D:\106756585.doc
Printed On 3/9/2016:
Concurrent Protection of Products By
Patent and Trade Dress: Use of the
Functionality Doctrine in Marketing
Displays, Inc. v. TrafFix Devices, Inc.
I. INTRODUCTION
Intellectual property is a significant aspect of most large and small corporations in today’s high technology market.1 It, in fact, seems to have a
direct and positive impact on both personal economic growth and national
economic competitiveness.2 Indeed, it is often stated that one of the primary purposes of the patent laws is to encourage scientific advancement and
innovation.3 Additionally, patents allow the public to take advantage of
significant technology by permitting copying of an inventor’s work at the
end of the twenty-year term of the patent4 and competing with the said
inventor in the market.
Certainly, however, the inventor possesses the right to protect her product after the expiration of her patent and to continue selling the product in
a responding market without interference by an infringing user. Extending
the monopoly created by a patent would greatly alter the original purpose
of the patent laws.5 However, in addition to patents, trademark interests in
a patented product may have developed, and manufacturers are entitled to
protect their trademark and trade dress rights so that consumers are not
1.
See DONALD S. CHISUM
ET AL.,
PRINCIPLES
OF
PATENT LAW 50-51
(1998).
See id.
See, e.g., Andrea Falk, Comment, Harmonization of the Patent Act and
Federal Trade Dress Law: A Critique of Vornado Air Circulation Systems v. Duracraft Corp., 21 IOWA J. CORP. L. 827, 830 (1996).
4. See 35 U.S.C. § 154 (1994) (stating length of patent protection is twenty
years).
5. The U.S. Constitution provides that inventors “by securing for limited
Times . . . [have] exclusive right to their . . . Discoveries.” U.S. CONST. art. I, § 8,
cl. 8. This has been interpreted as giving the inventor a monopoly over her works
for a statutorily defined length of time. But see Thomas F. Cotter, Is This Conflict
Really Necessary?: Resolving an Ostensible Conflict Between Patent Law and Fe deral Trademark Law, 3 MARQ. INTELL. PROP. L. REV. 25, 29 (1999) (arguing that it
is erroneous to view a patent as a monopoly).
2.
3.
327
D:\106756585.doc
328
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
confused as to source.6 What if the product configuration, protected as
trade dress or trademark, is such that the public would be unduly confused
by an infringing product that too closely resembles the original inventor’s
patented work? Is the public entitled to protection from such confusion? Or
is it more important that the inventor be excluded from extending his exclusive rights? Would a trade dress, provided for an unencumbered number
of years, extend a monopoly in that market? Is there really a conflict between these two ideas, arising under individual legal frameworks? 7
On June 26, 2000, the United States Supreme Court granted certiorari to
the Sixth Circuit Court of Appeals in order to resolve some of these pending questions.8 The case was decided on March 20, 2001.9 In particular, the
Supreme Court granted certiorari to address whether federal trade dress
protection extends to product configurations covered by expired utility
patents.10 The case, Marketing Displays, Inc. v. TrafFix Devices, Inc.,11
originated in the Sixth Circuit and was one of many from various circuits
that presented the issue of the extent of trade dress protection. 12 It was
expected that the Supreme Court’s decision would resolve the split that
existed in the circuits on this issue.13
The importance of the issue as framed by the Court resides in the nature of patent protection, its virtual monopoly on a market for a term, and
the effect that trade dress protection will essentially have on extending this
monopoly indefinitely. It is the purpose of this Note to conduct an analysis
of whether a true conflict exists between the patent laws and the Lanham
Act, which is the source of trade dress protection. 14 In particular, the Marketing Displays15 case will be the vehicle for the analysis. The briefs presented to the Supreme Court will be used to illustrate the inherent differences between trademark and patent protection that lead this author to con-
See generally 15 U.S.C. §§ 1051-1127 (1994).
The legal frameworks referred to are the Patent Act, 35 U.S.C. §§ 1 -376,
and the Lanham Act, 15 U.S.C. §§ 1051-1127.
8. See TrafFix Devices, Inc. v. Marketing Displays, Inc., 530 U.S. 1260
(2000).
9. See TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 1255
(2001).
