What Is the Functionality Doctrine?
The functionality doctrine prevents trademark law from being used to protect product features that competitors need to be able to use in order to compete effectively. 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. This test comes from the Supreme Court's decision in Inwood Laboratories, Inc. v. Ives Laboratories, Inc.
Beyond this "utilitarian functionality" standard, courts also recognize "aesthetic functionality" — a feature that is aesthetically appealing in a way that gives its owner a significant non-reputation-related competitive advantage. Both types of functionality can bar registration.
Failure to Function as a Trademark
A related but distinct refusal arises when a proposed mark — including a word mark, slogan, or design — is found not to function as a trademark at all. This most commonly occurs when:
- A design or graphic is used primarily as decoration on the product (such as a large graphic printed across the chest of a shirt) rather than as a source identifier
- A slogan or phrase conveys general information or a common sentiment rather than identifying a brand
- The mark is so commonly used in the industry that consumers do not perceive it as identifying a single source
In these cases, the USPTO takes the position that the proposed mark does not perform the basic trademark function of telling consumers who made the product.
How Functionality and Failure-to-Function Refusals Can Be Overcome
The available arguments depend on the nature of the refusal:
- For utilitarian functionality: Evidence that the feature is not essential to the use of the product and that alternative designs are available can rebut the refusal. The existence of patents covering the feature is a significant obstacle, as patents are often cited as evidence of functionality.
- For aesthetic functionality: Evidence that the design serves primarily as a brand identifier rather than as an aesthetic draw, and that competitors have alternative ways to compete on aesthetic grounds, can support the argument that the feature is not aesthetically functional.
- For failure to function: Evidence that consumers actually perceive the mark as a brand identifier — through declaration testimony, consumer surveys, evidence of media coverage, or long-term exclusive use — can overcome this refusal. Repositioning the mark's use in commerce (for example, moving a logo from a dominant chest placement to a sleeve or label) can also help for future applications.
How Five Dogs Law Handles Functionality Refusals
Functionality and failure-to-function refusals are among the more fact-intensive office actions to respond to. Jared will analyze the specific feature at issue, the nature of the goods, the available evidence, and the examiner's reasoning before recommending a course of action. In some cases, the better path involves restructuring how the mark is used going forward rather than litigating the current application.
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