Trademark Law & the Doctrine of Aesthetic Functionality

The Lanham Act prohibits trademark registration for any mark that “comprises any matter that, as a whole is functional.”  15 U.S.C.A.  §1052(e)(5)(2014).  A product feature can be functional in three(3) ways:  (1) utilitarian, (2) aesthetic, or (3) communicative.  Vincent N. Palliadino, Trade Dress Functionality After Traffic:  The Lower Courts Divide Again, 93 Trademark Rep., 1219, 1224-225 (2003).  We previously published a blog about a trademark registration that was denied on the basis of utilitarian functionality because, according to the courts, the proposed mark conveyed something useful about the design for which trademark protection is sought.

This blog will address the concept of aesthetic functionality which was has been cited as a defense in a recently filed trademark infringement case, Deere & Company v. Fimco, Inc. before the U.S. District Court of the Western District of Kentucky.     First some background information. Like the doctrine of tacking, also discussed in a previous blog, aesthetic functionality is rather an obscure doctrine.    A product feature is aesthetically functional “if it constitutes  the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product. . . . ” Int’l Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 917 (9th  Cir. 1980).

Aesthetic functionality issues generally arise wherein a proposed mark or an existing mark relies on color as a feature of the mark.   The Lanham Act does not actually list color alone as a protectable mark. In 1985, the Federal Circuit, however, became the first court to find that a color could be protectable as a trademark if the owner could establish that the color [or color combination] had acquired distinctiveness or, secondary meaning.   In re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed. Cir. 1985), finding that Owens Corning’s pink-colored insulation had acquired secondary meaning.  In 1995 the U.S. Supreme Court resolved the controversy among the circuits as to whether a trademark could consistent solely of a color in the case of Qualitix v. Jacobson Products Co., 514 U.S. 159, 174 (1995).

In finding for the plaintiff, SCOTUS concluded that the Lanham Act did not forbid usage of color as a trademark and that color(s) could reasonably serve as marks once they had acquired distinctiveness (secondary meaning) as long as their use was nonfunctional.  Qualitex at 163-165.   The color mark at issue in Qualitix was for a particular shade of green-gold cleaning pads.  Qualitix , a dry-cleaning business, sued Jacobsen, a competing company, when Jacobsen began using a similar shade of green-gold on its own cleaning pads.  Qualitex at 161.

The Qualitex decision, however, did not open the floodgates for protection of all color marks.   This is so because color per se is not protectable and colors that serve some useful purpose on products will be found to be functional and not protectable. By way example, trademark protection was denied to bright orange biohazard bags because that right orange color served to convey to the user that the contents of the bag were hazardous.   The type of functionality at issue in this case was communicative functionality (i.e., the color conveyed a message).    See American Hospital Supply Corp. v. Fisher Scientific Co., 713 F. Supp. 1108 (N.D. Ill. 1989). Compare this situation to the Qualitix case where the color associated with the cleaning pads conveyed no message.

What about aesthetic functionality and color?  The Restatement (Third) of Unfair Competition provides that if a design’s “aesthetic value” lies in its ability to confer a significant benefit that cannot be practically be duplicated by the use of alternative designs, the design is functional.  See Restatement (Third) of Unfair Competition § 17, cmt. C, pp. 175-76.   The policy underlying color-based marks and the doctrines of communicative and aesthetic functionality is to prevent the hindrance of competition where there is an insufficient number of different colors to be allocated among all possible producers of a given class of product.  John Deere & Co. v. Farmland, Inc., 560 F. Supp. 85 (S.D. Iowa 1982); aff’d 721 F.2d 253 (8th Cir. 1983).   The Deere Company is the producer of heavy machinery and was founded in 1837.     It is best known for agricultural equipment, particularly tractors, which today are painted yellow and green at the manufacturing stage.

