Lttb LLC v. Redbubble, Inc.
840 Fed. Appx. 148 (9th Cir. 2021) (2021)
Rule of Law:
Under the doctrine of aesthetic functionality, a design or phrase used on goods is not protectable as a trademark under the Lanham Act if its primary purpose is aesthetic appeal rather than source-identification, even if the mark is registered and incontestable.
Facts:
- LTTB LLC sells t-shirts and other merchandise.
- LTTB LLC uses the registered trademarks, including the words and design, 'LETTUCE TURNIP THE BEET', on its products.
- Two of LTTB's registered trademarks are incontestable.
- Redbubble, Inc. sells products containing the same 'LETTUCE TURNIP THE BEET' words and design.
- Elektra Printz Gorski, LTTB's founder and owner, observed celebrities wearing the shirts and received a customer email related to the products.
- Printouts from LTTB's Etsy website displayed images of its products and three five-star reviews, primarily commenting on shipping and product description rather than source.
Procedural Posture:
- LTTB LLC filed an action against Redbubble, Inc. in the United States District Court for the Northern District of California (trial court), alleging trademark infringement under the Trademark Act of 1946 (Lanham Act).
- The District Court granted summary judgment in favor of Redbubble, Inc., concluding that LTTB could not preclude others from displaying the phrase on products due to the doctrine of aesthetic functionality (LTTB, LLC v. Redbubble, Inc., 385 F. Supp. 3d 916, 920–22 (N.D. Cal. 2019)).
- LTTB LLC (Plaintiff-Appellant) appealed the District Court's summary judgment decision to the United States Court of Appeals for the Ninth Circuit (intermediate appellate court).
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Issue:
Does the aesthetic functionality doctrine preclude trademark protection for registered marks, including incontestable ones, when the marks' primary purpose on the goods is aesthetic appeal rather than identifying the source of the goods?
Opinions:
Majority - Per Curiam
Yes, the aesthetic functionality doctrine precludes trademark protection for registered marks when their primary purpose on the goods is aesthetic appeal rather than source-identification. The Ninth Circuit affirmed the district court's grant of summary judgment, concluding that LTTB failed to raise a triable issue that its marks primarily serve the trademark function of source-identification. The court applied the two-step test for aesthetic functionality articulated in Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc. First, the court noted that the t-shirts, tote bags, and other products would still function as intended without the mark, and the mark does not alter cost structure or add to the quality of the products. Second, the court considered whether granting exclusive use of the marks would put competitors at a significant non-reputation-related disadvantage. It concluded that allowing LTTB to monopolize the popular phrase would prevent competitors from selling products bearing it. Unlike in Au-Tomotive Gold, where consumers bought goods because they identified the source, LTTB presented no evidence that consumers buy its products because they identify LTTB as the source, rather than due to the aesthetic appeal of the 'LETTUCE TURNIP THE BEET' phrase. Evidence of popularity (celebrity wear, customer email, Etsy reviews) did not indicate that consumers purchase the goods because the marks identify LTTB as the source. The court emphasized that trademark law protects source-identification, not originality or creativity, as per Dastar Corp. v. Twentieth Century Fox Film Corp. The fact that the marks are registered and some incontestable does not overcome the functionality defense, as 15 U.S.C. § 1115(b)(8) explicitly lists functionality as a defense. Therefore, because LTTB's marks are functional on this record and do not identify the source of the goods, they are not protectable against the alleged infringing activity, making it unnecessary to address likelihood of confusion or other arguments.
Analysis:
This case reinforces the critical distinction between aesthetic appeal and source identification in trademark law, particularly in the context of aesthetic functionality. It clarifies that even registered and incontestable marks are subject to the functionality defense if their primary role on a product is decorative or communicative rather than indicative of origin. The decision limits the scope of trademark protection for popular phrases or designs that consumers might buy for their intrinsic appeal, preventing a single entity from monopolizing such aesthetic features under the guise of trademark rights. This could impact future cases involving 'fashion trademarks' or slogans, requiring plaintiffs to demonstrate clear evidence of source identification beyond mere popularity.