10. See id.
11. 200 F.3d 929 (6th Cir. 1999) (hereinafter Marketing Displays III).
12. See, e.g., Vornado Air Circulation Sys., Inc. v. Duracraft Corp., 58 F.3d
1498 (10th Cir. 1995); Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246 (5th
Cir. 1997); Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir. 1998);
Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999).
13. See infra notes 89-134 and accompanying text.
14. See the Lanham Act, 15 U.S.C. §§ 1051-1127 (1994).
15. See Marketing Displays III, supra note 11, at 929.
6.
7.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 329
clude that trade dress and patent protection are independently available,
and both may be employed to protect any one invention. Further, a Supreme Court decision passed down prior to the Marketing Displays decision, Wal-Mart Stores, Inc. v. Samara Bros., Inc.,16 will assist in illustrating the predictability of the direction in which the Marketing Displays case
turned. It will be shown that the Supreme Court in fact decided the Marketing Displays case in accord with already existing legal analysis, despite
the Court’s apparent attempt to abbreviate the issue as originally presented.
This Note will be broken into the following sections: Part II will provide
the background and applicable law by presenting the historical foundation
of the Marketing Displays case, then a legal framework.17 Part III will include a discussion of the circuit split via differing case law.18 Part IV will
introduce the arguments as presented to the Supreme Court by both Marketing Displays and TrafFix, the two parties to the Sixth Circuit case, and
will include an analysis of the merits of these arguments. 19 Part V will be
an analysis of the case in light of the current state of the law, including an
explanation of the Supreme Court’s decision. 20 And Part VI will be the
author’s conclusion, including a critique of the Supreme Court’s decision
with respect to the issues in the case.
II. BACKGROUND
A. History of the Marketing Displays Case
Marketing Displays, Incorporated (MDI) is the manufacturer of windresistant sign stands that are used as traffic signs. The signs are used especially in construction and sold under the trademark WINDMASTER,
which was obtained in July 1977.21 The inventive nature of the sign is that
the use of spring mounts make the signs mobile enough to resist strong
winds.22 This particular design was patented in the mid-1960s, with the
dual spring mounts claimed in the patent.23 All applicable patents, however, expired on May 16, 1989.24 MDI continued to use the product on the
market, precisely as it had under the patents when they were enforceable. 25
In 1994, TrafFix Devices, Incorporated (TrafFix) introduced a similar
16.
17.
18.
19.
20.
21.
22.
23.
24.
25.
529 U.S. 205 (2000).
See infra notes 21-87 and accompanying text.
See infra notes 88-134 and accompanying text.
See infra notes 135-269 and accompanying text.
See infra notes 270-316 and accompanying text.
See Marketing Displays III, supra note 11, at 932.
See id.
See id.
See id.
See id.
D:\106756585.doc
330
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
product in the market and was issued a trademark for the name
WINDBUSTER in the United States in 1996. 26 As with MDI’s product,
TrafFix sold its wind-resistant signs in the highway construction industry.27 In fact, the TrafFix product was a reverse-engineered28 version of the
MDI product so that it could be sold in competition with the MDI sign
stands at the end of the term of patent protection. 29 TrafFix proceeded to
register its mark before using the WINDBUSTER name, and the United
States Patent and Trademark Office (PTO), having found no similar registered mark, published the new mark in its Official Gazette on March 14,
1995.30 No one opposed the mark during the prescribed time period, and
the mark was allowed by the PTO and issued on January 9, 1996.31
It was after the prescribed period, in July 1995, that MDI reacted to the
potentially infringing mark and filed its initial complaint. 32 The complaint
alleged Lanham Act trademark infringement, violations of federal trade
dress law, and unfair competition under Michigan common law.33 This
complaint was later amended to include a claim under Lanham Act unfair
competition.34 TrafFix counterclaimed, alleging Lanham Act unfair competition and federal antitrust violations. 35 In January 1997, the district court
granted summary judgment to MDI on its trademark claims, granting a
permanent injunction against TrafFix’s use of the infringing
WINDBUSTER mark, and TrafFix’s antitrust counterclaim was dismissed.36 Then in June 1997, the district court separately addressed the
26. See Marketing Displays, Inc. v. TrafFix Devices, Inc., 967 F. Supp. 953,
956 (E.D. Mich. 1997) (hereinafter Marketing Displays I).
