S.P.Q.2d 1182 (D. Del. 2015) (Granting TRO
against use of purple capsules for heartburn medication as infringement of plaintiff's purple color used on its
PRILOSEC and NEXIUM medications. Astrazeneca owned a registration for the color purple for capsules
as well as for the word mark THE PURPLE PILL.).

2 See discussion in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, n.4, 72 L. Ed. 2d 606,
102 S. Ct. 2182, 214 U.S.P.Q. 1 (1982).

3 See, e.g., SK&F, Co. v. Premo Pharmaceutical Laboratories, Inc., 625 F.2d 1055, 206 U.S.P.Q. 964 (3d Cir.
1980); A. H. Robins Co. v. Medicine Chest Corp., 206 U.S.P.Q. 1015 (E.D. Mo. 1980); Hoffmann La Roche,
Inc. v. Premo Pharmaceutical Laboratories, Inc., 210 U.S.P.Q. 374 (D.N.J. 1980); Boehringer Ingelheim
G.m.b.H. v. Pharmadyne Laboratories, 532 F. Supp. 1040, 211 U.S.P.Q. 1163 (D.N.J. 1980); Ciba-Geigy
Corp. v. Bolar Pharmaceutical Co., 547 F. Supp. 1095, 215 U.S.P.Q. 769 (D.N.J. 1982), aff'd, 719 F.2d 56
(3d Cir. 1983), cert. denied, 465 U.S. 1080, 79 L. Ed. 2d 763, 104 S. Ct. 1444 (1984) (preliminary injunction
affirmed), appeal after remand, 747 F.2d 844, 224 U.S.P.Q. 349 (3d Cir. 1984), cert. denied, 471 U.S. 1137,
86 L. Ed. 2d 696, 105 S. Ct. 2678 (1985) (permanent injunction against copying in look-alike drug case was
affirmed, finding drug capsule colors nonfunctional and with secondary meaning); American Home Products
Corp. v. Chelsea Laboratories, Inc., 572 F. Supp. 278, 219 U.S.P.Q. 1192 (D.N.J. 1982), aff'd without op.,
722 F.2d 730, 731, 736 (3d Cir. 1983) (functionality defense rejected and preliminary injunction issued
against imitation of oval shaped estrogen tablets of different colors for different dosages; court emphasized
that the imitator's drugs were not matched in content and quality control and the F.D.A. does not permit
substitution for this drug); Par Pharmaceutical, Inc. v. Searle Pharmaceuticals, Inc., 227 U.S.P.Q. 1024 (N.D.
Ill. 1985) (blue tablets held not functional and had acquired secondary meaning; preliminary injunction
against copier); McNeil-PPC v. Granutec, Inc., 919 F. Supp. 198, 37 U.S.P.Q.2d 1713 (E.D.N.C. 1995) (red
and yellow colors of TYLENOL gelcaps is not functional; look-alike gelatin capsules were preliminarily
enjoined); Johnson & Johnson v. Actavis Group hf, 87 U.S.P.Q.2d 1125, 2008 WL 228061 (S.D. N.Y. 2008),
as corrected, (Feb. 21, 2008) (gold color for box and tube of plaintiff's NEOSPORIN antibiotic medication
held not functional as indicating an antibiotic ingredient.).

See also Ives Laboratories, Inc. v. Darby Drug Co., 638 F.2d 538, 209 U.S.P.Q. 449 (2d Cir. 1981), rev'd,
remanded, 456 U.S. 844, 72 L. Ed. 2d 606, 102 S. Ct. 2182, 214 U.S.P.Q. 1 (1982) (court of appeals
improperly reversed district court's findings regarding contributory infringement); Cooper, “Trademark
Aspects of Pharmaceutical Product Design,” 70 Trademark Rep. 1 (1980); Comment, “The Problem of
Functional Features: Trade Dress Infringement under § 43(a) of the Lanham Act,” 82 Colum L. Rev. 77
(1982); Palladino, “Trademarks and Competition: The Ives Case,” 15 J. Marshall L. Rev. 319 (1982);
“Symposium on the Ives Case,” 72 Trademark Rep. 118 (1982); Weinberg, “Drug Color Copying in the
Wake of Ives: A Comment on Two Decisions,” 72 Trademark Rep. 285 (1982); Germain, “The Supreme
Court's Opinion in the Inwood Case: Declination of Duty,” 70 Ky. L.J. 731 (1982).

4 Shire US Inc. v. Barr Laboratories, Inc., 329 F.3d 348, 66 U.S.P.Q.2d 1837 (3d Cir. 2003) (The court
distinguished its prior contrary precedent on the grounds that since the 1980 SK&F v. Premo decision these
events changed the scene: (1) FDA amendments promote marketing of generic equivalents; (2) the 1999
Lanham Act amendment placing the burden of proving nonfunctionality of unregistered trade dress on the
plaintiff; and (3) the Supreme Court decisions in Wal-Mart and TrafFix, which "caution against the over-
extension of trade dress protection.").

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1 McCarthy on Trademarks and Unfair Competition § 7:51 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:51. Author's comment on drug capsule colors

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1057(2)

In the opinion of the author, the issue in the drug color cases is not whether drug color is “functional” in the utilitarian sense,
but rather whether color has become the generic indication of a type of drug regardless of source.1 As the U.S. Supreme Court
speculated: “[T]his Court has written that competitors might be free to copy the color of a medical pill where that color serves
to identify the kind of medication (e.g., a type of blood medicine) in addition to its source.”2

That is, legal substitution upon refill arguably causes patient anxiety only if color indicates the type of drug. The patient would
be “anxious” because he or she thinks that the prescription has been refilled with a different drug, not a different brand of the
same drug.3 The issue is whether, assuming such anxiety, patient concern can be dispelled by the physician's or pharmacist's
explanation to the patient that a substitute, albeit different in color from the brand name drug, is in fact equivalent in efficacy.4
If a generic drug is in fact not equivalent in efficacy or safety to the copied drug, then the copier's claim to a competitive need
for the color collapses.5

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 See §§ 7:52, 12:1 to 12:3.

2 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 169, 115 S. Ct. 1300, 131 L. Ed. 2d 248, 34
U.S.P.Q.2d 1161 (1995). The Court is paraphrasing part of its decision in Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U.S. 844, 853, 858 n.20, 102 S. Ct. 2182, 2188, 2190 n.20, 72 L. Ed. 2d 606, 214
U.S.P.Q. 1, 34 Fed. R. Serv. 2d 1101 (1982). The Court in Qualitex added, “The upshot is that, where a
color serves a significant nontrademark function—[for example] to distinguish a heart pill from a digestive
medicine … courts will examine whether its use as a mark would permit one competitor (or a group) to
interfere with legitimate (nontrademark-related) competition through actual or potential exclusive use of an

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important product ingredient.” Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 170, 115 S. Ct.
1300, 1306, 131 L. Ed. 2d 248, 34 U.S.P.Q.2d 1161 (1995).

3 See “Panel Discussion on the Ives Case,” 72 Trademark Rep. 118, 125 (1982).

4 See discussion in Ciba-Geigy Corp. v. Bolar Pharmaceutical Co., 547 F. Supp. 1095, 215 U.S.P.Q. 769
(D.N.J. 1982), aff'd, 719 F.2d 56 (3d Cir. 1983), cert. denied, 465 U.S. 1080, 79 L. Ed. 2d 763, 104 S.
Ct. 1444 (1984), appeal after remand, 747 F.2d 844, 224 U.S.P.Q. 349 (3d Cir. 1984), cert. denied, 471
U.S. 1137, 86 L. Ed. 2d 696, 105 S. Ct. 2678 (1985) (permanent injunction against copying in look-alike
drug case was affirmed, finding drug capsule colors nonfunctional and with secondary meaning); Florida
Breckenridge, Inc. v. Solvay Pharmaceuticals, Inc., 43 U.S.P.Q.2d 1878 (S.D. Fla. 1997), later proceedings,
174 F.3d 1227, 50 U.S.P.Q.2d 1761 (11th Cir. 1999) (because of differences in size, shape and color of
prescription tablets, a consumer whose pharmacist substitutes the inexpensive generic would not be likely
to be confused because she “would know immediately that her prescription had not been filled with [the
name brand capsule]”). But see Astrazeneca AB v. Dr. Reddy's Laboratories, Inc., 145 F. Supp. 3d 311, 117
U.S.P.Q.2d 1182 (D. Del. 2015) (Granting TRO against use of purple capsules for heartburn medication as
infringement of plaintiff's purple color used on its PRILOSEC and NEXIUM medications. Court did not
cite the Third Circuit Shire precedent.).

5 American Home Products Corp. v. Chelsea Laboratories, Inc., 572 F. Supp. 278, 219 U.S.P.Q. 1192
(D.N.J. 1982), aff'd without op., 722 F.2d 730, 731, 736 (3d Cir. 1983) (Functionality defense rejected and
preliminary injunction issued against imitation of oval shaped estrogen tablets of different colors for different
dosages. Court emphasized that the imitator's drugs were not matched in content and quality control and
the F.D.A. does not permit substitution for this drug.). In 1991, Bolar Pharmaceutical Co., once the leading
generic drug manufacturer (see Bolar litigation cited above) was fined $10 million after pleading guilty to
mislabeling and adulterating generic drugs. New York Times, March 25, 1991, at D5.

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1 McCarthy on Trademarks and Unfair Competition § 7:52 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

II. COLOR

§ 7:52. Color as a descriptive or generic designation

References
Color Describing or Naming a Type or Size of Product. A color or a combination of colors may be used as a grade or style
designation and therefore placed in the “descriptive” category.1 In an early Supreme Court case, a black and gold label on a
spool of thread was held merely to indicate a certain quality of thread and its use by competitors was not unfair competition.2

Descriptive Color Coding Systems. When a seller develops a system of color coding to indicate things like size and capacity,
the particular colors chosen cannot be protected as a trademark unless secondary meaning is proven.3

Color Indicating Flavor. Color used to indicate the flavor of a product, such as white for vanilla and brown for chocolate, may
be unprotectable as being “functional” or “generic.”4

Color as a Generic Indication. In some situations, a color or combination of colors may be so widely used or so closely
connected with a category of product as to be classified as “generic” and unprotectable as a trademark.5 Applying a rule that
if a color is so common within a market segment that consumers would likely associate it with that type of goods or services
and not with just one source, the Trademark Board said then the color is to be classified as “generic” and cannot serve as a
trademark. The color red for woodworking saw blades was held to be a generic indication and unregisterable because red was
used on saw blades by dozens of manufacturers.6

The Third Circuit implied, but did not hold, that the color yellow was a generic indicator of sucralose sweetener and was not a
trademark of the market leader SPLENDA. The court found that both SAFEWAY and FOOD LION store brands of sucralose
were sufficiently different from the yellow color and trade dress of SPLENDA to deny a preliminary injunction. In so holding,
the court implied that the color yellow generically signified the product sucralose in the same way that white has come to signify
refined sugar, brown to signify brown sugar with molasses, blue to signify aspartame (market leader is EQUAL) and pink to
signify saccharin (market leader is SWEET ‘N LOW).7 “[W]e cannot conclude that whenever any other sucralose producer
uses yellow packaging, consumers are likely to associate that product with SPLENDA.”8

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 See §§ 11:36, 11:41.

2 Coats v. Merrick Thread Co., 149 U.S. 562, 570–571, 13 S. Ct. 966, 37 L. Ed. 847 (1893) (“[T]he testimony
indicates that the black and gold labels have become so identified with this quality of thread by immemorial
usage that it would be impossible to introduce or sell a new manufacture of such thread without making use

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of that character of label …. Regarding it, then, as established that other manufacturers had by long practice,
and with the acquiescence of the plaintiffs, acquired the right to make use of the black and gold label, it is
difficult to see how the defendants could have advertised more clearly the fact that it was their own thread,
or better accentuated the distinction between its own and Coats', than it did ….”).

3 Spraying Systems Co. v. Delavan, Inc., 762 F. Supp. 772, 781, 19 U.S.P.Q.2d 1121, 1128 (N.D. Ill. 1991),
judgment aff'd on other grounds, 975 F.2d 387, 24 U.S.P.Q.2d 1181 (7th Cir. 1992) (Color coding system
used to designate the capacities or flow rates of spray nozzles cannot be protected. “[Plainiff] has done
nothing to carry its burden in that respect—it focused its efforts instead on trying to prove that secondary
meaning has attached to color-coded nozzles in general, rather than to nozzles colored with its own specific
palette of colors.”). See Kasco Corporation v. Southern Saw Service, Inc., 1993 WL 13649606 (T.T.A.B.
1993) (Applicant's various color coded wrappers, including the green wrapper at issue “serve to enable
purchasers and users of the blades to quickly identify and distinguish one blade type from another. Thus,
the various colored wrappers have a functional or utilitarian purpose.”). See also Barnes Group, Inc. v.
Connell Ltd. Partnership, 15 U.S.P.Q.2d 1100, 1990 WL 25049 (D. Del. 1990) (Where competitors making
manufacturing equipment used colors for over twenty years without confusion to indicate different grades
of product (each party using different colors for the same grade), defendant's addition of a stripe of plaintiff's
color to defendant's product will not likely cause confusion.).

4 Beech-Nut, Inc. v. Warner-Lambert Co., 346 F. Supp. 547, 175 U.S.P.Q. 583 (S.D. N.Y. 1972), order aff'd,
480 F.2d 801, 178 U.S.P.Q. 385 (2d Cir. 1973) (Use of colors on package to indicate flavor of mints inside is
a “functional” use of color and unprotectable. “The packaging of defendant's product uses the same colors,
though different tones, for the same flavors: greens for wintergreen and spearmint, blue for peppermint.”);
Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197, 1203, 70 U.S.P.Q.2d 1707, 64 Fed. R.
Evid. Serv. 617 (11th Cir. 2004) (“The color is functional because it indicates the flavor of the ice cream,
for example, pink signifies strawberry, white signifies vanilla, brown signifies chocolate, etc.” Summary
dismissal of infringement case affirmed.); Vital Pharmaceuticals, Inc. v. Monster Energy Company, 553 F.
Supp. 3d 1180, 1221, 110 Fed. R. Serv. 3d 826 (S.D. Fla. 2021) (Judgment for defendant of no infringement.
“[U]using colors to distinguish between different flavors serves a useful, non-arbitrary purpose.”).

5 See § 12:36.50. See Avalon Hill Co. v. Gebhardt, 224 Md. 52, 166 A.2d 740, 741, 128 U.S.P.Q. 207 (1961)
(The colors “blue and grey” and the name “Battle of Gettysburg” could not be claimed as protectable
trademarks for a board game concerning the famous Civil War Battle of Gettysburg. “These are matters in
the public domain.”).

6 Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 WL 6522400, *9 (T.T.A.B. 2019) (“This
evidence overwhelmingly demonstrates that the color red on saw blades is so common in the industry
that it cannot identify a single source for saw blades for power woodworking machines or saw blades for
reciprocating power saws.” Registrations were cancelled. Alternatively, it was held that registrant could not
prove it developed a secondary meaning in the color red for saw blades.); In re PT Medisafe Technologies,
2023 WL 2369650, *11 (T.T.A.B. 2023) (non-precedential. Dark green color for chloroprene medical
examination gloves was generic and not registerable. “[D]ark green, in a shade identical or similar to
Applicant’s, is so common in the chloroprene medical examination glove industry that it cannot identify a
single source.”).

7 McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350, 85 U.S.P.Q.2d 1545 (3d Cir. 2007),
on remand, 566 F. Supp.2d 378, 88 U.S.P.Q.2d 1594 (E.D. Pa. 2008) (But there was a possibility of finding
likelihood of confusion by Ahold's store brand sweeteners (e.g. STOP & SHOP) that were packaged similar
to SPLENDA and lacked a prominent display of the store name and logo. On remand, the District Court
issued an injunction against the Ahold packaging.). See Heartland Consumer Products LLC v. DineEquity,
Inc., 2018 WL 465784 (S.D. Ind. 2018) (Denying dismissal of infringement claim against Applebee's and
IHOP restaurants for using sucralose sweetener in yellow packets similar to those of SPLENDA.).

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8 511 F.3d at 363.

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1 McCarthy on Trademarks and Unfair Competition § 7:53 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

III. TRADE DRESS IN PRODUCT DESIGNS

A. STATE LAW TRADE DRESS PROTECTION OF PRODUCT DESIGNS

§ 7:53. The history of state law protection of product shapes—Before and after Sears-Compco

References
Before the 1964 Sears-Compco Cases. Under traditional state law, neither the shapes of packages and containers nor the
shapes of products themselves were recognized under the category of “technical trademarks.” However, robust legal protection
was afforded such shapes under the separate legal label of “unfair competition.” For most purposes, this traditional difference
between trademark infringement and unfair competition is now a historically obsolete distinction.1

Under traditional state law, product and package configurations, to be protected against unfair competition by imitation, had to
meet three basic criteria: (1) non-functionality; (2) proof of secondary meaning; (3) likelihood of confusion.

For example, state lawsuits for unfair competition by product similarity included assertion of rights in a coffee mill,2 a loaf of
bread,3 a crescent wrench,4 a washing machine,5 and a padlock.6

In 1989, in dictum, a unanimous U.S. Supreme Court restated its view of the scope of state law protection of product shapes:

[T]he common law tort of unfair competition has been limited to protection against copying of nonfunctional
aspects of consumer products which have acquired secondary meaning such that they operate as a designation
of source. … The “protection” granted a particular design under the law of unfair competition is thus limited to
one context where consumer confusion is likely to result: the design “idea” itself may be freely exploited in all
other contexts.7

A Period of Uncertainty for State Law: The 1964 Sears-Compco Cases and Their Aftermath. State unfair competition law
protection of product shapes was shaken to its foundations by the 1964 Sears-Compo decisions. The United States Supreme
Court seemingly wiped out over a hundred years of state common law unfair competition law which had prohibited the
simulation of nonfunctional shapes that were likely to confuse buyers.8 Initially, lower courts refused to use state law to prevent
simulation of product shapes. Gradually thereafter, both the Supreme Court itself9 as well as lower courts,10 retreated from the
sweeping generalizations of the Sears-Compco decisions.

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Footnotes

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1 See §§ 4:3 to 4:9 for definition of the historical category of “technical trademarks.”

2 Enterprise Mfg. Co. v. Landers, Frary & Clark, 131 F. 240 (C.C.A. 2d Cir. 1904) (“The decree … further
enjoined the sale of any grinding mills having the characteristic shape, design, color, and ornamentation of
the grinding mills sold by complainant.”).

3 George G. Fox Co. v. Hathaway, 199 Mass. 99, 85 N.E. 417 (1908) (relief granted. “[T]he loaves are of a
size, shape, color and condition of surface that gives them a peculiar visual appearance which has come to
be recognized by customers in connection with the name, as indicating the place of manufacture and the
quality of the bread.”).

4 Crescent Tool Co. v. Kilborn & Bishop Co., 247 F. 299 (C.C.A. 2d Cir. 1917) (Judge Learned Hand. “We can
only say that the court must require such changes in appearance as will effectively distinguish the defendant's
wares with the least expense to him ….”).

5 Maytag Co. v. Meadows Mfg. Co., 35 F.2d 403, 3 U.S.P.Q. 155 (C.C.A. 7th Cir. 1929), cert. denied, 281
U.S. 737, 74 L. Ed. 1151, 50 S. Ct. 250 (1930) (relief denied).

6 Yale & Towne Mfg. Co. v. Alder, 154 F. 37, 38 (C.C.A. 2d Cir. 1907) (relief granted. “The defendant has with
a purpose taken the design and dress of the plaintiff's padlock. … [H]e has gone a step too far when he has
produced a padlock which to casual observation is substantially identical in appearance with the plaintiff's.”).

7 Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 158, 109 S. Ct. 971, 103 L. Ed. 2d 118, 9
U.S.P.Q.2d 1847, 1855 (1989).

8 See § 7:56.

9 See § 7:58.

10 See § 7:57.

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1 McCarthy on Trademarks and Unfair Competition § 7:54 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

III. TRADE DRESS IN PRODUCT DESIGNS

A. STATE LAW TRADE DRESS PROTECTION OF PRODUCT DESIGNS

§ 7:54. The history of state law protection of product shapes—Federal law takes over

References
Federal Lanham Act § 43(a) Eclipses State Unfair Competition Law for Product Shapes. During the period of uncertainty
of whether state law could protect against the confusing use of similar product shapes and designs, litigators looked to federal
law for a legal basis that was not subject to preemption under the Sears-Compco decisions. Case law in the 1970s and 1980s
began to apply Lanham Act 43(a), 15 U.S.C.A. § 1125(a) to protect against infringement of unregistered trademarks and service
marks.1 This expansion included trade dress in product shapes.2 By 1982, Justices White and Marshall could confidently state
that, “The use of a product or package design that is so similar to that of another producer that it is likely to confuse purchasers
as to the product's source may constitute ‘false designation of origin’ within the meaning of [§ 43(a) of the Lanham] Act.”3
By 1992, Justice Stevens could observe in the Taco Cabana case that: “[T]he [Supreme] Court interprets this section [§ 43(a)]
as having created a federal cause of action for infringement of unregistered trademark or trade dress and concludes that such a
mark or trade dress should receive essentially the same protection as those that are registered.”4

In 1999, Congress essentially codified and authorized by statute the rule that § 43(a) is a legal ground for asserting infringement
of unregistered trade dress.5 By that amendment to Lanham Act § 43(a), Congress added a paragraph placing on the plaintiff
the burden of proving non-functionality in a case of unregistered trade dress.6

As a result of the decline of state law and the ascent of federal law, the law of trade dress protection for product shapes was
essentially “federalized.” In almost all cases, state law claims for infringement of trade dress in product design were relegated to
“back burner” status as alternative counts. The present law of Lanham Act § 43(a) for trade dress in product design is discussed
in § 8:5.

Federal Lanham Act § 43(a) Claims are Not Subject to Sears-Compco Preemption Analysis. Grounding the claim on a federal
statute avoids the federal-state preemption rationale of Sears-Compco. All courts agree that whatever is the present status of
the rule in Sears-Compco, it has no application to a federal statute like Lanham Act § 43(a), 15 U.S.C.A. § 1125(a). In the
Compco decision itself, the Supreme Court said that, “If the design is not entitled to a design patent or other federal statutory
protection, then it can be copied at will.”7 The Fourth, Fifth, Sixth, and Seventh Circuits relied on this statement, holding that
the Sears-Compco decisions do not impact on the use of federal law under Lanham Act § 43(a) to protect trade dress in product
design.8 As the Second Circuit observed:

It is surely true that in the Sears and Compco opinions the Supreme Court said nothing about the federal tort
created by [Lanham Act] § 43(a) … The Court, it can be strongly argued, had no need to be concerned with
marking out the boundaries of a federal tort over which it had complete control and which Congress could contract
if the courts were pressing it further than that body desired.9

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In rejecting the argument that federal trademark protection for product configuration unconstitutionally conflicts with the Patent
Clause of the Constitution, the Seventh Circuit concluded that: “Congress intended that product configurations were eligible
for trademark status under § 45 of the Lanham Act. Therefore, we hold now, as we have in the past, that § 45 of the [Lanham]
Act allows product configurations to be eligible for trademark status.”10

In dictum in the 1989 Bonito Boats decision, a unanimous Supreme Court, in speaking of the balance between the protection
given product shapes by unfair competition law and the public domain right to copy embodied in the policy of free competition,
noted that in enacting Lanham Act § 43(a): “Congress has thus given federal recognition to many of the concerns that underlie
the state tort of unfair competition …”11

The Wal-Mart Rule: Secondary Meaning is Required for Product Trade Dress. In the 2000 Wal-Mart case, the Supreme
Court held that product design trade dress can never be classified as “inherently distinctive.” A plaintiff asserting infringement
of unregistered product design trade dress under Lanham Act § 43(a) must always prove that the design has acquired secondary
meaning.12

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 See § 27:8.

2 See § 27:15.

3 Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 863, 102 S. Ct. 2182, 72 L. Ed. 2d 606,
214 U.S.P.Q. 1, 34 Fed. R. Serv. 2d 1101 (1982) (Justices White and Marshall concurring).

4 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 776, 112 S. Ct. 2753, 120 L. Ed. 2d 615, 23 U.S.P.Q.2d
1081, 1084 (1992).

5 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 120 S. Ct. 1339, 146 L. Ed. 2d 182, 54
U.S.P.Q.2d 1065 (2000) (the 1999 addition of § 43(a)(3) supports the view that infringement of unregistered
trade dress can be asserted under § 43(a)).

6 Lanham Act § 43(a), 15 U.S.C.A. 1125(a)(3): “In a civil action for trade dress infringement under this Act
for trade dress not registered on the principal register, the person who asserts trade dress protection has the
burden of proving that the matter sought to be protected is not functional.”

7 Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 238, 84 S. Ct. 779, 11 L. Ed. 2d 669, 672, 140
U.S.P.Q. 528 (1964), reh'g denied, 377 U.S. 913, 12 L. Ed. 2d 183, 84 S. Ct. 1162 (1964) (emphasis added).

8 Fourth Circuit
Larsen v. Terk Technologies Corp., 151 F.3d 140, 147, 47 U.S.P.Q.2d 1429 (4th Cir. 1998) (“[G]rounding
a law suit on a federal statute, such as the Lanham Act, would avoid the federal-state preemption problems
at issue in Sears-Compco.”)
Fifth Circuit
Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 549, 48 U.S.P.Q.2d 1065 (5th Cir. 1998) (“[T]he
Intellectual Property Clause, the federal patent laws and the Sears-Compco line of cases do not preclude
federal trademark protection for product designs and configurations.”)
Sixth Circuit

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Ferrari S.P.A. v. Roberts, 944 F.2d 1235, 1241, 20 U.S.P.Q.2d 1001 (6th Cir. 1991), cert. denied, 505 U.S.
1219, 120 L. Ed. 2d 899, 112 S. Ct. 3028 (1992) (“Thus, [defendant] cannot copy because ‘other federal
protection,’ the Lanham Act, applies.”)
Seventh Circuit
Kohler Co. v. Moen Inc., 12 F.3d 632, 640, 29 U.S.P.Q.2d 1241 (7th Cir. 1993) (“Of course, the Lanham
Act falls under the rubric of ‘other federal statutory protection,’ and courts have expressly held that Sears
and Compco do not preclude federal trademark protection of designs.”)
9 Ives Laboratories, Inc. v. Darby Drug Co., Inc., 601 F.2d 631, 642, 202 U.S.P.Q. 548 (2d Cir. 1979), on
remand, 488 F. Supp. 394, 206 U.S.P.Q. 238 (E.D.N.Y. 1980), rev'd, 638 F.2d 538, 209 U.S.P.Q. 449 (2d
Cir. 1981), rev'd on other grounds, remanded, 456 U.S. 844, 72 L. Ed. 2d 606, 102 S. Ct. 2182, 214 U.S.P.Q.
1 (1982), aff'd without opinion, 697 F.2d 291 (2d Cir. 1982). The Second Circuit said it agreed with the
decision in Truck Equipment Service Co. v. Fruehauf Corp., 536 F.2d 1210, 1214, 191 U.S.P.Q. 79 (8th Cir.
1976), cert. denied, 429 U.S. 861, 50 L. Ed. 2d 139, 97 S. Ct. 164, 191 U.S.P.Q. 588 (1976).

Accord: Keene Corp. v. Paraflex Industries, Inc., 653 F.2d 822, 823 n.1, 211 U.S.P.Q. 201 (3d Cir. 1981)
(“This court has recently held that suit brought under section 43(a) of the Lanham Act survives the stringent
limitations on state unfair competition laws imposed by the decisions of the Supreme Court in [Sears and
Compco].”); Versa Products Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 204 n.12, 33 U.S.P.Q.2d 1801
(3d Cir. 1995), cert. denied, 516 U.S. 808,133 L. Ed. 2d 19, 116 S. Ct. 54 (1995) (“[W]e deal here not only
with state unfair competition law but also with a federal statute. It is therefore true that the Supremacy Clause
does not, as in [Sears and Compco] operate to bar Section 43(a) from protecting trade dress in the form of
the product configuration of Versa's B–316 valve.”); Jenny Yoo Collection, Inc. v. Essense of Australia, Inc.,
448 F. Supp. 3d 1162 (D. Kan. 2020) (“Simply put, the Sears-Compco federal-state preemption rationale
has no application to a federal statute like the Lanham Act.”).

10 Kohler Co. v. Moen Inc., 12 F.3d 632, 636, 29 U.S.P.Q.2d 1241 (7th Cir. 1993).

11 Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 166, 109 S. Ct. 971, 103 L. Ed. 2d 118,
9 U.S.P.Q.2d 1847, 1858 (1989) (“[T]he application of Sears and Compco to nonfunctional aspects of a
product which have been shown to identify source must take account of competing federal policies in this
regard.”).

12 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 120 S. Ct. 1339, 146 L. Ed. 2d 182, 54 U.S.P.Q.2d
1065 (2000). See § 8:12.

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§ 7:55. The history of state law protection of product..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:55 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

III. TRADE DRESS IN PRODUCT DESIGNS

A. STATE LAW TRADE DRESS PROTECTION OF PRODUCT DESIGNS

§ 7:55. The history of state law protection of product shapes

—“Product simulation law” becomes part of “trade dress” law

References
While “trade dress” traditionally meant only the packaging and labeling of a product, since the 1980s the term “trade dress” was
stretched to include the shape and design of the product itself.1 Thus, the field of law once referred to as unfair competition by
“product simulation,” has now been folded into that corner of trademark and unfair competition law called “trade dress.” The
Supreme Court recognized that trade dress is “a category that originally included only the packaging or ‘dressing’ of a product,
but in recent years has been expanded by many courts of appeal to encompass the design of a product.”2

For all practical purposes, there should be no difference in the substantive law of infringement whether one uses the labels
“trademark,” “trade dress,” or simply “unfair competition.” Changing the labels does not change the basic rules of recovery.3

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 80 n.2, 216 U.S.P.Q. 102 (3d Cir. 1982) (“Although
historically trade dress infringement consisted of copying a product's packaging, the parties and the district
court used the term “trade dress” in its more modern sense to refer to the appearance of the Rubik's Cube
itself as well as its packaging, and we will do the same.”); American Greetings Corp. v. Dan-Dee Imports,
Inc., 807 F.2d 1136, 1140, 1 U.S.P.Q.2d 1001 (3d Cir. 1986) (“Trade dress” covers the appearance of teddy
bears); Farberware, Inc. v. Mr. Coffee, Inc., 740 F. Supp. 291, 296 n.6, 16 U.S.P.Q.2d 1103 (D. Del. 1990)
(“Today, however, trade dress can also refer to the appearance of the product itself.” While shape of coffee
maker is capable of protection as trade dress, preliminary injunction was denied.); Kohler Co. v. Moen Inc.,
12 F.3d 632, 641 n.11, 29 U.S.P.Q.2d 1241 (7th Cir. 1993). (“This broad definition of trade dress as applied
by the courts includes product configurations.”); Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40
F.3d 1431, 1439, 32 U.S.P.Q.2d 1724, 1729 (3d Cir. 1994) (“[T]rade dress protection extends beyond a
product's packaging or labeling to include ‘the appearance of the [product] itself.’”).

2 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209, 120 S. Ct. 1339, 1342, 146 L. Ed. 2d
182, 54 U.S.P.Q.2d 1065, 1067 (2000). See Reichman, “Design Protection and the New Technologies: The
United States Experience in a Transnational Perspective,” 19 U. Balt. L. Rev. 6, 87 (1990) (Starting in 1983,
decisions “began to stretch the notion of trade dress to the point where prior distinctions between ‘package’
or ‘container’ and ‘product configuration’ became blurred and hardly worth defending.”).

3 American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1140 n.2, 1 U.S.P.Q.2d 1001 (3d Cir.
1986) (The court noted that protection for a product's overall design or appearance is protectable under

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Lanham Act § 43(a) either as an unregistered trademark, trade dress or under the law of unfair competition.
“[W]e believe protection for a product's overall appearance or design should be considered in the analytic
framework of trade dress infringement, which is a form of unprivileged imitation, which itself falls under
the rubric of unfair competition.”). See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S. Ct. 2753,
2760, 120 L. Ed. 2d 615, 627, 23 U.S.P.Q.2d 1081, 1086 (1992) (“[T]he protection of trademarks and trade
dress under § 43(a) serves the same statutory purpose of preventing deception and unfair competition. There
is no persuasive reason to apply different analysis to the two.”); Herman Miller, Inc. v. Palazzetti Imports
and Exports, Inc., 270 F.3d 298, 308 n.2, 60 U.S.P.Q.2d 1633, 2001-2 Trade Cas. (CCH) ¶ 73489 (6th Cir.
2001) (“Trade dress issues follow the same rules and laws as trademark …”).

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§ 7:56. The 1964 Sears-Compco cases, 1 McCarthy on Trademarks and Unfair...

1 McCarthy on Trademarks and Unfair Competition § 7:56 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

III. TRADE DRESS IN PRODUCT DESIGNS

B. Federal Preemption of State Law Protection of Product Designs

§ 7:56. The 1964 Sears-Compco cases

References
Introduction. In the Sears-Compco decisions of 1964,1 the United States Supreme Court seemingly wiped out over a hundred
years of state common law unfair competition law which had prohibited the simulation of nonfunctional product designs that
were likely to confuse buyers. The Supreme Court postulated the issue as: “[W]hether a State's unfair competition law can,
consistently with the federal patent laws, impose liability for or prohibit the copying of an article which is protected by neither
a federal patent nor a copyright.”2

Justice Black for the Supreme Court gave a clear answer to the question: no. The Court reasoned that to extend relief against
copying alone would run contrary to the Constitutional and statutory scheme of patent and copyright protection and to “block
off from the public something which federal law has said belongs to the public.”3

Soon after the 1964 decisions, lower courts refused to use state law to protect distinctive product shapes. But gradually thereafter,
as described in §§ 7:57 to 7:58, both the Supreme Court itself as well as lower courts, retreated from the sweeping generalities
of the Sears-Compo decisions. Today, it is relatively clear that the “Sears-Compo defense” is not viable against state law-based
claims for infringement of trade dress in product design.

Sears v. Stiffel. In the Sears case, the Stiffel Co. had obtained design and mechanical patents covering the design and operation
of a “pole lamp.” The district court held these patents invalid for lack of invention, but both the district court and the Seventh
Circuit found that the exact copying by Sears of the Stiffel lamp constituted unfair competition under Illinois state law, because
there was a likelihood of confusion of buyers as to source. In reversing, the Supreme Court held that in such a case, state law
had no power to require Sears to change the design of its lamp so as not to simulate the appearance of the Stiffel pole lamp.
The Court stated that it was clear that a state could not, consistent with the U.S. Constitution, extend the life of a federal patent
beyond its expiration date or give protection to things that did not qualify for federal patent protection. The Court felt that the
common law of Illinois, as applied in the Sears case, amounted to much the same result:

In the present case the “pole lamp” sold by Stiffel has been held not to be entitled to the protection of either a
mechanical or a design patent. An unpatented article, like an article on which the patent has expired, is in the
public domain and may be made and sold by whoever chose to do so. What Sears did was to copy Stiffel's design
and to sell lamps almost identical to those sold by Stiffel. This it had every right to do under the federal patent
laws. That Stiffel originated the pole lamp and made it popular is immaterial.4

The Sears Court felt that the fact that there would be a likelihood of confusion caused by the look-alike lamps was irrelevant:

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§ 7:56. The 1964 Sears-Compco cases, 1 McCarthy on Trademarks and Unfair...

Of course there would be “confusion” as to who manufactured these nearly identical articles. But mere inability
of the public to tell two identical articles apart is not enough to support an injunction against copying or an award
of damages for copying that which the federal patent laws permit to be copied.5

However, even though the Court held that a court could not, under state law, prohibit the copying of an unpatented or
uncopyrighted article, it held that the states could impose less drastic sanctions, such as requiring labeling:

Doubtless a State may, in appropriate circumstances, require that goods, whether patented or unpatented, be
labeled or that other precautionary steps be taken to prevent customers from being misled as to the source, just as
it may protect businesses in the use of their trademarks, labels, or distinctive dress in the packaging of goods so
as to prevent others, by imitating such markings, from misleading purchasers as to the source of the goods.6

Compco v. Day-Brite. In the Compco case,7 the Day-Brite Lighting Co. had obtained a design patent on a fluorescent light
fixture reflector having crossribs. The district court held that patent to be invalid. The lower courts enjoined the Compco Co.
from making and selling a reflector with a similar appearance, on the basis of Illinois unfair competition law. In reversing, the
Supreme Court held that even where “selling an article which is an exact copy of another unpatented article is likely to produce
and in this case did produce confusion,” the conclusion must follow that “when an article is unprotected by a patent or copyright,
state law may not forbid others to copy the article.”8 The Court held that even though the reflector design was nonfunctional,
had acquired secondary meaning and defendant's copy was likely to cause confusion, no injunction against copying could be
granted. These elements were held relevant only to a possible application of state law “requiring such precautions as labeling.”9

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Footnotes
1 Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S. Ct. 784, 11 L. Ed. 2d 661, 140 U.S.P.Q. 524 (1964);
Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S. Ct. 779, 11 L. Ed. 2d 669, 140 U.S.P.Q.
528 (1964).

2 Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S. Ct. 784, 11 L. Ed. 2d 661, 140 U.S.P.Q. 524 (1964).

3 Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 232, 84 S. Ct. 784, 11 L. Ed. 2d 661, 140 U.S.P.Q. 524
(1964).

4 Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 231, 84 S. Ct. 784, 11 L. Ed. 2d 661, 140 U.S.P.Q. 524
(1964).

5 Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 232, 84 S. Ct. 784, 11 L. Ed. 2d 661, 140 U.S.P.Q. 524
(1964).

6 Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 232, 84 S. Ct. 784, 11 L. Ed. 2d 661, 140 U.S.P.Q. 524
(1964).

7 Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S. Ct. 779, 11 L. Ed. 2d 669, 140 U.S.P.Q.
528 (1964).

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§ 7:56. The 1964 Sears-Compco cases, 1 McCarthy on Trademarks and Unfair...

8 Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 237, 84 S. Ct. 779, 11 L. Ed. 2d 669, 140 U.S.P.Q.
528 (1964).

9 Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 238, 84 S. Ct. 779, 11 L. Ed. 2d 669, 140 U.S.P.Q.
528 (1964).

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§ 7:57. The impact of the Sears-Compco decisions on..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:57 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

III. TRADE DRESS IN PRODUCT DESIGNS

B. Federal Preemption of State Law Protection of Product Designs

§ 7:57. The impact of the Sears-Compco decisions on

state law protection of trade dress in product design

References
Soon after the 1964 Sears-Compco decisions, many judges read those opinions to mean that the courts must refuse state
protection against simulation of product shape and configuration.1 However, starting in 1976, several courts began to reject the
thesis that Sears-Compco meant that state law was powerless to prevent a confusingly similar imitation of product shape. In
1976, the Eighth Circuit stated that the relevant language of Sears-Compco was “dictum” and not “controlling.”2 In 1979 the
Second Circuit stated flatly that, “[I]t is clear that Sears-Compco did not redefine the permissible scope of the law of trademarks
insofar as it applies to origin and sponsorship.”3 And in 1982 the Third Circuit stated that:

[A]lthough the Supreme Court held [in Sears-Compco] that state unfair competition laws must accommodate
federal patent law policies, it recognized and did not disturb the states' power to prevent consumers from being
misled as to the source of a product … Sears and Compco do not preclude a court from affording protection from
infringement of a design element that has achieved secondary meaning and is nonfunctional, notwithstanding the
absence of a patent.4

Agreeing, the Tenth Circuit said that the rulings in the Sears-Compco cases did not preempt a state claim for infringement
of trade dress in a product appearance because “both cases clearly reserve to the states the ability to prohibit infringement of
trademark or trade dress indicating a product's origin.”5 Several courts followed this trend to limit Sears-Compco policy and
protect against product shape imitation under state trademark law.6 However, this view was not unanimous and other courts
continued to apply a strict version of the Sears-Compco decisions, precluding state law prohibitions on the copying of product
shapes.7 State court decisions seemed to favor a particularly strict reading of the Sears-Compco decisions.8

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Spangler Candy Co. v. Crystal Pure Candy Co., 353 F.2d 641, 147 U.S.P.Q. 434 (7th Cir. 1965) (plaintiff
conceded that Sears-Compco prevented relief for copying shape of candy sucker product); Crossbow, Inc. v.
Dan-Dee Imports, Inc., 266 F. Supp. 335, 338, 153 U.S.P.Q. 163 (S.D. N.Y. 1967) (“Plaintiffs are clearly not
entitled to injunctive relief on the ground that defendant copied their product.”); Laura Secord Candy Shops
Ltd. v. Barton's Candy Corp., 368 F. Supp. 851, 853, 179 U.S.P.Q. 715 (N.D. Ill. 1973) (“Plaintiffs have not,
and doubtless cannot, obtain a monopoly in turtle shaped candy under the patent and copyright laws, and

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this in itself provides reason for providing no such protection under the trademark and unfair competition
laws.”); American Rolex Watch Corp. v. Ricoh Time Corp., 491 F.2d 877, 879, 180 U.S.P.Q. 417 (2d Cir.
1974) (“Under Sears and Compco, the act of copying (even if there were proof of such) does not provide a
basis for a charge of unfair competition.”); John Wright, Inc. v. Casper Corp., 419 F. Supp. 292, 191 U.S.P.Q.
369 (E.D. Pa. 1976), judgment aff'd in part, rev'd in part, 587 F.2d 602, 199 U.S.P.Q. 705 (3d Cir. 1978).

2 Truck Equipment Service Co. v. Fruehauf Corp., 536 F.2d 1210, 1214-1215, 191 U.S.P.Q. 79 (8th Cir.
1976), cert. denied, 429 U.S. 861, 50 L. Ed. 2d 139, 97 S. Ct. 164, 191 U.S.P.Q. 588 (1976) (“To protect
TESCO against the misappropriation of the exterior design of the Cornhusker 800, portions of which are
nonfunctional and which is possessed of a secondary meaning, will be in furtherance of this Congressional
purpose. …. Contrary to the situation in Sears and Compco, there is in the instant controversy no conflict
with federal statutory policy. Fruehauf's contention that it is privileged to copy the exterior design of the
Cornhusker 800 must fail.”).

3 Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204, 5 Media L. Rep. (BNA)
1814, 203 U.S.P.Q. 161 (2d Cir. 1979).

4 Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 81, 216 U.S.P.Q. 102 (3d Cir. 1982) (protecting
against imitation of colors on RUBIK'S CUBE puzzle). Accord: SK & F, Co. v. Premo Pharmaceutical
Laboratories, Inc., 625 F.2d 1055, 1064-1065, 206 U.S.P.Q. 964, 1980-2 Trade Cas. (CCH) ¶ 63361 (3d Cir.
1980) (“The continued viability of the state law of unfair competition has been reconfirmed by the Court
since the opinions in Sears and Compco. … [W]e agree with the conclusion reached by the Second and
Eighth Circuits that the state law tort of unprivileged imitation survives Sears and Compco.”).

5 Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, n.7, 4 U.S.P.Q.2d 1497, 23 Fed. R. Evid. Serv. 1272
(10th Cir. 1987). See National Presto Industries, Inc. v. Hamilton Beach, Inc., 18 U.S.P.Q.2d 1993, 1990 WL
208594 (N.D. Ill. 1990) (after Bonito 's interpretation of Sears-Compco, state law is free to place restrictions
on the imitation of trade dress in the shape of goods to the extent that it is likely to cause confusion).

6 See § 8:21.

7 Gemveto Jewelry Co., Inc. v. Jeff Cooper Inc., 800 F.2d 256, 259, 230 U.S.P.Q. 876 (Fed. Cir. 1986), on
remand, 694 F. Supp. 1085 (S.D.N.Y. 1988), aff'd without opinion, 884 F.2d 1399 (Fed. Cir. 1989) (“the Sears
and Compco decisions which hold that copying of the article itself that is unprotected by the federal patent
and copyright laws cannot be protected by state law.” State law-based injunction against copying jewelry
design would run afoul of the Sears-Compco rule. While a “palming-off” injunction would be appropriate,
district court failed to so narrow the injunction.).

8 Sammons & Sons v. Ladd-Fab, Inc., 138 Cal. App. 3d 306, 187 Cal. Rptr. 874, 221 U.S.P.Q. 737 (2d Dist.
1982) (product simulation claim founded upon a misappropriation theory is preempted by federal law);
Classic Instruments, Inc. v. VDO-Argo Instruments, Inc., 73 Or. App. 732, 700 P.2d 677, 226 U.S.P.Q. 894
(1985), review denied, 300 Or. 111, 707 P.2d 583 (1985) (Claim of state law trademark status in design
of auto gauges is preempted under the Sears-Compco rule, but parallel claim under federal Lanham Act §
43(a) is not affected.); Thompson v. Youart, 109 N.M. 572, 1990-NMCA-012, 787 P.2d 1255, 16 U.S.P.Q.2d
1386 (Ct. App. 1990) (A state law claim for copying the design of unpatented and uncopyrighted furniture is
preempted under the Sears-Compco rule. The inability of the public to tell the objects apart will not support
an injunction against copying that which federal law leaves in the public domain.).

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§ 7:58. The Supreme Court retreats from the sweeping..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:58 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

III. TRADE DRESS IN PRODUCT DESIGNS

B. Federal Preemption of State Law Protection of Product Designs

§ 7:58. The Supreme Court retreats from the sweeping generalizations of the Sears-Compco cases

References
Introduction. In a series of decisions beginning in 1973, the Supreme Court retreated from the sweeping “federal protection
only” generalizations of the Sears-Compco decisions. This Supreme Court retreat from Sears-Compco led many lower courts
to narrowly read Sears-Compco.1 In many respects, the pre-Sears-Compco balance between state and federal authority over
trade dress in product shapes was largely restored.2

The 1989 Bonito Boats Case. In its 1989 Bonito Boats opinion, the U.S. Supreme Court narrowed and then applied the policy of
the Sears-Compco decisions to find federal preemption.3 Justice O'Connor, speaking for a unanimous Supreme Court, admitted
that the Court in several decisions in the 25 years since Sears-Compco had taken “a decidedly less rigid view of the scope of
federal pre-emption under the patent laws.” The Court rejected a broad reading of Sears-Compco that would mean that states
cannot give “any form of protection to articles or processes which fall within the broad scope of patentable subject matter.”4

Significantly limiting the generalities of Sears-Compco, the Court applied a narrow version of the Sears-Compco preemption
policy to strike down a state law that granted patent-like protection to certain product designs. In the process of doing so, the
Court reaffirmed the right of states to give unfair competition and trademark protection to trade dress. Justice O'Connor for
the Court rejected the “broadest reading” of Sears which would prohibit the states from “regulating the deceptive simulation
of trade dress”:

That the extrapolation of such a broad pre-emptive principle from Sears is inappropriate is clear from the balance
struck in Sears itself. The Sears court made it plain that the States “may protect businesses in the use of their
trademarks, labels, or distinctive trade dress in the packaging of goods so as to prevent others, by imitating such
markings, from misleading purchasers as to the source of the goods.” … Trade dress is, of course, potentially the
subject matter of design patents. … Yet, our decision in Sears clearly indicates that the States may place limited
regulations on the circumstances in which such designs are used in order to prevent consumer confusion as to
source.5

In Bonito Boats, the Supreme Court held that a state statute that prevents copying by making a mold directly from a product
such as a boat hull grants “patent-like protection” and thus conflicts with and is preempted by federal patent law. Such a statute
in effect created a state mini-patent which improperly restricted competition from the free imitation of designs which federal
law mandates shall be free to copy.6

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§ 7:58. The Supreme Court retreats from the sweeping..., 1 McCarthy on...

The Seventh Circuit noted that the state statute struck down in Bonito Boats was considerably more restrictive of competition
than the likelihood of confusion basis of trademark and unfair competition law:

The Court's holding in Bonito Boats is also inapplicable to federal trademark law because the Florida statute
granted boat manufacturers patent-like rights far exceeding any right available under the Lanham Act. … [T]he
underlying policies of federal trademark law, and the nature of the protection afforded, do not approximate the
sweeping, perpetual patent-like state statutes that the Supreme Court found impermissible in Sears, Compco, and
Bonito Boats.7

If a state statute creates rights as broad as those in Bonito Boats, federal preemption can apply. For example, a state law anti-
dilution claim was preempted by federal patent law when an object, such as a container, that is capable of design patent protection
is alleged to be trade dress that is diluted by a copier's imitation. While the likelihood of confusion requirement of trademark
law avoids a conflict with federal design patent law, a state law which does not require proof of likely confusion can grant
“patent-like” protection which is in conflict with federal policy.8

The Supreme Court Re-Interprets Sears-Compco: The 2003 Eldred v. Ashcroft Case. In 2003, Justice Ginsburg, speaking
for the majority in Eldred v. Ashcroft, noted that the point of the 1964 Sears case was simply that states could not enact laws
granting exclusive rights that conflict with the federal patent laws: “The point insistently made in Sears is no more and no less
than this: States may not enact measures inconsistent with the federal patent laws.”9 The majority in Eldred disagreed with
the dissent as to the scope of Sears. The majority held that the Sears case concerned the limits of state power and cannot be
stretched to place any restrictions on the powers of the federal Congress in the field of intellectual property.10

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Footnotes
1 SK & F, Co. v. Premo Pharmaceutical Laboratories, Inc., 625 F.2d 1055, 1064, 206 U.S.P.Q. 964, 1980-2
Trade Cas. (CCH) ¶ 63361 (3d Cir. 1980) (“The continued viability of the state law of unfair competition
has been reconfirmed by the Court since the opinions in Sears and Compco ….. Thus we agree with the
conclusion reached by the Second and Eighth Circuits that the state law tort of unprivileged imitation
survives Sears and Compco.”).

2 See McCarthy, “Important Trends in Trademark and Unfair Competition Law During the Decade of the
1970s,” 71 Trademark Rep. 93, 94-101 (1981).

3 Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 109 S. Ct. 971, 103 L. Ed. 2d 118, 9 U.S.P.Q.2d
1847 (1989).

4 Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 154, 109 S. Ct. 971, 103 L. Ed. 2d 118, 9
U.S.P.Q.2d 1847 (1989).

5 Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 154, 109 S. Ct. 971, 103 L. Ed. 2d 118, 9
U.S.P.Q.2d 1847 (1989).

6 Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 167, 109 S. Ct. 971, 103 L. Ed. 2d 118, 9
U.S.P.Q.2d 1847 (1989) (“The Florida law substantially restricts the public's ability to exploit an unpatented
design in general circulation, raising the specter of state-created monopolies in a host of useful shapes and
processes for which patent protection has been denied or is otherwise unobtainable. It thus enters a field of
regulation which the patent laws have reserved to Congress.”).

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7 Kohler Co. v. Moen Inc., 12 F.3d 632, 641-642, 29 U.S.P.Q.2d 1241 (7th Cir. 1993) (Rejecting the argument
that federal Lanham Act § 43(a) trade dress protection for product configuration unconstitutionally conflicts
with the Patent Clause of the Constitution.).

8 Escada AG v. The Limited, Inc., 810 F. Supp. 571, 25 U.S.P.Q.2d 1970 (S.D. N.Y. 1993) (Dismissing
on summary judgment a count for dilution of trade dress in a distinctively-shaped bottle for ESCADA
perfume: “The New York dilution statute as applied to potentially patentable designs goes beyond the limited
regulation permitted by Bonito Boats.”). Accord: Luv N' Care, Ltd. v. Regent Baby Products Corp., 841 F.
Supp. 2d 753, 103 U.S.P.Q.2d 1243 (S.D. N.Y. 2012) (Baby no-spill drinking cups are potentially patentable,
therefore N.Y. state dilution claims are preempted by federal patent law.). See § 24:80.

9 Eldred v. Ashcroft, 537 U.S. 186, 203 n.8, 123 S. Ct. 769, 154 L. Ed. 2d 683, 65 U.S.P.Q.2d 1225 (2003)
(This case concerned the power of Congress to extend the duration of copyrights.).

10 “Justice Stevens … [dissenting] recites words from Sears … supporting the uncontroversial proposition that
a State may not ‘extend the life of a patent beyond its expiration date,’ … then boldly asserts that for the
same reasons Congress may not do so either… But Sears placed no reins on Congress' authority to extend
a patent's life.” 537 U.S. at 203, n.8.

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1 McCarthy on Trademarks and Unfair Competition § 7:59 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

III. TRADE DRESS IN PRODUCT DESIGNS

C. Federal Law Protection of Product Designs

§ 7:59. Lanham Act § 43(a) protection of product shapes and designs

References
Lanham Act § 43(a) is the Foremost Basis for Asserting Infringement of Trade Dress. This section gives an overview of the
subject of federal protection against infringement of trade dress in product shape. This is covered in greater depth at § 8:5.

Federal Lanham Act § 43(a), 15 U.S.C.A. § 1125(a) is the premier vehicle by which to assert trade dress protection in the federal
courts.1 This includes trade dress in product design. There is no need that the shape or configuration be federally registered. In
such § 43(a) cases, the traditional rules of trademark and trade dress law are applied.2

A wide range of product and package designs have been protected as trade dress from infringement under Lanham Act § 43(a).
Examples of things protected are listed in § 8:4.50.

Elements Needed to Asset a Claim of Infringement of Trade Dress in Product Design. To assert a claim under Lanham Act §
43(a) for infringement of trade dress in product configuration, plaintiff must plead and prove three basic elements:

(1) Validity: To be valid as “trade dress” the design or shape must identify and distinguish source. A plaintiff asserting
infringement of unregistered product design trade dress under Lanham Act § 43(a) must always prove that the design has
acquired secondary meaning in the marketplace.3

(2) Functionality: The shape cannot be dictated by utilitarian concerns.4 A plaintiff asserting infringement of unregistered trade
dress has the burden of proving that it is not functional. If plaintiff has registered the design on the federal Principal Register,
the burden of proof on functionality shifts to the defendant to prove functionality.5

(3) Infringement: Infringement of trade dress is controlled by the by likelihood of confusion test. Plaintiff must prove that
customers or others will likely be confused as to source, sponsorship, connection or approval because of the defendant's similar
shape or design.6

Federal Registration. If product design trade dress satisfies the federal standards of trademark or service mark protection as
identifying and distinguishing a product or service, then may be federally registrable.7

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Footnotes

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1 See § 8:7.

2 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773, 112 S. Ct. 2753, 120 L. Ed. 2d 615, 23 U.S.P.Q.2d
1081 (1992) (“This is the rule generally applicable to trademarks, and the protection of trademarks and trade
dress under § 43(a) serves the same statutory purpose of preventing deception and unfair competition. There
is no persuasive reason to apply different analysis to the two.”).

3 See § 8:12.

4 See §§ 7:63 to 7:65. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S. Ct. 2753, 120 L. Ed.
2d 615, 23 U.S.P.Q.2d 1081 (1992) (“It is also clear that eligibility for protection under § 43(a) depends
on nonfunctionality.”).

5 See § 7:72.

6 See § 8:15.

7 See § 8:7.

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1 McCarthy on Trademarks and Unfair Competition § 7:60 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

III. TRADE DRESS IN PRODUCT DESIGNS

C. Federal Law Protection of Product Designs

§ 7:60. Federal registration of product and container shapes

References
As discussed in § 7:94 and § 7:95, product and container shapes that qualify under the Lanham Act can be federally registered
as “trademarks” on the Principal and Supplemental Registers.

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1 McCarthy on Trademarks and Unfair Competition § 7:61 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

III. TRADE DRESS IN PRODUCT DESIGNS

C. Federal Law Protection of Product Designs

§ 7:61. [Reserved]

References
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§ 7:62. [Reserved], 1 McCarthy on Trademarks and Unfair Competition § 7:62 (5th ed.)

1 McCarthy on Trademarks and Unfair Competition § 7:62 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

III. TRADE DRESS IN PRODUCT DESIGNS

C. Federal Law Protection of Product Designs

§ 7:62. [Reserved]

References
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1 McCarthy on Trademarks and Unfair Competition § 7:63 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

A. FUNCTIONAL FEATURES CANNOT BE TRADE DRESS OR TRADEMARKS

§ 7:63. The rule against trademark protection for functional features: reasons for the rule

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

The Rule: Trademark Law Does Not Give Exclusive Rights to “Functional” Features. The requirement of nonfunctionality in
trademark and trade dress law is concerned with whether the particular shape or feature claimed to be a trademark or trade dress
contributes to a utilitarian purpose. If it makes the product more useful for its purpose or contributes to economy of manufacture
or use, then the feature is “functional” and is not capable of trademark protection.1

To boil it down to a phrase: something is “functional” if it works better in this shape.2 Alternatively, as Judge Easterbrook
explained it: “So if a design enables a product to operate, or improves on a substitute design in some way (such as by making
the product cheaper, faster, lighter, or stronger), then the design cannot be trademarked ….”3

However, the courts continue to struggle with getting words around a generalized definition of what is “functional.”4 This
creates problems of predictability and certainty for the practitioner trying to forecast what a judge will do.

Once a design or feature is held “functional,” then, absent a valid utility patent, the design is available for all to copy and use as a
matter of free competition, creating all of the recognized economic and social benefits that flow from free and open competition.5

The Common Law Rule and Its Codification. To accommodate trade dress law to the policies of patent law and of free
competition, the common law developed early the policy that no trade dress or trademark rights could validly be claimed in
“functional” shapes or features. For many decades the functionality doctrine was followed by the courts as a matter of public
policy.6 However, until 1998, there was no mention of it in the text of the Lanham Act.

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In 1998, Congress codified the functionality rule and amended the Lanham Act by making “functionality” an explicit ground for:
(1) ex parte rejection; (2) a ground for opposition and cancellation of registration; and (3) a statutory defense to an incontestably
registered mark.7

In 1999 Congress placed on a plaintiff asserting infringement of unregistered trade dress the burden of proving nonfunctionality.8
By 2001, the Supreme Court could observe that it was a “well-established rule that trade dress protection may not be claimed
for product features that are functional.”9

Two Policy Reasons for the Functionality Bar. There are two main rationales underlying the functionality bar, each of which
is discussed in following sections:

(1) Implementation of a key principle of free competition in United States law: there is only one source of exclusive rights in
functional and utilitarian features—utility patent law;10 and

(2) Preserving free and effective competition by ensuring that competitors can copy features that they need to compete
effectively.11 The number of alternative designs available is often used as a guide to compliance with this second rationale.12
The Supreme Court has cautioned that rationale (2) is a statement of underlying policy and is not to be used as a legal
definition of what features are to be deemed to be “functional.”13

In resolving the issue of trade dress functionality, some courts place weight on one rationale while other courts place all the
emphasis on the other.14 In the author's view, both policies are important as guides to the ultimate decision of whether a certain
feature or design is to be categorized as “functional.”15

Functionality Trumps Evidence of Secondary Meaning and Evidence of Confusion. Functionality is a potent public policy,
for it trumps all evidence of actual consumer identification of source and all evidence of actual consumer confusion caused by
an imitator. If a feature is found to be “functional,” then it cannot be a valid trademark or trade dress: the issue of validity is
decided—there is no intellectual property to be protected and (absent a utility patent) free and open competition by imitation
is permitted.

For “functional” items, no amount of evidence of secondary meaning or actual confusion will create a right to exclude.16 As
the Supreme Court observed, once a feature is determined to be functional, then “secondary meaning is irrelevant because there
can be no trade dress protection in any event …. Functionality having been established, whether [plaintiff's] dual-spring design
has acquired secondary meaning need not be considered.”17

Can the Functionality of a Feature Change Over Time? The Trademark Board has held that functionality is not necessarily
a permanent status of a design. Even though a configuration has been held functional, its status may later change to become
nonfunctional. Thus, the Trademark Board held that the ZIPPO cigarette lighter design, while originally held functional in
a 1963 decision because cheaper and easier to make, over time became nonfunctional as competitors introduced alternative
designs into the market.18 A similar fluidity of functionality occurred with the round shape of the Honeywell thermostat.19
While admitting that a design once functional could, over time, become non-functional, the Seventh Circuit said that because
the utility patents that evidenced functionality were still in effect, the design was still functional.20

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Footnotes
1 Restatement Third, Unfair Competition § 17.

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2 See cases using this definition at § 7:69.50.

3 Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 857, 96 U.S.P.Q.2d 1404 (7th Cir. 2010) (Circular beach
towel is functional and is not a valid trademark.).

4 See § 7:69 for a survey of definitions of “functional” arranged according to the various circuits.

5 Cooper Industries, Inc. v. Leatherman Tool Group, Inc., 532 U.S. 424, 441, 121 S. Ct. 1678, 149 L. Ed.
2d 674, 58 U.S.P.Q.2d 1641, 1648 (2001) (“[C]opying of the functional features of an unpatented product
is lawful.”); TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29, 121 S. Ct. 1255, 149 L.
Ed. 2d 164, 58 U.S.P.Q.2d 1001 (2001) (“In general, unless an intellectual property right such as a patent
or copyright protects an item, it will be subject to copying …. [C]opying is not always discouraged or
disfavored by the laws which preserve our competitive economy …. Allowing competitors to copy will have
salutary effects in many instances.”). See e.g. Arlington Specialties, Inc. v. Urban Aid, Inc., 847 F.3d 415,
420 (7th Cir. 2017) (Defendant copied plaintiff's product design of a man's personal care bag. Summary
dismissal of trade dress case affirmed because the design was clearly functional and unprotectable.); Ezaki
Glico Kabushiki Kaisha v. Lotte International America Corp., 986 F.3d 250, 255 (3d Cir. 2021), as amended,
(Mar. 10, 2021) (Defendant copied plaintiff's product design of a chocolate covered cookie stick. Summary
dismissal of trade dress case affirmed: the design was functional and unprotectable. “Copying is usually
legal. It is part of market competition. As a rule, unless a patent, copyright, or the like protects an item,
competitors are free to copy it.”).

See discussion at § 1:24 that in the absence of legally defined exclusive IP rights, imitation and copying is
not only permitted, but is encouraged as an essential element of free competition.

6 In re Oneida Community, 41 App. D.C. 260, 1913 WL 19946 (App. D.C. 1913) (“[T]his alleged trademark
should not be registered, for clearly no functional feature of a device is a proper subject for trademark
registration.” A circular film on the back of a spoon bowl was functional by preventing the wear of precious
metal.); Goodyear Tire & Rubber Co. v. Robertson, 25 F.2d 833 (C.C.A. 4th Cir. 1928) (“Here we have an
effort to register an alleged trade-mark, consisting of something which is a mechanically functional feature
of an automobile tire, and not registerable at all, ….” Diamond shaped pattern on an auto tire was not
registerable.); In re Dennison Mfg. Co., 17 C.C.P.A. 987, 39 F.2d 720, 5 U.S.P.Q. 316, 317 (1930) (“It is well
settled that the configuration of an article having utility is not the subject of trade-mark protection.”). See
Shakespeare Co. v. Silstar Corp. of America, Inc., 9 F.3d 1091, 1099, 28 U.S.P.Q.2d 1765 (4th Cir. 1993)
(Niemeyer, J., dissenting: “The doctrine of functionality is an extra-statutory doctrine, neither defined nor
limited by the express provisions of the Lanham Trademark Act, which denies a perpetual monopoly of that
which is functional …. The doctrine of functionality is a public policy trump card that may be played against
an otherwise valid trademark …”).

7 Pub. L. No. 105-330, 112 Stat. 3064. See § 19:75 (Ex parte bar to registration), § 20:21 (Ground for
opposition), § 20:56.50 (Ground for cancellation), and § 7:84 (Statutory defense to an incontestably
registered mark).

8 See § 7:72.

9 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29, 121 S. Ct. 1255, 149 L. Ed. 2d 164, 58
U.S.P.Q.2d 1001 (2001).

10 See discussion at § 7:64; Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164, 115 S. Ct. 1300,
1304, 131 L. Ed. 2d 248, 34 U.S.P.Q.2d 1161, 1163 (1995) (“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 …”); Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 36 U.S.P.Q.2d 1417 (Fed. Cir. 1995)
(“[P]atent law, not trade dress law, is the principal means for providing exclusive rights in useful product
features.”); Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 857, 96 U.S.P.Q.2d 1404 (7th Cir. 2010)
(“[T]he functionality doctrine polices the division of responsibilities between patent and trademark law by

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invalidating marks on useful designs.”); Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp.,
986 F.3d 250, 255 (3d Cir. 2021), as amended, (Mar. 10, 2021) (“We are careful to keep trademark law in its
lane.… ‘Trade dress protection … is not intended to create patent-like rights in innovative aspects of product
design.’ … If it did, it could override restrictions on what is patentable and for how long.”).

11 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 115 S. Ct. 1300, 1304, 131 L. Ed. 2d 248,
34 U.S.P.Q.2d 1161, 1163-64 (1995) (“‘In general terms, a product feature is functional’ and cannot serve
as a trademark, ‘if it is essential to the use of purpose of the article or if it affects the cost or quality of the
article,’ that is, if exclusive use of the feature would put competitors at a significant non-reputation-related
disadvantage.”). See Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 519, 4 U.S.P.Q.2d 1497, 23 Fed.
R. Evid. Serv. 1272 (10th Cir. 1987) (The functionality issue “should turn on whether the protection of the
configuration would hinder competition or impinge upon the rights of others to compete effectively in the
sale of goods.”); Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 1190, 10 U.S.P.Q.2d 1001 (7th
Cir. 1989) (The “ultimate question” is whether the copier is able to “compete effectively” without copying
the senior user's design.).

