CHAPTER 6 - § 6.02
| Jurisdiction | United States |
§ 6.02 SIGNIFICANT POST-TRAFFIX FUNCTIONALITY DECISIONS
In part because the Supreme Court did not set forth a clear multifactor test for determining functionality in TrafFix Devices, the circuit courts were left to their own devices (no pun intended) in the wake of the decision. Below is a selection of cases from around the country, showing examples of the different types of analyses applied by courts since TrafFix.
[1]—Federal Circuit—Valu Engineering and The Morton-Norwich Factors
In 2002, the Federal Circuit decided Valu Engineering v. Rexnord Corporation, holding that there was substantial evidence that a trade dress plaintiff's conveyor guide rails were functional and thus not protected by trade dress.12 Some examples of those guide rails are shown below:13
On February 25, 1993, Valu filed trademark applications seeking registration of its conveyor guide rail configurations in the three cross-sectional designs shown above.14 For each cross-sectional design, Valu specified the goods as "conveyor guide rails" and claimed that their design had acquired distinctiveness under 15 U.S.C. § 1052(f) (Section 2(f) of the Lanham Act)15 The examining attorney approved the applications for publication, and Rexnord filed Oppositions against each of the applications (which were consolidated into a single Opposition).16 In the Opposition, Rexnord alleged, inter alia, that all three guide rail designs were de jure functional and thus unregistrable.17 Rexnord's functionality argument focused on the rails' use in "wet" areas of bottling and canning plants.18 Rails in "wet" areas were frequently washed with disinfectants containing bactericides, such as chlorine, for sanitation and product spillage.19 Because of this, the rails were usually formed of non-corrosive materials, such as stainless steel and plastic.20 Rexnord contended that Valu's rail designs worked better in these types of "wet" areas and thus were functional.
The Trademark Trial and Appeal Board (TTAB, or Board) sustained Rexnord's Opposition, concluding that Valu's cross-sectional shapes were functional and not registrable.21 The Board analyzed the functionality of Valu's guide rail configurations by applying the factors outlined by the Court of Customs and Patent Appeals (CCPA) in In re Morton-Norwich Products.22 The Morton-Norwich factors included
1. The existence of a utility patent disclosing the utilitarian advantages of the design.
2. Advertising materials in which the originator of the design touts the design's utilitarian advantages.
3. The availability to competitors of functionally equivalent designs.
4. Facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.23
As noted, the TTAB's functionality analysis focused on the alleged utilitarian advantages of Valu's guide rail configurations as used in the so-called wet areas.24 The Board determined that all four Morton-Norwich factors weighed in favor of a finding of functionality. Specifically, the Board found that (1) Valu had an abandoned utility patent application that disclosed certain utilitarian advantages of the guide rail designs, which resulted from the shape of the guide rail designs; (2) Valu's advertising materials touted the utilitarian advantages of the guide rail design; (3) there were a limited number of basic guide rail designs; and (4) the guide rail designs resulted in a comparatively simple or cheap method of manufacture.25 Accordingly, the Board sustained Rexnord's Opposition and refused to register Valu's guide rail designs.26
Valu appealed the functionality ruling to the Federal Circuit, which affirmed.27 The Valu Engineering case represented the Federal Circuit's first chance to analyze functionality in light of the recent Supreme Court decision in TrafFix Devices. The Federal Circuit first analyzed the place of the functionality doctrine in trade dress law, then evaluated the status of the traditional Morton-Norwich factors in light of the TrafFix Devices decision.28 In order to determine how the functionality doctrine fit into trade dress law, the court looked to Qualitex and considered the coexistence of trade dress and patent protection for the same products:29
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).30
With this in mind, the Federal Circuit went on to explain that the literal definition of "functionality" did not necessarily apply to a trademark or trade dress analysis,31 opining: "Our decisions distinguish de facto functional features, which may be entitled to trademark protection, from de jure functional features, which are not."32 The court defined "de facto functional" as meaning that the design of a product had a function (i.e., in the way that a bottle of any design is functional in holding fluid).33 The court explained that this type of de facto functionality does not necessarily defeat registrability.34 On the other hand, the court defined "de jure functionality" as meaning that a product has a particular shape "because it works better in this shape" (e.g., a bottle of a particular shape that is easier to grip).35
Having considered functionality at a conceptual level, the court then considered the effect of the recent TrafFix Devices decision on the standard for functionality, ultimately finding that the decision did not disturb or otherwise change the test of Morton-Norwich:36
We do not understand the Supreme Court's decision in TrafFix to have altered the Morton-Norwich analysis. As noted above, the Morton-Norwich factors aid in the determination of whether a particular feature is functional, and the third factor focuses on the availability of "other alternatives." Morton-Norwich, 671 F.2d at 1341. We did not in the past under the third factor require that the opposing party establish that there was a "competitive necessity" for the product feature. 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. Rather, we conclude that the Court merely noted that once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available. But that does not mean that the availability of alternative designs cannot be a legitimate source of evidence to determine whether a feature is functional in the first place.37
In a relatively liberal reading of the Supreme Court's TrafFix Devices decision, the Federal Circuit adopted the (pre-TrafFix) analysis of Morton-Norwich for determining functionality. As noted above, the Federal Circuit applied each of the Morton-Norwich factors to Valu Engineering's trademark applications and held that each factor pointed toward the designs' functionality, affirming the Board's refusal to register.38
[2]—Third Circuit—Shire and The Primary/Secondary Test
In April 2002, Shire Pharmaceuticals, makers of the drug Adderall, sued Barr Laboratories for trade dress infringement due to Barr's sales of a generic version of the pharmaceutical.39 The case focused on Barr's use of similar colors keyed to dosage amounts.40 Shire filed for a preliminary injunction, which was denied by the district court on the grounds that Shire had not shown that the shapes and colors of the pills were non-functional.41 Shire appealed the ruling to the Third Circuit.42
The Adderall pills originally came in two dosage strengths and colors: 10 mg (blue, round) and 20 mg (orange, round).43 At the time the case was filed, the tablets were blue or pale orange/peach and either round or oval.44 Color and size varied with the tablet's strength, seven of which were then being prescribed: 5 mg (blue, round), 7.5 mg (blue, oval), 10 mg (blue, round), 12.5 mg (orange/peach, round), 15 mg (orange/peach, oval), 20 mg (orange/peach, round), and 30 mg (orange/peach, round).45 Adderall tablets were also scored and stamped with the mark "AD" on one side, with the dosage size stamped on the other.46
Barr's pills were made in four shapes/sizes: 5 mg (blue, oval), 10 mg (blue, oval), 20 mg (orange/peach, oval), and 30 mg (orange/peach, oval).47 The face of the Barr tablets had either a "b" mark or the name Barr, and contained a numerical product code.48
The Third Circuit considered the issue of whether Shire had presented sufficient evidence to show that its Adderall trade dress was non-functional.49 In doing so, the Third Circuit characterized the TrafFix Devices decision as presenting two separate tests for functionality: a "traditional" test and a "secondary" test.50
In TrafFix, the Supreme Court set forth two tests for functionality. First, the Court recognized the "traditional" definition of functionality: "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.'" In addition to the traditional definition, TrafFix recognized a second test for functionality: "a functional feature is one the 'exclusive use of [which] would put competitors at a significant non-reputation-related...
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