Trademarks used functionally and not as a mark

Trademark law gives the mark owner a right to protect against conduct that is likely to create confusion about sources or sponsorship of a product or service. But trademark law does not give the mark owner control over all use of the image, word, or phrase that constitutes its mark. Volumes of reported cases and billions of dollars of litigation have gone into drawing the distinction and the amounts have increased in the digital information age. There are many doctrines used. Now, apparently, the Ninth Circuit has reincarnated another – functional use of a mark.


So, for example, a fan of the Chicago White Sox (like me) creates a car decal, or a poster with the club’s name and mark without purporting them to be “official” White Sox products The fan (me) should not be held to be an infringer even if I sell or give copies to other fans. Right? I hope so.

            In the 1980’s, one concept that would protect me was encompassed in the idea of “functional” use of a mark. International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir.1980). The court commented:

Trademark law does not prevent a person from copying so-called “functional” features of a product which constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product. .... It is not uncommon for a name or emblem that serves in one context as a … trademark also to be merchandised for its own intrinsic utility to consumers. We commonly identify ourselves by displaying emblems expressing allegiances. Our jewelry, clothing, and cars are emblazoned with inscriptions showing the organizations we belong to, the schools we attend, the landmarks we have visited, the sports teams we support, the beverages we imbibe. Although these inscriptions frequently include names and emblems that are also used as … trademarks, it would be naive to conclude that the name or emblem is desired because consumers believe that the product somehow originated with or was sponsored by the organization the name or emblem signifies.

            My display of a White Sox insignia on my Hummer is not a trademark use, whether we call it functional or something else. In fact, however, the concept was not widely used in case law for several decades until the Ninth Circuit revived it in 2011, in Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 636 F.3d 1115 (9th Cir. 2011) where the court held that the use of the “Betty Boop” image on dolls as well as t-shirts and handbags was not an infringement. The court held that the use was functional and not as a trademark:

Even a cursory examination … of “the articles themselves, the defendant's merchandising practices, and any evidence that consumers have actually inferred a connection between the defendant's product and the trademark owner,” reveal that A.V.E.L.A. is not using Betty Boop as a trademark, but instead as a functional product. … Betty Boop “w[as] a prominent feature of each item so as to be visible to others when worn....” A.V.E.L.A. “never designated the merchandise as ‘official’ [Fleischer] merchandise or otherwise affirmatively indicated sponsorship.” Fleischer “did not show a single instance in which a customer was misled about the origin, sponsorship, or endorsement of [A.V.E.L.A.'s products] … “The name and [Betty Boop image] were functional aesthetic components of the product, not trademarks. There could be, therefore, no infringement.”

           So, if this approach were to continue, a mark owner would have to distinguish between when its mark or name was being used as mere “functional aesthetic components of the product, [and] not trademarks”. The murky world of trademark law becomes even more murky.

            I have tried to parse through this idea of “functional use”. Apparently, it seeks to draw a line between display (“I am a White Sox fan”), and sponsorship (“Official hat of the Chicago White Sox”). If so, projected into the commercial marketplace (as compared to my home made car decal), the line seems almost impossible to draw, and unnecessary as well. The concept itself should be dropped.