27. See Marketing Displays III, supra note 11, at 932.
28. See id. Reverse-engineering is essentially re-engineering the same product with the same configuration, and, in this case, TrafFix actually used the MDI
traffic stand to develop an improved product during the re-engineering process.
See Petitioner’s Brief at 6, TrafFix Devices, Inc. v. Marketing Displays, Inc., 530
U.S. 1260 (June 26, 2000) (No. 99-1571).
29. See Marketing Displays I, supra note 26, at 956.
30. See id. The procedure of publishing the mark in the Official Gazette is
called an opposition, and it requires the publication of the mark by the Patent and
Trademark Office before issuance of the mark so that persons may oppose applic ations for marks that they determine may be harmful to them. See 15 U.S.C. §§
1062(a), 1063 (1994).
31. See Marketing Displays I, supra note 26, at 956.
32. See id.
33. See id. The court immediately dismissed MDI’s claim of state unfair
competition. See id.
34. See id.
35. See id.
36. See Marketing Displays I, supra note 26, at 965.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 331
trade dress infringement claim brought by MDI. 37 Finding that MDI had
failed to develop secondary meaning in the sign stand design and, determining that even if MDI had proved secondary meaning that the dual
spring design was functional, the court granted summary judgment to
TrafFix on the trade dress claim. 38
The Sixth Circuit Court of Appeals decided the issues on appeal in December of 1999.39 It upheld the district court’s permanent injunction, but
reversed as to MDI’s trade dress and unfair competition claims, stating that
MDI had presented genuine issues of material fact. 40 It was from this decision that TrafFix appealed to the Supreme Court of the United States, and
the Court granted certiorari, wishing to address the issue of whether by
attempting to protect its trade dress of the WINDMASTER mark, MDI
was also lengthening the patent protection it once possessed before the
expiration of its patents in 1989.41
Prior to the Supreme Court decision, the circuit courts were split in the
determination of this issue.42 The circuits that have opposed trade dress
protection after a utility patent disclosure have done so primarily because
of the public policy purposes behind the patent laws. 43 Contrarily, circuit
courts that have supported the availability of trade dress protection reason
that trade dress and patent protection are two separate intellectual property
rights and can be had exclusive of each other. 44 These competing policies
and the cases in which they developed cannot be fully comprehended
without an analysis of the purposes of patent protection as opposed to
trademark protection.
B. Patent Law
The ability of an inventor to obtain exclusive patent rights is rooted in
the U.S. Constitution.45 In light of the constitutional allowance, the Patent
37. See Marketing Displays, Inc. v. TrafFix Devices, Inc., 971 F. Supp. 262,
264 (E.D. Mich. 1997) (hereinafter Marketing Displays II).
38. See id. at 276.
39. See Marketing Displays III, supra note 11, at 929.
40. See id. at 942.
41. See TrafFix Devices, Inc. v. Marketing Displays, Inc., 530 U.S. 1260
(2000).
42. See infra notes 89-134 and accompanying text.
43. See, e.g., Vornado Air Circulation Sys., Inc. v. Duracraft Corp., 58 F.3d
1498 (10th Cir. 1995); Zip Dee, Inc. v. Dometic Corp., 931 F. Supp. 602 (N.D. Ill.
1996).
44. See, e.g., Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246 (5th Cir.
1997); Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir. 1998);
Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999).
45. The Intellectual Property Clause, U.S. Const. art. 1, § 8, cl. 8.
D:\106756585.doc
332
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
Act was passed by Congress in 1952.46 Two types of patents are available:
utility patents and design patents.47 Design patents have a duration of fourteen years and are obtained to protect nonfunctional design features. 48 Utility patents, also known as functional patents, have a duration of protection
of twenty years from the date of filing. 49 The two types of patents differ in
that a design patent is not available where any aspect of the patented design is for a useful purpose. Both types of patents will not issue unless it is
shown that the invention is novel, useful and non-obvious.50
It is the public policy purposes for issuing patents that are of particular
interest in distinguishing patent rights from trademark rights. The primary
purposes for issuing patents are to promote invention, reward invention
and to permit ideas to become a part of the public domain for use after an
inventor has secured an exclusive right for the life of the patent. 51 The current term for the life of a patent is twenty years. 52 Hence, an inventor enjoys an exclusive right to promote and profit from her patent for a fixed
