Howard Wintner

In addition to words and symbols, the trademark laws afford protection for a trade dress. A trade dress is the design and appearance of a product together with all the elements making up the overall image that serves to identify the product presented to the consumer. These elements include the appearance of labels, wrappers, and containers used in packaging a product as well as displays and other materials used in presenting a product to the public. Two Pesos v. Taco Cabana, 505 U.S. 763, 112 S. Ct. 2753 (1992). In an action to enforce a trade dress, the plaintiff must specifically identify its character and scope.

A trade dress will not enjoy trademark rights if it is functional. There are two types of functionality. The first is “utilitarian functionality,” which is the test most commonly at issue. A trade dress will be denied protection under the utilitarian functionality test if it: (1) is essential to the use or purpose of the article, or (2) affects the cost or quality of the article. A product feature is considered essential if it is dictated by the functions to be performed by the product. A product feature affects the quality or cost of a product where it permits the product to be manufactured at a lower cost or constitutes an improvement in the operation of the product.

This article will discuss the second manner in which a trade dress can be deemed functional, “aesthetic functionality,” focusing on its application within the Second Circuit. The doctrine of aesthetic functionality comes into play where trade dress protection is sought for an ornamental feature of a product which is not functional from a utilitarian perspective. (Certain Circuits have either rejected or not expressly adopted the aesthetic functionality. Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel Co., 550 F.3d 465, 487-88 (5th Cir. 2008) (rejecting aesthetic functionality doctrine); Marker's Mark Distillery v. Diageo North America, 679 F.3d 410 (6th Cir. 2012) (not expressly adopting aesthetic functionality doctrine).

The doctrine of aesthetic functionality bars trademark protection of a trade dress where affording it protection would put competitors at a significant non-reputation related disadvantage. Likewise, it has often been stated that if granting trademark protection would significantly limit the range of competitive designs, the aesthetic functionality doctrine applies. (There is difference of opinion as to who has the burden of proving non-functionality. The correct view appears to be that the defendant has the burden of proving functionality for a registered trade dress (which has a statutory presumption of validity). In contrast, for an unregistered mark, a showing of non-functionality is part of the plaintiff's affirmative case. 15 U.S.C. 1125(a)(3).)

Even if a particular ornamental feature of a product is functional, the distinctive arrangement of predominantly ornamental features can be afforded trademark protection if it would not hinder competitors from entering the same market with a differently dressed version of the product. Where protection is sought for the overall look of the product, the court must evaluate the distinctiveness and functionality of the elements taken together, rather than in isolation.
The courts have afforded much narrower protection for trade dress which is a product design as opposed to product packaging. The rationale is that granting trade dress protection for product designs could create a monopoly in the goods themselves. Granting such protection can present an acute risk of stifling competition. The U.S. Supreme Court has addressed this issue and applied a different standard for establishing trade dress rights for a product design and product packaging. As to the former, the Supreme Court has found that that they are never inherently distinctive and that secondary meaning needs to be shown. In contrast, the Supreme Court has stated that product packaging is typically a source identifier and protection can be obtained by either a showing that it is inherently distinctive or has achieved secondary meaning. Wal-Mart Stores v. Samara Brothers, 529 U.S. 205, 120 S. Ct. 1339 (2000).

Illustrative Cases

Wallace Int'l Silversmiths v. Godinger Silver Art Co., 916 F.2d 76 (2d Cir. 1990). In Wallace, the plaintiff was a leading manufacturer of sterling silver products. Its baroque pattern had been sold for many years and was one of the best-selling silverware lines in the United States. Plaintiff sought protection for a baroque-style pattern which was “ornate, massive and flowery, with indented flowery roots, and scroll and curves along the side of the shaft, and flower arrangements along the front of the shaft.” The defendant's product was very similar in several respects. It contained “typical baroque elements including an indented root, scrolls and flowers.” The defendant's arrangement of the elements of its silverware was substantially similar to that of plaintiff, but its dimensions and placement of certain of its elements were recognizably different. The Second Circuit assumed that plaintiff's design had acquired secondary meaning. Nevertheless, the Second Circuit denied protection for plaintiff's trade dress under the doctrine of aesthetic functionality. The Second Circuit stated that where trademark rights are claimed for an ornamental feature of a product, and granting it protection “would significantly hinder competition by limiting the range of adequate design alternatives, the aesthetic functionality doctrine denies such protection.” The Second Circuit found that plaintiff could not “exclude competitors from using th[e]se baroque elements, [which were] necessary to compete in the market for baroque silverware.”

