Trademark Dilution Under European Law
Charles Gielen
The Paradox of Aesthetic Functionality
Anthony L. Fletcher
Control Groups in Lanham Act Surveys
Eugene P. Ericksen and Melissa A. Pittaoulis
Who Owns Blue? An Examination of the
Functionality Doctrine in University Sports Color
Michelle Gallagher
Commentary: Roll Over Gutenberg, Tell Mr. Hull the News:
Obstacles and Opportunities from 3D Printing
Jonathan Moskin
Commentary: Trademarks and Brands in the Competitive
Landscape of the 3D Printing Ecosystem
Neil Wilkof
Commentary: Environmental Trademarks
Jeffrey Belson
May–June, 2014
Vol. 104 No. 3
Vol. 104 TMR
731
THE PARADOX OF
AESTHETIC FUNCTIONALITY
By Anthony L. Fletcher ∗
“Functionality,” whatever that may be, is the death knell of
trademark protectability. 1 The U.S. Trademark Act (Lanham Act)
could be more clear in defining the term, but at least it does
provide that “[n]o trademark by which the goods of an applicant
may be distinguished from the goods of others shall be refused
registration on account of its nature unless it—[c]onsists of a mark
which . . . comprises any matter that, as a whole, is functional.” 2
From this alone, one may conclude that (i) it is possible for a
would-be trademark to be functional, and (ii) that functional
matter may enable “the goods of [one trademark] applicant to be
distinguished from the goods of others”; the statute compels both
conclusions, if one accepts that none of the Lanham Act’s language
(i) is superfluous or (ii) contradictory to any other portion of the
Lanham Act. Both of these conditions certainly should be the case.
The Lanham Act also provides that: “A petition to cancel a
registration of a mark . . . may . . . be filed . . . [a]t any time . . . by
any person who believes that he is or will be damaged . . . by the
registration of a mark on the principal register . . . if the registered
mark . . . is functional . . . .”3 Still further, the Lanham Act
provides that “Except on a ground for which application to cancel
may be filed at any time under paragraph . . . (3) . . . of section
[1064] . . . the right of the owner to use such registered mark in
commerce for the goods or services on or in connection with which
such registered mark has been in continuous use for five
consecutive years subsequent to the date of such registration and
is still in use in commerce, shall be incontestable—provided . . .
[certain other requirements are met and appropriate papers are
filed in the Patent and Trademark Office].”4 As a result of the
exception based on Section 1064(3), incontestability is not
available for registrations of trademarks, or those parts thereof,
that are functional.
∗ Senior Principal, Fish & Richardson P.C., New York, NY, York, Associate Member,
International Trademark Association; former Editor-in-Chief, The Trademark Reporter;
recipient of INTA President’s Award, 2003, and Ladas Award, 2011.
1. The term “trademark,” as used in this paper, is intended to comprehend all
“trademarks,” “service marks,” “certification marks,” and “collective membership marks” as
their singular forms are defined in Section 45 of the Lanham Act, 15 U.S.C. § 1127.
2. Section 2 of the Lanham Act, 15 U.S.C. § 1052(e)(5) (emphasis added).
3. Section 14 of the Lanham Act, 15 U.S.C. § 1064(3) (emphasis added).
4. Section 15 of the Lanham Act, 15 U.S.C. § 1065.
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Finally, for present purposes, the Lanham Act provides that
“[t]o the extent that the right to use the registered mark has
become incontestable under Section [1065], the registration shall
be conclusive evidence of the validity of the registered mark and of
the registration of the mark, of the registrant’s ownership of the
mark, and of the registrant’s exclusive right to use the registered
mark in commerce. Such conclusive evidence shall . . . be subject to
the following defenses or defects: . . . (8) that the mark is
functional . . . .” 5
In short, if trademark registration of functional matter is not
refused and a registration issues, the functional matter is a ticking
time bomb; the owner of any trademark registration that
incorporates both functional and non-functional matter might
want to consider disclaiming the functional matter. This should be
true as to both those marks or portions thereof that are functional
at the outset, and any that may become functional as a result of an
evolution of meaning of language sometime after the conception or
registration of the mark; there is nothing in the Lanham Act that
suggests grandfathering registration of functional matter that was
not functional when registered, but for some reason later becomes
functional.
