INTA Files Amicus Brief on Protection of Product Features as Trademarks
20-Oct-2021
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Source : International Trademark Association (INTA)
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NEW YORK - The International Trademark Association (INTA) announced in a press release that it has filed an amicus brief before the US Supreme Court in Sulzer Mixpac AG v. A&N Trading Co., No.21-417, a case concerning the protection of product features as trademarks and the proper test for determining whether protection may be limited due to a feature’s functionality. In its brief, INTA argues that the Court should grant a petition for certiorari and agree during its upcoming term to hear the appeal from the US Court of Appeals for the Second Circuit’s decision.
The underlying dispute in this case concerns whether candy-colored mixing tips used for dental adhesives are functional and therefore not protectable as trademarks under US law. The Second Circuit reversed a district court decision in which the candy-colored components (the product features) were deemed not functional and protectable as trade dress. While the Second Circuit did not find the candy-colored mixing tips to be functional under traditional standards for assessing utilitarian and aesthetic functionality, it held that they were functional because they corresponded to the sizes of mixing tips (i.e., each color represents a different size) and were therefore useful to dental practitioners.
In its amicus brief, INTA identifies multiple problems with the Second Circuit’s approach, as well as conflicting opinion among the various circuit courts when it comes to addressing functionality. First, the Second Circuit’s approach is initially problematic because it conflates the well-established tests created by the U.S. Supreme Court for establishing utilitarian and aesthetic functionality.
In addition to failing to apply the proper test, INTA argues that the Second Circuit’s decision is problematic because it inserts further discord and confusion into an important area of trademark law. Despite clear Supreme Court precedent regarding the proper tests for assessing functionality, many circuits have failed to apply the tests at all or have adopted divergent frameworks. Clarity regarding a single, nationwide standard would benefit brand owners and prevent forum shopping, the Association emphasized.