VI. FUNCTIONALITY
Core Issue: The "Patent/Trademark Interface." Trademark law should not grant a perpetual monopoly (永久壟斷) over features that are functional, as this would bypass the time limits of Patent Law.
A. Standard Functionality (Utilitarian Functionality)
1. TrafFix Devices v. Marketing Displays, Inc. (2001) [p.191]
- Brief Facts:
- MDI held expired utility patents for a "dual-spring design" used in mechanism for wind-resistant outdoor signs. (雙彈簧設計)
- TrafFix copied the design. MDI sued for trade dress infringement.
- Holding/Rule:
- Functional features are ineligible for trademark protection.
- Inwood Test: A feature is functional if it is "essential to the use or purpose of the article (製造目的)" or if it "affects the cost or quality of the article."
- Effect of Expired Patent: An expired utility patent is "strong evidence" that the features therein claimed are functional.
- 台灣法對照：
- 相似於台法第 30 條第 1 項第 1 款（功能性不予註冊）。
- 美法在此判例中確立了「專利與商標的界線」，強調若曾申請實用專利，幾乎等同宣告該設計具功能性 (Functional)，難以再主張商標權。
2. Apple v. Samsung (Fed. Cir. 2015) [p.216]
- Brief Facts:
- Apple alleged (據稱) Samsung infringed the trade dress of the iPhone
- e.g., rectangular shape with rounded corners, bezel, black fade-out
- Rule:
- The court found certain elements of the iPhone’s configuration to be functional.
- Competitive Necessity Test: A feature is functional if exclusive use of it would put competitors at a "significant non-reputation-related disadvantage."
- If a design is "driven by advertising a functional advantage," it is likely functional.
- Holding:
- The court reasoned that the rounded rectangular design (圓角矩形) was not merely ornamental; it improved the phone's durability and made it easier to slide in and out of a pocket (satisfying the "Quality" prong of the Inwood Test).
- Furthermore, the black faceplate and the seamless edge-to-edge glass design (黑色背板與無邊框感設計) helped enhance the display’s contrast and improved the user's visual focus on the screen.
- Consequently, the court held that these features claimed by Apple were functional because they were essential to providing a "premium smartphone experience." If granting Apple an exclusive monopoly over these features would prevent competitors from producing equally effective products, thereby violating the fundamental goal of Trademark Law: to protect and promote fair competition.
競爭必要性測試（Competitive Necessity Test）
是否會因為牌他使用權而使競爭者落入「與聲譽無關的顯著劣勢」，若是則為功能性。
A feature is functional if its exclusive use would put competitors at a significant non-reputation-related disadvantage. In this context, the "function" is not mechanical, but aesthetic appeal that drives consumer demand.
B. Aesthetic Functionality (美感功能性) [p.226]
- Core Concept
- Protection is denied where the aesthetic design itself is the "functional" reason consumers buy the product, and protecting it would hinder competition.
- Key Principle
- If the design's "aesthetic value" is what makes the product successful
- rather than its ability to identify the source, it may be deemed functional.
1. Pagliero v. Wallace China Co. (1950) [p.226]
- Brief Facts: Wallace China produced hotel chinaware with specific floral patterns. Pagliero copied these patterns. Wallace sued for trademark infringement.
- Holding/Rule
- The court introduced the "Important Ingredient" Test. If a particular feature is an "important ingredient in the commercial success of the product," it is functional. Because customers buy the china primarily for its attractive design (the pattern) rather than to identify the manufacturer, the pattern is functional and cannot be trademarked.
台灣法對照
相似於「裝飾性標誌」的爭議。若一個圖案僅被消費者視為「背景裝飾」或「產品美感來源」而非「來源識別標誌」，在台灣通常會以「不具識別性 (Distinctiveness)」為由拒絕註冊。
2. Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc. (2012) [p.229]
- Brief Facts: Louboutin is famous for its Red Sole (紅底鞋). YSL produced a monochrome red shoe (entirely red, including the sole). Louboutin sued.
- Holding/Rule:
- The court rejected the idea that "color in the fashion industry is always functional."
- However, it applied a nuanced rule: Louboutin’s trademark is valid only when the red outsole contrasts with the upper part of the shoe.
- If the shoe is monochrome red (like YSL’s), the red sole serves an aesthetic "purpose" to complete the monochromatic look, and thus, Louboutin cannot stop others from making all-red shoes.
Pasted image 20260311173741.png
3. Wallace International Silversmiths, Inc. v. Godinger Silver Art Co. (1990) [p.228]
- Brief Facts: Wallace claimed trademark rights in the "Baroque" style (華麗巴洛克風格) of its silverware (銀器).
- Holding/Rule:
- The court held that the Baroque style was functional in an aesthetic sense.
- If one company could monopolize the "Baroque style," no one else could compete in the market for "Baroque-style silverware." This would hinder competition in the entire aesthetic category.
VII. TRADEMARK USE
- Core Issue
- For an infringement claim to proceed, the defendant must have made a "use in commerce" of the mark in a way that identifies the source of goods/services.
- 商標的使用，若要構成侵權，應該作為「指示商品或服務來源」之用
A. Rescuecom Corp. v. Google Inc. (2009) [p.448]
- Brief Facts:
- Rescuecom sued Google for selling its trademarked name as a "keyword" to competitors (AdWords).
- 若競爭者搜尋某自，Google自動跳出關鍵字：要不要購買OOO關鍵字作為廣告？未來有他人在搜尋OOO時，你的網頁會作為 AD 出現喔！
- Holding/Rule:
- Actionable Use: Google’s internal utilization and sale of the mark to advertisers constitutes "use in commerce" under the Lanham Act. (構成商業使用)
- Even if the mark is not visible to the end consumer in the search results, the "recommendation" and "sale" of the keyword satisfy the use requirement.
- 結論：構成商標的「使用」（指示商品或服務來源、商業性使用），但最後庭外和解（？）
筆記日期：2026/03/11
資料來源：Barton Beebe TRADEMARK LAW (V12, An Open-Access Casebook)
揭露聲明：此筆記，係由筆者與Gemini共同彙編完成，有誤歡迎指正交流 ～
