The International Trademark Association (INTA) has filed an amicus brief before the U.S. Supreme Court in Ezaki Glico Co. v. Lotte International America Corp., a case concerning the protection of product features as trademarks, and the extent to which such protection is available based on the concept of functionality. In its brief, INTA argues that the Court should grant a petition for certiorari and agree to hear the appeal from the Third Circuit’s decision during its upcoming term.

The underlying dispute concerns whether the configuration of the Pocky Stick, a snack product, is functional, and therefore not protectable as a trademark under U.S. law. The U.S. Court of Appeals for the Third Circuit affirmed a district court decision that the Pocky  Stick configuration is functional. However, it also held that the appropriate test for assessing the functionality of a product feature is simply determining whether the feature is “useful.” If so, then trademark protection is unavailable, the court determined. The Third Circuit also stated that if a product feature is “useful,” then the availability of alternative designs for the feature is irrelevant.

In its amicus brief, INTA identifies multiple problems with this new approach to assessing functionality. First, it conflicts with more than a century of case law and how the concept of functionality was considered, articulated, and applied, both by the Supreme Court and in every judicial circuit.

Second, the test ignores the rationale for the concept of functionality, which is to enable courts to differentiate between product features necessary for competitors to use, and that are therefore unprotectable, and product features unnecessary for competition that would cause customer confusion if used by competitors after becoming associated with a particular source. A test of functionality that focuses solely on “usefulness” would enable competitors to take advantage of product features associated exclusively with particular sources, which could lead to consumer confusion because all product features, to varying degrees, have some “useful” purpose. Otherwise, there would be no need to incorporate them into the product.

Third, to discard the careful framework courts have applied for so long in making functionality determinations, in which design choices and the availability of alternative product features have played a crucial role, in favor of a test that asks only whether a feature is “useful” would call into question the protection of dozens of well-known product features currently registered as trademarks. It is INTA’s position that were the Third Circuit test for functionality to be widely applied, the practical ramifications for both brand owners and consumers would be substantial.

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