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Trademarks › Functionality

A Trademark is a legally registered distinctive mark or sign which identifies goods, products or services that originate or are associated with a particular person or enterprise . A typical example of a trademark... more +
A Trademark is a legally registered distinctive mark or sign which identifies goods, products or services that originate or are associated with a particular person or enterprise . A typical example of a trademark would be a company's logo such as the Nike "Check" or McDonald's "Golden Arches."  less -
Sterne, Kessler, Goldstein & Fox P.L.L.C.

[Webinar] Trademark Trends: A Mid-Year Review - July 17th, 1:00 pm - 2:00 pm EDT

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Join Sterne Kessler’s Global Trademark & Brand Protection team for our mid-year review webinar, when we will take a closer look at the latest developments in trademark law. From recent court decisions to industry-trends, our...more

McDermott Will & Emery

Sole Searching: Trade Dress Hopes Booted as Functional, Nondistinctive

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The US Court of Appeals for the Fourth Circuit affirmed a district court’s summary judgment grant in a trademark dispute, finding that the district court did not err in concluding that a subset of design elements lacked...more

McDermott Will & Emery

Watermelon Sugar: Candy Shape and Color Deemed Functional

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The US Court of Appeals for the Third Circuit upheld a district court’s decision that a candymaker cannot trademark the shape and colors of watermelon candy, finding that the combined colors and shape of the candy are...more

McDermott Will & Emery

Whisk-y Business: Notice Alone Is Sufficient for Preliminary Injunction

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The US Court of Appeals for the Fifth Circuit concluded that only notice of a preliminary injunction (PI) motion, and not perfected formal service, is needed to assert jurisdiction to issue an injunction. Whirlpool Corp. v....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - May 2023

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Thank you for reading the May 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss Taco Bell's attempt to cancel two TACO TUESDAY trademark registrations, and a precedential TTAB decision...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - May 2023: TACO TUESDAY – Generic Term, Failure to Function, or BOTH

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Taco Bell’s recent efforts to liberate the phrase “Taco Tuesday” presents an opportunity to review the distinctions between marks that are generic and those that fail to function as a trademark....more

Buckingham, Doolittle & Burroughs, LLC

If a Good is not a Good, then a Trademark is not a Trademark

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The Trademark Trial and Appeal Board (TTAB) adopted a new rule for evaluating whether non-syndicated news columns are “goods in trade” under the Lanham Act in In re The New York Times Company, a precedential opinion issued on...more

Stark & Stark

The Fight for Red: Fashion Statement or Protected Trademark?

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Louboutin v. YSL - Christian Louboutin (“Louboutin”), the designer of the famous red bottom shoes, filed a trademark infringement lawsuit against fashion house Yves Saint Laurent (YSL) claiming YSL infringed on its red...more

McDermott Will & Emery

Functionality Dooms Alleged Trade Dress Protection

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The US Court of Appeals for the Eighth Circuit affirmed summary judgment of noninfringement in a trade dress suit, finding that the trade dress was functional and the attorneys’ fee award—as diminished by the district...more

Linda Liu & Partners

A Brief Analysis of the Registration and Judicial Protection of Three-dimensional Trademarks in China

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Since Article 8 of the Trademark Law of China (2001) stipulates that a three-dimensional sign can be filed for registration as a trademark, three-dimensional sign trademarks (also known as the “three-dimensional trademarks”)...more

Fox Rothschild LLP

TTAB Cancels Registration For Gun Barrel Trade Dress On Grounds Of Functionality

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On May 20, 2021, the TTAB issued a lengthy and comprehensive precedential opinion canceling Proof Research, Inc.’s registration for the trade dress of a gun barrel (as shown below) on grounds of de jure functionality under...more

McDermott Will & Emery

Colorful Non-Functionality Argument Misses the (Design) Mark

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Addressing the functionality of colors in design marks, the US Court of Appeals for the Second Circuit reversed the district court’s entry of judgment for a trademark owner on its unfair competition and trademark claims,...more

McDermott Will & Emery

There’s No Sugarcoating It: Pocky’s Cookie Design Trade Dress Is Functional

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Addressing for the second time whether the design of a chocolate-dipped, stick-shaped cookie was eligible for trade dress protection, the US Court of Appeals for the Third Circuit held again that the product configuration was...more

Haug Partners LLP

“That’s the way the cookie crumbles!” Third Circuit Court of Appeals Considers Differences Between Trade Dress and Patent...

