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Policy and Advocacy
Board Resolutions
Amendment of the Lanham Act to Include Functionality as a Defense and Cancellation Ground to Incontestable Trademarks

February 25, 1997

Sponsoring Committee: Issues and Policies Committee


WHEREAS,the courts have held that trade dress and three dimensional marks are not protectable under U.S. trademark law if found to be functional;and

WHEREAS, under the Lanham Act, functionality is not an enumerated statutory defense to a claim of infringement of an incontestable trademark or an enumerated ground to petition for cancellation of an incontestable registration; and

WHEREAS, several courts have held that functionality may not be asserted as a defense to a claim of infringement of an incontestable trademark or used as a ground to petition to cancel an incontestable registration; and

WHEREAS, the Functionality as a Defense Subcommittee of the Issues and Policies Committee has completed a study and issued a report recommending that the Lanham Act be amended to make functionality an enumerated statutory defense to a claim of infringement of an incontestable trademark and a ground to petition for cancellation of an incontestable registration

WHEREAS, that INTA favors amendment of the Lanham Act to make functionality an enumerated statutory defense to infringement and ground for cancellation of an incontestable registration.

BE IT RESOVLED, that INTA favors amendment of the Lanham Act to make functionality an enumerated statutory defense to infringement and ground for cancellation of an incontestable registration.


The issue is whether the present cancellation grounds of the Lanham Act Section 14(3) and defenses of Lanham Act Section 33(b) are sufficient to protect against perpetual registration as trademarks of functional "marks", the utilitarian aspects of which are needed for use by third parties in order to fairly compete; i.e., are de jure functional. Functionality is presently both a cancellation ground for and a defense to charges of infringement of trademarks prior to incontestability. However, under the Supreme Court's decision in the Park 'N Fly case, once a "mark" has attained incontestable status, only the listed cancellation grounds and defenses of Lanham Act Sections 14 and 33(b) are applicable, even where it is proven that a mark is de jure functional and never should have been registered in the first place.

Application of the statutory cancellation grounds and defenses to incontestable functional marks is inherently problematic, for example:

The statutory ground of fraud will only apply where an applicant has knowingly misled an Examiner. Failing to disclose functionality in the application itself is not sufficient. Thus, if the Examiner is unfamiliar with the technical field of a configuration mark, no functionality objection may ever occur. In this case, the applicant will have no opportunity to make the requisite misleading statements concerning the mark's functionality during the registration process

The statutory ground of genericism will not apply where a functional mark, through use, has acquired some distinctiveness. This could easily occur during the permitted monopoly of a utility patent on the best and most cost efficient color/configuration for a certain purpose. Further, a functional configuration which is a registered "mark" is not likely to be in wide use at the time a lawsuit is brought, so genericism may be unavailable as a defense to any "infringers" using the functional feature before it is in common use in the industry.

The statutory defense of fair/descriptive use can sometimes be applied where fraud and genericism are not available due to the reasons described above. Such is currently the case in Shakespeare Company v. Silstar Corporation of America, Inc., 802 F.Supp. 1386 (D.S.C. 1992), rev'd 9 F.3d 1091 (4th Cir. 1993), on remand 906 F.Supp. 997 (D.S.C. 1995). Here the 4th Circuit reversed cancellation by the District Court of an incontestable registration on the functional color/configuration of a solid whitish translucent fishing rod tip, in contrast with its opaque hollow base. The Court of Appeals held that functionality was not an applicable cancellation ground or defense after incontestability, and since the District Court had previously determined that the mark was not generic, that cancellation ground/defense was inapplicable. Defendant was able to show descriptive use because the see through aspect of the tip functions to describe to consumers that the tip is solid, and therefore stronger than hollow tips. This showing of applicability of the fair/descriptive use defense was insufficient in itself, as the District Court was directed on remand to evaluate likelihood of confusion

Thus, if a functional mark is found not to be generic, a defendant must show not only that its use is descriptive rather than indicative of source or origin, but also must obtain a finding of no likelihood of confusion. Why differentiate in this way between functional configuration and/or color "marks" which can be shown to also be generic, and those which cannot? Article 1, Section 8, Cl. 8 of the U.S. Constitution grants inventors only a limited exclusive right to their discoveries. Thus, the patent law does not provide for perpetual rights, and neither should the Lanham Act, in its provisions relating to incontestable trademarks. Under the proposed amendments to Sections 14 and 33, functional configuration and/or color "marks" that comprise the best/most cost efficient means to accomplish a given purpose could not be appropriated as a perpetual right of a single owner under the guise of protection as an incontestable trademark. The Lanham Act, thus amended, would better foster fair competition by allowing competitors free use of functional configurations/colors which confer a benefit the use of which is required by competitors in order to fairly compete.

Accordingly, the Committee requests that the Board of Directors adopt the proposed Resolution and amendments to the Lanham Act such that functionality would be a statutory ground for cancellation of, and a statutory defense to allegations of infringement of incontestable trademarks.