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81 Trademark Rep. 718 (1991)
Acquisition of Trademark Rights

handle is hein.journals/thetmr81 and id is 734 raw text is: ends of justice, unless an amendment would violate law or be
prejudicial to the rights of the opposing party.
Since the Board had not committed clear error or abused its
discretion, but had merely acted in the interest of judicial
economy, the petition was denied.
A. Acquisition of Trademark Rights
1. Functional Features
The Trademark Act nowhere says so, but courts and the PTO
uniformly agree that trademark protection may not be accorded to
shapes, configurations or other physical features that are func-
tional. The increasing popularity of accusations of trade dress
infringement gives the subject considerable currency. The purpose
of the doctrine is to avoid foreclosing competition in features that
are essential to any product's success. As we shall see, courts
sometimes define the cause (functionality) in terms of its effect
(foreclosure). There are two senses in which a product or a
characteristic or feature of a product may be functional. That
which enhances a product's performance or affects economies of
manufacture or sale is uniformly recognized to be functional in the
utilitarian sense. That which relates to a product's attractiveness
is sometimes considered to be aesthetically functional.
a. Utilitarian Functionality
One trial court explained that functionality is a question of
Thus, functionality analysis as it pertains to trade dress does
not break a design into its composite parts but instead
examines the product's overall appearance. A product may
have trade dress protection even if some of its composite parts
are functional, provided that the overall arrangement of the
features are nonfunctional.5
Functionality analysis, the court explained, begins with an
analysis of de facto functionality -that is, whether the article has
134. Editor's Note: Part III was written by Anthony L. Fletcher.
135. Dentsply International Inc. v. Kerr Mfg. Co., 732 F Supp 482, 485, 15 USPQ2d
1289, 1291 (D Del 1990), later proceeding 734 F Supp 656, 17 USPQ2d 1719 (D Del 1990),
see also infra notes 136, 301 and 574.


Vol. 81 TMR

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