AND · 15usc1125:nonfunctional-dress
Nonfunctionality prevents permanent trademark monopoly on useful features. Bodum’s full functionality paragraph includes utilitarian and competitive-necessity tests; do not confuse usefulness of the underlying product with necessity of the particular claimed design.
Exact element source
(3) In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.Source:
docroot/ir/usc/title15.jsonl#title15_sec1125; Unicode character offsets [1372:1629] (end exclusive); SHA-256 0a5680239d11ae3247a99abab2344db45177346d2d2e3050e95c82fb39f3aca7.Routes and case patterns
| Route | Definition | Merits instance blocks | Distinct merits cases | Examples (up to 3 cases per count group) |
|---|---|---|---|---|
| ornamental-design provisional; provisional (1 case) | Whether a product design is ornamental rather than dictated by use or cost. | 1 Satisfied 1; not satisfied 0; excluded context 0 | 1 | Bodum USA, Incorporated v. A Top New Casting Incorporated — 927 F.3d 486 (2019) · United States Court of Appeals for the Seventh Circuit · 2019 — satisfied · proved (15usc1125: author: Astra2 · not independently reviewed) · applied/merits · counted |
| utility-patent-evidence provisional; 2 observed cases | Whether an expired or existing utility patent shows the claimed feature is functional (TrafFix). | 1 Satisfied 0; not satisfied 1; excluded context 1 | 1 | Traffix Devices, Inc. v. Marketing Displays, Inc. — 532 U.S. 23 (2001) · Supreme Court of the United States · 2001 — not · no-evidence (15usc1125: author: Astra2 · not independently reviewed) · applied/merits · counted Bodum USA, Incorporated v. A Top New Casting Incorporated — 927 F.3d 486 (2019) · United States Court of Appeals for the Seventh Circuit · 2019 — not reached · basis not recorded (15usc1125: author: Astra2 · not independently reviewed) · applied/procedural · not counted |
How courts decided this element
| Case | Element | Holding and scope | Pattern | Exact source quotations |
|---|---|---|---|---|
| Bodum USA, Incorporated v. A Top New Casting Incorporated — 927 F.3d 486 (2019) · United States Court of Appeals for the Seventh Circuit · 2019 — not reached (15usc1125: author: Astra2 · not independently reviewed) | Claimant proves nonfunctionality | not_reached Excluded from merits counts applied / procedural theory: Rule 403 exclusion of patent illustrations; subject: theory=Rule 403 exclusion of patent illustrations Separate evidentiary ruling supporting denial of new trial; excluded patents are not substantive proof of nonfunctionality. | evidence/utility-patent-exclusion | The patents A Top sought to introduce do not claim any of the features that comprise the claimed Chambord trade dress.Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [25503:25621] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.A district court may exclude relevant evidence where its probative value is substantially outweighed by, for example, a risk of unfair prejudice or confusing the issues.Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [19090:19259] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.The district court did not abuse its discretion in excluding this evidence.Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [25427:25502] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057. |
| Bodum USA, Incorporated v. A Top New Casting Incorporated — 927 F.3d 486 (2019) · United States Court of Appeals for the Seventh Circuit · 2019 — satisfied · proved (15usc1125: author: Astra2 · not independently reviewed) | Claimant proves nonfunctionality | satisfied Counted merits instance applied / merits basis: proved; theory: Overall appearance, excluding functional carafe and plunger; subject: theory=Overall appearance, excluding functional carafe and plunger The reviewed verdict concerns nonfunctionality of the particular overall design, not whether coffeemakers or handles perform functions. Other liability elements were outside the appellate challenge. | product-design/ornamental-coffee-press | The Supreme Court has explained that " 'a product feature is functional,' and cannot serve as a trademark, 'if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.' " Qualitex , 514 U.S. at 165, 115 S.Ct. 1300 (quoting Inwood Labs., Inc. v. Ives Labs., Inc. , 456 U.S. 844, 850 n.10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982) ). Even if a claimed trade dress does not satisfy this first test, "it can still be functional if it is a 'competitive necessity,' that is, if its exclusive use 'would put competitors at a significant non-reputation-related disadvantage.' " Arlington Specialties , 847 F.3d at 419 (quoting TrafFix Devices , 532 U.S. at 32-33, 121 S.Ct. 1255 ); see also Specialized Seating, Inc. v. Greenwich Indus., LP , 616 F.3d 722, 727 (7th Cir. 2010) (a design is functional where a product "looks the way it does in order to be a better [product], not in order to be a better way of identifying who made it").Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [8044:9018] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.Bodum does not claim a trade dress in the cylindrical carafe or the plunger, as it acknowledges those elements are functional for a French press coffeemaker.Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [10677:10834] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.In contrast, Mr. Anders did not believe the particular C-shape of the Chambord's handle worked better than an alternatively shaped handle and, in fact, testified that he thought the C-shape was "not as ergonomically designed as it could be."Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [12516:12757] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.More importantly, Bodum introduced evidence that both it and A Top sell French presses with alternative designs and made of different materials.Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [15800:15944] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.Indeed, Joergen Bodum, CEO of Bodum's parent company, testified regarding Chambord advertisements describing the product as "functional" and about an interview he gave in which he described Bodum's products as "function-driven."Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [14330:14558] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.Overall, looking at the evidence in the light most favorable to the verdict, Bodum presented sufficient evidence for the jury to have found Bodum's claimed trade dress was nonfunctional. We cannot say the jury was irrational to reach this conclusion, so we affirm the denial of A Top's motion for judgment as a matter of law.Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [18513:18838] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057. |
