The Problem of Functional Features: Trade Dress Infringement Under Section 43(a) of the Lanham Act

Jessica D. Litman, University of Michigan Law School


Over the past five years, section 43(a) of the Lanham Trademark Protection Act of 1946 (Lanham Act) has become an increasingly useful source of protection against product and package copying. Section 43(a) provides a civil action in favor of anyone who believes he is damaged, or is likely to be damaged, by the use of a "false designation of origin" on a good or service. Recent cases have held that the use of a product or package design that is so similar to that of another producer that it is likely to confuse purchasers as to the product's source may constitute "false designation of origin" within the meaning of the Act. In the absence of clearly articulated standards in the Lanham Act for deciding claims for false designation of origin, the courts have imported into section 43(a) the common law rule that functional elements of a product or package may not be protected from imitation. This incorporation of the common law doctrine of functionality has led, however, to the application of varying state law standards. The result has been confusion and inconsistency. This Note discusses the extent to which functionality should be considered in section 43(a) product and package copying suits. After describing the purposes and operation of the Lanham Act 7 and of section 43(a), the Note shows how the doctrine of functionality was improperly imported from the common law of unfair competition. The Note then discusses the inconsistent rules and results reached because of reliance on the common law doctrine, and argues that the use of functionality is defeating the congressional intent to enact a consistent national law and protect the distinguishability of products. The Note proposes a standard for deciding section 43(a) product and package copying suits that hinges on the likelihood of source confusion, and that is thus more consistent with the statute's legislative history. Functionality, the Note concludes, should be considered not in determining whether plaintiff is entitled to relief but only in setting the type and scope of relief to be granted.