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In Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp., the U.S. Court of Appeals for the Third Circuit considered a trade dress infringement dispute between two confectioners. Ezaki Glico (“Ezaki”), a Japanese...more

McDermott Will & Emery

Cookie Trade Dress Infringement Case Crumbles in Face of Functionality Challenge

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The US Court of Appeals for the Third Circuit found that trade dress protection did not extend to the design of a chocolate-dipped, stick-shaped cookie, because the product configuration was useful. Ezaki Glico Kabushiki...more

Dorsey & Whitney LLP

For Glossier, Inc., Pink Isn’t Just a Shade of Makeup

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Over the past decade, the influx of online shopping and home delivery has made every day feel like Christmas. The presence of an ever-growing network of online retailers makes it easier than ever to order just about anything...more

McDermott Will & Emery

Belt Fastener Trade Dress Conveyed as Invalid for Being Functional

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The US Court of Appeals for the Seventh Circuit affirmed a district court finding that a trade dress for a conveyor belt fastener was invalid as functional because its utilitarian advantages were disclosed in patents,...more

Faegre Drinker Biddle & Reath LLP

The Functionality Doctrine Remains Strong

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The functionality doctrine remains strong. In a recent decision, the Trademark Trial and Appeal Board relied on the doctrine of functionality in finding that the product configuration mark at issue was unprotectable under...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2019 #4

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PATENT CASE OF THE WEEK - Automotive Body Parts Ass’n. v. Ford Global Techs., LLC, Appeal No. 2018-1613 (Fed. Cir. July 23, 2019) - Our case of the week is a design patent case. It concerns two primary issues—what...more

Vedder Price

The Seventh Circuit Addresses the Use of Utility Patents as Evidence of Functionality of Trade Dress

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On June 12, 2019, the U.S. Court of Appeals for the Seventh Circuit decided Bodum USA, Inc. v. A Top New Casting Inc., No. 18-3030, 2019 U.S. App. LEXIS 17555 (7th Cir. June 12, 2019). The case, led by Vedder Price...more

Knobbe Martens

The Crown Jewels: How to Protect Your Jewelry Designs

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Knock-offs and ‘copycat’ designs are nothing new to the fashion world. The rising demand for “fast fashion” and bargain hunting alike make knock-offs particularly attractive to the consumer’s insatiable appetite. This trend...more

Bennett Jones LLP

Canadian Playground Fight Highlights the Importance of Industrial Design Protection

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A recent decision of the Federal Court of Canada has highlighted the difficulties in asserting trademark and copyright rights related to the appearance of functional products with unique design elements....more

Snell & Wilmer

Considerations When Using Descriptive or Generic Trademark Terms

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I. Adding Distinctive Terms or Logos to a Descriptive or Generic Term Will Not Protect the Descriptive or Generic Term. A descriptive trademark1 is one that immediately brings to mind a use, purpose, function,...more

Womble Bond Dickinson

Design Patents and Trade Dress

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I often get asked by clients to discuss the differences between design patents and trade dress. Both are intellectual property protections that protect similar aspects of a product—the appearance and aesthetic features. Last...more

Pillsbury Winthrop Shaw Pittman LLP

Ninth Circuit Decision Finds Side-By-Side Medical Results Charts Arguably Non-Functional and Protectable Trade Dress

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The Ninth Circuit recently considered whether the layout of a medical report can be protected as trade dress under the Lanham Act, or whether the layout of a report is merely functional. The subject case, Millennium...more

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