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Functionality: The Line between Patents and Trademarks

Each category of intellectual property deals with a specific type of creation. Copyright protects artistic expression. Patents protect useful inventions and discoveries. Trademarks protect logos and other things that convey the source of commercial goods. The legislature specially tailored each of these classes of intellectual property to suit the type of creation that it was designed for. This can create problems in instances where a piece of intellectual property could lie across multiple categories.

One particular problem arises when something that can identify the company that makes a product is also functional. If not handled properly it could allow a company to use trademark law to lock down functional elements indefinitely. Consequently, trademark law does not apply to something if it is a functional part of the product.

Reasons for the Functionality Doctrine

The reason the legislature introduced the functionality doctrine is because trademark law provides strong protections for companies’ trademarks. The law can afford to provide this robust protection because there are so many potential trademarks available. The fact that a company gains exclusive right to use a particular word or logo does not harm other companies since they have so many other options for trademarks.

The same cannot be said of functional elements. There is a famous case on the subject related to signs stabilized by springs. The base of the signs had springs installed to keep them from falling over in high winds. The company who designed the sign sued another sign manufacturer, arguing that customers identified spring-base signs as the plaintiff’s product. However, the plaintiff lost since the springs were a functional element of the signs.

Had the plaintiff succeeded, it would have been able to push other companies out of the sign market with its superiorly stable product, much like a patent holder could. This is especially concerning since trademarks have a potentially unlimited duration. The plaintiff could have had a permanent monopoly.

In fact, trademark law is so concerned with ensuring that functional elements do not become trademarks that a registered trademark can be invalidated if a court rules that it is functional. This is even true of so-called “incontestable” trademarks, which are registered marks that have been around for five years, and are immune from many ordinary invalidity arguments.

Determining Functionality

Determining whether a supposed trademark is functional can be a surprisingly complex inquiry. One common formulation is that an element is function if it is necessary for the product to work. However, this is a fairly stringent version of the test, and many courts have set lower bars.

Courts often focus on how the inability to use the supposed trademark affects other competitors or the market. For instance, if the element changes the product’s price or quality for reasons unrelated to the company’s reputation, then it is likely functional. Similarly, a mark may be ruled as functional if an inability to use it would place competitors at a disadvantage.

Companies often assert functional elements as trademarks in an effort to drive competitors out of the market. If your company is being sued for infringing such a functional element, contact a West Palm Beach trademark attorney at Pike & Lustig, LLP today to learn more about your options.

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