The functionality doctrine forbids the use of a product's feature as a trademark where doing so will put a competitor at a significant disadvantage because the feature is essential to the use or purpose of the article or affects its cost or quality. The functionality doctrine thus protects competitors against a disadvantage (unrelated to recognition or reputation) that trademark protection might otherwise impose, namely their inability reasonably to replicate important non-reputation-related product features.
A company had for years colored the dry cleaning press pads it manufactured with a special shade of green-gold. When a company rival began to use a similar shade on its own press pads, the manufacturer registered its color as a trademark and filed a trademark infringement case against its rival. The district court ruled that a trademark could not be obtained for a color alone. The case was appealed.
Can a color be registered as a trademark?
The court held that a color, to the extent it met the ordinary requirements to register a trademark, was registerable. The court also held a color could satisfy the part of the statutory definition of a trademark, which required a person to "use" or "intend to use" the mark to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source was unknown. The court held, however, that to the extent that a color was functional, the mark would have to be examined to determine if its use as a mark would permit one competitor to interfere with legitimate competition.