Circuit split · trademark law

Whether a party asserting a trademark must prove the mark is nonfunctional or whether the party seeking to invalidate the mark must prove it is functional

1 federal appellate case on this question, each acknowledging the disagreement in its own words.

Aromatique, Inc. v. Gold Seal, Inc.28 F3D 863
Eighth Circuit Court of Appeals · July 6, 1994
“It is true, as Aroma-tique argues, that there is a split in the circuits over whether a party asserting a mark must prove the mark is nonfunctional or whether instead the party seeking to invalidate a mark must prove that it is functional.” — Acknowledges a circuit split
Empirical analysis of this case →

The provision at issue

15 U.S.C. § 1125 — False designations of origin, false descriptions, and dilution forbidden

“(a) Civil action (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which— (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her …”

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The other side of the split

Decisions the acknowledging court(s) named as the opposing or joined side, quoted in the acknowledging opinion's own words.

On the other side · 3d Cir.Merchants & Evans, Inc. v. Roosevelt Bldg. Prods. Co.963 F.2d 628
On the other side · 9th Cir.Rachel v. Banana Republic, Inc.831 F.2d 1503
On the other side · 7th Cir.Computer Care v. Service Sys. Enter.982 F.2d 1063
“Enter., 982 F.2d 1063 , 1068 (7th Cir.1992) (party seeking to invalidate mark must prove it to be functional) and LeSportsac, Inc.” — Aromatique, Inc. v. Gold Seal, Inc., acknowledging the split
On the other side · 2d Cir.LeSportsac, Inc. v. K Mart Corp.754 F.2d 71
Joined byWoodsmith Publishing904 F.2d 1247

What the split turns on

Statutes:: 15 U.S.C. § 1125(a) ·; 15 U.S.C. § 1114 ·; 15 U.S.C. § 1057(b) ·; 15 U.S.C. § 1115(a)
Doctrines & tests:: secondary meaning

Cases are grouped by the legal question they announce a split on, classified from the court's own acknowledgment sentence. Verified acknowledgments only. Counter-side decisions are extracted from the acknowledging opinions' own text and linked only when the citation resolves in this corpus. See all circuit splits.