Intellectual Property,
Constitutional Law
Aug. 14, 2025
Functionality finds its 1st Amendment voice in the 9th Circuit
In recent Ninth Circuit cases, courts have expanded the functionality defense in trademark and trade dress law -- traditionally limited to utilitarian and aesthetic functionality -- to also include "expressive function," holding that when a mark, phrase or image is used not as a source identifier but as part of an expressive work, the First Amendment may bar infringement claims.
Antonio R. Sarabia II
IP Business Law, Inc.
320 via Pasqual
Redondo Beach , California 90277
Email: asarabia2@gmail.com
A threshold issue in many trade dress cases and in some trademark cases is whether the plaintiff's mark is functional. There are several types of functionality that may prevent a plaintiff from succeeding with an infringement claim. The first type of functionality is utilitarian. Is the trademark or trade dress essential to the purpose of the article on which it is used? Or does it affect the cost or quality of the article...
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