About | HeinOnline Law Journal Library | HeinOnline Law Journal Library | HeinOnline
LOG IN
LOG IN

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. PART III. TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION IN COURTS OF GENERAL JURISDICTION'34 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 fact: 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. 718 Vol. 81 TMR

What Is HeinOnline?

HeinOnline is a subscription-based resource containing thousands of academic and legal journals from inception; complete coverage of government documents such as U.S. Statutes at Large, U.S. Code, Federal Register, Code of Federal Regulations, U.S. Reports, and much more. Documents are image-based, fully searchable PDFs with the authority of print combined with the accessibility of a user-friendly and powerful database. For more information, request a quote or trial for your organization below.



Short-term subscription options include 24 hours, 48 hours, or 1 week to HeinOnline.

Purchase Access

Contact us for annual subscription options:

Contact Us

Already a HeinOnline Subscriber?

Log In

profiles profiles most