12 See § 7:75.

13 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 121 S. Ct. 1255, 1260, 149 L. Ed. 2d
164, 58 U.S.P.Q.2d 1001 (2001) (Commenting on the lower court's use of this policy as a definition of
functionality: “This was incorrect as a comprehensive definition.”).

14 See McKenna, (Dys)functionality, 48 Hous. L. Rev. 823, 848 (2011) (“[C]ourts have oscillated over time
between two competing visions of functionality in the context of utilitarian product features—one that sees
functionality in structural terms, as a doctrine intended to channel protection for certain features to the patent
system, and another that sees functionality as a safeguard against competitive injury.”).

15 See, e.g., Epic Metals Corp. v. Souliere, 99 F.3d 1034, 40 U.S.P.Q.2d 1705 (11th Cir. 1996) (Applying
both of the tests of functionality and finding a dovetail rib design on a steel form for pouring concrete
to be functional under those tests.); Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197,
1202-1203, 70 U.S.P.Q.2d 1707, 64 Fed. R. Evid. Serv. 617 (11th Cir. 2004) (Applying both of the tests and
finding that the spherical shape and size of a frozen ice cream product was functional.).

16 Second Circuit
W.T. Rogers Co., Inc. v. Keene, 778 F.2d 334, 338, 228 U.S.P.Q. 145, 152 (7th Cir. 1985) (“[T]he concept
of functionality is intended to screen out from the protection of trademark law certain design features even
if they have become so far identified with the manufacturer of a particular brand that consumers may
be confused about the origin of the good if another producer is allowed to adopt the feature.”); Atlantis
Silverworks, Inc. v. 7th Sense, Inc., 42 U.S.P.Q.2d 1904, 1997 WL 128403, *6 (S.D. N.Y. 1997) (Quoting
treatise that for functional items “no amount of evidence of secondary meaning or actual confusion will
create a right to exclude.” Design of a ring was functional.)
Third Circuit
Merchant & Evans, Inc. v. Roosevelt Bldg. Products Co., Inc., 963 F.2d 628, 640 n.12, 22 U.S.P.Q.2d 1730
(3d Cir. 1992) (“Of course, if a product feature is deemed functional, even a likelihood of confusion will
not give rise to a trademark violation.”); Adams Mfg. Corp. v. Rea, 2014 WL 978116, *14 (W.D. Pa. 2014)
(Because a suction cup design was functional, “it is not eligible for registration as a trademark for that reason
alone. Therefore, this Court need not address the alternative reason for refusal; that the design lacks acquired
distinctiveness.”)
Fourth Circuit
TBL Licensing, LLC. v. Vidal, 644 F. Supp. 3d 190, 2022 WL 17573906, *5 (E.D. Va. 2022) (“[E]ven
if functional trade dress has acquired distinctiveness, the Lanham Act bars registration because the matter
should be protected, if at all, by patent law rather than trademark law.” The structure of a heavy duty boot
was functional and not registerable as trade dress.)
Seventh Circuit

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Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 380, 39 U.S.P.Q.2d 1990 (7th Cir. 1996) (Even if plaintiff
proves distinctiveness and a likelihood of confusion, “it cannot prevail if the defendant demonstrates that
the plaintiff's trade dress is functional.”)
Ninth Circuit
Talking Rain Beverage Co. Inc. v. South Beach Beverage Co., 349 F.3d 601, 603, 68 U.S.P.Q.2d 1764
(9th Cir. 2003) (Because a design was found to be functional, “we need not reach the distinctiveness and
likelihood of confusion issues.”)
Eleventh Circuit
Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197, 1202, 70 U.S.P.Q.2d 1707, 64 Fed. R.
Evid. Serv. 617 (11th Cir. 2004) (Because plaintiff failed to prove non-functionality, secondary meaning
and likelihood of confusion were not relevant. “Because we conclude that DDI has not met its burden of
establishing the non-functionality of its product design, we decline to address the other two elements of the
claim.” Colors of ice cream flavors were functional.)
Commentary
Buccafusco & Lemley, Functionality Screens, 103 Va L Rev 1293, 1344 (2017) (“It doesn't matter that the
feature is also source-identifying. If it affects the cost or quality of the product, trade dress law won't protect
it.”)
17 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 121 S. Ct. 1255, 149 L. Ed. 2d 164, 58
U.S.P.Q.2d 1001 (2001).

18 In re Zippo Manufacturing Co., 50 U.S.P.Q.2d 1852, 1999 WL 398181 (T.T.A.B. 1999) (“Inasmuch as
several alternative designs are currently competing in the marketplace for these products, it does not appear
that applicant's design has in any way hindered competition.”). Compare: ASICS Corp. v. Target Corp.,
282 F. Supp. 2d 1020, 67 U.S.P.Q.2d 1835 (D. Minn. 2003) (Distinguishing Zippo and rejecting plaintiff's
argument that while a sports shoe structure might have been functional when developed 40 years previously,
advanced materials obviated the need for the structure and it became nonfunctional. The court found that
the evidence showed that the structure was designed to be and continued to be functional, as advertised by
plaintiff and as shown in patents.). See § 7:94.

19 Eco Mfg. LLC. v. Honeywell Intern., Inc., 357 F.3d 649, 69 U.S.P.Q.2d 1296 (7th Cir. 2003) (Denying
preliminary injunction and noting that the round design had been held functional by the Trademark Board
in 1975 and nonfunctional by the same Board in 1988. However, the court speculated that the introduction
of solid state devices may have eliminated the functional need for a round thermostat: “Thus what was once
functional may half a century later be ornamental.”).

20 Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723, 730, 99 U.S.P.Q.2d 1538
(7th Cir. 2011) (“[Plaintiff's] claim that even if the Quilted Diamond Design was once functional it no longer
is, does not hold water; two of the patents at issue in this case are still in effect.”).

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1 McCarthy on Trademarks and Unfair Competition § 7:64 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

A. FUNCTIONAL FEATURES CANNOT BE TRADE DRESS OR TRADEMARKS

§ 7:64. Policy reasons—Do not create “patent-like” rights of exclusion

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

Avoid a Clash with Utility Patent Law. The traditional policy reason supporting the functionality doctrine is that if functional
features were given trademark or trade dress protection, such protection would clearly clash with the objectives of federal
functional (utility) patent law. This is a venerable policy and can be traced back for a century.1

An exclusive right for functional features can only be gained by utility patent protection, with its tests of novelty and
nonobviousness and duration limited in time, not perpetual protection as under trademark law. In referring to the functionality
doctrine as an “important” one in trademark law, the Supreme Court restated the traditional policy underlying the doctrine:

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. §§ 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).2

The Functionality Rule Marks the Patent—Trademark Boundary. It is the functionality rule that demarcates the boundary
between utility patent law on one side and the domain of trademark and trade dress law on the other.3 This rationale for the
functionality bar is that the policy of free and open competition prohibits trade dress from creating “back-door patents,” by-
passing the strict requirements of utility patent law. All courts use this policy in one way or another as a guide to applying the
functionality bar to a specific case.4

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The Seventh Circuit observed that the functionality rule is the safeguard that mediates conflicts between the policies of freedom
to copy the elements of an expired utility patent and the exclusive rights conferred by federal trade dress law.5 The First Circuit
echoed this theme: “Trademark and trade dress law cannot be used to evade the requirements of utility patents, nor the limits
on monopolies imposed by the Patent Clause [of the Constitution].”6

The Sixth Circuit observed that a purpose of the functionality rule is to “channel” exclusive rights for useful design “from
the realm of trademark to that of patent.” This ensures that trade dress law does not intrude into the domain of patents: “Such
channeling ensures that the high public costs of monopoly are not imposed without an assurance that the design satisfies the
rigorous requirements of patentability, including novelty and non-obviousness, and is protected for only a limited period of
time.”7

Only Utility Patent Law Can Give a Right to Exclude Others from Use of a Functional Feature. There is only one source of
exclusive rights in functional or utilitarian features—utility patent law.8 In holding that functional features cannot be registered
as trademarks, the predecessor to the Federal Circuit stated:

The reason is clear. If a configuration is functional, … then everyone has the right to use the configuration for its
functional purpose, subject only to such exclusive right for a limited time as may exist under the patent laws.9

As Professor Dratler has observed:

At its core, the functionality doctrine is based upon a simple premise: trademark law should not provide a shortcut
to achieve perpetual utility patent protection …. By prohibiting trademark protection from masquerading as utility
patent protection, the doctrine [of functionality] permits manufacturers freely to copy features that are proper
subject matter for utility patent protection but are not patentable, either because they are not new, or because they
represent too low a level of invention.10

In the U.S. system of intellectual property, there is only one legal source of exclusive rights for functional, utilitarian shapes
and features: utility patent law. Neither design patent, copyright, trademark nor unfair competition law can properly make an
“end run” around the strict requirements of utility patent law by giving equivalent rights to exclude.11

A seller cannot avoid the strict utility patent law requirements of novelty and nonobviousness by calling a functional utilitarian
feature “my trademark” or “my trade dress.” The fundamental policy of intellectual property is clear: a competitor can achieve
a valid right to exclude others from using a functional shape or feature only within the law of utility patents—nowhere else.12

Unlike Patents, Trademark Law is Not Designed to Reward Innovation. The Supreme Court has emphasized that trademark
or trade dress protection for a given feature cannot be rationalized on the ground that exclusive rights are needed to “encourage
invention” or reward innovative design.13 These are the policies and goals of patent law, not trademark and trade dress law.14 As
the High Court observed: “The Lanham Act does not exist to reward manufacturers for their innovation in creating a particular
device; that is the purpose of the patent law and its period of exclusivity.”15 Trademark and trade dress law protection for
products, packaging and marketing devices can only be rationalized by a need to protect customers from confusion as to source
or sponsorship.16

Trade Dress in Product Shape and the Functionality Doctrine. When trade dress is claimed for the design of a product itself
(as opposed to such things as packaging or a visual appearance of a Web site) the courts are especially skeptical, wary of creating

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“back-door patents” which could deform competition and tilt the playing field in favor of the established firm over the brash
new-comer.17 Courts are sensitive to this threat, using the functionality rule to “relieve the undeniable tension between the two
bodies of law in this area.”18

Courts must carefully judge claims of trade dress in product shape lest the carefully constructed competitive balance inherent
in the utility patent laws be undermined:

Courts must proceed with caution in assessing claims to unregistered trademark protection in the design of
products so as not to undermine the objectives of the patent laws …. To avoid undermining the purpose of the
patent laws to place useful innovations in the public domain after expiration of a limited monopoly, courts must
be sensitive to whether a grant of trade dress protection would close all avenues to a market that is otherwise open
in the absence of a valid patent.19

Distinctiveness and Functionality. An argument sometimes made against the protection of functional features is that the
distinctiveness of a symbol varies in inverse proportion to its functionality. If a feature is functional, it is likely that all similar
articles will have a similar functional feature, and one seller's feature is not likely to evoke any response in buyers that it is
unique or is a distinctive symbol of origin.20 As Judge Posner observed: “Functional features are, by definition, those likely to
be shared by different producers of the same product and therefore are unlikely to identify a particular producer.”21 This segues
into the approach used by some courts that a commonly used feature is “generic” and hence incapable of trade dress protection
regardless of any evidence of secondary meaning.22

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Footnotes
1 See Pope Automatic Merchandising Co. v. McCrum-Howell Co., 191 F. 979, 981-982 (C.C.A. 7th Cir. 1911)
(“[I]f by means of unfair trade suits he could shut out other manufacturers who plainly intended to share in
the benefits of the unpatented utilities … he would be given gratuitously a monopoly more effective than
that of the unobtainable patent in the ratio of eternity to 17 years.”).

2 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164-165, 115 S. Ct. 1300, 131 L. Ed. 2d
248, 34 U.S.P.Q.2d 1161, 1163 (1995). See Davis, Copying in the Shadow of the Constitution: The
Rational Limits of Trade Dress Protection, 80 Minn. L. Rev. 595 (1996) (arguing that “nonfunctionality is
a constitutional prerequisite for trade dress protection that is immune to statutory abrogation”); McKenna,
(Dys)functionality, 48 Hous. L. Rev. 823, 827 (2011) (“Functionality, according to the Supreme Court, is not
simply about competitive need for product features; it is also, even primarily, intended to police the boundary
between trademark and patent law by channeling protection of useful product features exclusively to the
patent system.”); Rierson, Toward a More Coherent Doctrine of Trademark Genericism and Functionality:
Focusing on Fair Competition, 27 Fordham IP Media & Enter L Jour 691, 731 (2017) (“[T]he functionality
principle has traditionally been viewed by courts and commentators alike as a bulwark between trade dress
protection, under both the Lanham Act and the common law, and the bounds of federal patent law.”).

3 Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 857, 96 U.S.P.Q.2d 1404 (7th Cir. 2010) (“[T]he
functionality doctrine polices the division of responsibilities between patent and trademark law by
invalidating marks on useful designs.”).

4 Eleventh Circuit
Wilhelm Pudenz, GmbH v. Littlefuse, Inc., 177 F.3d 1204, 1208, 51 U.S.P.Q.2d 1045 (11th Cir. 1999) (“The
job of working out this balance is given to patent law, and not trademark law. …. Consequently, when

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the operation of the Lanham Act would upset the balance struck by the Patent Act, the Lanham Act must
yield. The functionality doctrine serves this purpose by eliminating the possibility of a perpetual exclusive
right to the utilitarian features of a product under trademark law, which would be impossible (as well as
unconstitutional) under the Patent Act.”); Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d
1197, 1202-1203, 70 U.S.P.Q.2d 1707, 64 Fed. R. Evid. Serv. 617 (11th Cir. 2004) (The spherical shape and
size of a frozen ice cream product was functional.)
First Circuit
I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 38, 49 U.S.P.Q.2d 1225, 1232 (1st Cir. 1998) (“If the
VOLA design or aspects of it are functional, then the only source of exclusive rights would be in a utility
patent.”)
Second Circuit
Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 977-978, 1 U.S.P.Q.2d 2026 (2d Cir. 1987) (“Courts
must proceed with caution in assessing claims to unregistered trademark protection in the design of products
so as not to undermine the objectives of the patent laws.”)
Third Circuit
Sylvania Elec. Products, Inc. v. Dura Elec. Lamp Co., 247 F.2d 730, 732, 114 U.S.P.Q. 434 (3d Cir. 1957)
(“The purpose of this rule is obviously to prevent the grant of perpetual monopoly by the issuance of a trade-
mark in the situation where a patent has either expired, or for one reason or another, cannot be granted.”);
Keene Corp. v. Paraflex Industries, Inc., 653 F.2d 822, 824, 211 U.S.P.Q. 201 (3d Cir. 1981) (“The purpose
of the rule precluding trademark significance is to prevent the grant of a perpetual monopoly to features
which cannot be patented. … Products or features which have not qualified for patent protection but which
are functional are in the public domain and are fair game for imitation and copying.”)
Fifth Circuit
Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 355, 62 U.S.P.Q.2d 1534 (5th Cir. 2002)
(Plaintiff failed to carry its burden of proving nonfunctionality of disposable pipette tips used to measure
liquids. “Trade dress protection, however, is not intended to create patent-like rights in innovative aspects of
product design. Trade dress protection, unlike patent law, does not foster innovation by preventing reverse
engineering or copying of innovative product design features.”)
Sixth Circuit
Fuji Kogyo Co., Ltd. v. Pacific Bay Intern., Inc., 461 F.3d 675, 686, 79 U.S.P.Q.2d 1894, 2006 FED App.
0312P (6th Cir. 2006) (Finding functional the design of fishing rod line guides which had been the subject
of utility patents.); Groeneveld Transport Efficiency, Inc. v. Lubecore Intern., Inc., 730 F.3d 494, 508, 108
U.S.P.Q.2d 1022 (6th Cir. 2013) (Design of a vehicle lubrication pump was found to be functional and not
protectable by trade dress law.)
Seventh Circuit
Vaughan Mfg. Co. v. Brikam Intern., Inc., 814 F.2d 346, 349, 1 U.S.P.Q.2d 2067 (7th Cir. 1987) (“The
defense exists because granting exclusive rights to functional features of products is the domain of patent, not
trademark law.”); Specialized Seating, Inc. v. Greenwich Industries, LP, 616 F.3d 722, 727, 96 U.S.P.Q.2d
1580 (7th Cir. 2010) (“Another goal, as Traffix stressed, is to separate the spheres of patent and trademark
law and to ensure that the term of a patent is not extended beyond the period authorized by the legislature.”)
Eighth Circuit
Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 873, 31 U.S.P.Q.2d 1481 (8th Cir. 1994) (“Protecting a
functional package as a trademark, however, impedes competition by preventing the public from copying
a useful article that it has the right to copy.”)
Ninth Circuit
Disc Golf Ass'n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006, 48 U.S.P.Q.2d 1132 (9th Cir. 1998)
(Finding functional the parabolic shape of a basket of hanging chains used to catch flying discs (“Frisbees”)
at a target in a game of “Disc Golf.” “[Defendant]contends that, by claiming trademark or trade dress rights
in the parabolic chain design, DGA is impermissibly attempting to extend its expired patent and to maintain
monopoly control in perpetuity over the market for disc golf targets.”)
Federal Circuit
Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1580, 36 U.S.P.Q.2d 1417 (Fed. Cir. 1995) (“[P]atent law,
not trade dress law, is the principal means for providing exclusive rights in useful product features.”);

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Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1273, 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002) (“The
functionality doctrine thus accommodates trademark law to the policies of patent law.”)
Trademark Board
In Re Caterpillar Inc., 43 U.S.P.Q.2d 1335, 1997 WL 424965 (T.T.A.B. 1997) (“The public policy rationale
behind the functionality doctrine [is that] trademark law should not provide a means to achieve perpetual
utility patent protection.”)
5 Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 288, 46 U.S.P.Q.2d 1026 (7th Cir. 1998) (“The
safeguard against an impermissible extension of a patent monopoly by a trademark … is the functionality
doctrine.”); Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 857, 96 U.S.P.Q.2d 1404 (7th Cir. 2010)
(“[T]he functionality doctrine polices the division of responsibilities between patent and trademark law by
invalidating marks on useful designs.”).

6 I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 38, 49 U.S.P.Q.2d 1225, 1232 (1st Cir. 1998).

7 Groeneveld Transport Efficiency, Inc. v. Lubecore Intern., Inc., 730 F.3d 494, 508, 108 U.S.P.Q.2d 1022
(6th Cir. 2013) (Design of a vehicle lubrication pump was found to be functional and not protectable by
trade dress law.).

8 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164, 115 S. Ct. 1300, 1304, 131 L. Ed. 2d 248, 34
U.S.P.Q.2d 1161, 1163 (1995) (“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 …”); Elmer v.
ICC Fabricating, Inc., 67 F.3d 1571, 36 U.S.P.Q.2d 1417 (Fed. Cir. 1995) (“[P]atent law, not trade dress law,
is the principal means for providing exclusive rights in useful product features.”).

9 Best Lock Corp. v. Schlage Lock Co., 56 C.C.P.A. 1472, 413 F.2d 1195, 1199, 162 U.S.P.Q. 552 (1969).

10 Dratler, Trademark Protection for Industrial Designs, 1988 U. Ill. L. Rev. 887, 938-40 (1988) (a thought-
provoking analysis of the functionality issue).

11 See Fuji Kogyo Co., Ltd. v. Pacific Bay Intern., Inc., 461 F.3d 675, 686, 79 U.S.P.Q.2d 1894, 2006 FED
App. 0312P (6th Cir. 2006) (Quoting treatise with approval and finding functional the design of fishing rod
line guides which had been the subject of utility patents).

12 See Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145, 1154, 29 U.S.P.Q.2d 1507, 1514 (7th Cir. 1994)
(Court rejected an attempt to include the internal parts of a water meter in the definition of protected trade
dress. “[T]his court is loath to protect the clearly functional aspects of a product in the manner suggested
here by the plaintiff. The proper method of protecting the internal parts of plaintiff's measuring chamber is
by patent; if such protection is unavailable, or if plaintiff did not avail itself of such protection, it should
not seek to deprive consumers of the benefits of competition by means of over-broad characterization of
its ‘trade dress.’”).

13 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164, 115 S. Ct. 1300, 1304, 131 L. Ed. 2d 248, 34
U.S.P.Q.2d 1161, 1163 (1995) (“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 …”).

14 See, e.g., Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 1431, 1446, 32 U.S.P.Q.2d 1724,
1736 (3d Cir. 1994) (“[I]t is not the purpose of unfair competition law, under the guise of either consumer
protection or the protection of business good will, to implement a policy of encouraging innovative designs
by protecting them once designed …. Those issues are the province of copyright and patent laws.”);
Fabrication Enterprises, Inc. v. Hygenic Corp., 64 F.3d 53, 59 n.4, 35 U.S.P.Q.2d 1753 (2d Cir. 1995) (“The
Lanham Act is not concerned with protecting innovation by giving the innovator a monopoly, which is the
function of patent law.”); Publications Intern., Ltd. v. Landoll, Inc., 164 F.3d 337, 341-343, 49 U.S.P.Q.2d
1139 (7th Cir. 1998) (“[T]rademark law is not intended to confer product monopolies …. [T]rademark and
trade dress law does not protect originality; they protect signifiers of source.”); Eppendorf-Netheler-Hinz
GMBH v. Ritter GMBH, 289 F.3d 351, 355, 62 U.S.P.Q.2d 1534 (5th Cir. 2002) (“Trade dress protection,

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unlike patent law, does not foster innovation by preventing reverse engineering or copying of innovative
product design features.”).

15 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 34, 121 S. Ct. 1255, 1258-1262, 149 L. Ed.
2d 164, 58 U.S.P.Q.2d 1001 (2001).

16 See Lemley, Property, Intellectual Property and Free Riding, 83 Texas L. Rev. 1031, 1058 (2005)
(“[I]ncentives cannot justify intellectual property rights in trademarks or the right of publicity. The economic
support for those laws must be found elsewhere, in efforts to reduce consumer search costs, avoid confusion
or protect privacy.”).

17 See § 8:5.

18 Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 383, 39 U.S.P.Q.2d 1990 (7th Cir. 1996) (“Courts must
recognize that exploiting the goodwill of the article—the attractive features, of whatever nature, that the
product holds for consumers—is robust competition; only deceiving consumers, or exploiting the goodwill
of another producer, is unfair competition.” Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d
1431, 1445, 32 U.S.P.Q.2d 1724 (3d Cir. 1994)).

19 Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 977-978, 1 U.S.P.Q.2d 2026 (2d Cir. 1987) See L.A.
Gear Inc. v. Thom McAn Shoe Co., 12 U.S.P.Q.2d 1001, 1989 WL 282850 (S.D. N.Y. 1989), aff'd in part,
rev’d in part on other grounds, 988 F.2d 1117, 25 U.S.P.Q.2d 1913 (Fed. Cir. 1993) (“Courts must be wary
not to undermine the protection of the patent laws by giving trade dress protection such a wide scope that it
unduly reduces the number of functional products that could be introduced into the market.”).

20 See I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 38-39, 49 U.S.P.Q.2d 1225, 1232 (1st Cir. 1998)
(quoting previous paragraph from the treatise with approval). Compare In re Morton-Norwich Products,
Inc., 671 F.2d 1332, 1343, 213 U.S.P.Q. 9 (C.C.P.A. 1982) (Issues of functionality and distinctiveness must
“be kept separate from one another.”).

21 Publications Intern., Ltd. v. Landoll, Inc., 164 F.3d 337, 340-343, 49 U.S.P.Q.2d 1139 (7th Cir. 1998)
(“Unabridged dictionaries, board-page books for infants, travel books, encyclopedias, atlases, law books,
and comic books are other examples of book genres that contain innumerable look-alikes published by
different publishers, look-alikes that do not, however, confuse consumers about the identity of the publisher
of any particular book.”).

22 See discussion at § 8:6.50. See, e.g., Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32, 35
U.S.P.Q.2d 1284 (2d Cir. 1995) (“[A]n idea, a concept or a generalized type of appearance” is “generic” and
not capable of trade dress protection regardless of the acquisition of secondary meaning.); Mana Products,
Inc. v. Columbia Cosmetics Mfg., Inc., 65 F.3d 1063, 1069-1070, 36 U.S.P.Q.2d 1176 (2d Cir. 1995) (No
valid trade dress in the shape and color of a black cosmetic case because “where it is the custom in a particular
industry to package products in a similar manner, a trade dress done in that style is likely to be generic.”).

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1 McCarthy on Trademarks and Unfair Competition § 7:65 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

A. FUNCTIONAL FEATURES CANNOT BE TRADE DRESS OR TRADEMARKS

§ 7:65. Policy reasons—Right to compete: available alternative designs

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

This rationale for the functionality rule is based on the policy that courts must preserve free and effective competition by ensuring
that competitors can copy features that they need to compete effectively.1 The number of alternative designs available is often
used as a guide to compliance with this rationale.2 The Supreme Court has cautioned that this rationale is a statement of policy
and is not to be used as a legal definition of what features are to be deemed to be “functional.”3

In determining whether conferring trade dress protection would unduly restrict “competition,” the court should not define the
market as being identical with plaintiff's product, for, by definition, an injunction would prevent others from imitating, and
hence “competing” as to that design defined in the injunction. Rather, “competition” should be defined more broadly to include
reasonable alternatives for the same purpose, as is done in antitrust law.4

The Restatement champions the view that since the functionality rule is an attempt to create a competitive balance between the
policies of exclusive rights in trade symbols and free competition by imitation, “[t]he rule excluding functional designs from the
subject matter of trademarks is an attempt to identify those instances in which the anticompetitive consequences of exclusive
rights outweigh the public and private interest in protecting distinctive designs.”5

In this view, the “ultimate question” is whether the copier is able to “compete effectively” without copying the senior user's
design.6 It is in this sense that some courts state that the functionality issue “should turn on whether the protection of the
configuration would hinder competition or impinge upon the rights of others to compete effectively in the sale of goods.”7 As
Justice White concluded, “Reproduction of a functional attribute is legitimate competitive activity.”8

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In previous editions of this treatise, the author opined that while the “right to compete” is an important policy goal of the
functionality doctrine, it is much too vague to serve as the courtroom test of what is or is not “functional.”9 In its 2001 Traffix
decision, the U.S. Supreme Court agreed, cautioning that this policy rationale is not to be used as a legal definition of what
features are to be deemed to be “functional.”10

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.763, 774 120 L. Ed. 2d 615, 112 S. Ct. 2753 (1992) (“The
Fifth Circuit holds that a design is legally functional, and thus unprotectable, if it is one of a limited number
of equally efficient options available to competitors and free competition would be unduly hindered by
according the design trademark protection.”); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159,
169, 115 S. Ct. 1300, 131 L. Ed. 2d 248, 34 U.S.P.Q.2d 1161 (1995) (“The functionality doctrine thus
protects competitors against a disadvantage (unrelated to recognition or reputation) that trademark protection
might otherwise impose, namely, their inability reasonably to replicate important non-reputation-related
product features.”); Sunbeam Prods. Inc. v. West Bend Co., 123 F.3d 246, 44 U.S.P.Q.2d 1161 (5th Cir.
1997) (proof that several other manufacturers compete successfully without using the plaintiff's product
design is evidence of nonfunctionality because granting the exclusive rights of trade dress will not impinge
on the rights of others to compete effectively, which is “the litmus test of functionality”); In re Heatcon, Inc.,
116 U.S.P.Q.2d 1366, 1379, 2015 WL 6166638, *13 (T.T.A.B. 2015) (“To afford registration to functional
designs would inhibit legitimate competition by, in effect, granting a monopoly to a non-reputational, or
non-source-identifying, feature of a product.”).

2 See discussion at § 7:75.

3 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 149 L. Ed. 2d 164, 58 U.S.P.Q.2d 1001
(U.S. 2001), on remand to, 2001 WL 630049 (6th Cir. 2001) (Commenting on the lower court's use of the
policy rationale as a definition of functionality: “This was incorrect as a comprehensive definition.”).

4 See, e.g., Topps Co. v. Gerrit J. Verburg Co., 41 U.S.P.Q.2d 1412, 1419 (S.D.N.Y. 1996) (improper to
define the competitive market as diamond ring shaped lollipops [plaintiff's trade dress] rather than the candy
industry in general). Accord: Ford Motor Co. v. Lloyd Design Corp., 184 F. Supp. 2d 665, 62 U.S.P.Q.2d
1109 (E.D. Mich. 2002) (the product category is not auto floor mats with FORD trademarks on them, but
auto floor mats with any indicia on them.).

5 Restatement Third, Unfair Competition § 17, comment a (1995).

6 Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 10 U.S.P.Q.2d 1001 (7th Cir. 1989) (exercise
bicycle held functional).

7 Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 4 U.S.P.Q.2d 1497, 1501 (10th Cir. 1987).

8 Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 863, 72 L. Ed. 2d 606, 102 S. Ct. 2182,
214 U.S.P.Q. 1 (1982) (concurring opinion).

9 Professor Dratler has observed: “Because it is little more than a statement of the doctrine's purpose, it is
policy masquerading as doctrine.” Dratler, Trade Dress Protection for Product Configurations: Is There a
Conflict with Patent Policy?, 24 AIPLA Q. J. 427, 509 (1966).

10 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 149 L. Ed. 2d 164, 58 U.S.P.Q.2d 1001
(U.S. 2001), on remand to, 2001 WL 630049 (6th Cir. 2001) (Commenting on the lower court's use of the
policy as a definition of functionality: “This was incorrect as a comprehensive definition.”).

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1 McCarthy on Trademarks and Unfair Competition § 7:66 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

A. FUNCTIONAL FEATURES CANNOT BE TRADE DRESS OR TRADEMARKS

§ 7:66. De facto secondary meaning for functional features

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

Even if a functional feature has achieved consumer recognition (secondary meaning) of that feature as an indication of origin, the
feature cannot serve as a legally protectable symbol.1 Public acceptance of a functional feature as an indication of source, even
as evidenced by a consumer survey, is not determinative of trademark rights in functional features.2 Preservation of freedom to
copy unpatented functional features controls and trumps evidence of consumer recognition.3 As the Supreme Court observed,
once a feature is determined to be functional, then ” secondary meaning is irrelevant because there can be no trade dress
protection in any event… Functionality having been established, whether [plaintiff's] dual-spring design has acquired secondary
meaning need not be considered.”4

Any consumer recognition that attaches to functional features is called “de facto secondary meaning” by the Court of Customs
and Patent Appeals.5 The rule against protection for functional shapes prevails over recognition accorded consumers' mental
associations of the shape with a single source:

[A]s to some … shapes the courts will never apply the “secondary meaning” doctrine so as to create monopoly
rights. The true basis of such holdings is not that they cannot or do not indicate source to the purchasing public,
but that there is an over-riding public policy in preventing their monopolization, of preserving the public right to
copy. A certain amount of customer confusion may even be tolerated in order to give the public the advantages
of free competition.6

Thus, even though buyers may associate the functional shape with a single source, the separate policy of forbidding trademark
protection prevails.7 Such consumer association is dismissed as “de facto secondary meaning.”

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As Judge Aldrich noted, when imitated functional features cause loss of sales, one may express sympathy with the patent-less
innovator, but imitation is permitted and encouraged by the policy of functionality:

Plaintiff designed a stove with several functional innovations. These were enthusiastically received in the
marketplace. Defendant, in imitating them, is doubtless sharing in the market formerly captured by the plaintiff's
skill and judgment. While we sympathize with plaintiff's disappointment at losing sales to an imitator, this is a
fact of business life.8

A functional or utilitarian article or feature cannot be federally registered as a trademark either on the Principal Register or on
the Supplemental Register.9

The Third Circuit appeared to make a break with traditional doctrine, indicating that if a functional feature has acquired
secondary meaning, an imitator could be required to take reasonable steps to minimize source confusion. That is, if it is not
commercially feasible for defendant to design a product incorporating the functional feature without causing probable confusion,
then defendant may still be required “to take reasonable steps to minimize the confusion.”10 This is a controversial viewpoint
at odds with the policy of competitive balance embodied in the functionality doctrine.

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Crescent Tool Co. v. Kilborn & Bishop Co., 247 F. 299 (2d Cir. 1917) (Size and shape of wrench. Learned
Hand observed: "The cases of so-called 'nonfunctional' unfair competition, … are only instances of the
doctrine of 'secondary' meaning. All of them presuppose that the appearance of the article, like its descriptive
title in true cases of 'secondary' meaning, has become associated in the public mind with the first comer as
manufacturer or source, … ."); A. C. Gilbert Co. v. Shemitz, 45 F.2d 98 (2d Cir. 1930) (size and shape of
fruit juice extractor); Smith, Kline & French Laboratories v. Waldman, 69 F. Supp. 646, 70 U.S.P.Q. 446
(D. Pa. 1946) (color, size and shape of drug tablet); Schwinn Bicycle Co. v. Murray Ohio Mfg. Co., 339
F. Supp. 973, 172 U.S.P.Q. 14 (M.D. Tenn. 1971), aff'd, 470 F.2d 975, 176 U.S.P.Q. 161 (6th Cir. 1972)
(knurled surface of bicycle rim); In re North American Phillips Corp., 217 U.S.P.Q. 926 (T.T.A.B. 1983)
(triangular arrangement of three shaving heads in an electric razor); Eco Mfg. LLC. v. Honeywell Intern.,
Inc., 357 F.3d 649, 69 U.S.P.Q.2d 1296 (7th Cir. 2003) (a functional shape cannot be a trademark even if
it identifies the source of the product).

2 In re North American Phillips Corp., 217 U.S.P.Q. 926 (T.T.A.B. 1983) (any evidence of secondary meaning,
including a consumer survey showing high consumer association, cannot transform a utilitarian shape into
a registrable trademark).

3 In re Deister Concentrator Co., 289 F.2d 496, 129 U.S.P.Q. 314 (C.C.P.A. 1961). Accord: In re Shenango
Ceramics, Inc., 362 F.2d 287, 150 U.S.P.Q. 115 (C.C.P.A. 1966).

4 TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 1255, 1258–1262, 149 L. Ed. 2d 164, 58
U.S.P.Q.2d 1001 (U.S. 2001), on remand to, 2001 WL 630049 (6th Cir. 2001).

5 In re Shenango Ceramics, Inc., 362 F.2d 287, 150 U.S.P.Q. 115 (C.C.P.A. 1966). In re Honeywell, Inc., 187
U.S.P.Q. 576 (T.T.A.B. 1975), aff'd, 532 F.2d 180, 189 U.S.P.Q. 343 (C.C.P.A. 1976). See In re Pollak Steel
Co., 314 F.2d 566, 136 U.S.P.Q. 651 (C.C.P.A. 1963); In re Seaquist Valve Co. Div. of Pittway Corp., 169
U.S.P.Q. 245 (T.T.A.B. 1971).

Some cases refuse to give any legal significance to the existence of secondary meaning in functional shapes,
without using the term “de facto secondary meaning.” See, e.g., Alan Wood Steel Co. v. Watson, 150 F.

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§ 7:66. De facto secondary meaning for functional features, 1 McCarthy on Trademarks...

Supp. 861, 113 U.S.P.Q. 311 (D.D.C. 1957); J. R. Clark Co. v. Murray Metal Products Co., 219 F.2d 313,
104 U.S.P.Q. 224 (5th Cir. 1955). See §§ 12:47 to 12:50.

6 In re Deister Concentrator Co., 289 F.2d 496, 129 U.S.P.Q. 314 (C.C.P.A. 1961). Accord: In re Water Gremlin
Co., 635 F.2d 841, 208 U.S.P.Q. 89 (C.C.P.A. 1980) (“To the extent [that permitted imitation of functional
features] causes a modicum of confusion of the public, it will be tolerated.”). See In re Worlds Finest
Chocolate, Inc., 474 F.2d 1012, 177 U.S.P.Q. 205 (C.C.P.A. 1973) (if the shape is not primarily functional,
de facto secondary meaning becomes sufficient (de jure) to prove distinctiveness for registration).

7 See Keene Corp. v. Paraflex Industries, Inc., 653 F.2d 822, 211 U.S.P.Q. 201 (3d Cir. 1981) (nonfunctionality
and secondary meaning are separate elements: proof of secondary meaning does not overcome proof of
utilitarian function).

8 Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 626 F.2d 193, 206 U.S.P.Q. 961 (1st Cir. 1980).

9 See §§ 7:94, 7:95.

10 American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1 U.S.P.Q.2d 1001 (3d Cir. 1986)
(The court meant that “once plaintiffs established that this combination of elements had acquired secondary
meaning, [defendant] could be required to select alternative nonfunctional features and utilize imitated
functional ones in such a way as to avoid confusion as to source if that is feasible.”).

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§ 7:67. Author's comment: “Functionality” should be defined..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:67 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

B. UTILITARIAN FUNCTIONALITY

§ 7:67. Author's comment: “Functionality” should be defined in purely utilitarian terms

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

The courts have had considerable difficulty in getting words around a universal definition of “functionality” for purposes of
disqualifying trademark and trade dress claims.1 As Judge Easterbrook admitted, “Figuring out which designs meet this criterion
[of functionality] can be tricky.”2

A few courts have even turned the concept inside out, saying that features that are “aesthetically functional” cannot qualify
as trademarks or trade dress.3 Some of the semantic problem lies in the multiple meanings of the word “functional.” This can
lead to dead ends of linguistic absurdity, such as saying that because a well-designed corporate logo “functions” as a visually
attractive image, it is “functional” and cannot be a trademark.

Some courts have tried to define “functionality” by asking if this feature is something that other producers “would have to
have as part of the product in order to be able to compete effectively in the market,” even telling a jury to apply this test.4
The semantic danger of this kind of definition is that, for example, competitors of the Coca-Cola Company would dearly love
to be able to use the classic and famous Coca-Cola “coke bottle” contour shape. Do competitors need it in order to “compete
effectively”? Of course not, but such a definition is so open and vague as to permit a jury or even a judge to get sidetracked
from the true meaning of what is “functional.”

The traditional and primary rationale for the functionality bar is that the policy of free and open competition prohibits trade
dress from creating “back-door patents,” substituting for the strict requirements of utility patent law.5 Therefore it follows that
the test of what is “functional” should be very similar to that of patent law. That is, “functional” features or designs should be
defined as those that are driven by practical, engineering-type considerations such as making the product work more efficiently,
with fewer parts and longer life, or with less danger to operators, or be shaped so as to reduce expenses of delivery or damage
in shipping. Under this rationale, these kind of utilitarian considerations should define the scope of what is “functional.”6

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To boil it down to a phrase: something is “functional” if it works better in this shape.7 Alternatively, as the Seventh Circuit
explained it: “So if a design enables a product to operate, or improves on a substitute design in some way (such as by making
the product cheaper, faster, lighter, or stronger), then the design cannot be trademarked ….”8

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 The many variations of definitions are arranged according to circuit at § 7:69.

2 Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 857, 96 U.S.P.Q.2d 1404 (7th Cir. 2010). See Kohler Co.
v. Moen Inc., 12 F.3d 632, 649, 29 U.S.P.Q.2d 1241, 1248 (7th Cir. 1993) (“The line between nonfunctional
and functional is difficult to draw and an obvious source of litigation.”).

3 See §§ 7:79 to 7:83.

4 W.T. Rogers Co., Inc. v. Keene, 778 F.2d 334, 346, 228 U.S.P.Q. 145, 152 (7th Cir. 1985). See § 7:69.50.

5 See § 7:64.

6 For example, the Supreme Court used as an illustration of a “functional” feature a shape dictated by
engineering-driven utilitarian advantages: “the special illumination-enhancing shape of a new patented light
bulb” and approved of a definition that a feature is “functional” “if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article.” Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S.
159, 165, 115 S. Ct. 1300, 1304, 131 L. Ed. 2d 248, 34 U.S.P.Q.2d 1161 (1995).

7 See cases using this definition cited at § 7:69.50.

8 Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 857, 96 U.S.P.Q.2d 1404 (7th Cir. 2010) (Circular beach
towel is functional and is not a valid trademark.).

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1 McCarthy on Trademarks and Unfair Competition § 7:68 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

B. UTILITARIAN FUNCTIONALITY

§ 7:68. Plethora of definitions—Two basic policies of functionality

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

The Two Underlying Policies. As described previously,1 there are two rationales underlying the functionality bar: (1)
accommodation to the principle that there is only one legal source of exclusive rights in utilitarian features—utility patent law;
and (2) preserving free and effective competition by ensuring that competitors can copy features that they need to “compete
effectively.” The number of alternative designs available is often used as a guide to compliance with the second rationale.2
In resolving the issue of trade dress functionality, some courts place weight on one rationale while other courts place all the
emphasis on the other. The Supreme Court has cautioned that rationale (2) above is a statement of policy and is not to be used
as a legal definition of what features are to be deemed to be “functional.”3

In the author's view, both policies are important as guides to the ultimate decision of whether a certain feature or design is to
be dubbed “functional” and hence, absent a valid utility patent, free for all to use and copy. That is, in the author's view, both
policy goals of “functionality” are relevant and useful in determining whether the policies of free competition dictate that a
given feature should be a candidate for the right to exclude that is given by trade dress law.

The Puzzle of the Vornado Fan. Courts that define functionality solely in terms of the second rationale of preserving effective
competition have, in the author's view, sometimes painted themselves into an uncomfortable and illlogical corner. For example,
the Tenth Circuit in the 1995 Vornado case defined functionality solely in terms of the availability to competitors of alternative
designs, rejecting the engineering-driven utility definition.4 In the court's view, if there were a reasonable number of other
designs available, then the design was not “functional,” even if the design was the subject of a utility patent and even if the
seller in advertising touted functional advantages.5 This truncated view of what was “functional” led the court to the peculiar
conclusion that a shape which was an element of a patent claim and which was described as functionally superior in the patent
disclosure,6 could be one competitor's exclusive property as trade dress upon proof of inherent distinctiveness or secondary

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meaning.7 In its 2001 Traffix decision, the Supreme Court held that a Vornado -type definition of functionality was incorrect.
Thus, this kind of truncated definition of “functionality” can no longer be used.8

The Vornado court then had to devise a public policy to escape from the conundrum it created for itself by its narrow definition
of functionality. The court found relief in the policy of patent law which permits the free competitive use of a configuration
covered by an expired patent.9 Therefore, concluded the court, even a configuration “nonfunctional” under the law of trade
dress (under the court's narrow definition) must be free for all to copy if such a configuration was “a significant inventive
component” of an invention covered by a utility patent. That is, in this clash of policies, patent law policy trumps trade dress
law policy and freedom to copy is the rule:

We hold that where a disputed product configuration is part of a claim in a utility patent, and the configuration
is a described, significant aspect of the invention, see 35 U.S.C. § 112, so that without it the invention would not
fairly be said to be the same invention, patent law prevents its protection as trade dress, even if the configuration
is nonfunctional.10

Other Courts Disagree with the Vornado Analysis. Other courts have disagreed with the view of the Tenth Circuit in Vornado.
For example, the Seventh Circuit rejected the view that the mere disclosure of a product feature in the specification of an expired
patent automatically precludes trade dress protection to that feature. Rather, said the court, the traditional functionality rule is
the safeguard that mediates conflicts between the policies of freedom to copy the elements of an expired utility patent and the
exclusive rights conferred by federal trade dress law: “[W]e find that there is no per se prohibition against the features disclosed
in a patent receiving trademark protection after the patent has expired.”11 And the Federal Circuit noted that the Tenth Circuit
“stands alone” in its eccentric view of a patent-trade dress conflict.12

Author's Comment on the Vornado Case. In the author's view, while the result in Vornado is correct, the reasoning is in
error. There was no need for the court to define and then solve a policy conflict between federal patent policy and trade dress
law. Under the traditional trade dress definition of “functionality” as being an engineering-driven utilitarian design, the spiral
vane grill was functional as evidenced by the plaintiff's assertions of utility in advertising and in its utility patent. The court's
erroneous abridged and truncated definition of “functionality” as being solely determined by available marketplace alternatives
led it into creating a more difficult problem than was necessary to reach the result the court desired and which was competitively
appropriate.13 The Supreme Court later made it clear that the Vornado court's definition of functionality was in error.14

The Fifth Circuit agreed, noting that use of a proper definition of functionality would have avoided any conflict between patent
and trade dress law.15 The Supreme Court in its 2001 Traffix decision agreed that it is the functionality rule that mediates
conflicts between patent law and trade dress law. While the Court in Traffix granted a hearing in the case to resolve the conflict
between other circuits and the Tenth Circuit's Vornado rule that even nonfunctional features in a utility patent can never be the
subject of trade dress, the Supreme Court did not in fact resolve that conflict.16 But because of the way the Supreme Court
resolved the issue in Traffix, the author believes that the Tenth Circuit's Vornado ruling cannot survive after the Supreme Court's
2001 decision in Traffix.17

Fig. 7:68A. VORNADO FAN SPIRAL GRILL DESIGN

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Footnotes
1 See § 7:63.

2 See discussion at § 7:75.

3 TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 1255, 1260, 149 L. Ed. 2d 164, 58 U.S.P.Q.2d
1001 (U.S. 2001), on remand to, 2001 WL 630049 (6th Cir. 2001) (Commenting on the lower court's use of
the policy as a definition of functionality: “This was incorrect as a comprehensive definition.”).

4 Vornado Air Circulation Sys. v. Duracraft Corp., 58 F.3d 1498, 1507, 35 U.S.P.Q.2d 1332 (10th Cir. 1995)
(“If competitors need to be able to make an equally competitive product, it is functional, but if they do not,
it may be nonfunctional. The availability of equally satisfactory alternatives for a particular feature, and not
its inherent usefulness, is often the fulcrum on which Lanham Act functionality turns.” Emphasis added.).

5 Vornado, 58 F.3d at 1506, 35 U.S.P.Q.2d at 1339 (“Despite what appears to be a widespread perception that
product configurations covered by utility patents are automatically functional for Lanham Act purposes,
the district court in our case ably demonstrated that this is not so. Configurations can simultaneously be
patentably useful, novel, and nonobvious and also nonfunctional, in trade dress parlance.”). In its advertising,
Vornado touted its fan grill shape as a “true achievement in aerodynamic efficiency” accomplishing “a high
degree of safety and functionality.” 35 U.S.P.Q.2d at 1333.

6 Vornado's utility patent No. 4,927,324 (May 22, 1990), reissued 34,551 (Feb. 22, 1994), stated in the
disclosure that “the principal object” of the invention was “a new and improved front grill and duct structure
which increases the fan's capacity and efficiency while decreasing its sound over the prior art grills.” The
specification disclosed that the curved ribs of the grill “as compared with a conventional straight rib, provides
a less rigid grill structure which can be desirable under certain circumstances such as impact shocks.” Claim
one of the patent contains five elements, one of which is a circular grill which was alleged to constitute
Vornado's trade dress. The defendant did not infringe the patent. In the author's view, these references in the

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disclosure and claims of the patent were strong and persuasive evidence of trade dress “functionality” in the
traditional engineering-driven utilitarian sense. See § 7:89.

7 This could be the situation where a given patented technology has several marketplace alternatives. Each
available design is “utilitarian” in a patent and engineering sense, but lack of the ability to use any one design
does not bar effective competition because several alternative utilitarian designs are available.

8 TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 1255, 1260, 149 L. Ed. 2d 164, 58 U.S.P.Q.2d
1001 (U.S. 2001), on remand to, 2001 WL 630049 (6th Cir. 2001) (Commenting on the lower court's use
of the “competitive need” policy as a definition of functionality and quoting Vornado as an example: “This
was incorrect as a comprehensive definition.”).

9 See, e.g., Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 120, 83 L. Ed. 73, 59 S. Ct. 109 (1938) (“ [O]n
termination of a patent there passes to the public the right to make the machine in the form in which it
was constructed during the patent.”); In re Shakespeare Co., 289 F.2d 506, 508, 129 U.S.P.Q. 323 (C.C.P.A.
1961) (“[W]hen the patent expires, freedom to utilize that process and whatever advantages it may have is
a public right which cannot be interfered with by alleged trademark rights.”); Bonito Boats, Inc. v. Thunder
Craft Boats, Inc., 489 U.S. 141, 165, 103 L. Ed. 2d 118, 109 S. Ct. 971, 9 U.S.P.Q.2d 1847 (1989) (“For
almost 100 years it has been well established that in the case of an expired patent, the federal patent laws
do create a federal right to ‘copy and use.’”); Elmer v. ICC Fabricating, 67 F.3d 1571, 36 U.S.P.Q.2d 1417
(Fed. Cir. 1995) (“[O]nce the '994 patent expires, the public will be entitled to practice the invention claimed
in the patent.”); Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 39 U.S.P.Q.2d 1990 (7th Cir. 1996) (after
the plaintiff “reaped the rewards of its patents” on an industrial machine for the patent term, “the product
passed into the public domain”; thereafter, defendant's introduction of a look-alike machine is not unfair
competition when clearly labeled as to source). See § 7:89.

10 58 F.3d at 1510, 35 U.S.P.Q.2d at 1342.

11 Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 288, 46 U.S.P.Q.2d 1026 (7th Cir. 1998)
(Distinguishing and disagreeing with the Vornado decision. “The safeguard against an impermissible
extension of a patent monopoly by a trademark … is the functionality doctrine.”).

12 Midwest Industries, Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1362–1364, 50 U.S.P.Q.2d 1672 (Fed.
Cir. 1999) (“But the fact that a patent has been acquired does not convert what otherwise would have been
protected trade dress into nonprotected matter ….. Other courts of appeals …. have followed the lead of the
Court of Customs and Patent Appeals in holding that a product may be entitled to trade dress protection for
distinctive, nonfunctional features, even if the product is, or has been, the subject of a patent ….. The Tenth
Circuit [in Vornado] stands alone in holding to the contrary.”).

See discussion of this potential patent-trademark conflict issue at § 6:10.

13 Accord: Falk, Harmonization of the Patent Act and Federal Trade Dress Law: A Critique of Vornado Air
Circulation Systems v. Duracraft Corp.,” 21 J. Corp. L. 827, 841 (1996) (“Rather than creating a new
significant inventive components test, the Tenth Circuit should have refined its definition of functionality.”).
Compare Jenkins, A Request to the High Court: Don't Let the Patent Laws be Distracted by a Flashy Trade
Dress, 15 J. Marshall J. of Comp. & Info. L. 323 (1997) (agreeing with the Vornado decision).

14 TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 1255, 1260, 149 L. Ed. 2d 164, 58 U.S.P.Q.2d
1001 (U.S. 2001), on remand to, 2001 WL 630049 (6th Cir. 2001) (Commenting on the lower court's use
of the “competitive need” policy as a definition of functionality and quoting Vornado as an example: “This
was incorrect as a comprehensive definition.”).

15 Pebble Beach Co. v. Tour 18 I, Ltd., 155 F.3d 526, n.16, 48 U.S.P.Q.2d 1065 (5th Cir. 1998).

16 TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 1255, 1263, 149 L. Ed. 2d 164, 58 U.S.P.Q.2d
1001 (U.S. 2001), on remand to, 2001 WL 630049 (6th Cir. 2001) (“We need not resolve this question. If,

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despite the rule that functional features may not be the subject of trade dress protection, a case arises in
which trade dress becomes the practical equivalent of an expired utility patent, that will be time enough to
consider the matter.”). See full discussion at § 7:89.70.

17 See C5 Medical Werks, LLC v. CeramTec GmbH, 249 F. Supp. 3d 1210, 1215 n. 4 (D. Colo. 2017), rev'd on
jurisdictional grounds, _ F.3d _, 2019 WL 4282099 (10th Cir. 2019) (Traffix “never confronted” the Tenth
Circuit's ruling in Vornado. But court assumed that Traffix did overrule Vornado because the Supreme Court
said that an expired utility patent did not “foreclose” the possibility of claiming trade dress in the patented
product design.). See § 6:10.

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1 McCarthy on Trademarks and Unfair Competition § 7:69 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

B. UTILITARIAN FUNCTIONALITY

§ 7:69. Plethora of definitions—Survey of functionality definitions of the courts

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

It seems that there are as many definitions of what is “functional” as there are courts. While the definitions fall into several
defined groups, the word formulations used by some of the federal courts are surveyed here for the convenience of the reader:

• Supreme Court. In holding that a shredded wheat biscuit shape is functional, Justice Brandeis formulated a classic, but not
all-encompassing, definition of functionality:

The evidence is persuasive that this form is functional—that the cost of the biscuit would be increased and its
high quality lessened if some other form were substituted for the pillow shape.1

In the 1982 Inwood case, Justice O'Connor defined what was later characterized by the Supreme Court as the “traditional rule”:
“In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or
quality of the article.”2 In its 1995 Qualitex decision, the Supreme Court later quoted this definition and characterized it as
saying that a feature is functional “if exclusive use of the feature would put competitors at a significant nonreputational-related
disadvantage.”3 The Court emphasized that the functionality doctrine prevents trademark law from imposing unacceptable
competitive burdens on competitors by making them unable “reasonably to replicate important nonreputation-related product
features.”4

In a restaurant appearance trade dress case in 1992, the Supreme Court, emphasizing that “eligibility for protection under §
43(a) depends on nonfunctionality,” seemed to approve of the Fifth Circuit definition that “a design is legally functional, and
thus unprotectable, if it is one of a limited number of equally efficient options available to competitors and free competition
would be unduly hindered by according the design trademark protection.”5

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However, the Supreme Court in its 2001 Traffix decision said that the above quoted Qualitex case's characterization was not
meant to be a “comprehensive definition” of functionality and it was erroneous for a lower court to use it as a legal definition.
That is, whether or not “exclusive use of the feature would put competitors at a significant nonreputational-related disadvantage”
is a policy rationale or goal, not a courtroom definition of what is functional. In the 2001 Traffix decision, the Supreme Court
adhered to its original engineering-driven definition from the 1982 Inwood Labs case, characterizing it as the “traditional rule”:
“In general terms, a product feature is functional,' and cannot serve as a trademark, ‘if it is essential to the use or purpose of
the article or if it affects the cost or quality of the article.’”6 The Court emphasized that once a feature is found to be functional
under this definition, there is no need to probe further to determine if there is no competitive need for rivals to use the feature.7
Even if there are alternative designs available in the marketplace, they cannot turn a feature that is functional under the Inwood
engineering-driven definition into a nonfunctional feature which is the exclusive property of one seller under the law of trade
dress.

• First Circuit. The court found that a two-tier design of a wood burning stove was unprotectable because functional in three
utilitarian ways, such as preventing smoke from escaping when the door is opened.8 But the court offered no overall definition
of functionality.

• Second Circuit. A design is “functional” in a utilitarian sense and disqualified as a valid trademark or trade dress if: (1) it is
essential to the use or purpose of the article; or if it (2) affects the cost or quality of the article.9 A design feature is essential to
the use or purpose of an article “if the feature is dictated by the functions to be performed; a feature that merely accommodates
a useful function is not enough.”10 A design affects cost or quality when “it permits the article to be manufactured at a lower
cost or constitutes an improvement in the operation of the goods.”11

The Second Circuit applied this test to reverse a district court bench trial decision that plaintiff had a valid trademark for a color
coding system that indicated the size of a mixing tip used in dental applications. The court of appeals held that the colors were
functional because they affected the use and quality of the product.12

Closely related to “functional” designs is the concept that certain things cannot be claimed as trademarks because they are
“generic.” In its 1995 Milstein case, the Second Circuit created a new category of things not capable of trade dress protection.
This new category was dubbed “generic”—but its policy is similar to that of functionality. The court said that “an idea, a concept
or a generalized type of appearance” is “generic” and not capable of trade dress protection regardless of the acquisition of
secondary meaning. The concept of greeting cards consisting of color photographs of animals, plants, or people cut to the shape
of the image in the photo was held not protectable as trade dress because such a concept was a generic idea or concept.13 The
Second Circuit later noted the close relationship between the doctrines of “functionality” and “genericness,” such that in some
cases, both doctrines may apply.14

• Third Circuit. Using the Supreme Court's definition of functionality in the 2001 TrafFix case, the Third Circuit found that
alleged “trade dress” in a method of teaching catamaran sailing was functional and unprotectable.15 The court also affirmed a
decision that the shape of a fruit-filled pastry was functional and not protectable as trade dress.16 In 2021, the court affirmed
a summary judgment that the registered design of a chocolate covered cookie stick was invalid as trade dress because it was
functional. The “design makes it work better as a snack.” The Third Circuit said that to be held “functional,” design features
need not in every case be essential, just that they are useful.17

• Fourth Circuit. In the McAirlaids case, the court reversed a dismissal on summary judgment of plaintiff's claim to trade dress
in a pattern imprinted on cellulose fiber. Finding a triable issue of fact as to whether the pattern was functional, the court used
this definition: “A product feature is functional—and therefore not protectable as a trademark or trade dress—‘if it is essential
to the use or purpose of the article or if it affects the cost or quality of the article.’”18 In the CTB decision, the court distinguished

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McAirlaids and affirmed a summary judgment that the design and color of a poultry feeder device was functional.19 The court
used the same definition of functionality as it did in McAirlaids and used the Morton-Norwich four factors.20

• Fifth Circuit. “To achieve the status of ‘functional,’ a design or feature must be superior or optimal in terms of engineering,
economy of manufacture or accommodation of utilitarian function or performance.” A design is not functional and hence
unprotectable “unless the design is only one of a limited number of equally efficient options and free competition would be
unduly hindered by according that design trademark protection.”21 Proof that several other manufacturers compete successfully
without using the plaintiff's product design is evidence of nonfunctionality because granting the exclusive rights of trade dress
will not impinge on the rights of others to compete effectively, which is “the litmus test of functionality.”22

Interpreting the Supreme Court's 2001 TrafFix decision, the Fifth Circuit said it would apply two tests: (1) a “primary test” of
whether the claimed feature is essential to the use or purpose of the product or affects the cost or quality of the product; and (2) a
“secondary test” of whether giving exclusive use to plaintiff would put competitors at a functional disadvantage. The court found
that universities' identifying color schemes and names as used on wearing apparel was not “functional.” As the court observed:

[T]he presence of the plaintiffs' marks serve no function unrelated to trademark …. The school colors and other
indicia used here do not make the t-shirts “work.” The t-shirts would function just as well as articles of clothing
without the colors and designs. [Defendant's] t-shirts are sold not because of any functionality in the marks
[Defendant] placed on them but rather because they bear the identifiable marks of the plaintiff Universities. The
marks fail under the traditional test for functionality and are protectable.23

The court has rejected the argument that any feature of a product that contributes to its commercial success must be functional.24
The court said that such a rule “would allow the second comer to trade on the first comer's goodwill.”25

• Sixth Circuit. The court has interpreted the 2001 Supreme Court Traffix decision to require use of the traditional Inwood rule
of functionality.26 If a feature is found to be functional under that rule, there is no need at that point to go further to determine
if there is a competitive necessity to use the feature or if alternative designs are available.27 The court said that it found to be a
“helpful doctrine” the de jure/de facto distinction of the Federal Circuit, although the Patent and Trademark Office has rejected
it as confusing and obscuring.28

The Sixth Circuit affirmed a decision that an alcoholic beverage bottle top closure of a dripping red wax seal (covered by an
incontestable registration) was not aesthetically functional because it served no useful purpose, there were numerous alternative
methods to seal a bottle with wax to make it look appealing, and competitors were not put at a competitive disadvantage by
not being able to use this type of seal.29

• Seventh Circuit. The court said that to determine if an element of a product design is “functional”: “[T]he right question to
ask is whether the design feature affects product quality or cost or is ‘merely ornamental.’”30

The court noted that the Supreme Court in its 2001 Traffix decision, “rejected an equation of functionality with necessity;
it is enough that the design is useful.”31 Looking to alternative designs can be one factor to consider.32 To help prove non-
functionality and the availability of alternate designs, the plaintiff can introduce evidence of hypothetical designs that would
work as well.33

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In the Landoll case, the publisher of a line of cook books claimed that the following three elements consisted the protectable
trade dress: large size (8½ x 11 inches); gilded edges of pages; and oilcloth covers. Each of these was found to be functional and
the composite held to be both functional and nondistinctive. While the gold edges were said to be “aesthetically functional,” in
the author's opinion they could as well have been dubbed utilitarian in that gilding the pages eliminates unsightly differences
in the colors of the page ends and gold is a generic color used in many high-end books.34

In two decisions released the same day, the Seventh Circuit found that both a folding chair design and the circular shape of a
beach towel were functional and not protectable trade dress. The court noted that if a design is in a particular shape because
it works better in that shape, then it is functional. Finding a folding chair design to be functional and not a valid trademark,
the court observed: “It looks the way it does in order to be a better chair, not in order to be a better way of identifying who
made it (the function of a trademark.)”35 The court held the circular shape of a beach towel functional because: “[A] circle
surpasses other shapes because it provides the most rotational space without waste.”36 Judge Easterbrook explained the test:
“So if a design enables a product to operate, or improves on a substitute design in some way (such as by making the product
cheaper, faster, lighter, or stronger), then the design cannot be trademarked ….”37

The court found an embossed quilt-like diamond lattice design on toilet paper was functional, largely because the design was
disclosed in five utility patents which referred to the utilitarian advantages of such an embossed design.38 The court said it
would look at five factors to determine functionality: “(1) the existence of a utility patent, expired or unexpired, that involves
or describes the functionality of an item's design element; (2) the utilitarian properties of the item's unpatented design elements;
(3) advertising of the item that touts the utilitarian advantages of the item's design elements; (4) the dearth of, or difficulty in
creating, alternative designs for the item's purpose; (5) the effect of the design feature on an item's quality or cost.”39

• Eighth Circuit. The court will ask whether the alleged trademark or trade dress is a “mere arbitrary embellishment … primarily
adopted for purposes of identification” or is “an important ingredient in the commercial success of the product.”40

• Ninth Circuit. “A product feature is functional if it is essential to the product's use or if it affects the cost and quality of
the article.”41 “If the utilitarian aspects of the product are its essence, only patent law protects its configuration from use by
competitors.”42 The court reversed as erroneous a jury instruction that a product feature was functional if “if the feature is part
of the actual benefit that consumers wish to purchase when they buy the product.”43

The Ninth Circuit listed four factors that it will weigh to determine functionality: (1) whether the design yields a utilitarian
advantage, with a utility patent being “weighty evidence” of functionality; (2) whether alternative designs are available;
(3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a
comparatively simple or inexpensive method of manufacture.44 Applying Ninth Circuit law and the four factors, the Federal
Circuit overturned a jury verdict that found the registered and unregistered trade dress of the Apple iPhone design was diluted
by accused designs of Samsung mobile phones. The court found the trade dress of the iPhone design to be functional and
unprotectable as trade dress.45

The Ninth Circuit will use a two-step analysis for functionality. The first step is to apply the four factors mentioned previously.
If the claimed trade dress is found to be functional under those factors, the enquiry is over. If the claimed trade dress is found
not functional using those four factors, the court will ask in step two if protection as a trademark or trade dress would impose
a significant non-reputation-related competitive disadvantage.46

The court also noted that to be functional, it is not necessary that a product feature provide utilitarian advantages superior to
other designs, so long as it has “some utilitarian advantage.”47

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The court said that alternative designs can be used to determine functionality in the first place: “[T]he existence of alternative
designs may indicate whether the trademark itself embodies functional or merely ornamental aspects of the product.”48

• Tenth Circuit. “[T]he question of whether the feature is functional should turn on whether ‘the protection of the configuration
would hinder competition or impinge upon the rights of others to compete effectively in the sale of goods.’ … If that feature
must be slavishly copied in order to have an equally functional product, then the feature is not entitled to protection. … But if
the feature enables the second comer simply to market his product more effectively, it is entitled to protection.”49

The Tenth Circuit in the 1995 Vornado case defined functionality solely in terms of the availability to competitors of alternative
designs, rejecting the engineering-driven “utility” definition.50 In the court's view, if there were a reasonable number of other
designs available, then the design was not “functional,” even if the design was the subject of a utility patent and even if the
seller in advertising touted its functional advantages. This truncated view of what was “functional” led the court to the peculiar
conclusion that a shape which was an element of a patent claim and which was described as functionally superior in the patent
disclosure could be one competitor's exclusive property as trade dress upon proof of inherent distinctiveness or secondary
meaning. To avoid this unacceptable result, the court held that even a configuration “nonfunctional” under the law of trade dress
(under the court's narrow definition) must be free for all to copy if such a configuration was “a significant inventive component”
of an invention covered by a utility patent. That is, in this clash of policies, patent law policy trumps trade dress law policy
and freedom to copy is the rule.51

• Eleventh Circuit. While the court gave no general definition of functionality, the following aspects of a new form of checkbook
were found functional and unprotectable: the concept and location of a carry-around stub; lines for recording information on the
stub; and horizontal and vertical size of the stub. However, other aspects (decorative box around the check lines and design and
color of a carry-around case) were held nonfunctional, protectable as trade dress, and infringed by defendant.52 The court later
held that the test of functionality is whether the configuration is essential to the use or purpose of the shape and whether free
competition would be hindered were protection granted because there are only a limited number of other shapes available.53

• Federal Circuit. “ ‘Utilitarian’ means ‘superior in function (de facto) or economy of manufacture,’ which ‘superiority’
is defined in light of competitive necessity to copy.”54 The Federal Circuit consistently uses the Morton-Norwich four part
test to determine functionality.55 The Federal Circuit has sometimes distinguished “de facto functionality,” from “de jure”
functionality.56 “De facto” functionality apparently means that the whole article is utilitarian (e.g., a mineral water bottle), while
“de jure functionality” apparently means that the particular design feature in issue is functional (e.g., a screw top mouth of
the bottle to accommodate a cap). This bit of legalese, in the author's opinion, only serves to make more enigmatic an already
difficult issue.57 By 2002, the PTO had dropped its usage of the terms “de facto” and “de jure” as not contributing to clarity.58
The Trademark Board has noted that one reason for retiring the “de facto”-“de jure” distinction is that the U.S. Supreme Court
does not use these terms in analyzing functionality.59

The Federal Circuit has noted that because trade dress issues are not unique to the exclusive jurisdiction of that court, in appeals
from district courts, the Federal Circuit will defer to the trade dress law of the regional circuit in which a district court sits.60
However, when the issue is a potential conflict between patent law and trade dress law, the Federal Circuit will apply its own
law.61

• The 1938 Restatement View. The 1938 Restatement of Torts adopted the definition that a feature of goods is “functional”
if “it affects their purpose, action or performance, or the facility or economy of processing, handling or using them.”62 Under
this definition, a court held that a knurled rim on Schwinn bicycle wheels was “functional” and not a trademark, because it
is commercially necessary for bike manufacturers to mask, hide or camouflage the roughened and charred appearance of bike
rims which results from welding the rim sections together.63

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• The 1995 Restatement View. The 1995 Restatement of Unfair Competition states that while the “ultimate inquiry is whether
a prohibition against copying will significantly hinder competition,” a given design feature is functional if the benefits of that
design “cannot practically be duplicated through the use of other designs.”64

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 83 L. Ed. 73, 59 S. Ct. 109 (1938).

