Functional matter cannot be protected as a trademark. 15 U.S.C. §§1052(e)(5) and (f), 1064(3), 1091(c), and 1115(b). A feature is functional as a matter of law if it is “essential to the use or purpose of the article or if it affects the cost or quality of the article.” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850, n.10, 214 USPQ 1, 4, n.10 (1982).
While some courts had developed a definition of functionality that focused solely on “competitive need” – thus finding a particular product feature functional only if competitors needed to copy that design in order to compete effectively – the Supreme Court held that this “was incorrect as a comprehensive definition” of functionality. TrafFix, 532 U.S. at 33, 58 USPQ2d at 1006. The Court emphasized that where a product feature meets the traditional functionality definition – that is, it is essential to the use or purpose of the product or affects its cost or quality – then the feature is functional, regardless of the availability to competitors of other alternatives. Id.; see also Valu Eng'g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002) (“Rather, we conclude that the [TrafFix] Court merely noted that once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available” (footnote omitted).)
However, since the preservation of competition is an important policy underlying the functionality doctrine, competitive need, although not determinative, remains a significant consideration in functionality determinations. Id. at 1278, 1428.
The determination that a proposed mark is functional constitutes, for public policy reasons, an absolute bar to registration on either the Principal or the Supplemental Register, regardless of evidence showing that the proposed mark has acquired distinctiveness. See TrafFix, 532 U.S. at 29-33, 58 USPQ2d at 1005-1007; see also In re Controls Corp. of Am., 46 USPQ2d 1308, 1312 (TTAB 1998) (rejecting applicant’s claim that “registration on the Supplemental Register of a de jure functional configuration is permissible if the design is ‘capable’ of distinguishing applicant’s goods”). Thus, if an applicant responds to a functionality refusal under §2(e)(5), 15 U.S.C. §1052(e)(5), by submitting an amendment seeking registration on the Supplemental Register that is not made in the alternative, such an amendment does not introduce a new issue warranting a nonfinal Office action. See TMEP §714.05(a)(i). Instead, the functionality refusal must be maintained and made final, if appropriate, under §23(c), as that is the statutory authority governing a functionality refusal on the Supplemental Register. Additionally, for functionality refusals, the associated nondistinctiveness refusal must be withdrawn. See In re Heatcon, Inc., ___ USPQ2d ___, Ser. No. 85281360, slip op at 7-8 (Sept. 29, 2015).
See TMEP §§1202.02(a)(v)–1202.02(a)(v)(D) regarding evidentiary considerations pertaining to functionality refusals.