The above exhausts the Lanham Act on the subject of
functionality. Curiously, there is no definition of “functional” or
“functionality” in the Lanham Act, which evidently assumes that
one recognizes it without need to reference a more specific
definition; if so, one is tempted to think of functionality as the “I
know it when I see it” of trademark law. 6 Logically, this suggests
that the word “functional” in the Lanham Act means what it
means in the English language.
The Merriam-Webster online dictionary identifies the word
“functional” as an adjective, meaning: “of, connected with, or being
a function”; “designed or developed chiefly from the point of view of
use”; and “performing or able to perform a regular function.” 7
Pretty clearly, what the statute condemns is any “functional
trademark.” If one substitutes the dictionary definitions for
functional, the result is that the following are condemned: (1)
trademarks connected with, or being, a function; (2) trademarks
designed or developed chiefly from the point of view of use; and (3)
trademarks that perform or are able to perform a regular function.
Merriam-Webster also defines the word “trademark” as “a device
(as a word) pointing distinctly to the origin or ownership of
5. Section 33 of the Lanham Act, 15 U.S.C. § 1115(b).
6. Cf. “I shall not today attempt further to define the kinds of material I understand
to be embraced within the shorthand description [of pornography]. . . . But I know it when I
see it. . . .” Jacobellis v. Ohio, 378 U.S. 184, 197 (1964) (Stewart, J., concurring).
7. Merriam-Webster (online dictionary), http://www.merriam-webster.com/dictionary/
functional.
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733
merchandise to which it is applied and legally reserved to the
exclusive use of the owner as maker or seller.” 8
Substituting further, one may construct the syllogism that a
functional trademark: (1) is a device (as a word) pointing distinctly
to the origin or ownership of merchandise to which it is applied
and legally reserved to the exclusive use of the owner as maker or
seller, which; (2) is connected with, or is, a function; (3) is designed
or developed chiefly from the point of view of use; and (4) performs
or is able to perform a regular function. Unfortunately, that
syllogism is a paradox (in that what is functional cannot be a
trademark) stated in gibberish. Further enlightenment needs to be
sought.
Black’s Law Dictionary (9th ed. 2009) offers the following:
functional feature. Trademarks. A design element that is
either physically necessary to construct an article or
commercially necessary to manufacture and sell it; a product’s
attribute that is essential to its use, necessary for its proper
and successful operation, and utilitarian rather than
ornamental in every detail. • A functional feature is not
eligible for trademark protection.
functionality. Trademarks. The quality of having a shape,
configuration, design, or color that is so superior to available
alternatives that giving the first user exclusive trademark
rights would hinder competition.
aesthetic functionality. A doctrine that denies protection to
the design of a product or its container when the design is
necessary to function as intended.
Three points are noteworthy about these definitions. (1) The
definition of “functional feature” is focused on design, and is quite
correct; the phrase “utilitarian rather than ornamental in every
detail” makes this a fine definition of utilitarian functionality,
which was the old-fashion, original type. It does not, however,
comprehend “aesthetic functionality.” (2) The definition of
“functionality” is a somewhat broader, indeed, too broad,
definition, in that it is not limited to utilitarian [i.e., nonornamental] features; myriad perfectly valid trademarks (e.g.,
EXXON, CHEVROLET, A&P) give their first users and owners the
exclusive right thereto, which plainly hinders competition, as
trademarks are supposed to, in the sense of preventing
misattribution of source. (3) The definition of “aesthetic
functionality” is a complete botch. “[N]ecessary to function as
intended” certainly comprehends the wheel of a wheelbarrow,
which in and of itself is functional in a utilitarian sense; however,
if that wheel were painted or otherwise decorated in a distinctive
8. Merriam-Webster (online dictionary), http://www.merriam-webster.com/dictionary/
trademark? show=0&t=1397663136.
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manner, that decoration would be aesthetic, but not “functional,”
at least in any sense heretofore considered. As will be seen anon,
there is, in today’s nomenclature, a dichotomy between
“utilitarian” functionality and “aesthetic functionality,” the latter
of which appears to be coherently inexplicable—at least to judge by
the reported attempts to explain and define it so far. 9,10
The Restatement (Third) of Unfair Competition addresses the
subject of functionality obliquely: Section 16 (“Configurations of
Packaging and Products: Trade Dress and Product Designs”)
states:
The design of elements that constitute the appearance or
image of goods or services as presented to prospective
purchasers, including the design of packaging, labels,
containers, displays, decor, or the design of a product, a
product feature, or a combination of product features, is
eligible for protection as a mark . . . if :
(a) the design is distinctive under the rule stated in § 13; 11 and
(b) the design is not functional under the rule stated in § 17.
