The Doctrine of Functionality in Trademark Law

What is the Doctrine of Functionality in Trademark Law?

Building a strong brand is crucial for businesses looking to stand out in a competitive marketplace. Trademarks, from iconic logos to visually distinctive product designs, play a central role in shaping brand identity. However, not all product features are eligible for trademark protection. 

This is where the doctrine of functionality in trademark law comes into play — a key principle designed to maintain a fair balance between intellectual property protection and healthy market competition. 

The trademark law attorneys at Emerson Thomson Bennett can provide a detailed overview of the doctrine of functionality, its criteria, real-world examples, and its significance in trademark law. Whether you’re a business owner or an entrepreneur, understanding this doctrine can help you better protect and leverage your brand assets. 

What is the Doctrine of Functionality?

The doctrine of functionality in trademark law asserts that a product’s functional features cannot be trademarked. To qualify for trademark protection, a feature must be distinctive and capable of identifying the product’s source without interfering with competition. 

A feature is considered functional if it satisfies one of the following criteria:

• It is essential to the product’s use or purpose. 
• It impacts the product’s cost or quality. 

For example, the shape of a wrench that enhances its leveraging ability would be deemed functional because it serves the product’s purpose. The doctrine ensures that utilitarian features remain accessible for all competitors rather than being monopolized under trademark protection. 

Businesses looking to protect such features must pursue a utility patent, which provides limited-duration exclusivity. 

How the Doctrine Works

The doctrine of functionality operates to distinguish the distinct purposes of trademark and patent law. While trademark law helps protect a brand’s identity from infringement, patent law safeguards innovation and utilitarian features for a specific duration.

Here’s how the doctrine of functionality is applied in practice:

1. Essential Use or Purpose: A feature is functional if it performs a necessary role in how the product works. For instance, a dual-spring mechanism that improves the stability of road signs has been deemed functional and is, therefore, ineligible for trademark protection. 
2. Cost or Quality Impact: If a feature affects a product’s production cost or overall quality, it is considered functional. For example, using the color green for fake grass was ruled functional, as it helps achieve a natural grass-like appearance, which is essential to its purpose. 

Trademark law, in practice, prevents companies from unfairly monopolizing these useful, functional features without going through the patent process. 

Real-World Examples of Functionality

To illustrate the doctrine further, here are some examples where design or product features were deemed functional and therefore exempt from trademark protection:

• Wrench Shape: A specially contoured wrench designed to improve leverage and efficiency cannot be trademarked because its shape directly serves its purpose. 
• Road Sign Design: A dual-spring structure ensures durability and stability under varying weather conditions. This design element was ruled functional, as it contributes to the sign’s performance. 
• AstroTurf Color: The color green was deemed functional because it helps replicate the look and feel of real grass, critical to the product’s adoption. 

These cases demonstrate how the doctrine limits trademark protection to features that do not give businesses an unfair competitive advantage. 

Why the Doctrine Exists

The primary goal of the doctrine of functionality is to promote fair market competition. By ensuring that useful product features remain publicly accessible, the doctrine encourages innovation and prevents companies from stifling market progress. 

This doctrine also establishes a clear boundary between trademark and patent law:

• Patent law protects functional features but limits the protection to a specific timeframe (generally 20 years). 
• Trademark law, on the other hand, protects brand identifiers indefinitely but refrains from covering functional aspects inherent to the product. 

Without this doctrine, businesses could skirt patent regulations and indefinitely monopolize critical design features as trademarks. Such a monopoly would hamper advancements and create barriers for new entrants in the market. 

Why This Matters to Your Business

For businesses, particularly startups and entrepreneurs building their brand for the first time, understanding the boundaries of trademark law is essential. While trademarks are critical for establishing and protecting a brand’s identity, it’s equally important to recognize that functional product features cannot and should not fall under their protection. 

At Emerson Thomson Bennett, we navigate this complex balance between protecting intellectual property and observing competitive fairness. Our trademark attorneys work with clients across diverse industries to safeguard their brand identities — including trademarks, patents, trade secrets, and more. 

Contact us today to learn how we can help your business navigate trademark law, balance functionality, and achieve long-term brand success.