welcome back um in this specific second video of the second class we are going to look at subject matter exclusion we have seen what are the requirements for a sign to be protected as a mark and it's to be distinctive we have seen uh what is distinctiveness and what is not distinctiveness we have seen the spectrum of distinctiveness now we are going to look at what can not be protected as a mark um and again it's this concept is tied to the the concept of distinctiveness if a mark is not distinctive it cannot be protected now in addition we have seen the protection of trade dress shapes can be protected now we know when they are required secondary meaning but there are some shape that intrinsically cannot be protected because they are functional and in this specific video we are going to unpack what is functionality in polytext versus Jacobson we have seen the case in the previous video um the court discusses specifically the concept of functionality and I would like you to read carefully the definition of the Supreme Court in Quality Tax that is in this slide um um Now functionality it's also enshrined in the landman act in section two um in which is written one of the basis to refuse registration is because a mark comprises any matter that as a whole is functional if a mark is registered that is functional or becomes functional there can be a petition for cancellation now one of the seminal cases on the concept of functionality is more than Norwich in which the spray uh you know the little bottle that we use for spraying you know in many many household uh product cleaning products or other products was patented and then when the pattern expired because 20 years after the patent is granted the patent expires then the owner of the patent that there was a trademark wanted to argue that the shade was distinctive which certainly was uh because everybody knew that specific shape but then the question is is that shape functional functional in a utilitarian sense and so in Morton Norwich the court unpack the standard the the actual um bottle was found to be functional and the question that the court developed was is this container functional does it do something does it have utility and if so it's the design essential um does it have to have a body or a handle or a pump sprayer so all the elements as well of the con the specific container were analyzed by the court if you know um the design is essential it's essential in each office part or taking as a whole so the test that we derive from more to Norwich is a markets functional if it is the best or one of the few Superior design available for that specific product so that goes down back to the competition we have to guarantee competition IP is an incentive to Innovation uh which is promoted by time limited exclusive ride that allow companies and inventors to recover um the cost of their invention but then this design go in the public domain everybody can use them and so competition it's a very important element of intellectual property as well the factors that we derive from Modern Orchard are for the existence of a patent um whether there's been advertisement promoting uh the utilitarian advantage of the design whether or not their alternative design and whether or not the design it's from a comparatively standpoint simple cheap or Superior method to actually make that specific product another case that was following Modern Art which it's also very important four functionalities Vornado here again we go down to the utilitarian functionality after the Vornado case you can see the shape of the specific ventilator was at issue in this case um the court have consistently held the cumulating patent protection and treatment protection is highly problematic and so there's been really a pushback against trying to protect functional shapes in addition to have this idea of utilitarian functionality functionality can also be aesthetic even though the prettiness of you know there is author that I've discussed what's too pretty to be protected the prettiness is very difficult to assess and so aesthetic doesn't mean beautiful means ornamental there's been a seminal case which is palero versus Wallace China in which there's been what is functionality what is a static functionality is the key ingredient for the success of that specific product but it's still a controversial Doctrine and a difficult Doctrine to pinpoint because chords sometimes um follow different factors or following different facts and so the test that we came out from Wallace and I'm going to show you the picture you see this was the patterns of plates of Wallace versus The copier Pepco and and so the test that we have um is whether an ornamental feature is claimed as a trademark and trademark protection would significantly hinder competition by limiting their age the range of adequate alternative design the static functionality Doctrine the nice eye protection so whether the registration or the protection of a mark would significantly hinder competition by limiting the range of adequate alternatives and so functional aesthetically functional might be applied to the specific important ingredient in commercial succession for product and on the other side when the feature the design is just an arbitrary of embellishment then imitation should be forbidden when it's the important ingredient it might be a lot and so here you see it's very difficult though is the pattern the important ingredient of course but it's also an embellishment um and and and so here is also why we need to look at IP in context because it's probably easier to protect this pattern to copyright that has a longer life a 70 year plus the life of the author there's several cases by the Supreme Court related to functionality we are not going to discuss them all here um uh in the class presentation in addition to our videos you also have slides slides are more complete than many more details than these videos because videos have to be shorter but you might want to look in some of these cases but the case I want to mention here again is traffics which is the Supreme Court latest case on Trend dress um and in practice was again repeated that the existence of a prior patent was really very much against having trademark protection so here the actual base of this street sign was not found to be protectable as a trademark and and so here you have all um you know the specific tests uh that the Supreme Court developed in traffic so post traffic functionality again because it's a complicated topic uh it's very much back based um has been somewhat inconsistent um and static functionality in particular Remain the most difficult of these decisions um one of the latest cases interesting has been La Bhutan uh the production of the sole trademarks and the second circuit said that the protection was that Mark was distinctive but the red sole was protected only as a contrast trademark not as um you know um it could not be applied for an old red shoe but if again you are interested go read the lowercase decision that really said color cannot be protected in fashion because you know they would become anti-competitive so to summarize the document functionality try to protect competition and prevent the protection of sign that can be functional now utilitarian functionality that could be protected through patent is a bit simpler in the fact that if there was a pattern or there could have been a pattern is easier to assess that an item is functional but also the aesthetic embellishment can be protected when they are not the most important factor and something that could be desirable by other as well and so this is becoming you know a very Case by case series of decision so thank you very much again and in the next videos we are going to assess um and discuss uh registration of trademarks thank you again