2 Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, n.10, 72 L. Ed. 2d 606, 102 S. Ct. 2182,
214 U.S.P.Q. 1 (1982).

3 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 131 L. Ed. 2d 248, 115 S. Ct. 1300, 34 U.S.P.Q.2d
1161, 1164 (1995). In addition, the Supreme Court used as an illustration of a “functional” feature a shape
dictated by engineering-driven utilitarian advantages: “the special illumination-enhancing shape of a new
patented light bulb,” and approved of a definition that a feature is “functional” “if it is essential to the use
or purpose of the article or if it affects the cost or quality of the article.” 115 S. Ct. at 1304, 34 U.S.P.Q.2d
at 1163-64 (1995).

4 34 U.S.P.Q.2d at 1165.

5 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 120 L. Ed. 2d 615, 112 S. Ct. 2753, 23 U.S.P.Q.2d
1081 (1992) (Adding that: “This serves to assure that competition will not be stifled by the exhaustion of
a limited number of trade dresses.”).

6 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33–34, 121 S. Ct. 1255, 1261, 149 L. Ed.
2d 164, 58 U.S.P.Q.2d 1001 (U.S. 2001), on remand to, 2001 WL 630049 (6th Cir. 2001) (Commenting on
the lower court's use of the “competitive need” policy as a definition of functionality: “This was incorrect as
a comprehensive definition.”) See Eco Mfg. LLC. v. Honeywell Intern., Inc., 357 F.3d 649, 69 U.S.P.Q.2d
1296 (7th Cir. 2003) ("Traffix rejected an equation of functionality with necessity; it is enough that the
design is useful. The Justices told us that a feature is functional if it is essential to the design or if it affects
the article's price or quality.").

7 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 121 S. Ct. 1255, 1262, 149 L. Ed. 2d
164, 58 U.S.P.Q.2d 1001 (U.S. 2001), on remand to, 2001 WL 630049 (6th Cir. 2001) (“Where the design
is functional under the Inwood formulation there is no need to proceed further to consider if there is a
competitive necessity for the feature.”).

8 Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 626 F.2d 193, 195, 206 U.S.P.Q. 961, 964 (1st Cir. 1980).

9 Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 219, 103 U.S.P.Q.2d
1937 (2d Cir. 2012). Quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10,
102 S. Ct. 2182, 72 L. Ed. 2d 606, 214 U.S.P.Q. 1, 34 Fed. R. Serv. 2d 1101 (1982). Note: The Christian
Louboutin case concerned the separate issue of aesthetic functionality. Christian Louboutin's high-fashion
signature red shoe sole contrasting with the color of the shoe upper was not proven to be aesthetically
functional. Second Circuit law on aesthetic functionality is discussed at § 7:80.

10 Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 975, 1 U.S.P.Q.2d 2026 (2d Cir. 1987) (Arrangement
of shingles, vents, waterproof fabric, and hood on a rain jacket was functional as dictated by the utilitarian
purpose of providing a low-cost, unencumbering, waterproof jacket for wear while playing golf and other
sports. Preliminary injunction reversed).

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11 Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 219, 103 U.S.P.Q.2d
1937 (2d Cir. 2012).

12 Sulzer Mixpac AG v. A&N Trading Company, 988 F.3d 174, 183 (2d Cir. 2021) (“The evidence … firmly
establishes that the colors signify diameter, which in turn assists users with selecting the proper cartridge for
their needs…. [T]he colors enable users to quickly match the proper mixing tip with the proper cartridge,
and thereby improve the operation of the goods.”).

13 Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32, 35 U.S.P.Q.2d 1284 (2d Cir. 1995)
(“[O]verextension of trade dress protection can undermine restrictions in copyright and patent law that are
designed to avoid monopolization of products and ideas. Consequently, courts should proceed with caution
in assessing claims to unregistered trade dress protection so as not to undermine the objectives of these other
laws.”). See discussion of this type of “generic” trade dress at § 8:6.50.

14 Nora Beverages, Inc. v. Perrier Group of America, Inc., 269 F.3d 114, 120 n.4, 60 U.S.P.Q.2d 1038 (2d Cir.
2001) (1.5 liter clear, ribbed polyethylene bottle for spring water was “generic,” but could as well have been
found to be “functional.” “We note, without basing today's ruling upon the fact, that the court might have
found for [defendant] on the grounds of functionality in light of the Supreme Court's recent rulings which
curtail trade dress protection by expanding the functionality doctrine.”).

15 Fair Wind Sailing, Inc. v. Dempster, 61 V.I. 797, 764 F.3d 303, 311, 112 U.S.P.Q.2d 1340, 2015 A.M.C. 585
(3d Cir. 2014) (“Student feedback procedures, catamarans, teaching itineraries, and curriculum all affect the
quality of Fair Wind's business …. Thus, Fair Wind's alleged dress is plainly functional.”). See pre TrafFix
Third Circuit decisions in: Keene Corp. v. Paraflex Industries, Inc., 653 F.2d 822, 211 U.S.P.Q. 201 (3d
Cir. 1981) (Design of wall-mounted lighting fixture held utilitarian and functional because of architectural
compatibility with building style on which fixture is to be mounted); Standard Terry Mills, Inc. v. Shen Mfg.
Co., 803 F.2d 778, 231 U.S.P.Q. 555 (3d Cir. 1986) (The weave of a towel was functional in producing a
strong but absorbent towel that requires no ironing.).

16 Sweet Street Desserts, Inc. v. Chudleigh's Ltd., 69 F. Supp. 3d 530, 533, 549 (E.D. Pa. 2014), aff'd, 655 Fed.
Appx. 103, 119 U.S.P.Q.2d 1641 (3d Cir. 2016) (Summary dismissal was affirmed.).

17 Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp., 986 F.3d 250, 256-259 (3d Cir. 2021),
as amended, (Mar. 10, 2021) (“[T]he Supreme Court recognizes several ways to show that a product feature
is functional. One way is indeed to show that a feature ‘is essential to the use or purpose of the article.’ …
So long as the design improves cost, quality, or the like, it cannot be protected as trade dress. The shape need
only be useful, not essential…. Every feature of [plaintiff's] registration relates to the practical functions of
holding, eating, sharing, or packing the snack.”).

18 McAirlaids, Inc. v. Kimberly-Clark Corp., 756 F.3d 307, 310, 111 U.S.P.Q.2d 1546 (4th Cir. 2014) (Quoting
in part from Qualitex, 514 U.S. at 165.). See Flexible Steel Lacing Company v. Conveyor Accessories, Inc.,
955 F.3d 632, 648, (7th Cir. 2020) (Distinguishing McAiraids. Affirmed summary judgment that conveyor
belt fastener design was functional.).

19 CTB, Inc. v. Hog Slat, Inc., 954 F.3d 647 (4th Cir. 2020) (Defendant rebutted the presumption of validity
of plaintiff's contestable registration for design and color of a poultry feeder device. The plaintiff's utility
patents were persuasive evidence of functionality. District court cancelled the registration.).

20 See discussion of the Morton-Norwich factors at § 7:73.

21 Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417, 429 (5th Cir. 1984). Accord: Sno-Wizard Mfg., Inc. v.
Eisemann Products Co., 791 F.2d 423, n.2, 230 U.S.P.Q. 118 (5th Cir. 1986). Quoted with approval in Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 120 L. Ed. 2d 615, 112 S. Ct. 2753, 23 U.S.P.Q.2d 1081
(1992).

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22 Sunbeam Prods. Inc. v. West Bend Co., 123 F.3d 246, 44 U.S.P.Q.2d 1161 (5th Cir. 1997) (kitchen mixer
shape held nonfunctional).

23 Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel
Co., 550 F.3d 465, 486, 239 Ed. Law Rep. 874, 89 U.S.P.Q.2d 1338 (5th Cir. 2008), cert. denied, 129 S.
Ct. 2759 (2009). See: Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 62 U.S.P.Q.2d 1534
(5th Cir. 2002) (plaintiff failed to carry its burden of proving nonfunctionality of disposable pipette tips used
to measure liquids).

24 Pebble Beach Co. v. Tour 18 I, Ltd., 155 F.3d 526, 48 U.S.P.Q.2d 1065 (5th Cir. 1998).

25 48 U.S.P.Q.2d at 1072 (upholding the finding that the design of a golf course is not necessarily “functional”).

26 Groeneveld Transport Efficiency, Inc. v. Lubecore Intern., Inc., 730 F.3d 494, 506, 108 U.S.P.Q.2d 1022 (6th
Cir. 2013) (Overall design of a truck lubrication pump was functional. “[T]he issue is whether Groeneveld's
design ‘is essential to the use or purpose of the article or if it affects the cost or quality of the article.’ [citing
Inwood Labs.] … In other words, the question is whether the overall shape of Groeneveld's grease pump
was substantially influenced by functional imperatives or preferences.”).

27 Antioch Co. v. Western Trimming Corp., 347 F.3d 150, 68 U.S.P.Q.2d 1673, 2003 FED App. 0368P (6th
Cir. 2003).

28 Fuji Kogyo Co., Ltd. v. Pacific Bay Intern., Inc., 461 F.3d 675, 79 U.S.P.Q.2d 1894, 2006 FED App. 0312P
(6th Cir. 2006), cert. denied, 127 S. Ct. 1373 (U.S. 2007) (But court then ignored the de jure/de facto
distinction and used the classic Inwood Labs test, finding functional the design of fishing rod line guides.
Plaintiff's infringement claim was dismissed and its registrations cancelled.).

29 Maker's Mark Distillery, Inc. v. Diageo North America, Inc., 679 F.3d 410, 102 U.S.P.Q.2d 1693 (6th Cir.
2012). See Leapers, Inc. v. SMTS, LLC, 879 F.3d 731, 738, 125 U.S.P.Q.2d 1569 (6th Cir. 2018) (Reversing
summary dismissal that knurling pattern on adjustable rifle scopes was functional: a jury might find that it
was not functional. “A jury could reasonably conclude that Plaintiff's knurling design is purely ornamental
and therefore nonfunctional.”). See § 7:80.

30 Arlington Specialties, Inc. v. Urban Aid, Inc., 847 F.3d 415, 420 (7th Cir. 2017) (The design of a men's
personal care bag was functional and not entitled to trade dress protection against a copier. The elements of
product design that plaintiff listed “determine the bag's shape, its degree of rigidity, and how hard or easy it
is to access its contents—all, the undisputed evidence shows, functional aspects of the product.”); Flexible
Steel Lacing Company v. Conveyor Accessories, Inc., 955 F.3d 632, 644 (7th Cir. 2020) (Using the Inwood
Supreme Court test asking if the design affects the cost or quality of the article. Affirmed summary judgment
that conveyor belt fastener product design was functional.).

31 Eco Mfg. LLC. v. Honeywell Intern., Inc., 357 F.3d 649, 654–655, 69 U.S.P.Q.2d 1296 (7th Cir. 2003) (“The
Justices told us that a feature is functional if it is essential to the design or if it affects the article's price
or quality.”).

32 Arlington Specialties, Inc. v. Urban Aid, Inc., 847 F.3d 415, 420 (7th Cir. 2017) (Quoting treatise and
noting that the question is not whether plaintiff's product design is inferior to alternative functional designs.
“Here, the undisputed evidence shows that the claimed design features affect product quality, so we need
not consider the availability of alternative designs for competitors.”).

33 Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 299, 46 U.S.P.Q.2d 1026 (7th Cir. 1998) (“There
is no requirement that the alternative shapes must have been successfully marketed in order to show that
effective competition is possible.”).

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34 Publications Int'l, Ltd. v. Landoll, Inc., 164 F.3d 337, 49 U.S.P.Q.2d 1139 (7th Cir. 1998) (“Gold is a natural
color to use on a fancy cookbook.”).

35 Specialized Seating, Inc. v. Greenwich Industries, LP, 616 F.3d 722, 727, 96 U.S.P.Q.2d 1580 (7th Cir. 2010).
See § 7:69.50.

36 Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 859, 96 U.S.P.Q.2d 1404 (7th Cir. 2010).

37 Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 857, 96 U.S.P.Q.2d 1404 (7th Cir. 2010) (The utilitarian
advantages of the circular shape were disclosed in a utility patent and in advertising.).

38 Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723, 729, 99 U.S.P.Q.2d 1538
(7th Cir. 2011) (“[W]e find that the ‘central advance’ claimed in the utility patents is embossing a quilt-
like diamond lattice filled with signature designs that improves (perceived) softness and bulk, and reduces
nesting and ridging. This is the same ‘essential feature’ claimed in the trademarks.”).

39 Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723, 727, 99 U.S.P.Q.2d 1538
(7th Cir. 2011); Flexible Steel Lacing Company v. Conveyor Accessories, Inc., 955 F.3d 632, 644, (7th Cir.
2020) (Using the five-point test to find that conveyor belt fastener product design was functional.). These
five factors were used in Bodum USA, Incorporated v. A Top New Casting Incorporated, 927 F.3d 486, 492
(7th Cir. 2019) (Plaintiff carried its burden and proved the non-functionality of unregistered trade dress in
the design of a French press coffee maker. Court affirmed jury verdict of infringement.).

40 Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 31 U.S.P.Q.2d 1481 (8th Cir. 1994) (cellophane bag packaging
for potpourri held functional).

41 Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 4 U.S.P.Q.2d 1026 (9th Cir. 1987). See Rachel v.
Banana Republic, Inc., 831 F.2d 1503, 4 U.S.P.Q.2d 1877 (9th Cir. 1987) (design and appearance of synthetic
animal heads are “functional” because they are essential to make a realistic reproduction of various animals).

42 Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 10 U.S.P.Q.2d 1226, 1229 (9th Cir. 1989), cert. denied,
493 U.S. 872, 107 L. Ed. 2d 155, 110 S. Ct. 202 (1989).

43 Blumenthal Distributing, Inc. v. Herman Miller, Inc., 963 F.3d 859, 869, (9th Cir. 2020), for additional
opinion, see, 811 Fed. Appx. 421 (9th Cir. 2020) (The jury instruction “does not accurately track our
functionality caselaw.”).

44 Disc Golf Ass'n Inc. v. Champion Discs, Inc., 158 F.3d 1002, 48 U.S.P.Q.2d 1132 (9th Cir. 1998). Accord:
Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 58 U.S.P.Q.2d 1881 (9th Cir. 2001) (dismissal
on summary judgment for pool hall trade dress infringement was denied, court finding triable issue of fact
if the decor was functional); Secalt S.A. v. Wuxi Shenxi Const. Machinery Co., Ltd., 668 F.3d 677, 685,
101 U.S.P.Q.2d 1553 (9th Cir. 2012) (Using the four-point test to find an industrial design to be functional,
noting that a feature need only have some utilitarian advantage to be functional.); Blumenthal Distributing,
Inc. v. Herman Miller, Inc., 963 F.3d 859, 867, (9th Cir. 2020), for additional opinion, see, 811 Fed. Appx.
421 (9th Cir. 2020) (Applying the four factors to affirm a jury's finding of infringement of the trade dress
of an “Eames” chair design and an award of over $3 million of defendant's profits. The chair design was
not functional. The jury's finding of dilution of the “Eames” design was reversed. The jury's finding that
the “Aeron” chair design was functional was reversed because the jury instruction as to functionality was
erroneous.).

45 Apple Inc. v. Samsung Electronics Co., Ltd., 786 F.3d 983, 992–997, 114 U.S.P.Q.2d 1953 (Fed. Cir. 2015).

46 Millennium Laboratories, Inc. v. Ameritox, Ltd., 817 F.3d 1123, 1128, 118 U.S.P.Q.2d 1459 (9th Cir. 2016)
(“In Au–Tomotive Gold, we held that after Qualitex and TrafFix, ‘the test for functionality proceeds in two
steps.’” Reversing summary dismissal: there was an issue of fact for trial of the functionality of computer
generated graphical presentation of urine test results.). Quoting from Au-Tomotive Gold, Inc. v. Volkswagen

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of America, Inc., 457 F.3d 1062, 1072, 80 U.S.P.Q.2d 1293 (9th Cir. 2006) (“In the case of a claim of
aesthetic functionality, an alternative test inquires whether protection of the feature as a trademark would
impose a significant non-reputation-related competitive disadvantage.”). Author's Note: Step Two of the
test asking if the trade dress would impose a significant non-reputation-related competitive disadvantage
was created by the Supreme Court for cases of aesthetic functionality. TrafFix Devices, Inc. v. Marketing
Displays, Inc., 532 U.S. 23, 33, 121 S. Ct. 1255, 149 L. Ed. 2d 164, 58 U.S.P.Q.2d 1001 (2001) (“It is proper
to inquire into a ‘significant non-reputation-related disadvantage’ in cases of esthetic functionality….”) It
is not clear from the Millennium decision if the Ninth circuit intends to require step two in only cases in
which aesthetic functionality is raised or also in cases where traditional utilitarian functionality is the issue.
See § 7:80 regarding aesthetic functionality.

47 Disc Golf Ass'n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006, 48 U.S.P.Q.2d 1132 (9th Cir. 1998)
(finding functional the parabolic shape of a basket of hanging chains used to catch flying discs (“Frisbees”)
at a target in a game of “Disc Golf”).

48 Talking Rain Beverage Co. Inc. v. South Beach Beverage Co., 349 F.3d 601, 68 U.S.P.Q.2d 1764 (9th Cir.
2003) (but cautioning that once functionality has been determined, the mere existence of alternatives "cannot
negate a trademark's functionality." Functionality of a mineral bottle shape was found and registration
cancelled.).

49 Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 4 U.S.P.Q.2d 1497 (10th Cir. 1987). See Hartford House,
Ltd. v. Hallmark Cards, Inc., 846 F.2d 1268, 6 U.S.P.Q.2d 2038 (10th Cir. 1988), cert. denied, 488 U.S.
908, 102 L. Ed. 2d 248, 109 S. Ct. 260 (1988) (the availability of alternative designs is a “key factor in
determining that a trade dress is nonfunctional”).

50 Vornado Air Circulation Sys. v. Duracraft Corp., 58 F.3d 1498, 1507, 35 U.S.P.Q.2d 1332, 1339 (10th Cir.
1995) (“If competitors need to be able to make an equally competitive product, it is functional, but if they
do not, it may be nonfunctional. The availability of equally satisfactory alternatives for a particular feature,
and not its inherent usefulness, is often the fulcrum on which Lanham Act functionality turns.” Emphasis
added). See full discussion of this case at § 7:71.

51 “We hold that where a disputed product configuration is part of a claim in a utility patent, and the
configuration is a described, significant aspect of the invention, see 35 U.S.C. § 112, so that without it the
invention would not fairly be said to be the same invention, patent law prevents its protection as trade dress,
even if the configuration is nonfunctional.” 58 F.3d at 1510, 35 U.S.P.Q.2d at 1342.

52 John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, n.27, 219 U.S.P.Q. 515 (11th Cir. 1983) (The
court also held that the following proposed jury instruction was an erroneous statement of law: “When a
feature of goods or of its wrappers or container appeals to the consumer and affects his or her choice, that
feature is functional.” The definition is “overly broad” because many nonfunctional features may appeal to
the consumer and affect his or her choice.).

53 Epic Metals Corp. v. Souliere, 99 F.3d 1034, 40 U.S.P.Q.2d 1705 (11th Cir. 1996) (finding of no functionality
was reversed).

54 In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 U.S.P.Q. 9, 14 (C.C.P.A. 1982). See In re Bose
Corp., 772 F.2d 866, 872-73, 227 U.S.P.Q. 1 (Fed. Cir. 1985) (loudspeaker enclosure shape held functional
in that it contributes to efficient and superior design as an enclosure).

55 See discussion of the Morton-Norwich test at § 7:73. See e.g. In re Becton, Dickinson and Co., 675 F.3d 1368,
102 U.S.P.Q.2d 1372 (Fed. Cir. 2012) (Using “the familiar Morton-Norwich factors” to find functionality.).

56 In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1337, 213 U.S.P.Q. 9, 13. See In re R. M. Smith, Inc.,
734 F.2d 1482, 222 U.S.P.Q. 1 (Fed. Cir. 1984) (Judge Rich, the author of the Federal Circuit “de facto/de
jure” functionality distinction, explained “de jure” functionality as simply the conclusion resulting from an

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affirmative answer to the question of whether the product is in its particular shape because it works better in
this shape); Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002)
(“De jure functionality means that the product has a particular shape ‘because it works better in this shape.’”).

57 See Brown, Design Protection: An Overview, 34 U.C.L.A. L. Rev. 1341, 1369 n.126 (1987) (“Consideration
of these problems in the Federal Circuit is obscured by a regrettable bit of jargon. The court insists on
talking about ‘de facto functionality’ and ‘de jure functionality,’. … I, for one, find these labels unhelpful
and confusing. I earnestly hope that they gain no wider currency.”). The author agrees wholeheartedly.

58 T.M.E.P. § 1202.02 (2002 rev.) (“Prior to this revision of the TMEP, the Office used the terms “de facto”
and “de jure” in assessing whether “subject matter” (usually a product feature or the configuration of the
goods) presented for registration was functional … . [T]he [Supreme] Court has not used the “de facto/de
jure” distinction. Nor were these terms used when the Trademark Act was amended [in 1998] to expressly
prohibit registration of matter that is “functional.” … Accordingly, in general, examining attorneys will no
longer make this distinction in Office actions which refuse registration based on functionality.”).

59 In re Heatcon, Inc., 116 U.S.P.Q.2d 1366, 2015 WL 6166638 (T.T.A.B. 2015) (Quoting the T.M.E.P.).

60 OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 43 U.S.P.Q.2d 1641 (Fed. Cir. 1997). See § 21:11.

61 Midwest Industries, Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 50 U.S.P.Q.2d 1672 (Fed. Cir. 1999).

62 Restatement Torts § 742 (1938).

63 Schwinn Bicycle Co. v. Murray Ohio Mfg. Co., 339 F. Supp. 973, 172 U.S.P.Q. 14 (M.D. Tenn. 1971),
aff'd, 470 F.2d 975, 176 U.S.P.Q. 161 (6th Cir. 1972) (In an Appendix, the court lists some thirty cases in
which a feature was held to be functional. “Knurling is a means of accomplishing a purpose essential to the
commercial success of the product. To permit Schwinn to assert trademark rights in the knurled markings
would clearly have the effect of unjustifiably giving (Schwinn) a perpetual monopoly in the simplest and
cheapest process of masking the unsightly residuary of welding together the tubular sections of the rim.”).

64 Restatement Third, Unfair Competition § 17, comments a and b (1995).

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McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

B. UTILITARIAN FUNCTIONALITY

§ 7:69.50. Defining functionality for a jury

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

Should We Let the Jury Decide What is Needed to “Compete Effectively?” Some believe that the “ultimate question” is whether
the copier is able to “compete effectively” without copying the senior user's design.1 But some courts have mistakenly taken
this vague policy goal and turned it into a courtroom test of what is functional. For example, the Tenth Circuit has stated that
the functionality issue “should turn on whether the protection of the configuration would hinder competition or impinge upon
the rights of others to compete effectively in the sale of goods.”2 The Seventh Circuit has gone so far in this direction as to
suggest that the jury should be left to sort out the unsuitable question of whether this design is something that competitors need
in order to compete:

[T]he jury has to determine whether the feature for which trademark protection is sought is something that other
producers of the product in question would have to have as part of the product in order to be able to compete
effectively in the market—in other words, in order to give consumers the benefits of a competitive market—or
whether it is the kind of merely incidental feature which gives the brand some individual distinction but which
producers of competing brands can readily do without.3

The problem with such a jury instruction is that it leaves the jurors completely at sea as to how to decide what kind of design
it is that competitors “have to have” to be able to “compete effectively.” Competitors of the Coca-Cola Co. would dearly love
to be able to use the classic and famous Coca-Cola “coke bottle” contour shape. Do competitors need it in order to “compete
effectively”? Of course not, but such an instruction is so open and vague as to permit the jury to wander off in such a dangerously
erroneous direction.4

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The “Works Better” Test. A jury instruction that more effectively demystifies the puzzle of functionality in layman's words is
the “works better” test: a design feature is functional if the article works better because it is in this particular shape.5

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Footnotes
1 See, e.g., Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 10 U.S.P.Q.2d 1001 (7th Cir. 1989)
(exercise bicycle held functional).

2 Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 4 U.S.P.Q.2d 1497, 1501 (10th Cir. 1987).

3 W.T. Rogers Co. v. Keene, 778 F.2d 334, 346, 228 U.S.P.Q. 145, 152 (7th Cir. 1985). See Abbott Laboratories
v. Mead Johnson & Co., 971 F.2d 6, 23 U.S.P.Q.2d 1663, 1674 (7th Cir. 1992) (defendant arguing
functionality must have proof that making it use a different shape of container will raise the cost of production
and push its price above that of the plaintiff-competitor; or, it must prove that consumers or retailers prefer
the allegedly functional shape so much that “no other shape will do”).

4 See Brown, “Design Protection: An Overview,” 34 U.C.L.A. L. Rev. 1341, 1367 (1987) (“If I were a juror
who had heard a paraphrase of the quoted passage, I would agree with Judge Posner's observation earlier in
the opinion that ‘[O]ur legal system often gives the very difficult cases to juries to decide.’ ”).

5 In re R. M. Smith, Inc., 734 F.2d 1482, 222 U.S.P.Q. 1 (Fed. Cir. 1984). This test approved in: Textron, Inc.
v. U.S. International Trade Comm'n, 753 F.2d 1019, 224 U.S.P.Q. 625 (Fed. Cir. 1985); In re Avocet, Inc.,
223 U.S.P.Q. 517 (T.T.A.B. 1984) (bicycle seat design held functional: “the seats work better—are more
comfortable—in that shape”); In re Vico Products Mfg. Co., 229 U.S.P.Q. 364 (T.T.A.B. 1985) (whirlpool
pipe shape held functional because it works better in that shape); In re Caterpillar Inc., 43 U.S.P.Q.2d 1335
(T.T.A.B. 1997) (“[Functionality] means that the product is in its particular shape because it works better
in this shape.”); Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 61 U.S.P.Q.2d 1422 (Fed. Cir.
2002) (“De jure functionality means that the product has a particular shape ‘because it works better in this
shape.’”); Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 63 U.S.P.Q.2d 1587 (9th Cir. 2002) (quoting from
Textron and finding functionality); Kistner Concrete Products, Inc. v. Contech Arch Technologies, Inc., 97
U.S.P.Q.2d 1912, 1919, 2011 WL 481339 (T.T.A.B. 2011) (“[T]he issue is whether the design of the product
works better in the configuration at issue.”); Bodum USA, Incorporated v. A Top New Casting Incorporated,
927 F.3d 486, 493 (7th Cir. 2019) (The claimed features of plaintiff French coffee maker “are not necessary to
make the [plaintiff's coffee maker] work better as a French press coffeemaker.” Court affirmed jury verdict of
infringement of trade dress in combination of design elements of a French press coffee maker.); Ezaki Glico
Kabushiki Kaisha v. Lotte International America Corp., 986 F.3d 250, 258 (3d Cir. 2021), as amended, (Mar.
10, 2021) (Quoting and applying treatise test: a product feature is functional if it works better in this shape.).

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McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

B. UTILITARIAN FUNCTIONALITY

§ 7:70. Look to functionality of the claimed feature or features

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

The Issue is the Functionality of those Elements Claimed as Protectable Trade Dress. It is erroneous to conclude that because
an article is useful for some purpose, therefore any and all design features of that article must be “functional.” This approach
ignores the distinction between utility and style.

For example, some key functions of a beverage container are to hold liquid without spilling, preserve hygiene and be easy to
store and handle. However, this does not mean that the shape and appearance of any and all beverage containers is “functional”
and can never qualify as a valid trademark or trade dress.1 Some distinctive beverage containers may achieve protectable trade
dress status, such as the COCA-COLA bottle or the Haig & Haig “pinch bottle” of Scotch whiskey.2

Many articles can be equally useful for their purpose yet be designed in dozens of different shapes and configurations. The
correct question is: is the article shaped this way because it makes it easier to hold, cheaper to make, more durable in transit
or stronger in construction?3

The functionality enquiry must focus on the functional utility of that exact feature or combination of features that is claimed
as a protectable trade dress or mark. The issue is not whether a product or container serves a useful purpose, but whether the
particular shape and form which is claimed as trade dress is functional.4 The Third Circuit agreed: “The question is not whether
the product or feature is useful, but whether ‘the particular shape and form’ chosen for that feature is.”5 For example, in affirming
a jury finding of infringement of trade dress in a combination of design aspects of plaintiff's French press coffee maker, the
Seventh Circuit emphasized that the issue is not whether such a coffee maker is a utilitarian object: the issue is whether the
combination of elements of design claimed as trade dress were in that shape to serve a utilitarian function. One of the aspects of
the combination claimed as trade dress was a C-shaped handle: “Whether it is more advantageous for a French press to have a
handle, however, is not the pertinent inquiry; the question is whether there is an advantage to having this designed handle….”6

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To be “Functional,” the Design Need Not be Utilitarian in All of Its Possible Uses. The Federal Circuit held that if there is
any competitively significant utilitarian use of the design claimed as trade dress, then the design is functional and cannot be
registered as a mark. The Trademark Board did not have to find the design functional in the entire universe of potential uses of
the design: “[I]f the Board identifies any competitively significant use in the recited identification of goods for which the mark
is as a whole functional, the Board should deny registration.”7

Lanham Act Language: Functional “As a Whole.” The Lanham Act forbids registration for any mark that “comprises any
matter that, as a whole, is functional.”8 The wording “as a whole” does not mean that a finding of functionality can be avoided
merely because a combination of elements that is functional includes a nonfunctional element. Rather, the statute focuses
attention on the functionality of the combination, rather than on the individual parts.9 The statutory phrase also indicates that
merely because a product has some overall usefulness (e.g. as a beverage container), that does not mean that every design of
that product must be “functional.”10

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Footnotes
1 See Best Lock Corp. v. Schlage Lock Co., 56 C.C.P.A. 1472, 413 F.2d 1195, 1199, 162 U.S.P.Q. 552
(1969) (“Some articles, made in a purely arbitrary configuration (e.g., the wine bottle considered in
Mogen David) may perform a function, holding wine, which could equally well be served by containers
of many other shapes, and in such circumstances the incidental function should not by itself preclude
trademark registrability if the other conditions precedent are present. That is a quite different situation from
a configuration whose purpose is to provide a functional advantage.”) The reference is to the wine bottle in
Application of Mogen David Wine Corp., 51 C.C.P.A. 1260, 328 F.2d 925, 140 U.S.P.Q. 575 (1964), later
proceeding, 372 F.2d 539, 152 U.S.P.Q. 593 (C.C.P.A. 1967).

2 See discussion of the COCA-COLA bottle shape as a trademark and trade dress at § 7:94. See e.g. Fiji Water
Co., LLC v. Fiji Mineral Water USA, LLC, 741 F. Supp. 2d 1165 (C.D. Cal. 2010) (Granting preliminary
injunction against infringement of combination of elements of trade dress in the FIJI mineral water bottle,
including the elements of a square bottle with a blue cap with a depiction of hibiscus and palm fronds.).

3 Franek v. Walmart Stores, Inc., 2009 WL 674269, *11 (N.D. Ill. 2009), aff'd, 615 F.3d 855, 96 U.S.P.Q.2d
1404 (7th Cir. 2010) (Quoting treatise with approval.).

4 Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 203, 5 Media L. Rep. (BNA)
1814, 203 U.S.P.Q. 161 (2d Cir. 1979) (The Second Circuit carefully differentiated between the object (here,
a cheerleaders uniform) and the particular aspects of the uniform asserted to be trade dress. “Plaintiff does not
claim a trademark in all clothing designed and fitted to allow free movement while performing cheerleading
routines, but claims a trademark in the particular combination of colors and collocation of decorations that
distinguish plaintiff's uniform from those of other squads.” Preliminary injunction affirmed.).

5 Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp., 986 F.3d 250, 257 (3d Cir. 2021), as
amended, (Mar. 10, 2021) (Quoting in part from the treatise. Functionality is to be analyzed “not at the level
of the entire product or type of feature, but at the level of the particular design chosen ….”).

6 Bodum USA, Incorporated v. A Top New Casting Incorporated, 927 F.3d 486, 492-493 (7th Cir. 2019)
(“[Defendant] consistently elides the distinction between a product's ‘function’ in the everyday meaning of
the term and ‘functional’ as a term of art used in trade dress law…. Thus, to establish it has a valid trade dress,
[plaintiff] did not have to prove that something like a handle does not serve any function.” Court affirmed
jury verdict of infringement of combination of design elements trade dress in a French press coffee maker.).

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7 Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1277–78, 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002)
(“Requiring the Board to review the ‘entire universe’ of potential uses of a contested mark in the recited
identification of goods would seriously undermine the goals of the functionality doctrine. Functionality may
be established by a single competitively significant application in the recited identification of goods, even
if there is no anticompetitive effect in any other areas of use, since competitors in that single area could
be adversely affected.” Valu Engineering argued that the Board erred by looking to the functionality of the
guide rail design in only one conveyor application: in the wet areas of bottling and canning plants. The
Board found that because the guide rails were functional in that setting, that alone was sufficient proof of
functionality to bar registration for goods defined as “conveyor guide rails.” The Federal Circuit held that
functionality may be established by a single competitively significant application in the recitation of goods
even if there is no proof relating to any other uses of the design.).

8 Principal Register—Lanham Act § 2(e)(5), 15 U.S.C. § 1052(e)(5). Supplemental Register—Lanham Act

§ 23(c), 15 U.S.C.A. § 1091(c); Dilution—Lanham Act § 43(c), 15 U.S.C.A. § 1125(c) (Plaintiff alleging
dilution of trade dress must prove that “the claimed trade dress, taken as a whole, is not functional and is
famous ….”) But a permitted defense to an incontestably registered mark is that “the mark is functional,”
with no mention of “as a whole.” Lanham Act § 33(b)(9), 15 U.S.C. § 1115(b)(9).

9 See § 7:76 for discussion of a nonfunctional combination of individually functional elements. See Tools USA
and Equipment Co. v. Champ Frame Straightening Equipment Inc., 87 F.3d 654, 658, 39 U.S.P.Q.2d 1355
(4th Cir. 1996) (“[T]he critical functionality inquiry is not whether each individual component of the trade
dress is functional, but rather whether the trade dress as a whole is functional.” Combination of elements
of mail-order catalog held nonfunctional.); Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1278
n.6, 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002) (“The term ‘as a whole’ existed under prior decisional law and
refers to the entirety of the mark itself, rather than the entirety of the class of goods in connection with which
the mark is used.”).

10 Kistner Concrete Products, Inc. v. Contech Arch Technologies, Inc., 97 U.S.P.Q.2d 1912, 1920, 2011 WL
481339, *9 (T.T.A.B. 2011) (“The phrase [‘as a whole’] is used to show that merely because a configuration
may have utility or a function does not make it functional and therefore unregistrable. For the configuration
to be functional, it must be shown not just that the item has a function, but also that the performance of that
function is enhanced by the particular configuration in which the configuration is executed.”).

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1 McCarthy on Trademarks and Unfair Competition § 7:71 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

B. UTILITARIAN FUNCTIONALITY

§ 7:71. Functionality is an issue of fact

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

All courts have held that the enquiry as to functionality is a question of fact.1 This means that on appeal in the federal courts,
a finding on functionality is not be to reversed unless found to be “clearly erroneous.”2

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Footnotes
1 Second Circuit
Fun-Damental Too, Ltd. v. Gemmy Industries Corp., 111 F.3d 993, 1002, 42 U.S.P.Q.2d 1348 (2d Cir. 1997)
(“Whether a trade dress is or is not functional is a question of fact ….”)
Fourth Circuit
McAirlaids, Inc. v. Kimberly-Clark Corp., 756 F.3d 307, 310, 111 U.S.P.Q.2d 1546 (4th Cir. 2014)
(“Functionality … is a question of fact that, like other factual questions, is generally put to a jury.”); CTB, Inc.
v. Hog Slat, Inc., 954 F.3d 647 (4th Cir. 2020) (Defendant rebutted the presumption of validity of plaintiff's
contestable registration and the mark was held functional. Summary dismissal was affirmed.)
Fifth Circuit
Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 537, 48 U.S.P.Q.2d 1065 (5th Cir. 1998) (“The
functionality, distinctiveness, or secondary meaning of a mark or trade dress and the existence of a likelihood
of confusion are questions of fact.”)
Seventh Circuit
Specialized Seating, Inc. v. Greenwich Industries, LP, 616 F.3d 722, 726, 96 U.S.P.Q.2d 1580 (7th Cir. 2010)
(“‘Functionality’ certainly isn't an issue of law; it represents a fact-specific conclusion ….”); Arlington
Specialties, Inc. v. Urban Aid, Inc., 847 F.3d 415, 419 (7th Cir. 2017) (“Functionality is a factual question….”
Summary judgement that product design was functional was affirmed.); Flexible Steel Lacing Company v.

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Conveyor Accessories, Inc., 955 F.3d 632, 643, (7th Cir. 2020) (Affirming summary judgment that Product
design of conveyor belt fastener was functional. Defendant rebutted the registration presumption of validity.)
Ninth Circuit
Vuitton Et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769, 775, 210 U.S.P.Q. 351 (9th Cir. 1981),
also published at, 212 U.S.P.Q. 85, 1981 WL 481427 (9th Cir. 1981) (“The issue of functionality has been
consistently treated as a question of fact.”); Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1258,
58 U.S.P.Q.2d 1881 (9th Cir. 2001) (“Functionality is a question of fact.”)
Eleventh Circuit
Epic Metals Corp. v. Souliere, 99 F.3d 1034, 1037, 40 U.S.P.Q.2d 1705 (11th Cir. 1996) (“The issue of
functionality is a question of fact.”)
Federal Circuit
Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1273, 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002)
(“Functionality is a question of fact ….”); In re Becton, Dickinson and Co., 675 F.3d 1368, 1372, 102
U.S.P.Q.2d 1372 (Fed. Cir. 2012) (Question of fact.)
Trademark Board
Poly-America, L.P. v. Illinois Tool Works Inc., 124 U.S.P.Q.2d 1508, 1514, 2017 WL 4687981, *7 (T.T.A.B.
2017) (“Functionality is a question of fact….”)
2 Second Circuit
Fun-Damental Too, Ltd. v. Gemmy Industries Corp., 111 F.3d 993, 1002, 42 U.S.P.Q.2d 1348 (2d Cir. 1997)
(“Whether a trade dress is or is not functional is a question of fact disturbed on appeal only if clearly
erroneous. ….”)
Third Circuit
Ciba-Geigy Corp. v. Bolar Pharmaceutical Co., Inc., 747 F.2d 844, 850, 224 U.S.P.Q. 349 (3d Cir. 1984)
Fifth Circuit
Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 537, 48 U.S.P.Q.2d 1065 (5th Cir. 1998)
Sixth Circuit
Ferrari S.P.A. v. Roberts, 944 F.2d 1235, 1246, 20 U.S.P.Q.2d 1001 (6th Cir. 1991), (“Functionality is a
factual determination reviewed only for clear error.” Finding of no functionality was affirmed.)
Seventh Circuit
Specialized Seating, Inc. v. Greenwich Industries, LP, 616 F.3d 722, 726, 96 U.S.P.Q.2d 1580 (7th Cir.
2010) (Functionality is an issue of fact reviewed on appeal under the clearly erroneous standard. Finding
of functionality was affirmed.); Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d
723, 727, 99 U.S.P.Q.2d 1538 (7th Cir. 2011) (Functionality is an issue of fact that can be found on summary
judgment; affirmed summary judgment that a product design was functional.)
Ninth Circuit
Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 614, 12 U.S.P.Q.2d 1740 (9th Cir. 1989) (“Functionality
is a question of fact, reviewed under the clearly erroneous standard.”)
Tenth Circuit
Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 520, 4 U.S.P.Q.2d 1497, 23 Fed. R. Evid. Serv. 1272 (10th
Cir. 1987) (“Whether a product feature is functional is a factual finding and is therefore reviewed under the
clearly erroneous standard.”)
Eleventh Circuit
Epic Metals Corp. v. Souliere, 99 F.3d 1034, 1037, 40 U.S.P.Q.2d 1705 (11th Cir. 1996) (finding of no
functionality was reversed)
Federal Circuit
In re Becton, Dickinson and Co., 675 F.3d 1368, 1373, 102 U.S.P.Q.2d 1372 (Fed. Cir. 2012) (Functionality
is a factual finding of the Trademark Board which is upheld unless unsupported by substantial evidence.).
See § 21:17.50 (The Administrative Procedure Act governs review of T.T.A.B. factual findings.)

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Works.

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§ 7:72. Burden of proof on functionality issue, 1 McCarthy on Trademarks and Unfair...

1 McCarthy on Trademarks and Unfair Competition § 7:72 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

B. UTILITARIAN FUNCTIONALITY

§ 7:72. Burden of proof on functionality issue

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

Burden of Proof on Functionality for Unregistered Trade Dress. In a 1999 amendment to Lanham Act § 43(a), Congress
resolved a split in the circuits and placed on a plaintiff asserting infringement of unregistered trade dress the burden of proving
nonfunctionality.1 Congress inserted § 43(a)(3): “In a civil action for trade dress infringement under this Act for trade dress
not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter
sought to be protected is not functional.”2

In its 2001 Traffix decision, the Supreme Court characterized the 1999 amendment to Lanham Act § 43(a) as a “statutory
presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection.”3 This
shifting of the burden of proof is significant and can make a crucial difference in the outcome of litigation.4

Pleading Non-Functionality in a Complaint. In pleading a Complaint alleging infringement of a non-registered mark, the
plaintiff's mere conclusory assertion that a product design is not functional is not sufficient to withstand a Rule 12(b)(6) motion
to dismiss.5

Inter Partes Cases. When an opposer in an opposition case makes a prima facie case of functionality of the design for the goods
claimed, the burden then shifts to the applicant to prove nonfunctionality.6

Ex Parte Rejections. In an ex parte examination of an application by an examining attorney of the U.S.P.T.O., the U.S.P.T.O.
has the initial burden of establishing a prima facie case of functionality.7 If a prima facie case is established, the burden then
shifts to the applicant to prove nonfunctionality.8

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§ 7:72. Burden of proof on functionality issue, 1 McCarthy on Trademarks and Unfair...

Pre-1999 Split of Authority in the Case Law. Prior to 1999 statutory change noted above, there was a split of authority
on whether plaintiff without a registered mark had the burden to negate functionality or defendant had the burden to prove
functionality. The majority of courts took the view that in infringement litigation, plaintiff without a registration had the burden
of proving non-functionality of its asserted trademark or trade dress. The minority view was that functionality was a classic
“defense” to be pleaded and proven by defendant as part of a challenge to validity.

Burden of Proof on Functionality for Registered Trade Dress. If plaintiff has a federally registered trademark or service mark
in the design feature, the burden of proof on functionality shifts to defendant, for a registration is at least prima facie evidence of
validity.9 Of course, a contestable registration's presumption of validity and nonfunctionality can be rebutted and the registration
itself may be cancelled.10

Since 1998, functionality is a statutory defense to an incontestably registered mark.11 Even if the plaintiff has an incontestable
registration, if there is a utility patent showing the design, the Supreme Court's Traffix precedent imposes a “heavy burden” on
the plaintiff to prove that the design is not functional.12

While a decision by the U.S.P.T.O. to grant registration after initially rejecting the design as functional is entitled to some
deference by a court, the court must render its own decision on the merits of the issue.13

If the plaintiff's mark is only registered on the federal Supplemental Register, there is no presumption of validity and the
registrant has the same burden as a nonregistrant to prove that its mark is not functional.14

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Pub. L. No. 106-43, 113 Stat. 218 (August 5, 1999).

2 Lanham Act § 43(a)(3), 15 U.S.C.A. § 1125(a)(3).

3 TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 1255, 1260, 149 L. Ed. 2d 164, 58 U.S.P.Q.2d
1001 (U.S. 2001), on remand to, 2001 WL 630049 (6th Cir. 2001). See Eliya, Inc. v. Steven Madden, Ltd.,
749 Fed. Appx. 43 (2d Cir. 2018) (“We are constrained” by the statutory presumption in the TrafFix decision
that design features are presumed to be functional. This means that it is the plaintiff's burden to plead
specific facts supporting non-functionality. Complaint alleging infringement of unregistered trade dress in
shoe designs was properly dismissed on a Rule 12(b)(6) motion.).

4 See e.g., Shire US Inc. v. Barr Laboratories, Inc., 329 F.3d 348, 66 U.S.P.Q.2d 1837 (3d Cir. 2003) (the Third
Circuit distinguished precedent and affirmed the denial of a preliminary injunction against the imitative
coloring of a generic drug, finding that the plaintiff failed to carry its burden of proving nonfunctionality. The
court distinguished its prior contrary precedent in part on the ground that since its own contrary precedent in
1980, Congress enacted the 1999 Lanham Act amendment placing the burden of proving nonfunctionality
of unregistered trade dress on the plaintiff.); Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d
1197, 70 U.S.P.Q.2d 1707, 64 Fed. R. Evid. Serv. 617 (11th Cir. 2004), cert. denied, 125 S. Ct. 911, 160 L.
Ed. 2d 777 (U.S. 2005) (plaintiff failed to meet its burden of proving nonfunctionality: trade dress claim was
dismissed on summary judgment); Secalt S.A. v. Wuxi Shenxi Const. Machinery Co., Ltd., 668 F.3d 677,
683, 101 U.S.P.Q.2d 1553 (9th Cir. 2012) (Plaintiff could not meet its burden of proving non-functionality in
the product design of a window washing platform hoist.); Groeneveld Transport Efficiency, Inc. v. Lubecore
Intern., Inc., 730 F.3d 494, 507, 108 U.S.P.Q.2d 1022 (6th Cir. 2013) (Plaintiff failed to carry its burden
of proving non-functionality of a vehicle lubrication pump. The testimony of plaintiff's designer was not
sufficient.); Bodum USA, Incorporated v. A Top New Casting Incorporated, 927 F.3d 486 (7th Cir. 2019)

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§ 7:72. Burden of proof on functionality issue, 1 McCarthy on Trademarks and Unfair...

(Plaintiff carried its burden and proved the non-functionality of unregistered trade dress in the design of a
French press coffee maker. Court affirmed jury verdict of infringement.).

5 DO Denim, LLC v. Fried Denim, Inc., 634 F. Supp. 2d 403, 408, 91 U.S.P.Q.2d 1589 (S.D. N.Y. 2009) (“The
Amended Complaint includes a conclusory assertion that the Dragon Design is ‘unique and nonfunctional,’
but proffers no factual allegations demonstrating that the design is not aesthetically or otherwise functional.”
Granting Rule 12(b)(6) motion to dismiss with leave to amend.); Urban Group Exercise Consultants, Ltd.
v. Dick's Sporting Goods, Inc., 106 U.S.P.Q.2d 1756, 1762, 2012 WL 3240442 (S.D. N.Y. 2012) (Granting
Rule 12(b)(6) motion to dismiss with leave to amend.), later proceedings 108 U.S.P.Q. 2d 1636, 2013 WL
866867 (S.D.N.Y. 2013) (dismissed with prejudice); Ward v. Andrews McMeel Pub., LLC, 963 F. Supp. 2d
222, 238 (S.D. N.Y. 2013) (“Failure to plead non-functionality is fatal to trade dress infringement claims. ….
Since the Complaint contains no mention of functionality whatsoever, it must be dismissed.”); Eliya, Inc. v.
Steven Madden, Ltd., 749 Fed. Appx. 43 (2d Cir. 2018) (Because the complaint “alleges no specific facts
that plausibly support non-functionality,” the complaint alleging infringement of trade dress in shoe designs
was properly dismissed on a Rule 12(b)(6) motion.); Crafty Productions, Inc. v. Michaels Companies, Inc.,
424 F. Supp. 3d 983, 993-994 (S.D. Cal. 2019), aff'd, 839 Fed. Appx. 95 (9th Cir. 2020) (Affirmed dismissal
on a Rule 12(b)(6) motion a claim for infringement of alleged trade dress in various wooden craft designs.
“The district court was not required to accept as true [plaintiff's] legal conclusion that the trade dresses were
nonfunctional or the additional conclusory statements offered to support non-functionality.”).

6 Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002). Accord: In
re Howard Leight Industries, LLC, 80 U.S.P.Q.2d 1507, n.7, 2006 WL 1968605 (T.T.A.B. 2006) (“[T]he
plaintiff in an inter partes proceeding before the Board bears the initial burden of establishing a prima facie
case of functionality. If such prima facie case is established, the burden then shifts to the applicant (or
registrant) to prove nonfunctionality.”); Saint-Gobain Corp v. 3M Co, 90 U.S.P.Q.2d 1425, 1448, 2007 WL
2509515 (T.T.A.B. 2007) (Applicant did not sustain its burden of showing that its purple color for sandpaper
was not functional after Opposer made a prima facie showing.).

7 In re R.M. Smith, Inc., 734 F.2d 1482, 222 U.S.P.Q. 1 (Fed. Cir. 1984); In re Howard Leight Industries,
LLC, 80 U.S.P.Q.2d 1507, n.7, 2006 WL 1968605 (T.T.A.B. 2006) (“[W]e find that the evidence of record
establishes, prima facie, that applicant's design is functional, and that applicant has failed to rebut that
presumption.”).

8 In re Udor USA Inc., 89 U.S.P.Q. 2d 1978, 2009 WL 576139 (T.T.A.B. 2009) (Applicant was unable to rebut
the PTO's prima facie case of functionality of an irrigation nozzle design and the application was rejected.).

9 Vuitton et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769, 210 U.S.P.Q. 351, 212 U.S.P.Q. 85 (9th
Cir. 1981) (if plaintiff has a federal registration, burden of proof on functionality shifts to defendant);
Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 31 U.S.P.Q.2d 1481 (8th Cir. 1994) (presumption held rebutted);
Playboy Enterprises Inc. v. Chen, 45 U.S.P.Q.2d 1400 (C.D. Cal. 1997) (defendant could not rebut the
presumption of nonfunctionality); Publications Int'l, Ltd. v. Landoll, Inc., 164 F.3d 337, 49 U.S.P.Q.2d 1139
(7th Cir. 1998) (“[R]egistration creates a presumption of validity, implying that the defendant has the laboring
oar on all issues relating to validity, including functionality”).

10 Talking Rain Beverage Co. Inc. v. South Beach Beverage Co., 349 F.3d 601, 68 U.S.P.Q.2d 1764 (9th Cir.
2003) (persuasive evidence of functionality causes the "evidentiary bubble" to burst and plaintiff cannot
survive summary judgment and cancellation of the registration.); Fuji Kogyo Co., Ltd. v. Pacific Bay Intern.,
Inc., 461 F.3d 675, 79 U.S.P.Q.2d 1894, 2006 FED App. 0312P (6th Cir. 2006), cert. denied, 127 S. Ct.
1373 (U.S. 2007) (Presumption of nonfunctionality arising from contestable registrations was overcome by
evidence of functionality of fishing rod line guides. Plaintiff's infringement claim was dismissed and its
registrations cancelled.); Apple Inc. v. Samsung Electronics Co., Ltd., 786 F.3d 983, 992, 114 U.S.P.Q.2d
1953 (Fed. Cir. 2015) (Apple alleged dilution of both registered and unregistered trade dress in the
iPhone. Each type had a different burden of proof. Both types of trade dress were found functional and
unprotectable.); Pearson's Inc. v. Ackerman, 2019 WL 3413501, *14 (N.D. Tex. 2019) (Defendant rebutted

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§ 7:72. Burden of proof on functionality issue, 1 McCarthy on Trademarks and Unfair...

the presumption of validity to prove functionality: the trademark registration of a cattle chute design was
cancelled by the court.); CTB, Inc. v. Hog Slat, Inc., 954 F.3d 647 (4th Cir. 2020) (Defendant rebutted the
presumption of validity of plaintiff's contestable registration for design and color of a poultry feeder device.
Summary dismissal was affirmed. District court cancelled the registration.); Flexible Steel Lacing Company
v. Conveyor Accessories, Inc., 955 F.3d 632, 650, (7th Cir. 2020) (A contestable registration creates a
presumption of validity that “evaporates as soon as evidence of invalidity is presented.” Presumption of non-
functionality of design was rebutted and summary judgment of functionality and invalidity was affirmed.).

See discussion of the split of authority as to the force of the statutory presumption of validity at § 32:138.

11 See § 7:84. See Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723, 727, 99
U.S.P.Q.2d 1538 (7th Cir. 2011) (Affirmed summary judgment for defendant that product design covered by
an incontestable registration was functional.); Sweet Street Desserts, Inc. v. Chudleigh's Ltd., 69 F. Supp. 3d
530, 2014 WL 7331078, *8 (E.D. Pa. 2014), aff'd 655 Fed. Appx. 103, 119 U.S.P.Q. 2d 1641 (3rd Cir. 2016)
(Plaintiff had an incontestable registration of the trade dress in product design and defendant successfully
proved that the design was functional and unprotectable. Summary dismissal granted.); Schutte Bagclosures
Inc. v. Kwik Lok Corporation, 193 F. Supp. 3d 245 (S.D. N.Y. 2016), aff'd, 699 Fed. Appx. 93 (2d Cir. 2017)
(Design for plastic bag closure was subject of an incontestable registration: found to be functional.).

12 Eco Mfg. LLC. v. Honeywell Intern., Inc., 357 F.3d 649, 653, 69 U.S.P.Q.2d 1296 (7th Cir. 2003) (Affirming
denial of preliminary injunction to Honeywell, the owner of an incontestable registration for a round shaped
thermostat.). See discussion of the rule in Supreme Court's Traffix case at § 7:89.

13 Schutte Bagclosures Inc. v. Kwik Lok Corporation, 193 F. Supp. 3d 245, 260 (S.D. N.Y. 2016), aff'd, 699 Fed.
Appx. 93 (2d Cir. 2017) (Registration of design for plastic bag closure was initially rejected by the U.S.P.T.O.
as functional, but application was later passed to publication without explanation or analysis. Court found
the registered design to be functional.) See Real News Project, Inc. v. Independent World Television, Inc.,
88 U.S.P.Q.2d 1299, 2008 WL 2229830, *10 n.14 (S.D. N.Y. 2008) (“[I]n the end, the Court is not bound
by such an initial determination, and is obligated to ultimately render its own decision on the merits.”).

14 ERBE Elektromedizin GmbH v. Canady Technology LLC, 629 F.3d 1278, 1288-1289, 97 U.S.P.Q.2d 1048
(Fed. Cir. 2010) (Plaintiff who was owner of mark on the Supplemental Register failed to prove that its
mark was not functional.).

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§ 7:73. The Morton—Norwich Four Factors to Analyze..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:73 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

B. UTILITARIAN FUNCTIONALITY

§ 7:73. The Morton—Norwich Four Factors to Analyze Functionality

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

Each case of alleged functionality will present a unique set of facts not easily disposed of either by sweeping generalities or
precise legal rules. So long as the proper question is asked, the result will flow from a careful weighing of the evidence relevant
to whether or not the disputed design feature is dictated by utilitarian purposes.

Judge Rich of the Court of Customs and Patent Appeals summarized four factors that bear on the functionality issue.1 While
decided in 1982, the Morton-Norwich quartet of factors retain their relevance and usefulness after subsequent U.S. Supreme
Court decisions on functionality.2 These four factors have often been used by courts across the nation as a practical framework
with which to evaluate the evidence in determining functionality.3 Judge Rich's factors are:

1. The existence of a utility patent which discloses the utilitarian advantages of the design is evidence of “functionality”;4

2. The existence of any advertising or promotion of the proponent of trademark rights which touts the functional and utilitarian
advantages of the very design aspect it now seeks to protect;5

3. The existence of other alternative designs which perform the utility function equally well;6 and

4. Whether or not the design results from a compara tively simple, cheap or superior method of manufacturing the article.7 But
even if the design is more costly to make, it still can be functional.8
Applying these four criteria, the court found that the configuration of a spray bottle container for household liquids (Fig. 7:73A)
was not functional, noting that there was no proof that the shape of the bottle or spray top was required to be that exact shape
for a utilitarian reason.9

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§ 7:73. The Morton—Norwich Four Factors to Analyze..., 1 McCarthy on...

Fig. 7:73A. SPRAY BOTTLE CONTAINER

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1340, 213 U.S.P.Q. 9 (C.C.P.A. 1982) (Finding that
outline shape of spray bottle was not functional.). See In re Bose Corp., 772 F.2d 866, 870, 227 U.S.P.Q.
1 (Fed. Cir. 1985) (“While the Morton-Norwich case dealt with a container design and the present appeal
deals with a product design, the principles set forth in Morton-Norwich are equally appropriate for resolving
questions of registrability of product shapes.”).

2 Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002) (“We
do not understand the Supreme Court's decision in TrafFix to have altered the Morton–Norwich analysis.”);
In re Loggerhead Tools, LLC, 119 U.S.P.Q.2d 1429, 1431, 2016 WL 3876808 (T.T.A.B. 2016) (While the
Morton–Norwich analysis was decided prior to the Supreme Court's functionality decisions, it retains its
vitality.).

3 First Circuit
Hillside Plastics, Inc. v. Dominion & Grimm U.S.A., Inc., 2018 WL 4537205, *8 (D. Mass. 2018) (Using
the Morton-Norwich test to deny judgment on the pleadings for defendant that design of plastic jugs for
maple syrup were functional.)
Second Circuit
Schutte Bagclosures Inc. v. Kwik Lok Corporation, 193 F. Supp. 3d 245, 268 (S.D. N.Y. 2016), aff'd, 699
Fed. Appx. 93 (2d Cir. 2017) (Using the Morton-Norwich test to find shape of a plastic bag closure was
functional.)
Fourth Circuit
CTB, Inc. v. Hog Slat, Inc., 954 F.3d 647, 657–658, (4th Cir. 2020) (Using the Morton-Norwich test to affirm
summary judgment that plaintiff's registered design and color of a poultry feeder device was functional.)
Sixth Circuit
Fuji Kogyo Co., Ltd. v. Pacific Bay Intern., Inc., 461 F.3d 675, 685, 79 U.S.P.Q.2d 1894, 2006 FED
App. 0312P (6th Cir. 2006), (Using the Morton-Norwich test to find shape of fishing rod line guides was
functional. Plaintiff's infringement claim was dismissed and its registrations cancelled.)
Seventh Circuit
Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723, 727–728, 99 U.S.P.Q.2d
1538 (7th Cir. 2011) (Using a similar five-point test derived from the Morton-Norwich test. Court affirmed
summary judgment that a product design was functional.); Flexible Steel Lacing Company v. Conveyor
Accessories, Inc., 955 F.3d 632, 644, (7th Cir. 2020) (Using the five-point test to find that conveyor belt
fastener product design was functional.)

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§ 7:73. The Morton—Norwich Four Factors to Analyze..., 1 McCarthy on...

Ninth Circuit
Clamp Mfg. Co., Inc. v. Enco Mfg. Co., Inc., 870 F.2d 512, 516, 10 U.S.P.Q.2d 1226 (9th Cir. 1989) (Using
the Morton-Norwich factors. Design of a C-clamp tool was found nonfunctional, distinctive and infringed.);
Secalt S.A. v. Wuxi Shenxi Const. Machinery Co., Ltd., 668 F.3d 677, 685, 101 U.S.P.Q.2d 1553 (9th Cir.
2012) (Using the Morton-Norwich four-point test to find design of an industrial hoist to be functional.)
Tenth Circuit
Jenny Yoo Collection, Inc. v. Essense of Australia, Inc., 448 F. Supp. 3d 1162 (D. Kan. 2020) (Using the
Morton-Norwich test. Denying motion for summary dismissal on functionality defense.)
Eleventh Circuit
In re Dippin' Dots Patent Litigation, 249 F. Supp. 2d 1346, 1373 (N.D. Ga. 2003), judgment aff'd, 369 F.3d
1197, 70 U.S.P.Q.2d 1707, 64 Fed. R. Evid. Serv. 617 (11th Cir. 2004) (Using the Morton-Norwich test. to
find spherical shape and size of frozen ice cream product was functional.)
4 See § 7:89.

5 See § 7:74.

6 See § 7:75.

7 Pope Automatic Merchandising Co. v. McCrum-Howell Co., 191 F. 979, 981 (C.C.A. 7th Cir. 1911) (“In
short, appellee uses the most efficient and most economically manufactured form into which the mechanical
combination can probably be embodied.”); Schwinn Bicycle Co. v. Murray Ohio Mfg. Co., 339 F. Supp.
973, 980, 172 U.S.P.Q. 14, 19 (M.D. Tenn. 1971), judgment aff'd, 470 F.2d 975, 176 U.S.P.Q. 161 (6th Cir.
1972) (“[T]he only other process used by bicycle rim manufacturers in the United States is the more complex
and more expensive process of grinding and polishing.”); In re Morton-Norwich Products, Inc., 671 F.2d
1332, 1341, 213 U.S.P.Q. 9 (C.C.P.A. 1982) (“It is also significant that a particular design results from a
comparatively simple or cheap method of manufacturing the article.”).

See Restatement Third, Unfair Competition § 17, comment b (1995) (“The [functional] benefit may lie, for
example, in greater economy in manufacturing, shipping, or handling, in increased utility or durability, or
in enhanced effectiveness or ease of use.”).

8 In re Rolf Dietrich, 91 U.S.P.Q.2d 1622, 1637, 2009 WL 2138978 (T.T.A.B. 2009) (“[E]ven if applicant's
[bicycle] wheels with this design are more costly to produce and while a lower manufacturing cost may
be indicative of the functionality of a product feature, a higher cost does not detract from the functionality
of the feature.”); AS Holdings, Inc. v. H & C Milcor, Inc., F/K/A Aquatico of Texas, Inc., 107 U.S.P.Q.2d
1829, 1836, 2013 WL 4397045 (T.T.A.B. 2013) (Even if the design is more expensive to make, this does
not prove that the shape is non-functional. Utility patents of applicant and others “disclosed the utilitarian
advantages” of the design.).

9 In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 U.S.P.Q. 9 (C.C.P.A. 1982) (As applicant admitted
that the shape was not inherently distinctive, case was remanded for determination of secondary meaning.
A visit to a modern supermarket will reveal the existence of many alternative designs for spray bottles.).

End of Document © 2024 Thomson Reuters. No claim to original U.S. Government

Works.

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§ 7:74. Evidence relevant to the functionality issue—..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:74 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

B. UTILITARIAN FUNCTIONALITY

§ 7:74. Evidence relevant to the functionality issue— Promotion touting utilitarian advantages

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

If a seller advertises the utilitarian advantages of a particular feature, this constitutes strong evidence of functionality.1 For
example, where a trademark registration applicant's own sale literature advertised that its baby bottle shape was designed to be
suitable “for even the youngest and smallest babies' hands to hold,” the bottle shape was held functional and not registrable as
a mark.2 Also, where an applicant's own promotional materials advertised that its ribbed neck bottle for motor oil “provides
stability when pouring the oil” into the engine, the shape was held functional and not registrable as a mark.3

It is not necessary that the advertising explicitly point to the utility of the claimed trade dress feature. It is sufficient if the
utilitarian advantages of the feature are implicit in the advertising.4

To trigger this rule, the advertising must tout the utilitarian advantages of the feature claimed as trade dress, not some other
aspect of the product.5

Advertising encouraging customers to “look for” a particular product or package feature is evidence of trademark or trade dress
status in that feature,6 as well as evidence of the presence of secondary meaning. But advertising touting a product feature
for its desirable utilitarian or aesthetic qualities and not to distinguish source is not evidence of secondary meaning. To the
contrary, such advertising “supports instead the inference that consumers consider the claimed trade dress a desirable feature
of the product and not primarily a signifier of source.”7

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes

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§ 7:74. Evidence relevant to the functionality issue—..., 1 McCarthy on...

