INTA Files Another U.S. Supreme Court Amicus Brief on Functionality Question

Published: November 3, 2021

Jason P. Bloom Haynes and Boone, LLP Dallas, Texas, USA International Amicus Committee—United States Amicus Subcommittee

INTA filed an amicus brief on October 18, 2021, before the Supreme Court of the United States in Sulzer Mixpac AG v. A&N Trading Co., No. 21-417, concerning the protection of product features as trade dress and the proper test for determining when a trademark is functional.

The Association views the issue as one of particular significance to brand owners due to diverging functionality standards among U.S. courts. This is, in fact, the second U.S. Supreme Court amicus brief INTA has filed on the issue this term.


The dispute centers around Sulzer’s colored mixing tips which attach to the end of a dispensing device and mix separate adhesive components together for dental applications. The company manufactures its mixing tips and applicators using what it describes as “candy colors” that correlate to the various sizes of the mixing tips. Its colors have no inherent relationship to their corresponding diameters and were not derived from dental standards or practices that associate specific colors with specific diameters, according to Sulzer. The company owns 12 U.S. trademark registrations related to the colors of its mixing tip components.

A&N distributes mixing tips that utilize nearly identical colors to Sulzer’s, which likewise correspond to the size of the components. Sulzer sued A&N in the Southern District of New York on November 28, 2016, and obtained a judgment and permanent injunction barring A&N’s further use of candy-colored mixing tips.

A&N appealed to the U.S. Court of Appeals for the Second Circuit, arguing that Sulzer’s trade dress was functional. In February 2021, the Second Circuit agreed, holding that because the candy colors correspond to size, they are useful to dental practitioners. Sulzer Mixpac AG v. A&N Trading Co., 988 F.3d 174, 183 (2d Cir. 2021). On that basis alone, the Second Circuit reversed the trial court’s judgment. Id.

Sulzer filed a petition for writ of certiorari with the U.S. Supreme Court on September 16, 2021, arguing that the Second Circuit misapplied the established test for assessing functionality.

INTA’s Amicus Brief

In its amicus brief, INTA argues that the Second Circuit erred by failing to apply the tests for assessing utilitarian and aesthetic functionality, which the U.S. Supreme Court established in a trio of cases: TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995); and Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982).

The Supreme Court held in TrafFix that a product feature is functional in the utilitarian sense if (i) it is essential to the use or purpose of the article or (ii) it affects the cost or quality of the article. 532 U.S. at 32.  If a feature is not functional in the utilitarian sense, it may be aesthetically functional if (i) the feature is itself the mark for which protection is sought and (ii) giving the mark holder the right to use it exclusively “would put competitors at a significant non-reputation-related disadvantage.” See Qualitex, 514 U.S. at 165.

According to INTA, the Second Circuit misapplied the functionality tests established by the Supreme Court. The Second Circuit did not find the candy colors to be essential to the use or purpose of the mixing tips, and the evidence showed that adding the colors increased costs. Moreover, the court found that the colors did not affect the quality of the mixing tips because they worked the same whether the colors were added or not, as evidenced by the fact that other companies use different colors or no colors at all. Instead, the court concluded that the candy colors were functional because they corresponded to the sizes of the mixing tips.

INTA argues that the Second Circuit’s opinion not only misapplies the Supreme Court’s established standards for assessing functionality, but it also represents a growing trend of lower courts misapplying or ignoring the proper standard in a way that weakens trade dress protection for brand owners.

Along the same lines, INTA filed another U.S. Supreme Court amicus brief earlier this term, on July 29, 2021, in the case of Ezaki Glico Co. v. Lotte Int’l Am. Corp., No. 20-1817, in which the Third Circuit failed to apply the test for utilitarian functionality. INTA argues that it is important to reinforce the established national functionality standards in order to provide more certainty to brand owners and meaningful protection for nonfunctional trade dress rights.

Four members of INTA’s International Amicus Committee, United States Amicus Subcommittee contributed to the latest brief: Jason Bloom (Haynes and Boone, LLP), Claudia Ray (Kirkland & Ellis LLP), Vijay Toke (Pillsbury Winthrop Shaw Pittman LLP), and Jack Wheat (McBrayer PLLC).

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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