Professors debate functionality

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Professors debate functionality

Annual Meeting attendees flocked to a bustling session about recent developments relating to the doctrine of trademark functionality yesterday

The panel included Professors Mark Lemley of Stanford Law School, Dan Burke of the University of California, Irvine School of Law and Eric Goldman of Santa Clara University School of Law.

Moderator Susan Montgomery of Northeastern University focused on two key cases—Rosetta Stone v. Google and Fleischer Studios Inc. v. A.V.E.L.A—in which two separate courts ruled in part that the trademarks at issue in each case were functional, and therefore unprotectable.

Both cases are on appeal and being closely watched by INTA (which has filed amicus briefs in each case) and the trademark community. “Betty Boop is outrageous and will spell the death knell for trademarks [if not reversed],” said one audience member.

The panel of professors disagreed and said that the case law is not clear that trademark rights guarantee a merchandising right, which generated lively commentary from the audience.      

more from across site and SHARED ros bottom lb

More from across our site

The Delhi High Court declined to stop Dr. Reddy’s from manufacturing Novo Nordisk’s drug, but will continue to hear the Danish company’s injunction application
More than 80 women have entered the top 250 list this year, which includes trailblazing practitioners from more than 50 jurisdictions
IP STARS, Managing IP’s accreditation title, reveals its latest trademark rankings and discloses which firms dominated their respective markets
Today’s rankings release marks a special moment in Managing IP’s calendar, and lawyers should feel proud of their achievements
A new dispute involving Mondelēz and Aldi, and a copyright ruling related to 'Eleanor’ Ford Mustangs were also among the top talking points this week
Via LA’s Qi wireless charging patent pool now covers more than 50% of all SEPs in the space
Vida Panganiban-Alindogan at SyCip Salazar Hernandez & Gatmaitan discusses IP valuation and why no IP practice area is more important than the other
The IP team at Morais Leitão discusses high-stakes litigation, strategic partnerships with clients, and bolstering cross-border expertise
Eszter Szakács discusses 5.30 am wake-ups, legal mind games, and eating Nutella in the middle of the night
Counsel explain how AI can create brand protection headaches, but also be used to fight fakes
Gift this article