Trademark

UNITED STATES OF AMERICA

When does form equal function?
Au-Tomotive Gold v. Volkswagon of America, No. 04-16174 (9 th Cir. August 11, 2006)

When it comes to trademark protection, the line between form and function isn't just an abstract philosophical question: purely aesthetic product features may be protected as trademarks, but functional product features may not.  In determining whether a product feature is form or function, then, trademark protection depends upon the outcome.

In August 2006, the 9 th Circuit Court of Appeals rejected a manufacturer's argument that a mark or logo should be deemed "functional" when that mark or logo is itself "the actual benefit that the consumer wishes to purchase."  Au-Tomotive Gold v. Volkswagon of America, No. 04-16174 (9 th Cir. August 11, 2006) .   One of the marks in question in the case was the famous Volkswagon logo depicting the letters VW in a circle.  Au-Tomotive Gold argued that using the VW mark on key chains was not infringement because the mark was not being used to identify Volkswagon as the manufacturer, but for its inherent aesthetic value.  The 9 th Circuit felt that to accept Au-Tomotive Gold's argument would have severely undermined trademark protection.  Essentially, Au-Tomotive Gold proposed that any mark, logo or feature that enhanced customer appeal was functional - and therefore could not be protected under trademark law. 

Though its argument proved unsuccessful in the 9 th circuit, it was not entirely unfounded:  Au-Tomotive Gold sought application of a theory known as "aesthetic functionality." 

Traditionally applied to product features (paint colors, decorative patterns and the like), aesthetic functionality provides that under certain circumstances, an aesthetic product feature may be functional - and therefore may not be protected as a trademark.  In refusing to expand this theory to include circumstances like Au-Tomotive Gold's, the 9 th Circuit may well have shielded trademark protection from mortal injury.  However, aesthetic functionality is a theory that lives and breathes and may defeat trademark protection in some circumstances.  So, the question still remains:  when does form equal function?

Until the Supreme Court - or the trademark statute - addresses the issue directly, it appears that those circumstances will be evaluated at the District Court level, and results may vary widely.  So far, the courts have provided no clear, uniform standard for aesthetic functionality, but leading cases may help determine whether an aesthetic product feature is merely functional and ineligible for trademark protection:

• Feature is essential or affects cost or quality.   According to the Supreme Court, a product feature is functional "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article."  See Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, n. 10 (1982).  It may be that if this definition is satisfied, there is no need to do further analysis.  See Au-Tomotive Gold.
• Previously patented feature .  If the product feature was part of a utility patent claim in the past, it is probably functional.  See TrafFix Devices, Inc. v. Marketing Displays, Inc. , 532 U.S. 23, 29 (2001).
• Feature is competitively necessary .  If prohibiting competitors' use of the feature would put them at a serious disadvantage (for some reason other than the reputation of the maker or brand), that feature may be functional .  See Au-Tomotive Gold .
• Feature promotes matching .  It may well be a "function" to have items from various producers conform to a certain aesthetic feature.  For instance, a farmer may want all his equipment to be green - so no manufacturer may have trademark protection for the color green.  Deere & Co. v. Farmhand, Inc. , 560 F. Supp. 85, 98 (S.D.Iowa 1982).  Similarly, the black of an outboard motor may be functional because it facilitates that outboard motor's compatibility with many different hull colors.  See Brunswick Corp. v. British Seagull Ltd. , 35 F.3d 1527, 1535 (C.A. Fed. 1994).
• Feature minimizes apparent size .  A feature that serves to decrease the apparent size of an item may also be a "special functional attribute."  Id .

Hallie Flint Gilman
Pierce Atwood LLP