Functionality in Trademark Prosecution and Litigation: Protecting Trademarks, Defending Against Infringement Claims

This CLE course will guide IP counsel on protecting trademarks and trade dress, defending against such claims, and dealing with the challenges and limitations of functionality and aesthetic functionality. The panel will examine functionality as it is applied in trademark applications and trademark and trade dress litigation, discuss how it is addressed in USPTO registration and federal court decisions, and how it relates to copyright and design rights.

Companies look to trademark and unfair competition laws to protect their product configurations, packaging, and other design elements of products and packaging. Counsel must overcome the challenge that functional features are not subject to trademark and trade dress protection or copyright or design rights in determining what IP protection is available.

In October 2021, the Third Circuit in Ezaki Glico KK v. Lotte In’tl America Corp., 986 F.3d 250 (3d Cir. 2021) decided that "functional designs need not be essential, just useful." This decision expands the meaning of "functional" and will affect future litigation on the subject.

Trademark counsel should understand the trademark functionality doctrine and how functionality is treated in USPTO registration and federal court decisions. Counsel should also recognize how the principle of functionality limits trademark protection for the product and packaging features and designs and how the concept behind this doctrine impacts the protection of such features and designs under copyright and design laws and in the cross-border context.

Listen as our authoritative panel of IP attorneys discusses the legal issues surrounding functionality, trademarks, and trade dress. The panel will examine how other courts have treated the doctrine of utilitarian functionality and aesthetic functionality and outline best practices for protecting marks and trade dress and means of protecting product and packaging configurations and features.