Trademarks Are Not Aesthetically Functional

Saying that deciding otherwise "would be the death knell for trademark protection," the U.S. Court of Appeals for the Ninth Circuit held that the doctrine of aesthetic functionality does not render trademarks unprotectable, even when it is the trademarks themselves that consumers wish to buy. Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., et al, 457 F.3d 1062 (9th Cir., Aug. 11, 2006) (McKeown, C.J.).

Au-Tomotive Gold sells car accessories such as key chains and license plate holders featuring famous car manufacturers’ trademarks. It is licensed by some manufacturers, but Volkswagen and Audi refused to grant Au-Tomotive Gold a license because the firms already licensed others to make such products. Au-Tomotive Gold brought an action for declaratory judgment that its products did not infringe Volkswagen’s and Audi’s trademarks. The auto manufacturers counter-claimed for trademark infringement and dilution. Au-Tomotive Gold argued that because consumers purchase its products