Knitwaves v. Lollytogs, 71 F.3d 996 (2d Cir. 1995). This case involved a product feature or configuration. In Knitwaves, the Second Circuit analyzed the effect of the aesthetic nature of a product on a Lanham Act claim in two different manners. There, the plaintiff was a designer and manufacturer of children's knitwear. It developed a collection of girl's sweaters and matching skirts and pants. These garments incorporated design elements intended to express a fall motif, such as leaves, acorns, squirrels and the like. The designs used innovative color schemes, using fall colors such as mustards and browns. The two items involved in the case were plaintiff's “Leaf Sweater” and “Squirrel Cardigan” models. The defendant was a large manufacturer that sold children's clothing, which had introduced a competing line of fall sweaters. These included sweaters which were similar in design to plaintiff's “Leaf Sweater” and “Squirrel Cardigan” models. Defendant argued that plaintiff's sweaters were not protectable under trademark law because they were functional. This was because “their primary purpose [was] aesthetic—to enhance the sweater's ornamental appeal—rather than [to] identify [them] as plaintiff's products.” While agreeing with defendant that the primary purpose of plaintiff's designs was aesthetic, it rejected defendant's argument on functionality grounds because it failed to show that affording trade dress protection to plaintiff's sweaters would restrict its ability to “produce alternative competitive designs.” Nevertheless, the Second Circuit concluded that plaintiff's sweaters were not subject to trademark protection for even a more basic reason, i.e., it concluded that the primary purpose of the sweater designs were aesthetic rather than source identification, which is the sine qua non of a trademark.

Bubble Genius v. Smith, 209 F. Supp. 3d 586 (E.D.N.Y. 2017). In this case, the parties sold competing periodic table novelty inspired soaps. The court found that plaintiff's claimed trade dress was “aesthetically functional because it [was] purely ornamental, and [its] trade dress design features [were] necessary for competition in the market for periodic table inspired novelty soaps.” The court found that “plaintiff's choice of chemical elements to offer as soap [was] predictable and not protectable as a trade dress.” The court stated that the similarities between the parties' soaps would be expected because both products utilize similar scientific information to appeal to consumers in the market for periodic table inspired novelty soaps. More specifically, both of the parties' periodic table soaps incorporated the same basic features of the periodic table of elements, such as the chemical symbol, atomic number, name of the element, atomic mass, energy level, and format of the element's scientific information in a similar manner as periodic tables in the public domain. Also, the similarity of colors utilized in both products was indicative of the chemical element the soaps are intended to represent, e.g., the soap representing gold as an element is gold in color and the soap representing silver as an element is silver in color. The court concluded that the defendant would suffer a significant non-reputation related disadvantage if plaintiff “had exclusive rights to produce and sell soaps that mimic publicly available periodic tables.”

Maharishi Hardy Blechman v. Abercrombie & Fitch, 292 F. Supp. 2d 535 (S.D.N.Y 2003). There, plaintiff sold a line of high-end, baggy military-style pants called Snopants, which had an elaborate system of drawings, buttons and other hardware components. Certain of plaintiff's pants also had an embroidered fiery dragon on the back of one leg. Plaintiff claimed that certain of defendant's garments infringed its trade dress. The court reasoned that where claimed trade dress extends to all of the features of the product, the court must examine functionality of those features taken as a whole. While a trade dress may be protectable even if it is comprised of commonly used or functional elements, this fact may suggest that the trade dress should be regarded an unprotectable. The court stated that for purposes of a summary judgment motion, plaintiff had raised an issue of fact whether the peculiar arrangement of its trade dress was non-functional, aesthetically and otherwise. Significant to the court's ruling was that affording trademark protection would not prevent defendant from using “fall colors or motifs, squirrels or leaves,” so long as the design was not confusingly similar to plaintiff's design. Nevertheless, the court found plaintiff's trade dress claim legally deficient because there was not sufficient consistency in the trade dress of plaintiff's product lines.

Johnson & Johnson v. Actavis Group HF, 2008 WL 228061 (S.D.N.Y. Jan. 25, 2008). In this case, plaintiff marketed a leading antibiotic ointment and cream sold under the brand name “NEOSPORIN.” The packaging for the product had a gold/yellow background, words in a green color in a particular typeface, and a curving arrow in a gold/yellow color. Plaintiff sought summary judgment on the background color alone (the Gold Mark). Defendant manufactured a private label antibiotic ointment and cream for numerous retailers. Certain of its customers used packaging with a gold/yellow background color virtually identical to Gold Mark. The court granted summary judgment to that part of the motion to strike defendant's defense that Gold Mark was functional. The court stated that as to aesthetic functionality, the test is whether granting trademark rights “would significantly hinder competition.” The court found that plaintiff established that the packaging on plaintiff's product was not functional as a matter of law. The court first noted that other antibiotic ointments were sold with packaging that did not use Gold Mark, and that defendant manufactured an antibiotic ointment which is sold by the customer in a predominantly white packaging. The court further noted that other colors, “such as blue, white and orange, are prevalent in the packaging of first-aid products that are customarily sold in the aisle in which “NEOSPORIN” and [defendant's ointments] were found.” Based on the above and other factors, the court held that the protection of the Gold Mark would not significantly hinder competition.

Howard Wintner is the director of litigation at the Abramson Law Group.