Revival of Aesthetic Functionality Doctrine Imperils Non-Traditional Marks, Panelists Say

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By Tamlin H. Bason  

The resuscitation of the aesthetic functionality doctrine over the past year potentially puts any trademark that could conceivably be deemed to have a functional component at risk, trademark attorneys cautioned at a conference in Washington, D.C., March 8.

Panelists speaking at the eighth annual continuing legal education meeting of the Institute of Intellectual Property and Social Justice at Howard University Law School pointed to two 2011 decisions that revived the previously dormant doctrine.

First, in March 2011, the U.S. Court of Appeals for the Ninth Circuit dismissed a trademark infringement claim brought by the family of the artist who created the Betty Boop character after it determined that an alleged infringing use of the character was aesthetically functional, and thus not infringing. Fleischer Studios Inc. v. A.V.E.L.A. Inc., 654 F3d 958, 99 USPQ2d 1654 (9th Cir. 2011).

More recently, a district court in the Southern District of New York held that a single color cannot serve as a protectable trademark for fashion items as color serves ornamental and aesthetic functions vital to robust competition in the fashion industry. Christian Louboutin S.A. v. Yves Saint Laurent America Inc., No. 11-2381, (S.D.N.Y. Aug. 10, 2011).

Non-Traditional Trademarks at Risk

Under the aesthetic functionality doctrine, a design component of a trademark is functional, and thus not protectable, if it is important to the commercial success of the product.

As a result, colors, sounds, scents, or any other sort of non-traditional trademark may be particularly vulnerable if the doctrine has a sustained resurgence, experts said.

“Right now, if you can show any functionality then you can knock out someone's trademark,” Philip G. Hampton of Dickstein Shapiro, Washington, D.C., said.

Hampton went on to characterize the Betty Boop decision as “the worst decision in the last three-to-four years.”

In that case, use of the entire Betty Boop character on products was deemed aesthetically functional.

Hampton also took issue with the Christian Louboutin case in which the shoe designer's trademark for red soles was found unprotectable. Noting the popularity of Louboutin's red soled design, Hampton said that he would have found the soles to be a source identifier, and thus a trademark.

“I have never been a fan of the aesthetic functionality doctrine, but this was simply not an issue of aesthetic functionality,” Hampton said. “To me this was not aesthetic functionality because you don't have to have a red sole to look pretty.”

Fellow panelist Toni Y. Hickey of Foley & Lardner, Washington, D.C., said that she was “offended by this decision,” particularly because when Louboutin registered the mark it submitted 90 pages of evidence going to history of use and acquired distinctiveness that was ignored by the judge.

But she said that the impact of the case, which is on appeal to the Second Circuit, is not that the color mark was not protected, but that the aesthetic functionality doctrine was revived.

“We now have two very prominent cases that are bringing up what most trademark attorneys believed was the dead doctrine of aesthetic functionality,” Hickey said.

Dilution Standard Clarified But Still Uncertain

In another panel, Julia Anne Matheson and Douglas A. Rettew, both of Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., spoke about current developments in trademark dilution jurisprudence.

In August, the Trademark Trial and Appeal Board joined the Second and Ninth Circuits by holding that the Trademark Dilution Revision Act of 2006 rejected the “identical or nearly identical” standard for similarity that had previously been in place. Nike Inc. v. Maher, 100 USPQ2d 1018 (T.T.A.B. 2011) .

Under that standard, a plaintiff in a dilution lawsuit could prevail only if it could demonstrate that the defendant's mark was “identical or nearly identical” to the plaintiff's mark. But in the past few years courts have determined that the TDRA requires a less exacting standard of similarity than did its predecessor, the Federal Trademark Dilution Act of 1996. Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158, 97 USPQ2d 1947 (9th Cir. 2011); Starbucks Corp. v. Wolfe's Borough Coffee Inc., 588 F.3d 97, 92 USPQ2d 1769 (2d Cir. 2009).

Rettew said that in Abercrombie the Ninth Circuit noted that there were many cases prior to the TDRA that held that the standard in a dilution case is that the marks be substantially similar or identical.

“The court pretty much just threw every one [of those cases] out,” Rettew said. “The court didn't say that they were changing the law, it just said that for cases before the TDRA, a different standard was applied. But for the few cases that were after the TDRA, the panel just said that it was not bound those decisions because the similarity factor was not central to those holdings.”

Rettew said that the Ninth Circuit “made it very clear that the standard is no longer identical or nearly identical.” What was most interesting in the Abercrombie decision, however, was the court's statement that Congress intended for similarity to be only one consideration in a dilution lawsuit and that it was not the controlling factor, Rettew said.

That notion is in stark contrast to the Southern District of New York's latest decision in the long-running dispute between Starbucks and Wolfe's Borough Coffee Inc. d/b/a Black Bear Micro Roastery of Center Tuftonboro, N.H

For 17 years Starbucks has been trying to enjoin Black Bear's sale of “Charbucks” blend coffee.

In its third, and latest ruling on the issue, the district court determined that the only one of the five dilution factors that favored Black Bear was that the marks were not similar. Starbucks Corp. v. Wolfe's Borough Coffee Inc., 101 USPQ2d 1212 (S.D.N.Y. 2011). However, this one factor was enough to convince the court that there was no likelihood of dilution by blurring.

Noting that the district court in Starbucks “clearly felt that similarity was the controlling factor,” Rettew said that the different approaches to dilution “show that this is still a very testy cause of action, the determination of which will be largely molded by the viewpoints of the judge hearing the case.”

Is ‘Actual Dilution' Really Dead?

The TDRA also codified that the standard for dilution is “likelihood of dilution,” and not the “actual dilution” standard that was recognized in Moseley v. V Secret Catalogue Inc., 537 U.S. 418, 65 USPQ2d 1801 (2003).

But Rettew and Matheson said a recent decision by the TTAB seemingly suggests that the actual confusion standard may not be entirely dead.

In Rolex Watch USA Inc. v. AFP Imaging Corp., 101 USPQ2d 1188 (TTAB 2011), the TTAB dismissed Rolex's opposition to the proposed “Roll-X” mark because it said the marks were different in their appearance and commercial impression.

The board said that a study showing that 42 percent of respondents actually associated the proposed mark with Rolex was insufficient to show that the proposed mark would dilute the Rolex brand, and it said that in order to prevail in a dilution case you must show an association that actually impairs a registered mark.

“But how in the world can you prove that in a survey?” Rettew asked.

Matheson suggested that decision actually demonstrates “a back-door way to actual dilution.”


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