Section 17 provides that:
A design is “functional” . . . if the design affords benefits in the
manufacturing, marketing, or use of the goods or services with
which the design is used, apart from any benefits attributable
to the design’s significance as an indication of source, that are
important to effective competition by others and that are not
practically available through the use of alternative designs.
At this point, one conclusion is apparent: that which is
“functional” is not subject to trademark registration or protection.
There is also within the foregoing a suggestion: functional wouldbe trademark matter is design matter, not words in and of
themselves.
But what is “functional”? From what has been seen thus far,
what is “functional” is that which: (i) “affords benefits in the
manufacturing, marketing, or use of” particular goods or services;
9. See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
§§ 7:67-83.
10. In the author’s office copy of Roget’s Thesaurus (Pocket Thesaurus 845 (64th
printing, June, 1964)), “aesthetic” and “ornamental” are found under the same heading
(“artistic”) in the entries for “BEAUTY.”
11. Restatement (Third) of Unfair Competition § 13 (1995) provides that “a word,
name, symbol, device or other designation, or a combination of such designations, is
‘distinctive’ . . . if: (a) the designation is ‘inherently distinctive,’ in that, because of the
nature of the designation and the context in which it is used, prospective purchasers are
likely to perceive it as a designation that, in the case of a trademark, identifies goods or
services produced or sponsored by a particular person , whether known or anonymous . . . ;
or (b) the designation . . . has become distinctive, in that, as a result of its use, prospective
purchasers have come to perceive it as a designation that identifies goods [or] services . . . in
the manner described in subsection (a). Such acquired distinctiveness is commonly referred
to as ‘secondary meaning.’”
Vol. 104 TMR
735
and/or is (ii) “important to effective competition by others,”
provided (iii) there are no “practically available . . . alternative
designs.” As a matter of objective analysis, this formulation
requires navigation across three sequential “slippery slopes”:
(1) Does the design matter in question afford benefits in the
manufacturing, marketing, or use of goods or services for
which the mark or part of the mark in question is sought to be
registered or protected?
(2) Is the claimed design matter in question important to
effective competition with the claimant of trademark or trade
dress protection by competitors other than the claimant?
(3) Are there alternative designs that are practically available?
So far as this writer is aware, this analysis has not been applied by
any court in this form. The common sense of the matter suggests
that for a mark or portion thereof to be unregistrable or
unprotectable because it is functional, the answers must be:
(1) yes; 12 (2) yes; 13 and (3) no. 14
While the Lanham Act puts no limits on what may be
functional, both the dictionary and Restatement measure
functionality by analyzing “designs” or “design matter,” not words.
The statute makes no such distinction, but if the dictionary and
Restatement are correct, word marks cannot be condemned as
“functional,” and the doctrine is limited to what is often referred to
as trade dress. 15 So far as has been determined, there are no cases
in which words or would-be word marks have been determined to
be functional without regard to design context. To the extent, if
any, that word marks might lend themselves to the argument that
they are functional, it would seem quite likely that the underlying
reason is because those particular words are generic.
The wisdom of legal precedent is no more visible, though
certain principles can be gleaned from case law. By way of
example, if the claimed trade dress is or was the subject of a utility
patent, either expired or still in force, the patent prosecution may
12. If the matter in dispute affords no “benefits in the manufacturing, marketing, or
use of goods or services” with which the mark or part of the mark in question is sought to be
registered or protected, there is no compelling reason to make it available to all comers.
Restatement (Third) of Unfair Competition § 17 (1995).
13. Similarly, if the claimed design matter is of little or no importance to competition
by others, there is no apparent reason to preserve it for use by competitors of the originator.
See id.
14. If there are practically available alternative designs there is no apparent necessity
to permit competitors to use the originator’s design or some confusingly similar semblance
of it. See id.