1 First Circuit
Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 205 U.S.P.Q. 1009, 1979 WL 25106 (D.N.H. 1979),
aff''d, 626 F.2d 193, 206 U.S.P.Q. 961 (1st Cir. 1980) (advertising pointing out the utilitarian advantages of
the stove design features)
Second Circuit
Schutte Bagclosures Inc. v. Kwik Lok Corporation, 193 F. Supp. 3d 245, 272 (S.D. N.Y. 2016), aff'd, 699
Fed. Appx. 93 (2d Cir. 2017) (Plaintiff's advertising its product design as functionally superior is evidence
of functionality. The product design of a bag closure was found to be functional.)
Third Circuit
American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1 U.S.P.Q.2d 1001 (3d Cir. 1986)
(“tummy graphics” on teddy bears that conveyed the emotional or personality message of each bear were
functional. “If the marketer of a product advertises the utilitarian advantages of a particular feature, this
constitutes strong evidence of its functionality.”)
Seventh Circuit
Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723, 729, 99 U.S.P.Q.2d 1538
(7th Cir. 2011) (Advertising that links the product design registered as a trademark to various utilitarian
benefits is evidence of functionality, the court rejecting argument that the advertising was “mere puffery.”
Affirmed summary judgment that a product design was functional.)
Eighth Circuit
ASICS Corp. v. Target Corp., 282 F. Supp. 2d 1020, 67 U.S.P.Q.2d 1835 (D. Minn. 2003), reconsideration
denied, 2003 WL 22005602 (D. Minn. 2003) (advertising touted the functional advantages of the structure
of a sports shoe: the structure was found to be probably functional and a preliminary injunction denied.)
Ninth Circuit
Universal Frozen Foods, Co. v. Lamb-Weston, Inc., 697 F. Supp. 389, 7 U.S.P.Q.2d 1856 (D. Or. 1987)
(efficiencies of the spiral shape of French fried potatoes were touted by plaintiff in advertising; shape held
functional)
Eleventh Circuit
Epic Metals Corp. v. Souliere, 99 F.3d 1034, 40 U.S.P.Q.2d 1705 (11th Cir. 1996) (evidence of plaintiff
extolling the functional advantages of an industrial design helps prove functionality)
Federal Circuit
Mine Safety Appliances Co. v. Electric Storage Battery Co., 56 C.C.P.A. 863, 405 F.2d 901, 160 U.S.P.Q.
413 (1969) (ribs on hard hat promoted in advertising as functionally advantageous); New England Butt Co.
v. International Trade Com'n, 3 Fed. Cir. (T) 103, 756 F.2d 874, 6 Int'l Trade Re. 1939, 225 U.S.P.Q. 260
(1985) (court relied in part on advertising which promoted the utilitarian advantages of a machine; overall
shape of the machine was held functional); In re Bose Corp., 772 F.2d 866, 227 U.S.P.Q. 1 (Fed. Cir. 1985)
(applicant's promotional materials lauded the pentagonal shape of a loudspeaker as a functional part of the
sound system; held functional)
Trademark Board
In re Bio-Medicus Inc., 31 U.S.P.Q.2d 1254, 1993 WL 723404 (Trademark Trial & App. Bd. 1993)
(applicant's promotional materials touted utilitarian advantages of conical shape of medical blood pump);
In re American National Can Co., 41 U.S.P.Q.2d 1841, 1997 WL 109226 (Trademark Trial & App. Bd.
1997) (applicant's advertising of its fluted can structure as “providing a stronger sidewall-20% greater
crush resistance than an equivalent, nonfluted can” is evidence of its functional ity); In Re Caterpillar
Inc., 43 U.S.P.Q.2d 1335, 1997 WL 424965 (Trademark Trial & App. Bd. 1997) (tractor sprocket design
held functional in part because “applicant's own promotional materials tout the utilitarian advantages of its
elevated sprocket,” the Board rejecting applicant's argument that the advertising claims were mere “puffery”
and “self-serving”); In re Gibson Guitar Corp., 61 U.S.P.Q.2d 1948, 2001 WL 1631369 (Trademark Trial
& App. Bd. 2001), publication ordered, 2002 WL 243563 (Trademark Trial & App. Bd. 2002) (applicant's
advertising promoted the shape of a guitar as producing better music.)
2 In re Babies Beat, Inc., 13 U.S.P.Q.2d 1729 (T.T.A.B. 1990).

3 In re Witco Corp., 14 U.S.P.Q.2d 1557 (T.T.A.B. 1989).

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4 Disc Golf Ass'n Inc. v. Champion Discs, Inc., 158 F.3d 1002, 48 U.S.P.Q.2d 1132 (9th Cir. 1998) (while
advertising touting the utilitarian advantages did not explicitly point to the parabolic chain design claimed
as trade dress, “the functional value of the parabolic design is implicit in the advertising” which illustrated
the parabolic design and lauded the advantages of the product without explicitly referring to the design as
consisting of hanging chains in a parabolic shape).

5 See In re Browning, 217 U.S.P.Q. 933 (T.T.A.B. 1982) (advertising touting the sighting advantages of a
shotgun did not prove functionality since that advertising did not relate to that part of the design sought
for registration).

6 See § 7:30.

7 Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 36 U.S.P.Q.2d 1065, 1071-72 (7th Cir. 1995) (“To
the extent this advertising draws attention to the [product feature claimed as trade dress] at all, as opposed
to the clearly functional barbed locking mechanism, it is only to tout claimed functional and aesthetic
advantages.”), later proceedings, 138 F.3d 277, 46 U.S.P.Q.2d 1026(7th Cir. 1998) (issues of fact remain as
to whether the advertising claims of utilitarian superiority refer to the claimed trade dress shape or to some
other aspects of the product).

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Works.

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1 McCarthy on Trademarks and Unfair Competition § 7:75 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

B. UTILITARIAN FUNCTIONALITY

§ 7:75. Evidence relevant to the functionality issue—Alternative designs available

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

The 1995 Restatement of Unfair Competition places very heavy emphasis on the availability of alternative designs that are
equally suitable to perform the utilitarian task of the design:

[A] design is functional only if [functional] benefits cannot practically be duplicated through the use of other
designs. The availability of alternative designs that satisfy the utilitarian requirements or that otherwise afford
similar advantages is there fore decisive in determining functionality.1

What is the Impact of the 2001 Traffix Case on Consideration of Alternative Designs? In its 2001 Traffix decision, the Supreme
Court said that once a feature is found to be functional under the engineering-driven “traditional” definition, there is no need
to probe further to determine if there is no competitive need for rivals to use the feature.2 Even if there are alternative designs
available in the marketplace, they cannot turn a feature that is functional under the traditional engineering-driven definition
into a nonfunctional feature which is the exclusive trade dress property of one seller.3 It was in that context that the Supreme
Court could observe that:

There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design
possibilities, such as using three or four springs which might serve the same purpose. … Here, the functionality
of the spring design means that competitors need not explore whether other spring juxtapositions might be used.4

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This Delphic pronouncement from the Supreme Court in Traffix is unclear as to what role alternative designs should play in
determining functionality in the first place. As Judge Marrero observed, the holding of the Supreme Court on this point is
“highly elusive.”5 Courts have struggled to define a coherent analysis in which alternative designs can be used to analyze the
functionality issue. The Fifth Circuit initially interpreted the Traffix decision as meaning that “the availability of alternative
designs is irrelevant” to the functionality enquiry.6 But the Fifth Circuit later backtracked and said it would apply two tests: (1)
a “primary test” of whether the claimed feature is essential to the use or purpose of the product or affects the cost or quality
of the product; and (2) a “secondary test” of whether giving exclusive use to plaintiff would put competitors at a functional
disadvantage.7 The Federal Circuit held that nothing in the Supreme Court's Traffix decision prevents a court from looking to
alternative designs in the processes of considering if the design in issue is “functional.”8

Author's View: In my view, the observations of the Supreme Court in Traffix do not mean that the availability of alternative
designs cannot be a legitimate source of evidence to determine in the first instance if a particular feature is in fact “functional.”
I do not read the language of the Supreme Court opinion in Traffix, as some have, to mean that evidence about alternative
designs is totally irrelevant. Rather, the Court said that once a design is found to be functional under Inwood, it cannot then
be given trade dress status merely because there are alternative designs available. That is, the Court said that the existence or
nonexistence of “alternative designs” is not an independent criterion for determining the nonfunctionality or functionality of the
alleged trade dress design. However, that is not the same thing as saying, which the Court did not, that alternative designs cannot
be considered as one source of evidence, along with others, in the initial determination under the Inwood engineering-driven
formulation. For example, under the Inwood formula, endorsed by the Traffix Court, one looks to see if the design in issue "is
essential to the use or purpose of the article or if it affects the cost or quality of the article." Certainly, an expert scientific or
engineering witness can opine on this question and, as in Traffix, prior utility patents can be examined to see if they bear on the
issue.9 My point is that the finder of fact should also be permitted to consider the existence or nonexistence of alternative designs
as part of the total evidentiary matrix to be weighed in reaching the conclusion of whether this design is in fact "essential" and
whether it affects the "cost or quality of the article." Alternative designs or their absence can shed light on these questions.10
The essentiality of the design may be evidenced by several types of evidence. For example, an expert can make a survey of
whether alternatives are present either in the marketplace or in theory that would perform the function just as well. Based upon
the evidence, the finder of fact could conclude that: “As part of my conclusion that this design is “essential,” in addition to the
evidence of engineering analysis, I also considered the evidence that revealed that there are no alternative designs that would
equally carry out the function of the design as well as the design in question.”

I cannot believe that the Supreme Court in Traffix meant, in this back-handed way, to overrule decades of precedent which
has used alternatives as another source of evidence to resolve the difficult puzzle of functionality.11 I think that, as a matter
of policy, consideration of alternatives can assist expert witnesses (and judges) in reaching a sound opinion (or decision) as to
why a shape is or is not “functional” under the Inwood test. More, not less, evidentiary light should be permitted to shine on the
problem. In Traffix, the Court said that the “principal question” to be decided was not the relevance of alternatives, but was the
significance of the presence of the alleged trade dress features in a utility patent. It was this which created “strong evidence”
of functionality in the Traffix case.12

However, the Supreme Court in Traffix made it clear that evidence of alternatives will have no relevance once utility patent
evidence clearly shows that the claimed features are utilitarian and thus “functional.”

Looking at Alternative Designs Was Not Overruled by the Supreme Court in Traffix. The Federal Circuit agreed with the
author's opinion and held that the third factor of that court's traditional Morton-Norwich test13 of looking to alternative designs
was not overruled by the Supreme Court in Traffix:

Nothing in Traffix suggests that consideration of alternative designs is not properly part of the overall mix, and
we do not read the Court's observations in Traffix as rendering the availability of alternative designs irrelevant.14

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Similarly, the Ninth Circuit said that alternative designs can be used to determine functionality in the first place: "[T]he existence
of alternative designs may indicate whether the trademark itself embodies functional or merely ornamental aspects of the
product.”15 The Fourth Circuit agrees.16

Using Alternative Designs to Help Solve the Puzzle of Functionality. Many courts agree that the availability of alternative
designs is a very important evidentiary key to unlocking the mystery of the functionality puzzle.17 The exis tence of actual or
potential alternative designs that work equally well strongly suggests that the particular design used by plaintiff is not needed by
competitors to effectively compete on the merits. If there are a reasonable number of alternatives, then the grant of an exclusive
trade dress right to one of those alternatives will not impair free competition.18 As Professor Dratler noted:

If alternative designs can perform the same utilitarian design equally well, then exclusive use of only one of them
will neither harm competition nor thwart the purposes of the utility patent system. … [A] court must determine
whether alternative means of performing the same function equally well are available in sufficient number that
trademark protection for one of those means will not unduly impair competition.19

In the Taco Cabana Mexican restaurant case, the U.S. Supreme Court affirmed a jury award of almost $2 million in damages for
infringement of the distinctive trade dress design of a Mexican restaurant. The Fifth Circuit in that case rejected a functionality
challenge, saying that “[w]ith the doctrine of functionality, the law secures for the marketplace a latitude of competitive
alternatives.”20 The court emphasized that what was protected was not merely a Mexican theme for a Mexican restaurant, but a
distinctive combination of interior and exterior architectural design, layout and decoration, which left a multitude of alternatives
for competitors: “[Plaintiff] Taco Cabana's particular integration of elements leaves a multitude of alternatives to the upscale
Mexican fast-food industry that would not prove confusingly similar to Taco Cabana's trade dress.”21

Actual or Hypothetical Alternative Designs. Evidence that the same function can be performed by a variety of alternative
designs with no significant sacrifice in utility can be of two types: evidence of actual designs on the market offered by
competitors or evidence of hypothetical designs created by an expert witness designer.22 The fact that alternative designs are
theoretical and not actually commercially available does not make such evidence irrelevant.23 The Seventh Circuit has observed
that: “There is no require ment that the alternative shapes must have been successfully marketed in order to show that effective
competition is possible.”24

Small Number of Alternative Designs. A design may still be functional even if there are alternatives if this design is one of
only a small number of superior designs.25 For example, while paper clips are available in four or five different shapes, it would
seem that each of those shapes is functional because utility, not identification, dictates the shape of each of the few alternatives.

Functional Notwithstanding Alternative Designs. The Supreme Court said that even if there are alternative designs available
in the marketplace, they cannot turn a feature that is functional under the traditional engineering-driven definition into a
nonfunctional feature which is protected as trade dress.26 As the Federal Circuit emphasized:

That another type of [design] would work equally as well does not negate that this [design] was designed
functionally to enhance or at least not detract from the rest of the system. … If the feature asserted to give a
product distinctiveness is the best, or at least one, of a few superior designs for its de facto purpose, it follows that
competition is hindered. Morton-Norwich does not rest on total elimination of competition in the goods. … As

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stated in Honeywell, … “The fact that thermostat covers may be produced in other forms or shapes does not and
cannot detract from the functional character of the configuration here involved.”27

Other courts agree that the existence of a few other alternative designs does not prevent a finding of functionality when other
evidence of the utilitarian nature of the design is strong and persuasive.28 The Seventh Circuit went even further in finding a
folding chair design to be functional, saying that a design does not have to be one of only a few ways to solve a problem or
meet a specific need:

We do not doubt that there are many other available functional designs. Sometimes the function of the functionality
doctrine is to prevent firms from appropriating basic forms (such as the circle) that go into many designs. ….
A design such as Clarin's x-frame chair is functional not because it is the only way to do things, but because it
represents one of many solutions to a problem.29

Alternative Designs Must be Feasible. To be probative of nonfunctionality, alternative designs must be practical, feasible and
effective. “Functionality does not depend on whether other possible designs are feasible.”30 For example, a court said that
alternative aircraft rivet designs to consider are those commercially acceptable for the specification set by the purchaser—
Boeing Aircraft.31 Similarly, the court cannot consider alternative designs for equipment for an organized sport that are not
approved for use by the association that certifies equipment for use in that sport.32 Alternative designs that have “glaring
functional flaws” are not evidence of nonfunctionality.33

The question is not merely whether there are some alternative designs, but whether those designs have all the advantages
possessed by the design in issue. The Trademark Board said: “The question is not whether there are alternative designs that
perform the same basic function, but whether the available designs work ‘equally well.’”34

When the evidence shows that alternative designs cannot be used for the broad range of applications for which the product
shape is suitable, this indicates that the design is functional and should be available for copying.35 However, the alternative
designs need not perform “exactly the same function” to be probative of nonfunctionality.36

Fitting into a Set. It has been held that a feature is not functional merely because the buyer has a certain shaped item and wants
another to make a “matched pair.”37 Similarly, courts have said that functionality is not proven by the desire of a competitor
to sell replacements for trade dress protected items that come in a set, such as hotel china, in order to replace broken items by
making and selling identical replacements.38 However, it has been held that where a product is essentially functional in design,
functionality is further evidenced by the competitive need to sell look-alikes which fit and are compatible with the trade dress
protected product.39 Some courts have held that a color is “functional” if it meets a user's need to fit with or match accompanying
products of the same color.40 But other courts have said that a consumer desire to have a matched product of the same color as
that used by a competitor does not prove that the color is “functional” and unprotectable as a trademark or trade dress.41

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes

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1 Restatement Third, Unfair Competition § 17, comment b (1995) (“The [functional] benefit may lie, for
example, in greater economy in manufacturing, shipping, or handling, in increased utility or durability, or
in enhanced effectiveness or ease of use.”).

2 TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 1255, 1262, 149 L. Ed. 2d 164, 58 U.S.P.Q.2d
1001 (U.S. 2001), on remand to, 2001 WL 630049 (6th Cir. 2001) (“Where the design is functional under
the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity
for the feature.”).

3 In re Howard Leight Industries, LLC, 80 U.S.P.Q.2d 1507, 2006 WL 1968605 (T.T.A.B. 2006) (Because
applicant's own expired utility patent clearly proved utilitarian functionality, the TrafFix precedent meant
there was no need to go further to consider alternative designs.); In re Becton, Dickinson and Co., 675 F.3d
1368, 1376, 102 U.S.P.Q.2d 1372 (Fed. Cir. 2012) (If functionality is found based on other considerations,
there is no need to go further to analyze whether alternative designs exist.); CTB, Inc. v. Hog Slat, Inc., 954
F.3d 647, 662, (4th Cir. 2020) (Because the design and color of the device was proven to be functional under
the traditional test, consideration of alternative designs was “foreclosed by TrafFix.” Affirmed summary
judgment that plaintiff's registered design and color of a poultry feeder device was functional.); Flexible
Steel Lacing Company v. Conveyor Accessories, Inc., 955 F.3d 632, 644, (7th Cir. 2020) (TrafFix teaches
that if a utility patent proves a lack of a triable dispute that the design is functional, alternative designs will
not create an issue to defeat summary judgment. Conveyor belt fastener product design was functional.).

4 TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 1255, 1262, 149 L. Ed. 2d 164, 58 U.S.P.Q.2d
1001 (U.S. 2001), on remand to, 2001 WL 630049 (6th Cir. 2001). Of course, the Court in Traffix certainly
did not say that a court is required to examine alternative designs. Antioch Co. v. Western Trimming Corp.,
347 F.3d 150, 68 U.S.P.Q.2d 1673, 2003 FED App. 0368P (6th Cir. 2003). See Groeneveld Transport
Efficiency, Inc. v. Lubecore Intern., Inc., 730 F.3d 494, 508, 108 U.S.P.Q.2d 1022 (6th Cir. 2013) (Under
the Traffix rule, “courts should not inquire into alternative designs when the design at issue is substantially
influenced by functional considerations.”).

5 Maharishi Hardy Blechman Ltd. v. Abercrombie & Fitch Co., 292 F. Supp. 2d 535, 546, 69 U.S.P.Q.2d
1493 (S.D. N.Y. 2003) (“Abercrombie is correct that Traffix bears strongly on the import of alternate designs
to the question of functionality, but the exact holding of Traffix on this point is highly elusive …. [T]he
Supreme Court would have doubtfully rendered such a sweeping change in trade dress law without more
discussion (or clarity, for that matter.)”). See Cohen, Following the Direction of Traffix: Trade Dress Law and
Functionality Revisited, 50 IDEA 593, 696 (2010) (“[T]he federal courts are not following one consistent
path in determinations of functionality, differing in their treatment of patent evidence and evidence of
alternative designs and how they even define functionality.”).

6 Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 62 U.S.P.Q.2d 1534 (5th Cir. 2002),
cert. denied, 537 U.S. 1071, 123 S. Ct. 671, 154 L. Ed. 2d 565 (2002) (plaintiff failed to carry its burden
of proving nonfunctionality of disposable pipette tips used to measure liquids. The court reached the
finding of functionality on purely engineering-driven evidence, saying that therefore, consideration of design
alternatives were “unnecessary.”).

7 Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel
Co., 550 F.3d 465, 486, 239 Ed. Law Rep. 874, 89 U.S.P.Q.2d 1338 (5th Cir. 2008), cert. denied, 129 S.
Ct. 2759 (2009).

8 Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002) (“[W]e
do not read the Court's observations in Traffix as rendering the availability of alternative designs irrelevant.”
See discussion of Valu Engineering and the cases that follow it later in this section).

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9 Dinwoodie, The Trademark Jurisprudence of the Rehnquist Court, 8 Marquette IP L. Rev. 187, 200–201
(2004) ("What is 'essential' and what puts competitors at 'nonreputational-related disadvantages' will not be
easy to answer absent such subsidiary analyses of alternative designs and competitive conditions.").

10 Often, the issue of the availability of alternative designs cannot be answered with a simple “yes” or “no.”
Rather, it will be a question of placement on a spectrum of possibilities. The evidence will sometimes be
fraught with uncertainties, such as how effectively the alternatives can perform the crucial function and how
practical and feasible are the alternatives. There may be a battle of the experts opining in different ways on
the same body of evidence. I believe that this kind of evidence of alternatives should be weighed along with
other kinds of evidence and not simply ignored.

11 The Supreme Court itself eleven years earlier affirmed a decision in which the Fifth Circuit explicitly relied
upon the existence of alternative designs to find nonfunctionality. Taco Cabana Intern., Inc. v. Two Pesos,
Inc., 932 F.2d 1113, 19 U.S.P.Q.2d 1253 (5th Cir. 1991), judgment aff'd, 505 U.S. 763, 112 S. Ct. 2753,
120 L. Ed. 2d 615, 23 U.S.P.Q.2d 1081 (1992) (“[Plaintiff] Taco Cabana's particular integration of elements
leaves a multitude of alternatives to the upscale Mexican fast-food industry that would not prove confusingly
similar to Taco Cabana's trade dress.”). See: V.N. Palladino, Trade Dress Functionality After Traffix: The
Lower Courts Divide Again, 93 Trademark Rptr. 1219, 1239 (2003) ("[E]vidence concerning the availability
of alternative designs is relevant in determining whether the design of a product feature is functional.").

12 See § 7:89.

13 See § 7:69.

14 Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002).
See Soclean, Inc., v. Sunset Healthcare Solutions, Inc., 52 F. 4th 1363, 1370-1371 (Fed. Cir. 2022)
(“Most circuits, including this court, have held that alternative designs are a relevant consideration in the
functionality analysis…. The leading treatise on trademark law considers that the correct approach as well.”
Lower court did not err in considering alternative designs.). Accord: Adidas-Salomon AG v. Target Corp.,
228 F. Supp. 2d 1192 (D. Or. 2002) (that "a multitude of design alternatives are available to other shoe
manufacturers" supports finding that combination of features of a sports shoe is not functional, denying
dismissal on summary judgment) Logan Graphic Products, Inc. v. Textus USA, Inc., 67 U.S.P.Q.2d 1470,
2003 WL 21011746 (N.D. Ill. 2003) ("When making an initial determination about functionality as we do
here, it is appropriate to consider alternatives in the marketplace." Design was found not functional and
preliminary injunction was granted.); K-Swiss, Inc. v. USA AISIQI Soes Inc., 291 F. Supp. 2d 1116, 68
U.S.P.Q.2d 1340 (C.D. Cal. 2003) (the fact that competitors routinely use alternative designs weighs in
support of the finding that a five-stripe design on a sport shoe was not functional: preliminary injunction
granted); Maharishi Hardy Blechman Ltd. v. Abercrombie & Fitch Co., 292 F. Supp. 2d 535, 69 U.S.P.Q.2d
1493 (S.D. N.Y. 2003) (agreeing with Valu Engineering); Franek v. Walmart Stores, Inc., 2009 WL 674269,
*16 (N.D. Ill. 2009), aff'd, 615 F.3d 855, 96 U.S.P.Q.2d 1404 (7th Cir. 2010) (following Valu Engineering.).

15 Talking Rain Beverage Co. Inc. v. South Beach Beverage Co., 349 F.3d 601, 68 U.S.P.Q.2d 1764 (9th Cir.
2003) (But cautioning that once functionality has been determined, the mere existence of alternatives "cannot
negate a trademark's functionality." Functionality of a mineral bottle shape was found and registration
cancelled.). Accord: Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 63 U.S.P.Q.2d 1587 (9th Cir. 2002)
(Post-Traffix, examining alternative designs as part of the basic functionality enquiry.); Moldex-Metric,
Inc. v. McKeon Products, Inc., 891 F.3d 878, 886 (9th Cir. 2018) (“Our case law shows that we continue
to consider the existence or nonexistence of alternative designs as probative evidence of functionality or
nonfunctionally.” Reversing and remanding summary dismissal because “the district court gave insufficient
recognition to he importance of” alternatives.).

16 McAirlaids, Inc. v. Kimberly-Clark Corp., 756 F.3d 307, 312, 111 U.S.P.Q.2d 1546 (4th Cir. 2014) (“Thus,
Traffix did not alter our precedents that look to the availability of alternative designs when considering, as
an initial matter, whether a design affects product quality or is merely ornamental.”).

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17 Second Circuit
PAF S.r.l. v. Lisa Lighting Co., Ltd., 712 F. Supp. 394, 12 U.S.P.Q.2d 1161 (S.D. N.Y. 1989) (evidence of
alternative designs that perform the same function “militates strongly against a finding of functionality”);
Lon Tai Shing Co., Ltd. v. Koch + Lowy, 19 U.S.P.Q.2d 1081, 1104, 1991 WL 170734 (S.D. N.Y. 1991)
(evidence of “numerous available variations in style for each of the components of a halogen lamp” is
persuasive evidence of nonfunctionality); Braun Inc. v. Dynamics Corp. of America, 775 F. Supp. 33, 19
U.S.P.Q.2d 1696 (D. Conn. 1991), aff'd in part, rev'd in part, 975 F.2d 815, 24 U.S.P.Q.2d 1121 (Fed.
Cir. 1992) (Infringement of trade dress in design of hand-held kitchen blender: “[T]he jury was shown
various other models which accomplish quite similar functions, yet look strikingly different from [plaintiff's]
blender.” This was “ample evidence” from which jury properly found nonfunctionality.); Landscape Forms,
Inc. v. Columbia Cascade Co., 70 F.3d 251, 254, 36 U.S.P.Q.2d 1790 (2d Cir. 1995) (remanding for
district court to conduct a functionality analysis as to whether the design of commercial furniture “confers
a significant competitive benefit that cannot practically be duplicated by the use of alternative furniture
designs”); Maharishi Hardy Blechman Ltd. v. Abercrombie & Fitch Co., 292 F. Supp. 2d 535, 548, 69
U.S.P.Q.2d 1493 (S.D. N.Y. 2003) (“As part of this inquiry [into functionality], the Court must also consider
alternative design possibilities, …”)
Third Circuit
Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78 n.4, 216 U.S.P.Q. 102 (3d Cir. 1982) (existence
of other manufacturer's cube puzzles marked with numbers, domino designs and pictures evidences the
existence of alternatives to plaintiff's particular colors used to differentiate the faces of a cube puzzle; held
nonfunctional); Merchant & Evans, Inc. v. Roosevelt Bldg. Products Co., Inc., 963 F.2d 628, 22 U.S.P.Q.2d
1730, 1734 (3d Cir. 1992) (“This court … has held product configurations to be functional when only a
limited number of viable alternatives exist.” Seam of roofing panels held functional.)
Fourth Circuit
Tools USA and Equipment Co. v. Champ Frame Straightening Equipment Inc., 87 F.3d 654, 39 U.S.P.Q.2d
1355 (4th Cir. 1996) (following Restatement test and using the availability of alternative designs to find that
a combination of features of a mail-order catalog was not functional)
Fifth Circuit
Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417, 429 (5th Cir. 1984) (a design is not functional and
hence unprotectable “unless the design is only one of a limited number of equally efficient options and free
competition would be unduly hindered by according that design trademark protection”)
Sixth Circuit
Groeneveld Transport Efficiency, Inc. v. Lubecore Intern., Inc., 730 F.3d 494, 523, 108 U.S.P.Q.2d 1022 (6th
Cir. 2013) (Judge White dissenting said the majority improperly held that evidence of alternative designs
was irrelevant to the functionality issue.)
Seventh Circuit
Logan Graphic Products, Inc. v. Textus USA, Inc., 67 U.S.P.Q.2d 1470, 2003 WL 21011746 (N.D. Ill. 2003)
(Design was found not functional and preliminary injunction was granted.); Franek v. Walmart Stores, Inc.,
2009 WL 674269, *16 (N.D. Ill. 2009), aff'd, 615 F.3d 855, 96 U.S.P.Q.2d 1404 (7th Cir. 2010) (Using
alternative designs to find round beach towel design to be functional.); Arlington Specialties, Inc. v. Urban
Aid, Inc., 847 F.3d 415, 420 (7th Cir. 2017) (Quoting treatise that looking to alternative designs is one
factor to consider. Noting that the question is not whether plaintiff's product design is inferior to alternative
functional designs. “Here, the undisputed evidence shows that the claimed design features affect product
quality, so we need not consider the availability of alternative designs for competitors.”)
Ninth Circuit
Clamp Mfg. Co., Inc. v. Enco Mfg. Co., Inc., 870 F.2d 512, 10 U.S.P.Q.2d 1226 (9th Cir. 1989) (C-
clamp tool held nonfunctional in part on evidence of both actual and hypothetical commercially feasible
alternative configurations); Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 63 U.S.P.Q.2d 1587 (9th Cir.
2002) (Examining alternative designs as part of the functionality enquiry.); Talking Rain Beverage Co. Inc. v.
South Beach Beverage Co., 349 F.3d 601, 68 U.S.P.Q.2d 1764 (9th Cir. 2003) (“[T]he existence of alternative
designs may indicate whether the trademark itself embodies functional or merely ornamental aspects of the
product.”); Moldex-Metric, Inc. v. McKeon Products, Inc., 891 F.3d 878, 886 (9th Cir. 2018) (“Our case
law shows that we continue to consider the existence or nonexistence of alternative designs as probative

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evidence of functionality or nonfunctionally.” Reversing and remanding summary dismissal because “the
district court gave insufficient recognition to he importance of” alternatives.)
Tenth Circuit
Hartford House, Ltd. v. Hallmark Cards, Inc., 846 F.2d 1268, 6 U.S.P.Q.2d 2038 (10th Cir. 1988) (the
availability of alternative designs is a “key factor in determining that a trade dress is nonfunctional”)
Federal Circuit
Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002)
(“Nothing in TrafFix suggests that consideration of alternative designs is not properly part of the overall mix,
and we do not read the Court's observations in TrafFix as rendering the availability of alternative designs
irrelevant.”); Soclean, Inc., v. Sunset Healthcare Solutions, Inc., 52 F. 4th 1363, 1370-1371 (Fed. Cir. 2022)
(“Most circuits, including this court, have held that alternative designs are a relevant consideration in the
functionality analysis…. The leading treatise on trademark law considers that the correct approach as well.”
Lower court did not err in considering alternative designs.)
Trademark Board
In re Honeywell Inc., 8 U.S.P.Q.2d 1600, 1988 WL 252417 (T.T.A.B. 1988) (The fact that competitors have
not needed to use this design was evidence of nonfunctionality. Round thermostat cover which was once held
functional was held now to be nonfunctional and registerable as a trademark.), later proceedings, Eco Mfg.
LLC. v. Honeywell Intern., Inc., 357 F.3d 649, 69 U.S.P.Q.2d 1296 (7th Cir. 2003) (denying preliminary
injunction); In re Charles N. Van Valkenburgh, 97 U.S.P.Q.2d 1757, 1763, 2011 WL 165454 (T.T.A.B. 2011)
(“[T]he availability of alternative designs does not convert a functional design into a non-functional design.”
A motorcycle stand design was held functional.)
Int'l Trade Comm'n
In re Sneakers with Fabric Uppers and Rubber Soles, 223 U.S.P.Q. 536, 1983 WL 54110 (Int'l Trade Comm'n
1983) (hexagonal pattern on sole of children's sneakers were nonfunctional, noting several other designs
that were equally useful and that this design was more costly to produce)
18 See In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 U.S.P.Q. 9, 16 (C.C.P.A. 1982) (“Since
the effect upon competition ‘is really the crux of the matter,’ it is, of course, significant that there are
other alternatives available.”). See In re Zippo Mfg. Co., 50 U.S.P.Q.2d 1852 (T.T.A.B. 1999) (the ZIPPO
cigarette lighter design, while originally functional because cheaper and easier to make, over time became
nonfunctional as competitors introduced alternative designs into the market. “Inasmuch as several alternative
designs are currently competing in the marketplace for these products, it does not appear that applicant's
design has in any way hindered competition.”).

19 Dratler, Trademark Protection for Industrial Designs, 1988 U. Ill. L. Rev. 887, 944-945 (1988).

20 Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 19 U.S.P.Q.2d 1253, 1257 (5th Cir. 1991), aff'd,
505 U.S. 763, 120 L. Ed. 2d 615, 112 S. Ct. 2753, 23 U.S.P.Q.2d 1081 (1992).

21 Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 19 U.S.P.Q.2d 1253, 1257 (5th Cir. 1991), aff'd,
505 U.S. 763, 120 L. Ed. 2d 615, 112 S. Ct. 2753, 23 U.S.P.Q.2d 1081 (1992).

22 One way to achieve hypothetical design alternatives is to use an expert who is not aware of the actual
design and who is given the utilitarian specifications and asked to design several alternatives to meet the
specifications. If the expert then designs several equally utilitarian alternatives, this is evidence that the
design in question is not functional. Another approach is to simply give the expert the product in question
and have the expert design some alternatives which work as well.

23 In re Lincoln Diagnostics, 30 U.S.P.Q.2d 1817, 1824 (T.T.A.B. 1994) (“We believe that alternative design
evidence of this nature has probative value where, as here, there is supporting evidence as to the comparable
efficacy and manufacturing cost of the alternatives.”). See Clamp Mfg. Co., Inc. v. Enco Mfg. Co., Inc., 870
F.2d 512, 10 U.S.P.Q.2d 1226 (9th Cir. 1989) (C-clamp tool held nonfunctional in part on evidence of both
actual and hypothetical commercially feasible alternative configurations).

24 Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 46 U.S.P.Q.2d 1026 (7th Cir. 1998).

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25 Restatement Third, Unfair Competition § 17, comment b (1995) (“[A] design may be functional if it is one of
a limited number of superior designs.”). See In re Lincoln Diagnostics Inc., 30 U.S.P.Q.2d 1817, 1824, 1994
WL 262247 (T.T.A.B. 1994) (The existence of seven hypothetical alternative designs was characterized as
still being a “very limited number” of designs available to competitors which did not prevent a finding of
functionality of the design of a medical diagnostic apparatus.).

26 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33-34, 121 S. Ct. 1255, 149 L. Ed. 2d 164,
58 U.S.P.Q.2d 1001 (2001) (“Where the design is functional under the Inwood formulation there is no need
to proceed further to consider if there is a competitive necessity for the feature…. Here, the functionality
of the spring design means that competitors need not explore whether other spring juxtapositions might be
used.”). Accord: In re Becton, Dickinson and Co., 675 F.3d 1368, 1376, 102 U.S.P.Q.2d 1372 (Fed. Cir.
2012) (If functionality is found based on other considerations, there is no need to go further to analyze
whether alternative designs exist.). See discussion at the beginning of this section.

27 In re Bose Corp., 772 F.2d 866, 872-873, 227 U.S.P.Q. 1 (Fed. Cir. 1985). See Greenhouse Sys. v. Carson, 37
U.S.P.Q.2d 1748 (T.T.A.B. 1995) (“There are only a limited number of functionally equivalent alternative
deigns for a gothic arch-style greenhouse, and allowing applicant to register one of those deigns as a
trademark would hinder competition.”); In re Edwards Ski Products Inc., 49 U.S.P.Q.2d 2001 (T.T.A.B.
1999) (“We need not determine that [the applicant's ski mask design] is the superior design; so long as it
is a superior design or one of a few superior design, the test for de jure functionality has been met and
accordingly, registration is refused.”); In re Howard Leight Industries, LLC, 80 U.S.P.Q.2d 1507, 2006
WL 1968605 (T.T.A.B. 2006) (Earplug design was found to be functional. Several other earplug designs
lacked the features claimed and disclosed in applicant's expired utility patent, the Board concluding that
applicant's shape was “one of but few possible alternative designs which provide these features and serve
these functions.”).

But compare In re Zippo Mfg. Co., 50 U.S.P.Q.2d 1852 (T.T.A.B. 1999) (the ZIPPO cigarette lighter
design, while originally functional because cheaper and easier to make, over time became nonfunctional as
competitors introduced alternative designs into the market).

28 Keene Corp. v. Paraflex Industries, Inc., 653 F.2d 822, 211 U.S.P.Q. 201, 206 (3d Cir. 1981) (Because
“there are only a limited number of configurations or designs” in which an outdoor lighting fixture would be
architecturally compatible with the style of building to which it would be attached, the design was functional.
The design of such a product “does not have the unlimited boundaries as does the selection of a wine bottle
or ashtray design.”); Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, n.4, 216 U.S.P.Q. 102, n.4 (3d
Cir. 1982) (distinguishing the observation in Keene to the effect that the existence of other equally functional
shapes does not per se disprove functionality); In re Vico Products Mfg. Co., 229 U.S.P.Q. 364, 368 (T.T.A.B.
1985), recons. denied, 229 U.S.P.Q. 716 (T.T.A.B. 1986) (Configuration of venturi pipes for whirlpool jet is
functional. The maker of such a highly utilitarian article has only a few alternative configurations available.
“Therefore, the availability of some alternative workable product designs does not necessarily mean that
applicant's design is nonfunctional.”); Tyco Industries, Inc. v. Lego Systems, Inc., 5 U.S.P.Q.2d 1023 (D.N.J.
1987), aff'd, 853 F.2d 921 (3d Cir. 1988), cert. denied, 488 U.S. 955, 102 L. Ed. 2d 381, 109 S. Ct. 392 (1988)
(The existence of a few possible alternative shapes is insufficient to disprove functionality. “Simply because
other configurations are available or feasible does not render the block nonfunctional.”); Ohio Art Co. v.
Lewis Galoob Toys, Inc., 799 F. Supp. 870, 25 U.S.P.Q.2d 1496, 1508 (N.D. Ill. 1992) (“Where there are a
limited number of alternative designs available to competitors, no one of those designs should be taken from
the public domain through trademark protection.” ETCH A SKETCH drawing toy design held functional
and preliminary injunction denied.).

29 Specialized Seating, Inc. v. Greenwich Industries, LP, 616 F.3d 722, 727, 96 U.S.P.Q.2d 1580 (7th Cir. 2010)
(“What this says to us is that all of the designs are functional, in the sense that they represent different
compromises along the axes of weight, strength, kind of material, ease of setup, ability to connect (‘gang’) the
chairs together for maximum seating density, and so on.”). Accord: Georgia-Pacific Consumer Products LP
v. Kimberly-Clark Corp., 647 F.3d 723, 731, 99 U.S.P.Q.2d 1538 (7th Cir. 2011) (Court affirmed a summary

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judgment that a quilted design on toilet paper was functional even though other designs could be equally
functional. “[B]ecause we find the design to be functional, the fact that there are numerous alternative designs
does not, on its own, render the design nonfunctional and incidental.”); Arlington Specialties, Inc. v. Urban
Aid, Inc., 847 F.3d 415, 420 (7th Cir. 2017) (The question is not whether plaintiff's product design is inferior
to alternative functional designs. “Here, the undisputed evidence shows that the claimed design features
affect product quality, so we need not consider the availability of alternative designs for competitors.”
Summary judgment of functionality was affirmed.); In re Change Wind Corp., 123 U.S.P.Q.2d 1453, 2017
WL 3446786 (T.T.A.B. 2017) (That other designs for a wind turbine share some of the same advantages
as applicant's design did not prevent a finding of functionality. “Functionality does not prohibit registration
only of the specific design with the best functionality, it prohibits registration of all functional designs….”).

30 Ohio Art Co. v. Lewis Galoob Toys, Inc., 799 F. Supp. 870, 25 U.S.P.Q.2d 1496, 1508 (N.D. Ill. 1992).

31 Allfast Fastening Systems v. Briles Rivet Corp., 16 F. Supp. 2d 1154, 47 U.S.P.Q.2d 1170 (C.D. Cal. 1998)
(“The evidence demonstrates that other rivets exist, which may even work as well as the ring domed rivet,
but Boeing does not purchase them for the twenty-six planes covered by the BACR 15 FV specification.”).

32 Disc Golf Ass'n Inc. v. Champion Discs, Inc., 158 F.3d 1002, 48 U.S.P.Q.2d 1132 (9th Cir. 1998) (none of
the alternative designs offered by plaintiff were approved by the Professional Disc Golf Association, which
is responsible for establishing and maintaining technical standards for equipment approved for use).

33 Continental Laboratory Products, Inc. v. Medax Intern., Inc., 114 F. Supp. 2d 992, 56 U.S.P.Q.2d 1548,
1566-67 (S.D. Cal. 2000) (“[Precedent] does not preclude a plaintiff from relaying on hypothetical
alternatives. So long as the plaintiff offers evidence that its hypothetical alternatives would possess
competitive characteristics (i.e. cost. quality and usability) the design is not [improperly] ‘theoretical or
speculative.’ ”).

34 Kistner Concrete Products, Inc. v. Contech Arch Technologies, Inc., 97 U.S.P.Q.2d 1912, 1930, 2011 WL
481339 (T.T.A.B. 2011) (Experts testified that alternative arch designs would not work as well as registrant's
design in some long span and low rise applications. The Board held that alternative concrete arch designs
did not possess all of the advantages of the registrant's arch, which was found to be functional and the
registration invalid.). See Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1277, 61 U.S.P.Q.2d 1422
(Fed. Cir. 2002) (Quoting treatise that: “The existence of actual or potential alternative designs that work
equally well strongly suggests that the particular design used by plaintiff is not needed by competitors to
effectively compete on the merits.” Emphasis added.); Schutte Bagclosures Inc. v. Kwik Lok Corporation,
193 F. Supp. 3d 245, 270 (S.D. N.Y. 2016), aff'd, 699 Fed. Appx. 93 (2d Cir. 2017) (Alternative designs
created for litigation did not demonstrate that there were practical alternatives: “the alternatives only invite
speculation about design possibilities.” The product design of a bag closure was found to be functional.).

35 In re Bio-Medicus, Inc., 31 U.S.P.Q.2d 1255 (T.T.A.B. 1993) (alternative designs for medical heart pump
were not suitable for long term operations, as was applicant's heart pump configuration which was claimed
as a registerable trademark; held functional); Mag Instrument, Inc. v. The Brinkmann Corporation, 96
U.S.P.Q.2d 1701, 1721, 2010 WL 3253200 (T.T.A.B. 2010) (Alternative hypothetical designs that are not
functionally equivalent to the design in issue are not evidence of nonfunctionality.).

36 Leatherman Tool Group, Inc. v. Cooper Industries Inc., 44 U.S.P.Q.2d 1275, 1996 WL 931338 (D. Or. 1996),
rev'd in part, 199 F.3d 1009, 53 U.S.P.Q.2d 1196 (9th Cir. 1999) (“[T]he critical inquiry focuses not upon the
exact identity of individual features but whether the alternatives proffered are true alternatives.” Evidence
of other multifunction pocket tools is probative of nonfunctionality even if those other tools do not have
exactly the same number of features that perform exactly the same functions.). Compare Leatherman Tool
Group, Inc. v. Cooper Industries, Inc., 199 F.3d 1009, 53 U.S.P.Q.2d 1196 (9th Cir. 1999), vacated in part on
other grounds, 532 U.S. 424, 121 S. Ct. 1678, 149 L. Ed. 2d 674, 58 U.S.P.Q.2d 1641 (2001) (“Nevertheless,
Leatherman does not have rights under trade dress law to compel its competitors to resort to alternative
designs which have a different set of advantages and disadvantages. Such is the realm of patent law.”).
Accord: Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 63 U.S.P.Q.2d 1587 (9th Cir. 2002) (alternative

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designs which have a set of advantages and disadvantages different from the accused design are not evidence
of nonfunctionality.).

37 W.T. Rogers Co. v. Keene, 778 F.2d 334, 228 U.S.P.Q. 145 (7th Cir. 1985) (rejecting the argument that
defendant should be allowed to make and sell stacked office trays that look like plaintiff's trays in order to
achieve “decor compatibility” when trays of plaintiff and defendant are stacked together: “A design feature
to be aesthetically functional must be pleasing in itself; it is not enough that a person who owns two items
with that feature wants a matched pair.”). See L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 52 U.S.P.Q.2d
1307 (Fed. Cir. 1999) (court held that the color compatibility of a brick finish on the plate of an interior
lighting fixture with the color and decor of the furnishings does not alone make the design functional. “Mere
taste or preference cannot render a color—unless it is ‘the best or at least one, of a few superior designs’—de
jure functional.”) See discussion of design compatibility in cases at § 7:80.

38 Villeroy & Boch Keramische Werke K.G. v. THC Sys., Inc., 999 F.2d 619, 27 U.S.P.Q.2d 1866 (2d Cir.
1993) (Rejecting the argument that defendant should be allowed to make hotel china with a design on it
identical to plaintiff's trade dress in order to compete with plaintiff in selling replacement china to hotels.
“The long term nature of the buying patterns of the hotel china market may make it difficult for [defendant]
to persuade a hotel to switch to a new pattern once it has started with the [plaintiff's] design, but [defendant]
has not made the necessary showing that it is at a significant competitive disadvantage in making the initial
sale without the [trade dress] pattern.”); Gasser Chair Co. v. Infanti Chair Mfg. Corp., 943 F. Supp. 201, 40
U.S.P.Q.2d 1554, 1565 (E.D.N.Y. 1996), injunction vacated as too broad, 95 F.3d 1165, 40 U.S.P.Q.2d 1700
(Fed Cir. 1996) (unpublished), injunction redefined on remand, 40 U.S.P.Q.2d 1701 (E.D.N.Y. 1996), aff'd
without opinion, 155 F.3d 565, 47 U.S.P.Q.2d 1208 (Fed. Cir. 1998) (rejecting the argument that defendant's
copying of plaintiff's trade dress protected chairs was justified by the competitive need to replace broken
chairs for plaintiff's customers).

39 In re Polk's Model Craft Hobbies Inc., 40 U.S.P.Q.2d 1711 (Bankr. D.N.J. 1995) (Design of model train track
held functional because of utilitarian constraints to make the track realistic and because of the copier's desire
to make track which fits and is compatible with plaintiff's track. “[L]ike [the senior user], [the copier] desired
to produce a European style toy train track that was authentic looking. … A component of [the copier's]
efforts to compete is production of track that is aesthetically and functionally compatible with [the senior
user's] track so that consumers can use [the senior user] and [the copier's] components in a train layout.”).

40 Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 98, 217 U.S.P.Q. 252 (S.D. Iowa 1982), judgment aff'd,
721 F.2d 253 (8th Cir. 1983) (Green color held “functional” because farmers like to have farm accessories
color-coordinated with their tractors.). See Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532,
32 U.S.P.Q.2d 1120 (Fed. Cir. 1994) (Black outboard motor was held to be functional under the traditional
utilitarian definition because black has the attributes of decreasing the apparent size of the motor and ensuring
compatibility with many different boat colors.). See § 7:49.

41 Deere & Company v. FIMCO Inc., 239 F. Supp. 3d 964, 999–1003, 97 Fed. R. Serv. 3d 53 (W.D. Ky. 2017)
(The 1982 Deere case is no longer valid because it was decided before the Supreme Court decisions in
Qualitex and Traffix. Since the 1982 Deere case, courts “have rejected the argument that a mere desire to
match, alone, is sufficient for a finding of aesthetic functionality.” Summary judgement granted that Deere's
green and yellow color combination for agricultural equipment is not functional and is not disabled from
trademark protection.), after trial, Deere & Company v. FIMCO Inc., 302 F. Supp. 3d 837 (W.D. Ky. 2017),
injunction modified, 301 F. Supp. 3d 704 (W.D. Ky. 2018) (Court found both infringement and dilution of
Deere's green and yellow color combination.).

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1 McCarthy on Trademarks and Unfair Competition § 7:76 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

B. UTILITARIAN FUNCTIONALITY

§ 7:76. Combining functional and non-functional features

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

Look to the Functionality of the Combination. When the thing claimed as trade dress or a trademark consists of a combination
of individual design features, then it is the functionality of the overall combination that controls. Thus, an overall design
combination of individually functional items is protectable because while the pieces are individually functional, this particular
combination of those pieces is not functional.1 Almost all courts adhere to this view.2 There is little dissent from this position.3
As the Ninth Circuit remarked, it is important “to recognize that nonfunctional combinations or arrangements of functional
parts can create an overall appearance that should be deemed nonfunctional.”4

As the Third Circuit commented: “[V]irtually every product is a combination of functional and nonfunctional features and a
rule denying protection to any combination of features including a functional one would emasculate the law of trade dress
infringement.”5 And the Ninth Circuit emphasized that the focus is on the whole, not the parts, of the composite:

Functional elements that are separately unprotectable can be protected together as part of a trade dress. … [O]ur
inquiry is not addressed to whether individual elements of the trade dress fall within the definition of functional,
but to whether the whole collection of elements taken together are functional.6

The Federal Circuit said that in applying its familiar four part Morton-Norwich test of functionality,7 the court would weigh the
functional and non-functional elements of a combination design “one against another to develop an understanding of whether
the mark as a whole is essentially functional and thus non-registrable.”8

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Individual Elements of a Functional Combination May be Non-Functional and Protectable. Even if the overall combination
of elements is functional, one or more individual parts might still be nonfunctional. What is called for is a two-step enquiry into
the functionality of both the individual features and the overall relationship and arrangement of those features. In § 43(a) cases,
it is largely up to the plaintiff to define what aspect is claimed as protectable trade dress.

Dangers of Over-Protection. In the author's opinion, giving trade dress protection to a combination of individually unprotectable
parts raises the danger of trade dress law being stretched to create “common law” patents or copyrights: creating intellectual
property in areas intentionally left in the public domain by patent and copyright law.9

Functional Combination of Functional Parts. Often, the combination of individually functional features will be just as
functional as are the parts.10 As the Trademark Board noted, while it is possible for an arrangement of functional parts to result
in a non-functional combination, that will not often occur.11 For example, the Ninth Circuit held that a jury had a sufficient
evidentiary basis for finding that the combination of an exposed cork, a rounded flange and a neck label on a wine bottle
did not constitute a nonfunctional and distinctive combination of ele ments.12 Extreme caution is necessary in analyzing such
combinations, lest trade dress law create exclusive rights where none should exist.13 As the Ninth Circuit admonished:

[Plaintiff] is correct that trade dress must be viewed as a whole, but where the whole is nothing other than an
assemblage of functional parts, and where even the arrangement and combination of the parts is designed to result
in superior performance, it is semantic trickery to say that there is still some sort of separate ‘overall appearance’
which is nonfunctional.14

Similarly, the Ninth Circuit rejected the argument that while all the individual parts of a window washing platform hoist were
functional, the overall design was not: “A piece of industrial machinery with ‘rectangular’ components that meet each other
at ‘right angles,’ without more, is wholly insufficient to warrant trade dress protection. It is not enough to say that the design
portrays a ‘cubist’ feel—so does a square table supported by four legs.”15

Industrial Designs Not for Consumer Use. In many industrial designs not intended for consumer use, all aspects of a product
are designed by engineers to function in an efficient way, not to look aesthetically attractive to the worker or to those who
repair the item. For example, in denying a preliminary injunction against alleged infringement of trade dress in an automatic
lubrication pump for trucks, the court said the overall design and its individual parts were all functional:

[T]he evidence in this matter is clear that the parts in the pump at issue are what they are, and located where they
are, for utilitarian, not aesthetic, reasons. Put simply, [plaintiff] Groeneveld's pump is designed as it is because it
works better or produces more benefits configured that way rather than in alternative ways.16

In the Ninth Circuit's decision that a window washing platform hoist was functional and unprotectable as product trade dress,
the court remarked that: “[Plaintiff's] hoist is, at bottom, a utilitarian machine with no indication that the visual appearance of
its rectangular exterior design is anything more than the result of a simple amalgamation of functional component parts. Absent
are any indicia of arbitrary or fanciful design.”17

Injunction is Limited to the Non-Functional Combination. Of course, if the trade dress that is found infringed consists
of a nonfunctional combination of individually functional features, then injunctive relief must be limited to the use of that
combination. The individual functional features apart from that particular combination remain free for all competitors to use.18
In some cases, while a combination of, for example, five functional features may constitute a composite of nonfunctional trade

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dress, a combination of fewer features may well be functional, noninfringing, and free for competitors to use. Thus, for example,
a defendant in a particular case could be free to use a functional combination of three functional elements A, B, and C but could
not use the nonfunctional trade dress combination of A, B, C, and D if those four elements met the test for trade dress protection.

The Statutory Language: Functional “as a Whole.” The Lanham Act forbids registration for any mark that “comprises any
matter that, as a whole, is functional.”19 The statute focuses attention on the functionality of the combination, rather than on
the individual parts.20 The Trademark Board reads the statutory phrase as also indicating that merely because a product has
some overall usefulness (e.g. as a beverage container), that does not make a particular design of that product “functional.”21
The wording “as a whole” does not mean that a finding of functionality can be avoided merely because a functional composite
design includes a nonfunctional feature.

If the overall shape of a product or container is functional, the inclusion or addition of relatively trivial nonfunctional parts does
not make the overall design protectable. The only trade dress rights that might then exist would be in those nonfunctional parts.22

Clear Disclosure is Required in Registration of Non-Functional Combination of Functional Parts. In the area of federal
registration of nonfunctional composites of individually functional parts, what is needed is “truth in registration”: a clear
disclosure on the face of a registration informing competitors of exactly what things in the picture of the shape or container are
really nonfunctional and hence registered as a “mark.”23

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Restatement Third, Unfair Competition § 17, comment b (1995) (“The fact that the overall design or
combination contains individual features that are themselves functional does not preclude protection for
the composite. … Protection of the overall design, however, will not preclude others from adopting the
functional constituents.”).

2 Second Circuit
Le Sportsac, Inc. v. K Mart Corp., 754 F.2d 71, 225 U.S.P.Q. 654 (2d Cir. 1985), later proceeding, 617
F. Supp. 316, 227 U.S.P.Q. 150 (E.D.N.Y. 1985) (Even if every individual point of a product or container
is functional, the overall relationship of those points—the “overall shape”—can still be nonfunctional. A
particular combination of features found in the structure of lightweight nylon carrying bags was found
nonfunctional and protectable. The elements included: parachute nylon in a variety of colors; trimmed in
cotton carpet tape with matching cotton webbing straps; color coordinated zippers with hollow rectangular
metal sliders; and a repeating logo in an elongated ellipse.)
Fourth Circuit
Tools USA & Equip. Co. v. Champ Frame Straightening Equip., 87 F.3d 654, 39 U.S.P.Q.2d 1355 (4th Cir.
1996) (“[T]he critical functionality inquiry is not whether each individual component of the trade dress is
functional, but rather whether the trade dress as a whole is functional”; combination of elements of mail-
order catalog held nonfunctional.)
Fifth Circuit
Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 19 U.S.P.Q.2d 1253, 1257 (5th Cir. 1991),
aff'd, 505 U.S. 763, 120 L. Ed. 2d 615, 112 S. Ct. 2753, 23 U.S.P.Q.2d 1081 (1992) (“[A] particular
arbitrary combination of functional features, the combination of which is not itself functional, properly
enjoys protection.”); Sunbeam Prods. Inc. v. West Bend Co., 39 U.S.P.Q.2d 1545 (S.D. Miss. 1996), aff'd,
123 F.3d 246, 44 U.S.P.Q.2d 1161 (5th Cir. 1997) (while the trade dress of plaintiff's Sunbeam MIXMASTER
was composed of several functional components, the overall way those components are assembled is
nonfunctional); Pebble Beach Co. v. Tour 18 I, Ltd., 155 F.3d 526, 48 U.S.P.Q.2d 1065 (5th Cir. 1998) (“A
collection of functional features in a product design does not necessarily make the combination of those
features functional and therefore unprotectable.”)

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Seventh Circuit
Vaughan Mfg. Co. v. Brikam Int'l, 814 F.2d 346, 1 U.S.P.Q.2d 2067 (7th Cir. 1987) (combination of
individually utilitarian features in a folding table is protectable); Service Ideas, Inc. v. Traex Corp., 846 F.2d
1118, 6 U.S.P.Q.2d 1937 (7th Cir. 1988) (while the individual parts might be functional, the overall color
and shape of an insulated beverage server was nonfunctional, had secondary meaning and was infringed);
Roulo v. Russ Berrie & Co., 886 F.2d 931, 12 U.S.P.Q.2d 1423 (7th Cir. 1989), cert. denied, 493 U.S. 1075,
107 L. Ed. 2d 1030, 110 S. Ct. 1124 (1990) (combination of “common, indistinct elements” of greeting card
line was protected as trade dress); Computer Care v. Service Systems Enterprises, Inc., 982 F.2d 1063, 25
U.S.P.Q.2d 1020, 1026 (7th Cir. 1992) (while certain elements of a form for recording information about an
auto repair facility are functional, the “overall format” is protectable as trade dress)
Ninth Circuit
Blumenthal Distributing, Inc. v. Herman Miller, Inc., 963 F.3d 859, 867, (9th Cir. 2020), for additional
opinion, see, 811 Fed. Appx. 421 (9th Cir. 2020) (Affirmed a jury finding of infringement of the trade dress in
the “overall appearance” of the “Eames” chair design and an award of over $3 million of defendant's profits.)
Tenth Circuit
Hartford House, Ltd. v. Hallmark Cards, Inc., 647 F. Supp. 1533, 1 U.S.P.Q.2d 1030 (D. Colo. 1986), aff'd,
846 F.2d 1268, 6 U.S.P.Q.2d 2038 (10th Cir. 1988), cert. denied, 488 U.S. 908, 102 L. Ed. 2d 248, 109 S.
Ct. 260 (1988) (individual functional elements of a greeting card line can be combined into a nonfunctional
and protectable combination)
Federal Circuit
In re Chesebrough-Pond's, Inc., 224 U.S.P.Q. 967 (T.T.A.B. 1984) (where all individual aspects are
functional, the “overall composite design” can be nonfunctional); New England Butt Co. v. U.S. International
Trade Comm'n, 756 F.2d 874, 225 U.S.P.Q. 260 (Fed. Cir. 1985) (for an overall shape to be protectable
as a mark, the “entire design” must be nonfunctional; overall shape of a weaving machine was found
functional); American Flange & Manufacturing Co., Inc. v. Rieke Corporation, 80 U.S.P.Q.2d 1397, 1411,
2006 WL 1706438 (T.T.A.B. 2006), decision withdrawn after settlement, 90 U.S.P.Q. 2d 1127 (T.T.A.B.
2009) (Application was for a product composed of parts A and B. The T.T.A.B. found that only part A was
functional, but held that because “one of the two key features applicant includes in its mark” was functional,
the A + B combination was also functional.); In re Becton, Dickinson and Co., 675 F.3d 1368, 1373, 102
U.S.P.Q.2d 1372 (Fed. Cir. 2012) (“Whenever a proposed mark includes both functional and non-functional
features … the critical question is the degree of utility present in the overall design of the mark.”)
3 See CPG Products Corp. v. Pegasus Luggage, Inc., 776 F.2d 1007, 227 U.S.P.Q. 497 (Fed. Cir. 1985) (Rich,
J., dissenting: functional features are incapable of having trademark significance and it is not proper to
combine such functional features with nonfunctional ones to arrive at a protectable composite). See also
Textron, Inc. v. U.S. International Trade Comm'n, 753 F.2d 1019, 224 U.S.P.Q. 625 (Fed. Cir. 1985) (where
“most” of the overall design is functional, only individual nonfunctional aspects, “rather than the overall
design,” are capable of being a trademark).

4 Blumenthal Distributing, Inc. v. Herman Miller, Inc., 963 F.3d 859, 868, (9th Cir. 2020), for additional
opinion, see, 811 Fed. Appx. 421 (9th Cir. 2020) (Rejecting the argument that the utilitarian functionality of
component parts of a chair design necessarily rendered the overall appearance functional as well. Affirmed
a jury finding of infringement of the trade dress in the “overall appearance” of an “Eames” chair design and
an award of over $3 million of defendant's profits. The chair design was not functional. Reversed the jury's
finding that the “Aeron” chair design was functional.).

5 American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1 U.S.P.Q.2d 1001 (3d Cir. 1986).

6 Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 4 U.S.P.Q.2d 1026 (9th Cir. 1987).

7 See discussion of the Morton-Norwich test at § 7:73.

8 In re Becton, Dickinson and Co., 675 F.3d 1368, 1373, 102 U.S.P.Q.2d 1372 (Fed. Cir. 2012) (“[T]he critical
question is the degree of utility present in the overall design of the mark …. [T]he Board committed no legal

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error by weighing the functional and non-functional features of BD's mark against each other.” A closure
cap for blood collection tubes was held to be functional.).

9 See Gleiberman, From Fast Cars to Fast Food: Overbroad Protection of Product Trade Dress Under Section
43(a) of the Lanham Act, 45 Stan. L. Rev. 2037 (1993); Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc.,
58 F.3d 27, 35 U.S.P.Q.2d 1284 (2d Cir. 1995) (“[O]verextension of trade dress protection can undermine
restrictions in copyright and patent law that are designed to avoid monopolization of products and ideas.
Consequently, courts should proceed with caution in assessing claims to unregistered trade dress protection
so as not to undermine the objectives of these other laws.”).

10 See, e.g., HWE, Inc. v. JB Research, 993 F.2d 694, 26 U.S.P.Q.2d 1967 (9th Cir. 1993) (finding that
each element of the claimed trade dress, as well as the combination of all elements, was functional and
unprotectable; the alleged trade dress in a massage table was defined as follows:

Elements of Trade Dress of [Plaintiff's] Relaxor Pad: (a) Physical Appearance

of Relaxor System (i) A black, rectangular pad., approximately 77″ in length,
26″ in width and 4″ in depth; (ii) The upper surface of the pad is divided
into a uniform pattern of adjacent rectangular panels; (iii) Matching handles
are secured to and extended outwardly from a side of the pad and, when
the pad is folded for transporting, the handles are aligned for supporting the
pad; (iv) A hand-held controller extends from the mid-point of the pad and
is adapted to be held by the user. (b) Marketing Techniques. Substantially
all advertising and promotional material illustrating the [Plaintiff's] product
employ photographs which illustrate female models wearing workout
clothing lying upon the pad and holding the controller in her hand.

See Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 35 U.S.P.Q.2d 1284 (2d Cir. 1995) (“[T]he
fact that a trade dress is composed exclusively of commonly used or functional elements might suggest
that that dress should be regarded as unprotectable or ‘generic,’ to avoid tying up a product or marketing
idea.”); Atlantis Silverworks, Inc. v. 7th Sense, Inc., 42 U.S.P.Q.2d 1904 (S.D.N.Y. 1997) (individually
functional elements of a ring design were combined “in the only functional way they can be combined”); E-
Z Implements, Inc. v. Marv Haugen Enterprises, Inc., 25 F. Supp. 2d 1012, 49 U.S.P.Q.2d 1687 (D. Minn.
1998) (both individual elements and their combination were functional for a shovel attachment for skid
loaders); Sassafras Enterprises, Inc. v. Roshco, Inc., 915 F. Supp. 1 (N.D. Ill. 1996) (Combination of elements
of home pizza cooking set was functional: “Is there something about the combination of those nondistinctive
items that makes the [pizza making set] more distinctive as a whole than the sum of the nondistinctive
part? Of course not. This is not a striking or unusual combination.”); Groeneveld Transport Efficiency, Inc.
v. Lubecore Intern., Inc., 730 F.3d 494, 508, 108 U.S.P.Q.2d 1022 (6th Cir. 2013) (Both the individual
components and the overall design of a vehicle lubrication pump were functional. “[T]he pump's volume,
shape, and materials are all essentially influenced by the dictates of function.”).

11 In re Heatcon, Inc., 116 U.S.P.Q.2d 1366, 1378, 2015 WL 6166638, *11 (T.T.A.B. 2015) (“While we do
not foreclose the possibility, it is difficult to imagine a situation where the sum of a configuration's entirely
functional parts adds up to a design capable of indicating the source of the product. In any event, the case
before us presents no such exception.” An arrangement of knobs, switches and display window of a control
panel for an industrial device to repair materials was found to be functional and not registerable on the
Supplemental Register.).

12 Kendall-Jackson Winery Ltd. v. E.&.J. Gallo Winery, 150 F.3d 1042, 47 U.S.P.Q.2d 1332 (9th Cir. 1998)
(“A reasonable jury could conclude from this evidence that Kendall-Jackson's trade dress as a whole is
functional and nondistinctive.”).

