Lanham Act § 2(e)(5):

No trademark … shall be refused registration … unless it --

(e) Consists of a mark which, …(5) comprises any matter that, as a whole, is functional

(Registrable) (Not registrable)

(?)

Ridged Neck for stability when pouringEasy pour offset neck minimizes spillage.PERFECT BY DESIGNRidged neck bottle for stability when pouringThe new and improved ridged offset neck Fun-L-Fil plastic bottle.... A revolutionary ribbed neck plastic bottle. In the age of consumer convenience Kendall leads the competition with our new improved offset neck design plastic Fun- L- Fil bottle. ... Extensive research has shown that consumers prefer the Kendall ridged neck bottle because it helps prevent spillage while pouring.Fun-L-Fil is a great consumer package that is easy to open, easy to pour with a special ribbed neck.A li ' l di i h

"There's no rotisserie needed, and no electric cord . . . the round kettle lets you circulate the heat, not the meat" and on page 3 the following (emphasis in original):It's round for a reason!Forget the rotisserie and electric cord that ordinary grills need! Round means rotate the heat, not the meat. Cook faster, more evenly, and save energy.”

“a high degree of safety and functionality”

Vornado Air Circulation Sys. v. Duracraft Corp., 58 F.3d 1498 (10th Cir. 1995)

Vornado Air Circulation Sys. v. Duracraft Corp., 58 F.3d 1498 (10th Cir. 1995)

Vornado Air Circulation Sys. v. Duracraft Corp., 58 F.3d 1498 (10th Cir. 1995)

• What is the scope of the right to copy in patent law?• Patent law “functionality” (de facto functionality)

– product feature is “useful in the sense of serving some identified, beneficial purpose”

• Trademark law “functionality” (de jure functionality)– product feature which is a “competitive necessity,” for which there are no

“equally satisfactory alternatives”

• Where a disputed product configuration is part of a claim in a utility patent, and the configuration is a described significantinventive aspect of the invention, so that without it the invention could not fairly be said to be the same invention, patent law prevents its protection as trade dress, even if the configuration is nonfunctional.

TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001)

TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001)

The principal question in this case is the effect of an expired patent on a claim of trade dress infringement. A prior patent, we conclude, has vital significance in resolving the trade dress claim. A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection mustcarry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.

This Court consequently has explained that, "[i]ngeneral terms, a product feature is functional," and cannot serve as a trademark, "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article," that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage. Inwood Laboratories, Inc., supra, 456 U.S., at 850, n. 10, 102 S.Ct., at 2186, n. 10.

Qualitex Co. Jacobson Products Co., Inc., 514 U.S. 159 (1995)

(included in patent specification)

(the defendant’s designs)