Trade dress functionality stands for a reasonable premise: features which are essential to the use or purpose of an article, which affect the cost or quality of the article, or whose exclusive use would put competitors at a significant non-reputation-related disadvantage, are not protectable as signifiers of source or sponsorship. Functionality has broad implications, as a product’s shape can be its most identifiable feature.
The problems plaguing the functionality doctrine have been examined from a substantive point of view; however until the standard by which functionality is determined is changed, these problems are likely to continue to persist. When adjudicating a trade dress infringement claim, courts currently determine functionality as a question of fact; however no court or legal scholar has ever thoroughly examined the reasons for using this standard rather than making the determination as an evidentiary conclusion at law. After all, what courts are really trying to resolve with functionality is whether this feature is something that should be governed by patent law. Courts have continuously held patentability to be a constitutional standard, subject to an evidentiary conclusion at law — and rather than a jury, the court makes this determination. This Author argues that that a “finding of fact” is the wrong standard for deciding functionality and that there are stronger constitutional and public policy reasons for determining the functionality of trade dress as an evidentiary legal conclusion.
Liebesman, Yvette Joy, Rethinking Trademark Functionality as a Question of Fact. 15 Nevada Law Journal 202 (2014).