Aesthetic functionality is a confusing, controversial concept in trademark law, which the U.S. Court of Appeals for the 9th Circuit will soon reconsider. A 1980 9th Circuit case called International Order of Job’s Daughters v. Lindeburg & Co. – that many do not consider to still be authoritative – explains the concept.

Even defining aesthetic functionality can be a challenge.

The famous question of a fraternal insignia on jewelry without permission

At issue in the Job’s Daughters case was a jeweler’s placement without permission of the trademarked Job’s Daughters’ insignia on jewelry. The usual question in a trademark infringement case is whether the use of a valid mark is likely to create confusion about the source of the goods or services, but the appeals court in this case sidestepped that question.

Instead, it held that the insignia were “functional aesthetic components of the product” that the jeweler was not holding out as trademarked, even though the fraternal organization had a trademark for the insignia. The insignia was a way for the jewelry wearer to identify herself as a member. There was no representation that the jeweler tried to pass off the jewelry as official merchandise and other jewelers sold items with the insignia. Therefore, the court reasoned, there could be no infringement of the trademark by this use.

Valentine’s Day candy boxes

An example discussed in the leading treatise “McCarthy on Trademarks and Unfair Competition” provides a clearer example of the concept. The author, who views the concept as questionable, describes an example in the 1938 “Restatement of Torts” section about unfair competition.

The Restatement gave the example of a Valentine’s Day heart-shaped box of candy – that the shape used to sell candy for the holiday should not be the exclusive right of any one candy seller based on aesthetic functionality of the shape for this purpose. (McCarthy goes on to say that he thinks genericness can keep the shape from eligibility for trademark protection and aesthetic functionality as a doctrine is unnecessary.)  

Another bite of the apple

A new article in IPWatchdog carefully describes the history of the concept and the current case pending before the 9th Circuit that may shed light on its current status – LTTB LLC v. Redbubble, Inc. In this case, the U.S. District Court held that the defendant’s use of a trademarked phrase on a shirt was aesthetically functional because consumers liked the pun in the phrase, not the trademarked source, so no infringement occurred.

It will be fascinating to see how the 9th Circuit handles the aesthetic functionality argument on appeal.