August 11, 2025

Hello Reader,

It’s tempting to think that if you’ve designed something innovative—something instantly recognizable in the market—you should be able to trademark it. But in trademark law, there’s a critical rule you can’t ignore:

If your design is functional, it can’t be registered as a trademark.

A recent decision from the Trademark Trial and Appeal Board (TTAB) involving the Shibumi Shade beach canopy illustrates this point clearly.

Shibumi Shade applied to register the 3D shape of its curved-frame beach canopy as a trademark for “canopies of textile or synthetic materials.” If you’ve been to the beach in the past few years, you’ve probably seen it: a lightweight, wind-powered canopy supported by a single arched pole. It’s simple, distinctive, and effective.

And that’s exactly the problem.

The USPTO rejected the application under Section 2(e)(5) of the Lanham Act, which prohibits registration of functional product features. The TTAB reviewed the case and affirmed the refusal. According to the Board, the canopy’s shape wasn’t a brand—it was a solution.

Here’s why.

1. Utility Patents Shibumi holds multiple utility patents that describe the same curved canopy configuration. These patents claim the precise design features being registered as a trademark and explain their utilitarian benefits—easy setup, maximized shade, better performance in wind.

The Board noted that the design shown in the trademark application matches the diagrams in Shibumi’s patents, especially in the preferred embodiment shown in Figure 1 on page 12 of the decision. That diagram includes a curved pole, rectangular fabric, and open sides—all claimed and all functional.

1. Quick setupLightweight portabilityWind-based performanceMaximum shade with minimal effort

This type of language tells consumers: “Buy this because it works better.” That’s functionality—not branding.

1. Alternative Designs Exist, But That Doesn’t Mean This One Isn’t Functional While other beach shade products exist, the TTAB emphasized that the law does not require a product to be the only option to be considered functional. It’s enough if it’s one of a few superior designs. If a competitor can’t match the utility without copying the design, that’s a strong sign it’s functional.
2. Cost of Manufacture There was little evidence presented on manufacturing costs, so the Board considered this factor neutral.
3. Design Patents Aren’t Enough to Overcome Functionality Shibumi also holds several design patents for the same product. But the TTAB made it clear: design patents don’t guarantee trademark eligibility. The totality of the evidence—including utility patents and advertising—showed that the product’s shape is tied to function, not source identity.

Takeaway: Just because your design is well-known, distinct, or popular doesn’t mean it qualifies for trademark protection. If the shape exists primarily because it solves a problem, improves performance, or provides a physical advantage, it likely belongs in the realm of patents, not trademarks.

Keep Your Brand Safe and Protected,

J.J. Lee and the Trademark Lawyer Law Firm Team!

P.S. If you’re looking to protect a product design, we can help you evaluate whether it’s trademarkable, or whether a different form of IP—like a design patent or trade dress strategy—might be more appropriate. Don’t assume that form equals function when it comes to legal protection.

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