15. “Trade dress” has been defined as follows: “trade dress. Trademarks. The overall
appearance and image in the marketplace of a product or commercial enterprise. • For a
product, trade dress typically comprises packaging and labeling. If a trade dress is
distinctive and nonfunctional, it may be protected under trademark law.” Black’s Law
Dictionary.
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disclose the functionality, usually utilitarian, of the claimed trade
dress, or at least certain aspects thereof. 16
The Ninth Circuit’s decision in Pagliero v. Wallace China Co.,
Ltd. is the cornerstone of the modern aesthetic functionality
doctrine. 17 In that case, plaintiff Wallace made and sold china
plates to hotel restaurants. The china came in four varying
patterns denominated by Wallace as “Hibiscus,” “Magnolia,”
“Shadowleaf,” and “Tweed.” Defendant Tepco, a Wallace
competitor, used the same four patterns (or at least reasonable
facsimiles thereof) for lines of his dinnerware it named “Hibiscus,”
“Magnolia,” “Shadowleaf,” and “Tweed.”
This was not a particularly promising case for the plaintiff.
The designs of the dinnerware, assuming they were original,
appear to be copyrightable, but there is no mention of copyright in
the decision. Wallace forcefully argued that it was the
“attractiveness and eye-appeal of the design sells the china,” which
well may have been true (as it is of numerous copyrighted works),
but that interest seems best protected by copyright, not
trademark/trade dress law. It seems doubtful that diners at hotels
regard, or ever regarded, the design of the china off which they
dine, or dined, as indicia of source or origin of the china. The
Pagliero court, however, went straight to functionality:
[W]here the features are “functional,” there is normally no
right to relief. “Functional” in this sense might be said to
connote other than a trade-mark purpose. If the particular
feature is an important ingredient in the commercial success
of the product, the interest in free competition permits its
imitation in the absence of a patent or copyright. 18
The court explained: “It seems clear that these designs are not
merely indicia of source, so that one who copies them can have no
real purpose other than to trade on his competitor’s reputation. On
the contrary, to imitate is to compete in this type of situation.” 19 It
is probably true that Pagliero was seeking to trade not on
Wallace’s reputation, but, rather, on its creativity, which is an
interest usually better protected by copyright (which Wallace did
not assert, and very possibly did not possess) than by trademark or
unfair competition.
Twenty-one years later, The National Hockey League and
thirteen of its member teams sued an embroidered emblem
16. This happened in Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23
(2001). There, the patent prosecution history disclosed that a spring arrangement that
mounted highway signs in metal stand-frames for the sign resulted in a sign less likely to
topple in high winds. Consequently, the mounting arrangement was declared to be
functional (for trademark/trade dress purposes) on the basis of certain claims made for the
invention in the patent prosecution record.
17. Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952).
18. Id. at 343 (citing William F. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526 (1923)).
19. Id. at 344.
Vol. 104 TMR
737
manufacturer for trademark infringement, false designation of
origin, and unfair competition. 20 The basis for the claim was
defendant’s manufacture and sale of embroidered cloth emblems
that replicated the official team emblems of the League’s member
teams, 21 and the NHL’s official crest. The court denied relief on the
basis of two intertwined doctrines for which it cited no authority,
at least at the point of announcement:
A further consideration . . . is whether the plaintiffs’ use of the
team symbols in connection with the embroidered cloth
emblems is a “trademark use” which would bring it within the
ambit of the rights and protection of the Lanham Act.
A “trademark” use of a design arises when the value of the
feature is limited to creating a demand for the goods because it
is associated with a particular source. The feature then is
exclusively a marketing tool and is characterized as nonfunctional. 22 When the distinctive motifs create a demand for
goods because of the design and the goods have no substantial
value without the design, the use of the design is considered to
be a non-trademark use and the design feature becomes
functional. 23
The court concluded that the plaintiff’s symbols could be
“characterized as functional because they [had] become ‘an
important ingredient in the commercial success of the product,’”
citing Pagliero. It continued:
When an artistic rendition creates a demand in the market
which is unrelated to its feature as an indicia of source, the
law will not afford that design protection under the trademark
laws. In the instant case, the registered trademark is, in
effect, the product itself. The marks have achieved intrinsic
value to a segment of the consuming public which may be
attracted to their aesthetic features and to their
characteristics as a patch to be used on apparel or for
collecting. 24
20. Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 360 F. Supp.
456 (N.D. Tex. 1973).
