In our class last night, we took on the challenge of understanding the shifting views of functionality, the doctrine that precludes trademark protection for utilitarian features.

We saw how the Court of Customs and Patent Appeals in In re Morton-Norwich Products, Inc., 671 F.2d 1332 (C.C.P.A. 1982), adopted the view that legal or de jure functionality was a subset of those features that are de facto functional.  The smaller subset involved those utilitarian features that were "superior" in light of the competitive necessity test stated in Ives Laboratories, Inc. v. Darby Drug Co., 601 F.2d 631 (2d Cir. 1979).

Trademark attorneys and courts took this to mean that the test of functionality was not merely whether the feature served a useful purpose, but whether the function dictated the design feature: whether it had to be that way to work. Thus, alternative competitive designs were relevant to show that a particular feature was not a "competitive necessity."  If there were competitive alternatives available, the feature was not legally functional even if it served a function.

The Supreme Court in changed this in Traffix Devices, Inc. v. Marketing Displays, Inc.,  532 U.S. 23 (2001).  The Court restates the traditional test that a feature is functional and unprotectable under trademark law if (1) it is essential to the use or purpose of the article, or (2) if it affects the cost or quality of the article.  More importantly, and contrary to the trend that had been apparent in the lower courts, the Court states that "competitive necessity" test does not need to be considered if the feature is functional under the traditional test. 

The Traffix decision results in a shift in understanding regarding the first test for functionality.  In deciding if a feature is "essential" to the use of purpose of the article, we need only ask if "it is the reason the device works," not whether it must be only that way to function.  Thus, we do not care about competitive alternatives.

A specific example may help.  Consider a paperclip. Under the view arising after the Morton Norwich case, the question would be, is this design dictated by the function of the article?  If so, it would be legally functional and not entitled to protection under trademark law.  Otherwise, it might be capable of protection if the the design had acquired secondary meaning designating a particular source.  It would follow that a paperclip was not legally functional because alternative designs (circles, triangles, etc.) could perform the same function.

The lesson of Traffix is different.  We now must only ask is the feature at issue (the design of the paperclip) the reason the device works?  We need not consider whether other designs are possible.  Since the design of the paperclip is the reason it works, under Traffix the design is functional and not entitled to protection as a trademark.

With the Traffix case, it appears that the Supreme Court has significantly limited the scope of trademark protection with respect to design features.  Previously, trademark protection was not available to those functional features that were legally functional because there was a competitive necessity to use them.  Now, trademark is not available to functional features.  Period.