Abstract

http://ssrn.com/abstract=1965716
 
 

Footnotes (144)



 


 



(Dys)Functionality


Mark P. McKenna


Notre Dame Law School

November 28, 2011

Houston Law Review, Vol. 48, No. 4, p. 823, 2011

Abstract:     
The functionality doctrine serves a unique role in trademark law: unlike virtually every other doctrine, functionality can trump consumer confusion (or so it seems, at least in mechanical-functionality cases). In this sense, functionality may be the only doctrine in trademark law that can truly be considered a defense. But despite its potential power, the functionality doctrine is quite inconsistently applied. This is true of mechanical functionality cases because courts differ over the extent to which the doctrine focuses on competitors’ right to copy unpatented features as opposed to their need to copy. And aesthetic functionality cases are even more scattered: some courts refuse to recognize the aesthetic-functionality doctrine at all, and courts that do recognize it are often reluctant to actually find the features at issue functional, even when exclusive use of those features seems very likely to put competitors at a significant, non-reputation-related disadvantage.

The problem is not simply that courts do not understand or do not like the functionality doctrine, though there is reason to believe both of those conclusions are warranted. It is instead that courts have fundamentally different views about the purposes of functionality. These differing views reflect a longstanding lack of consensus about trademark law’s proper role in competition policy and equally longstanding, if unexamined, intuitions about the types of features that are competitively important. Put simply, trademark law lacks a sufficiently robust theory of legitimate competition against which particular actions can be judged “unfair.” This Article uses functionality as a means of highlighting courts’ lack of consensus about the relationship between trademark law and competition.

Number of Pages in PDF File: 38

Accepted Paper Series





Download This Paper

Date posted: November 29, 2011 ; Last revised: January 4, 2012

Suggested Citation

McKenna, Mark P., (Dys)Functionality (November 28, 2011). Houston Law Review, Vol. 48, No. 4, p. 823, 2011. Available at SSRN: http://ssrn.com/abstract=1965716

Contact Information

Mark P. McKenna (Contact Author)
Notre Dame Law School ( email )
P.O. Box 780
Notre Dame, IN 46556-0780
United States
(574) 631-9258 (Phone)
Feedback to SSRN


Paper statistics
Abstract Views: 930
Downloads: 188
Download Rank: 96,854
Footnotes:  144

© 2014 Social Science Electronic Publishing, Inc. All Rights Reserved.  FAQ   Terms of Use   Privacy Policy   Copyright   Contact Us
This page was processed by apollo8 in 0.328 seconds