When one party's trademark is used ornamentally on another party's product, that use may be protected by the aesthetic functionality defense, or that use may be a trademark infringement. But how do you know?
Background
A trademark indicates the source of a product. However, it is not protectible if its use is functional as used either by the owner or by an alleged infringer. A word, phrase, or design may have utilitarian functionality (being essential to the use or purpose of the article or affecting its cost or quality, such as a dual-spring design for a road sign). Some courts have also accepted the idea that a mark may have aesthetic functionality (used for goods bought for the appeal of the mark itself independent of any source-identifying function, such as a heart-shaped design for a candy box). The doctrine of aesthetic functionality is applied when protection would put competitors at a significant non-reputation-related disadvantage if they were precluded from using the same feature.
For example, china patterns were not protected as trade dress (a form of trademark) because competitors used them primarily for the attractiveness of the patterns. Similarly, jewelry displaying the insignia of a jewelry cooperative was not protected because purchasers primarily wished to express allegiance to that organization regardless of the manufacturer of the jewelry.
On the other hand, cases involving handbags ornamented with
This Case
A graduate of the
In LTTB's trademark infringement lawsuit against
LTTB appealed to the
LTTB presented no evidence that consumers buy the goods because they associate the phrase with LTTB rather than because they want goods bearing the phrase. Therefore, despite the fact that LTTB's mark was registered, and that neither
Author's Note: This decision, with which some may disagree, illustrates that the dividing line between a protectable mark and an aesthetically functional mark is not always apparent and depends on the facts of each particular case and the exercise of subjective judgment.
A trademark owner can try to show that its mark is not only popular in itself but also signifies the source of its goods by introducing evidence such as surveys, consumer statements, news articles, and advertising. Of course, an accused infringer can introduce similar evidence to show the opposite.
Aside from the functionality issue, the Trademark Act also provides that the owner of a registered trademark cannot prevent anyone else from using, otherwise than as a mark, a term which is descriptive of, and used fairly and in good faith only to describe, that party's goods or services.
So if you adopt a term or phrase that is generally used in ordinary language, or is inherently communicative of an idea, or describes something about your goods or services, you may not be able to stop competitors from using the same term or phrase, even if you have registered it, in what may be considered a non-trademark sense.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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