| Traffix Devices, Inc. v. Marketing Displays, Inc. — 532 U.S. 23 (2001) · Supreme Court of the United States · 2001 — not · no-evidence (15usc1125: author: Astra2 · not independently reviewed) | Claimant proves nonfunctionality | not Counted merits instance applied / merits basis: no-evidence; theory: Functional design claimed in expired utility patents; subject: theory=Functional design claimed in expired utility patents No-evidence reflects inability to overcome functionality on the summary-judgment record, reinforced by a legal evidentiary rule. The Court does not create an absolute patent-expiration bar for ornamental features; cany is preserved OCR. | utility-patent/dual-spring-road-sign | A utility patent is strong evidence that the features therein claimed are functional.Source: docroot/ir/caselaw/us_532.jsonl#/us/532/0023-01; Unicode character offsets [8727:8812] (end exclusive); SHA-256 e20ddab45d1c903de6daba9faefb48543deb0cd6d8418cfcb001b3aa2096317c.The dual-spring design serves the important purpose of keeping the sign upright even in heavy wind conditions; and, as confirmed by the statements in the expired patents, it does so in a unique and useful manner.Source: docroot/ir/caselaw/us_532.jsonl#/us/532/0023-01; Unicode character offsets [11915:12127] (end exclusive); SHA-256 e20ddab45d1c903de6daba9faefb48543deb0cd6d8418cfcb001b3aa2096317c.The dual-spring design affects the cost of the device as well; it was acknowledged that the device “could use three springs but this would unnecessarily increase the cost of the device.”Source: docroot/ir/caselaw/us_532.jsonl#/us/532/0023-01; Unicode character offsets [13171:13357] (end exclusive); SHA-256 e20ddab45d1c903de6daba9faefb48543deb0cd6d8418cfcb001b3aa2096317c.MDI has pointed to nothing arbitrary about the components of its device or the way they are assembled.Source: docroot/ir/caselaw/us_532.jsonl#/us/532/0023-01; Unicode character offsets [18959:19061] (end exclusive); SHA-256 e20ddab45d1c903de6daba9faefb48543deb0cd6d8418cfcb001b3aa2096317c.The rule we have explained bars the trade dress claim, for MDI did not, and cannot, cany the burden of overcoming the strong evidentiary inference of functionality based on the disclosure of the dual-spring design in the claims of the expired patents.Source: docroot/ir/caselaw/us_532.jsonl#/us/532/0023-01; Unicode character offsets [9620:9871] (end exclusive); SHA-256 e20ddab45d1c903de6daba9faefb48543deb0cd6d8418cfcb001b3aa2096317c. |
Court interpretations
interpretation
At trial, Bodum was required to prove a number of elements for the jury to find trade dress infringement-that it owns a valid trade dress in the Chambord design, that the trade dress is not functional, and that A Top's SterlingPro was likely to cause consumer confusion as to its source. See id.
Bodum USA, Incorporated v. A Top New Casting Incorporated — 927 F.3d 486 (2019) · United States Court of Appeals for the Seventh Circuit · 2019 (15usc1125: author: Astra2 · not independently reviewed)
At trial, Bodum was required to prove a number of elements for the jury to find trade dress infringement-that it owns a valid trade dress in the Chambord design, that the trade dress is not functional, and that A Top's SterlingPro was likely to cause consumer confusion as to its source. See id.Source:
docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [7169:7464] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.Nonfunctionality prevents permanent trademark monopoly on useful features. Bodum’s full functionality paragraph includes utilitarian and competitive-necessity tests; do not confuse usefulness of the underlying product with necessity of the particular claimed design.
interpretation
The Supreme Court has explained that " 'a product feature is functional,' and cannot serve as a trademark, 'if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.' " Qualitex , 514 U.S. at 165, 115 S.Ct. 1300 (quoting Inwood Labs., Inc. v. Ives Labs., Inc. , 456 U.S. 844, 850 n.10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982) ). Even if a claimed trade dress does not satisfy this first test, "it can still be functional if it is a 'competitive necessity,' that is, if its exclusive use 'would put competitors at a significant non-reputation-related disadvantage.' " Arlington Specialties , 847 F.3d at 419 (quoting TrafFix Devices , 532 U.S. at 32-33, 121 S.Ct. 1255 ); see also Specialized Seating, Inc. v. Greenwich Indus., LP , 616 F.3d 722, 727 (7th Cir. 2010) (a design is functional where a product "looks the way it does in order to be a better [product], not in order to be a better way of identifying who made it").
Bodum USA, Incorporated v. A Top New Casting Incorporated — 927 F.3d 486 (2019) · United States Court of Appeals for the Seventh Circuit · 2019 (15usc1125: author: Astra2 · not independently reviewed)
The Supreme Court has explained that " 'a product feature is functional,' and cannot serve as a trademark, 'if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.' " Qualitex , 514 U.S. at 165, 115 S.Ct. 1300 (quoting Inwood Labs., Inc. v. Ives Labs., Inc. , 456 U.S. 844, 850 n.10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982) ). Even if a claimed trade dress does not satisfy this first test, "it can still be functional if it is a 'competitive necessity,' that is, if its exclusive use 'would put competitors at a significant non-reputation-related disadvantage.' " Arlington Specialties , 847 F.3d at 419 (quoting TrafFix Devices , 532 U.S. at 32-33, 121 S.Ct. 1255 ); see also Specialized Seating, Inc. v. Greenwich Indus., LP , 616 F.3d 722, 727 (7th Cir. 2010) (a design is functional where a product "looks the way it does in order to be a better [product], not in order to be a better way of identifying who made it").Source:
docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [8044:9018] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.Nonfunctionality prevents permanent trademark monopoly on useful features. Bodum’s full functionality paragraph includes utilitarian and competitive-necessity tests; do not confuse usefulness of the underlying product with necessity of the particular claimed design.