21. All but one of these teams owned, or were in the process of applying for, U.S.
service mark registrations for their emblems. The team that was not applying, and
therefore was depending on common law rights as a result of use (of which there was
considerable within the United States), was Canadian.
22. While it is not germane to the subject at hand, it might be noted that the Lanham
Act does not require “trademark use” of another’s trademark for infringement. Any use
likely to cause confusion may infringe.
23. Boston Prof’l Hockey Ass’n, 360 F. Supp. at 463.
24. Id. at 464. Most art and sport fans probably would agree: (1) the registered marks
lacked the degree of artistic merit necessary to make them collectable as art; (2) the marks
were, by and large, registered, so the “demand in the market for” each was almost surely
not only related to, but dependent upon, its “feature as an indicia of source.” The fact the
court found that “the registered trademark is in effect the product itself,” if anything,
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The trial court decision was reversed on appeal. 25
The difficulty with this case stems from the fact that a
reproduction of the trademark itself is being sold, unattached
to any other goods or services. The statutory and case law of
trademarks is oriented toward the use of such marks to sell
something other than the mark itself. . . . Underlying our
decision are three persuasive points. First, the major
commercial value of the emblems is derived from the efforts of
plaintiffs. Second, defendant sought and ostensibly would have
asserted, if obtained, an exclusive right to make and sell the
emblems. Third, the sale of a reproduction of the trademark
itself on an emblem is an accepted use of such team symbolism
connection with the type of activity in which the business of
professional sports is engaged. . . . The conclusion is
inescapable that, without plaintiffs’ marks, defendant would
not have a market for his particular product among ice hockey
fans desiring to purchase emblems embroidered with the
symbols of their favorite teams. 26
This decision was a major victory for professional sports teams and
leagues desiring to control the marketing of team-identified
paraphernalia to their various fan bases.
Then came the Job’s Daughters case, which involved “a young
woman’s women’s fraternal organization” [sic!], that used an
emblem (which consisted of a double triangle, between the bases of
which were the words “Iyob Filiae” (Job’s Daughters) and within
which is a depiction of three girls carrying a dove, an urn, and a
cornucopia). 27 After requesting appointment as an “official jeweler”
and being denied, Lindeburg went ahead and manufactured
emblem jewelry—a scenario that obviously invited litigation. The
invitation was accepted. The result was surprising, at the time:
The name “Job’s Daughters” and the Job’s Daughters insignia
are indisputably used to identify the organization, and
members of Job’s Daughters wear the jewelry to identify
themselves as members. In that context, the insignia are
trademarks of Job’s Daughters. But in the context of this case,
the name and emblem are functional aesthetic components of
the jewelry, in that they are being merchandised on the basis
of their intrinsic value, not as a designation of origin or
sponsorship. . . . We commonly identify ourselves by displaying
emblems expressing allegiances. Our jewelry, clothing and
cars are emblazoned with descriptions showing the
reinforces the nonsense of the court’s expressed notion, that “the demand in the market is
unrelated to its feature as an indicia of source.” Id.
25. Boston Prof’l Hockey Ass’n. v. Dallas Cap & Emblem Mfg. Co., 510 F.2d 1004 (5th
Cir. 1975).
26. Id. at 1010-11.
27. Int’l Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir. 1980).
Vol. 104 TMR
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organizations we belong to, the schools we attend, the
landmarks we have visited, the sports teams we support, the
beverages we imbibe. Although these inscriptions frequently
include names and emblems that are also used as collective
marks or trademarks, it would be naive to conclude that the
name or emblem is desired because consumers believe that the
product somehow originated with or was sponsored by the
organization the name or emblem signifies. 28
The critical word in this syllogism is “intrinsic,” which means
“belonging to the essential nature or constitution of a thing.” 29 A
less recent, less abridged dictionary offers the following synonyms:
“native, innate, natural, true, real.” 30 But when the “thing” is a
name, as “Job’s Daughters” undoubtedly is, whatever essential
nature or innate value of the name there may be would seem
necessarily to reside in the reputation of the possessor of the name.
Otherwise, “Job’s Daughters” is nothing more than an assemblage
of letters (2 capital, 11 lower case; 4 vowels, 9 consonants—“a, b,
D, e, g, h, J, o, r, s, s, t, u.”), which have no “intrinsic” utility to
consumers apart from whatever reputation they may call to mind.
