48:4 (Dys)functionality

Trademark: Today and Tomorrow

Abstract

The functionality doctrine serves a unique role in trademark law. It is one of very few doctrines that can claim the mantle of a true defense: unlike virtually every other doctrine, a functionality finding can trump consumer understanding (or so it seems, at least in mechanical functionality cases). But despite the potential power of the doctrine, it is quite inconsistently applied. This is true of mechanical functionality cases because courts differ over the extent to which the doctrine is ultimately reducible to a determination of the effect of exclusive rights on competition. And it is even worse with respect to aesthetic functionality: courts often resist applying the doctrine where it seems called for, and some even reject the concept outright. I argue that the problems with functionality are largely intractable because they reflect a much bigger problem: trademark law lacks a sufficiently robust theory of competition against which particular actions can be judged “unfair.” Courts have long struggled, for example, to determine whether patent law sets the competitive baseline with respect to functional product features such that trademark law must stay clear, or whether, instead, courts should inquire into competitive need on a case-by-case basis. And they have long simply assumed that access to mechanically useful features is much more competitively important than access to aesthetic or ornamental features, even where the evidence points rather strongly to the opposite conclusion. This Essay suggests that the functionality doctrine remains muddled because it reflects these underlying tensions, and that none of the debates can be resolved simply by reference to economics. Each view reflects a normative judgment about the “natural” structure of a competitive market.