The TTABlogWhat with all the hoopla over controversial and headline-making cases, it’s tempting sometimes to forget about the need to drill and to stay up to date on the everyday craft of trademark law.  So when John Welch sees fit to pause from keeping tabs on the TTAB and share his thoughts on a fundamental topic in the art, not paying heed may constitute a prima facie departure from the standard of care for anyone unable to demonstrate that they’re as good at this stuff as he is.

Which, of course, you may be.  And indeed people who are very good at this stuff tell me they read this blog, presumably for entertainment.  Be that as it may, here’s what I, for my part, couldn’t have told you before I read John’s post of March 19, 2015, entitled, “Some Thoughts on de facto and de jure Functionality,” which begins as follows:

FunctionSection 2(e)(5) of the Lanham Act bars registration of a proposed mark that “comprises any matter that, as a whole, is functional.” The shape of a product or a feature of a product may have a function –i.e., it may have utility – but still be registrable as a trademark. In other words, the product or feature may be de facto (in fact) functional but not de jure (in law) functional.

Confusion over these concepts sometime arises when, in considering the registrability of a product shape, the TTAB or a court encounters design patents or utility patents that are related to the product. Utility patents, as the name indicates, concern things that have utility: “any new and useful process, machine, manufacture, or composition of matter.” Design patents concern the ornamental features of useful objects: the way things look rather than the way they work. Thus both utility and design patents are directed to things that are useful (or de facto functional).

A particular device may be the subject of a both a utility patent, because it incorporates a useful invention – say, a corkscrew that operates in a new way – as well as a design patent, because the device has a novel and nonobvious shape – suppose the corkscrew is shaped like a kangaroo.

In the trademark realm under Section 2(e)(5), when one considers whether a product configuration or feature may be registrable as a trademark, one must first determine whether it has utility – i.e., whether it is de facto functional. A purely ornamental feature (i.e., purely non-functional) – such as the decorations on a monster truck (for entertainment services) – by definition has no utility and is therefore eligible for registration as a trademark.

Excel functionJohn goes on to discuss, by setting out three (not simple) questions, how to determine whether functionality is a potential bar to registration of a trademark (and, presumably, to enforcement of a configuration as a trademark whether registered or not) or whether patent protection is, instead, more appropriate.  Not that they are mutually exclusive, either.

On that note (patents), note that John is the real deal — he holds a University of Illinois electrical engineering degree and, despite his demonstrated preference for what we will call the more prosaic side of IP law, he is also a patent lawyer.

Either way, he has his learning, and he puts it to good use as any commentator (including a blogger) worth listening to will:  By forming and expressing distinct opinions.  Thus John is not shy to say as follows concerning the intersection of utility patents and functional features of a product / packaging configuration that might affect its perceived eligibility for trademark protection:

The Board and the courts sometimes go astray when utility patents are involved. It is tempting to conclude that any feature discussed in a utility patent must ipso facto be de jure functional and therefore unregistrable as a trademark. But the Supreme Court in TrafFix was careful to limit the effect of utility patents as follows: it said that if a feature is claimed in a patent (not merely discussed in the specification), that is strong evidence that the feature is de jurefunctional. Not conclusive evidence, but strong. That is because even if a feature is claimed in a patent (for example, the lever on the cork screw), it still may be possible to design that element in a number of shapes that work equally well (the kangaroo tail being one).

Yes, it may be possible — if you know what you’re doing.

And with that in mind, and having learned, or, for you, perhaps, reviewed all that, it’s hard not to think this:  After the recent decision in B&B Hardware — which clearly, as the court implicitly acknowledged and the consensus of commentators do-it-yourself trademark registration for anything that matters, or could matter; that registering trademarks is something to be farmed out to self-described “not-a-law-firm-but” outfits such as Legal Zoom; or even that it’s a matter appropriately left to the cheapest bidder with a JD, or the one with the most effective SEO, on the Internet.

And I say that as someone whose function is, with some fun and interesting exceptions, not to prosecute trademark registrations for a living — not de jure, anyway.


By Ron Coleman

I write this blog.