46. See 35 U.S.C. §§ 1-376 (1994).
47. “Patents for processes, machines, manufactures and compositions of
matter are generally called ‘utility’ patents.” 1 DONALD S. CHISUM, CHISUM ON
PATENTS § 1.01, at 1-9 (2001). This is to be distinguished from design patents,
which protect “new, original and ornamental design for [articles] of manufacture.”
Id. Design patents are issued for 14-year terms, while utility patents are issued for
20-year terms. See id. There is an obvious overlap of patent law and trademark law
with respect to design patents, since design patents are concerned with the way an
invention looks. See id. § 1.04, at 1-297. Both cover the “nonfunctional features
of useful objects.” Id. This article does not address this particular issue, but focuses on the potential overlap of utility patent protection and trademark protection in
the form of trade dress. Thus, reference made hereafter to a patent is reference to a
utility patent, as defined in this footnote.
48. See 35 U.S.C. § 173 (1988).
49. See 35 U.S.C. § 154 (1994).
50. See 35 U.S.C. §§ 101-03 (1994). The statute reads, in part:
Novelty requires the invention to be new. An invention is obvious if
previously granted patents, published writings, or a combination of patents or publications would have shown a person, having ordinary skill
in the field of the invention, how to make the invention, even if the prior
patents or publications did not specifically cover the exact invention.
Gwendolyn Gill, Comment, Through the Back Door: Attempts to Use Trade Dress
to Protect Expired Patents, 67 U. CIN. L. REV. 1269, 1273 (1999). The usefulness
requirement will be discussed in more detail. See infra notes 295-98 and accompanying text.
51. See Theodore H. Davis, Jr., Copying in the Shadow of the Constitution:
The Rational Limits of Trade Dress Protection, 80 MINN. L. REV. 595, 616 (1996)
(quoting Quick Point Pencil Co. v. Aronson, 567 F.2d 757, 762 (8th Cir. 1977)).
52. See 35 U.S.C. § 154 (1994).
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 333
term of years, then the invention becomes available to the public for use in
a freely competitive market.53
C. Trademark Law
The criteria for protection of a trademark are that it be used to distinguish goods or services such that a single source is identifiable. 54 A relatively significant difference between patent protection and trademark protection is that the latter is not for a fixed term, but is available on a renewable basis so long as the mark is being used in a regular manner. 55 An additional difference lies in the purpose of the relative rights: “[u]nlike patent
law, the purpose of trademark and trade dress law is to prevent customer
confusion and protect the value of identifying symbols, not to encourage
invention by providing a period of exclusive rights.” 56 Due to the purposes
of trademark protection, it is unnecessary to limit the term for which it is
protected.57
Trade dress protection differs from trademark protection, although there
seems to be a significantly disappearing distinction between trade dress
and trademarks.58 Trade dress used to be considered unfair competition,
but since trade dress requires the same factual conclusions as trademark
protection, the two have been combined, so that protectable trade dress can
53. See Gill, supra note 50, at 1275-76.
54. See J. THOMAS MCC ARTHY, 1 MCC ARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 3:1, at 3-2 (4th ed. 1996 & Supp. June 2001).
55. See id. § 6:8, at 6-11.
56. Id. § 6:3, at 6-6. See also Davis, supra note 51, at 603 (“the purpose of
trademark law was not to reward creativity and ingenuity”).
57. See Kevin E. Mohr, At the Interface of Patent and Trademark Law:
Should a Product Configuration Disclosed in a Utility Patent Ever Qualify for
Trade Dress Protection?, 19 HASTINGS COMM. & ENT. L.J. 339, 344-45 n.16
(1997):
Since [trademarks] are intended primarily to advance consumer awar eness rather than any body of knowledge, it would make little sense to
limit the term of a trademark. The longer a mark is used in connection
with a product, the stronger the consumer’s associa tion of that product
with a particular producer, source or expected quality becomes. A lthough in certain instances a competitor will need a mark to compete e ffectively in the market in which the mark is used, there is usually an
abundance of words or symbols to go around for everyone who wants to
compete.
