The Trademark Office just refused to register another product design. They do this often. This time, it was the shape of a wind turbine:
The Office found that the design was "functional" because it was "essential to the use or purpose of the article" or "affect[ed] the cost or quality of the article." You can't register or protect a product design if it is functional, and many, many designs get shot down for just that reason.
So what? Well, often the way trademark protection for designs comes up in business is this: Company A develops a new product that surpasses its competition. The company patents the product. When the patent expires, Company A personnel are very unhappy that anyone who wants to copy the product can do just that. Companies want to continue to protect their market, so they look for long term intellectual property protection. That comes in the form of a trademark.
But it's too late. Company A did not think early enough about how to protect its design after its patent expired. Its design is almost assuredly functional, in large part because courts don't want companies to do an end-run around patent expiration. But, there are ways of retaining market goodwill, explained below, after a patent expires.
The way that courts evaluate functionality is to look at the following factors:
- Whether there is a utility patent for the product.
- Whether the company advertised the utilitarian benefits of the product.
- Whether there are alternative designs to use for competitive products.
If Company A develops a new product, it would be unreasonable not to get a utility patent. So the functionality door is probably closed right there. Moreover, the company will want to advertise the utilitarian benefits of its product, thereby closing the window.
The third factor, availability of alternative designs, can present a difficult analysis. In an early case, the Trademark Office protected the following as a mark, because competitors could make their products another way (i.e. use an alternative design).
Apparently, that did not sit well with the courts, who concluded that the design was not very distinctive. In Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), the Supreme Court dealt with the idea of alternative designs, finding that alternative designs need not be considered at all if the alleged trademarked feature can be established as essential to the use or purpose of the product.
Put another way, if there is a patent, courts often give only lip service to the other factors. The courts have further made it difficult to evaluate functionality based on alternative designs by stating that the existence of many alternative designs evidences that all of them are functional.
Company A, with its patent and advertising, has probably doomed its trademark protection. What could it have done differently?
There is probably no way to stop competitors from adopting patented product benefits in copycat products after a company's patent has expired. However, a company can maintain consumer recognition. If it is not cost prohibitive, the company can build in a distinctive feature. With respect to the wind turbine, it might also place a logo or design on the product's blades. Perhaps the company can evidence that a feature of its product is not functional by obtaining a design patent. Design patents are evidence that a feature is NOT functional. The company can, and should, create "look for" advertising, to establish that the feature is known by the public as a symbol of source. The following is an example:
In any event, while it is probably not possible to protect all elements of a utility patented product, companies who think early and often can nevertheless make it easier to distinguish themselves as the first, or the market leader, with some careful thought with respect to the design of the product.
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