“Job’s Daughters,” unarguably, is a collective mark, which is a
species of the genus “trademark.” The nature of trademarks has
long been known and accepted; one of the more time-honored,
authoritative, and articulate expressions of the nature of a
trademark is:
His mark is his authentic seal; by it [the owner] vouches for
the goods which bear it; it carries his name for good or ill; if
another uses it, he borrows the owner’s reputation, whose
quality no longer lies within his own control. This is an injury,
even though the borrower does not tarnish it, or divert any
sales by its use; for a reputation, like a face, is the symbol of
its possessor and creator, and another can use it only as a
mask. And so it has come to be recognized that, unless the
borrower’s use is so foreign to the owners as to insure against
any identification of the two, it is unlawful. 31
Was Lindeburg’s use of the JOB’S DAUGHTERS insignia “so
foreign to the owners as to insure against any identification of the
two?” Of course not. The market for Lindeburg’s JOB’S
DAUGHTERS products was the membership of Job’s Daughters
and, possibly, some “wannabes.” The Court, however, reverted to
28. Id. at 917.
29. Merriam-Webster online dictionary, http://www.merriam-webster.com/dictionary/
intrinsic.
30. Random House Webster’s Unabridged Dictionary, 1997. Comparison of dictionary
dates, for present purposes, was accomplished by comparing the most recent copyright date
of the volume.
31. Yale Elec. Corp. v. Robertson, 26 F.2d 972, 973-74 (2d Cir. 1928).
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Pagliero, which held dinner china decorative patterns to be
“functional,” and concluded:
Application of the Pagliero distinction to this case has a
special twist because the name “Job’s Daughters” and the
Job’s Daughters insignia are indisputably used to identify the
organization, and members of Job’s Daughters wear the
jewelry to identify themselves as members. In that context,
the insignia are trademarks of Job’s Daughters. But in the
context of this case, the name and emblem are functional
aesthetic components of the jewelry, in that they are being
merchandised on the basis of their intrinsic value, not as a
designation of origin or sponsorship. 32
The syllogism is bewildering: wearers of “Job’s Daughters” jewelry
don it to “identify themselves as members” of Job’s Daughters;
therefore the JOB’S DAUGHTERS “insignia are trademarks of
Job’s Daughters.” Yet, when the jewelry was manufactured and
sold to the purchaser-members so they could wear it, the very
same words and symbols that were “trademarks” when the
purchasers wore them were “functional aesthetic components of
the jewelry” because those insignia components of the jewelry were
merchandised on “the basis of their intrinsic value.” 33 The only
dictionary definition of “intrinsic” that makes any sense at all in
the above context is “belonging to the essential nature or
constitution of a thing” 34—probably because it is so vague.
32. Job’s Daughters, 633 F.2d at 918.
33. For further discussion of this issue, see Restatement (Third) Unfair Competition
§ 20, Comment e (1995): “Several decisions allow the unauthorized sale of goods such as
jewelry and clothing bearing another’s collective membership mark by finding that in such
contexts the mark is functional and thus unprotectable. See id. § 17. The proper inquiry,
however, is what the unauthorized use of the mark signifies to prospective purchasers. If
purchasers believe that the organization has authorized or approved the sale of the
merchandise bearing the mark, the mark serves a trademark function and the unauthorized
use is an infringement. On the other hand, if the appearance of the mark on the
merchandise is perceived by prospective purchasers merely as a means for them to use the
goods to indicate membership or support for the organization, the use of the mark creates no
likelihood of confusion and is not an infringement. Cases involving the unauthorized sale of
goods bearing school or athletic team names or emblems are best resolved through a similar
inquiry.” The author disagrees with the following from the Restatement: “if the appearance
of the mark on the merchandise is perceived by prospective purchasers . . . as a means for
them to use the goods to indicate membership or support for the organization, the use of the
mark creates no likelihood of confusion and is not an infringement.” To the author’s
knowledge, caps, T-shirts, posters, and various other souvenir items bearing sport and
entertainment symbol and character likenesses have been sold at and around stadiums,
arenas, theaters, cinemas, and theme parks for more than six decades, increasingly under
the authority and control of the original property owners. Merchants selling such articles
are trading on the reputation and renown of the mark owner; shoddy or distasteful
merchandise reflect negatively on the mark owner, often more than on the (often
anonymous) merchant. There is a right to reproduce or parody such marks for purposes of
comment on or parody of the institutions they represent, but not merely to exploit the
popularity of the mark.