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13 See, e.g., Elmer v. ICC Fabricating, 67 F.3d 1571, 36 U.S.P.Q.2d 1417 (Fed. Cir. 1995) (burden is on
the plaintiff who alleges that an amalgamation of individually functional elements is a nonfunctional
combination; combination of such elements to create a vehicle-mounted advertising sign was found
functional).

14 Leatherman Tool Group, Inc. v. Cooper Industries, Inc., 199 F.3d 1009, 53 U.S.P.Q.2d 1196 (9th Cir. 1999),
vacated in part on other grounds, 532 U.S. 424, 121 S. Ct. 1678, 149 L. Ed. 2d 674, 58 U.S.P.Q.2d 1641
(2001) (Injunction was reversed. “We hold only that in a product configuration case there must be some
aspect to the configuration which is nonfunctional … ” 199 F.3d 1009 at n.6). Accord: Tie Tech, Inc. v.
Kinedyne Corp., 296 F.3d 778, 63 U.S.P.Q.2d 1587 (9th Cir. 2002) (cutting tool is held to be functional,
the court rejecting the argument that while the individual elements of the tool are functional, the “overall
appearance” is not); Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d 130 (D. Mass. 2003) ("[T]he
showing of nonfunctionality required of a plaintiff seeking trade dress protection of the 'overall design' of its
product may now be higher than it was when Taco Cabana was decided." Overall design of dental implant
was found to be functional and summary judgment of dismissal was granted).

15 Secalt S.A. v. Wuxi Shenxi Const. Machinery Co., Ltd., 668 F.3d 677, 684, 101 U.S.P.Q.2d 1553 (9th Cir.
2012) (The design was found functional and unprotectable as trade dress. Attorney fees were awarded.).

16 Groeneveld Transport Efficiency, Inc. v. Lubecore Intern., Inc., 2011 WL 768056 (N.D. Ohio 2011) (Plaintiff
defined the alleged trade dress as the location and placement of various parts of the pump, the size and shape
of various parts and the mounting bolt pattern. No part of plaintiff's pump was covered by a utility patent.),
later proceedings Groeneveld Transport Efficiency, Inc. v. Lubecore Intern., Inc., 730 F.3d 494, 508, 108
U.S.P.Q.2d 1022 (6th Cir. 2013) (The pump design was functional and unprotectable as trade dress.).

17 Secalt S.A. v. Wuxi Shenxi Const. Machinery Co., Ltd., 668 F.3d 677, 687, 101 U.S.P.Q.2d 1553 (9th Cir.
2012) (Noting that “hoists are fungible goods for which customer preferences do not depend on visual
features.” 668 F.3d at 686).

18 But see § 30:4.

19 Lanham Act § 2(e), 15 U.S.C.A § 1091(c) (Principal Register); Lanham Act § 23(c), 15 U.S.C.A § 1091(c)
(Supplemental Register); Lanham Act § 43(c), 15 U.S.C.A § 1125(c) (Plaintiff alleging dilution of trade
dress must prove that “the claimed trade dress, taken as a whole, is not functional and is famous ….”).

20 See Tools USA and Equipment Co. v. Champ Frame Straightening Equipment Inc., 87 F.3d 654, 658,
39 U.S.P.Q.2d 1355 (4th Cir. 1996) (“[T]he critical functionality inquiry is not whether each individual
component of the trade dress is functional, but rather whether the trade dress as a whole is functional.”
Combination of elements of mail-order catalog held nonfunctional.); Valu Engineering, Inc. v. Rexnord
Corp., 278 F.3d 1268, 1278 n.6, 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002) (“The term ‘as a whole’ existed under
prior decisional law and refers to the entirety of the mark itself, rather than the entirety of the class of goods
in connection with which the mark is used.”).

21 Kistner Concrete Products, Inc. v. Contech Arch Technologies, Inc., 97 U.S.P.Q.2d 1912, 1920, 2011 WL
481339 (T.T.A.B. 2011). See In Re OEP Enterprises, Inc., 2019 WL 3941266, *5 (T.T.A.B. 2019) (Umbrella
design trade dress was functional. “The statutory terminology ‘as a whole’ refers to ‘the entirety of the mark
itself’ …. and ‘does not mean that one can avoid a finding of functionality simply because the configuration
includes a nonfunctional feature.’”).

22 Textron, Inc. v. U.S. International Trade Comm'n, 753 F.2d 1019, 224 U.S.P.Q. 625 (Fed. Cir. 1985) (where
“most” of the overall design is functional, only individual nonfunctional aspects, “rather than the overall
design,” are capable of being a trademark). See Restatement Third, Unfair Competition § 17, comment b
(1995).

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23 See discussion at § 7:94.

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Works.

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1 McCarthy on Trademarks and Unfair Competition § 7:77 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

B. UTILITARIAN FUNCTIONALITY

§ 7:77. Functionality and two-dimensional images and graphics

References
Two-Dimensional Images and Designs. “Functionality” challenges in most cases involve the three-dimensional design of
products. But some products in only two dimensions can also be designed to be in a particular shape and design because they
function and work better in that particular design. For example, the computer-generated layout and design of a graphical report
of the medical history of a patient may be laid out and arranged so as to maximize conveying information quickly and accurately.
The aspects of that layout and design which contribute to that goal are “functional” in a utilitarian sense. Those sort of two-
dimensional designs can be deemed “functional” and outside the scope of trademark and trade dress protection.

This kind of issue is not about “aesthetic functionality” because something like the hypothetical example of a graphical report
of medical history is not valuable because it is pleasing artistically or aesthetically—it is valuable because it is useful in a
utilitarian sense.

Examples of Two-Dimensional Designs and Images. These designs have been the subject of litigation in which the functionality
issue was raised:

• a combination of features making up the layout and appearance of a mail-order catalog—not functional.1

• overall layout and design of computer generated reminder letters and monthly reports for an auto repair facility to send to
customers—not functional2

• combination of elements creating an unusual “look” of a line of greeting cards—not functional3

• computer generated graphical presentation of urine test results to determine patient's consumption of drugs—functionality is
an issue of fact for trial4

• markings on test answer sheets to trigger an optical scanner—functional5

• pixilated shape of characters in an early version of a video game—functional6

• control panel instructions for golfing video game—functional7

Illustration of the Goods: Generic, Descriptive and Functional Objections. An illustration of the goods or something closely
associated with the product can be classified as in the same category as a generic name and hence incapable of trademark
protection.8 As discussed in § 7:36, a picture that is merely a representation of the goods themselves is regarded as merely

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descriptive of the goods.9 For example, a picture of an apple and a half, with a drop flowing from the half apple, is descriptive
of apple juice because it immediately conveys the message of what the product is. But a fanciful depiction of the goods can be
non-descriptive and serve as a good trademark, such as Planters Peanut Company's famous symbol of a top-hatted little man
with a peanut body.

An accurate image of a functional and utilitarian product can be regarded as the equivalent of the utilitarian shape itself. If it is
the equivalent of the shape, then the picture itself is “functional” and should not be capable of appropriation as a trademark for
one seller of that product. For example, an image of a food item should not be capable of trademark status for that product.10
No one competitor should have the exclusive right to use a picture of a functional product.11 This would be the competitive
equivalent of an exclusive right to use either the generic name of the product or to make the product in that functional shape,
neither of which should be the subject of trademark or trade dress.12 Only if the image of the functional product is limited to a
particular stylized and fanciful depiction of the product could be functionality bar be overcome.13

The Trademark Board refused to find that an image of a product on which the utility patent had expired was not registerable
for custom manufacturing services for making those goods when the image depicted the functional product. However, the
illustration of the goods was not registerable for those services because it was descriptive and lacked a secondary meaning
under § 2(f).14

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Tools USA and Equipment Co. v. Champ Frame Straightening Equipment Inc., 87 F.3d 654, 659, 39
U.S.P.Q.2d 1355 (4th Cir. 1996) (“Looking, as we must, at the overall trade dress rather than at individual
features, we cannot say that a reasonable jury could only have concluded that the trade dress was functional.”
Affirming jury verdict of non-functionality, secondary meaning and infringement.).

2 Computer Care v. Service Systems Enterprises, Inc., 982 F.2d 1063, 1071, 25 U.S.P.Q.2d 1020 (7th Cir. 1992)
(Affirming District Court determination of non-functionality. “Computer Care cannot claim an exclusive
right to display information in columns or to include the make and year of a car in its reports. But Computer
Care makes no such claim. Rather, Computer Care seeks to protect the overall format of each of its monthly
reports, which Service Systems copied in their entirety.”).

3 Hartford House, Ltd. v. Hallmark Cards, Inc., 846 F.2d 1268, 1274, 6 U.S.P.Q.2d 2038 (10th Cir. 1988)
(“The trade dress in this case is a certain arrangement or combination of features which creates the overall
uniform appearance, look, and image of Blue Mountain's two major lines of greeting cards. The district
court preliminarily determined that this trade dress is nonfunctional and thus protectable under section 43(a).
Hallmark is therefore precluded from copying or imitating this overall appearance or look.”) See Jeffrey
Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 35 U.S.P.Q.2d 1284 (2d Cir. 1995) (Concept of
greeting cards consisting of color photographs of animals, plants, or people cut to the shape of the image in
the photo was held not protectable as trade dress because such a concept was a generic idea or concept).

4 Millennium Laboratories, Inc. v. Ameritox, Ltd., 817 F.3d 1123, 1131, 118 U.S.P.Q.2d 1459 (9th Cir. 2016)
(Reversing summary dismissal on functionality ground. “Although it is functional to have a system to portray
test results, there is a genuine fact issue whether the precise manner in which Millennium presented its
results was functional.”).

5 Moore Business Forms, Inc. v. National Computer Systems, Inc., 211 U.S.P.Q. 909, 1981 WL 40501
(T.T.A.B. 1981). (Held not capable of being a trademark for the goods because the indicia were functional
in triggering an optical scanner which automatically reads and scores the answer sheets.).

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6 Atari, Inc. v. Mattel, Inc., 217 U.S.P.Q. 816, 1982 WL 51987 (T.T.A.B. 1982) (“[S]uch figures may not be
drawn randomly but must conform to the constraints imposed by the video system on which they are used.
Since all other manufacturers of games projected on a television screen must utilize figures of this type to
facilitate the playing action of their product and are under similar constraints as to the form such figures
may take, the number of possible forms is necessarily limited.”).

7 Incredible Technologies, Inc. v. Virtual Technologies, Inc., 284 F. Supp. 2d 1069, 1084, 68 U.S.P.Q.2d 1877
(N.D. Ill. 2003), aff'd, 400 F.3d 1007, 74 U.S.P.Q.2d 1031 (7th Cir. 2005) (“Golden Tee's graphic instructions,
or something very close to them, are necessary to describe how the trackball, shot-shaping system works.”)
See Interactive Network, Inc. v. NTN Communications, Inc., 875 F. Supp. 1398, 1407, 34 U.S.P.Q.2d 1380
(N.D. Cal. 1995), dismissed, 57 F.3d 1083 (Fed. Cir. 1995) (“[T]he basic rules and prediction scheme used
by [plaintiff's video game] are so intimately related to the purposes of the interactive football game that to
label them as ‘nonfunctional’ would render that term meaningless.”).

8 For example, the Ninth Circuit held that a picture of a grape leaf on a bottle of wine was not itself a protectable
mark because so many wine bottlers have for so long a time used a depiction of grape leaves to decorate
their wares that “it has lost the power to differentiate brands.” Kendall-Jackson Winery, Ltd. v. E. & J. Gallo
Winery, 150 F.3d 1042, 1048, 47 U.S.P.Q.2d 1332 (9th Cir. 1998) See 12:34.

9 E.G. Kim Seng Co. v. J & A Importers, Inc., 810 F. Supp. 2d 1046, 1058-1059, 104 U.S.P.Q.2d 1290
(C.D. Cal. 2011) (No trade dress protection for a picture of a bowl of Vietnamese food on a package
of the same food. The picture was descriptive of the contents and lacked proof of secondary meaning.
Summary judgment of dismissal.); In re The Swatch Group Mgmt. Svcs. AG, 110 U.S.P.Q.2d 1751, 2014
WL 1679139 (T.T.A.B. 2014), aff'd, 599 Fed. Appx. 959 (Fed. Cir. 2015) (“A design which consists merely
of an illustration of one's product is unregisterable under Section 2(e)(1) just as merely descriptive wording
would be.” Word TOURBILLION with an image of a tourbillion (which was a part of the inner works of
applicant's watches) was a descriptive composite and not registerable for watches.).

10 In re Capri Macaroni Corp., 173 U.S.P.Q. 630, 1972 WL 17999 (T.T.A.B. 1972) (picture of colored macaroni
held not a valid mark for macaroni. “The so-called color combination is merely dictated by the ingredients
used in the manufacture of the vegetable macaroni. In essence what applicant is seeking to register is the
goods and that is not a trademark.”).

11 Textron Inc. v. Pilling Chain Co., Inc., 175 U.S.P.Q. 621, 1972 WL 17819 (T.T.A.B. 1972) (Illustration of
functional zipper cannot be trademark for zippers. “[R]egistration on the Principal Register, …., would give
it prima facie rights by which it could theoretically exclude opposer and other zipper manufacturers from
illustrating their products on their goods or in their advertising.”); In re Lighting Systems, Inc., 212 U.S.P.Q.
313, 1981 WL 40452 (T.T.A.B. 1981) (Mark described as an image of a portable, electric flashlight used by
applying it to the box for the flashlight. Picture of a functional shape is itself functional and cannot be placed
on the Supplemental Register.); In re Pingel Enterprise Inc., 46 U.S.P.Q.2d 1811, n.5, 1998 WL 320157
(T.T.A.B. 1998) (Illustration of a fuel valve petcock for motorcycles cannot be registered as a trademark for
vehicle parts. It was used as both a product configuration and as an image on packaging and advertising.
“However, for purposes of determining the issues of de jure functionality and acquired distinctiveness, it
simply makes no difference in this appeal whether we regard the matter which applicant seeks to register,
as shown on the drawing submitted with the application, as either the product configuration of applicant's
petcock or a ‘logo’ thereof.”).

12 Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723, 731–732, 99 U.S.P.Q.2d
1538 (7th Cir. 2011) (Quoting the treatise and rejecting the argument that depicting on a package a functional
image of the product was an infringement. An accurate depiction of a functional product cannot be an
infringement. “But if a product is functional and thus unregistrable, as we have found the Quilted Diamond
Design to be, then ‘the accurate depiction of that [product] is also unregistrable.’”).

13 In re Universal Filters, Inc., 218 U.S.P.Q. 456, 1983 WL 51966 (T.T.A.B. 1983) (Stylized cross-section
picture of a flow meter was held not functional. “[A]pplicant's design is not an accurate depiction of a cross

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section of applicant's product. …. It is not a design of a workable, or utilitarian, device.” But since it showed
how the device worked, it was descriptive. Applicant's proof of acquired distinctiveness was sufficient
and registration granted); Giltspur Expo Industries, Inc. v. Expo Communications, Inc., 227 U.S.P.Q. 394,
1985 WL 71926 (T.T.A.B. 1985) (stylized picture of cross-section of connector held neither descriptive nor
functional. “[T]he design sought to be registered is not a mere representation of the goods, nor is the design
functional. It is a stylized presentation which is only suggestive of the connector.”).

14 Duramax Marine, LLC v. R.W. Fernstrum & Co., 80 U.S.P.Q.2d 1780, 1794, 2006 WL 2263820, *16
(T.T.A.B. 2006) (“We decline to sustain the opposition on opposer's claim of functionality. We add, however,
that our decision does not foreclose the extension of TrafFix to service marks if circumstances in a future
case warrant such an extension.”).

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J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

B. UTILITARIAN FUNCTIONALITY

§ 7:77.50. Defendant's “functional” use of a mark and “defensive functionality”

References
The functionality doctrine relates only to the plaintiff's use of a designation, not to the accused use. That is, the issue is the kind
of use the plaintiff is making of the design or designation, not the kind of use made by the party accused of infringing the mark.
“Functionality” is an issue of trademark or trade dress validity, not an issue of infringement.

For example, the Ninth Circuit, in a search engine keyword case, held that plaintiff Playboy had a viable argument that the
defendant's search engine created likely confusion in that users could be confused regarding the sponsorship of the banner
ads triggered by users who input plaintiff's trademarks as search terms. But in the course of its opinion, the Ninth Circuit
rejected defendant's argument that its own use of a designation such as plaintiff's PLAYBOY trademark was permitted because
it was “functional” in the sense that word was needed to trigger advertisements for adult-oriented web sites. The court held
that functionality relates only to plaintiff's use of the mark, not to defendant's use: “The fact that the marks make defendants'
computer program more functional is irrelevant.”1

The Fourth Circuit followed the Ninth Circuit precedent in a similar case, rejecting defendant Google's argument that its use of
plaintiff's ROSETTA STONE mark for its language learning software was permitted as a keyword to trigger advertising because
Google was making a “functional” use of the trademark in its internet search engine. The lower court found that Google's use of
the mark was non-infringing because it had an “essential indexing function,” permitting Google to list ads that featured Rosetta
Stone products at competitive prices. Reversing, the Court of Appeals held that the question on the functionality issue was not
the kind of use made by defendant Google, but the kind of use made by plaintiff Rosetta Stone:

Clearly, there is nothing functional about Rosetta Stone's use of its own mark; use of the words “Rosetta Stone”
is not essential for the functioning of its language-learning products …. Once it is determined that the product
feature—the word mark ROSETTA STONE in this case—is not functional, then the functionality doctrine has
no application, and it is irrelevant whether Google's computer program functions better by use of Rosetta Stone's
nonfunctional mark.2

Defendant's argument that its use of a valid mark is not infringing because it is “aesthetically functional” is discussed in another
section of this treatise.3

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Footnotes

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1 Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1030–1031, 69 U.S.P.Q.2d
1417, 1424 (9th Cir. 2004) (“Because we are not dealing with defendants' wish to trademark their computer
program, but with [plaintiff's] ability to protect the trademarks it already uses to identify its products, the
doctrine of functional use does not help defendants here.”).

2 Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 162, 102 U.S.P.Q.2d 1473 (4th Cir. 2012).

3 See § 7:82.

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1 McCarthy on Trademarks and Unfair Competition § 7:78 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

B. UTILITARIAN FUNCTIONALITY

§ 7:78. Use of trademark is needed to fairly compete

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

A trademark cannot be used as a “trip wire” to prevent a competitor from engaging in legitimate competition by copying
public domain concepts from the trademark owner. Such a use of a mark by its user is “functional” in that reproduction of the
mark is unavoidable in order to legitimately compete. This issue arose in Sega v. Accolade, where plaintiff Sega engineered its
video entertainment hardware in such a way as to discourage competitors from making software game cartridges that would
fit in and be compatible with Sega's hardware.1 Sega designed its hardware so that when a game cartridge was inserted, the
microprocessor in the hardware searched the software in the cartridge for an “initialization code,” which, if found, enabled the
software to operate. But the system was designed so that if the “initialization code” was recognized, it prompted a three-second
visual display on screen reading “Produced by or Under License from Sega Enterprises, Ltd.” Of course, if a competitor's non-
Sega cartridge was used, then this screen message was false and misleading. Defendant reverse engineered Sega's video game
cartridges to legitimately discover the technical requirements for compatibility with Sega's hardware. Defendant then produced
and sold in competition with Sega game programs that worked in Sega's hardware.

In Sega v. Accolade, the Ninth Circuit held that defendant was not infringing copyright in the software by the process of reverse
engineering in order to obtain the noncopyrightable concepts and ideas of technical compatibility. But Sega then alleged that
defendant had infringed its trademark and created a false message when it sold software that prompted the user's screen display
to display the Sega trademark and message.2 The court rejected this claim, holding that a trademark infringement claim cannot
be used as a device to prevent the legitimate competition of producing compatible software to fit with Sega's hardware. The
court said that such a use of a Sega's trademark was not an infringement because such a use of a trademark as a technological trap
to prevent legitimate copying is “functional” in the sense that reproduction of the trademark is necessary in order to engage in
legitimate competition.3 The court said that if anyone was responsible for any consumer confusion, it was Sega, not defendant.4

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Footnotes
1 Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 24 U.S.P.Q.2d 1561 (9th Cir. 1992), amended, 1993 U.S.
App. LEXIS 78 (9th Cir. Jan. 6, 1993). Accord: Compaq Computer Corp. v. Procom Technology, 908 F. Supp.
1409, 37 U.S.P.Q.2d 1801, 1810 (S.D. Tex. 1995) (maker of compatible hardware used plaintiff COMPAQ's
trademark in the vendor ID portion of defendant's firmware because it triggered valuable threshold data to
be transferred onto the drive; even though this displayed the mark COMPAQ on screen, this was not an
infringement because it was a functional use).

2 Defendant had no desire to cause the false message to appear on screen, but had not been able to discover
any way to modify the software so that it would operate on Sega's hardware without prompting the false
on-screen message.

3 “Because the TMSS [initialization code] serves the function of regulating access to the [plaintiff's hardware],
and because a means to the [plaintiff's] console without using the TMSS initialization code is not known
to manufacturers of competing video game cartridges, there is an insufficient basis for a finding of
nonfunctionality.” 24 U.S.P.Q.2d at 1577.

4 “The decision to use the SEGA trademark as an essential element of a functional device that regulates access
and to cause the SEGA trademark and message to be displayed whenever that functional device was triggered
compels us to place primary responsibility for consumer confusion squarely on Sega.” 24 U.S.P.Q.2d at
1575. Accord: Creative Labs, Inc. v. Cyrix Corp., 43 U.S.P.Q.2d 1778 (N.D. Cal. 1997), related proceeding,
42 U.S.P.Q.2d 1872 (N.D. Cal. 1997), aff'd without op., 141 F.3d 1174 (9th Cir. 1998) (Relying on Sega to
find no trademark infringement because computer screens displayed messages misidentifying the source of
sounds effects as “Creative Labs Sound Blaster 16 or AWE-32.” “Having agreed in its licensing agreement
with Microsoft to allow its driver to be used with non-Creative hardware, Creative cannot use trademark
law as a means of restricting others' right to use Creative drivers… . Defendants' lawful use of Creative
drivers leads to the generation of misleading references [on diagnostics screen displays] to Creative or its
products.”).

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1 McCarthy on Trademarks and Unfair Competition § 7:79 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

C. AESTHETIC FUNCTIONALITY

§ 7:79. 1938 Restatement and the Pagliero case

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

Under the theory of “aesthetic functionality” many visually attractive and aesthetically pleasing designs are categorized as
“functional” and hence free for all to copy and imitate. The theory of “aesthetic functionality” apparently stems from a comment
in the 1938 Restatement of Torts. While § 742 of the Restatement defined functionality in the traditional utilitarian sense, the
comment stated that:

When goods are bought largely for their aesthetic value, their features may be functional because they definitely
contribute to that value and thus aid the performance of an object for which the goods are intended.1

The comment gave two specific examples which “may be functional” in the aesthetic sense: (1) A candy box in the shape of a
heart; and (2) a distinctive printing type face. The comment concluded that:

The determination of whether or not such features are functional depends upon the question of
fact whether the prohibition of imitation by others will deprive the others of something which will
substantially hinder them in competition.

It was the open-ended phrase referring to imitation of a feature that “will deprive the [imitators] of something which will
substantially hinder them in competition” which was the springboard for some courts to leap beyond the traditional “utilitarian”
test of functionality. As a useful test, the phrase appears much too broad and generalized, for one could characterize the strongest
word mark or logo as a feature that competitors would dearly like to imitate. And deprivation of such a “right” to copy a popular
trademark would certainly deprive competitors of “something which will substantially hinder them in competition.” Thus, if

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§ 7:79. 1938 Restatement and the Pagliero case, 1 McCarthy on Trademarks and...

read literally, this test would wipe out the law of trademarks.2 If not read literally, then by what criteria does one confine it
to some lesser scope?

The courts only infrequently used3 this “aesthetic functionality” theory until the Ninth Circuit's 1952 Pagliero decision.4 In
that case the court said that Wallace China could not prevent competitor Pagliero from copying floral designs on plates and
selling the plates as replacements for broken dishes to commercial accounts such as hotels and restaurants. This would normally
seem to present an issue of whether customers perceived the floral designs on plates as Wallace's trademark. However, the
court said that the designs were “functional” because they satisfy “a demand for the aesthetic as well as for the utilitarian,” and,
paraphrasing the 1938 Restatement comment:

“Functional” … might be said to connote other than a trademark purpose. If the particular feature is an important
ingredient in the commercial success of the product, the interest in free competition permits its imitation in the
absence of a patent or copyright.5

Since the hotel china sold because of “the attractiveness and eye-appeal of the design,” Pagliero was free to copy the design.6

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Footnotes
1 Restatement of Torts § 742, comment a (1938).

2 See Vuitton et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769, 210 U.S.P.Q. 351, 212 U.S.P.Q. 85 (9th
Cir. 1981) (“[A] trademark is always functional in the sense that it helps to sell goods by identifying their
manufacturer”).

3 See, e.g., J. C. Penney Co. v. H. D. Lee Mercantile Co., 120 F.2d 949, 50 U.S.P.Q. 165 (8th Cir. 1941)
(bib-pocket design on overalls held “functional”). See discussion of case law in Zippo Mfg. Co. v. Rogers
Imports, Inc., 216 F. Supp. 670, 137 U.S.P.Q. 413 (S.D.N.Y. 1963).

4 Pagliero v. Wallace China Co., 198 F.2d 339, 95 U.S.P.Q. 45 (9th Cir. 1952).

5 198 F.2d at 343. The Second Circuit quoted the Pagliero language, but went on to find no functionality in
the utilitarian sense. Ives Laboratories, Inc. v. Darby Drug Co., 601 F.2d 631, 202 U.S.P.Q. 548 (2d Cir.
1979), on remand, 488 F. Supp. 394, 206 U.S.P.Q. 238 (E.D.N.Y. 1980), rev'd, 638 F.2d 538, 209 U.S.P.Q.
449 (2d Cir. 1981), rev'd, remanded, 456 U.S. 844, 72 L. Ed. 2d 606, 102 S. Ct. 2182, 214 U.S.P.Q. 1 (1982),
aff'd without op., 697 F.2d 291 (2d Cir. 1982). Justice White, concurring, quoted the phrase “an important
ingredient in the commercial success of the product,” citing Ives, which in fact was quoting from Pagliero.
Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 72 L. Ed. 2d 606, 102 S. Ct. 2182, 214
U.S.P.Q. 1 (1982) (White, J., concurring). In the author's view, Justice White's reference can be considered
an observation upon functionality rather than a definition of what is “functional.” The majority's definition
of functionality adopts the utilitarian definition. The Fifth Circuit did not read Justice White's observation
as a definition of functionality: “Justice White's statement is merely an acknowledgment that a functional
feature is by definition important to the commercial success of a product. …” Pebble Beach Co. v. Tour 18
I, Ltd., 155 F.3d 526, 48 U.S.P.Q.2d 1065 (5th Cir. 1998).

6 See Villeroy & Boch Keramische Werke K.G v. THC Sys., Inc., 999 F.2d 619, 27 U.S.P.Q.2d 1866 (2d
Cir. 1993) (in a replay of the Pagliero facts over forty years later, the Second Circuit rejected the Pagliero
approach and found that the design on hotel china was not functional).

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1 McCarthy on Trademarks and Unfair Competition § 7:80 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

C. AESTHETIC FUNCTIONALITY

§ 7:80. Uneven use of the aesthetic functionality theory in the modern courts

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

Use of the Pagliero Test. A handful of courts, relying on the 1952 Pagliero decision, used the “aesthetic functionality” theory
to deny protection to: the wavy sole design of FAMOLARE shoes;1 a collective membership mark on jewelry sold to members
of an organization;2 a style of jewelry;3 and a message inscribed on jewelry.4

The Test that “Competitors Need It to Compete.” Most modern courts that mention “aesthetic functionality” have abandoned
the test of Pagliero and adopted a different test.5 The Supreme Court in its 2001 Traffix decision said in dictum that “a functional
feature is one the exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage.”6 In the
author's view, this is a complicated way of saying that a non-utilitarian, visually pleasing design can be protected as trade dress
so long as effective alternative designs exist for competitors to use.

A similar test of aesthetic functionality was adopted by the Restatement Third: “A design is functional because of its aesthetic
value only if it confers a significant benefit that cannot practically be duplicated by the use of alternative designs.”7 The U.S.
Supreme Court quoted this with approval.8

Using some variation of the test denying protection to aesthetic designs that are essential to effective competition, courts have
denied trademark or trade dress protection to: the baroque style of decoration on silverware;9 casual clothing with primary color
combinations with solid, plaid and stripe designs made from cotton, wool and twill fabrics;10 a heart and arrow-shaped spoon.11

A number of courts have rejected or limited the theory of aesthetic functionality with varying degrees of zeal.

The position of the federal circuits on the aesthetic functionality issues are surveyed according to circuit:

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• Supreme Court. While the Supreme Court has never directly addressed aesthetic functionality as a dispositive issue in a
case, some are of the view that the Court's passing comments in the 1995 Qualitex product color case might put some life in
the fading theory of aesthetic functionality. Justice Breyer, after quoting part of the modern Restatement's view of aesthetic
functionality, said:

The upshot is that, where a color serves a significant nontrademark function—whether to distinguish a heart
pill from a digestive medicine or to satisfy the “noble instinct for giving the right touch of beauty to common
and necessary things,” G.K. Chesterton, Simplicity and Tolstoy 61 (1912)—courts will examine whether its
use as a mark would permit one competitor (or a group) to interfere with legitimate (nontrademark-related)
competition through actual or potential exclusive use of an important product ingredient. That examination should
not discourage firms from creating aesthetically pleasing mark designs, for it is open to their competitors to do
the same.12

Similarly, in the 2000 Wal-Mart decision concerning product design trade dress, Justice Scalia made two references in passing to
“ esthetic” designs.13 At one point, he cryptically remarked that determining the functionality of a product design “may involve
considerations of its esthetic appeal,” citing Qualitex.14

As described earlier in this section, the Supreme Court in its 2001 Traffix decision mentioned in dictum that: “It is proper
to inquire into a ‘significant non-reputation-related disadvantage’ in cases of aesthetic functionality.”15 Unfortunately, in the
Traffix opinion, Justice Kennedy muddied the waters of the aesthetic functionality theory. He said that once a feature was
determined to be functional under the traditional engineering-drive rule, it was not proper to look into the competitive alternative
designs available to see if rivals could do without this feature. However, the Justice then said that it was proper to make this
enquiry into alternatives in cases of “aesthetic functionality.”16 Justice Kennedy then made what was, to this author, the amazing
and incomprehensible statement that in the 1995 Qualitex case, “aesthetic functionality was the central question.”17 In the
author's view, aesthetic functionality was not the central question in the Qualitex case. Apart from the above quotation from that
case, the only mention of aesthetic functionality was in two quotations made in passing from the Restatement. Thus, aesthetic
functionality was not the question in any way in Qualitex, let alone the “central question.” Justice Kennedy's confusing dictum
in Traffix only further clouded and obscured the issue of whether aesthetic functionality is in fact to be given any weight.18

• Second Circuit. After many years of vacillating on the issue, in 1990 the Second Circuit in the Wallace case decided to use
the defense of aesthetic functionality, but rejected the Pagliero formulation.19 The court adopted the test of the Restatement
Third: “A design is functional because of its aesthetic value only if it confers a significant benefit that cannot practically be
duplicated by the use of alternative designs.”20

In the Wallace case, plaintiff's “Grand Baroque” line of silverware was classic “baroque” design: ornate, massive and flowery.
Defendant marketed at a low price a line of silver-plated silverware that had all the elements of the baroque style. Defendant's
style was not an identical copy of plaintiff's: there were significant differences. But defendant admitted that its design was
“inspired by” the famous Wallace design of plaintiff.

Judge Haight in the district court found that the baroque style had a secondary meaning identifying Wallace, but denied an
injunction on the ground that the design was aesthetically functional. The Second Circuit affirmed the denial, saying that “where
an ornamental feature is claimed as a trademark and trademark protection would significantly hinder competition by limiting
the range of adequate alternative designs, the aesthetic functionality doctrine denies such protection.”21 The thing for which
Wallace sought an exclusive right was “not for a precise expression of a decorative style, but for basic elements of a style that is

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part of the public domain.”22 Wallace could not obtain an exclusive right to any and all variations of the public domain baroque
decorative style for silverware. To give Wallace that right to exclude others would unduly limit the range of adequate alternative
design styles. But the court said that Wallace could, upon proper proof, obtain an exclusive right for “a precise expression of
baroque style.”23

In the author's opinion, Judge Haight in the district court created an unnecessary and almost impossible conundrum by making
a factual finding that Wallace had proven secondary meaning in baroque design—a basic and widely used decorative style
used by many designers for many years. Judge Haight found that Wallace had a “secondary meaning” in the baroque style of
its silverware on evidence that consumers single out the Wallace line as “the classiest” or the “most handsome looking.” But
this is evidence merely of Wallace's popularity, not of consumer identification of Wallace by the style.24 It is as if the judge
found that Florsheim had secondary meaning in all men's wing-tip shoes or that only Tiffany could make art nouveau lamps
and decorations. The Second Circuit chose to accept this breathtaking factual finding and adapt the law to fit it.

Since the Wallace case represents a wholly new approach to the aesthetic functionality theory by the Second Circuit, the cited
previous decisions would seem no longer to be guiding precedent.25

Revealing the change brought about by the 1990 Wallace decision, the Second Circuit in 1993, when faced with a replay of
the famous Pagliero hotel china case,26 found that a basket design on hotel china was not functional. The court rejected the
argument that the design was “functional” because the copier found it difficult to persuade a hotel to switch to a new pattern
once the hotel had started with the plaintiff's pattern.27 Thus, the court sounded the final death knell of the Pagliero view of
aesthetic functionality in the Second Circuit.

In denying trade dress protection for fall motif fashion designs on sweaters, the Second Circuit approved its Wallace formulation
of aesthetic functionality and held that the sweater designs were not aesthetically functional because there would be no market
foreclosure if competitors could not use these particular designs. However, the court denied trade dress protection because the
designs were purely decorative and aesthetic and served no source-identifying purpose.28

The court applied the Wallace formulation of aesthetic functionality to reject a lower court's statement that a single color of
wearing apparel is inherently aesthetically functional and can never serve a trademark role in the fashion industry.29 The court
defined its view of aesthetic functionality: “In short, a mark is aesthetically functional, and therefore ineligible for protection
under the Lanham Act, where protection of the mark significantly undermines competitors' ability to compete in the relevant
market.”30 The court found that plaintiff Christian Louboutin's high-fashion signature red shoe sole contrasting with the color
of the shoe upper had achieved a secondary meaning but was not infringed by defendant Yves Saint Laurent's monochrome red
shoe with both upper and sole in a single red color.31 The court affirmed the decision denying a preliminary injunction.32

• Third Circuit. The Third Circuit has held that a feature is not functional merely because it makes the product more attractive
to consumers. The court has rejected the notion of aesthetic functionality and insists that a feature “have a significant relation
to the utilitarian function of the product before it [can] be declared func tional.”33 In the 1981 Keene decision,34 Judge Sloviter
observed that if the Pagliero formulation were the law, then the absurd result would be that, “The more appealing the design,
the less protection it would receive.” She noted that “it would be unfortunate were we to discourage use of a spark of originality
which could transform an ordinary product into one of grace.”35

That is, if the theory of “aesthetic functionality” were the law, then the uglier and more repulsive the symbol, the less “functional”
it would be. It cannot be good law or policy that the more visually attractive and aesthetically pleasing the symbol, the greater the
probability that it is “functional” and hence, by public policy, incapable of trademark protection regardless of public perception

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and recognition. As Judge Nies observed, “No principle of trademark law required the imposition of penalties for originality,
creativeness, at tractiveness, or uniqueness of one's product.”36

However, the Third Circuit has on occasion mixed theories of both utilitarian and aesthetic functionality. The court said that a
“windowpane check” pattern on a kitchen towel was aesthetically functional as being a “favorite pattern for kitchen textiles”
and “compatible with contemporary kitchen décor.” But the court also said that that particular weave pattern gave the towel
“strength and durability,” which are clearly utilitarian features.37

• Fourth Circuit. A district court in the Fourth Circuit has opined that the Fourth Circuit would not accept the theory of aesthetic
functionality.38

• Fifth Circuit. The Fifth Circuit has expressly rejected the theory of aesthetic functionality, noting that the “important ingredient
in commercial success” standard would almost always permit a jun ior user to freely copy distinctive trade dress. The court
limited functionality to utilitarian aspects: “[A] design or feature must be superior or optimal in terms of engineering, economy
of manufacture, or accommodation of utilitarian function or performance.”39

In 1998, the court noted that it had rejected the doctrine of “aesthetic functionality” and criticized the “important ingredient in
the commercial success” underpinning of aesthetic functionality.40 The court said that such a definition of functionality would
always “allow the second comer to trade on the first comer's goodwill.”41 In 2008, the Fifth Circuit emphasized that it had
“consistently rejected the concept of aesthetic functionality” and that there was nothing in the Supreme Court's Qualitex or
Traffix decisions that “requires us to abandon our long-settled view rejecting recognition of aesthetic functionality.”42

• Sixth Circuit. Characterizing the issue as one of “ornamentality,” not aesthetic functionality, the Sixth Circuit held that the use
of a decorative trademark design on T-shirts was neither “functional” nor merely ornamental.43 The Sixth Circuit later followed
this view, remarking that: “[T]he precedent in this circuit suggests that aesthetic functionality will not preclude a finding of
nonfunctionality where the design also indicates source.”44 However, later, the court, ignoring its own precedent, held that a
vaguely defined trade dress in a style of clothing was unprotectable as being aesthetically functional.45 The court held that
casual clothing with primary color combinations with solid, plaid and stripe designs made from all natural cotton, wool and
twill fabrics was aesthetically functional, because giving Abercrombie such a broadly defined exclusive right would prevent
competitors from “competing effectively in the market for casual clothing aimed at young people.”46

The Sixth Circuit later said that it was not clear if it had ever adopted the aesthetic functionality theory and, not deciding
if it would, analyzed a case on the assumption that it would use the theory. It held that it would not apply to this case. The
court affirmed the decision that the MAKER'S MARK bourbon whiskey bottle top configuration of a dripping red wax seal
(covered by an incontestable registration) was not aesthetically functional because it served no useful purpose, there were
numerous alternative methods to seal a bottle with wax to make it look appealing, and competitors were not put at a competitive
disadvantage by not being able to use this type of seal.47 The court later hinted that it might recognize aesthetic functionality,
but this is not clear.48

Fig. 7:80A MAKER'S MARK DRIPPING RED WAX SEAL—NOT AESTHETICALLY FUNCTIONAL.

Image 1 within document in PDF format.

• Seventh Circuit. In reversing a jury instruction on functionality as erroneous, the court at one point apparently rejected aesthetic
functionality, but defined functionality vaguely as “something that other producers of the product in question would have to

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have as part of the product in order to be able to compete effectively in the market.” The court added that a feature is not
functional merely because the buyer has a certain shaped item and wants another to make a “matched pair.”49

But in 1989 the Seventh Circuit appeared to resurrect the theory of aesthetic functionality when it held that a trial judge erred
in ignoring the “pleasing aspect” of the design in considering whether the design was “aesthetically functional.” The copier
has a “heavy burden” in proving that the senior user's design is “so attractive that trade dress protection deprives consumers
of competitive alternatives.”50

In the Landoll case, the publisher of a line of cookbooks claimed that the following three elements consisted of protectable trade
dress: large size (8½ x 11 inches); gilded edges of pages; and oilcloth covers. Each of these was found to be functional and the
composite held to be both functional and nondistinctive. While the gold edges were said to be “aesthetically functional,” in the
author's opinion they could as well have been dubbed utilitarian in that gilding the pages eliminates unsightly differences in the
colors of the page ends and gold is a generic color used in many high-end books.51 Judge Posner noted this treatises's criticism
of aesthetic functionality as a “mischievously vague” theory and he remarked that the critics “certainly have a point.”52

Judge Easterbrook noted that if one defines aesthetic functionality as including designs that are so attractive that consumers
prefer the "look," then this is so broad as to "destroy protection of trade dress." He added that "'Beauty lies in the eye of
the beholder' therefore cannot by itself establish functionality of trade dress."53 In a later case, he remarked that it makes
no sense that aesthetically pleasing designs or images are disqualified from also being source identifiers, that is, trademarks:
“[T]rademark law would be a cruel joke if it limited companies to tepid or repugnant brands that discourage customers from
buying the marked wares.”54

• Ninth Circuit. The Ninth Circuit, home of the 1952 Pagliero decision,55 has unpredictably lurched back and forth over the
years, sometimes embracing aesthetic functionality and sometimes rejecting it. In its controversial 1980 Job's Daughters case,
the court held that a collective membership mark of a social organization was not infringed by an unlicensed jeweler because
use of the mark on jewelry worn by members was said to be “functional”: it enabled the wearer to identify herself as a member
of the organization. This short-circuited the usual analysis of whether there was a likelihood of any confusion or mistake that
the defendant jeweler's goods were approved or sponsored by the organization.56

But within a year, the court limited the scope of aesthetic functionality when it reversed dismissal of a case against an imitation
of the VUITTON repeated “LV” and floral symbol covering the surface of luggage and handbags. The court said that it was
not convinced that the VUITTON luggage design symbol “is that aspect of its product which satisfies its consumers' tastes for
beauty.”57 In 1987 the court appeared to almost, but not quite, close the door on the theory of aesthetic functionality.58 Then
the court seemed to shut the door tight in 2001 when it remarked that: “Nor has this circuit adopted the ‘aesthetic functionality’
theory, that is, the notion that a purely aesthetic feature can be functional.”59 But that was not the end of the court's on-and-
off relationship with aesthetic functionality.

In its 2006 Volkswagen case, the court said that the doctrine of aesthetic functionality, “albeit restricted over the years, retains
some limited vitality.” But the court shrunk the concept further, holding that defensive aesthetic functionality did not permit a
maker of key chains and auto license plate holders to use the Volkswagen trademark on those items.60 The court said that “the
alleged aesthetic function is indistinguishable from and tied to the mark's source-identifying nature” of defendant's goods.61 The
court gave no hint that it understood the key difference between the classic application of aesthetic functionality (the plaintiff's
mark is invalid as functional) and defensive aesthetic functionality (there is no infringement of a valid mark because defendant
is making “aesthetically functional” use of a non-functional trademark).

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The concept was briefly revived when, for a period of six months in 2011 in the Fleischer “Betty Boop” case, Ninth Circuit
precedent was that the unpermitted use of the image of a famous cartoon character on toys, dolls and similar goods was an
aesthetically functional use and could not be trademark infringement. Seizing upon an issue neither briefed nor discussed
by the parties, Judge Clifford Wallace said that the defendant's unlicensed use of the name and image of popular cartoon
character BETTY BOOP on merchandise “were functional aesthetic components of the product, not trademarks. There could
be, therefore, no infringement.”62 This astonishing statement stunned the licensing and entertainment industries. Plaintiff and
four amicus parties63 petitioned for a rehearing. Stung by the criticism, six months later the court withdrew the original opinion
and substituted a new opinion which made no mention of functionality.64

In 2021, the Ninth Circuit revived aesthetic functionality from its slumbers. In its Redbubble decision, the Ninth Circuit said
that Job Daughters “remains good law” and used its theory of aesthetic functionality to find no infringement. The claim was
for infringement of a registered mark for a humorous pun as it appeared on plaintiff's items such as T-shirts and tote bags.65
Defendant's use of the phrase on T-shirts was held not an infringing use because “the phrase acts as an aesthetic design, not as a
symbol for the [plaintiff] company.” The opinion is unclear and ambiguous as to whether the court was holding that the plaintiff's
mark was invalid as being “functional” or whether it was valid, but that it was defendant's accused use that was “functional.”66

Author's Comment. This unpredictable “yes it is—no it isn't” ever-changing position over the years has left attorneys frustrated
and uncertain as to the state of the law in the Ninth Circuit. It's a challenge trying to figure out what the law is in the Ninth
Court on aesthetic functionality.

• Tenth Circuit. The Tenth Circuit, stating that it would not eliminate the possibility of finding functionality for aesthetic reasons,
adopted a very truncated version of the “aesthetic functionality” theory, opining in dictum that “a feature intrinsic to the aesthetic
appeal of those products may not be entitled to trademark protection.”67

• Eleventh Circuit. The Eleventh Circuit held that the following proposed jury instruction was an erroneous statement of law:
“When a feature of goods or of its wrappers or container appeals to the consumer and affects his or her choice, that feature
is functional.” The definition is “overly broad” because many nonfunctional features may appeal to the consumer and affect
his or her choice.68

• Federal Circuit. The Court of Customs and Patent Appeals (now the Court of Appeals for the Federal Circuit), has consistently
rejected the theory that “functionality” extends beyond its utilitarian origins to include “aesthetic functionality.”69 As Judge
Rich noted:

With respect to the notion that a design is aesthetically functional if it is an important ingredient in the commercial
success of the product, it is noted that many trademarks hold such a place of importance. … [I]t is arguable that
there is no “doctrine” of aesthetic functionality which stands alone, without consideration of the more traditional
source identification principles of trademark law. To the extent there may be—at least with respect to ex parte
prosecution practice—it has been previously rejected by this court.70

In 1994 the Federal Circuit adhered to the view that it would not apply a theory of aesthetic functionality. However, the court
stretched the rule of utilitarian functionality to hold that an all-black outboard motor was functional and not registerable because
black has the special functional attributes of decreasing the apparent size of the motor and ensuring compatibility with many
different boat colors. The court said that these advantages were of a utilitarian, not an aesthetic, nature: “Color compatibility
and ability to decrease apparent motor size are not in this case mere aesthetic features. Rather these nontrademark functions
supply a competitive advantage.”71

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The Trademark Board has observed that decisions of the Federal Circuit “leave little doubt” that the theory of aesthetic
functionality has been rejected in the Federal Circuit, is not used in the Patent and Trademark Office, where “functionality”
must be determined on the basis of utilitarian aspects.72 However, in 2013, the Trademark Board changed direction and held
that a black box for flowers could not be registered as a mark for flowers and floral arrangements because it was “aesthetically
functional.”73

The Trademark Board rejected the argument that an applicant could register for fan merchandise a mark similar to that of the
CHICAGO BEARS football team because a fan's use was “functional” in that it allowed a fan to communicate allegiance to
the team.74

• State Courts. Oregon has rejected the theory of aesthetic functionality.75

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Famolare, Inc. v. Melville Corp., 472 F. Supp. 738, 203 U.S.P.Q. 68 (D. Haw. 1979), aff'd without opinion
mem, 652 F.2d 62 (9th Cir. 1981).

2 International Order of Job's Daughters v. Lindeburg and Co., 633 F.2d 912, 208 U.S.P.Q. 718 (9th Cir.
1980). Compare Supreme Assembly, Order of Rainbow for Girls v. J. H. Ray Jewelry Co., 676 F.2d 1079,
217 U.S.P.Q. 757 (5th Cir. 1982) (Reaching the same result as Job's Daughters, but without the need to
mention “aesthetic functionality.”). See discussion at § 7:82. See Playboy Enterprises Inc. v. Hsin I. Chen, 45
U.S.P.Q.2d 1400, 1997 WL 829339 (C.D. Cal. 1997) (Defendant failed to prove that the PLAYBOY rabbit
head design was aesthetically functional. Viewed Job's Daughters as holding that, where a design serves
both functions of indicating allegiance and denoting source, the design is protected by trademark law.).

3 Gemveto Jewelry Co., Inc. v. Jeff Cooper Inc., 568 F. Supp. 319, 219 U.S.P.Q. 806 (S.D. N.Y. 1983), vacated,
800 F.2d 256, 230 U.S.P.Q. 876 (Fed. Cir. 1986), on remand, 694 F. Supp. 1085 (S.D.N.Y. 1988), aff'd
without opinion, 884 F.2d 1399 (Fed. Cir. 1989) (“The settings here are, without question, functional. First,
they are directly related to the physical requirements essential to commercial success.”).

4 Damn I'm Good, Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 U.S.P.Q. 684 (S.D. N.Y. 1981) (“Competition
in bracelets or other goods inscribed with this or other messages would be severely curtailed if manufacturers
could receive trademark protection for each message they devised.”). See PPS, Inc. v. Jewelry Sales
Representatives, Inc., 392 F. Supp. 375, 185 U.S.P.Q. 374 (S.D. N.Y. 1975) (Preliminary injunction denied
as to trade dress claims in jewelry design with words “I Like You.” “A potential buyer of one of plaintiff's or
defendants' items may be more motivated by the item's design and aesthetic features than by its source. And
if this is so, those aesthetic features would be functional elements and could therefore be appropriated.”).

5 See McKenna, (Dys)functionality, 48 Hous. L. Rev. 823, 851 (2011) (“Courts that apply the aesthetic
functionality doctrine today overwhelmingly rely on the test the Supreme Court endorsed in TrafFix, …
asking whether exclusive use of the claimed feature put competitors at a significant non-reputation-related
disadvantage.”). See Wallace Intern. Silversmiths, Inc. v. Godinger Silver Art Co., Inc., 916 F.2d 76, 80,
16 U.S.P.Q.2d 1555 (2d Cir. 1990) (“We rejected Pagliero in Sportsac [LeSportsac, Inc. v. K mart Corp.,
754 F.2d 71, 77, 225 U.S.P.Q. 654, 78 A.L.R. Fed. 695 (2d Cir. 1985)] and reiterate that rejection here.”);
Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 221, 103 U.S.P.Q.2d
1937 (2d Cir. 2012) (“We have rejected, however, the circular ‘important ingredient’ test formulated by the
Pagliero court, which inevitably penalized markholders for their success in promoting their product.”).

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6 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 121 S. Ct. 1255, 149 L. Ed. 2d 164, 58
U.S.P.Q.2d 1001 (2001), quoting from Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 115
S. Ct. 1300, 131 L. Ed. 2d 248, 34 U.S.P.Q.2d 1161, 1165 (1995). The Traffix court said that: “It is proper to
inquire into a ‘significant non-reputation-related disadvantage’ in cases of esthetic functionality … .” This
is dictum because there was no issue of aesthetic functionality in either the Traffix case or the Qualitex case.

7 Restatement Third, Unfair Competition § 17, comment c (“The ultimate test of aesthetic functionality … is
whether the recognition of trademark rights would significantly hinder competition.”). The Reporter's Note
to Comment c states that “The rule stated in this Section, however, follows the numerous decisions that
reject the view that aesthetic appeal alone is sufficient to establish functionality. … The analysis adopted
here takes account of the available alternatives—a proposition expressly rejected in Pagliero.”

8 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 170, 115 S. Ct. 1300, 131 L. Ed. 2d 248, 34
U.S.P.Q.2d 1161, 1163 (1995).

9 Wallace Intern. Silversmiths, Inc. v. Godinger Silver Art Co., Inc., 916 F.2d 76, 80, 16 U.S.P.Q.2d 1555 (2d
Cir. 1990) (“The question, therefore, is whether the doctrine of functionality applies to features of a product
that are purely ornamental but that are essential to effective competition.”).

10 Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 642-645, 61 U.S.P.Q.2d
1769, 2002 FED App. 0060P (6th Cir. 2002) (Held aesthetically functional because giving Abercrombie
such a broadly defined exclusive right would prevent competitors from “competing effectively in the market
for casual clothing aimed at young people.”).

11 Bonazoli v. R.S.V.P. Intern., Inc., 353 F. Supp. 2d 218, 73 U.S.P.Q.2d 1992 (D.R.I. 2005) (“[T]he heart-
shape design of plaintiff's measuring spoons is functional in the sense that its appeal produces demand.”).

12 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 131 L. Ed. 2d 248, 115 S. Ct. 1300, 34 U.S.P.Q.2d 1161,
1165 (1995).

13 Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 120 S. Ct. 1339, 1344, 54 U.S.P.Q.2d 1065,
1069 (2000) (“Consumers should not be deprived of the benefits of competition with regard to the utilitarian
and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats
of suit against new entrants based upon alleged inherent distinctiveness.”).

14 120 S. Ct. at 1345, 54 U.S.P.Q.2d at 1069 (“It is true, of course, that the person seeking to exclude new
entrants would have to establish the nonfunctionality of the design feature, see § 43(a)(3), 15 U.S.C.A. §
1125(a)(3) (Oct.1999 Supp.)—a showing that may involve consideration of its esthetic appeal, see Qualitex,
514 U.S. at 170.”).

15 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 121 S. Ct. 1255, 149 L. Ed. 2d 164, 58
U.S.P.Q.2d 1001 (2001), quoting from Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 115 S.
Ct. 1300, 131 L. Ed. 2d 248, 34 U.S.P.Q.2d 1161, 1165 (1995). Note: This observation by the Supreme Court
is non-precedential and dictum because there was no issue of aesthetic functionality in either the Traffix case
or the Qualitex case. See detailed discussion of the functionality issues in the Traffix case at § 7:69.

16 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 121 S. Ct. 1255, 149 L. Ed. 2d 164, 58
U.S.P.Q.2d 1001 (2001) (“It is proper to inquire into a ‘significant non-reputation-related disadvantage’ in
cases of esthetic functionality ….”).

17 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 121 S. Ct. 1255, 1262, 58 U.S.P.Q.2d
1001 (2001).

18 See Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062, 80 U.S.P.Q.2d 1293 (9th Cir.
2006), cert. denied, 127 S. Ct. 1839 (U.S. 2007) (attempting to make sense of the discussion of aesthetic
functionality in Traffix and Qualitex); Board of Supervisors for Louisiana State University Agricultural and

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Mechanical College v. Smack Apparel Co., 550 F.3d 465, 487-488, 239 Ed. Law Rep. 874, 89 U.S.P.Q.2d
1338 (5th Cir. 2008), cert. denied, 129 S. Ct. 2759 (2009) (“[N]either Qualitex nor TrafFix addressed
aesthetic functionality as the dispositive issue, …. We do not believe that the Court's dictum in TrafFix
requires us to abandon our long-settled view rejecting recognition of aesthetic functionality.”).

19 Wallace Intern. Silversmiths, Inc. v. Godinger Silver Art Co., Inc., 916 F.2d 76, 80, 16 U.S.P.Q.2d 1555
(2d Cir. 1990) (“We rejected Pagliero in Sportsac [Le Sportsac, Inc. v. K Mart Corp., 754 F.2d 71, 77, 225
U.S.P.Q. 654 (2d Cir. 1985)] and reiterate that rejection here.”).

20 Restatement Third, Unfair Competition § 17.

21 Wallace Intern. Silversmiths, Inc. v. Godinger Silver Art Co., Inc., 916 F.2d 76, 81, 16 U.S.P.Q.2d 1555
(2d Cir. 1990). See Bubble Genius LLC v. Smith, 239 F. Supp. 3d 586, 595 (E.D. N.Y. 2017) (Relying on
Wallace, finding that trade dress in bar soap looking like the periodic table of elements was aesthetically
functional because “purely ornamental, and … necessary for competition in the market for periodic table
inspired novelty soaps.”).

22 Wallace Intern. Silversmiths, Inc. v. Godinger Silver Art Co., Inc., 916 F.2d 76, 81, 16 U.S.P.Q.2d 1555
(2d Cir. 1990).

23 916 F. 2d at 82. That is, Wallace could try to prove that a particular, precise pattern of silverware was
understood by customers to identify Wallace such that a competitor's copy would confuse customers as
to source or affiliation. See e.g., P.E. Guerin, Inc. v. Nanz Custom Hardware, Inc., 45 U.S.P.Q.2d 1524,
1997 WL 777812 (S.D. N.Y. 1997) (Preliminary injunction against look-alike of the detailed and specific
features of plaintiff's neo-Georgian period doorknob design, not against the use of any neo-Georgian design
in general.).

24 See § 15:47.

25 Warner Bros., Inc. v. Gay Toys, Inc., 724 F.2d 327 (2d Cir. 1983), later proceeding, 598 F. Supp. 424, 223
U.S.P.Q. 503 (S.D.N.Y. 1984) (court limited functionality to utilitarian features; rejecting the argument that a
toy auto with markings like that of a car featured on a TV series was functional because it enabled children to
imagine that they were playing the plots of the TV series); Industria Arredamenti Fratelli Saporiti v. Charles
Craig, Ltd., 725 F.2d 18, 222 U.S.P.Q. 754 (2d Cir. 1984) (relying on the Pagliero “important ingredient
in the commercial success” test to find the construction of a sofa to be functional and unprotectable, and
rejecting an equation between “functional” and “utilitarian”); Le Sportsac, Inc. v. K Mart Corp., 754 F.2d
71, 225 U.S.P.Q. 654 (2d Cir. 1985), later proceeding, 617 F. Supp. 316, 227 U.S.P.Q. 150 (E.D.N.Y. 1985),
on reconsideration, motion denied, 227 U.S.P.Q. 151 (E.D.N.Y. 1985) (attempting to reconcile the above
two cases, the court reformulated “aesthetic” functionality to sound very much like the “merely ornamental”
test where consumer perception is the guide); Metro Kane Imports, Ltd. v. Rowoco, Inc., 618 F. Supp.
273, 227 U.S.P.Q. 480 (S.D.N.Y. 1985), aff'd without op., 800 F.2d 1128 (2d Cir. 1986) (the Le Sportsac
case weakens, if not eliminates, the theory of aesthetic functionality in the Second Circuit); Morex S.P.A.
v. Design Institute America, Inc., 779 F.2d 799, 228 U.S.P.Q. 372 (2d Cir. 1985) (Le Sportsac rejected
the Fratelli Saporti acceptance of aesthetic functionality; reversal of case which used the Fratelli Saporti
standard); Stormy Clime, Ltd. v. Progroup, Inc., 809 F.2d 971, 1 U.S.P.Q.2d 2026 (2d Cir. 1987) (utilitarian
functionality is not equivalent to the “important ingredient in commercial success” test applied in Fratelli
Saporti “and limited in” Le Sportsac). See PAF S.r.l. v. Lisa Lighting Co., 712 F. Supp. 394, 12 U.S.P.Q.2d
1161 (S.D.N.Y. 1989) (“Aesthetic functionality has been rejected in this circuit as a standard for determining
functionality in trademark infringement actions.”).

26 See § 7:79.

27 Villeroy & Boch Keramische Werke K.G. v. THC Sys., Inc., 999 F.2d 619, 27 U.S.P.Q.2d 1866 (2d Cir.
1993) (The court said that “the key fact was that defendant has not made the necessary showing that it is

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at a significant competitive disadvantage in making the initial sale without the basket pattern.” Emphasis
added. Issues of secondary meaning and infringement were not addressed.).

28 Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 36 U.S.P.Q.2d 1737 (2d Cir. 1995) (“[S]ince the primary
purpose of [plaintiff's] sweater designs is aesthetic rather than source-identifying, [plaintiff's] sweater
designs do not meet the first requirement of an action under § 43(a) of the Lanham Act—that they be
used as a mark to identify or distinguish the source”); Banff, Ltd. v. Express, Inc., 921 F. Supp. 1065, 38
U.S.P.Q.2d 1024 (S.D.N.Y. 1995) (applying Knitwaves test and finding that design on sweater was not trade
dress because plaintiff, “like the plaintiff in Knitwaves chose its design primarily for aesthetic reasons”);
Krueger Int'l v. Nightingale Inc., 915 F. Supp. 595, 606, 40 U.S.P.Q.2d 1334 (S.D.N.Y. 1996) (“The approach
in Knitwaves, however, seems to be a step backward from Wallace because it revives a false dichotomy
between aesthetics and source identification”).

See § 7:81.

29 Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 228, 103 U.S.P.Q.2d
1937 (2d Cir. 2012) (“We hold that the District Court's conclusion that a single color can never serve as
a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic
functionality and was therefore error.” Christian Louboutin's high-fashion signature red shoe sole contrasting
with the color of the shoe upper was not proven to be aesthetically functional.).

30 Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 221, 103 U.S.P.Q.2d
1937 (2d Cir. 2012) (“[I]t is clear that the combined effect of Qualitex and TrafFix was to validate the
aesthetic functionality doctrine as it had already been developed by this Court ….”).

31 Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 228, 103 U.S.P.Q.2d
1937 (2d Cir. 2012) (While plaintiff's registration was not limited to a contrasting red sole of footwear, the
court exercised its power under Lanham Act § 37, 15 U.S.C.A. § 1119 to rectify the register by limiting the
mark and its registration to a red sole that contrasted with the color of the shoe upper. The court said it would
not address whether the contrasting red sole mark was aesthetically functional.). See § 30:109.

32 Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 228, 103 U.S.P.Q.2d
1937 (2d Cir. 2012) (While the court said that it did not “address” the issue of “likelihood of consumer
confusion,” at the same time it held that the accused monochrome shoe was “neither a use of, nor confusingly
similar to, the Red Sole mark.”).

33 American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1 U.S.P.Q.2d 1001 (3d Cir. 1986).

34 Keene Corp. v. Paraflex Industries, Inc., 653 F.2d 822, 211 U.S.P.Q. 201 (3d Cir. 1981). However, the
court held functional the shape of an outdoor lighting fixture because it was architecturally compatible with
the style of building to which it would be mounted. The court viewed this architectural compatibility as a
utilitarian feature of the product.

35 653 F.2d at 825. Accord: National Football League Properties, Inc. v. Wichita Falls Sportswear, Inc., 532 F.
Supp. 651, 215 U.S.P.Q. 175 (W.D. Wash. 1982).

36 In re DC Comics, Inc., 689 F.2d 1042, 215 U.S.P.Q. 394 (C.C.P.A. 1982) (Nies, J., concurring).

37 Standard Terry Mills, Inc. v. Shen Mfg. Co., 803 F.2d 778, 231 U.S.P.Q. 555 (3d Cir. 1986) (The court also
strongly implied that windowpane check weave was a “generic” design for kitchen towels.).

38 Devan Designs, Inc. v. Palliser Furniture Corp., 25 U.S.P.Q.2d 1991, 2002 (M.D.N.C. 1992), aff'd, 27
U.S.P.Q.2d 1399 (4th Cir. 1993) (“[T]his court has no reason to think that the Fourth Circuit would be
inclined to adopt such a policy”).

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39 Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417 (5th Cir. 1984) (case concerning a lemon juice bottle shape
was remanded for determination under this standard). See Sno-Wizard Mfg., Inc. v. Eisemann Products Co.,
791 F.2d 423, n.2, 230 U.S.P.Q. 118 (5th Cir. 1986) (in Sicilia, the court “expressly rejected” the test of
aesthetic functionality). See also Boston Professional Hockey Ass'n v. Dallas Cap & Emblem Mfg., Inc.,
510 F.2d 1004, 185 U.S.P.Q. 364 (5th Cir. 1975), cert. denied, 423 U.S. 868, 46 L. Ed. 2d 98, 96 S. Ct. 132,
187 U.S.P.Q. 480 (1975), reh'g denied, 423 U.S. 991, 46 L. Ed. 2d 312, 96 S. Ct. 408 (1975), appeal after
remand, 597 F.2d 71, 202 U.S.P.Q. 536 (5th Cir. 1979) (sports team emblems were saleable not because of
“functional” aesthetic characteristics, but because they are trademarks indicating sponsorship of the team).

40 Pebble Beach Co. v. Tour 18 I, Ltd., 155 F.3d 526, 48 U.S.P.Q.2d 1065 (5th Cir. 1998).

41 155 F.3d at 539 (upholding the finding that the design of a golf course is not necessarily “functional”).

42 Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel
Co., 550 F.3d 465, 487–488, 239 Ed. Law Rep. 874, 89 U.S.P.Q.2d 1338 (5th Cir. 2008), cert. denied, 129 S.
Ct. 2759 (2009) (“[N]either Qualitex nor TrafFix addressed aesthetic functionality as the dispositive issue,
….”).

43 WSM, Inc. v. Tennessee Sales Co., 709 F.2d 1084, 220 U.S.P.Q. 17 (6th Cir. 1983).

44 Ferrari S.p.A. Esercizio Fabriche Automobili E Corse v. Roberts, 944 F.2d 1235, 20 U.S.P.Q.2d 1001, 1011
(6th Cir. 1991), cert. denied, 505 U.S. 1219, 120 L. Ed. 2d 899, 112 S. Ct. 3028 (1992) (“The broad scope of
aesthetic functionality defined in Pagliero has been subsequently criticized and limited”). See: Ford Motor
Co. v. Lloyd Design Corp., 184 F. Supp. 2d 665, 62 U.S.P.Q.2d 1109 (E.D. Mich. 2002) (“[T]he Esercizio
court held that a product feature is not functional simply because it increases the value and appeal of the
article.”).

45 Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 61 U.S.P.Q.2d 1769 (6th
Cir. 2002).

46 Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 642–645, 61 U.S.P.Q.2d
1769, 2002 FED App. 0060P (6th Cir. 2002) (“However, no reasonable jury could deny the existence of
a ‘significant non-reputation-related disadvantage’ that would be imposed on competitors by protecting
Abercrombie's claimed trade dress. That form of functionality governs the analysis of this case.”).

47 Maker's Mark Distillery, Inc. v. Diageo North America, Inc., 679 F.3d 410, 418, 102 U.S.P.Q.2d 1693 (6th
Cir. 2012) (“Even assuming we were to recognize aesthetic functionality doctrine, regardless of which test
we would apply under that doctrine, the outcome is the same. Under either test, Cuervo's appeal on this
claim does not succeed.”).

