Trademarks and Service Marks – Can they be registered if functional?

There are many nuances and specific factors that the U.S. Patent and Trademark Office (USPTO) considers when deciding if a trademark (which indicates the source of the goods or services) is a candidate for registration. Before you invest the time and money into your application, read the following:

Trademark applications can be refused for registration on various grounds, establishing that the mark does not function as a trademark. These grounds include trade names, functionality, ornamentation, informational matter, descriptiveness, color marks and goods in trade, amongst others.

Trade Name:
A trade name is often the name of a business or a company. The term, trade name means any name used by a person to identify his/her business or location. Whether a mark serves solely as a trade name rather than a trademark requires consideration of the way the mark is used, which is established upon review of the specimen (such as a label) submitted with the application by the USPTO.

Trade Dress:
Trade dress means the appearance or design of a product or its packaging. Trade dress can include features such as the size, shape, color or combinations of color, texture and graphics. Additionally, in some instances, trade dress can even include color, flavor, sound and odor. When a trademark application is filed, the examining attorney at the USPTO separately considers two substantive issues, namely (1) functionality and (2) distinctiveness.

Any trade dress which is functional cannot serve as a trademark. That is, if the trade dress is essential to the use or purpose of the article, or if it affects the cost or quality of the article, it is considered to be functional and is non-registerable. For example, the color yellow to denote a specific source of lawn equipment may function as trade dress and therefore be registerable. On the other hand, the color yellow for traffic signals or signage is essential to the functionality of the goods (e.g. alerts traffic to yield) and therefore will most likely not be registerable.

Functional trademarks cannot be registered due to the distinction between patent law and trademark law. Utilitarian products can be protected through utility patents that have a designated life, rather than through trademark registrations which could be unlimited in their life. Upon expiration of a utility patent, the invention enters the public domain.

  The examining attorney at the USPTO must review not only the content of the application but must also conduct independent research to determine if the mark is functional. The applicant then has the opportunity to rebut the examiner’s findings.

To determine whether a trademark is functional, the following factors are examined:
    (1) The existence of a utility patent on the product
    (2) Advertising showing utilitarian advantages of the trademark if it is a design
    (3) Facts relating to alternative designs
    (4) Facts indicating whether the design results from a relatively simple or inexpensive method of manufacture

While utility patents for the product are strong evidence that a trademark is functional, design patents indicate that the trademark is not functional. Aesthetic functionality relates not only to product performance, but rather to competitive advantages. For example, a black outboard motor was not registrable because it could be coordinated with a variety of boat colors.

Peter Hochberg is a partner in the Intellectual Property group at Walter | Haverfield. Peter can be reached at dphochberg@walterhav.com or at 216-928-2903.