By: Andrew Chmielarski
The Lanham Act states that functionality is an absolute bar to trademark protection. Historically, functionality jurisprudence only addressed issues concerning “utilitarian functionality.” Many federal circuits, however, now recognize a second type of functionality, termed “aesthetic functionality.” The classic example used by legal scholars to illustrate the concept of aesthetic functionality is the Valentine’s Day box of chocolates. If a single chocolate manufacturer could receive trademark protection for a heart-shaped box, therefore preventing all other chocolate manufacturers from using a heart-shaped box, it would put all other chocolate manufacturers at a significant competitive disadvantage because of the heart-shaped box’s aesthetic appeal.  The look of a heart-shaped box is a driving factor to consumers purchasing boxes of chocolate on Valentine’s Day that does not involve the manufacturer’s reputation for a quality product – or competitors’ lack thereof.
Aesthetic functionality has a complicated legal history, as federal courts employ different tests to define aesthetic functionality. Some courts still do not recognize aesthetic functionality as a type of functionality at all. The doctrine of aesthetic functionality gained significant stability in the 1990s and early 2000s in the aftermath of two Supreme Court cases: Qualitex Co. v. Jacobson Products Co. and TrafFix Devices, Inc. v. Marketing Displays, Inc. Drawing from the language of an earlier Supreme Court decision, Inwood Labs. v. Ives Labs., the Court in Qualitex stated that a product feature is functional if it is essential to the use or purpose of the article or affects its cost and quality. The Court further stated that if the feature’s exclusive use would put “competitors at a significant non-reputation-related disadvantage,” the feature was functional and could not serve as a trademark. In dictum, the TrafFix court restated this exact language concerning “significant non-reputation-related disadvantage,” which currently underpins the aesthetic functionality tests used across circuit courts.
The circuit courts quickly drew on this new language to formulate updated aesthetic functionality tests, including the Second Circuit and the Ninth Circuit—two of the circuit courts which most frequently deal with intellectual property issues. The Ninth Circuit explicitly overruled its original and controversial Pagliero test in the aftermath of the TrafFix decision. The Second Circuit also refined its aesthetic functionality standard using the dicta in TrafFix.
Although the Second Circuit and the Ninth Circuit differ slightly in the number of actors each analyzes to determine aesthetic functionality, the substance of the two courts’ tests are the same.  First, the two circuit courts look at the Inwood prong, asking whether a product’s feature is essential to the use or purpose of the article and if it affects the cost or quality of the article. Second, the two circuit courts analyze the TrafFix prong, determining whether the product’s feature puts competitors at a significant non-reputation-related disadvantage.
The Third Circuit recently outlined an alternative test to determine aesthetic functionality in the case of Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp. Here, the Third Circuit diverged from the prevailing aesthetic functionality tests of the Second Circuit and Ninth Circuit by focusing on an additional factor—a design feature’s usefulness. Specifically, the court in Ezaki Glico held that functional designs need not be essential; rather, they need only be useful. To this end, the court cited examples of the Supreme Court focusing on usefulness in both Qualitex and TrafFix and classified the Inwood Labs. and TrafFix prongs as merely “different ways of showing usefulness.” For instance, if a court applied the Third Circuit test to determine the aesthetic functionality of a heart-shaped chocolate box, that court would inquire as to whether the heart-shaped box’s particular shape and form is useful.
The Supreme Court declined to grant certiorari on an appeal of the Third Circuit’s decision in Ezaki Glico, leaving the circuit split unresolved for the time being. The Supreme Court, however, should strongly consider resolving this debate and docketing an aesthetic functionality case in the coming years, as this issue—and the resulting uncertainty for business owners and the products they design—will remain. Should the Supreme Court address aesthetic functionality the next time such a case reaches the federal appellate level, it should adopt either the Second Circuit’s test or the Ninth Circuit’s test for two reasons.
First, the Second Circuit and Ninth Circuit tests are already applied to aesthetic functionality issues across different industries, including the fashion and automobile industries, over the past two decades. Second, these two tests effectively address the Supreme Court’s language from Inwood, Qualitex, and TrafFix without adding further language that might confuse the lower courts. Adopting either the Second Circuit or the Ninth Circuit’s test would allow the doctrine of aesthetic functionality to be recognized across all circuits, give greater uniformity to functionality jurisprudence, and grant business owners predictability regarding the consequences of how they design and seek protection for their products.
