A trademark is a category of intellectual property pertaining to the protection of a certain design, logo or expression (“marks”) of a certain product or service that helps it distinguish from other similar designs, logos or expressions. Trademarks are used to provide information about a particular service or product, thereby acting as tools that reduce transaction and search costs. Thus, trademarks permit customers to make an informed choice before the actual purchase of a product.
Economically, trademarks incentivize producers to produce goods of appropriate quality and maintain that quality so as to preclude appropriation by competitors. Therefore, trademarks attempt to protect the goodwill of producers, thus making them lie within the ambit of intellectual property instead of unfair competition.
The marks should tell more about the producer than the product. Therefore, to be granted protection, marks either have to be inherently distinctive or have acquired a distinctive characteristic due to secondary meaning. Secondary meaning pertains to the idea that the public begins to associate a certain term or feature with a particular product and as a result the producer of that particular product becomes more significant in the public’s mind. Even where the mark qualifies for distinctive characteristic under secondary meaning, two factors are taken into consideration:
- functionality; and
The functionality doctrine essentially forbids trademark law to discourage legitimate competition by allowing a manufacturer to monitor a valuable product feature. This is usually the case when the mechanical or technical features of a mark are essential to the product. Within this functionality doctrine lies the concept of ‘aesthetic functionality’ as well.
This article will argue that aesthetic functionality should not be used as a reason for denying a trademark. This is because the standard of aesthetic functionality has still not been appropriately developed under intellectual property law (it comes mainly from competition law). With different examples, this article will argue that the courts have, in many cases, attempted to apply this test arbitrarily and too broadly and in doing so have actually ignored the distinctive aspect of trademark.
Aesthetic Functionality: Not an Intellectual Property Law Principle
The aesthetic functionality principle was first devised by the courts in the case of Pagliero v Wallace China Co. It was held that if a design was attractive and appealing to the eye and contributed to the commercial success of the product, it would be aesthetically functional, therefore not protectable by trademark law. The reasoning was given in accordance with the Restatement of Torts which provided that the competition hindering feature of hotel china was the design which consisted of floral patterns. In Wallace’s case, the court said the following about the aesthetic functionality of a product:
“Whatever secondary meaning Wallace’s baroque silverware pattern may have acquired; Wallace may not exclude competitors from using those baroque design elements necessary to compete in the market for baroque silverware. It is a first principle of trademark law that an owner may not use the mark as a means of excluding competitors from a substantial market.”
It is apparent that the concept arose purely from the domain of competition law instead of intellectual property law because the central concern in each of the cases where such principle had been applied was not to protect the goodwill of the producer but how to maintain market competition and purely view trademarks, which fall under the domain of intellectual property, as tools of competition.
Over the years, there have been cases which have been successful in acquiring trademark protection for the aesthetics of a design. In the Qualitex case and the Louboutin case, it was held that colour, despite being an ornamental or decorative feature of a product, could be granted trademark protection if it had acquired secondary meaning and served as a valid source identifier. The same was held in the case of Gucci v Guess, where Gucci’s diamond motif design had been protected as a trademark because of its acquired secondary meaning. However, it can be said that despite acquiring secondary meaning, these trademarks do add to the commercial desirability of products as a status symbol gets attached to them. Another issue is the extent to which the courts have restricted circumstances where trademark protection to the owner (which is essentially the goodwill of the owner) is extended or protected, especially in the fashion and beauty industries.
By taking this concept into the domain of competition law and not intellectual property law, the courts are not protecting the goodwill of the producer or owner and are thus creating a limbo regarding the status of trademarks.
Ambiguous and Arbitrary Standard
In case of confusion regarding the limbo described above, courts are not able to apply the test properly and uniformly across the board. The case of Adidas America, Inc. et al v Forever 21, Inc. is relevant here. In this case, Adidas brought a claim against Forever 21 for infringing its trademark of 3 stripes (three diagonal straight lines) on the sleeves of jerseys, t-shirts and leggings. Adidas submitted that the 3-stripe feature was not just decorative but had also acquired secondary meaning because the stripes did indicate a person to be wearing the brand and make sportswear stand out.
Forever 21, by making similar styled striped sportswear (there being no limit to the number of lines in the stripes), could create confusion in the minds of customers and disrupt marketing and sales. However, it could be argued that despite gaining secondary meaning, the design was merely an aesthetic and fulfilled the purpose of competing in the market. People wanted to buy Adidas because it had become a status symbol. By granting trademark protection to 3 stripes, protection had been given to the basic elements of design which fulfilled the purpose of commercial desirability of the product. The courts clearly used a different standard in this case than the one established in the Wallace case.
Similarly in the case of Ventura Travelware, Inc. v Baltimore Luggage Co, the design of a registered trademark, which was a colorful 5-line striped plastic band on luggage, was held to be functional because its attractiveness substantially impacted sales. The court held that,
“…when a customer selects an item because its style or attractiveness is enhanced by ornamentation and decorative symbols the function of the decoration may hardly be regarded as a mark indicating source or origin.”
In another case, Damn I’m Good Inc. v Sakowitz Inc. the District Court again applied the principle of aesthetic functionality in a vague and arbitrary manner. The plaintiffs used to make bracelets with ‘Damn I’m Good’ inscribed on them. They started to use the same phrase on their tags as well. The court held that,
“…it is apparent that a customer ordering a bracelet inscribed with DAMN I’M GOOD or any other message does so primarily because of the message and not because of the underlying piece of jewelry.”
