Determining the Difference Between Ornamentality and Functionality
The fundamental difference between design patents and utility patents is that design patents protect how an article looks; whereas, utility patents protect the way an article is used and works. In other words, design patents protect the purely ornamental characteristics of an article. Simple enough, right? Wrong.
Sometimes the seemingly functional aspects of an article might be considered ornamental, and other times, the seemingly ornamental aspects of an article might be considered functional. Telling the difference between these two can be difficult because there is no bright-line test to determine when any given feature might be considered “ornamental” or “functional.”
Design Patent Ornamental or Functional Test
A major design patent case discussing how to determine whether a given feature is ornamental or functional is L.A. Gear, Inc, v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993). This case sets forth the proposition that “when there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.” While this distinction is helpful, it is really only one factor in what should be a multi-factored analysis.
For example, what if two articles serve the same function, but one of the articles outsells the other on the market in orders of magnitude? Does this have anything to say about whether any given feature of the article is ornamental or functional? Who knows? Looking to more design patent case law might provide some answers; however, unfortunately, there is a scarcity of design patent cases that set out a reliable multi-factored test for determining whether a feature of a design is “ornamental” or “functional.”
Fortunately, design patents and design patent law does not exist in a bubble. Other areas of intellectual property law, specifically trademark law, have dealt with the difficult distinction between the aesthetic and the functional aspects of goods. As the reader might know, trade dress protection covers the aesthetic (i.e., ornamental) features of goods, and any utilitarian aspects of goods may be protected if they can satisfy the patentability hurdles necessary for utility patent protection. In other words, like design patent protection, trade dress protection only covers the purely ornamental aspects of articles (provided those aspects have acquired secondary meaning, unlike design patent protection).
Trade Dress Functionality Test
The seminal Supreme Court trade dress case addressing the distinction between functionality and ornamentality is TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001). The Court discussed multiple factors that might indicate when a given feature is functional, including: (1) a utility patent discloses the utilitarian advantages of an aspect of the design; (2) the feature is essential to the use or purpose of the article; or (3) the feature affects the cost or quality of the article.
Trade dress cases since TrafFix have further extrapolated on other factors that may indicate a given feature is functional, including: (1) the advertising materials of the originator touts the feature’s utilitarian advantage; (2) functionally equivalent designs are scarce or not available for competitors; and (3) the design results in a comparatively simple or cheap method of manufacturing the product.