34. Merriam-Webster online dictionary, http://www.merriam-webster.com/dictionary
/intrinsic.
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741
The “precedent” that best explains the foregoing is the
following:
“But ‘glory’ doesn’t mean ‘a nice knock-down argument,’” Alice
objected.
“When I use a word,” Humpty Dumpty said, in a rather
scornful tone, “It means just what I choose it to mean—neither
more nor less.”
“The question is,” said Alice, “whether you can make words
mean so many different things.”
“The question is,” said Humpty Dumpty, “which is to be the
master—that’s all.” 35
Job’s Daughters and Boston Professional Hockey have stood in
opposition to one another for thirty-three years, without further
resolution, and only a handful of authorities have addressed the
subject of defensive aesthetic functionality other than in passing. 36
In addition, authorities in the field of trademark law question the
validity of defensive aesthetic functionality, as it confuses
traditionally accepted notions of what trademarks are and the role
they play in the marketplace and in the minds of consumers. 37
35. Charles Lutwidge Dodgson (aka Lewis Carroll), Through the Looking-Glass, and
What Alice Found There, Ch. 6 (1872).
36. See 1 McCarthy, supra note 9, §§ 7:82-83; Univ. Pittsburgh v. Champion Prods. v.
Champion Prods., 566 F. Supp. 511 (W.D. Pa. 1983), superseded by statute as stated in Univ.
Book Store v. Univ. Wis. Bd. Regents, 33 U.S.P.Q.2d 1385 (T.T.A.B. 1994); Plasticolor
Molded Prods. v. Ford Motor Co., 713 F. Supp. 1329 (C.D. Cal. 1989), vacated 767 F. Supp.
1036 (C.D. Cal. 1991); Playboy Enters. v. Chen, 45 U.S.P.Q.2d 1400 (C.D. Cal. 1997); Ford
Motor Co. v. Lloyd Design Corp., 184 F. Supp. 665 (E.D. Mich. 2002); Ford Motor Corp. v.
Lloyd Design Corp., 184 F. Supp. 2d 665 (E.D. Mich. 2002); General Motors Corp. v.
Autovation Tech., Inc., 317 F. Supp. 2d 756 (E.D. Mich. 2004); Au-Tomotove Gold, Inc. v.
Volkswagen of Am., Inc., 457 F.3d 1062 (9th Cir. 2006), cert. denied, 127 S. Ct. 1839 (2007);
Chicago Bears Football Club, Inc. v. 12th Man/Tennessee LLC, 83 U.S.P.Q.2d 1073
(T.T.A.B. 2007).
37. McCarthy provides the following commentary:
The author agrees with [Anthony] Fletcher and the Restatement that the notion of a
defensive type of aesthetic functionality is bad law, poor policy and provides no
coherent rules. The language in Job’s Daughters about “functionality” was merely an
attempt at articulating a particular application of the familiar rule that there is no
trademark infringement unless it is proven that there is a likelihood of confusion as to
source, sponsorship, approval or affiliation caused be defendant’s use of plaintiff’s
mark. There was no such likelihood of confusion on the evidence in that case, but this
failure of proof of a likelihood of confusion was not because of some “functional” use by
the defendant jeweler. Rather, there was no likelihood of confusion because buyers
were members of the organization who only saw the jewelry as a means of identifying
themselves as members, and did not think that the jewelry was “official” or approved
by the organization… The theory of defensive aesthetic functionality is much too
blunt a weapon to serve as a device to solve problems that arise when a trademark is
used by defendant in an arguably “decorative” sense, such as on T-shirts, baseball
caps and other paraphernalia. In such cases the question is the familiar but difficult
one of whether there is a likelihood of confusion as to source, sponsorship, affiliation
or connection. No notions of “defensive aesthetic functionality” are proper to serve as
an escape from facing head-on the question of likelihood of confusion.
See 1 McCarthy, supra note 9, § 7:82.
742
Vol. 104 TMR
The dichotomy well may have been resolved in the “Betty
Boop” decisions in 2011, 38 although that is far from crystal clear.