In the 1982 John Deere case, the court found that farmers had an aesthetic preference for green farm equipment.   Thus allowing John Deere to make itself the exclusive manufacturer of solely green farm machinery would hinder competition because farmers prefer to purchase other products (e.g., loaders) that match the color of their other farm equipment.   Put another way, color can play a major role in the decision-making purchase process and a “green” trademark would give Deere an unfair competitive advantage.

Jump forward to 2015 to the instant trademark-related case involving the John Deere Company.  Deere has alleged the following: 1) trademark infringement under the Lanham Trademark Act of 1946 (15 U.S.C. §1114); 2) false designation of origin and unfair competition under 15 U.S.C. §1125(a); 3) trademark dilution under 15 U.S.C. §1125; and 4) trademark infringement under Kentucky state common law.  Firmco sells agriculture equipment and is the “largest manufacturer of lawn and garden sprayers in the United States.”   Firmco uses various color schemes including, green and yellow, for its sprayers and other agricultural equipment.

The John Deere Company holds numerous federally registered trademarks that invoke the green and yellow scheme.   See, for example, registration numbers 3857089 and 3857098.   In the former registration, the “color” mark is described as having a yellow stripe over a specific part of green agricultural tractors and land and grounds care tractors.  In the latter registration, the yellow color is specific for the inner part of tires on green farm tractors.

The 2015 case is in its very early stages.  In its responsive pleadings, Fimco counterclaimed that Deere could not assert its exclusive right over the green and yellow combination based on the doctrine of aesthetic functionality because the sole right to use this color combination puts competitors “at a significant disadvantage because purchasers of agricultural products prefer to have equipment in colors similar to their tractors.”  Deere moved to dismiss this aesthetic functionality claim Fed. R. Civ. P. 12(b)(6) for failure to state a claim for which the law offers a remedy.   The Fimco Court, citing the 1982 case, ruled that Fimco had sufficiently pleaded its aesthetic functionality defense to survive a 12(b)(6) motion to dismiss.  The Deere Court opined that whether or not the green-yellow combination is [aesthetically] functional in the same way as the sole green color at issue in the 1982 case is a factual determination that could not be determined at such an early stage of the case.  In reaching its conclusion, the Court noted that the “[t]he two most common tests of aesthetic functionality under the competition theory are the test for comparable alternatives and the effective competition test.”  Deere citing Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc. 280. F.3d 219, n. 16 (6th Cir. 2002).   If alternatives to a particular color do not exist in the market place, the “color” feature is functional and not entitled to trademark protection.  If, however, such alternatives do exist, then a “color” feature is not functional.  Deere citing Mitchell M. Wong, The Aesthetic Functionality Doctrine and the Law of Trade Dress Protection, 83 Cornell L. Review, 1116, 114-45 (1998).

It is noted that Fimco, if it loses the aesthetic functionality argument, will presumably be able to still use green with another color (or green alone).    That is, in contrast to the 1982 case, an entire sole color class (i.e., green) is not at issue.  Therefore, the “potential for thwarting competition” argument is weaker this time around since combinations of green plus one or more other colors for various types of agricultural equipment would still be available for agricultural equipment manufacturers.  In addition, the green-yellow combination has had many years to acquire distinctiveness.

By way of example, the John Deere color combination of green and yellow is today extremely well-known throughout the industrialized world.  In 2010, the General Court of the European Union held that colors per se could acquire a distinctive character as a consequence of their use in the market.  The use and market presence of the combination of the colors in John Deere’s agricultural machines were sufficient to enable the relevant public to attribute the combination of the colors to John Deere and therefore to identify the commercial origin of the goods by the mark according to the EU Court.   This matter arose in 2004 when the Italian company BCS SpA filed a declaration of invalidity claiming John Deere’s [color] trademark did not have distinctive character and further claimed infringement of its Italian non-registered mark.

Stay tuned for an update on the instant Deere case as it winds its way through the court.




© 2015 by Troy and Schwartz, LLC




Posted in Intellectual Property Law, Trademark Law - Current Issues on October 30,2015 07:10 PM
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