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Functionality in Trademark Prosecution and Litigation: Protecting Trademarks, Defending Against Infringement Claims

Functionality; Aesthetic Functionality; Related Copyright and Design Issues; Cross-Border Enforcement

Recording of a 90-minute premium CLE video webinar with Q&A

This program is included with the Strafford CLE Pass. Click for more information.
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Conducted on Tuesday, October 25, 2022

Recorded event now available

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This CLE course will guide IP counsel on protecting trademarks and trade dress, defending against such claims, and dealing with the challenges and limitations of 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 laws 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 October 2021, the Third Circuit in Ezaki Glico KK v. Lotte In’tl America Corp., 986 F.3d 250 (3d Cir. 2021) decided that "functional designs need not be essential, just useful." This decision expands the meaning of "functional" and will affect future litigation on the subject.

Trademark counsel should understand the trademark functionality doctrine and how functionality is treated in USPTO registration and federal court decisions. Counsel should also recognize how the principle of functionality limits trademark protection for the product and packaging features and designs and how the concept behind this doctrine impacts the 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, 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 functionality issues in the context of trademarks?


Heavner, B. Brett
B. Brett Heavner

Finnegan Henderson Farabow Garrett & Dunner

Mr. Heavner's practice covers all aspects of trademark and unfair competition law, with a particular focus on...  |  Read More

Marvel, Janet
Janet A. Marvel

Pattishall McAuliffe Newbury Hilliard & Geraldson

Ms. Marvel protects brands, copyrighted works and domain names throughout the world. As part of her practice, Ms....  |  Read More

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