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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, October 25, 2022

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide IP counsel on protecting trademarks and trade dress, defending against such claims, and dealing with the challenges and limitations of functionality and aesthetic functionality. The panel will examine functionality as it is applied in trademark applications and trademark and trade dress litigation, discuss how it is addressed in USPTO registration and federal court decisions, and how it relates to copyright and design rights.

Faculty

B. Brett Heavner
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. Heavner's practice covers all aspects of trademark and unfair competition law, with a particular focus on trademark infringement, counterfeiting, and false advertising litigation. He assists clients in developing strategies for establishing and enforcing their trademark rights. Mr. Heavner counsels on issues regarding trademark clearance searching, trademark and copyright licensing, and certification mark programs.

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Janet A. Marvel
Partner
Pattishall, Mcauliffe, Newbury, Hilliard & Geraldson LLP

Ms. Marvel protects brands, copyrighted works and domain names throughout the world. As part of her practice, Ms. Marvel represents plaintiffs and defendants in a wide variety of disputes involving trademark, copyright, rights of publicity, breach of contract, unfair competition, and false advertising. She has successfully tried cases and litigated around the country, in state and federal courts and before the USPTO.

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Description

Companies look to trademark and unfair competition laws to protect their product configurations, packaging, and other design elements of products and packaging. Counsel must overcome the challenge that functional features are not subject to trademark and trade dress protection or copyright or design rights in determining what IP protection is available.

In October 2021, the Third Circuit in Ezaki Glico KK v. Lotte In’tl America Corp., 986 F.3d 250 (3d Cir. 2021) decided that "functional designs need not be essential, just useful." This decision expands the meaning of "functional" and will affect future litigation on the subject.

Trademark counsel should understand the trademark functionality doctrine and how functionality is treated in USPTO registration and federal court decisions. Counsel should also recognize how the principle of functionality limits trademark protection for the product and packaging features and designs and how the concept behind this doctrine impacts the protection of such features and designs under copyright and design laws and in the cross-border context.

Listen as our authoritative panel of IP attorneys discusses the legal issues surrounding functionality, trademarks, and trade dress. The panel will examine how other courts have treated the doctrine of utilitarian functionality and aesthetic functionality and outline best practices for protecting marks and trade dress and means of protecting product and packaging configurations and features.

Outline

  1. Functionality
    1. In trademark applications
    2. In trade dress applications
    3. In litigation
  2. TTAB and court treatment of utilitarian functionality and aesthetic functionality
  3. Best practices to avoid functionality problems

Benefits

The panel will review these and other key issues:

  • What are the lessons from recent decisions regarding functionality in trademark applications?
  • What steps can counsel take to overcome the hurdle of proving non-functionality to obtain trademark protection?
  • How is the USPTO treating functionality issues in the context of trademarks?