The court, therefore, refused to grant trademark protection to the company.
Similarly, in the case of Mattel Inc. v MGT Entertainment, the court again refused to award trademark protection to the special packaging of Bratz Dolls because it had enough decorative appeal to attract customers. In reaching this analysis, the court simply relied on the Restatement of Torts and did not cite any aesthetic functionality principle, as used in the precedents.
These instances point to the courts’ own confusion regarding the topic of aesthetic functionality and creating solid standards for it. There exists no uniformity in the application of this principle. The courts have granted protection many times in case of a valid source identifier but haven’t done so at other times when decorative features have failed to identify the source of the product. Even if we go by the argument that aesthetic functionality prohibits legitimate competition, such an argument is not tenable under unfair competition law because even in this realm, dominant position within a market is not prohibited, only its abuse is prohibited. No substantial proof exists regarding those with decorative trademarks abusing it to stop other products from entering the market.
Broad Application of the Principle
Jeffree Star’s makeup products are trademarked with an image of a star with shades inside it (in the shape of two Js facing each other). Origins, a skincare company, is trademarked with an image of two green trees. It can be argued that these signs fall within public domain and protecting them will hinder market competition, if we go by the reasoning given by the courts for denying trademarks for aesthetic functionality in the aforementioned cases, because one way or another, such trademarks, which do capture the attention of the consumers, are purely ornamental and set the product apart from the competitors’ products.
Even if courts opine that aesthetic functionality has been developed to curb unfair market competition, what about the small-scale companies which have mass-produced copies of Kylie Jenner’s Lip Kit and have been able to get away with it? Teeth could be seen in the fake kits while no teeth were visible in the original. If we assume a hypothetical situation where the Lip Kits would have had the ‘lips dripping with the liquid lipstick’ trademarked, it would have been easier to bring not only a successful infringement claim but also the argument that the ‘lips dripping with liquid lipstick’ had acquired secondary meaning and become a source identifier.
Such competition between different products in the market is always going to exist, however, with the confusing and broad standard of aesthetic functionality to deny a trademark, we are impeding the producer’s creativity. This is the reason why many beauty products don’t have their trademarks as images/design which could otherwise make things attractive (which is literally the purpose of fashion and beauty companies). Unfortunately, the broad implementation of aesthetic functionality robs them of their creativity. It should at least not be applicable to the beauty and fashion industry. If courts allow beauty and fashion companies to be creative with their trademarks, the marks can acquire secondary meaning in a better way and become source identifiers. Shapes, colours and designs, etc. should not arbitrarily be denied a trademark based on aesthetic appeal and the fact that they lie within the public domain. It is true that they are essential to the functioning of different services and products and exclusively granting them to one producer may put the other at a disadvantage. However, it must be noted how they are being used, their each and every detail, exact combination and patterns, etc. Market analysis (similar to Gucci or Louboutin) should also be conducted to check market trends and consumer perception. It needs to be seen how such features act for the purposes of identification and individuality, how they relate to basic consumer demands in connection with the product and how they can be differentiated from those meant for commercial desirability and commercial success of a product.
The court’s desire to sometimes find aesthetic or ornamental features as functional add more confusion among customers in the identification of the true source of a product. This is because, as mentioned above, trademarks perform the function of identification for the consumers in order to lower search and transaction costs. Therefore, denying a trademark solely on the basis of aesthetic functionality renders the purpose of a trademark useless because consumers become unable to make an informed choice between similar products of different competitors. Moreover, courts do not take into account the fact that most trademarks are chosen for their aesthetic appeal in order for them to be distinct and create a demand in the market. The principle of aesthetic functionality, therefore, acts as an oxymoron and should not be a determinant of a trademark’s protection.
 World intellectual property organization, ‘What are trademarks?’ (World Intellectual Property Organization).
 Rudensky Rachel and Senterfitt Akerman , ‘Aesthetic Functionality After Louboutin’  68(7) International Trademark Association Bulletin.
 Pagliero v. Wallace China Co, 198 F.2d 339 (1952)
 Wallace International Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76 (2d Cir. 1990
 Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995)
 Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 445, 447-48 (S.D.N.Y. 2011).
 Gucci Am., Inc. v. Guess? Inc., 2012 WL 1847646 (S.D.N.Y. May 21, 2012)
 ADIDAS AMERICA, INC., an Oregon corporation v. FOREVER 21 INC., a Delaware corporation, Case No. 3:17-cv-00377-YY.
 The fashion law, ‘Adidas Responds to Forever 21 Counterclaims: We Do “Not Use Stripes Merely as a Design Element”’ (The Fashion Law, 25 September 2018)
 Ventura Travelware, Inc. v. Baltimore Luggage Co, 66 Misc.2d 646 (1971)
 Damn I’m Good Inc. v. Sakowitz, Inc, 514 F.Supp. 1357 (1981)
 Mattel Inc. v. MGA Entertainment Inc., 782 F. Supp. 2d 911, 1007
 Justia trademarks, ‘JJ – Trademark Details’ (Justia Trademarks, 16 June 2016)
 Justia trademarks, ‘ORIGINS POWERED BY NATURE PROVEN BY SCIENCE – Trademark Details’ (Justia Trademarks, 8 September 2010 )
 Style vanity, ‘How to Spot a Fake Kylie Jenner Lip Kit? And Where Not to Buy Them’ (Style Vanity, 5 June 2015)
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