Seeing Red: The Reemergence of Aesthetic Functionality

Tracing Roots

The concept that inherently creative or appealing designs are, for that very reason, unprotectable under trademark law traces its roots to a Ninth Circuit decision, Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952), which refused protection for a floral china pattern design for replacement dishes, and the Restatement (First) of Torts ' 742, which proposed a broad definition of functionality that would have swept away protection for any features, including aesthetic features, that “affect” the purpose or performance of a product (or, more specifically, when the aesthetics “contribute to the value” for which the goods are bought and sold). The underlying concern arises from the interplay between trademark law, on the one hand, and copyright and patent, on the other, as the potentially unlimited duration of a trademark is arguably inconsistent with the Constitutionally “limited times” protection of the latter. However, even the Supreme Court, while championing the “carefully crafted bargain” among the various intellectual property regimes, on the basis of which trademark rights theoretically could not exist in copyrighted subject matter once dedicated to the public domain, Dastar Corp. v. Twentieth Century Fox Film Co., 539 U.S. 23 (2003), has also expressly declined to rule out trademark protection for subject matter within the scope of an expired utility patent when the issue was squarely raised. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 35 (2001).