48 Leapers, Inc. v. SMTS, LLC, 879 F.3d 731, 739, 125 U.S.P.Q.2d 1569 (6th Cir. 2018) (Reversing summary
dismissal that knurling pattern on adjustable rifle scopes was functional: a jury might find that it was
neither utilitarian nor aesthetically functional. “Plaintiff introduced evidence that its design lacks aesthetic
functionality.”).

49 W.T. Rogers Co. v. Keene, 778 F.2d 334, 228 U.S.P.Q. 145 (7th Cir. 1985). Discussed in Vaughan Mfg. Co.
v. Brikam Int'l, 814 F.2d 346, 1 U.S.P.Q.2d 2067 (7th Cir. 1987); Alpha Tau Omega Fraternity, Inc. v. Pure
Country, Inc., 2004 WL 3391781 (S.D. Ind. 2004) ("We believe the Seventh Circuit would not likely accept
the aesthetic functionality approach in resolving trademark applications and issues. Therefore, we reject its
application here as well.").

50 Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 10 U.S.P.Q.2d 1001 (7th Cir. 1989) (an exercise
bicycle with the wheel in the front is “aesthetically functional” because the public “strongly prefers” the
wheel in the front).

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51 Publications Int'l, Ltd. v. Landoll, Inc., 164 F.3d 337, 49 U.S.P.Q.2d 1139 (7th Cir. 1998) (“Gold is a natural
color to use on a fancy cookbook.”).

52 49 U.S.P.Q.2d at 1141.

53 Eco Mfg. LLC. v. Honeywell Intern., Inc., 357 F.3d 649, 69 U.S.P.Q.2d 1296 (7th Cir. 2003).

54 Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 860, 96 U.S.P.Q.2d 1404 (7th Cir. 2010).

55 Pagliero v. Wallace China Co., 198 F.2d 339, 95 U.S.P.Q. 45 (9th Cir. 1952). See discussion of this case
at § 7:79.

56 International Order of Job's Daughters v. Lindeburg and Co., 633 F.2d 912, 918, 208 U.S.P.Q. 718 (9th
Cir. 1980) (“[T]he name and emblem are functional aesthetic components of the jewelry, in that they are
being merchandised on the basis of their intrinsic value, not as a designation of origin or sponsorship.”). See
discussion and critique of this case at § 7:82.

57 Vuitton Et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769, 774, 210 U.S.P.Q. 351 (9th Cir. 1981),
also published at, 212 U.S.P.Q. 85, 1981 WL 481427 (9th Cir. 1981) (Reversing a summary judgment
for defendant. “We disagree with the district court insofar as it found that any feature of a product which
contributes to the consumer appeal and salability of the product is, as a matter of law, a functional element
of that product.”). See Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062, 1069, 80
U.S.P.Q.2d 1293 (9th Cir. 2006) (“With Vuitton, aesthetic functionality was dealt a limiting but not fatal
blow; the case was remanded for trial.”). See also: National Football League Properties, Inc. v. Wichita Falls
Sportswear, Inc., 532 F. Supp. 651, 215 U.S.P.Q. 175 (W.D. Wash. 1982) (An article is not “functional”
merely because it is “attractive”).

58 First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1382 n.3, 1 U.S.P.Q.2d 1779, 87 A.L.R. Fed. 1 (9th
Cir. 1987) (“In this circuit, the ‘aesthetic’ functionality test has been limited, [citing the 1981 Vuitton case] if
not rejected, … in favor of the ‘utilitarian’ functionality test.”). See Gucci Timepieces America Inc. v. Yidah
Watch Co., 47 U.S.P.Q.2d 1938, 1998 WL 650078, *3 (C.D. Cal. 1998) (“[T]he aesthetic functionality test
is essentially defunct in this circuit ….”).

59 Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1260, 58 U.S.P.Q.2d 1881 (9th Cir. 2001) (“[T]rade
dress cannot be both ‘functional and purely aesthetic.’ Such a formulation is internally inconsistent and at
odds with the commonly accepted view that functionality denotes utility …. We do not accept that there is
a dichotomy between ‘functional’ and ‘source identifying.’”). See Cosmos Jewelry Ltd. v. Hung's Jewelry
Inc., 61 U.S.P.Q.2d 1220, 2001 WL 1708062 (D. Haw. 2001) (Viewing the Ninth Circuit in Clicks Billiards
as rejecting the aesthetic functionality theory. The district court vacated its prior order dismissing a trade
dress claim on the ground of aesthetic functionality.).

60 Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062, 80 U.S.P.Q.2d 1293 (9th Cir. 2006)
(“Taken to its limits, as Auto Gold advocates, this doctrine would permit a competitor to trade on any mark
simply because there is some ‘aesthetic’ value to the mark that consumers desire. This approach distorts both
basic principles of trademark law and the doctrine of functionality in particular.”). Accord: Toyo Tire USA
Corp. v. Mandala, 2020 WL 5371513, *4 (C.D. Cal. 2020) (As in Au-Tomotive Gold, there was no aesthetic
functionality defense for defendant's printing of tire maker's trademarks on stickers and also placing stickers
on sidewalls of plaintiff's tires resold by defendant. Preliminary injunction granted.).

See Millennium Laboratories, Inc. v. Ameritox, Ltd., 817 F.3d 1123, 1128, 118 U.S.P.Q.2d 1459 (9th Cir.
2016) (“In Au–Tomotive Gold, we held that after Qualitex and TrafFix, ‘the test for functionality proceeds
in two steps.’” Reversing summary dismissal: there was an issue of fact for trial of the functionality of
computer generated graphical presentation of urine test results.).

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61 457 F.3d at 1074. (“The demand for [defendant's] products is inextricably tied to the trademarks
themselves.”).

62 Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 636 F.3d 1115, 97 U.S.P.Q.2d 1833 (9th Cir. 2011), opinion
withdrawn and superseded on denial of reh'g, 654 F.3d 958, 99 U.S.P.Q.2d 1654 (9th Cir. 2011).

63 Amicus Briefs: The Motion Picture Association of America (2011 WL 3281853), The International
Trademark Association (2011 WL 3281851), professional baseball, football, basketball and hockey leagues
plus collegiate licensing (2011 WL 3281852), and Edgar Rice Burroughs, Inc. (2011 WL 3281850).

64 Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958, 99 U.S.P.Q.2d 1654 (9th Cir. 2011). But on remand
Judge Collins ignored the withdrawal of the original opinion and resuscitated aesthetic functionality, saying
there was no infringement by use of the BETTY BOOP word mark on goods such as dolls and t-shirts
because defendant's use was aesthetically functional and there was no issue of likelihood of confusion
because defendant's use of the words was not use as a trademark—it was a “functional” use. Fleischer
Studios, Inc. v. A.V.E.L.A., Inc., 925 F. Supp. 2d 1067, 104 U.S.P.Q.2d 1750 (C.D. Cal. 2012) (While the
aesthetic functionality language was removed by the Ninth Circuit, “the reasoning … is nevertheless sound
and applicable” and is “a viable theory.” The District Court held as a matter of law that the words BETTY
BOOP were “part and parcel of the aesthetic design” of defendant's merchandise.).

65 LTTB LLC v. Redbubble, Inc., 840 Fed. Appx. 148 (9th Cir. 2021) (Plaintiff's mark was “LETTUCE
TURNIP THE BEET” and design, registered for items such as wearing apparel and tote bags. Court affirmed
dismissal on summary judgment.).

66 That plaintiff's mark was invalid: The dismissal was correct: (1) “[b]ecause functionality is a defense to
the validity of the marks and to LTTB's exclusive right to use the marks”; (2) functionality is a defense to
the validity of even an incontestably registered mark; and (3) plaintiff's marks “are not protectable against
any type of allegedly infirming activity.” That plaintiff's mark was not invalid but the accused use was not
an infringement: “[W]e do not hold that [plaintiff] LTTB's marks are per se invalid.” The affirmed District
Court said that defendant did “not suggest” that the mark was invalid and “nothing in this order should be
construed as so holding.” 385 F. Supp. 3d at 921.

67 Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 4 U.S.P.Q.2d 1497 (10th Cir. 1987).

68 John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, n.27, 219 U.S.P.Q. 515 (11th Cir. 1983).

69 In re Mogen David Wine Corp., 328 F.2d 925, 140 U.S.P.Q. 575 (C.C.P.A. 1964), appeal after remand, 372
F.2d 539, 152 U.S.P.Q. 593 (C.C.P.A. 1967); In re Penthouse International, Ltd, 565 F.2d 679, 195 U.S.P.Q.
698 (C.C.P.A. 1977); In re DC Comics, Inc., 689 F.2d 1042, 215 U.S.P.Q. 394 (C.C.P.A. 1982) (the Pagliero
“important ingredient” formulation is “at odds with this court's precedent”).

70 In re DC Comics, Inc., 689 F.2d 1042, 215 U.S.P.Q. 394 (C.C.P.A. 1982) (Rich, J. concurring) (In a
separate concurring opinion, Judge Nies observed, “No principle of trademark law required the imposition of
penalties for originality, creativeness, attractiveness, or uniqueness of one's product.”). See University Book
Store v. University of Wis. Bd. of Regents, 33 U.S.P.Q.2d 1385, 1405-06 (T.T.A.B. 1994) (while aesthetic
functionality is probably not a ground for inter partes opposition, an attractive design of a college mascot
imprinted on wearing apparel is not aesthetically functional).

71 Brunswick Corp. v. British Seagull, 35 F.3d 1527, 1532, 32 U.S.P.Q.2d 1120 (Fed. Cir. 1994), cert. denied,
514 U.S. 1050, 131 L. Ed. 2d 309, 115 S. Ct. 1426 (1995). Cited as an example of a functional use of color in
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 131 L. Ed. 2d 248, 115 S. Ct. 1300, 34 U.S.P.Q.2d 1161
(1995). Accord: L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 52 U.S.P.Q.2d 1307 (Fed. Cir. 1999) (Court
held that the color compatibility of a brick finish on the plate of an interior lighting fixture with the color
and decor of the furnishings does not alone make the design functional. “Mere taste or preference cannot
render a color—unless it is ‘the best or at least one, of a few superior designs’—de jure functional.”).

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72 In re Deere & Co., 7 U.S.P.Q.2d 1401 (T.T.A.B. 1988).

73 In re Florists' Transworld Delivery Inc., 106 U.S.P.Q.2d 1784, 1791, 2013 WL 2494151 (T.T.A.B. 2013)
(“Competitors who, for example, want to offers flowers for bereavement purposes, Halloween or to imbue
an element of elegance or luxury to their presentations through packaging therefor will be disadvantaged if
they must avoid using the color black in such packaging.”).

74 Chicago Bears Football Club, Inc. v. 12th Man/Tennessee LLC, 83 U.S.P.Q.2d 1073, 2007 WL 683778
(T.T.A.B. 2007) (“[W]e reject applicant's argument because it apparently would allow others to register
marks that are similar to registered marks in order to show support or hostility to a sports team. American
law simply does not recognize such a right.”). The Fifth Circuit similarly rejected such an “allegiance to my
team” defense in Board of Supervisors for Louisiana State University Agricultural and Mechanical College
v. Smack Apparel Co., 550 F.3d 465, 488, 239 Ed. Law Rep. 874, 89 U.S.P.Q.2d 1338 (5th Cir. 2008),
cert. denied, 129 S. Ct. 2759 (2009) (“[Defendant] has admitted that the colors and indicia on its shirts are
designed to call the Universities to the mind of the fans, and it acknowledges in its brief that fans purchase
t-shirts to wear to football games to show the colors of the team that the consumer is supporting. In other
words, fans desire to wear the t-shirts precisely because they show the Universities' marks.”).

75 Classic Instruments, Inc. v. VDO-Argo Instruments, Inc., 73 Or. App. 732, 700 P.2d 677, 226 U.S.P.Q. 894
(1985), review denied, 300 Or. 111, 707 P.2d 583 (1985) (citing this treatise).

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Works.

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1 McCarthy on Trademarks and Unfair Competition § 7:81 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

C. AESTHETIC FUNCTIONALITY

§ 7:81. Author's comment on “aesthetic functionality”

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

The “Important Ingredient” Formulation. The Ninth Circuit's original 1952 formulation in the Pagliero decision was that a
feature is “functional” and not a trademark if it is an “important ingredient in the commercial success of the product.”1 In my
view, this is much too open-ended and vague to be a useful rule of law. Taken literally, it negates protection for all trademarks.
How much less than that it may mean, is solely in the subjective view that a court may take.

The Fifth Circuit noted that the “important ingredient in commercial success” standard of aesthetic functionality would almost
always permit a junior user to freely copy even distinctive trade dress and confuse customers:

To define functionality based upon commercial success would allow the second comer to trade on the first comer's
goodwill, purely because it would be easier to market his product and not because he could not produce a viable,
competitive product. … The logical extension of this argument would practically obliterate trademark protection
for product design because a defendant could always argue that its innovative product is a widget that provides a
replica of the most popular or most prestigious widget on the market, thus requiring that the defendant be allowed
without further analysis to copy the plaintiff's widget.2

The Test That “Competitors Need It to Compete.” Most modern courts that mention “aesthetic functionality” have abandoned
the open-ended test of Pagliero and adopted a different open-ended test.3 The Supreme Court in its 2001 Traffix decision said,
in dictum, that “a functional feature is one the exclusive use of [which] would put competitors at a significant non-reputation-
related disadvantage.”4 This effectively gives a judge the power to trump all factual issues of validity and infringement by
determining that this feature is something that the judge thinks competitors should have the use of.5 This introduces a large

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element of uncertainty because it gives judges a tool with which to ignore customer perception and confusion and to decide a
case on the basis of what the judge thinks is “fair,” regardless of precedent or the custom of the trade.6

One commentator noted that there are few aesthetic designs that are so fundamental to an industry that competitors cannot fairly
compete without free use of it: “Because the range of possible aesthetic designs and configurations is as infinite as are the tastes
that desire them, according trademark protection to aesthetic features would not greatly hinder competition.”7 But of course,
the broader the definition of what the plaintiff claims as its mark or trade dress, the less likely it will have achieved a secondary
meaning and the more likely it has become a standard or generic design used in this market.

“Aesthetic Functionality” Is an Oxymoron. The notion of “aesthetic functionality” is an unwarranted expansion of the
utilitarian functionality policy, carrying it far outside the patent–related rationale that justifies the policy. That both words
“utilitarian” and “aesthetic” are appended to the same base word “functionality” is misleading semantics. “Aesthetic
functionality” is an oxymoron.8 Ornamental aesthetic designs are the antithesis of utilitarian designs.9 I think that neither
the Pagliero original test, nor the more recent “need it to compete” test is the kind of thing most people think that the word
“functional” defines.10

When it uses the label “aesthetic functionality,” a court transforms an extra-statutory value judgment that certain features are
needed by competitors into a statutory Lanham Act “functionality” defense.11

Features Can Be Both Aesthetically Pleasing and Source-Identifying. Judge Easterbrook on the Seventh Circuit remarked
that it makes no sense to say that aesthetically pleasing designs or images are disqualified from also being source identifiers—
that is, trademarks: “[T]rademark law would be a cruel joke if it limited companies to tepid or repugnant brands that discourage
customers from buying the marked wares.”12 As Judge Posner observed, a design or image can be both aesthetically pleasing
and source- identifying:

Rare is the manufacturer who will not try to choose a pleasing name, symbol, or design feature as his trademark. In
an age when fashion-conscious consumers wear T-shirts emblazoned with the trademarks of consumer products
and owners of Volkswagens buy conversion kits to enable them to put a Rolls Royce grille on their car, it is
apparent that trade names, symbols, and design features often serve a dual purpose, one part of which is functional
in the sense of making the product more attractive, and is distinct from identifying the manufacturer or his brand
to the consumer.13

“Aesthetic Functionality” Short-Circuits the Normal Issues of Validity and Infringement. Freewheeling application of
the “aesthetic functionality” theory can result in more consumer confusion as to the source of products because “aesthetic
functionality” is a potent rule of public policy overriding factual issues of actual consumer perception as to both validity and
the likelihood of confusion.14 That is, even if there is evidence that a valid trademark or trade dress is being infringed and is
confusing the public, the judge can say that not having this feature would “disadvantage” competitors. This opens up free use
of this feature to all.

While functionality is an issue of fact,15 some judges either ignore this, or declare that the matter is so clear that there is no
issue of fact to decide.16

The “Merely Ornamental” Rule. “Aesthetic functionality” is an inappropriate response to a valid concern. The concern is
over features that are merely ornamental and therefore not perceived by customers as indicia of origin—trademarks. However,
trademark law has long had a rule to deal with that situation: the “merely ornamental” rule.17 The “merely ornamental” rule is

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simply a facet of the basic trademark factual question: is the disputed feature in fact perceived by customers as a trademark or
not? Do customers perceive this feature solely as attractive ornamentation or also as a symbol that identifies and distinguishes
a single source?18

The difference is more than a semantic dispute over the appropriate legal label to append. “Aesthetic functionality,” like
any concept of functionality, is an issue of public policy decided by a court independently of, and regardless of, customer
perception.19 Once a feature is held “functional,” customer perception is set aside as mere “de facto” secondary meaning.20 In
addition, a survey showing a high degree of customer recognition as a mark would be irrelevant to any “functionality” enquiry.
But under the “merely ornamental” rule, the guide is customer perception and only that.

Trademark law and policy does not need the theory of “aesthetic functionality.” The policy it purports to serve can be more
fairly and accurately performed by existing rules of secondary meaning, genericness and the rule of “merely ornamental.” In
those approaches, customer perception is the guide, not a court's free-floating notion of what is “needed” by competitors.21
What neither consumers nor the law of trademark needs is a “public policy” of aesthetic functionality that denies trademark and
trade dress protection to identifying symbols that customers perceive and rely on in their purchasing decisions.

The Valentine's Day Heart-Shaped Candy Box. Advocates of the theory of aesthetic functionality will often use the 1938
Restatement's example of a Valentine's Day candy box in the shape of a heart to show the need for the theory.22 The assumption
is that no one candy purveyor should have the legal right to exclusive use of a heart-shaped candy box and that only the theory
of aesthetic functionality can accomplish the job of preventing such an unfair result.

My response is that there is no need to invent a theory of “aesthetic functionality” to achieve the desired result. A heart-shaped
candy box is such a standard, oft-used shape as to be a “generic” shape,23 incapable of trade dress status and certainly incapable
of ever achieving a secondary meaning.24 No one candy seller could ever prove that it had achieved trademark status and not
just decorative appeal, in such an oft-used and hackneyed design as candy box in the shape of a heart. A heart-shaped candy
box is no more capable of trade dress protection under traditional trademark law principles than would be Christmas wrapping
paper in red and green or Christmas cards showing an image of Santa Claus.25

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 See § 7:79.

2 Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 539, 48 U.S.P.Q.2d 1065 (5th Cir. 1998) (upholding the
finding that the design of a golf course is not necessarily “functional”). See Wallace Intern. Silversmiths,
Inc. v. Godinger Silver Art Co., Inc., 916 F.2d 76, 80, 16 U.S.P.Q.2d 1555 (2d Cir. 1990) (“By allowing the
copying of an exact design without any evidence of market foreclosure, the Pagliero test discourages both
originators and later competitors from developing pleasing designs.”).

3 See McKenna, (Dys)functionality, 48 Hous. L. Rev. 823, 851 (2011) (“Courts that apply the aesthetic
functionality doctrine today overwhelmingly rely on the test the Supreme Court endorsed in TrafFix, …
asking whether exclusive use of the claimed feature put competitors at a significant non-reputation-related
disadvantage.”).

4 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 121 S. Ct. 1255, 149 L. Ed. 2d 164, 58
U.S.P.Q.2d 1001 (2001), quoting from Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 115
S. Ct. 1300, 131 L. Ed. 2d 248, 34 U.S.P.Q.2d 1161, 1165 (1995). The Traffix court said that: “It is proper to

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inquire into a ‘significant non-reputation-related disadvantage’ in cases of esthetic functionality … .” This

is dictum because there was no issue of aesthetic functionality in either the Traffix case or the Qualitex case.

5 See e.g., Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1006, 36 U.S.P.Q.2d 1737 (2d Cir. 1995)
(“In Wallace, … we held that the functionality doctrine may apply even to features of a product that
are purely ornamental: ‘where an ornamental feature is claimed as a trademark and trademark protection
would significantly hinder competition by limiting the range of adequate alternative designs, the aesthetic
functionality doctrine denies such protection.’” Quoting from Wallace Intern. Silversmiths, Inc. v. Godinger
Silver Art Co., Inc., 916 F.2d 76, 81, 16 U.S.P.Q.2d 1555 (2d Cir. 1990).); Abercrombie & Fitch Stores, Inc.
v. American Eagle Outfitters, Inc., 280 F.3d 619, 642–645, 61 U.S.P.Q.2d 1769, 2002 FED App. 0060P (6th
Cir. 2002) (Casual clothing with primary color combinations with solid, plaid and stripe designs made from
all natural cotton, wool and twill fabrics was aesthetically functional because giving Abercrombie such a
broadly defined exclusive right would prevent competitors from “competing effectively in the market for
casual clothing aimed at young people.”).

See Duft, “‘Aesthetic’ Functionality,” 73 Trademark Rep. 151, 202 (1983) (“‘Aesthetic’ functionality is a
game with no rules.”).

6 For example, for a period of six months in 2011, in the Fleischer case, precedent in the Ninth Circuit was
that the unpermitted use of the image of a popular cartoon character on toys, dolls and similar goods was
aesthetically functional and could not be trademark infringement. Stung by criticism of this astonishing
decision, the court withdrew the original opinion and substituted a new opinion which made no mention
of functionality. Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 636 F.3d 1115, 97 U.S.P.Q.2d 1833 (9th Cir.
2011), opinion withdrawn and superseded on denial of reh'g, 654 F.3d 958, 99 U.S.P.Q.2d 1654 (9th Cir.
2011). On remand, the court resuscitated aesthetic functionality, finding no infringement by use of the word
mark on goods such as dolls and t-shirts because defendant's use was “aesthetically functional.” Fleischer
Studios Inc. v. A.V.E.L.A. Inc., 104 U.S.P.Q.2d 1750, 2012 WL 5969649 (C.D. Cal. 2012) (While the
aesthetic functionality language was removed by the Ninth Circuit, “the reasoning … is nevertheless sound
and applicable” and is “a viable theory.”).

7 Krieger, “The Broad Sweep of Aesthetic Functionality: A Threat to Trademark Protection of Aesthetic
Product Features,” 51 Fordham L. Rev. 345, 380 (1982). See Ideal Toy Corp. v. Plawner Toy Mfg. Corp.,
685 F.2d 78, n.4, 216 U.S.P.Q. 102 (3d Cir. 1982) (“[P]ossible trade dress variations are limited only by the
designers' imaginations”).

8 See Wallace Intern. Silversmiths, Inc. v. Godinger Silver Art Co., Inc., 916 F.2d 76, 80-81, 16 U.S.P.Q.2d
1555 (2d Cir. 1990) (“Even when the doctrine is referred to as ‘aesthetic’ functionality, it still seems an apt
description only of pleasing designs of utilitarian features.”); Christian Louboutin S.A. v. Yves Saint Laurent
America Holdings, Inc., 696 F.3d 206, 220-221, 103 U.S.P.Q.2d 1937 (2d Cir. 2012) (“Despite its apparent
counter-intuitiveness (how can the purely aesthetic be deemed functional, one might ask?), our Court has
long accepted the doctrine of aesthetic functionality.”).

9 Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1260, 58 U.S.P.Q.2d 1881 (9th Cir. 2001) (quoting
treatise with approval).

10 See Dr. Ing. h.c.F. Porsche AG v. Universal Brass, Inc., 34 U.S.P.Q.2d 1593, 1995 WL 420816 (W.D. Wash.
1995) (rejecting defensive use of aesthetic functionality, relying in part on the critique in this treatise);
Krueger Intern., Inc. v. Nightingale Inc., 915 F. Supp. 595, 606, 40 U.S.P.Q.2d 1334 (S.D. N.Y. 1996) (The
doctrine of “aesthetic functionality” was “both unnecessary and illogical” and “denied trade dress protection
to design features whose only sin was to delight the senses.”).

11 See § 7:63. In 1998, Congress codified the functionality rule and amended the Lanham Act by making
“functionality” an explicit ground for: (1) ex parte rejection; (2) a ground for opposition and cancellation of
registration; and (3) a statutory defense to an incontestably registered mark.

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12 Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 860, 96 U.S.P.Q.2d 1404 (7th Cir. 2010). See, Eco
Mfg. LLC. v. Honeywell Intern., Inc., 357 F.3d 649, 654, 69 U.S.P.Q.2d 1296 (7th Cir. 2003) (Judge
Easterbrook: If “aesthetic functionality” were defined as excluding all attractive designs, then that “would
destroy protection of trade dress … .”).

13 W.T. Rogers Co., Inc. v. Keene, 778 F.2d 334, 340, 228 U.S.P.Q. 145 (7th Cir. 1985) (“But the fact that
a design feature is attractive does not, to repeat, preclude its being trademarked.” 778 F.3d at 343.). See
Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062, 1072, 80 U.S.P.Q.2d 1293 (9th
Cir. 2006) (“[T]he fact that a trademark is desirable does not, and should not, render it unprotectable.”);
Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel
Co., 550 F.3d 465, 488, 239 Ed. Law Rep. 874, 89 U.S.P.Q.2d 1338 (5th Cir. 2008) (“We agree with the
Ninth Circuit [in Au-Tomotive Gold] that ‘the fact that a trademark is desirable does not, and should not,
render it unprotectable.’”); City of New York v. Blue Rage, Inc., 435 F. Supp. 3d 472, 491, (E.D. N.Y. 2020)
(That defendant's use on wearing apparel of valid marks was as “decoration” is no defense. “By defendant's
reasoning, any logo or emblem would be precluded from trademark protection once it was used to ‘decorate’
or provide ‘ornamentation’ to an item of merchandise.” Summary judgment of infringement.).

14 See § 7:63.

15 See § 7:71.

16 See e.g. Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 642–645, 61
U.S.P.Q.2d 1769, 2002 FED App. 0060P (6th Cir. 2002) (“However, no reasonable jury could deny the
existence of a ‘significant non-reputation-related disadvantage’ that would be imposed on competitors by
protecting Abercrombie's claimed trade dress. That form of functionality governs the analysis of this case.”).

17 See § 7:24.

18 See Restatement Third, Unfair Competition § 17, comment c, Reporters' Note (“If the design is not
distinctive, however, it is unnecessary to consider functionality.”). See Knitwaves, Inc. v. Lollytogs Ltd.
(Inc.), 71 F.3d 996, 36 U.S.P.Q.2d 1737 (2d Cir. 1995) (Coming close to the position recommended by the
author. The Knitwaves court held that a design on a sweater, while not aesthetically functional, was not
protectable because it was primarily decorative. In the author's view, when a product feature is merely and
solely decorative or “aesthetic” it is not trade dress because it is not used to identify and distinguish source.
Judge Sotomayor's criticism was that, “Knitwaves seems to instruct that a design can serve only one primary
purpose: either aesthetic or source-identifying, but not both.”); Krueger Intern., Inc. v. Nightingale Inc., 915
F. Supp. 595, 606, 40 U.S.P.Q.2d 1334 (S.D. N.Y. 1996) (“The approach in Knitwaves, however, seems
to be a step backward from Wallace because it revives a false dichotomy between aesthetics and source
identification.”).). See Grupke v. Linda Lori Sportswear, Inc., 921 F. Supp. 987, 40 U.S.P.Q.2d 1088 (E.D.
N.Y. 1996), on reconsideration in part, 1996 WL 525284 (E.D. N.Y. 1996) (Picture of cats on t-shirt is not
protectable trade dress because it was not intended to, and did not, identify source.).

19 See discussion at § 7:63. See also Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1260, 58
U.S.P.Q.2d 1881 (9th Cir. 2001) (“Whether a feature is functional has no direct bearing on whether it plays
a source-identifying role.”).

20 See § 7:66.

21 Many of the cases using the “aesthetic functionality” rationale might well have been decided the same way
on a principled analysis by application of the “merely ornamental” rule. In fact, many opinions appear to
use the two approaches in an uneasy synthesis. See, e.g., Damn I'm Good, Inc. v. Sakowitz, Inc., 514 F.
Supp. 1357, 212 U.S.P.Q. 684 (S.D. N.Y. 1981). The Trademark Board has often used the merely decorative
(or merely aesthetic) rule to deny protection to words and pictures that are not used as identifying marks.
See, e.g., In re Paramount Pictures Corporation, 213 U.S.P.Q. 1111, 1982 WL 52018 (T.T.A.B. 1982)
(characterizing the issue as one of “aesthetic ornamentation”); In re Astro-Gods Inc., 223 U.S.P.Q. 621,

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§ 7:81. Author's comment on “aesthetic functionality”, 1 McCarthy on Trademarks and...

1984 WL 63582 (T.T.A.B. 1984) (A word-design logo was used on T-shirts in such a way as to be merely
aesthetic ornamentation, “not likely to be perceived as anything other than part of the thematic whole of the
ornamentation of applicant's shirts.” Size, location, dominance, and significance of the logo are all factors
to be weighed.); In re Dimitri's Inc., 9 U.S.P.Q.2d 1666, 1988 WL 252334 (T.T.A.B. 1988) (SUMO on T-
shirts and baseball caps was not registrable because it was part of aesthetic ornamentation and is not used in
a trademark sense, primarily because the word always appears with a stylized picture of sumo wrestlers.).

22 See § 7:79. The example of a Valentine's Day candy box in the shape of a heart was continued in the 1995
Restatement. Restatement Third, Unfair Competition § 17, comment c Illustration 8.

23 See § 8:6.50.

24 See § 15:1.

25 See, e.g., Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 31 U.S.P.Q.2d 1481 (8th Cir. 1994) (Red and
green cords used to tie the ends of a pillow-shaped bag of potpourri is not protectable “because such
colors are traditionally used for products relating to Christmas and are therefore neither distinctive nor
nonfunctional.”); In Re J. Kinderman & Sons Inc., 46 U.S.P.Q.2d 1253, 1998 WL 177477 (T.T.A.B. 1998)
(Red, green, and gold container that looks like a wrapped Christmas gift is not a registerable mark for
Christmas tree lights because it is a common design and used only as ornamentation. “It is common
knowledge that stars and the colors red, green and gold are associated with the Christmas holiday.”).

End of Document © 2024 Thomson Reuters. No claim to original U.S. Government

Works.

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§ 7:82. Aesthetically functional use by defendant as a..., 1 McCarthy on...

1 McCarthy on Trademarks and Unfair Competition § 7:82 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

C. AESTHETIC FUNCTIONALITY

§ 7:82. Aesthetically functional use by defendant as a defense to infringement of a valid trademark

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

No Infringement of a Valid Trademark Because Defendant's Use Is “Aesthetically Functional?” The Ninth Circuit has
sometimes taken the position that the unauthorized use of what is unquestionably someone else's valid and non-functional
trademark is not an infringement. The court calls this a non-infringing “aesthetically functional” use of the valid mark. This
approach takes the aesthetic functionality theory of a challenge to the validity of a mark and turns it on its head into an argument
that there is no infringement of a valid mark.

The Ninth Circuit Job's Daughters Case. The Ninth Circuit's 1980 Job's Daughters decision is the formative case espousing
the view that aesthetic functionality is a defense that substitutes for the usual likelihood of confusion test.1 Jobs Daughters is a
Masonic affiliated organization for young women. It owned a valid but unregistered collective membership mark in an emblem
that identified the wearer as a member of the organization.2 Defendant was one of several unlicensed makers of jewelry such as
rings that bore the logo of the organization for sale to members. The Jobs Daughters organization sued defendant under Lanham
Act § 43(a) for trademark infringement. The Ninth Circuit reversed the District Court and granted judgment for defendant. The
Ninth Circuit held the collective membership mark was not infringed because use of the mark on jewelry worn by members was
“functional”: it enabled the wearer to identify herself as a member of the organization: “[T]he name and emblem are functional
aesthetic components of the jewelry, in that they are being merchandised on the basis of their intrinsic value, not as a designation
of origin or sponsorship.”3

The court reasoned that there could be no likelihood of confusion or mistake that the defendant's jewelry was approved or
sponsored by the organization. The mark identified wearers as organization members, but did not identify jewelry and similar
items as coming from or approved by Job's Daughters. This was largely because the organization never appointed an exclusive
jeweler, resulting in several jewelers supplying the market. The court did not say that the emblem of an association on jewelry
or wearing apparel could not serve as a trademark indicating source or sponsorship: “Our holding does not mean that a name or

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emblem could not serve simultaneously as a functional component of a product and a trademark.”4 In essence, the court held
that proof that the accused use was a use as a trademark was a gateway requirement for an infringement claim.5

This creation of an “aesthetically functional” defense was a detour that bypassed the usual likelihood of confusion test of
trademark infringement. This holding led to confusion and disagreement in other courts. The Fifth Circuit, faced with an almost
identical case, found no infringement without the need to mention “functionality” at all.6 This meant that the Ninth Circuit
could have reached the same result without any mention of aesthetic functionality. The Federal Circuit read (or mis-read) the
Ninth Circuit's decision as holding that the Job's Daughters name and emblem were not valid marks.7 Outside the Ninth Circuit,
courts have rejected the rule in Job's Daughters.8 The decision has been criticized.9

Ninth Circuit Decisions After Jobs Daughters: Vuitton, Volkswagen, Betty Boop and Redbubble. The next year after Jobs
Daughters, the Ninth Circuit distinguished it and rejected an argument of a maker of a look-alike Louis Vuitton handbag that it
was only making an aesthetically functional product design. The court rejected the defense that the registered Vuitton product
design of interlocking “LV” and floral designs was “that aspect of its products which satisfies its consumers' tastes for beauty.”10
Such a design on the surface of goods such as handbags can be both aesthetically pleasing and decorative and at the same time
serve as a trademark indicating origin.

Twenty six years later, the Ninth Circuit again distinguished Job's Daughters and held that defensive aesthetic functionality did
not permit a maker of key chains and auto license plate holders to use the Volkswagen trademark on those items.11 The court
said that “the alleged aesthetic function is indistinguishable from and tied to the mark's source-identifying nature” of defendant's
goods.12 The court gave no hint that it saw the difference between the classic application of aesthetic functionality (the plaintiff's
mark is invalid as functional) and defensive aesthetic functionality (there is no infringement of a valid mark because defendant
is making “aesthetically functional” use of a non-functional trademark).

For a period of six months in 2011 in the Fleischer “Betty Boop” case, Ninth Circuit precedent was that the unpermitted use of
the image of a famous cartoon character on toys, dolls and similar goods was an aesthetically functional use and could not be
trademark infringement. Seizing upon an issue neither briefed nor discussed by the parties, Judge Clifford Wallace said that the
defendant's unlicensed use of the name and image of popular cartoon character BETTY BOOP on merchandise “were functional
aesthetic components of the product, not trademarks. There could be, therefore, no infringement.”13 This astonishing statement
stunned the licensing and entertainment industries. Plaintiff and four amicus parties14 petitioned for a rehearing. Stung by the
criticism, six months later the court withdrew the original opinion and substituted a new opinion which made no mention of
functionality.15

In its 2021 Redbubble decision, the Ninth Circuit said that Job Daughters “remains good law” and used its theory of aesthetic
functionality to find no infringement. The claim was for infringement of a registered mark for a humorous pun as it appeared
on plaintiff's items such as T-shirts and tote bags.16 Defendant's use of the phrase on T-shirts was held not an infringing use
because “the phrase acts as an aesthetic design, not as a symbol for the company.” The opinion is ambiguous and unclear as
to whether the court was holding that the plaintiff's mark was invalid as being “functional” or whether it was valid, but that it
was defendant's accused use that was “functional.”17

Author's View on the Ninth Circuit's Theory of Defendant's Aesthetically Functional Use. Ever since the 1981 Job's
Daughters case, some judges on the Ninth Circuit seem to be determined to invoke the theory of aesthetic functionality as
a rationale to create a rule that the accused use must be proven to be a use as a “trademark” for likelihood of confusion to
exist. But if the objective is to adopt such an unprecedented gateway prerequisite for trademark infringement, it requires a clear
explanation, rationale and basis in the statutory text. Instead, the court uses the “aesthetic functionality” theory as a container

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into which to cram this requirement of defendant's use as a trademark. It does not fit. This explains the tangled and contradictory
rhetoric in the court's opinions on this issue.18

The theory of defensive aesthetic functionality is the wrong approach to solve problems that arise when a trademark is used
by defendant in an arguably “decorative” sense, such as on T-shirts, tote bags and baseball caps. In such cases the question is
the familiar but difficult one of whether there is a likelihood of confusion as to source, sponsorship, affiliation or connection.
No notions of “defensive aesthetic functionality” are proper to serve as a convenient escape from directly facing the question
of likelihood of confusion.

Valid Marks Used by Buyers to Express Allegiance to the Mark Owner, Such as a College or Sports Team. In the Ninth
Circuit Job Daughters case, Judge Fletcher said she thought it “naïve” to believe that objects bearing the trademarks of schools,
sports teams, celebrities and organizations are “desired because consumers believe that the product somehow originated with
or was sponsored by the organization the name or emblem signifies.”19 Other courts have not expressed such doubts as to the
enforceability of marks to express support for or allegiance to the mark owner. The Eleventh Circuit expressly disagreed with the
“unsupported assertion” by Judge Fletcher and found a likelihood of confusion of connection between defendant's BULLDOG
beer and the University of Georgia BULLDOGS football team, observing that consumers who buy products with the name or
emblem of their favorite school or sports team would prefer an officially sponsored or licensed product to an identical non-
licensed product.20

Occasionally, a defendant who sells wearing apparel or other goods bearing sports team names and logos argues that it is free
to do so without a license because its use is “aesthetically functional” in permitting its customers to express their loyalty and
support for the team. This defense has been consistently rejected. The Trademark Board rejected the argument that an applicant
could register for fan merchandise a mark similar to that of the CHICAGO BEARS football team because a fan's use was
“functional” in that it allowed a fan to communicate allegiance to the team.21 Similarly, a court rejected an argument that
defendant was free to sell wearing apparel imprinted with names and logos identifying Ohio State University because it enabled
fans to express their support for the university and its sports teams.22

The same rejection of a defensive aesthetic functionality argument results when a valid trademark is used on goods such as
wearing apparel that expresses support for a person or institution. For example, the unlicensed use on wearing apparel of
exact copies of registered trademarks such as NYPD, FDNY and the New York Police Department shield design were held to
constitute infringement, the court noting that the City of New York had an active program licensing those marks for various
forms of merchandise. The court rejected defendant's argument that its use was “aesthetically functional” because its use was
“decorative,” with the implication that buyers wore the clothing to express their support for the New York police and fire
departments.23

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 International Order of Job's Daughters v. Lindeburg and Co., 633 F.2d 912, 208 U.S.P.Q. 718 (9th Cir. 1980).

2 The court made clear that the mark was a valid collective membership mark of the organization: “The name
‘Job's Daughters’ and the Job's Daughters insignia are indisputably used to identify the organization, and
members of Job's Daughters wear the jewelry to identify themselves as members. In that context, the insignia
are trademarks of Job's Daughters.” 633 F.2d at 918. Regarding collective membership marks, see § 19:101.

3 633 at 918.

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§ 7:82. Aesthetically functional use by defendant as a..., 1 McCarthy on...

4 633 at 919: “[I]t is possible that they could serve secondarily as trademarks if the typical customer not only
purchased the jewelry for its intrinsic functional use and aesthetic appeal but also inferred from the insignia
that the jewelry was produced, sponsored, or endorsed by Job's Daughters.”

5 633 at 920: “[Defendant] was not using the Job's Daughters name and emblem as trademarks….[T]there
was evidence that many other jewelers sold unlicensed Job's Daughters jewelry, implying that consumers
did not ordinarily purchase their fraternal jewelry from only ‘official’ sources.”). See § 23:11.50 regarding
the argument that an infringing use must be a trademark use.

6 Supreme Assembly, Order of Rainbow for Girls v. J. H. Ray Jewelry Co., 676 F.2d 1079, 217 U.S.P.Q.
757 (5th Cir. 1982) (Reaching same result as Job's Daughters, but without the mention of “aesthetic
functionality”). See American Legion v. Matthew, 144 F.3d 498, 46 U.S.P.Q.2d 1733 (7th Cir. 1998) (The
term, LEGIONNAIRE, while a valid collective mark identifying a member of the AMERICAN LEGION
organization, was not proven to be a trademark for clothing. Plaintiff could not prove that defendant's use
of LEGIONNAIRE for a kepi cap associated with the French Foreign Legion would create confusion of
sponsorship, affiliation or source.); Board of Supervisors for Louisiana State University Agricultural and
Mechanical College v. Smack Apparel Co., 550 F.3d 465, 484, 239 Ed. Law Rep. 874, 89 U.S.P.Q.2d 1338
(5th Cir. 2008), (Explaining Rainbow for Girls as a case where “there was no historic custom or practice
specific to Rainbow jewelry or to the fraternal jewelry industry that Rainbow jewelry could be manufactured
only with Rainbow's sponsorship or approval.”).

7 International Order of Job's Daughters v. Lindeburg & Co., 727 F.2d 1087, 1091, 220 U.S.P.Q. 1017 (Fed.
Cir. 1984) (“The Ninth Circuit held that the Job's Daughters name and emblem—mainly as a result of its
widespread use by non-licensed jewelers and lack of control by appellant—fulfilled a functional, aesthetic
purpose and did not serve as a trademark.”).

8 Seventh Circuit
W.T. Rogers Co., Inc. v. Keene, 778 F.2d 334, 340, 228 U.S.P.Q. 145 (7th Cir. 1985) (“[I]it would be
unreasonable to deny trademark protection to a manufacturer who had the good fortune to have created a
trade name, symbol, or design that became valued by the consuming public for its intrinsic pleasingness
as well as for the information it conveyed about who had made the product, … and we reject the contrary
intimations in some cases from the Ninth Circuit. [citing Job's Daughters] as have most other courts.”);
Alpha Tau Omega Fraternity, Inc. v. Pure Country, Inc., 2004 WL 3391781, *6 (S.D. Ind. 2004) (“[T]his
notion of aesthetic functionality has not generally caught on elsewhere.” College fraternities and sororities
obtained summary judgement of infringement of their marks by defendant who produced items bearing the
marks.)
Tenth Circuit
Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 518, 4 U.S.P.Q.2d 1497, 23 Fed. R. Evid. Serv. 1272
(10th Cir. 1987) (Reading Ninth Circuit law after Jobs Daughters as narrowing it and having “rejected an
interpretation that would define, as a matter of law, any feature of a product that contributes to its consumer
appeal and marketability, as a functional element of the product …”)
Eleventh Circuit
University of Georgia Athletic Ass'n v. Laite, 756 F.2d 1535, 1547, n.28, 23 Ed. Law Rep. 858, 225 U.S.P.Q.
1122 (11th Cir. 1985) (“[C]ontrary to the unsupported assertion of the Ninth Circuit in Job's Daughters, at
least some members of the public do assume that products bearing the mark of a school or a sports team are
sponsored or licensed by the school or team.”)
Federal Circuit
In re DC Comics, Inc., 689 F.2d 1042, 1049, 215 U.S.P.Q. 394 (C.C.P.A. 1982) (J. Rich concurring) (“The
Ninth Circuit labels as aesthetically functional a design which connotes ‘other than a trademark purpose,’
or which constitutes that which the consumer wishes to purchase ‘as distinguished from an assurance that
a particular entity made, sponsored, or endorsed a product.’ In other words, the reasoning is circular. If a
design which is sought to be protected as a trademark can be demonstrated to so function, it will be protected
as a trademark; it will not be said that its only function is as an aesthetically pleasing design.”)

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Restatement—Restatement Third, Unfair Competition § 20, comment e (1995) (Characterizes cases

invoking a defensive version of aesthetic functionality as erroneous, cautioning that the “proper enquiry”
in cases involving the unauthorized sale of goods bearing the names or logos of schools or organizations is
“what the unauthorized use of the mark signifies to prospective purchasers.”).

9 Fletcher, Defensive Aesthetic Functionality: Deconstructing the Zombie, 101 Trademark Rep. 1687, 1706,
1708 (2011) (“No respectable legal authority recognizes defensive ‘aesthetic functionality’ as having
anything to do with eligibility for trademark protection, because all of the supposedly ‘aesthetically
functional’ objects, or elements of the object, are already, independently, trademarks.”).

10 Vuitton Et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769, 774, 210 U.S.P.Q. 351 (9th Cir. 1981),
also published at, 212 U.S.P.Q. 85, 1981 WL 481427 (9th Cir. 1981) (Reversed a summary judgment for
defendant.).

11 Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062, 80 U.S.P.Q.2d 1293 (9th Cir. 2006)
(“Taken to its limits, as Auto Gold advocates, this doctrine would permit a competitor to trade on any mark
simply because there is some ‘aesthetic’ value to the mark that consumers desire. This approach distorts both
basic principles of trademark law and the doctrine of functionality in particular.”). Accord: Toyo Tire USA
Corp. v. Mandala, 2020 WL 5371513, *4 (C.D. Cal. 2020) (As in Au-Tomotive Gold, there was no aesthetic
functionality defense for defendant's printing of tire maker's trademarks on stickers and also placing stickers
on sidewalls of plaintiff's tires resold by defendant. Preliminary injunction granted.).

12 457 F.3d at 1074. (“The demand for [defendant's] products is inextricably tied to the trademarks
themselves.”).

13 Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 636 F.3d 1115, 97 U.S.P.Q.2d 1833 (9th Cir. 2011), opinion
withdrawn and superseded on denial of reh'g, 654 F.3d 958, 99 U.S.P.Q.2d 1654 (9th Cir. 2011).

14 Amicus Briefs: The Motion Picture Association of America (2011 WL 3281853), The International
Trademark Association (2011 WL 3281851), professional baseball, football, basketball and hockey leagues
plus collegiate licensing (2011 WL 3281852), and Edgar Rice Burroughs, Inc. (2011 WL 3281850).

15 Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958, 99 U.S.P.Q.2d 1654 (9th Cir. 2011). But on remand
Judge Collins ignored the withdrawal of the original opinion and resuscitated aesthetic functionality, saying
there was no infringement by use of the word mark on goods such as dolls and t-shirts because defendant's
use was aesthetically functional and there was no issue of likelihood of confusion because defendant's use of
the words was not use as a trademark—it was a “functional” use. Fleischer Studios, Inc. v. A.V.E.L.A., Inc.,
925 F. Supp. 2d 1067, 104 U.S.P.Q.2d 1750 (C.D. Cal. 2012) (While the aesthetic functionality language
was removed by the Ninth Circuit, “the reasoning … is nevertheless sound and applicable” and is “a viable
theory.” The District Court held as a matter of law that the words BETTY BOOP were “part and parcel of
the aesthetic design” of defendant's merchandise.).

16 LTTB LLC v. Redbubble, Inc., 840 Fed. Appx. 148 (9th Cir. 2021) (Plaintiff's mark was “LETTUCE
TURNIP THE BEET” and design. registered for items such as wearing apparel and tote bags. Court affirmed
dismissal on summary judgment.).

17 That plaintiff's mark was invalid: The dismissal was correct: (1) “[b]ecause functionality is a defense to
the validity of the marks and to LTTB's exclusive right to use the marks”; (2) functionality is a defense to
the validity of even an incontestably registered mark; and (3) plaintiff's marks “are not protectable against
any type of allegedly infirming activity.” That plaintiff's mark was not invalid but the accused use was not
infringing: “[W]e do not hold that [plaintiff] LTTB's marks are per se invalid.” The affirmed District Court
said that defendant did “not suggest” that the mark was invalid and “nothing in this order should be construed
as so holding.” 385 F. Supp. 3d at 921.

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18 See discussion at § 23:11.50. The Sixth Circuit attempted to create a threshold requirement that the accused
use must be a trademark use. It later indicated that it doubted that its rule was viable. Sazerac Brands, LLC
v. Peristyle, LLC, 892 F.3d 853, 857, 127 U.S.P.Q.2d 1677 (6th Cir. 2018). The Second Circuit disagreed
with the Sixth Circuit view. Kelly-Brown v. Winfrey, 717 F.3d 295, 307, 41 Media L. Rep. (BNA) 1881,
106 U.S.P.Q.2d 1875 (2d Cir. 2013).

19 International Order of Job's Daughters v. Lindeburg and Co., 633 F.2d 912, 918, 208 U.S.P.Q. 718 (9th Cir.
1980). See discussion at § 24:12. See: Board of Governors of University of North Carolina v. Helpingstine,
714 F. Supp. 167, 173, 54 Ed. Law Rep. 521, 11 U.S.P.Q.2d 1506, 1511, 1989-2 Trade Cas. (CCH) ¶ 68824
(M.D. N.C. 1989) (Agreeing with Judge Fetcher's view: “[T]he court is skeptical that those individuals who
purchase unlicensed tee-shirts bearing [University of North Carolina at Chapel Hill] marks care one way or
the other whether the University sponsors or endorses such products or whether the products are officially
licensed. Instead, as defendants contend, it is equally likely that individuals buy the shirts to show their
support for the University.” Motions for summary judgment denied to both sides.).

20 University of Georgia Athletic Ass'n v. Laite, 756 F.2d 1535, 1547, n.28, 23 Ed. Law Rep. 858, 225 U.S.P.Q.
1122 (11th Cir. 1985). Accord: Savannah College of Art and Design, Inc. v. Sportswear, Inc., 983 F.3d 1273,
1287, 385 Ed. Law Rep. 67 (11th Cir. 2020) (Affirmed summary judgment that college's registered service
marks were infringed by unlicensed use on apparel. “[T]he customers who purchased [defendant's college]-
branded merchandise, whether current students and faculty, alumni, or sports fans, did so because of the
merchandise's affiliation with the marks and because what the marks represent are meaningful to buyers.”).

21 Chicago Bears Football Club, Inc. v. 12th Man/Tennessee LLC, 83 U.S.P.Q.2d 1073, 2007 WL 683778
(T.T.A.B. 2007) (Board distinguished Job's Daughters. “[W]e reject applicant's argument because it
apparently would allow others to register marks that are similar to registered marks in order to show support
or hostility to a sports team. American law simply does not recognize such a right.”).

22 Ohio State University v. Skreened Ltd., 16 F. Supp. 3d 905, 917, 310 Ed. Law Rep. 264, 111 U.S.P.Q.2d
1448 (S.D. Ohio 2014) (Summary judgment of infringement.). (Rejecting the defense that there was no
infringement because the purchase of defendant's goods was “to express fan identification with and support
for The Ohio State University.”). See Texas Tech University v. Spiegelberg, 461 F. Supp. 2d 510, 520, 215
Ed. Law Rep. 320, 84 U.S.P.Q.2d 1162 (N.D. Tex. 2006) (Rejecting defense that college marks on wearing
apparel are functional. “The fact that a knit cap is scarlet and black or bears a ‘Double T’ does not affect the
quality of the cap or its ability to keep one's head warm.”).

23 City of New York v. Blue Rage, Inc., 435 F. Supp. 3d 472, 491, (E.D. N.Y. 2020) (That defendant's use
on wearing apparel of valid marks such as NYPD, FDNY and the New York Police Department shield
design was as “decoration” was no defense. “By defendant's reasoning, any logo or emblem would be
precluded from trademark protection once it was used to ‘decorate’ or provide ‘ornamentation’ to an item
of merchandise.” Summary judgment of infringement.).

End of Document © 2024 Thomson Reuters. No claim to original U.S. Government

Works.

© 2024 Thomson Reuters. No claim to original U.S. Government Works. 6

§ 7:83. “Functional” words and images, 1 McCarthy on Trademarks and Unfair...

1 McCarthy on Trademarks and Unfair Competition § 7:83 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

C. AESTHETIC FUNCTIONALITY

§ 7:83. “Functional” words and images

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

“Functional” Words. When the issue is the trademark status of words that convey a “functional” message, there is no need
to resort to a theory of “aesthetic functionality.” Words such as “Shake Before Using,” “Open Here,” or “Insert Tab A in Slot
B” are “functional” in the traditional utilitarian sense. Thus, the word “Fragile” cannot be registered as a trademark for labels
or products to which the word is attached.1 In addition, the meaning of such words will in most cases preclude any source-
indicating message to the ordinary consumer. Copyright law has a similar bar. Functional phrases such as “Apply Hook to Wall”
are denied copyright protection as lacking sufficient originality or creativity.2

The Third Circuit said that the direct manner in which some words explicitly communicate functional information makes those
words unprotectable as a trademark. The court drew an analogy to the functionality rule: “Just as one producer may not use
unfair competition law to prevent others from copying functional characteristics of its product, it may not use that law to prevent
others from describing those characteristics in its products.”3 Similarly, the Fourth Circuit characterized the use of the phrase
YOU HAVE MAIL to announce the arrival of e-mail as a “functional” use that made the phrase unprotectable as a mark.4 For
similar reasons, a commercial trade secret qualifies as neither trademark nor trade dress.5

Words with a Message. When words form a “message” on goods, difficult analytical questions are presented. However, such
questions can be resolved without the need of “aesthetic functionality.” When words on a product become an integral part of
the product itself, in most cases the words will not be perceived by consumers as indicia of origin, but solely as part of the
appeal of the product, “ornamental” or otherwise.

Few would seriously argue that an author could validly claim “trademark” protection for all the words in a novel.6 Similar are
such usages as: “Hi, My Name is …” on a cocktail party name tag; “Damn, I'm Good” on a “message bracelet”;7 the safety

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§ 7:83. “Functional” words and images, 1 McCarthy on Trademarks and Unfair...

slogan “Watch That Child” on a bumper sticker;8 “You Are Special Today” on a collector's ceramic plate;9 the environmental
slogan “Think Green” on shipping boxes;10 a heart on a teddy bear;11 or “Merry Christmas” on gift wrapping.12 In such usages,
the words are not used as a “trademark.” Such cases where words become part of the product itself are the appropriate domain
of copyright law, not trademark law.13

Are “Cybermarks” Functional? Burk has argued that “cybermarks” such as domain names and search engine keywords are
“functional” in a strictly utilitarian sense and should not be treated as valid trademarks.14

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 In re Schwauss, 217 U.S.P.Q. 361, 1983 WL 51779 (T.T.A.B. 1983) (“It is apparent that the word ‘FRAGILE’
is presented as a message or informational statement, rather than a source indicator. … The only possible
use of these labels and bumper stickers is to attach them to automobile bumpers and other objects for the
purpose of conveying the message appearing on said labels and bumper stickers.” Registration refused.).

2 E. H. Tate Co. v. Jiffy Enterprises, Inc., 16 F.R.D. 571, 103 U.S.P.Q. 178 (D. Pa. 1954). See Perma Greetings,
Inc. v. Russ Berrie & Co., 598 F. Supp. 445, 223 U.S.P.Q. 670 (E.D. Mo. 1984) (held that phrase such as
“Hang in there” on a coaster is a “stereotypic phrase” which is not copyrightable; “Cliched language, phrases
and expressions conveying an idea that is typically expressed in a limited number of stereotypic fashions,
are not subject to copyright protection.”). See 1 Nimmer on Copyright § 2.01[B] (1992 rev.). See discussion
at §§ 6:17 to 6:20.

3 A.J. Canfield Co. v. Honickman, 808 F.2d 291, 307, 1 U.S.P.Q.2d 1364 (3d Cir. 1986) (“Diet Chocolate
Fudge Soda,” for a flavor of a drink was not protectable as a trademark.).

4 America Online, Inc. v. AT & T Corp., 243 F.3d 812, 822–823, 57 U.S.P.Q.2d 1902, 56 Fed. R. Evid.
Serv. 738 (4th Cir. 2001) (“[T]he phrase ‘You Have Mail’ is used in its commonly understood way—i.e.,
functionally to convey the common meaning of words—and not distinctively…..We therefore conclude that
‘You Have Mail’ has been and continues to be used by AOL and by others to alert online subscribers that
there is electronic e-mail in their electronic mailboxes, and no more.”).

5 EST Inc. v. Royal-Grow Prods., LLC, 2021 WL 982304, *9 (D. Kan. 2021) (Summary dismissal of a claim
that a formula for an agricultural microbial soil enricher is “trade dress.” Not only does it not function as a
mark or trade dress, but it is a functional element.).

6 Whitehead v. CBS/Viacom, Inc., 315 F. Supp. 2d 1 (D.D.C. 2004) (Trademark protection “does not extend
to the corpus of the book, play, film, song, television show or comic book … .” Author cannot claim
trademark infringement by defendant's allegedly taking a substantial part of author's screenplay.); In re
Peabody Management, Inc., 2005 WL 1787222 (T.T.A.B. 2005) (not precedential) (A 182-word story about
a hotel is not registerable as a “trademark” for hotel services: “That a story is associated with a hotel does
not mean, however, that the story functions as a source identifier for hotel and related services.”); RDF
Media Ltd. v. Fox Broadcasting Co., 372 F. Supp. 2d 556, 74 U.S.P.Q.2d 1769 (C.D. Cal. 2005) (the alleged
imitation of a television program and its format is an issue of copyright law, not trade dress law). See §
6:17.50.

7 Damn I'm Good, Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 U.S.P.Q. 684 (S.D.N.Y. 1981). See PPS,
Inc. v. Jewelry Sales Representatives, Inc., 392 F. Supp. 375, 185 U.S.P.Q. 374 (S.D.N.Y. 1975); Something
Old, Something New, Inc. v. QVC, Inc., 53 U.S.P.Q.2d 1715, 1999 WL 1125063 (S.D. N.Y. 1999) (Both
parties sold bracelets with stones set so that the first name of each stone spells out “dearest,” which was

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§ 7:83. “Functional” words and images, 1 McCarthy on Trademarks and Unfair...

held a “descriptive” name to call the bracelet. But court refused to grant summary judgment on the ground
of fair use.).

8 In re Tilcon Warren, Inc., 221 U.S.P.Q. 86 (T.T.A.B. 1984) (safety slogan WATCH THAT CHILD, used on
bumper of construction vehicles, was not used as a trademark for “construction material”).

9 In re Original Red Plate Co., 223 U.S.P.Q. 836 (T.T.A.B. 1984) (held used merely as aesthetic ornamentation,
not as a trademark).

10 In re Manco, Inc., 24 U.S.P.Q.2d 1938 (T.T.A.B. 1992).

11 American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1 U.S.P.Q.2d 1001 (3d Cir. 1986)
(“tummy graphics” such as a heart, a four leaf clover or a smiling sun on stuffed animal CARE BEARS are
“functional” because they convey an emotional message, which is the professed function of CARE BEARS).
See Hartford House, Ltd. v. Hallmark Cards, Inc., 647 F. Supp. 1533, 1 U.S.P.Q.2d 1030 (D. Colo. 1986),
aff'd, 846 F.2d 1268, 6 U.S.P.Q.2d 2038 (10th Cir. 1988), cert. denied, 488 U.S. 908, 102 L. Ed. 2d 248,
109 S. Ct. 260 (1988) (combination of elements creating a special “look” of a greeting card, including the
type of message, creates a protectable trade dress).

12 See Smith v. Krause, 160 F. 270 (C.C.D.N.Y. 1908), aff'd, 166 F. 1021 (2d Cir. 1909); discussion in Duft, “
‘Aesthetic’ Functionality,” 73 Trademark Rep. 151, 189 (1983).

13 See §§ 6:17 to 6:20.

14 Burk, Cybermarks, 94 Minn L Rev 1375 (2010) (“[C]ybermarks are components of a data processing
system, intended to initiate and control discrete functions of a machine …. [T]hey are functional in the most
mechanical sense of the term; they have become a form of computer code.”).

End of Document © 2024 Thomson Reuters. No claim to original U.S. Government

Works.

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§ 7:84. Incontestable registration and functionality, 1 McCarthy on Trademarks and...

1 McCarthy on Trademarks and Unfair Competition § 7:84 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

D. EFFECT OF REGISTRATION ON FUNCTIONALITY

§ 7:84. Incontestable registration and functionality

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

In 1998, Congress added functionality to the list of possible challenges to the validity of an incontestably registered mark. That
amendment added to the list of defenses to an incontestably registered mark the ground that “the mark is functional.”1 The
1998 amendment applies to registrations which became incontestable prior to 1998 when the owner seeks injunctive relief. In
such a case, functionality is a defense.2 As the Seventh Circuit observed in finding a product design mark invalid because it
was functional: “[I]ncontestable is not invincible; the Lanham Act lists a number of affirmative defenses an alleged infringer
can use ….”3

Prior to the 1998 statutory change, functionality was not one of the grounds listed in the statute for a challenge to the validity of
an incontestably registered mark. While not deciding the issue directly, the decision of a majority of a panel in the Fourth Circuit
on the issue of cancellation could be read to mean that because not a statutory ground, functionality was not a defense to the
assertion of a mark covered by an incontestable registration.4 However, Judge Niemeyer, dissenting, argued that incontestability
did not shield a functional feature from challenge on the functionality ground because if functional, the feature was not a
“trademark” from its inception and cannot be immunized from challenge by incontestable status. In later proceedings in the
Shakespeare case, the Fourth Circuit retreated somewhat, holding that while functionality was not a ground upon which to
challenge the validity of an incontestably registered mark, it could be considered in finding the mark weak, in explaining the
nonpredatory nature of the defendant's copying, and in concluding that the mark was not infringed.5 The Eleventh Circuit split
with the Fourth Circuit and held that the 1998 statutory amendment was merely a codification, not a change, of the previous
rule that functionality was available as a defense with which to challenge the validity of an incontestably registered mark.6

Prior to the 1998 statutory addition of the defense of functionality, cogent arguments were made that it was unconstitutional to
preclude a functionality challenge to an incontestably registered design, package, or product shape.7 That is, giving incontestable

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§ 7:84. Incontestable registration and functionality, 1 McCarthy on Trademarks and...

trademark protection to a functional shape effectively grants a patent-like right to exclude of unlimited duration which violates
the “limited times” restriction of the U.S. Constitution, article I, section 8.

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Pub. L. No. 105-330, 112 Stat. 3064 (1998). Previous section 33(b)(8) was renumbered to become 33(b)(9).
This change was applicable only to a civil action commenced on or after the October 30, 1998, enactment date
of the amendment. See e.g. Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 857, 96 U.S.P.Q.2d 1404 (7th
Cir. 2010) (Circular beach towel shape which was the subject of an incontestable trademark registration was
found to be functional and invalid. “[I]ncontestable marks are not invincible.”); Sweet Street Desserts, Inc.
v. Chudleigh's Ltd., 69 F. Supp. 3d 530, 541 (E.D. Pa. 2014), aff'd 655 Fed. Appx. 103, 119 U.S.P.Q. 2d 1641
(3rd Cir. 2016) (Plaintiff had an incontestable registration of the trade dress in product design and defendant
successfully proved that the design was functional and unprotectable. Summary dismissal granted.).

2 Eco Mfg. LLC. v. Honeywell Intern., Inc., 357 F.3d 649, 69 U.S.P.Q.2d 1296 (7th Cir. 2003) (Such an
application of the 1998 amendment is not an improper retroactive application because "[a]pplying the 1998
law to [defendant's] conduct in 2003 and beyond is entirely prospective.").

3 Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723, 727, 99 U.S.P.Q.2d 1538
(7th Cir. 2011) (Affirmed summary judgment for defendant that product design covered by an incontestable
registration was functional.).

4 Shakespeare Co. v. Silstar Corp. of Am., 9 F.3d 1091, 28 U.S.P.Q.2d 1765 (4th Cir. 1993), cert. denied, 511
U.S. 1127, 128 L. Ed. 2d 864, 114 S. Ct. 2134 (1994) (the court held that because functionality is not a
ground in § 14 for cancellation of a registration over five years old, a federal court does not have the power
to cancel the registration under § 37; no likelihood of confusion found and case dismissed).

5 Shakespeare Co. v. Silstar Corp. of Am., 110 F.3d 234, 42 U.S.P.Q.2d 1266 (4th Cir. 1997).

6 Wilhelm Pudenz GmbH v. Littlefuse, Inc., 177 F.3d 1204, 51 U.S.P.Q.2d 1045 (11th Cir. 1999) (“[T]he
functionality provisions of the [1998 amendment] were meant to codify existing law and correct the flawed
result reached by the Fourth Circuit in Shakespeare … . This doctrine [of functionality] was established
before the enactment of the Lanham Act and the Act did not repeal it. Against this backdrop, we do not read
the Incontestability provisions of the Lanham act as eliminating the functionality defense.”).

7 See Davis, Of ‘Ugly Sticks' and Uglier Case Law: A Comment on the Federal Registration of Functional
Designs after Shakespeare Co. v. Silstar Corp. Of America, 51 Wash & Lee L. Rev. 1257, 1307 (1994);
Pollack, Unconstitutional Incontestability? The Intersection of Intellectual Property and Commerce Clauses
of the Constitution: Beyond a Critique of Shakespeare Co. v. Silstar Corp., 18 Seattle U. L. Rev. 259 (1995).

End of Document © 2024 Thomson Reuters. No claim to original U.S. Government

Works.

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§ 7:85. Examples of designs held to be functional, 1 McCarthy on Trademarks and...

