The TTAB's Dangerous Dismissal of 'Doubt'

20 Pages Posted: 3 Nov 2013 Last revised: 16 Jan 2014

See all articles by Charles Colman

Charles Colman

William S. Richardson School of Law, University of Hawai'i-Mānoa

Date Written: November 7, 2013


On September 30, 2013, the Trademark Trial and Appeal Board issued a troubling decision in In re Bottega Veneta Int’l S.a.r.l. Viewed in a broader context, the decision reflects the Board’s growing reluctance to apply the doctrine of “aesthetic functionality” in ex parte prosecution proceedings to bar the issuance of potentially anticompetitive trade-dress registrations. The TTAB gives its imprimatur to the dubious “trade dress” at issue in Bottega Veneta through procedural tactics whose novelty and import have gone largely unacknowledged — specifically, (1) the Board’s declaration of its intention to resolve “doubts” as to aesthetic functionality in favor of applicants, and (2) the Board’s disposal of concerns about product-design monopolization through reliance on supposedly limiting conditions agreed to by the applicant, but which the federal courts will not observe or enforce. As such, In re Bottega Veneta — despite its technical status as a mere “non-precedential” decision by an agency whose determination can theoretically be revisited by the federal courts — will improperly hinder marketplace competition and restrict creative freedom among designers.

For a proposal that the courts and USPTO rely more heavily on the doctrine of “genericism” as a potential solution to the problems associated with the “aesthetic functionality” doctrine, please visit the Law of Fashion website — containing a presentation given at the NYU 2014 Tri-State IP Workshop and forming the basis for a full-length work-in-progress.

Keywords: TTAB, trademark, prosecution, registration, trade dress, patent, design patent, antitrust, anticompetitive, product design, monopoly, Bottega Veneta, aesthetic functionality

Suggested Citation

Colman, Charles, The TTAB's Dangerous Dismissal of 'Doubt' (November 7, 2013). Harvard Journal of Law and Technology Digest (Nov. 12, 2013); NYU School of Law, Public Law Research Paper No. 13-75. Available at SSRN:

Charles Colman (Contact Author)

William S. Richardson School of Law, University of Hawai'i-Mānoa ( email )

2515 Dole Street
Honolulu, HI 96822
United States
8089567966 (Phone)


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