1202.02(c)(i)(A) Functional Matter
Functional elements of a trade dress mark are never capable of acquiring trademark significance and are unregistrable, much like informational matter. 15 U.S.C. §1052(e)(5); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995). Therefore, to show that they are not part of the mark, functional elements must be depicted in broken or dotted lines on the drawing to show the position or placement of the claimed portion of the mark. See 37 C.F.R. §2.52(b)(4); In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983). A requirement to amend the drawing to depict functional matter in broken or dotted lines is permitted and generally does not constitute material alteration of the mark, regardless of the filing basis. See TMEP §807.14(a). Such an amendment is permissible even in an application under §66(a) because it is not considered an amendment to the mark itself, but rather a change in the manner in which the mark is depicted on the drawing, in order to comply with United States drawing requirements, where functional elements are not considered part of the mark. See TMEP §807.14 regarding material alteration and TMEP §§1904.02(j)-(k) regarding drawings in §66(a) applications.
A functionality refusal must issue in cases where the trade dress mark is overall functional. The statutory basis for the refusal is §2(e)(5) of the Trademark Act, 15 U.S.C. §1052(e)(5). When a trade dress mark is not overall functional, but contains minor or insignificant elements that are functional, the examining attorney must require an amended drawing showing the functional elements in broken or dotted lines rather than in solid lines. See 37 C.F.R. §2.52(b)(4); Water Gremlin, 635 F.2d at 844, 208 USPQ at 91; Famous Foods, 217 USPQ at 177. The Office action must explain that, because the mark includes functional elements, an amended drawing is required showing the functional elements in broken or dotted lines, and a corresponding amended mark description is required indicating the functional elements depicted in broken or dotted lines are not claimed as part of the mark. The applicant must provide the amended drawing regardless of whether the remaining portions of the mark are determined to be registrable. See TMEP §1202.02(a)(v) regarding evidence and considerations regarding functionality determinations and TMEP §1202.02(c)(ii) regarding descriptions of trade dress marks.
Functional matter cannot be disclaimed. See Water Gremlin, 635 F.2d at 844, 208 USPQ at 91 ("The examiner's requirement to delete the [functional] design (or show it in dotted lines) was entirely in order."); Famous Foods, 217 USPQ at 177 (stating that functional "[f]eatures which are not being claimed as part of applicant's asserted [trade dress] mark should be shown in dotted lines"). A disclaimer states that the applicant does not claim exclusive rights to matter in the mark apart from the mark as a whole and allows the applicant to maintain rights in the disclaimed matter as part of its own mark. Therefore, with respect to three-dimensional trade dress marks, elements that are functional, or intended to show position or placement only, must be shown in broken or dotted lines on the drawing. See TMEP §1202.02(c)(iii) regarding disclaiming unregistrable portions of trade dress marks.