Drew Kervick
Trademark Paper Outline
a. Thesis: Patented product designs should be eligible for trade dress
protection only if the scope of such protection is limited to the consumer
confusion justification. The expansion of the scope of trade dress
protection beyond this justification has in effect extended design patents in
perpetuity. Such expansion is unconstitutional.
What are design patents?
a. Constitutional origins
b. Requisite elements for design patent protection
c. Protections afforded by design patents
What are trademarks?
a. Underlying policies justifying trademark law (consumer confusion)
b. Trade dress is a type of trademark
c. Elements to receive trade dress protection
d. Scope of trademark protection:
i. Traditional scope (consumer confusion)
ii. Scope has expanded greatly (Lemley article, case law examples of
broader scope)
1. Other rationales that may currently underlie trademark
The intersection of trademark and patent law: a historical overview of case
law on the subject.
a. Cases initially suggested that patented designs should not be protected by
trademark law. (Kellogg, Sears, Compco, etc.)
b. Mogen David: first case to hold that designs can be simultaneously
protected by design patents and trade dress.
c. Current state of the law: most courts hold that designs can be
simultaneously protected by design patents and trade dress. A few courts
Rationales for the two conflicting views:
a. The “old view” that the two aren’t reconcilable: trademark protection can
extend the design’s monopoly beyond the life of the patent. Design
should be in the public domain.
b. The majority view that the two are reconcilable: Because trademark and
patents serve different purposes, trademark protection of patented designs
does not extend a monopoly indefinitely.
Evaluation of the majority rationale:
a. Although trademark and patents serve different purposes, the scope of
trademark protection is vastly broader than courts in these cases let on.
Drew Kervick
b. At one point in time, the majority rationale held water.
c. But now the scope of trademark has expanded beyond consumer
confusion. It is more akin to a property right.
i. Refer back to cases discussed above in section III(d)(ii).
d. Due to its expanded scope, trademark protection now comes very close to
extending patent monopolies:
i. Design patents allow designs a fixed number of years to build to
establish “secondary meaning.”
ii. Then broad scope of trademark can be used to keep others from
making competing design.
e. This extension is unconstitutional because patents must be for a limited
My solution
a. The solution is not concluded that patented designs should not be
protected by trade dress law.
i. This is too drastic: there are important reasons to prevent
consumers from being misled.
b. The solution is returning to the consumer confusion rationale for
trademark and being vigilant in only protecting design when there is a true
likelihood of confusion.
i. Note that a finding of likelihood of confusion for product design
should be RARE: different product packaging and disclaimers in
most cases should be sufficient to prevent consumer confusion.