Toward a More Coherent Doctrine of Trademark Genericism and Functionality: Focusing on Fair Competition
Sandra L. Rierson*
Article

  The full text of this Article may be found here.

27 Fordham Intell. Prop. Media & Ent. L.J. 691
Article by Sandra L. Rierson*

ABSTRACT

[T]

he doctrines of trademark genericism and functionality serve similar functions under the Lanham Act and the common law of unfair competition. Genericism, in the context of word marks, and functionality, for trade dress, bar trademark registration under the Lanham Act and, both under the Act and at common law, render a trademark unprotectable and invalid. In the word mark context, genericism stands for the proposition that certain parts of vocabulary cannot be cordoned off as trademarks; all competitors must be able to use words that consumers understand to identify the goods or services that they are selling. Functionality likewise demands that certain aspects of product design cannot be legally protected as trade dress, as to do so would potentially limit competitors’ ability to make products that work as well at the same price. The core concern, for both doctrines, is or should be the preservation of free and fair market competition. Part I of this Article explains the theoretical parallels between the doctrines of genericism and functionality, and examines the history and purpose of these doctrines. A finding that a word is or has become generic, or that a form of trade dress is functional, negates a mark’s registration and protection under the Lanham Act, as well as under state and common law. Even incontestable marks can be declared invalid, regardless of the passage of time, under either doctrine. The types of trademarks typically at issue when making genericism and functionality determinations—word marks that are, at best, descriptive, or product design functioning as trade dress—are correctly described as weak. The genericism and functionality doctrines therefore play a critical role in marking the boundaries of trademark law. To properly draw those lines, decision makers need to correctly define and understand the theory underlying both doctrines. In Part II, this Article argues that both genericism and functionality, in their practical interpretation and purpose, should more clearly reflect the core principle of protecting fair competition. In particular, the concept of viable, competitive alternatives—either in the form of words or alternative designs—should play an enhanced role in determining whether an erstwhile trademark is generic or functional. The various tests for genericism and functionality currently employed by the courts often attempt to draw formalistic distinctions among categories of words or product features that may confound business owners (and their lawyers) and divert the focus of the courts’ inquiry in such cases away from the core value at the heart of both doctrines: preserving fair competition.

*Associate Professor of Law, Thomas Jefferson School of Law. This Article has benefited from the helpful feedback and critique of Michael Handler, Laura Heymann, Mark Lemley, Shaun Martin, Lisa Ramsey, Brenda Simon, and Harold R. Weinberg, for which I am very grateful. I also received helpful comments and insights from the participants in the 2016 ABA-IPL Scholarship Symposium. I am also indebted to Farhana Akhther and Warren McCann for their invaluable research assistance, and to Thomas Jefferson School of Law for its generous support.