1 McCarthy on Trademarks and Unfair Competition § 7:85 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

E. ILLUSTRATIVE LIST OF FEATURES HELD FUNCTIONAL AND NONFUNCTIONAL

§ 7:85. Examples of designs held to be functional

References
Illustrations. Illustrated below are examples of some design features held to be functional and thus incapable of trade dress
or trademark protection.

Fig. 7:85A RIBBED DESIGN ON THE TOP OF CONSTRUCTION WORKER'S HARD HAT.1

Fig. 7:85B PENTAGONAL SHAPE OF A LOUDSPEAKER ENCLOSURE.2

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§ 7:85. Examples of designs held to be functional, 1 McCarthy on Trademarks and...

Fig. 7:85C HOLDER FOR A PEN OR PENCIL.3

Fig. 7:85D SHAPE OF A POCKET CLIP ON A PEN.4

Fig. 7:85E SPIRAL SHAPE OF FRENCH FRIED POTATOES.5

© 2024 Thomson Reuters. No claim to original U.S. Government Works. 2

§ 7:85. Examples of designs held to be functional, 1 McCarthy on Trademarks and...

Fig. 7:85F MOTOR OIL CONTAINER6

Fig. 7:85G FLUTED BEVERAGE CAN7

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§ 7:85. Examples of designs held to be functional, 1 McCarthy on Trademarks and...

Fig. 7:85H TRACTOR TREAD DESIGN8

Fig. 7:85I GUITAR BODY SHAPE9

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§ 7:85. Examples of designs held to be functional, 1 McCarthy on Trademarks and...

Fig. 7:85J FOLDING CHAIR10

Image 10 within document in PDF format.

*************

Other examples of product shapes and designs held to be functional and thus incapable of trade dress or trademark protection
are listed in various product categories:

Industrial and Commercial Apparatus.

• shape of a mineral ore and coal shaking table11

• whirlpool bath pipes12

• conveyor belt guide rail cross sections13

• conveyor belt fastener14

• raised ribs on a cast aluminum fitting15

• shape of a device for sealing leaks in pipes16

• arrangement of knobs, switches and display window of a control panel for an industrial device to repair materials17

• motion of jaws in a gripping tool18

• design of indoor heating control devices19

• shape of an aircraft rivet20

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§ 7:85. Examples of designs held to be functional, 1 McCarthy on Trademarks and...

• shape of a closure for a steel drum21

• shape of a tool for cutting webbing22

• curved cut-outs along the rim of a circular saw blade23

• design of a window washing platform hoist24

• design of a wind powered turbine25

• configuration of an internal combustion engine for use in devices such as lawnmowers and pressure washers26

• design of a cattle chute27

• design of a poultry feeding mechanism28

• shape of an industrial fuel burner29

• overall shape of a textile braider machine30

• design of a box containing coils of electric cables and wire31

• design of a housing for a light emitting diode32

• internal appearance of a chamber inside a water meter33

• shape of springs on a portable road construction sign34

• shape of a vehicle-mounted advertising sign35

Vehicle Related Devices

• design of an automated lubrication pump for trucks36

• design of a motorcycle fuel valve37

• design of a motorcycle stand38

• shape and size of a “racing style” fuel can for motor vehicles39

• design of a tire tread40

Structural and Building Elements

• shape of a raised seam on roofing panels41

• shape of a roof vent42

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§ 7:85. Examples of designs held to be functional, 1 McCarthy on Trademarks and...

• shape of concrete bridge arch43

• dovetail rib design on a steel form for pouring concrete44

• shape of an outdoor lighting fixture45

• greenhouse with a gothic arch design46

• saw horse bracket47

• coating of reflective material on top of a fence post48

Household Appliances

• design features of a wood-burning stove49

• the shape of a land line telephone50

• shape of a telephone number filing card51

• tow-behind lawn mower52

• round shape of a portable room air cleaner53

• shape of a shower head spray nozzle54

• design of a bathtub drain cap55

• shape of a glass coffee pot56

• shape of a food processor57

• kitchen towel weave and design58

Personal Goods

• hexagonal umbrella stick59

• umbrella with vented mesh insert60

• elements of a checkbook61

• earring storage device62

• “clamshell” shape of a cell phone63

• design of a scrap book album64

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§ 7:85. Examples of designs held to be functional, 1 McCarthy on Trademarks and...

• calculator mounted in a glass base65

• design of computer monitor, keys and screen66

• two bands on a rechargeable flashlight67

• design of battery pack supplying power to an electronic pet collar68

• multi-function pocket tool69

Personal Care Items.

• bars on a hair pin70

• soap holder71

• vertical stripes and gold zipper pulls on a cosmetic bag72

• design of a man's personal care bag73

• shape of ear plugs74

• quilted design on toilet paper75

Wearing Apparel

• features of a rain jacket76

• structure of a sports shoe77

• structure of a heavy duty boot78

• shoe with spring in heel79

• sleeved undergarment design80

Medical and Dental Products

• medical cervical collar81

• design of a medical skin test apparatus82

• design of a blood pump used in heart operations83

• closure cap for blood collection tubes84

• design of a dental implant85

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§ 7:85. Examples of designs held to be functional, 1 McCarthy on Trademarks and...

• Color coding system indicating the size of a mixing tip used in dental applications86

Recreational Goods.

• design of a boat87

• method of teaching catamaran sailing88

• shape of a lightweight camping stove89

• shape of fishing rod line guides90

• bicycle wheel spoke design91

• circular shape of a beach towel92

• swan-shaped inflatable pool toy93

• look and feel of a children's cityscape play center94

• interactive football video game95

• control instructions for golfing video game96

• mottled pattern on carbon fiber rifle barrel97

Furniture

• design of a line of outdoor wrought iron furniture98

• furniture “distressed” to appear to be old99

Toys

• “tummy graphics” on stuffed animals100

• shape of LEGO children's building blocks101

• shape of an ETCH A SKETCH drawing toy102

• wooden mask designs103

Food.

• shape of a fruit-filled pastry104

• spherical shape and size of frozen ice cream product105

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§ 7:85. Examples of designs held to be functional, 1 McCarthy on Trademarks and...

• cookie diagonally dipped in chocolate106

• chocolate covered cookie stick107

Container Designs.

• dispenser box for bulbs108

• mineral water bottle109

• package for meat110

• cap on spray can111

• aerosol can button112

• cube-shaped jug for milk113

• cylindrical container for girdles114

• cylindrical container for pet food115

• shape of a plastic bag closure116

• colored line on closure of a plastic bag117

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Mine Safety Appliances Co. v. Electric Storage Battery Co., 56 C.C.P.A. 863, 405 F.2d 901, 904, 160
U.S.P.Q. 413 (1969). (The rib design was structurally functional and applicant advertised it as a “structurally
advantageous feature” and for years competitors sold “safety hats with similar if not identical rib designs.”).

2 In re Bose Corp., 772 F.2d 866, 227 U.S.P.Q. 1 (Fed. Cir. 1985) (Court noted that applicant's promotional
materials lauded the shape as a functional part of the sound system); In re Bose Corp., 476 F.3d 1331, 81
U.S.P.Q.2d 1748 (Fed. Cir. 2007) (1985 decision precluded the attempt to register the identical design).

3 In re Pen Pal, LLC, 2023 WL 4311927 (T.T.A.B. 2023) (non-precedential. Functionality was proven by
applicant’s abandoned utility application and applicant’s advertising promoting the utilitarian advantages
of the design.).

4 In re Lindy Pen Company, Incorporated, 159 U.S.P.Q. 634, 1968 WL 8200 (T.T.A.B. 1968) (“[T]he overall
configuration of the pen clip was and must necessarily be dictated by its basic and essential utilitarian
function. Without these necessary features, the device would not be a pen clip.”).

5 Universal Frozen Foods, Co. v. Lamb-Weston, Inc., 697 F. Supp. 389, 7 U.S.P.Q.2d 1856 (D. Or. 1987) (Held
to be a functional shape because this shape yields both marketing and manufacturing efficiencies, some of
which were touted by plaintiff in advertising).

6 In re Witco Corp., 14 U.S.P.Q.2d 1557, 1989 WL 274427 (T.T.A.B. 1989) (Applicant's promotional materials
advertised that its ribbed neck bottle “provides stability when pouring the oil” into the engine.).

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§ 7:85. Examples of designs held to be functional, 1 McCarthy on Trademarks and...

7 In re American National Can Co., 41 U.S.P.Q.2d 1841, 1997 WL 109226 (T.T.A.B. 1997) (“[A]pplicant's
configuration design is a superior one for metal beverage containers. It appears that there are a limited
number of ways to strengthen can sidewalls, and vertical fluting, such as that employed by applicant, appears
to be one, if not the best, way.” Held not registerable as a trademark for beverage containers.).

8 In Re Caterpillar Inc., 43 U.S.P.Q.2d 1335, 1997 WL 424965 (T.T.A.B. 1997) (Both utility patent and
applicant's advertising disclosed utilitarian advantages of the elevated sprocket design shown).

9 In re Gibson Guitar Corp., 61 U.S.P.Q.2d 1948, 2001 WL 1631369 (T.T.A.B. 2001), publication ordered,
2002 WL 243563 (T.T.A.B. 2002) (applicant's advertising promoted the shape as producing better music:
“Our AJ body shape not only looks like a bell, but also rings like a bell. The more rounded upper bout
produces sweeter highs while the broader waist and wider lower bout creates more powerful lows.”).
Compare: In re Ovation Instruments, Inc., 201 U.S.P.Q. 116, 1978 WL 21274 (T.T.A.B. 1978) (Rounded
bowl shape of a guitar was registerable: it was chosen for its selling and identification potential); Gibson
Guitar Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d 539, 76 U.S.P.Q.2d 1372, 2005 FED App. 0387P (6th
Cir. 2005), cert. denied, 126 S. Ct. 2355, 165 L. Ed. 2d 279 (U.S. 2006) (No infringement of registered mark
in shape of Les Paul single cutaway guitar); Stuart Spector Designs, Ltd. v. Fender Musical Instruments,
94 U.S.P.Q.2d 1549, 2009 WL 1017284 (T.T.A.B. 2009) (Sustaining opposition to registration of the shape
of FENDER Telecaster, Stratocaster and Precision base guitar bodies on the basis that the shapes were so
common as to be generic and alternatively, had not achieved secondary meaning.); Gibson Brands, Inc. v.
Armadillo Distribution Enterprises, Inc., 121 Fed. R. Evid. Serv. 173 (E.D. Tex. 2023) (Upholding jury
verdict of infringment of headstock and guitar body product design trade dress of several models.).

10 Specialized Seating, Inc. v. Greenwich Industries, LP, 616 F.3d 722, 727, 96 U.S.P.Q.2d 1580 (7th Cir. 2010)
(“It looks the way it does in order to be a better chair, not in order to be a better way of identifying who
made it (the function of a trademark.)”).

11 Application of Deister Concentrator Co., 48 C.C.P.A. 952, 289 F.2d 496, 504, 129 U.S.P.Q. 314 (1961)
(“[W]e do not agree that the functionality of the rhomboidal shape is either de minimis or secondary. It is
clearly primarily and essentially dictated by functional or utilitarian considerations.”).

12 In re Vico Products Manufacturing Co., Inc., 229 U.S.P.Q. 364, 1985 WL 72043 (T.T.A.B. 1985), recons.
denied, 229 U.S.P.Q. 716 (T.T.A.B. 1986) (The shape is a three-part venturi pipe used to mix air and water to
produce a whirlpool bath. Held to be functional in a utilitarian sense because it works better in that shape.).

13 Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1278–79, 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002)
(“[Opposer] made a prima facie showing that Valu's designs are functional as used in the wet areas of bottling
and canning plants, and that the wet areas of bottling and canning plants are a competitively-significant
application.”).

14 Flexible Steel Lacing Company v. Conveyor Accessories, Inc., 955 F.3d 632 (7th Cir. 2020) (Affirmed
summary dismissal. Plaintiff's utility patent and its advertising proved that the design was functional.).

15 Application of Hollaender Mfg. Co., 511 F.2d 1186, 1188, 185 U.S.P.Q. 101 (C.C.P.A. 1975) (“The scales
of evidence in the record are tilted heavily toward a finding of functionality in appellant's rib configuration.
The use of integral ribs to strengthen structural and other devices is well known.”).

16 AS Holdings, Inc. v. H & C Milcor, Inc., F/K/A Aquatico of Texas, Inc., 107 U.S.P.Q.2d 1829, 2013 WL
4397045 (T.T.A.B. 2013) (Utility patents of applicant and others “disclosed the utilitarian advantages” of
the design.).

17 In re Heatcon, Inc., 116 U.S.P.Q.2d 1366, 1378, 2015 WL 6166638, *11 (T.T.A.B. 2015) (“The record shows
the arrangement of significant functional features is directed by utilitarian concerns to make operation of
the device easier, safer and more efficient”).

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§ 7:85. Examples of designs held to be functional, 1 McCarthy on Trademarks and...

18 In re Loggerhead Tools, LLC, 119 U.S.P.Q.2d 1429, 2016 WL 3876808 (T.T.A.B. 2016) (The specification
of a utility patent owned by applicant showed the utilitarian advantages of applying the gripping force in
a symmetrically balanced manner.).

19 Honeywell Intern. Inc. v. ICM Controls Corp., 45 F. Supp. 3d 969, 995–1004 (D. Minn. 2014), subsequent
determination, 2014 WL 5438395 (D. Minn. 2014) (Functional as “nondescript pieces of technical
equipment, purchased solely for the function that they serve.” Summary judgement granted.).

20 Allfast Fastening Systems v. Briles Rivet Corp., 16 F. Supp. 2d 1154, 1163, 47 U.S.P.Q.2d 1170 (C.D. Cal.
1998) (“The lack of availability of alternative designs which can effectively be sold to Boeing to fulfill its
procurement requirements for the BACR15FV rivet therefore also favors a finding of the functionality of
the ring dome headed rivet.”).

21 American Flange & Manufacturing Co., Inc. v. Rieke Corporation, 80 U.S.P.Q.2d 1397, 2006 WL 1706438
(T.T.A.B. 2006), withdrawn and superseded on reargument, 90 U.S.P.Q.2d 1127, 2009 WL 770683 (T.T.A.B.
2009) (The alleged mark consisted of a hexagonal base and butterfly-shaped grip of a plug used to close
a 55-gallon steel drum).

22 Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 786, 63 U.S.P.Q.2d 1587 (9th Cir. 2002) (“Where the plaintiff
only offers evidence that ‘the whole is nothing other than the assemblage of functional parts,’ our court has
already foreclosed this argument, holding that ‘it is semantic trickery to say that there is still some sort of
separate' overall appearance' which is non-functional.’”).

23 In re MK Diamond Products, Inc., 2020 WL 4346886, *19 (T.T.A.B. 2020) (Utility patents showed that
“the overall configuration is primarily and essentially dictated by functional or utilitarian considerations that
enhance the quality or performance of the saw blades.”).

24 Secalt S.A. v. Wuxi Shenxi Const. Machinery Co., Ltd., 668 F.3d 677, 687, 101 U.S.P.Q.2d 1553 (9th Cir.
2012) (“[Plaintiff's] hoist is, at bottom, a utilitarian machine with no indication that the visual appearance
of its rectangular exterior design is anything more than the result of a simple amalgamation of functional
component parts.”).

25 In re Change Wind Corp., 123 U.S.P.Q.2d 1453, 2017 WL 3446786 (T.T.A.B. 2017) (A utility patent proved
the utilitarian advantages of the design.).

26 Kohler Co. v. Honda Giken Kogyo K.K., 125 U.S.P.Q.2d 1468, 1499–1500, 2017 WL 6547628 (T.T.A.B.
2017) (All of the individual claimed features of the engine configuration as well as the entirely of the features
were “dictated primarily by utility.”).

27 Pearson's Inc. v. Ackerman, 2019 WL 3413501 (N.D. Tex. 2019) (Expired utility patent of plaintiff disclosed
“nearly every feature and described utilitarian advantages of the mark, supporting a finding of functionality.”
Trademark registration of the design was cancelled by the court.).

28 CTB, Inc. v. Hog Slat, Inc., 954 F.3d 647 (4th Cir. 2020) (Defendant rebutted the presumption of validity
of plaintiff's contestable registration for design and color of a poultry feeder device. Summary dismissal
was affirmed.).

29 John Zink Co. v. Zinkco, Inc., 2 U.S.P.Q.2d 1606, 1986 WL 15720 (N.D. Okla. 1986) (“[A]ll parts of the
burner tip are functional and serve a necessary use in the proper performance of the product.”).

30 New England Butt Co. v. International Trade Com'n, 3 Fed. Cir. (T) 103, 756 F.2d 874, 6 Int'l Trade Rep.
(BNA) 1939, 225 U.S.P.Q. 260 (1985) (Court relied in part on company's advertising which promoted the
utilitarian features of the machine and did not point out any allegedly nonutilitarian aspects as a means of
identification.).

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31 In re Reelex Packaging Solutions, Inc., 834 Fed. Appx. 574 (Fed. Cir. 2020) (Agreeing with the T.T.A.B.'s
conclusion that the designs were “simple, basic boxes that provide numerous utilitarian advantages for figure
8 or otherwise wound coils of cable and wire designed for dispensing from the center of the coil. That means
the boxes are functional….”).

32 In re Visual Communications Co., 51 U.S.P.Q.2d 1141 1999 WL 459209 (T.T.A.B. 1999) (Functionality
was disclosed in utility patent and touted in advertising by applicant).

33 Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145, 1154, 29 U.S.P.Q.2d 1507, 1514 (7th Cir. 1994) (Court
rejected an attempt to include the internal parts of a water meter in the definition of protected trade dress.
“The proper method of protecting the internal parts of plaintiff's measuring chamber is by patent; if such
protection is unavailable, or if plaintiff did not avail itself of such protection, it should not seek to deprive
consumers of the benefits of competition by means of overbroad characterizations of its ‘trade dress.’”).

34 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 121 S. Ct. 1255, 149 L. Ed. 2d 164, 58
U.S.P.Q.2d 1001 (2001), on remand to, 2001 WL 630049 (6th Cir. 2001) (See illustrations at § 7:89.).

35 Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1580, 36 U.S.P.Q.2d 1417 (Fed. Cir. 1995) (“[T]he
overall shape of [plaintiff's] sign is needed to provide a vehicle-mounted advertising sign with improved
aerodynamics, driver visibility and advertising visibility.”).

36 Groeneveld Transport Efficiency, Inc. v. Lubecore Intern., Inc., 730 F.3d 494, 508, 108 U.S.P.Q.2d 1022 (6th
Cir. 2013) (“Groeneveld's evidence was insufficient to enable a reasonable jury to find that the grease pump's
design is nonfunctional. …. Lubecore has pointed to the testimony of …, Groeneveld's own witnesses, to
show that the pump's volume, shape, and materials are all essentially influenced by the dictates of function.”).

37 In re Pingel Enterprise Inc., 46 U.S.P.Q.2d 1811, 1998 WL 320157, *8 (T.T.A.B. 1998) (While applicant's
utility patents related to the internal operation of its fuel valve, that “operation nevertheless primarily dictates
the overall outward appearance or design of the petcock….”).

38 In re Charles N. Van Valkenburgh, 97 U.S.P.Q.2d 1757, 2011 WL 165454 (T.T.A.B. 2011) (Utility patent
was “strong evidence of functionality.” “[T]he proposed mark is an efficient and superior design for the
supporting base of a motorcycle stand and, thus, functional.”).

39 Carlton-Sud Industries, LLC v. Plastics Group, Inc., 72 U.S.P.Q.2d 1826, 2004 WL 2812430 (E.D. Mich.
2004) (The fuel can design imitated the NASCAR fuel can used to dump eleven gallons of fuel into a race
car in as little as six seconds. Plaintiff had applied for a utility patent on the design. Preliminary injunction
denied.).

40 Toyo Tire Corporation v. Atturo Tire Corporation, 2021 WL 463254, *7 (N.D. Ill. 2021), certification denied,
2021 WL 1853310 (N.D. Ill. 2021) (Summary judgment of functionality and dismissal of trade dress claims.
“[T]he utilitarian properties of the design, Toyo's advertising, and impact on quality and cost—establish that
there is no disputed fact that the asserted trade dress is functional.”).

41 Merchant & Evans, Inc. v. Roosevelt Bldg. Products Co., Inc., 963 F.2d 628, 635, 22 U.S.P.Q.2d 1730 (3d
Cir. 1992) (“The cylindrical seam of the Zip-Rib roof serves several utilitarian functions….”).

42 M-5 Steel Mfg., Inc. v. O'Hagin's Inc., 61 U.S.P.Q.2d 1086, 2001 WL 1167788 (T.T.A.B. 2001) (Functional
because the vents “blend in or match the roof tiles with which they are used better than alternative products.”).

43 Kistner Concrete Products, Inc. v. Contech Arch Technologies, Inc., 97 U.S.P.Q.2d 1912, 2011 WL 481339
(T.T.A.B. 2011) (Supplemental registration cancelled. A utility patent showed that the features of the design
were essential or integral parts of the functionality of the shape of the arch.).

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44 Epic Metals Corp. v. Souliere, 99 F.3d 1034, 1040, 40 U.S.P.Q.2d 1705 (11th Cir. 1996) (Evidence showed
that this shape enhanced the strength of the form. “Epic's own marketing materials indicate that the concept
of a dovetail configuration is functional.”).

45 Keene Corp. v. Paraflex Industries, Inc., 653 F.2d 822, 826, 211 U.S.P.Q. 201 (3d Cir. 1981) (“[B]ecause it
is a wall-mounted luminaire, … part of its function includes its architectural compatibility with the structure
or building on which it is mounted. Thus its design configuration, rather than serving merely as an arbitrary
expression of aesthetics, is intricately related to its function.”).

46 Greenhouse Systems Inc. v. Carson, 37 U.S.P.Q.2d 1748, 1995 WL 817837 (T.T.A.B. 1995) (“Applicant's
greenhouse design configuration is nothing more than a basic gothic arch greenhouse design which is
dictated solely by function, …..”).

47 In re Chas. O. Larson Co., 155 U.S.P.Q. 750, 1967 WL 7305 (T.T.A.B. 1967) (“[T] he brackets are clearly
dictated by engineering expediency to allow the insertion of carriage bolts, nails, screws, and wing nuts in
the appropriate openings to provide fastening means and the like.”).

48 Application of Pollak Steel Co., 50 C.C.P.A. 1045, 314 F.2d 566, 570, 136 U.S.P.Q. 651 (1963) (“To permit
appellant to assert trademark rights in its alleged mark would clearly have the effect of unjustifiably giving
appellant a perpetual monopoly on the simplest and cheapest use of a simple process of applying a functional
reflective coating to a functionally designed metal fence post.”).

49 Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 626 F.2d 193, 196, 206 U.S.P.Q. 961 (1st Cir. 1980)
(“Plaintiff designed a stove with several functional innovations. These were enthusiastically received in
the marketplace. Defendant, in imitating them, is doubtless sharing in the market formerly captured by the
plaintiff's skill and judgment. While we sympathize with plaintiff's disappointment at losing sales to an
imitator, this is a fact of business life.”) Compare Vermont Castings, Inc. v. Evans Products Co., Grossman's
Division, 215 U.S.P.Q. 758, 1981 WL 48560 (D. Vt. 1981).

50 Leisurecraft Products, Ltd. v. International Dictating Equipment, Inc., 210 U.S.P.Q. 193, 1981 WL 40516
(D.D.C. 1981).

51 Oxford Pendaflex Corporation v. Rolodex Corporation, 204 U.S.P.Q. 249, 1979 WL 24884 (T.T.A.B. 1979).
See In re Business Forms Finishing Services, Inc., 170 U.S.P.Q. 56, 1971 WL 16742 (T.T.A.B. 1971)
(rounded shape of an index tab).

52 Swisher Mower & Mach. Co., Inc. v. Haban Mfg., Inc., 931 F. Supp. 645, 649, 42 U.S.P.Q.2d 1596 (W.D.
Mo. 1996) (“[T]he overall trade dress of the T–40 cannot be considered arbitrary or nonfunctional.”).

53 Duracraft Corp. v. Honeywell, Inc., 881 F. Supp. 685, 687, 38 U.S.P.Q.2d 1793 (D. Mass. 1994) (The round
shape had three important utilitarian advantages).

54 In re Teledyne Industries, Inc., 696 F.2d 968, 971, 217 U.S.P.Q. 9 (Fed. Cir. 1982) (“The record here is devoid
of evidence showing the likelihood that other manufacturers could successfully compete in the showerhead
trade, i.e., that there exist commercially feasible, alternative showerhead configurations which others could
utilize to successfully compete with appellant on the basis of utility.”).

55 WCM Industries, Inc. v. Hirshfeld, 2021 WL 1430449 (E.D. Va. 2021) (Unregistrable because functionality
was evidenced by utility patents and advertisements touting the functionality of the design. Summary
dismissal of the appeal review.).

56 ACA Products, Inc. v. Reuben H. Donnelley Corp., 212 U.S.P.Q. 419, 1980 WL 30352 (D. Conn. 1980)
(“The product here is a replacement coffee server, the overall dimensions and basic design of which are
prescribed by the structure of the automatic coffee machines whose glass servers it is intended to replace.

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….[T]the design has followed function. Height, width, diameter and bottom bulge are dictated by the size,
contours, capacity and hot plate of the coffee machines.”).

57 Sunbeam Corp. v. Equity Industries Corp., 635 F. Supp. 625, 636, 229 U.S.P.Q. 865 (E.D. Va. 1986),
aff'd without op., 811 F.2d 1505, 1 U.S.P.Q.2d 1752 (4th Cir. 1987) (Design of a food processor was held
functional as simple and space efficient: “To protect the simplest, most efficient known design for compact
food processors would unduly hinder competition.”).

58 Standard Terry Mills, Inc. v. Shen Mfg. Co., 803 F.2d 778, 231 U.S.P.Q. 555 (3d Cir. 1986) (The weave of
a towel was functional as producing a strong but absorbent towel that required no ironing; “windowpane
check” pattern was “functional” as being a “favorite pattern for kitchen textiles” and “compatible with
contemporary kitchen decor”).

59 In re Telesco Brophey Limited, 170 U.S.P.Q. 427, 1971 WL 16780 (T.T.A.B. 1971) (“Applicant's utility
patent comprehending the configuration in question is adequate evidence to establish that the configuration
is indeed functional in character.”).

60 In Re OEP Enterprises, Inc., 2019 WL 3941266, *14 (T.T.A.B. 2019) (Applicant's utility patent was “strong
and explicit” evidence of functionality.).

61 John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 219 U.S.P.Q. 515 (11th Cir. 1983) (These aspects
of a new form of checkbook were found functional and unprotectable: the concept and location of a carry-
around stub; lines for recording information on the stub; and horizontal and vertical size of the stub. Other
aspects (decorative box around the check lines and design and color of a carry-around case) were held
nonfunctional, protectable as trade dress, and infringed by defendant.).

62 In re Virshup, 42 U.S.P.Q.2d 1403, 1997 WL 210779 (T.T.A.B. 1997) (“[T]he functional advantage of each
and every aspect of applicant's configuration is clear.”).

63 Motorola Inc. v. Qualcomm Inc., 45 U.S.P.Q.2d 1558, 1997 WL 838877 (S.D. Cal. 1997), aff'd without
opinion, 135 F.3d 776 (Fed. Cir. 1998) (“[T]he clamshell shape of the telephone housing, the placement of
the antenna, the location of the display screen and the location of the keypad all seem to be functionally
dictated.”).

64 Antioch Co. v. Western Trimming Corp., 347 F.3d 150, 157, 68 U.S.P.Q.2d 1673, 2003 FED App. 0368P
(6th Cir. 2003) (“The dual strap-hinge design, spine cover, padded album cover and reinforced pages are all
components that are essential to the use of [plaintiff's] album and affect its quality.”).

65 Ludwig Breit Wiesenthalhuette Gmbh Et Al v. Fada Industries, Inc, 223 U.S.P.Q. 386, 1984 WL 63620
(S.D. N.Y. 1984) (“[T]here is no non-functional aspect of the calculator or the glass paperweight in which
it is found.”).

66 Digital Equipment Corp. v. C. Itoh and Co., Ltd., 229 U.S.P.Q. 598, 1985 WL 72674 (D.N.J. 1985) (layout
of keys and set-up screen and general appearance of video monitor held functional. Shape and color of
keyboard and monitor were nonfunctional, but acquired no secondary meaning).

67 Mag Instrument, Inc. v. The Brinkmann Corporation, 96 U.S.P.Q.2d 1701, 1721, 2010 WL 3253200
(T.T.A.B. 2010), aff'd, 2011 WL 5400095 (Fed. Cir. 2011) (The two bands act as positive and negative
connections for the battery recharging system when the flashlight is placed in the charging cradle.).

68 Invisible Fence, Inc. v. Perimeter Technologies, Inc., 2007 WL 273129 (N.D. Ind. 2007) (Shape of battery
pack used to supply power to receiver on an animal's collar that generates a shock if the animal gets too
close to a buried wire. Utility patent evidenced functionality).

69 Leatherman Tool Group, Inc. v. Cooper Industries, Inc., 199 F.3d 1009, 1013, 53 U.S.P.Q.2d 1196 (9th Cir.
1999) (“[T]here is no evidence in the record which supports the jury's conclusion that the overall appearance

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of the PST is protectable trade dress …. [E]very physical part of the Leatherman is de jure functional …
[T]he evidence showed … that ‘the product is in its particular shape because it works better in this shape.’”).

70 In re Reiner Industries, Inc., 170 U.S.P.Q. 60, 1971 WL 16743 (T.T.A.B. 1971) (“The bars obviously add
rigidity and the apertures allow for circulation of air without detracting from the rigidity of the outer portion
of the clip….”).

71 In re Quikey Manufacturing Co., Inc., 159 U.S.P.Q. 490, 1968 WL 8188 (T.T.A.B. 1968) (“[S]oaps are
manufactured in circular, rectangular, as well as in oval shapes. In view thereof, applicant's circular shape
of its configuration is functional in that it conforms in shape to a cake of soap.”).

72 Henri Bendel, Inc. v. Sears, Roebuck and Co., 25 F. Supp. 2d 198, 202, 48 U.S.P.Q.2d 1948 (S.D. N.Y. 1998)
(“There are only a limited number of designs available for cosmetic bags, however, and these features—
vertical stripes, plastic coating and gold zipper pulls—must remain available to competitors.”).

73 Arlington Specialties, Inc. v. Urban Aid, Inc., 847 F.3d 415, 420 (7th Cir. 2017) (The elements of product
design that plaintiff listed “determine the bag's shape, its degree of rigidity, and how hard or easy it is to
access its contents—all, …., functional aspects of the product.”).

74 In re Howard Leight Industries, LLC, 80 U.S.P.Q.2d 1507, 2006 WL 1968605 (T.T.A.B. 2006) (Functionality
of the shape was evidenced by applicant's own expired utility patent).

75 Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723, 731, 99 U.S.P.Q.2d 1538
(7th Cir. 2011) (Affirmed summary judgment that the design was functional. Patents disclosed the utilitarian
benefits of the design.).

76 Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 1 U.S.P.Q.2d 2026 (2d Cir. 1987) (The arrangement
of shingles, vents, waterproof fabric, and hood on a rain jacket were dictated by the utilitarian purpose
of providing a low-cost, unencumbering, waterproof jacket for wear while playing golf and other sports.
Preliminary injunction reversed).

77 See § 7:104. See: ASICS Corp. v. Target Corp., 282 F. Supp. 2d 1020, 67 U.S.P.Q.2d 1835 (D. Minn. 2003)
(striped reinforcements on shoe provide support, prevent stretching and lighten the shoe.).

78 TBL Licensing, LLC. v. Vidal, 644 F. Supp. 3d 190, 2022 WL 17573906, *5 (E.D. Va. 2022) (Structure of
yellow TIMBERLAND boot was functional and not registerable, based on evidence of adverting and utility
patents. “The features of the applied-for boot design as a whole do what these features are supposed to do
in any good boot: they make it comfortable, they make it durable, they make it waterproof, and they make it
suitable for its intended uses, including hiking through a variety of environments and pursuing some work
projects for which toe protection is needed.”).

79 Lyden v. adidas America, Inc., 184 F. Supp. 3d 962, 118 U.S.P.Q.2d 1728 (D. Or. 2016) (Utility patent was
persuasive evidence that the design in plaintiff's Supplemental registration was functional.).

80 R and A Synergy LLC v. Spanx, Inc., 2019 WL 4390564, *6 (C.D. Cal. 2019) (“[W]hen viewing the
[plaintiff's] Sleevy products as a whole, the general design and look of each individual Sleevy product is
undoubtedly functional.” Granting motion to dismiss.).

81 Charles Greiner & Co., Inc. v. Mari-Med Mfg., Inc., 754 F. Supp. 951, 18 U.S.P.Q.2d 1785 (D.R.I. 1991),
aff'd, 962 F.2d 1031, 22 U.S.P.Q.2d 1526 (Fed. Cir. 1992) (A cervical collar, used to steady and hold the
head and neck to prevent injury, was a purely functional shape because it follows that of the human neck.
Copying of such an unpatented functional shape is not unfair competition).

82 In re Lincoln Diagnostics Inc., 30 U.S.P.Q.2d 1817, 1994 WL 262247 (T.T.A.B. 1994) (“That there are
alternative configurations of record which may work equally as well does not negate the fact that applicant's

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configuration was designed functionally to accomplish the purpose of supplying air and water immediately
adjacent to the mixing chamber.”).

83 In re Bio-Medicus Inc., 31 U.S.P.Q.2d 1254, 1993 WL 723404, *10 (T.T.A.B. 1993) (Applicant's blood
pump was in a conical shape “because such a configuration was found to be the design which works best”).

84 In re Becton, Dickinson and Co., 675 F.3d 1368, 1375, 102 U.S.P.Q.2d 1372 (Fed. Cir. 2012) (A utility
patent “shows the utilitarian nature of at least two prominent features of BD's mark: (1) the two concentric
circles at the top of the closure cap, which allow a needle to be inserted, and (2) the ribs, which serve as
a gripping surface.”).

85 Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d 130, 134 (D. Mass. 2003) (summary dismissal
granted. “Straumann simply has not produced competent evidence supporting its claim of non-functionality
of the overall design of its implant.”).

86 Sulzer Mixpac AG v. A&N Trading Company, 988 F.3d 174, 183 (2d Cir. 2021) (“The evidence … firmly
establishes that the colors signify diameter, which in turn assists users with selecting the proper cartridge for
their needs…. [T]he colors enable users to quickly match the proper mixing tip with the proper cartridge,
and thereby improve the operation of the goods.”).

87 Yellowfin Yachts, Inc. v. Barker Boatworks, LLC, 237 F. Supp. 3d 1230, 121 U.S.P.Q.2d 1710 (M.D. Fla.
2017), aff'd on other grounds, 898 F.3d 1279, 128 U.S.P.Q.2d 1287, 169 Lab. Cas. (CCH) P 61891, 2018
A.M.C. 2523 (11th Cir. 2018) (A boat sheer line that sweeps from a high bow to a low stern was functional
and not protectable as trade dress.).

88 Fair Wind Sailing, Inc. v. Dempster, 61 V.I. 797, 764 F.3d 303, 311, 112 U.S.P.Q.2d 1340, 2015 A.M.C. 585
(3d Cir. 2014) (“Student feedback procedures, catamarans, teaching itineraries, and curriculum all affect the
quality of Fair Wind's business …. Thus, Fair Wind's alleged dress is plainly functional.”).

89 Mountain Safety Research, Inc. v. Coleman Outdoor Products, Inc., 869 F. Supp. 818, 821, 32 U.S.P.Q.2d
1465 (W.D. Wash. 1993), aff'd, 36 F.3d 1116 (Fed. Cir. 1994) (“The Court concludes that plaintiff's patent
touted many functional aspects of its stove design….”).

90 Fuji Kogyo Co., Ltd. v. Pacific Bay Intern., Inc., 461 F.3d 675, 79 U.S.P.Q.2d 1894, 2006 FED App. 0312P
(6th Cir. 2006), cert. denied, 127 S. Ct. 1373 (U.S. 2007) (Presumption of non-functionality arising from
contestable registrations was overcome by evidence of functionality. Plaintiff's infringement claim was
dismissed and its registrations cancelled.).

91 In re Rolf Dietrich, 91 U.S.P.Q.2d 1622, 1633, 2009 WL 2138978 (T.T.A.B. 2009) (“The spokes in the
wheel are laced that way because the wheel works better that way” even though the design also has visual
aesthetic symmetry.).

92 Franek v. Walmart Stores, Inc., 2009 WL 674269 (N.D. Ill. 2009), aff'd, 615 F.3d 855, 96 U.S.P.Q.2d 1404
(7th Cir. 2010) (Circular beach towel shape which was the subject of an incontestable registration was found
to be functional and invalid, based on utility patent and registrant's advertising. The circular shape meant
the sunbather did not have to reposition the towel as the sun moved in the sky. Court of Appeals agreed
with District court: “[A] circle surpasses other shapes because it provides the most rotational space without
waste.” 615 F.3d at 859.).

93 International Leisure Products, Inc. v. FUNBOY LLC, 747 Fed. Appx. 23 (2d Cir. 2018) (This design is
functional because it makes the product “more useful or more appealing,” not to identify source.).

94 Kids' Town at the Falls LLC v. City of Rexburg, 570 F. Supp. 3d 911, 936 (D. Idaho 2021) (Summary
dismissal. “[T]hose features which make up Kids' Town's ‘look and feel’—e.g. the utilitarian features that
provide the actual benefit of the trade dress—render it functional and thus not protectable.”).

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95 Interactive Network, Inc. v. NTN Communications, Inc., 875 F. Supp. 1398, 34 U.S.P.Q.2d 1380 (N.D. Cal.
1995), dismissed, 57 F.3d 1083 (Fed. Cir. 1995) (“[T]he basic rules and prediction scheme used by [plaintiff's
video game] are so intimately related to the purposes of the interactive football game that to label them as
‘nonfunctional’ would render that term meaningless.”).

96 Incredible Technologies, Inc. v. Virtual Technologies, Inc., 284 F. Supp. 2d 1069, 1084, 68 U.S.P.Q.2d 1877
(N.D. Ill. 2003), aff'd, 400 F.3d 1007, 1015, 74 U.S.P.Q.2d 1031 (7th Cir. 2005) (The “graphic instructions,
or something very close to them, are necessary to describe how the trackball, shot-shaping system works.”
Court of Appeals agreed that “The control panel and the trackball system are functional.”).

97 Mcgowen Precision Barrels, LLC v. Proof Research, Inc., 2021 WL 2138663, *29 (T.T.A.B. 2021) (Mottled
pattern was a result of the manufacturing process, which produces a lighter barrel while retaining strength
and stiffness. The registrant's trade dress “is the result of a manufacturing process that follows Claim 22
in [it's own] '117 Patent.”).

98 Meadowcraft Inc. v. Compex International Co., 47 U.S.P.Q.2d 1665, 1998 WL 542706 (N.D. Ga. 1998)
(Functionality evidenced by the design constraints of low price, need for stackability, need for disassembly
and incorporation of standard components). See Devan Designs, Inc. v. Palliser Furniture Corp., 25
U.S.P.Q.2d 1991, 1992 WL 511694, *13 (M.D. N.C. 1992), aff'd, 998 F.2d 1008, 27 U.S.P.Q.2d 1399 (4th
Cir. 1993) (Bedroom furniture design alleged to constitute trade dress. Design was found not functional,
but proof of a secondary meaning was unconvincing and court denied a preliminary injunction.); Landscape
Forms, Inc. v. Columbia Cascade Co., 117 F. Supp. 2d 360, 56 U.S.P.Q.2d 1613 (S.D. N.Y. 2000) (No
aesthetic functionality found in line of outdoor institutional furniture. Secondary meaning was found but no
likelihood of confusion as to similar design because landscape architects are knowledgeable buyers).

99 Woodland Furniture, LLC v. Larsen, 142 Idaho 140, 124 P.3d 1016, 78 U.S.P.Q.2d 1605 (2005) (the aged
appearance of the furniture provides the “actual benefit that the consumer desires to purchase … .”).

100 American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1 U.S.P.Q.2d 1001 (3d Cir. 1986)
(“Tummy graphics” were symbols conveying various emotive messages on stuffed animal CARE BEARS
and were “functional” because they conveyed an emotional message—the professed function of CARE
BEARS).

101 Tyco Industries, Inc. v. Lego Systems, Inc., 5 U.S.P.Q.2d 1023, 1987 WL 44363 (D.N.J. 1987), aff'd, 853 F.2d
921 (3d Cir. 1988) (Existence of a few possible alternative shapes was insufficient to disprove functionality:
“Simply because other configurations are available or feasible does not render the block nonfunctional.”).

102 Ohio Art Co. v. Lewis Galoob Toys, Inc., 799 F. Supp. 870, 879, 25 U.S.P.Q.2d 1496, 1503 (N.D. Ill.
1992) (Rectangular shape of the drawing screen was functional because it made optimum use of the internal
mechanism disclosed in utility patents).

103 Crafty Productions, Inc. v. Michaels Companies, Inc., 424 F. Supp. 3d 983 (S.D. Cal. 2019), aff'd, 839 Fed.
Appx. 95 (9th Cir. 2020) (Dismissing with prejudice on a Rule 12(b)(6) motion a claim for infringement of
alleged trade dress in various wooden mask designs. The designs were functional because essential to the
goal of making a mask look like the intended characters, such as a clown, a frog or a snowman.).

104 Sweet Street Desserts, Inc. v. Chudleigh's Ltd., 69 F. Supp. 3d 530, 533, 549 (E.D. Pa. 2014), aff'd, 655
Fed. Appx. 103, 119 U.S.P.Q.2d 1641 (3d Cir. 2016) (“The product's size, shape, and six folds or petals of
upturned dough are all essential ingredients in the Blossom's ability to function as a single-serving, fruit-
filled dessert pastry.” Summary dismissal granted.). Compare Denbra IP Holdings, LLC v. Thornton, 2021
WL 674238 (E.D. Tex. 2021) (Granting preliminary injunction against infringement of registered trade dress
of frosting pattern on Bundt cake. Motion was unopposed and no issue of functionality was raised.).

105 Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197, 1206, 70 U.S.P.Q.2d 1707, 64 Fed.
R. Evid. Serv. 617 (11th Cir. 2004), cert. denied, 125 S. Ct. 911, 160 L. Ed. 2d 777 (U.S. 2005) (“[W]e

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conclude that the totality of the dippin' dots design is functional because any flash-frozen ice cream product
will inherently have many of the same features as dippin' dots.”).

106 Big Island Candies, Inc. v. Cookie Corner, 269 F. Supp. 2d 1236, 1248–1249 (D. Haw. 2003) (Dismissing
on summary judgment. This cookie design was not protectable as trade dress because it was so common as
to be “generic.”). See § 8:6.50.

107 Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp., 986 F.3d 250, 259 (3d Cir. 2021), as
amended, (Mar. 10, 2021) (Affirmed dismissal on summary judgment. Plaintiff's registered cookie shape
was functional and invalid as trade dress. The “design makes it work better as a snack.”).

108 Duo-Tint Bulb & Battery Co., Inc. v. Moline Supply Co., 46 Ill. App. 3d 145, 152, 4 Ill. Dec. 685, 360
N.E.2d 798, 803, 200 U.S.P.Q. 410 (3d Dist. 1977) (“[T]the respective physical dimensions of the box and
the drawers in the box, the arrangement and number of drawers, were all factors which affected the efficiency
or economy in handling throughout the marketing process and which contributed to the utility, durability,
effectiveness, or ease with which the bulb dispenser box served its function or was handled by its users.”).

109 Talking Rain Beverage Co. Inc. v. South Beach Beverage Co., 349 F.3d 601, 604–605, 68 U.S.P.Q.2d 1764
(9th Cir. 2003) (“Talking Rain's advertising emphasizes functionality, the bottle's shape is motivated by
manufacturing efficiencies and the bottle itself offers utilitarian advantages that non-bike bottles do not
possess.”).

110 In re Oscar Mayer & Co. Inc., 189 U.S.P.Q. 295, 1975 WL 20936 (T.T.A.B. 1975) (“[T]he package
configuration was adopted primarily from practical utilitarian considerations and that any attempt to indicate
origin of the goods was ancillary thereto.”).

111 In re Reddi-Wip, Inc., 150 U.S.P.Q. 213, 1966 WL 7256 (T.T.A.B. 1966) (The cap “was designed to perform
the essential function of opening the sealed cap or can.”).

112 In re Seaquist Valve Company Division of Pittway Corporation, 169 U.S.P.Q. 245, 1971 WL 16448 (T.T.A.B.
1971) (Applicant's advertising was evidence that the design was functional.).

113 In re Creative Edge Design Group, Ltd., 2019 WL 2371849 (T.T.A.B. 2019) (Applicant's expired utility
patent helped prove the design was functional in that the shape was stackable and facilitated shipping without
the need for encasing the containers.).

114 In re International Playtex Corporation, 155 U.S.P.Q. 745, 1967 WL 7302 (T.T.A.B. 1967) (“A cylindrical
tube is the antithesis of a distinctive shape for tubes have been used from ancient times until the present
as receptacles. Hundreds of items are packaged in cylindrical tubes in the nature of cans and the like.”)
Compare In re Kaiser Aluminum & Chemical Corporation, 160 U.S.P.Q. 693, 1969 WL 9019 (T.T.A.B.
1969) (Supplemental registration granted for cylindrical tube with octagonal ends as container for aluminum
foil); In re Fre-Mar Industries, Inc., 158 U.S.P.Q. 364, 1968 WL 8254 (T.T.A.B. 1968) (container for tire
repair tools not functional. “[This] particular configuration was adopted not solely for its functional or
utilitarian considerations, but also expressly to identify and distinguish applicant's goods ….”).

115 In re Mars, Inc., 105 U.S.P.Q.2d 1859, 1861-1865, 2013 WL 326569 (T.T.A.B. 2013) (Utility patents owned
by others were used by the USPTO examiner to show the utilitarian advantages of the design of a pet food
container, which the Board held was functional and not registerable.).

116 Schutte Bagclosures Inc. v. Kwik Lok Corporation, 193 F. Supp. 3d 245, 268 (S.D. N.Y. 2016), aff'd, 699
Fed. Appx. 93 (2d Cir. 2017) (“[The] Product Configuration is functional because it affects the cost and
quality of the product and the disclosure of functional features of the closures in expired utility patents is
strong evidence that further supports a finding of functionality.”).

117 Poly-America, L.P. v. Illinois Tool Works Inc., 124 U.S.P.Q.2d 1508, 2017 WL 4687981 (T.T.A.B. 2017)
(Registrant's predecessor was the patentee of a utility patent. Applicant in the patent prosecution history

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§ 7:85. Examples of designs held to be functional, 1 McCarthy on Trademarks and...

argued to the U.S.P.T.O. that the colored line was functional and it was included in a claim of the patent.
This proved the utilitarian advantages of the design. Registrations were cancelled.).

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§ 7:86. Features held nonfunctional, 1 McCarthy on Trademarks and Unfair...

1 McCarthy on Trademarks and Unfair Competition § 7:86 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

E. ILLUSTRATIVE LIST OF FEATURES HELD FUNCTIONAL AND NONFUNCTIONAL

§ 7:86. Features held nonfunctional

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

Illustrated below are examples of features held nonutilitarian and hence nonfunctional. They are:

Fig. 7:86A The triangular shape of a cake of chemical.1

Fig. 7:86B The side configuration of a grain semi-trailer.2
Fig. 7:86C An inverted-Y design formed by sewn tape on JOCKEY shorts.3
Fig. 7:86D The front grille of a ROLLS-ROYCE auto.4
Fig. 7:86E A round wall thermostat.5
Fig. 7:86F ZIPPO cigarette lighter.6

Fig. 7:86A. TRIANGULAR SHAPE OF CAKE OF CHEMICAL

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§ 7:86. Features held nonfunctional, 1 McCarthy on Trademarks and Unfair...

Fig. 7:86B. SIDE CONFIGURATION OF GRAIN SEMI-TRAILER

Fig. 7:86C. INVERTED-Y DESIGN FORMED BY SEWN TAPE ON JOCKEY SHORTS

Fig. 7:86D. FRONT GRILLE OF ROLLS-ROYCE

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Fig. 7:86E. ROUND WALL THERMOSTAT

Fig. 7:86F. ZIPPO CIGARETTE LIGHTER

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Other examples of shapes held nonutilitarian and nonfunctional include:

• a parking meter shape;7

• a shower head spray nozzle;8

• a candy bar wrapping shape;9

• the rounded bottom of a guitar;10

• the appearance of a FOTOMAT film kiosk structure;11

• the shape of a gun;12

• a shoe sole pattern;13

• the design of a sport shoe;14

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• the appearance of the ROYAL OAK model of AUDEMARS PIGUET luxury watches;15

• the shape and appearance of the head of a golf club;16

• a combination of features of open-style packaging for a novelty bank;17

• the design of luggage;18

• a combination of features of nylon luggage;19

• a combination of features of a line of greeting cards;20

• a combination of features in the appearance of a mail- order catalog;21

• the appearance of a recliner chair;22

• a folding table;23

• a high-design desk lamp;24

• an insulated beverage server;25

• a hand-held kitchen blender;26

• design of a French press coffee maker;27

• a kitchen stand mixer;28

• a lawn spray gun;29

• a barbecue grill;30

• a fishing reel;31

• a fishing lure;32

• a C-clamp tool;33

• design of lines on the lens of a pressure gauge;34

• the shape of a FERRARI classic auto;35

• the grille design and overall exterior design of the HUMMER and HUMVEE vehicles;36

• six-diode configuration of a tail light for vehicles;37

• interior design of a restaurant.38

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Footnotes
1 In re Minnesota Mining & Mfg. Co., 335 F.2d 836, 142 U.S.P.Q. 366 (C.C.P.A. 1964) (supplemental
registration allowed). Compare In re Tri-X Corp., 154 U.S.P.Q. 379 (T.T.A.B. 1967) (cylindrical shape
of chemical pellet for auto cooling system held functional); In re Tesco Chemicals, Inc., 181 U.S.P.Q. 59
(T.T.A.B. 1973) (cylindrical shape of chemical shaped so as to fit a feeder device: held functional).

2 Truck Equipment Service Co. v. Fruehauf Corp., 536 F.2d 1210, 191 U.S.P.Q. 79 (8th Cir. 1976), cert. denied,
429 U.S. 861, 50 L. Ed. 2d 139, 97 S. Ct. 164, 191 U.S.P.Q. 588 (1976) (based on testimony of designer
and defendant's engineers who reported that the configuration was “useless” and its only function would be
to gather road dirt and mud).

3 In re Jockey International, Inc., 192 U.S.P.Q. 579 (T.T.A.B. 1976). See Dallas Cowboys Cheerleaders, Inc.
v. Pussycat Cinema, Ltd., 604 F.2d 200, 203 U.S.P.Q. 161 (2d Cir. 1979) (decorative aspects of cheerleaders'
uniform held nonfunctional). Regarding trade dress and trademarks in clothing designs, see § 7:103.

4 Rolls-Royce Motors, Ltd. v. A & A Fiberglass, Inc., 428 F. Supp. 689, 193 U.S.P.Q. 35 (N.D. Ga. 1977).
See Rolls-Royce Motors, Ltd. v. Custom Cloud Motors, Inc., 190 U.S.P.Q. 80 (S.D.N.Y. 1976). See General
Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 80 U.S.P.Q.2d 1608, 2006 FED App. 0393P (6th Cir. 2006),
cert. denied, 128 S. Ct. 356 (U.S. 2007) (Both grille design and overall exterior design of the HUMMER
and HUMVEE vehicles were found nonfunctional. Infringement was found.).

5 Substantially the same shape had previously been held to be functional. In re Honeywell, Inc., 532 F.2d
180, 189 U.S.P.Q. 343 (C.C.P.A. 1976). But in 1988 the shape shown was held to be nonfunctional and
registrable as a trademark for thermostats because of a change in “facts and circumstances” since the previous
decision. In re Honeywell, Inc., 8 U.S.P.Q.2d 1600 (T.T.A.B. 1988). See Smith & McDonald, “Proving
Nonfunctionality of Product Shapes: Honeywell Wins ‘Round II’ on Thermostat Shape,” 79 Trademark Rep.
62 (1989). See Eco Mfg. LLC. v. Honeywell Intern., Inc., 357 F.3d 649, 69 U.S.P.Q.2d 1296 (7th Cir. 2003)
(denying preliminary injunction against alleged infringement of the registration and noting that the round
design had been held functional by the Trademark Board in 1975 and nonfunctional by the same Board in
1988).

6 In re Zippo Mfg. Co., 50 U.S.P.Q.2d 1852 (T.T.A.B. 1999) (The ZIPPO cigarette lighter design, while
originally held functional in a 1963 decision because cheaper and easier to make, over time became
nonfunctional as competitors introduced alternative designs into the market. “Inasmuch as several alternative
designs are currently competing in the marketplace for these products, it does not appear that applicant's
design has in any way hindered competition.”).

7 Time Mechanisms, Inc. v. Qonaar Corp., 422 F. Supp. 905, 194 U.S.P.Q. 500 (D.N.J. 1976).

8 Teledyne Industries, Inc. v. Windmere Products, Inc., 433 F. Supp. 710, 195 U.S.P.Q. 354 (S.D. Fla. 1977).
Contra In re Teledyne Industries, Inc., 696 F.2d 968, 217 U.S.P.Q. 9 (Fed. Cir. 1982).

9 In re Worlds Finest Chocolate, Inc., 474 F.2d 1012, 177 U.S.P.Q. 205 (C.C.P.A. 1973).

10 In re Ovation Instruments, Inc., 201 U.S.P.Q. 116 (T.T.A.B. 1978) (rounded bowl shape chosen for its selling
and identification potential).

11 Fotomat Corp. v. Cochran, 437 F. Supp. 1231, 194 U.S.P.Q. 128 (D. Kan. 1977) (kiosk roof held
nonfunctional and a valid service mark); Fotomat Corp. v. Ace Corp., 208 U.S.P.Q. 92 (S.D. Cal. 1980)
(kiosk building design held nonfunctional, famous and a strong mark entitled to broad protection). Compare
Fotomat Corp. v. Photo Drive-Thru, Inc., 425 F. Supp. 693, 193 U.S.P.Q. 342 (D.N.J. 1977) (defendant's
building held similar only in nonprotectable functional aspects). See §§ 7:100 to 7:102.

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12 In re Browning, 217 U.S.P.Q. 933 (T.T.A.B. 1982) (held that the design appearance of the receiver portion of
a shotgun was not functional; advertising touting sighting advantages did not relate to that part of the design
sought for registration); Strum, Ruger & Co. v. Arcadia Machine & Tool, Inc., 10 U.S.P.Q.2d 1522 (C.D.
Cal. 1988) (the distinctive configuration of an automatic pistol was held to be nonfunctional, had acquired
secondary meaning and was protected against copying).

13 In re Sneakers with Fabric Uppers & Rubber Soles, 223 U.S.P.Q. 536 (Int'l Trade Comm'n 1983) (hexagonal
pattern on sole of childrens' sneakers was held nonfunctional, noting that several other designs were equally
useful and that this design was more expensive to produce).

14 Adidas America, Inc. v. Skechers USA, Inc., 149 F. Supp. 3d 1222, 1238-1239 (D. Or. 2016) (Design of
Adidas “Stan Smith” sports shoe was not functional. “There is no utilitarian advantage gaining from using the
Stan Smith's particular set of features because they do not make the shoe work better or cost less than other
similar sneakers in the current marketplace.” Preliminary injunction granted.), later proceedings, 2017 WL
3319190, *15 (D. Ore. 2017) (Granting summary finding that Stan Smith trade dress was not functional.),
aff'd adidas America, Inc. v. Skechers USA, Inc., 890 F.3d 747, 756, 126 U.S.P.Q.2d 1769 (9th Cir. 2018)
(Affirming preliminary injunction against infringement of Stan Smith sports shoe trade dress.).

15 Audemars Piguet Holding S.A. v. Swiss Watch Intern., Inc., 2014 WL 47465 (S.D. N.Y. 2014) (Finding
infringement of the registered trade dress appearance of the watch with an octagonal bezel with eight
hexagonal screw heads.), later proceedings, 2015 WL 150756 (S.D.N.Y 2015) (The accused designs were
infringements, but not counterfeits.).

16 Callaway Golf Co. v. Golf Clean, Inc., 915 F. Supp. 1206, 39 U.S.P.Q.2d 1737 (M.D. Fla. 1995) (preliminary
injunction granted against look-alike of inherently distinctive design of the head of plaintiff's BIG BERTHA
golf clubs).

17 Fun-Damental Too, Ltd. v. Gemmy Industries Corp., 111 F.3d 993, 42 U.S.P.Q.2d 1348 (2d Cir. 1997)
(defendant failed to prove that plaintiff's particular open-style box design, plastic blister cover and tie-down
strap were functional; the district court found that at least two alternative package designs worked equally
well).

18 CPG Products Corp. v. Pegasus Luggage, Inc., 776 F.2d 1007, 227 U.S.P.Q. 497 (Fed. Cir. 1985) (total
design image of luggage, including color, trim and shape of trim were held a trademark infringed under §
43(a); Judge Rich vigorously dissented, arguing that the majority improperly included utilitarian features
in defining the total design image).

19 Le Sportsac, Inc. v. K Mart Corp., 754 F.2d 71, 225 U.S.P.Q. 654 (2d Cir. 1985), later proceeding, 617
F. Supp. 316, 227 U.S.P.Q. 150 (E.D.N.Y. 1985) (The particular combination of features found in the
structure of lightweight nylon luggage was found nonfunctional, protectable and infringed. The elements
included: parachute nylon in a variety of colors; trimmed in cotton carpet tape with matching cotton webbing
straps; color coordinated zippers with hollow rectangular metal sliders; and a repeating logo in an elongated
ellipse.).

20 Hartford House, Ltd. v. Hallmark Cards, Inc., 647 F. Supp. 1533, 1 U.S.P.Q.2d 1030 (D. Colo. 1986), aff'd,
846 F.2d 1268, 6 U.S.P.Q.2d 2038 (10th Cir. 1988), cert. denied, 488 U.S. 908, 102 L. Ed. 2d 248, 109 S. Ct.
260 (1988) (A combination of greeting card features creating a distinctive “look” were held nonfunctional
and protectable trade dress. Individual features include such common items as a two-fold card, deckle
edge, lengthy poetry and air brush colors. “A greeting card … may functionally convey a message and yet
simultaneously communicate through inherently distinctive nonessential features identifying the product's
source.”). Accord: Roulo v. Russ Berrie & Co., 886 F.2d 931, 12 U.S.P.Q.2d 1423 (7th Cir. 1989), cert.
denied, 493 U.S. 1075, 107 L. Ed. 2d 1030, 110 S. Ct. 1124 (1990) (combination of “common, indistinct
elements” of greeting card line was protected as trade dress).

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21 Tools USA & Equip. Co. v. Champ Frame Straightening Equip., 87 F.3d 654, 39 U.S.P.Q.2d 1355 (4th Cir.
1996).

22 Contour Chair Lounge Co. v. True-Fit Chair, Inc., 648 F. Supp. 704, 1 U.S.P.Q.2d 1353 (E.D. Mo. 1986) (the
overall appearance of a motorized recliner chair was found not functional and protectable against imitation
under Lanham Act § 43(a)).

23 Vaughan Mfg. Co. v. Brikam Int'l, 814 F.2d 346, 1 U.S.P.Q.2d 2067 (7th Cir. 1987) (combination of design
features was held nonfunctional and protectable even though the individual features might have some
utilitarian advantages; court affirmed preliminary injunction against use of yellow color on table sides, color
of masonite top, black color of frame and the style, shape and color of the lock, handle, label and other
brass parts).

24 Artemide SpA v. Grandlite Design & Mfg. Co., 672 F. Supp. 698, 4 U.S.P.Q.2d 1915 (S.D.N.Y. 1987), related
proceeding, 1987 U.S. Dist. LEXIS 16742 (D.N.J. Nov. 5, 1987) (while many aspects of plaintiff's TIZIO
halogen desk lamp are functional, five aspects of the design are not functional, have secondary meaning and
are infringed); PAF S.r.l. v. Lisa Lighting Co., 712 F. Supp. 394, 12 U.S.P.Q.2d 1161 (S.D.N.Y. 1989) (the
overall design of plaintiff's DOVE desk lamp “is a highly distinctive, aesthetically appealing lamp, not a
predominantly functional lamp”); Bauer Lamp Co. v. Shaffer, 941 F.2d 1165, 20 U.S.P.Q.2d 1128 (11th Cir.
1991) (defendant copied the design of plaintiff's neoclassical lamp; substantial damages awarded).

25 Service Ideas, Inc. v. Traex Corp., 846 F.2d 1118, 6 U.S.P.Q.2d 1937 (7th Cir. 1988) (while the individual
parts might be functional, the overall color and shape of an insulated beverage server was found
nonfunctional, had secondary meaning and was infringed).

26 Braun, Inc. v. Dynamics Corp. of America, 775 F. Supp. 33, 19 U.S.P.Q.2d 1696 (D. Conn. 1991), aff'd
in part and rev'd in part, remanded, 975 F.2d 815, 24 U.S.P.Q.2d 1121 (Fed. Cir. 1992) (“[T]he jury was
shown various other models which accomplish quite similar functions, yet look strikingly different from
[plaintiff's] blender.” This was “ample evidence” from which jury properly found nonfunctionality.).

27 Bodum USA, Incorporated v. A Top New Casting Incorporated, 927 F.3d 486 (7th Cir. 2019), cert. denied,
140 S. Ct. 675, 205 L. Ed. 2d 439 (2019) (Plaintiff carried its burden and proved the non-functionality of
unregistered trade dress in the design of a French press coffee maker. Affirmed jury verdict of infringement.).

28 Sunbeam Prods., Inc. v. West Bend Co., 39 U.S.P.Q.2d 1545 (S.D. Miss. 1996), aff'd, 123 F.3d 246, 44
U.S.P.Q.2d 1161 (5th Cir. 1997) (pre liminary injunction against selling look-alike to plaintiff's Sunbeam
MIXMASTER was based on both § 43(a) and 43(c)).

29 Chemlawn Services Corp. v. GNC Pumps, Inc., 690 F. Supp. 1560, 6 U.S.P.Q.2d 1348 (S.D. Tex. 1988)
(configuration was found not functional, had secondary meaning and preliminary injunction issued against
copier).

30 In re Weber-Stephen Products Co., 3 U.S.P.Q.2d 1659 (T.T.A.B. 1987) (Configuration was found not
functional and registrable. The evidence failed to prove that applicant's round grill configuration is superior
in cooking performance to other shapes used by competitors.).

31 Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 4 U.S.P.Q.2d 1497 (10th Cir. 1987) (fishing reel profile
with a chrome, cone-shaped front cover was held nonfunctional and infringed).

32 In re EBSCO Industries Inc., 41 U.S.P.Q.2d 1913 (T.T.A.B. 1997) (particular shape of fishing lure is
functional because it has the appearance of the prey that the fish to be caught are feeding on and is more
effective). Compare In re EBSCO Industries Inc., 41 U.S.P.Q.2d 1917 (T.T.A.B. 1997) (different shaped
fishing lure held not functional on the record presented by the PTO).

33 Clamp Mfg. Co. v. Enco Mfg. Co., 5 U.S.P.Q.2d 1643 (C.D. Cal. 1987), aff'd, 870 F.2d 512, 10 U.S.P.Q.2d
1226 (9th Cir. 1989), cert. denied, 493 U.S. 872, 107 L. Ed. 2d 155, 110 S. Ct. 202 (1989) (the shape of a

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C-clamp tool was found nonfunctional, distinctive and infringed; over a half million dollars in defendant's
profits were awarded).

34 Dwyer Instruments Inc. v. Sensocon Inc., 103 U.S.P.Q.2d 1444, 2012 WL 3207254 (N.D. Ind. 2012) (Design
was registered as a trademark. Summary judgment of validity and infringement.).

35 Ferrari S.p.A. Esercizio Fabriche Automobili e Corse v. McBurnie, 11 U.S.P.Q.2d 1843 (S.D. Cal. 1989)
(The overall design of the FERRARI DAYTONA SPYDER classic sports car is protectable trade dress under
§ 43(a). The exterior shape of the car is nonfunctional and was designed primarily for aesthetic reasons.).
Accord: Ferrari S.p.A. Esercizio Fabriche Automobili E Corse v. Roberts, 739 F. Supp. 1138, 14 U.S.P.Q.2d
2013 (E.D. Tenn. 1990), aff'd, 944 F.2d 1235, 20 U.S.P.Q.2d 1001 (6th Cir. 1991), cert. denied, 505 U.S.
1219, 120 L. Ed. 2d 899, 112 S. Ct. 3028 (1992) (Court of appeals noted that: “[T]he unique exterior design
and shape of the Ferrari vehicle are their ‘mark’ or ‘trade dress’ which distinguish the vehicles' exterior
shapes not simply as distinctively attractive designs, but as Ferrari creations.”).

