Functionality in Trademark Prosecution and Litigation

Protecting Trademarks/Trade Dress and Defending Against Infringement Claims: Functionality; Aesthetic Functionality; Related Copyright and Design Issues; Cross-Border Enforcement

A live 90-minute CLE webinar with interactive Q&A

Tuesday, October 10, 2017
1:00pm-2:30pm EDT, 10:00am-11:30am PDT

This CLE webinar will provide guidance to IP counsel on protecting trademarks and trade dress and defending against such claims, and dealing with the challenges and limitations related to functionality and aesthetic functionality. The panel will examine functionality as it is applied in trademark applications and trademark and trade dress litigation, discuss how it is addressed in USPTO registration and federal court decisions, and how it relates to copyright and design rights.


Companies look to trademark and unfair competition law to protect their product configurations, packaging, and other design elements of products and packaging. Counsel must overcome the challenge that functional features are not subject to trademark and trade dress protection, or copyright or design rights, in determining what IP protection is available.

In June 2017, a Court of Justice of the European Union (CJEU) advocate general issued an opinion indicating Christian Louboutin S.A.’s red sole may qualify for trademark protection. The determination depends on whether protecting the shape in combination with color gives the owner a “monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors.” The ruling was similar but not identical to a ruling in the Second Circuit Court of Appeals in the U.S. according some protection to Louboutin, but not to the extent sought. How the nature and scope of protection may differ across borders is of concern in an economy where cross-border transactions are commercially significant.

Trademark counsel should understand the trademark functionality doctrine and how functionality is treated in the context of USPTO registration decisions and federal court decisions. Counsel should also recognize how the doctrine of functionality limits trademark protection for product and packaging features and designs, and how the concept behind this doctrine impacts protection of such features and designs under copyright and design laws and in the cross-border context.

Listen as our authoritative panel of IP attorneys discusses the legal issues surrounding functionality and trademarks and trade dress. The panel will examine how other courts have treated the doctrine of utilitarian functionality and aesthetic functionality, and outline best practices for protecting marks and trade dress, and means of protecting product and packaging configurations and features.


  1. Functionality
    1. In trademark applications
    2. In trade dress applications
    3. In litigation
  2. TTAB and court treatment of utilitarian functionality and aesthetic functionality
  3. Best practices to avoid functionality problems


The panel will review these and other key issues:

  • What are the lessons from recent decisions regarding functionality in trademark applications?
  • What steps can counsel take to overcome the hurdle of proving non-functionality to obtain trademark protection?
  • How is the USPTO treating the issues of functionality in the context of trademarks?


B. Brett Heavner, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Mr. Heavner's practice covers all aspects of trademark and unfair competition law, with a particular focus on trademark infringement, counterfeiting, and false advertising litigation. He assists clients in developing strategies for establishing and enforcing their trademark rights. Mr. Heavner counsels on issues regarding trademark clearance searching, trademark and copyright licensing, and certification mark programs.

Roberta Jacobs-Meadway, Member
Eckert Seamans Cherin & Mellott, Philadelphia

Ms. Jacobs-Meadway has more than 40 years of experience representing clients in a wide range of industries in connection with trademark, copyright, and unfair competition matters. Her practice includes litigating IP disputes in the federal courts and trademark opposition and cancellation proceedings before the TTAB. She has significant experience in connection with the licensing of IP and counseling with respect to trademark and copyright issues.

Janet A. Marvel, Partner
Pattishall McAuliffe Newbury Hilliard & Geraldson, Chicago

Ms. Marvel protects brands, copyrighted works and domain names throughout the world. As part of her practice, Ms. Marvel represents plaintiffs and defendants in a wide variety of disputes involving trademark, copyright, rights of publicity, breach of contract, unfair competition, and false advertising. She has successfully tried cases and litigated around the country, in state and federal courts and before the USPTO.

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Intellectual Property Law Advisory Board

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