Trade Dress can be very valuable – it protects product and packaging designs as a trademark. But, one limitation is that a design cannot be “functional.”
Designs that make the product work better are functional and hence cannot be protected by trade dress.
A recent Seventh Circuit case, Bodum USA Inc. v. A Top New Casting Inc. (7th Cir. 2019), provides important guidance in determining whether a claimed trade dress is functional. In assessing whether the design is functional, the Seventh Circuit held that the focus must be on more than just the inclusion of functional components in the design. Rather, the functionality analysis has to focus on whether the specific appearance of each design feature enhances the product’s function or is merely an incidental ornamental feature.
The Bodum decision favors trade dress protection, and represents greater opportunity for owners of well-established and distinctive designs to protect them under trade dress law