 See The Lanham Act, 15 U.S.C. § 1052(e) (denying protection to a mark which “comprises any matter that, as a whole, is functional”).
 See Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206, 220 (2d Cir. 2012) (noting that aesthetic functionality was not proposed until 1938 and not adopted by a court until the Ninth Circuit did so in the 1950s).
 See generally Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952) (recognizing the theory of aesthetic functionality and adopting it in the Ninth Circuit).
 See Restatement (Third) of Unfair Competition § 17 (introducing the example of the Valentine’s Day box).
 See id. (describing that, in such a scenario, the heart-shaped box would be considered functional if no alternative designs could satisfy the aesthetic desires of potential customers).
 Compare Pagliero, 198 F.2d at 343 (establishing the Ninth Circuit’s original test for aesthetic functionality) with Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1072 (9th Cir. 2006) (overruling Pagliero and articulating the Ninth Circuit’s current two-part test for aesthetic functionality) and Christian Louboutin, 696 F.3d at 220 (articulating the Second Circuit’s current three-part test for aesthetic functionality).
 See Bd. of Supervisors for La. State Univ. Agric. & Mech Coll. v. Smack Apparel Co., 550 F.3d 465, 487-88 (5th Cir. 2008) (reiterating the Fifth Circuit’s “long-settled view rejecting recognition of aesthetic functionality”).
 See generally 514 U.S. 159 (1995).
 See generally 532 U.S. 23 (2001).
 See 456 U.S. 844, 850 n. 10 (stating that “a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article”).
 See Qualitex, 514 U.S. at 165.
 TrafFix, 532 U.S. at 33.
 See generally Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012) (analyzing the aesthetic functionality of red-colored high-heeled footwear).
 See Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1072 (9th Cir. 2006); see also Wallace Int’l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76 (2d Cir. 1990) (interpreting aesthetic functionality with respect to the ornamentation of silverware and rejecting the Ninth Circuit’s Pagliero test).
 See Christian Louboutin, 696 F.3d at 220.
 Compare id. (converting the Supreme Court’s language addressing aesthetic functionality to a three-factor test) with Au-Tomotive Gold, 457 F.3d at 1072 (reducing the Supreme Court’s language to a two-factor test).
 See Christian Louboutin, 696 F.3d at 220 (holding that courts must employ the Inwood test “[a]t the start” of an aesthetic functionality analysis); see also Au-Tomotive Gold, 457 F.3d at 1072 (describing the Inwood test as “the first step” in analyzing functionality).
 See Christian Louboutin, 696 F.3d at 220; see also Au-Tomotive Gold, 457 F.3d at 1072.
 See generally Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp., 986 F.3d 250 (3d. Cir. 2021) (analyzing aesthetic functionality through the lens of Pocky cookies’ design features).
 See 2022 IP Outlook Report: The Developments Shaping Trademark Law, Nat’l L. Rev. (Feb. 15, 2022), https://www.natlawreview.com/article/2022-ip-outlook-report-developments-shaping-trademark-law-video (analyzing the significance of the Third Circuit’s holding in Ezaki Glico).
 See Ezaki Glico, 986 F.3d at 256 (claiming that reading functionality as usefulness best reconciles the Lanham Act with the Patent Act).
 Id. (quoting language from Qualitex and TrafFix).
 Id. at 257.
 Id. (holding that the question is not whether the entire product or feature is useful but, rather, the “‘particular shape and form’ chosen for that feature”); see also Restatement (Third) of Unfair Competition § 17 (presenting the example of the heart-shaped box).
 See 2022 IP Outlook Report, supra note 22 (noting the Supreme Court’s refusal to take the case on appeal).
 See Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012) (using the Second Circuit’s test to analyze a dispute within the fashion industry); see also Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062 (9th Cir. 2006) (employing the Ninth’s Circuit’s test to examine products relating to the automobile industry)
 Compare with Ezaki Glico, 986 F.3d at 256-57 (taking language from Inwood, Qualitex, and TrafFix to support its view that all three cases’ discussions on functionality can be reduced to an analysis of usefulness).