Brands and consumers alike generally understand that trademark laws protect a brand’s goodwill and consumers’ confidence in correctly associating brands with their goods. Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1067 (9th Cir. 2006). However, trademark laws feature a surprising (and evolving) quirk: if a brand’s mark features a design that “improves the usefulness or appeal of the object it adorns,” or stated differently, if “protection of the mark significantly undermines [a] competitors’ ability to compete in the relevant market,” then the mark functions as an unprotected ornament rather than as a protectable trademark. Vuitton et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769, 774 (9th Cir. 1981); Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 222 (2d Cir. 2012) (emphasis in original).
Case in point
The litigated trademarked pun “LETTUCE TURNIP THE BEET” is instructive. See LTTB LLC v. Redbubble, Inc., 840 Fed. Appx. 148 (2021). In that case, the trademark was registered and not invalid, and the trademark owner even presented undisputed evidence that its goods featuring those marks were popular. Id. at 150–51. Yet, the court found in favor of the competitor—the evidence showed that consumers were buying marked goods because they appreciated the pun, not because the mark identified the brand as the source of the goods. Id. Used in this way, the pun was aesthetically functional rather than source identifying. Id. at 150–52. Accordingly, it did not matter whether the mark caused any sort of confusion, and the competitor won.
This trademark protection limiting doctrine is known as “aesthetic functionality,” and not every jurisdiction abides by it. Compare Bd. of Supervisors for La. State Univ. Agric. & Mech. College v. Smack Apparel Co., 550 F.3d 465, 485-86 (5th Cir. 2008) (rejecting aesthetic functionality) with, e.g., Blumenthal Distrib., Inc. v. Herman Miller, Inc., 963 F.3d 859, 864 (9th Cir. 2020), cert. denied, 141 S. Ct. 1514 (2021) (assessing aesthetic functionality). And for those jurisdictions that do recognize this doctrine, some do not assess it separately from “utilitarian functionality,” which limits brand protection when the design serves a function, for example to use the goods or to affect quality or cost. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982).
The central question is whether the mark’s alleged aesthetic function is indistinguishable from the source-identifying function. See, e.g., Au-Tomotive Gold, 457 F.3d at 1074. If yes, then the mark is a protectable trademark. If no, then the mark might not be protectable.
Takeaway
For competitors, this regime grants some freedom. “Fun” marks—such as puns, rhymes, taglines, or other catch phrases—that are appealing because of how the words sound or how the marks look are at risk for being fair game for public use. Nevertheless, the prudent approach is to still evaluate risks before using “fun” marks that you do not own. They may be owned by another brand, and they may not fall within the exception.
For trademark applicants and owners, trademark rights are still enforceable. In addition to the standard playbook of performing clearance searches, trademark applicants must consider how the public may perceive those “fun” marks and how competitors might use them. And for trademark owners of “fun” marks, brands must consider how to re-deploy those “fun” marks on goods and services to ensure that they serve as brand-identifying marks rather than just being “punny.”
As always, Nixon Peabody LLP is continuing to monitor these developments and can provide practical considerations to brands and competitors when navigating intellectual property.