36 General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 80 U.S.P.Q.2d 1608, 2006 FED App. 0393P (6th
Cir. 2006), cert. denied, 128 S. Ct. 356 (U.S. 2007) (infringement was found). Compare: General Motors
Corp. v. Urban Gorilla, LLC, 500 F.3d 1222, 84 U.S.P.Q.2d 1214 (10th Cir. 2007) (Denial of preliminary
injunction against seller of car kit to modify a truck body to make it look lie a HUMMER vehicle.).

37 Grote Industries, Inc. v. Truck-Lite Co., LLC, 126 U.S.P.Q.2d 1197, 1206, 2018 WL 1557301 (T.T.A.B.
2018) (Non-functional, but no secondary meaning was proven.).

38 In-N-Out Burgers v. Doll n' Burgers LLC, 2022 WL 791924, *25–26 (E.D. Mich. 2022) (Plaintiff's alleged
a common law trade as consisting of nine elements of restaurant interior design, such as color scheme,
decoration, furniture, menu layout, and art with a classic car theme. Found on summary judgment that the
alleged trade dress was not functional.). See Sparrow Barns & Events, LLC v. Ruth Farm Inc., 2019 WL
1560442 (E.D. Tex. 2019) (Preliminary injunction against a look-alike of plaintiff's specifically designed
Texas barn used as a wedding and events venue. The design was found to be inherently distinctive and non-
functional.). But compare restaurant designs held to be functional at § 7:100.

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§ 7:87. Functional or commonplace packaging, 1 McCarthy on Trademarks and Unfair...

1 McCarthy on Trademarks and Unfair Competition § 7:87 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

F. FUNCTIONALITY OF PACKAGING MATERIALS AND COLORS

§ 7:87. Functional or commonplace packaging

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

Commonplace Packaging: Functionality and Genericness. If a certain type of packaging claimed as trade dress is
commonplace or functional, use by a competitor cannot constitute unfair competition.1 An element of a product container or
wrapper may be functional because it contributes to efficiency or economy in manufacturing or handling, or to durability.2

The Second Circuit remarked that: “[W]here it is the custom in a particular industry to package products in a similar manner,
a trade dress done in that style is likely to be generic.”3 While the court used the term “generic,” it apparently only meant it
as the opposite of “inherently distinctive,” for the court went on to see if there was evidence of secondary meaning. The court
found none in the common square design of a black plastic makeup compact used by several cosmetic distributors.4 Applying
this standard, the Second Circuit held that a 1.5 liter clear, ribbed polyethylene bottle for spring water was “generic” and hence
not protectable as trade dress.5 The same rule applies to product packaging that is commonly used in an industry.6

Combination of Elements of Packaging. While a particular package feature is unprotectable if functional, it may still form a
part of an overall product image protectable as trade dress. For example, the Eleventh Circuit found that six-pack trays with
a plastic overwrap for ice cream bars were functional and unprotectable packaging. But the court cautioned: “That individual
elements of packaging are functional does not, however, render the package as a whole unprotectable.” The foil wrapper with
graphics was held not functional and was protectable from imitation.7 Similarly, it was held that a particular combination design
of open-style box design, plastic blister cover and tie-down strap was not proven to be functional.8

Transparent Packaging. The use of ordinary packaging such as transparent cellophane is functional and free for all to use.9 For
example, a molded plastic package for sliced luncheon meats was held functional in that the raised platform held a specified
amount of meat and ribs or grooves strengthened the package and aided in the packaging process (Fig. 7:87A).10 Similarly,

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transparent packaging used to encase an electrical rotary dimmer switch was, on the reversal of a preliminary injunction, found
functional. The package is transparent so that viewers can see it; the recesses are shaped to fit snugly around the product; the
rounded corners are the result of the molding process; and the rim holds the package tightly closed (Fig. 7:87B).11

Box-like Containers. The use of clamshell packaging was found to be used in video sales as a means of distinguishing higher
priced videos from lower priced ones using a slip sleeve and therefore functional and not the subject of trade dress.12 The
design of a pizza delivery box with folding perforations and tabs and holes to vent heat was found functional and unprotectable
as trade dress.13

Cylindrical Containers. Simple, cylindrical containers have often been held to be merely utilitarian and functional.14 The First
Circuit held that a “prosaic” cylindrical container for crackers was functional and unprotectable and noted that if the law were
not so, the unacceptable result would be that “the first user of a container such as the now-standard soup can, potato chip bag,
or cracker box would be able to preclude competitors from using these highly functional containers.”15

Beverage Bottles. A prosaic mineral water bottle shaped to fit into a bicycle bottle holder rack was found to be functional and
not protectable as trade dress.16 Similarly, found to be unprotectable was the concept of selling glucose tolerant beverages in
noncarbonated form in orange and fruit-punch flavors and packaged in shrink-wrapped, plastic bottles.17

Of course, a number of beverage bottle shapes and sizes have been protected as trade dress if they form a distinctive appearance.
The most famous examples are the COCA-COLA bottle and the Haig & Haig “pinch bottle” of Scotch whiskey.18

Fig. 7:87A. MOLDED PLASTIC PACKAGE FOR SLICED LUNCHEON MEATS

Fig. 7:87B. TRANSPARENT PACKAGING FOR DIMMER SWITCH

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Footnotes
1 See, e.g., EFS Mktg. v. Russ Berrie & Co., 76 F.3d 487, 37 U.S.P.Q.2d 1646 (2d Cir. 1996) (“troll” doll
design cannot be inherently distinctive or have acquired secondary meaning because at least twenty other
companies sell similar designs); Sazerac Co. v. Skyy Spirits, 37 U.S.P.Q.2d 1731 (E.D. La. 1995) (vodka
bottle in blue cobalt cannot be protected as trade dress because of proof of “many other alcohol products,
including vodka, that use a cobalt blue bottle”); Henri Bendel, Inc. v. Sears, Roebuck and Co., 25 F. Supp.
2d 198, 48 U.S.P.Q.2d 1948 (S.D. N.Y. 1998) (“There are only a limited number of designs available for
cosmetic bags, however, and these features—vertical stripes, plastic coating and gold zipper pulls—must
remain available to competitors.”).

2 Pet, Inc. v. Mountain Farm Bakery, Inc., 173 U.S.P.Q. 639, 1971 WL 16735 (M.D. Tenn. 1971) (scalloped
edge on bakery rolls container held functional); Duo-Tint Bulb & Battery Co. v. Moline Supply Co., 46
Ill. App. 3d 145, 4 Ill. Dec. 685, 360 N.E.2d 798, 200 U.S.P.Q. 410 (3d Dist. 1977) (bulb dispenser box
held functional); In re Cabot Corp., 15 U.S.P.Q.2d 1224, 1990 WL 354506 (T.T.A.B. 1990) (pillow-shaped
container for ear plugs was held to be functional and unregisterable because it was “one of the superior
shapes for packaging small items,” even though it was not necessarily the one and only superior shape for
such a package).

3 See § 8:6.50 for discussion of generic trade dress.

4 Mana Products, Inc. v. Columbia Cosmetics Mfg., Inc., 65 F.3d 1063, 36 U.S.P.Q.2d 1176 (2d Cir. 1995)
(several sellers of makeup bought standard-sized makeup compacts from the same manufacturers; in such a
case, “it defies simple logic to suggest that the packaging was inherently distinctive”; no secondary meaning
was found and the case dismissed on summary judgment).

5 Nora Beverages, Inc. v. Perrier Group of America, Inc., 269 F.3d 114, 60 U.S.P.Q.2d 1038 (2d Cir. 2001) (the
primary evidence was that as of the date of the accused infringer's entry into the market, the bottle design
“was used, with minor variations, throughout the entire market of similar products”).

6 In re Odd Sox Llc, 2019 WL 4785719, *7 (T.T.A.B. 2019) (“Generic product packaging is incapable of
source identification and cannot be registered.” Display packaging for socks was unregisterable as being
“generic”: a design commonly used in the industry.).

7 AmBrit, Inc. v. Kraft, Inc., 805 F.2d 974, 1 U.S.P.Q.2d 1161 (11th Cir. 1986), op. superseded, 812 F.2d 1531
(11th Cir. 1986), cert. denied, 481 U.S. 1041, 95 L. Ed. 2d 822, 107 S. Ct. 1983 (1987). Compare Ziegenfelder
Co. v. Dunkirk Ice Cream Co., 30 U.S.P.Q.2d 1604 (N.D. W. Va. 1993) (preliminary injunction protecting
“trade dress” in 18 twin pops (flavored ice confections), in combinations of six colors, packaged in clear,
plastic wrap to allow customer to see the colors of the twin pops). See Carillon Importers v. Frank Pesce
Group, 913 F. Supp. 1559, 38 U.S.P.Q.2d 1118 (S.D. Fla. 1996), aff'd, 112 F.3d 1125, 42 U.S.P.Q.2d 1797

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(11th Cir. 1997) (combination of elements of STOLICHNAYA CRISTALL vodka that create “an elegant,
minimalist style that is suggestive of refinement and quality” is protectable as trade dress; preliminary
injunction granted).

8 Fun-Damental Too, Ltd. v. Gemmy Industries Corp., 111 F.3d 993, 42 U.S.P.Q.2d 1348 (2d Cir. 1997)
(preliminary injunction affirmed).

9 Germanow v. Standard Unbreakable Watch Crystals, 283 N.Y. 1, 10, 27 N.E.2d 212 (1940) (transparent paper
wrapping for watch crystals); Don Alvarado Co. v. Porganan, 203 Cal. App. 2d 377, 386, 21 Cal. Rptr. 495,
133 U.S.P.Q. 611 (3d Dist. 1962) (polyethylene bags for carrots. “[T]o uphold plaintiff's position here would
imply and prophesy a promise to enjoin any and every competitor of plaintiff with the temerity to market its
carrots in polyethylene bags with simulated meshes no matter how plainly differentiated by the brand and
trade names the two products might be. So to rule would not protect free competition; it would stifle it and
nurture monopoly.”); Price Food Co. v. Good Foods, Inc., 400 F.2d 662, 665, 159 U.S.P.Q. 16 (6th Cir. 1968)
(transparent plastic container for cheese spread. “We think the plastic container here involved is clearly
functional. Not only does it serve initially as a package for the cheese spread product, but it is reusable by the
purchaser ….”); Original Appalachian Artworks, Inc. v. Blue Box Factory (USA) Ltd., 577 F. Supp. 625, 631,
222 U.S.P.Q. 593 (S.D. N.Y. 1983) (transparent plastic window on a box containing a doll was unprotectable.
“The plastic front window on the boxes in which the dolls are sold is a commonly used, functional device for
displaying dolls.”); Storck USA, L.P. v. Farley Candy Co., Inc., 821 F. Supp. 524, 529, 26 U.S.P.Q.2d 1942
(N.D. Ill. 1993), aff'd, 14 F.3d 311, 29 U.S.P.Q.2d 1431 (7th Cir. 1994) (“transparent plastic window[s]”
are “clearly functional to display the individually wrapped candy pieces inside the respective packages”);
Malaco Leaf, AB v. Promotion In Motion, Inc., 287 F. Supp. 2d 355, 373 (S.D. N.Y. 2003) (transparent
cellophane window on candy package was functional and could not be part of any protectable trade dress.);
Seirus Innovative Accessories, Inc. v. Gordini U.S.A. Inc., 849 F. Supp. 2d 963, 987 (S.D. Cal. 2012) (the
packaging for wearing apparel serves a utilitarian advantage because it permits the purchaser to view the
product.”); Speare Tools, Inc. v. Klein Tools, Inc., 113 U.S.P.Q.2d 1800, 1806, 2014 WL 6473220 (E.D.
Wis. 2014) (Transparent clam shell packaging for a saw was functional and unprotectable.).

10 In re Oscar Mayer & Co., 189 U.S.P.Q. 295 (T.T.A.B. 1975). See Application of Swift & Co., 217 U.S.P.Q.
85 (T.T.A.B. 1982) (poultry package handle held functional, in part on utility patent).

11 Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 231 U.S.P.Q. 774 (Fed. Cir. 1986). See Cable Elec.
Prods. v. Genmark, Inc., 586 F. Supp. 1505, 223 U.S.P.Q. 291 (N.D. Cal. 1984), aff'd in part and vacated in
part, remanded, 770 F.2d 1015, 226 U.S.P.Q. 881 (Fed. Cir. 1985) (transparent “blister” plastic packaging
was held functional in that it allows the consumer to inspect the goods before sale; also, such packaging was
said to be in “general use” and cannot be a trademark or a foundation for a claim of unfair copying); In re
Peters, 6 U.S.P.Q.2d 1390 (T.T.A.B. 1988) (tray-like package with pockets for shipping pats of butter was
held functional); Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 31 U.S.P.Q.2d 1481 (8th Cir. 1994) (pillow-
shaped cellophane bag packaging for potpourri was held functional).

12 Walt Disney Co. v. GoodTimes Home Video Corp., 830 F. Supp. 762, 29 U.S.P.Q.2d 1047 (S.D.N.Y. 1993).

13 Bayline Partners L.P. v. Weyerhaeuser Co., 31 U.S.P.Q.2d 1051 (N.D. Cal. 1994) (preliminary injunction
denied).

14 International Latex Corp. v. Flexees, Inc., 281 A.D. 363, 119 N.Y.S.2d 409, 412, 96 U.S.P.Q. 450 (1st
Dep't 1953) (A cylindrical container is a common manner of merchandising products. “These practical and
utilitarian forms are the common and available property of merchants generally.” Defendant was not guilty
of unfair competition for its use of cylindrical containers for girdles in competition with plaintiff's cylindrical
container for girdles.); In re International Playtex Corporation, 155 U.S.P.Q. 745, 1967 WL 7302 (T.T.A.B.
1967) (Cylindrical tube for girdles is not registerable. “A cylindrical tube is the antithesis of a distinctive
shape for tubes have been used from ancient times until the present as receptacles. Hundreds of items are
packaged in cylindrical tubes in the nature of cans and the like.”); In re Mars, Inc., 105 U.S.P.Q.2d 1859,
1866–1869, 2013 WL 326569 (T.T.A.B. 2013) (The design of a pet food container was held functional, not

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inherently distinctive and was not registerable. The cylindrical container was “a common basic shape” and
“essentially a very basic design for an inverted can.”).

Compare In re Kaiser Aluminum & Chemical Corporation, 160 U.S.P.Q. 693, 1969 WL 9019 (T.T.A.B.
1969) (Cylindrical container with octagonal ends for aluminum foil can be registered on the Supplemental
Register. “[T]he overall configuration of applicant's package is ‘capable,’ and we decide no more than that,
of distinguishing applicant's goods.”).

15 Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 207 U.S.P.Q. 465 (1st Cir. 1980).

16 Talking Rain Beverage Co. Inc. v. South Beach Beverage Co., 349 F.3d 601, 68 U.S.P.Q.2d 1764 (9th Cir.
2003) (summary dismissal and cancellation of registration were affirmed). See Sazerac Co. v. Skyy Spirits
Inc., 37 U.S.P.Q.2d 1731, 1995 WL 814250 (E.D. La. 1995), aff'd, 95 F.3d 53 (5th Cir. 1996) (A vodka bottle
in blue cobalt cannot be protected as trade dress because of “many other alcohol products, including vodka,
that use a cobalt blue bottle.”); Nora Beverages, Inc. v. Perrier Group of America, Inc., 269 F.3d 114 n.4, 60
U.S.P.Q.2d 1038 (2d Cir. 2001) (1.5 liter clear, ribbed polyethylene bottle for spring water was “generic,”
but could as well have been found to be “functional”).

17 Perk Scientific Inc. v. Ever Scientific Inc., 77 U.S.P.Q.2d 1412, 2005 WL 851078 (E.D. Pa. 2005) (all four
of the alleged elements of trade dress were held to be functional and unprotectable: case dismissed for lack
of federal subject matter jurisdiction).

18 See §§ 7:91, 7:94. See Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, 741 F. Supp. 2d 1165 (C.D.
Cal. 2010) (Granting preliminary injunction against infringement of combination of elements of trade dress
in the FIJI mineral water bottle, including the elements of a square bottle with a blue cap with a depiction
of hibiscus and palm fronds.).

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1 McCarthy on Trademarks and Unfair Competition § 7:88 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

F. FUNCTIONALITY OF PACKAGING MATERIALS AND COLORS

§ 7:88. Color as a functional feature

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

A color of a product may be functional. For example, amber-colored mouthwash can functionally signify an unflavored,
medicinal-tasting product.1 Brown as a color for ice cream functions to indicate it is chocolate flavored.2 The instances when
color becomes a functional and unprotectable element is discussed elsewhere in this treatise.3

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Warner Lambert Co. v. McCrory's Corp., 718 F. Supp. 389, 12 U.S.P.Q.2d 1884 (D.N.J. 1989) (amber color
of LISTERINE was functional: "[T]he amber color has taken on a particular significance in the mouthwash
industry. An amber liquid signifies an unflavored, medicinal mouthwash. … Thus, Warner-Lambert can
have no monopoly on the use of an amber color for unflavored mouthwash.").

2 Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197, 70 U.S.P.Q.2d 1707, 64 Fed. R. Evid.
Serv. 617 (11th Cir. 2004), cert. denied, 125 S. Ct. 911, 160 L. Ed. 2d 777 (U.S. 2005) (The district court
properly took judicial notice of the fact that color indicates flavor of ice cream.).

3 See discussion at § 7:49. See also § 7:52 (Color as a generic or descriptive Designation); § 11:41 (Color as
a Style or Grade Designation).

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1 McCarthy on Trademarks and Unfair Competition § 7:89 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

G. UTILITY PATENTS

§ 7:89. The 2001 Traffix case: utility patent is strong evidence of functionality

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

A Utility Patent is Strong Evidence of Functionality. In the 2001 Traffix case, the U.S. Supreme Court held that: “A utility
patent is strong evidence that the features therein claimed are functional.”1 To emphasize this point, the Court repeated the
phrase “strong evidence” four times in the opinion.2 As Judge Easterbrook remarked, deciding whether a design is functional
or not is “tricky,” but the rule in Traffix makes the task somewhat easier: “Utility patents serve as excellent cheat sheets because
any design claimed in a patent is supposed to be useful.”3

The Patent in Traffix. In Traffix, the Court held that because the dual spring design of the plaintiff's alleged trade dress was
disclosed and claimed in a utility patent, it was proven to be functional and was incapable of protection as trade dress.4 There,
the plaintiff had obtained in 1972 two related utility patents in a portable sign featuring two coil springs positioned between the
stand and the sign. One of the utility patents claimed “a pair of spaced apart coil springs” positioned between the stand and the
sign. The springs allowed the sign to bend almost flat with the wind and return to an upright position. The patent specification
disclosed that the advantage of the dual spring design over the use of one spring was to prevent twisting of the sign when bent
down by the wind.5 If the sign twisted and was blown over by the wind, motorists could not see the sign and would be not
warned of dangerous conditions ahead, with possibly tragic results.

Differences Between the Patent and the Trade Dress One of the patent claims claimed as an element “a pair of spaced apart
coil springs.” This was illustrated in a patent drawing as items 16 and 18 as shown in Fig. 7:89A. However, the embodiment in
which plaintiff claimed trade dress was a different looking design which had the dual coil springs placed close together at one
corner of the sign, as shown in Fig. 7:89B. The defendant's accused sign also had dual coil springs placed close together at one
corner of the sign, as shown in Fig. 7:89C. After the plaintiff's utility patents expired in 1989, defendant began selling a copy of
the new embodiment that plaintiff was using: the close together dual spring design. (Fig. 7:89C) Plaintiff argued that the patent
covering a “spaced apart” pair of springs was not evidence of the functionality of a design with close together dual springs.

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Both the trial court and the Supreme Court rejected this argument. The argument was rejected primarily because in earlier patent
litigation, plaintiff had successfully argued that a third party's close togther spring design was a patent infringement under the
doctrine of equivalents. The Supreme Court concluded that: “In light of this past ruling—a ruling procured at [plaintiff's] own
insistence—it must be concluded the products here at issue would have been covered by the claims of the expired patents.”6

Fig. 7:89A. SPACED APART DUAL SPRING SIGN AS SHOWN IN PATENT

Fig. 7:89B. CLOSE TOGETHER DUAL SPRING DESIGN ALLEGED AS PLAINTIFF'S TRADE DRESS

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Fig. 7:89C. DEFENDANT'S ACCUSED CLOSE TOGETHER DUAL SPRING DESIGN

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§ 7:89. The 2001 Traffix case: utility patent is strong..., 1 McCarthy on...

Look to All Parts of a Utility Patent. The Supreme Court did not limit the evidentiary weight of the utility patent to what
appeared in the patent claims. Rather, the Court looked also to disclosures made in the patent specification7 and to representations
made by applicant in the file history of the patent.8 The Supreme Court specifically noted that: “The inquiry into whether such
features, asserted to be trade dress, are functional by reason of their inclusion in the claims of an expired utility patent could be
aided by going beyond the claims and examining the patent and its prosecution history to see if the feature in question is shown
as a useful part of the invention.”9 Thus, while the Court continually talked about the evidentiary weight of what appeared in
the patent claims, in fact the Court did not restrict the evidentiary use of a utility patent to its claims. The Supreme Court used
both disclosures in the specification and argument made in the prosecution history as persuasive evidence of functionality.10

Non-Functional Features in Patent Claims? It was perhaps the Court's compression of a patent claim and a patent specification
that led to some perplexing observations by Justice Kennedy, who spoke for the Court. After stating that the appearance of a
feature in a patent claim is strong evidence of its functionality, the Court carved out an exception:

In a case where a manufacturer seeks to protect arbitrary, incidental, or ornamental aspects of features of a product
found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, a
different result might obtain. There the manufacturer could perhaps prove that those aspects do not serve a purpose
within the terms of the utility patent.11

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The problem with this observation is that nonfunctional elements should not appear and do not appear in patent claims. The
“specification” of a patent discloses and describes; the “claims” define the scope of the invention.12 Things such as “arbitrary
curves” and a painted “ornamental pattern” have no business appearing in a patent claim. Such nonfunctional elements cannot
properly delimit the scope of a utility patent.13 However, such things are commonly disclosed in the specification of a patent.
In the author's view, the Supreme Court confused a patent claim with a patent disclosure.14 Therefore, the Court must have
been referring to nonfunctional features that appear in a patent disclosure. Prior case law cautions that a utility patent must
be examined in detail to determine whether the disclosed configuration is really primarily functional or is just a nonfunctional
shape that happens to be described or pictured as an incidental detail in a patent disclosure.

Patents from a Foreign Nation. The Trademark Board held that a Japanese utility model application was relevant and admissible
as evidence in determining the functionality of the configuration of an engine claimed as a trademark in an application for U.S.
trademark registration.15

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 30, 149 L. Ed. 2d 164, 58 U.S.P.Q.2d 1001
(U.S. 2001), on remand to, 2001 WL 630049 (6th Cir. 2001).

2 At a fifth point, the court used the similar phrase “strong evidentiary inference of functionality.” 121 S. Ct.
at 1260. Of course, the Supreme Court did not say that the absence of the contested feature in a patent was
strong evidence of nonfunctionality. Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197,
70 U.S.P.Q.2d 1707, 64 Fed. R. Evid. Serv. 617 (11th Cir. 2004), cert. denied, 125 S. Ct. 911, 160 L. Ed.
2d 777 (U.S. 2005).

3 Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 857, 96 U.S.P.Q.2d 1404 (7th Cir. 2010) (The utilitarian
advantages of the circular shape of a beach towel were disclosed in a utility patent and in advertising.).
See Flexible Steel Lacing Company v. Conveyor Accessories, Inc., 955 F.3d 632, 644, 646, (7th Cir. 2020)
(Quoting the “cheat sheet” metaphor and finding that plaintiff's “utility patent discloses the utilitarian
benefits of the beveled center scallop and is strong evidence of the functionality of [plaintiff's] trade dress.”
Plaintiff's contestable registration created a presumption of non-functionality but once the challenger showed
“strong evidence of functionality,” then the plaintiff carried a “heavy burden” to show non-functionality.
Affirmed summary judgment that conveyor belt fastener design was functional.).

4 “The rule we have explained bars the trade dress claim, for [plaintiff] did not, and cannot, carry the burden
of overcoming the strong evidentiary inference of functionality based on the disclosure of the dual- spring
design in the claims of the expired patents.” 532 U.S. at 30.

5 U.S. Patent No. 3,646, 696, Specification column 3, lines 7-9 (“The use of a pair of springs 16, 18 as opposed
to the use of a single spring to support the frame structure prevents canting or twisting of the sign around
a vertical axis. The frame structure is constrained to deflect in the manner illustrated in FIG. 2 rather than
twisting which may cause damage to the spring structure and may result in tipping of the device.”).

6 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 30, 121 S. Ct. 1255, 149 L. Ed. 2d 164, 58
U.S.P.Q.2d 1001 (2001) (“The dual springs shown in the Sarkisian patents were well apart (at either end of
a frame for holding a rectangular sign when one full side is the base) while the dual springs at issue here are
close together (in a frame designed to hold a sign by one of its corners). … [T]his makes little difference.
The point is that the springs are necessary to the operation of the device.”).

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7 “As the specification of one of the patents recites… . For example, the specifications of the patents note
that… .” 532 U.S. at 31. See cases following this rule cited at § 7:89.30.

8 “ In the course of patent prosecution, it was said that ‘[t]he use of a pair of spring connections as opposed
to a single spring connection … forms an important part of this combination’… .” 532 U.S. at 31.

9 532 U.S. at 34.

10 ASICS Corp. v. Target Corp., 282 F. Supp. 2d 1020, 67 U.S.P.Q.2d 1835 (D. Minn. 2003), reconsideration
denied, 2003 WL 22005602 (D. Minn. 2003) (the structure of a sports shoe was specifically touted for its
usefulness in both the specification and prosecution history of a patent owned by plaintiff: the structure was
found to be probably functional and a preliminary injunction denied.); In re Becton, Dickinson and Co.,
675 F.3d 1368, 1375, 102 U.S.P.Q.2d 1372 (Fed. Cir. 2012) (“Indeed, Traffix teaches that statements in a
patent's specification illuminating the purpose served by a design may constitute equally strong evidence of
functionality.”). See cases on this point cited at § 7:89.30.

11 532 U.S. at 34.

12 The “specification” is that part of a patent (and its application) which precedes the claims and in which
the inventor specifies, describes and discloses the invention in detail. McCarthy, Schechter and Franklyn,
McCarthy's Desk Encyclopedia of Intellectual Property, “Specification,” p. 562 (3d ed. 2004).

13 It is the role of the disclosure portion of the specification, not of the claims, to describe the invention.
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1575, 1 U.S.P.Q.2d 1081, 1088 (Fed. Cir.
1986).

14 Fuji Kogyo Co., Ltd. v. Pacific Bay Intern., Inc., 461 F.3d 675, 79 U.S.P.Q.2d 1894, 2006 FED App. 0312P
(6th Cir. 2006), cert. denied, 127 S. Ct. 1373 (U.S. 2007) (Court did not take literally the Supreme Court's
mention of a patent “claim.” The Sixth Circuit used the specification of a patent to find functional the design
of fishing rod line guides which had been the subject of utility patents.); In re Howard Leight Industries,
LLC, 80 U.S.P.Q.2d 1507, 2006 WL 1968605 (T.T.A.B. 2006) (All parts of a utility patent, including both
claims and disclosure, are relevant evidence of functionality.).

15 Kohler Co. v. Honda Giken Kogyo K.K., 125 U.S.P.Q.2d 1468, 1478, 2017 WL 6547628 (T.T.A.B. 2017)
(The T.T.A.B. held that the engine configuration was unregisterable as functional. The Japanese utility model
application that was filed by the applicant for a U.S. trademark registration supported the finding that one
part of the engine design was dictated by functionality.).

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1 McCarthy on Trademarks and Unfair Competition § 7:89.30 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

G. UTILITY PATENTS

§ 7:89.30. Evidentiary weight of utility patent as evidence of functionality

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

Pre-Traffix: Strong Evidence of Functionality. Even prior to the Supreme Court's 2001 decision in Traffix, courts uniformly
held that the existence of a functional patent disclosing the utilitarian advantages of the configuration in question was very
strong evidence of the functionality of the configuration in which trademark or trade dress significance was alleged.1 As the
Ninth Circuit observed: “[T]he existence of an expired utility patent is weighty evidence of functionality, although that fact
alone is not dispositive.”2

The 2001 Traffix Rule: The Presumption of Functionality. In its 2001 Traffix decision, the Supreme Court characterized the
1999 amendment to Lanham Act § 43(a) as a "statutory presumption that features are deemed functional until proved otherwise
by the party seeking trade dress protection.”3 This means that even if the plaintiff has an incontestable registration, if there is a
relevant utility patent showing the design, a "heavy burden" is imposed on the plaintiff to prove that the design is not functional.4

Under the Traffix precedent, all parts of a utility patent—claims, disclosure and prosecution history—are relevant evidence of
functionality.5

Not Everything Appearing in a Utility Patent is Functional. In the Best Lock case,6 the Court of Customs and Patent Appeals
held that a “figure eight” lock configuration was not registrable as a trademark because its functionality was proven by the
existence of a valid functional patent on the shape. Fig. 7:89.30A shows the mark sought to be registered as a trademark, while
Fig. 7:89.30B shows a drawing from an expired patent issued to the trademark applicant's predecessor. In affirming summary
judgment to the opposer of registration of the configuration, the court held that the expired utility patent, which explicitly
disclosed the functional advantages of the figure eight lock design, “incontrovertibly establishes primary functionality.”
However, the court was careful to note that not every configuration disclosed in a functional patent is automatically classed
as primarily functional:

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[A] patent may not be evidence of functionality in regard to things of a “purely arbitrary” or “mere design” nature
which happen to be disclosed in the patent but which are not attributed any functional significance therein.7

Fig. 7:89.30A. MARK SOUGHT FOR REGISTRATION

Fig. 7:89.30B. LOCK AS SHOWN IN UTILITY PATENT DRAWING

Therefore, a utility patent must be examined in detail to determine whether the disclosed configuration is really primarily
functional or just incidentally appears in the disclosure of a patent.8 There is no doubt that many nonfunctional shapes and
configurations happen to be described or pictured as an incidental detail in functional patents. For example, the Fourth Circuit
reversed a summary judgment of functionality of an embossed dot design on absorbent cloth-like material because the functional
patent did not disclose that particular design.9 The Seventh Circuit affirmed the trial court's excluding from jury consideration
drawings from utility patents that did not disclose any of the design features claimed as trade dress.10

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However, for the disclosure of a utility patent to evidence functionality, the utilitarian advantage of a particular element need
not be explicitly spelled out. For example, in the Disc Golf case, plaintiff claimed trade dress rights in the parabolic shape of
a basket of hanging chains which served as a target to catch a flying disc in a game of “Disc Golf.”11 The Ninth Circuit found
that the plaintiff's expired utility patent, while not explicitly mentioning the parabolic shape, did serve as weighty evidence
of functionality. A parabolic shape necessarily resulted from the hanging structure disclosed and the shape was shown in the
patent drawings.

Comparing the Design in the Patent and the Design Claimed to be a Trademark. One must distinguish between that version
of the product which is outlined in the patent and that version of the product which is actually on the market and which forms
the basis of the trade dress or trademark claim. The Federal Circuit has cautioned that use of a utility patent as evidence of
functionality to defeat an alternative trademark or trade dress count must be applied with caution, since the patent claims may
differ from the actual marketplace design of plaintiff's article that is the basis of the trade dress claim.12 However, the design
disclosed in a utility patent specification and claims need not match exactly the design claimed as trade dress in order to be
relevant evidence of functionality.13

The Trademark Board compared the disclosure of a utility patent to the elements of trade dress to find that the patent was prima
facie evidence that the design registered as a trademark in a concrete bridge arch was functional and the registration invalid.
Shown in Fig. 7:89.30C, is an illustration of the patent on the left and the drawing of the alleged trade dress on the right. After
making a detailed, point by point comparison of the design in the registered mark with the claims and disclosure of the patent,
the Board concluded: “[E]ach of the elements comprising the trademark is an essential element of the patent.”14 The Board
noted that the fact that the trademark registration lacked the specific geometric ratios of the utility patent did “not somehow
magically transform the combination of functional features, as shown by the utility patent, into an indicator of source.”15

Fig. 7:89.30C. PATENT DRAWING AND TRADEMARK DRAWING COMPARED

Image 3 within document in PDF format.

The Seventh Circuit said it was proper for the trial court to find that four expired utility patents disclosed every aspect but one
of plaintiff's alleged folding chair trade dress and that one aspect of the design was merely a functional improvement.16

Consider all Parts of a Utility Patent. The Supreme Court in its 2001 Traffix precedent made it clear that all parts of a utility
patent (disclosure, specification, file history and claims) can be used as evidence of functionality.17 All courts follow this rule.18
The Trademark Board has held that each embodiment of the invention described in a utility patent is equally functional for
purposes of trademark law.19

The Design in the Patent Need Not be Identical to the Alleged Trade Dress. To be relevant, the functionality evidenced by
a utility patent must be relevant to the design feature claimed to constitute valid trade dress. However, in order to constitute
relevant evidence of functionality, the design disclosed in a utility patent specification or claims need not match exactly the
design claimed as trade dress.20 The Supreme Court in the Traffix case made it clear that to be relevant evidence of functionality,
the design shown in the patent need not be identical to the design asserted to be valid trade dress. There, the Supreme Court
held that even though the patent disclosed a sign with two springs spaced apart, it was evidence of the functionality of a sign
with two springs placed close to each other.21

The Claimed Trade Dress Need Not Infringe the Utility Patent Claims to be Functional. Relevance does not require proof that
a claim of the patent would “read on” the claimed trade dress in the sense that the trade dress design would infringe under the law
of patents.22 The reason that a utility patent is relevant to the trademark or trade dress functionality issue is not its enforceability
as a patent, but for its use as a piece of evidence of utility to trigger the presumption of functionality. As the Seventh Circuit

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remarked, proof that the trade dress infringes a patent is not necessary: “Functionality is determined by a feature's usefulness,
not its patentability or its infringement of a patent.”23

Who is the Owner of the Utility Patent? While a functional patent is evidence of functionality regardless of who owned the
patent,24 this evidence is particularly entitled to great weight if the patent was applied for by the same person who now asserts
trademark significance in the same configuration. A kind of estoppel arises. That is, one cannot argue that a shape is functionally
advantageous in order to obtain a utility patent and later assert that the same shape is nonfunctional in order to obtain trademark
protection.25 Functional patent protection and trademark protection are mutually exclusive.26 As one court stated, when the
configuration is disclosed in a functional patent, and the patent expires, the public “now has its inning.”27

Product Shape Made by a Patented Process. In the SHREDDED WHEAT case, the Supreme Court said that a product made
in a certain shape by a patented manufacturing process passes into the public domain when the patent expires:

The plaintiff has not the exclusive right to sell shredded wheat in the form of a pillow-shaped biscuit—the form in
which the article became known to the public. That is the form in which shredded wheat was made under the basic
patent. The patented machines used were designed to produce only the pillow-shaped biscuits. … Hence, upon
expiration of the patents, the form … was dedicated to the public. … Kellogg Company was free to use the pillow-
shaped form, subject only to the obligation to identify its product lest it be mistaken for that of the plaintiff.28

The Court of Customs and Patent Appeals has held that even a nonfunctional product feature or shape that is the necessary
result of a patented process of manufacture cannot be monopolized as a trademark, for the product partakes of the functionality
of the process: “[W]hen the patent expires, freedom to utilize that process and whatever advantages it may have is a public
right which cannot be interfered with by alleged trademark rights.”29 Where the form of an article manufactured by a patented
process is dictated by the process, when the patent expires, anyone is entitled to use that process. If the process inevitably
produces the form of the article, then no one can claim exclusive trademark or trade dress rights in that form, even if that form
itself is nonfunctional.30

However, the Fourth Circuit reversed a summary judgment of functionality of an embossed dot design on absorbent cloth-like
material even through the plaintiff owned a patent for a process that produced an embossed pattern as a result of use of the
process.31 Similarly, the Third Circuit held that a process patent was not evidence of the functionality of a product made by
the process.32

“Stretching” a Utility Patent with Trade Dress? Once a utility patent expires, the patentee no longer has an exclusive right to
make, use and sell products that were covered by that patent.33 The Federal Circuit explained why it is unacceptable to define
an alleged trade dress as coextensive with the scope of a utility patent. An injunction enforcing such a functional design as
protectable “trade dress” would improperly extend the life of the patent after it expired: “[E]xtending trademark/trade dress law
to protect functional features might create perpetual, patent-like rights in unpatented or unpatentable items.”34 As the Supreme
Court observed: “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).”35 Discussion of the “stretching” argument in the context of a design patent is found in § 7:91.

Is the Patent Existing or Expired? Whether the utility patent in evidence is still alive or has expired, is of no significance to
its evidentiary weight as to functionality of the configuration at issue.36 Similarly, whether the patent was issued before or after
the launch of the claimed trademark or trade dress is not determinative.37

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Abandoned Patent Application. The Federal Circuit has held that a utility patent application that was rejected by the PTO under
§ 103 and then abandoned can be considered as evidence of functionality.38

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Second Circuit
Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F. Supp. 670, 137 U.S.P.Q. 413 (S.D. N.Y. 1963) (cigarette
lighter shape disclosed in expired patent; shape not protectable under unfair competition law); Atlantis
Silverworks, Inc. v. 7th Sense, Inc., 42 U.S.P.Q.2d 1904 (S.D.N.Y. 1997) (“[E]ach of the elements which
together constitute plaintiff's claimed trade dress—the catch mechanism, the PVC mini-disk and the seed
beads—are described in the patent's specification and in the patent claims as functional elements in the ring.”
The ring design was held to be functional.)
Federal Circuit
Application of Shenango Ceramics, Inc., 53 C.C.P.A. 1268, 362 F.2d 287, 150 U.S.P.Q. 115 (1966) (under-
rim dish shape disclosed in utility patent as functional and thus barred from registration as a trademark);
Mine Safety Appliances Co. v. Electric Storage Battery Co., 56 C.C.P.A. 863, 405 F.2d 901, 160 U.S.P.Q.
413 (1969) (utility patent relied on in part to find functionality of hard hat design)
Trademark Board
In Re Caterpillar Inc., 43 U.S.P.Q.2d 1335, 1997 WL 424965 (T.T.A.B. 1997) (“The fact that the utility patent
discloses the utilitarian advantages of applicant's elevated sprocket configuration design is strong evidence
of the de jure functionality of the configuration in which applicant alleges trademark significance.”)
2 Disc Golf Ass'n Inc. v. Champion Discs, Inc., 158 F.3d 1002, 48 U.S.P.Q.2d 1132 (9th Cir. 1998) (utility
patent found to be strong evidence in support of finding of functionality).

3 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 121 S. Ct. 1255, 1260, 149 L. Ed. 2d 164,
58 U.S.P.Q.2d 1001 (2001), on remand to, 11 Fed. Appx. 547 (6th Cir. 2001). See Invisible Fence, Inc.
v. Perimeter Technologies, Inc., 2007 WL 273129 (N.D. Ind. 2007) (Utility patent created presumption of
functionality and plaintiff could not rebut the presumption. Summary judgment for defendant.); Jay Franco
& Sons, Inc. v. Franek, 615 F.3d 855, 861, 96 U.S.P.Q.2d 1404 (7th Cir. 2010) (Circular beach towel shape
which was the subject of an incontestable registration was found to be functional and invalid under the Traffix
rule. “[A]ny holes in the evidence are filled by the TrafFix presumption that Franek's mark is functional, a
presumption he has failed to rebut.”).

4 Eco Mfg. LLC. v. Honeywell Intern., Inc., 357 F.3d 649, 69 U.S.P.Q.2d 1296 (7th Cir. 2003), reh'g denied,
(Jan. 21, 2004) (affirming denial of preliminary injunction to Honeywell, the owner of an incontestable
registration for a round shaped thermostat.). See Fuji Kogyo Co., Ltd. v. Pacific Bay Intern., Inc., 461
F.3d 675, 79 U.S.P.Q.2d 1894, 2006 FED App. 0312P (6th Cir. 2006), cert. denied, 127 S. Ct. 1373
(U.S. 2007) (finding functional the design of fishing rod line guides which had been the subject of utility
patents); CTB, Inc. v. Hog Slat, Inc., 954 F.3d 647 (4th Cir. 2020) (After its utility patent on a poultry
feeding apparatus expired, the patent owner registered the design trade dress as a trademark and sued for
infringement. Defendant rebutted the presumption of validity of the contestable registration and the mark
was held functional, the court pointing to the utility patent as persuasive evidence of functionality.); Flexible
Steel Lacing Company v. Conveyor Accessories, Inc., 955 F.3d 632, 643–644, (7th Cir. 2020) (Plaintiff's
contestable registration created a presumption of non-functionality but once the challenger showed “strong
evidence of functionality,” then the plaintiff carried a “heavy burden” to show non-functionality. Affirmed
summary judgment that conveyor belt fastener design was functional.).

5 See discussion later in this section and at § 7:89.

6 Best Lock Corp. v. Schlage Lock Co., 413 F.2d 1195, 162 U.S.P.Q. 552 (C.C.P.A. 1969).

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7 Best Lock Corp. v. Schlage Lock Co., 413 F.2d 1195, 162 U.S.P.Q. 552 (C.C.P.A. 1969).

8 See, e.g., Black & Decker, Inc. v. Hoover Service Center, 886 F.2d 1285, 12 U.S.P.Q.2d 1250 (Fed. Cir.
1989) (lower court erroneously misread a utility patent to conclude that it disclosed the functional nature of
the external shape of plaintiff's hand-held vacuum cleaner; denial of preliminary injunction was reversed);
Dogloo, Inc. v. Doskocil Mfg. Co., 893 F. Supp. 911, 35 U.S.P.Q.2d 1405 (C.D. Cal. 1995) (igloo shape
claimed as trade dress and disclosed in a utility patent is not evidence of functionality because in the patent
the igloo shape was not disclosed as having functional significance); Sunbeam Prods. Inc. v. West Bend
Co., 123 F.3d 246, n.20, 44 U.S.P.Q.2d 1161, 1169 n.20 (5th Cir. 1997) (quoting this treatise); Logan
Graphic Products, Inc. v. Textus USA, Inc., 67 U.S.P.Q.2d 1470, 2003 WL 21011746 (N.D. Ill. 2003) (utility
patents did not cover the elements claimed as trade dress and were not evidence of functionality: preliminary
injunction was granted); ASICS Corp. v. Wanted Shoes Inc., 75 U.S.P.Q.2d 1303, 2005 WL 1691587 (C.D.
Cal. 2005) (utility patents on sports shoe were not evidence of functionality because they had no relation to
trade dress in stripe design on the shoe); In re Udor USA Inc., 89 U.S.P.Q.2d 1978, 1982, 2009 WL 576139
(T.T.A.B. 2009) (Utility patent was not evidence of functionality because the new features claimed in the
patent did not relate to the round head of the irrigation nozzle shown in the trademark registration drawing.
But other evidence did prove functionality.).

9 McAirlaids, Inc. v. Kimberly-Clark Corp., 756 F.3d 307, 312, 111 U.S.P.Q.2d 1546 (4th Cir. 2014) (“In
contrast [to the Supreme Court Traffix case], McAirlaids's utility patents cover a process and a material, but
do not mention a particular embossing pattern as a protected element.”). Accord: Grote Industries, Inc. v.
Truck-Lite Co., LLC, 126 U.S.P.Q.2d 1197, 1206, 2018 WL 1557301 (T.T.A.B. 2018) (The utility patent
only “incidentally disclosed” the design, which was found not to be functional. “[N]owhere in the patent are
any advantages of the six-diode design specifically disclosed.”).

10 Bodum USA, Incorporated v. A Top New Casting Incorporated, 927 F.3d 486 (7th Cir. 2019) (“Permitting
the jury to view and consider the patents would cause confusion as to the appropriate inquiry.” Plaintiff
proved the non-functionality of unregistered trade dress in the design of a French press coffee maker. Court
affirmed jury verdict of infringement.).

11 Disc Golf Ass'n Inc. v. Champion Discs, Inc., 158 F.3d 1002, 48 U.S.P.Q.2d 1132 (9th Cir. 1998) (some
persons refer to a “flying disc” as a FRISBEE flying disc).

12 Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 226 U.S.P.Q. 881 (Fed. Cir. 1985).

13 In re Becton, Dickinson and Co., 675 F.3d 1368, 1375, 102 U.S.P.Q.2d 1372 (Fed. Cir. 2012) (“[The Supreme
Court's TrafFix case] does not require that a patent claim the exact configuration for which trademark
protection is sought in order to undermine an applicant's assertion that an applied-for mark is not …
functional. Indeed, TrafFix teaches that statements in a patent's specification illuminating the purpose served
by a design may constitute equally strong evidence of functionality.”); In re Creative Edge Design Group,
Ltd., 2019 WL 2371849, *5 (T.T.A.B. 2019) (The utility patent design need not be identical to the design
claimed as trade dress to provide evidence of functionality. Applicant's expired utility patent helped prove the
design was functional in that the shape was stackable and facilitated shipping without the need for encasing
the containers.).

14 Kistner Concrete Products, Inc. v. Contech Arch Technologies, Inc., 97 U.S.P.Q.2d 1912, 1923, 2011 WL
481339 (T.T.A.B. 2011) (“Given the heavy weight to be accorded such patent evidence under Traffix, we find
that the patents are sufficient to establish, prima facie, that the registered design as a whole is functional.”
The Supplemental Registration was cancelled.).

15 Kistner Concrete Products, Inc. v. Contech Arch Technologies, Inc., 97 U.S.P.Q.2d 1912, 1931, 2011 WL
481339 (T.T.A.B. 2011) (“[T]he patent shows that the features claim as respondent's trademark are essential
or integral parts of the invention and have utilitarian advantages.”).

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16 Specialized Seating, Inc. v. Greenwich Industries, LP, 616 F.3d 722, 726–727, 96 U.S.P.Q.2d 1580 (7th Cir.
2010) (“These patents disclose every aspect of the asserted trademark design except for the b-back. And the
district judge did not commit a clear error by concluding that the b-back design is a functional improvement
over the a-back design. This means that the trademark design is functional as a unit, and that every important
aspect of it is independently functional.”).

17 See discussion at § 7:89.

18 Seventh Circuit
Franek v. Walmart Stores, Inc., 2009 WL 674269, *12 (N.D. Ill. 2009), aff'd, 615 F.3d 855, 96 U.S.P.Q.2d
1404 (7th Cir. 2010) (“Courts may delve beyond the claims in the utility patents.”); Georgia-Pacific
Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723, 729, 99 U.S.P.Q.2d 1538 (7th Cir. 2011)
(“[W]e can readily discern the scope and content of the utility patents at issue from the drawings,
specifications, and claims ….”)
Federal Circuit
In re Becton, Dickinson and Co., 675 F.3d 1368, 1375, 102 U.S.P.Q.2d 1372 (Fed. Cir. 2012) (“Indeed,
Traffix teaches that statements in a patent's specification illuminating the purpose served by a design may
constitute equally strong evidence of functionality.”)
Trademark Board
In re Rolf Dietrich, 91 U.S.P.Q.2d 1622, 1627, 2009 WL 2138978 (T.T.A.B. 2009) (The T.T.A.B. is not
limited to examination of the patent claims and can consider the disclosure. Bicycle wheel spoke pattern held
functional because disclosed in utility patents.); In re Change Wind Corp., 123 U.S.P.Q.2d 1453, 1460, n.7,
2017 WL 3446786 (T.T.A.B. 2017) (“[W]e may look to the disclosures as well as the claims in a utility patent
to determine functionality.”); Grote Industries, Inc. v. Truck-Lite Co., LLC, 126 U.S.P.Q.2d 1197, 1205,
2018 WL 1557301 (T.T.A.B. 2018) (“We consider the entirety of a patent—both claims and disclosures….”
Here, the utility patent only “incidentally disclosed” the design, which was found not to be functional.);
Mcgowen Precision Barrels, LLC v. Proof Research, Inc., 2021 WL 2138663, *18 (T.T.A.B. 2021) (“[W]e
are not limited to the claims in a patent in determining functionality; we may also consider the disclosures
in the entire patent.” Patent was evidence of the functionality of appearance of rifle barrel.)
19 In re Edwards Ski Products Inc., 49 U.S.P.Q.2d 2001 (T.T.A.B. 1999) (“Although more than one embodiment
is described in the patent, the structural elements set forth in the claims of the invention and the resultant
utilitarian advantages, must be present in each of these embodiments.); In re Rolf Dietrich, 91 U.S.P.Q.2d
1622, 1633, 2009 WL 2138978 (T.T.A.B. 2009) (“The fact that the patents may encompass a wide variety of
[bicycle wheel] spoking patterns means only that the patents are broad in scope, not that applicant's particular
applied-for design is not functional.”).

20 In re Charles N. Van Valkenburgh, 97 U.S.P.Q.2d 1757, 1761, 2011 WL 165454 (T.T.A.B. 2011) (“The
fact that the proposed mark comprises less than the entirety of the invention claimed in the patent is
not dispositive.”); In re Becton, Dickinson and Co., 675 F.3d 1368, 1375, 102 U.S.P.Q.2d 1372 (Fed.
Cir. 2012) (“[The Supreme Court] does not require that a patent claim the exact configuration for which
trademark protection is sought in order to undermine an applicant's assertion that an applied-for mark is
not … functional.”); In re Creative Edge Design Group, Ltd., 2019 WL 2371849, *5 (T.T.A.B. 2019) (The
utility patent design need not be identical to the design claimed as trade dress to provide evidence of
functionality. Applicant's expired utility patent helped prove the container design was functional.); In re MK
Diamond Products, Inc., 2020 WL 4346886, *12 (T.T.A.B. 2020) (It is not necessary “that to be evidence of
functionality, the [patent] claims or specification must mention the exact configuration for which trademark
protection is sought. TrafFix made this clear…. The disclosures in such a patent may demonstrate that
utilitarian benefits are provided by a basic design feature irrespective of its specific shape.” Patent evidence
proved the functionality of a design of a circular saw blade,).

21 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 30, 121 S. Ct. 1255, 149 L. Ed. 2d 164, 58
U.S.P.Q.2d 1001 (2001) (“The dual springs shown in the Sarkisian patents were well apart (at either end of
a frame for holding a rectangular sign when one full side is the base) while the dual springs at issue here are
close together (in a frame designed to hold a sign by one of its corners). … [T]his makes little difference.

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The point is that the springs are necessary to the operation of the device.”). See discussion of the TrafFix
case and illustration of the two designs at § 7:89.

22 In re Bose Corp., 772 F.2d 866, 872, 227 U.S.P.Q. 1, 6 (Fed. Cir. 1985) (“[R]eadability of patent claims on
structure is not test of functionality for trademark purposes.”); Poly-America, L.P. v. Illinois Tool Works
Inc., 124 U.S.P.Q.2d 1508, 1519, 2017 WL 4687981, *14 (T.T.A.B. 2017) (Whether the design claimed to
be a trademark or trade dress would infringe the relevant utility patent “is irrelevant.”).

23 Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 858, 96 U.S.P.Q.2d 1404 (7th Cir. 2010) (“If an invention
is too useless to be patentable, or too dissimilar to a design to shed light on its functions, then the lack of
proof of patent infringement is meaningful. Otherwise it is irrelevant. A design may not infringe a patented
invention because the invention is obvious or taught by prior art, see 35 U.S.C. §§ 102(a), 103(a), but those
and other disqualifiers do not mean that the design is not useful.”).

24 In re Virshup, 42 U.S.P.Q.2d 1403 (T.T.A.B. 1997) (“The key is not who owns these patents, but rather
what they disclose.”); In re Rolf Dietrich, 91 U.S.P.Q.2d 1622, 1627, 2009 WL 2138978 (T.T.A.B. 2009)
(“[T]hird-party patents may be relied upon as evidence; a patent is potentially relevant if it covers the feature
at issue, regardless of the owner.”); Franek v. Walmart Stores, Inc., 2009 WL 674269, *12 (N.D. Ill. 2009),
aff'd, 615 F.3d 855, 96 U.S.P.Q.2d 1404 (7th Cir. 2010) (same); In re Mars, Inc., 105 U.S.P.Q.2d 1859,
1861-1865, 2013 WL 326569 (T.T.A.B. 2013) (Utility patents owned by others were used by the USPTO
examiner to show the utilitarian advantages of the design of a pet food container, which the Board held was
functional and not registerable.).

25 Fourth Circuit
CTB, Inc. v. Hog Slat, Inc., 954 F.3d 647, 667 (4th Cir. 2020) (Quoting treatise. Plaintiff's functional patent
disclosed that the color red attracted poultry to the feeder device. Plaintiff cannot now claim that red is a
non-functional component of its trade dress. “Plaintiff cannot now pivot and claim red does not perform that
function in order to assert its trade dress.” Summary dismissal of the trade dress claim affirmed.)
Ninth Circuit
Disc Golf Ass'n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1008, 48 U.S.P.Q.2d 1132 (9th Cir. 1998)
(Quoting treatise. Plaintiff cannot avoid a summary judgment of functionality by “contradicting an earlier
assertion contained in an expired utility patent that the same shape is functional.”)
Trademark Board
In re Howard Leight Industries, LLC, 80 U.S.P.Q.2d 1507, 2006 WL 1968605 (T.T.A.B. 2006) (Quoting
treatise. The functionality of the shape was evidenced by applicant's own expired utility patent.); Poly-
America, L.P. v. Illinois Tool Works Inc., 124 U.S.P.Q.2d 1508, 1514, 2017 WL 4687981, *7 (T.T.A.B.
2017) (Quoting treatise. Registrant's predecessor was the applicant in a utility patent and argued in the
prosecution history to the U.S.P.T.O. that the colored line on a plastic bag closure was functional and it was
included in a claim of the patent. This proved the utilitarian advantages of the design. Registrations were
cancelled.); Mcgowen Precision Barrels, LLC v. Proof Research, Inc., 2021 WL 2138663, *25 (T.T.A.B.
2021) (“Quoting treatise. “The patent evidence is entitled to even greater weight where, as here, Respondent,
owner of the '117 Patent, asserts entitlement to a trademark registration for the same configuration claimed
in its patent.” Design was functional and registration cancelled.)
26 See §§ 6:7 to 6:12 and 7:63 to 7:84. However, design patents and trademarks are not mutually exclusive.
See §§ 7:90 to 7:93.

27 Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F. Supp. 670, 695, 137 U.S.P.Q. 413 (S.D. N.Y. 1963)
(“Characterizing a feature of plaintiff's lighter as functional preserves that feature ‘in the public domain.’”).

28 Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 83 L. Ed. 73, 59 S. Ct. 109 (1938) (It can be argued that
the policy of the SHREDDED WHEAT case is that the utility patent on the manufacturing process is the sole
source of exclusive rights in the shape or appearance of products made by that process.). See discussion at
§ 6:11. Compare Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 46 U.S.P.Q.2d 1026 (7th Cir. 1998)
(the court distinguished Kellogg and Singer on the ground that those cases do say that upon expiration, the

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public can freely copy the shape of the patented product, but only if the shape was “dictated” by the patented
technology; this policy does not mean that the right to copy features disclosed in the specification of an
expired patent prevents possible trade dress protection); Midwest Industries, Inc. v. Karavan Trailers, Inc.,
175 F.3d 1356, 50 U.S.P.Q.2d 1672 (Fed. Cir. 1999) (narrowly reading the Singer and Scott cases to permit
trade dress protection for nonfunctional features disclosed and claimed in a utility patent).

29 In re Shakespeare Co., 289 F.2d 506, 508, 129 U.S.P.Q. 323 (C.C.P.A. 1961) (nonfunctional spiral relief
marking on fishing rod produced by a patented manufacturing process: “Were the spiral marking to be treated
as a trademark the holder of the trademark rights would have a potentially perpetual monopoly which would
enable it either to prevent others from using the process which results in the mark or force them, to go to
the trouble and expense of removing it.”). See Ex parte Jongleux, 101 U.S.P.Q. 77, 82 (Comm'r Pat. 1954)
(refusing trademark registration to corrugated pickle slices because the shape is the necessary result of using
a patented machine: “[S]ince the machine is designed to produced only the corrugated slices the corrugated
slice configuration will be dedicated to the public.”); Ex parte Stahmer, 111 U.S.P.Q. 346 (Comm'r Pat.
1956) (accord with Jongleux as to application for registration of the configuration of potato chips with holes
produced according to a patented process).

30 Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197, 70 U.S.P.Q.2d 1707, 64 Fed. R. Evid.
Serv. 617 (11th Cir. 2004), cert. denied, 125 S. Ct. 911, 160 L. Ed. 2d 777 (U.S. 2005) (the spherical
shape of an ice cream product was held functional because it was the necessary result of a patented flash
frozen process.); Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F.3d 723, 729, 99
U.S.P.Q.2d 1538 (7th Cir. 2011) (While the utility patents had method claims, they disclosed the utilitarian
benefits of the product design that was alleged to constitute a registered trademark. Affirmed finding of
functionality.).

31 McAirlaids, Inc. v. Kimberly-Clark Corp., 756 F.3d 307, 312, 111 U.S.P.Q.2d 1546 (4th Cir. 2014) (The
functional product and process patents did not disclose the particular embossed design that plaintiff had
registered as trade dress. “In contrast [to the Supreme Court Traffix case], McAirlaids's utility patents cover
a process and a material, but do not mention a particular embossing pattern as a protected element.”).

32 Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp., 986 F.3d 250, 260 (3d Cir. 2021), as
amended, (Mar. 10, 2021) (The process patent was not evidence of functionality because the product made
by the process was not “the central advance” of the patent. But other evidence proved that the product was
functional. Author's Comment: The patent not only disclosed a method but one claim covered the product
itself.).

33 Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185, 16 S. Ct. 1002, 41 L. Ed. 118 (1896) (On expiration
of a utility patent on a sewing machine, there passed to the public the right to make the machine in the form
in which it was covered by the patent. “It is self-evident that on the expiration of a patent the monopoly
created by it ceases to exist, and the right to make the thing formerly covered by the patent becomes public
property.”). See discussion at § 6:10.

34 Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1580, 36 U.S.P.Q.2d 1417 (Fed. Cir. 1995) (“[A trade dress
proponent] cannot, however, bypass the statutory requirements of the patent laws and obtain broadened
patent protection under the guise of trade dress law.”). See In Re Creative Edge Design Group, Ltd., 2019
WL 2371849, *9 (T.T.A.B. 2019) (“To afford registration to applicant's design would inhibit legitimate
competition by in effect extending the lifespan of its monopoly previously afforded by its now expired utility
patent.” Applicant's expired utility patent helped prove that a container design was functional.); CTB, Inc.
v. Hog Slat, Inc., 954 F.3d 647, 663 (4th Cir. 2020) (After plaintiff's utility patent expired, it obtained a trade
dress registration for the design. Court affirmed summary judgment that the trade dress was functional and
invalid. “Finding otherwise would create the exact issue the Supreme Court has repeatedly cautioned against
overextending patent law's monopoly on useful product features through the instrument of trade dress.”).

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35 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164–65, 115 S. Ct. 1300, 1304, 131 L. Ed. 2d
248, 34 U.S.P.Q.2d 1161 (1995).

36 The reason is that the information in the patent is relevant not for its enforceability as a patent, but for its
use as a piece of evidence to trigger the presumption of functionality. The patent in the Supreme Court
Traffix case was expired. See § 7:89. The patents considered in some C.C.P.A. cases were also expired: Best
Lock Corp. v. Schlage Lock Co., 56 C.C.P.A. 1472, 413 F.2d 1195, 162 U.S.P.Q. 552 (1969); Application
of Shenango Ceramics, Inc., 53 C.C.P.A. 1268, 362 F.2d 287, 150 U.S.P.Q. 115 (1966); Franek v. Walmart
Stores, Inc., 2009 WL 674269, *13 (N.D. Ill. 2009), aff'd, 615 F.3d 855, 96 U.S.P.Q.2d 1404 (7th Cir. 2010)
(Whether the utility patent is expired or not is irrelevant.).

Patents in other cases were still in effect and unexpired at the time of the decisions. In re Telesco Brophey
Limited, 170 U.S.P.Q. 427, 1971 WL 16780 (T.T.A.B. 1971); In re Oscar Mayer & Co. Inc., 189 U.S.P.Q.
295, 1975 WL 20936 (T.T.A.B. 1975); Invisible Fence, Inc. v. Perimeter Technologies, Inc., 2007 WL
273129 (N.D. Ind. 2007).

37 Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 859, 96 U.S.P.Q.2d 1404 (7th Cir. 2010) (“[A] design
patented yesterday can be as good evidence of a mark's functionality as a design patented 50 years ago.”).

38 Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 61 U.S.P.Q.2d 1422 (Fed. Cir. 2002) (“[A]n
applied-for utility patent that never issued has evidentiary significance for the statements and claims made
in the patent application concerning the utilitarian advantages, just as an issued patent has evidentiary
significance.”).

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1 McCarthy on Trademarks and Unfair Competition § 7:89.70 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

G. UTILITY PATENTS

§ 7:89.70. Does a Utility Patent Disclosure Preclude Trade Dress in a Non-Functional Element?

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

A question sometimes raised is whether an innovator-marketer must make a fundamental choice between federal patent law and
federal trade dress law. The issue is whether an element in a patent (either utility patent or design patent) constitutes an absolute
bar to later proof that that element is capable of protection as trade dress, regardless of whether that element is functional or not.
That is, is there a rule under which one must chose either the federal patent route or the federal trade dress route and may not
rely upon both forms of intellectual property? This issue is discussed in full at § 6:10. Only a quick summary is presented here.

The Tenth Circuit is the only court to hold that even a non-functional design cannot be protected as trade dress if the design was
an important component of a utility patent.1 The Federal and Seventh Circuits disagreed with the Tenth Circuit view.2 While the
Supreme Court in its 2001 TrafFix decision granted a hearing to decide the conflict, the Supreme Court did not in fact resolve
it.3 The Supreme Court found that it is the functionality rule that mediates conflicts between patent law and trade dress law.
On the facts in TrafFix, the Court held that plaintiff had not overcome the strong evidence of functionality that was provided
by its ownership of a utility patent that disclosed and claimed the feature in issue. Thus, while the Supreme Court left the issue
open, the message clearly implicit in the opinion is that the functionality rule is an adequate safeguard to ensure that there is no
conflict between patents and federal trade dress coverage.4 For this reason, the author believes that the Tenth Circuit's ruling
cannot survive after the Supreme Court's 2001 decision in TrafFix.

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

Footnotes
1 Vornado Air Circulation Systems, Inc. v. Duracraft Corp., 58 F.3d 1498, 1510, 35 U.S.P.Q.2d 1332 (10th
Cir. 1995) (The trade dress claim was based on Lanham Act § 43(a)).

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2 Midwest Industries, Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1362, 50 U.S.P.Q.2d 1672 (Fed. Cir. 1999);
Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 288, 46 U.S.P.Q.2d 1026 (7th Cir. 1998).

3 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 35, 121 S. Ct. 1255, 1259, 149 L. Ed. 2d 164,
58 U.S.P.Q.2d 1001 (2001) (“We need not resolve this question. If, despite the rule that functional features
may not be the subject of trade dress protection, a case arises in which trade dress becomes the practical
equivalent of an expired utility patent, that will be time enough to consider the matter.”).

4 See C5 Medical Werks, LLC v. CeramTec GmbH, 249 F. Supp. 3d 1210, 1215 n.4 (D. Colo. 2017), rev'd and
remanded on other grounds, 937 F.3d 1319 (10th Cir. 2019) (Traffix “never confronted” the Tenth Circuit's
ruling in Vornado. But this court assumed that Traffix did overrule Vornado because the Supreme Court
said that an expired utility patent did not “foreclose” the possibility of claiming trade dress in the patented
product design.).

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§ 7:90. Nature of a design patent, 1 McCarthy on Trademarks and Unfair Competition...

1 McCarthy on Trademarks and Unfair Competition § 7:90 (5th ed.)

McCarthy on Trademarks and Unfair Competition, Fifth Edition | May 2024 Update
J. Thomas McCarthy

Chapter 7. Trademark and Trade Dress Formats

IV. FUNCTIONALITY

H. DESIGN PATENTS AND TRADEMARKS

§ 7:90. Nature of a design patent

References

West's Key Number Digest

West's Key Number Digest, Trademarks 1064

The nature of the validity and infringement of design patents is discussed at § 6:11. Only a quick summary is repeated here.

Unlike Europe, the United States does not have a separate and distinct system of design protection. Rather, design protection
in the United States is inserted as part of the patent system.

Design patents protect non-functional, ornamental features which are non-obvious and appear in connection with an article of
manufacture. One purpose of design patents is to promote progress in the “decorative arts,” not progress in the utilitarian design
of technology. While a utility patent covers functional aspects, a design patent covers ornamental aspects. Thus, both a design
patent and a utility patent can cover different aspects of the same article, such as a mobile phone, kitchen appliance or table lamp.

A design patent is appropriate only for “industrial” design. It is not suitable for articles that are purely and only artistic such as
a photograph, a painting or a sculpture. It is appropriate for an ornamental design for utilitarian objects such as a microwave
oven, an athletic shoe or a watch face design.

Westlaw. © 2024 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.

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