Plaintiff Fleischer Studios, Inc. claimed ownership of the fictional
flapper character Betty Boop, who was a popular comic and
cartoon character in the great depression era. The defendant,
without any authority to do so, sold “Betty Boop” dolls as well as Tshirts and handbags displaying her image. The district court held
against Fleischer, largely on grounds that it did not provide
evidence that established its ownership of “Betty Boop” as a
trademark. That being the case, it could scarcely object to “Betty
Boop” dolls, T-shirts, and handbags.
On appeal, the Ninth Circuit exercised its “clear . . . power to
affirm [the lower court decision] on an alternate basis.” 39 In so
doing so, it stated that the Job’s Daughters case held that the
defendant “was not using the Job’s Daughters name and emblem
as trademarks.” 40 Since use of another’s trademark as a trademark
is not required to infringe, 41 that observation is irrelevant. This led
it rather abruptly to the following conclusion: “The name and
[Betty Boop image] were functional aesthetic components of the
product, not trademarks. There could be, therefore, no
infringement.” 42
Professor J. Thomas McCarthy, academia’s foremost
trademark observer, succinctly describes the holding and what
happened next:
Seizing upon an issue neither briefed nor discussed by the
parties, Judge Clifford Wallace said that the defendant’s
unlicensed use of the name and image of a popular cartoon
character on merchandise “were functional aesthetic
components of the product, not trademarks. There could be,
therefore, be no infringement.” This astonishing statement
stunned the licensing and entertainment industries. The
plaintiff and four amicus parties [(i) The Motion Picture
Association of America; (ii) The International Trademark
38. Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 636 F.3d 1115 (9th Cir. 2011), opinion
withdrawn and superseded, 654 F.3d 858 (9th Cir. 2011).
39. Id. at 1122.
40. Id. at 1123, citing Job’s Daughters, 633 F.2d at 917.
41. Section 32 of the Lanham Act, 15 U.S.C. § 1114(1)(a) requires only use of “any
reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with
the sale, offering for sale, distribution, or advertising of any goods or services on or in
connection with which such use is likely to cause confusion, or to cause mistake, or to
deceive. . . .” Trademark use of the infringing reproduction, etc. is not required. Similarly,
Section 43(a), 15 U.S.C. § 1125(a) condemns only use in commerce of “. . . any word, term,
name, symbol, or device . . . likely to cause confusion, . . . mistake, . . . or to deceive as to the
affiliation, connection, or association of such person with another person . . . as to the origin,
sponsorship, or approval of his or her services by another person. . . .” While the infringing
“use” more often than not is a trademark [or apparent trademark] use, such use is not a
prerequisite to infringement.
42. Fleischer, 636 F.3d at 1124.
Vol. 104 TMR
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Association; (iii) professional baseball, football, basketball and
hockey leagues, plus collegiate licensing; and (iv) Edgar Rice
Burroughs, Inc. 43] petitioned for a rehearing. Stunned by the
criticism, six months later, the court took the unusual step of
withdrawing the original opinion and substituting a new
opinion which made no mention of functionality. 44
This was the right result in the Betty Boop case, though
ideally that court (or any court) would have squarely addressed the
issue of whether “defensive aesthetic functionality” should ever
serve as a valid defense to a trademark infringement claim, or
whether the question is, simply, likelihood of confusion. In the case
where an undisputed sports team (or pop culture) logo or other
icon recognizable as such to a large public appears on “T-shirts,
baseball caps and other paraphernalia,” it should be occasion for
parties debating “likelihood of confusion” resulting therefrom. The
clothing vendor is benefitting, or at least attempting to benefit,
from the renown and good will of the other enterprise, which is
recognizable and highly recognized. Learned Hand had it right:
“unless the borrower’s use is so foreign to the owner’s as to insure
against any identification of the two, it is unlawful.” 45
Tomorrow may bring startling new developments. But until
there are further developments, the foregoing is the status quo.
43. Edgar Rice Burroughs is long-deceased; he was however, the author of such
persistent, if not “enduring,” literary characters as Tarzan and John Carter of Mars (or
“Barsoom,” as Mars is called in Martian).
44. 1 McCarthy, supra note 9, § 7.82.
45. Yale Elec. Corp. v. Robertson, 26 F.2d 972, 974 (2d Cir. 1928).