Trade dress pertains to the look of a product or its packaging, and may include features such as size, shape, color, or color combinations, texture, graphics, or even particular sales techniques. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992); Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 629 (6th Cir. 2002).

It is the nonfunctional aspects of the product design that may be protected. Groeneveld Transp. Efficiency, Inc. v. Lubecore Int'l., Inc., 730 F.3d 494, 508 (6th Cir. 2013).

A product design is functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Inwood Lab'ys, Inc. v. Ives Lab'ys, Inc., 456 U.S. 844, 850 n.10 (1982).

A feature is not functional, however, if it is “merely an ornamental, incidental, or arbitrary aspect of the device.” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001) (noting Qualitex inquiry into “significant non-reputation-related disadvantage” in cases of esthetic functionality).

Aesthetic Functionality

“Aesthetic functionality” refers to situations where a design feature may not provide a utilitarian advantage in terms of product performance, but provides other competitive advantages.

In Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1531 & 1533 (Fed. Cir. 1994), the Federal Circuit affirmed that the color black for outboard motors was functional because, while it had no utilitarian effect on the mechanical working of the engines, it nevertheless provided other identifiable competitive advantages such as ease of coordination with a variety of boat colors and reducing the apparent size of the engines.

The USPTO's Trademark Manual of Examining Procedure (“TMEP”) states that the concept of “aesthetic functionality” (as opposed to “utilitarian functionality”) has been the subject of confusion with the trademark issue of whether something is ornamental in nature such that it would not function as a trademark. TMEP 1202.02(a)(vi); see also In re DC Comics, Inc., 689 F.2d 1042, 1047–1050 (C.C.P.A. 1982) (rejecting the concept of aesthetic functionality where it is used as a substitute for “the more traditional source identification principles of trademark law,” such as the ornamentation and functionality doctrines).

The Sixth Circuit has held that “some products function based on their aesthetic properties through so-called ‘aesthetic functionality,'” where a product's design “communicates the use, purpose, cost, or quality of the product in a way that competitors cannot avoid replicating without incurring costs.” Leapers, Inc. v. SMTS, LLC, 879 F.3d 731, 737 (6th Cir. 2018) (quoting Abercrombie, 280 F.3d at 642). A design lacks aesthetic functionality when “the design is not a competitive necessity such that ‘exclusive use … would put competitors at a significant non-reputation related disadvantage.'” Id. (quoting TrafFix, 532 U.S. at 32–33).

Aesthetic Conversion Kits

In DayCab Co., Inc. v. Prairie Tech, LLC, No. 22-5625, __ F.4th __ (6th Cir. May 11, 2023), the Sixth Circuit recently addressed aesthetic functionality in connection with conversion kits that convert a long-haul sleeper tractor with a sleeping unit for the driver—into a “daycab” without a sleeping unit.

Plaintiff's founder testified that he designed the DayCab conversion kit panel as a “matter of personal taste” because he happened to “like[ ] the way it looked,” thus showing his aesthetic intent in designing and configuring the panel.

Defendants argued that the function of the conversion kit panel is to cover the opening created by the removal of the sleeper berth, and that Plaintiff's website contained statements about the functionality of its product design.

            However, while a product may serve a function, that does not render its specific features necessarily functional. For instance, in Leapers, the Court considered a unique “knurling” pattern which the plaintiff used to add texture to adjustable rifle scopes. Leapers, 879 F.3d at 733. The Court held that while knurling was a functional component of the rifle scope, a jury could reasonably conclude that the knurling design that the plaintiff used on its rifle scopes was “purely ornamental and therefore nonfunctional.” Id. at 738. It noted that the variety of patterns that could be applied to an adjustment knob was “effectively unlimited” and there was no “scarcity” or “depletion” of available designs. Id. at 739.

The DayCab court held that “while the conversion kit panel serves the general function of covering the opening in a truck cab, there remains a genuine dispute of material fact whether the specific design of the panel constitutes protectable trade dress, as that design is not the only design available.”

The evidence also included two competitor designs that DayCab believed were non-infringing alternative designs, which the Court found was relevant to the functionality determination because they supported DayCab's contention that its product was designed with aesthetic intent and that its resulting features are ornamental rather than functional.

There were genuine issues of material fact regarding non-functionality because the Court found there was “conflicting evidence regarding the functionality of DayCab's conversion kit panel.”

The Court also held that evidence of intentional copying “tends to show” secondary meaning.

The attorneys at Thomas P. Howard, LLC litigate trademark cases nationwide including in Colorado.