Id.
58. See MCC ARTHY, supra note 54 § 8:1, at 8-4 (commenting that the difference between trade dress and trademarks is historical). “Today, many types of de signations protectable as ‘trade dress’ are also registrable as ‘trademarks.’” Id.
D:\106756585.doc
334
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
be a registrable trademark.59
Federal trade dress protection is asserted under the Lanham Act. 60
“[T]he protection of trademarks and trade dress under § 43(a) serves the
same statutory purpose of preventing deception and unfair competition.
There is no persuasive reason to apply different analysis to the two.” 61 In
1999, this section was amended essentially to authorize its use to claim
infringement of unregistered trade dress. 62 Trade dress has evolved over
time to include three types: (1) “overall appearance of labels, wrappers,
and containers used in packaging a product;” 63 (2) “totality of any elements
in which a product or service is . . . presented;” 64 and, most recently, (3)
the product’s configuration, or its shape and design.65 In each of these
types, “the elements making up the alleged trade dress must have been
used in such a manner as to denote product source.” 66 There is no trade
dress protection for a mere aesthetic feature. 67
A determination that a trade dress has been infringed depends upon
whether the alleged infringing trade dress is likely to cause confusion to a
potential buyer, and therefore, that a finding of unfair competition is warranted.68 The totality of the product is relevant, not simply the individual
details in the product design.
Trade dress is protectable if three requirements are met:
[1] it is either inherently distinctive or has acquired a secondary meaning, [2]
it is nonfunctional, and [3] a likelihood of confusion can be established between the trade dress of the plaintiff as applied to his goods and/or services,
when compared to the trade dress of the defendant, as applied to his goods
and/or services.69
See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775 (1992).
See 15 U.S.C. § 1125(a) (Supp. V 1994).
Two Pesos, Inc., 505 U.S. at 773.
See Lanham Act § 43(a), 15 U.S.C. § 1125(a) (Supp. V 1994). The 1999
Amendment to the Lanham Act also requires that the party asserting trade dress
rights for an unregistered trade dress has the burden of proving that the trade dress
is not functional. See Martin P. Hoffman, Trademarks, Copyrights, and Unfair
Competition for the General Practitioner and the Corporate Counsel, SE44 A.L.I.A.B.A. 161, 174 (2000).
63. MCC ARTHY, supra note 54, §8:1. Product packaging is considered the
oldest form of recognized trade dress. See id.
64. Id.
65. See id. § 8:5.
66. See id. § 8:1 (emphasis in original).
67. See id. § 8:1. Aesthetic features are not protected because they do not
cause a consumer to identify the product with the source of the product. See id.
68. See MCC ARTHY, supra note 54, at § 8:1.
69. See Hoffman, supra note 62, at 178. But see Wal-Mart Stores, Inc. v.
59.
60.
61.
62.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 335
Inherent distinctiveness is dependent upon the trade dress being arbitrary, fanciful or suggestive.70 Even if the trade dress is inherently distinctive, secondary meaning is necessary such that consumers recognize the
dress and affiliate it with a particular product and a particular manufacturer.71
Each of the above descriptions is relevant in an analysis of trade dress
protection, but in comparing trade dress with patents, the requirement of
functionality is particularly important. There is an assumption that a trade
dress is functional if it embodies “a design feature which is superior to
other available designs and thus provides a competitive advantage to the
user.”72 Thus, for one to successfully assert trade dress rights, it must be
shown that the trade dress or trademark features are nonfunctional. 73 Generally,
a product feature is functional and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the
article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.74
A functional feature cannot be protected, even in light of the existence
of consumer confusion, or secondary meaning, and others are free to copy
the alleged trade dress.75 As one scholar notes:
[The] [r]ule against protection of functional features is intended to avoid creation of perpetual monopoly in trademark, or trade dress, that would circumvent and/or conflict with patent protection, which is of limited duration. Al-
Samara Bros., Inc., 529 U.S. 205 (2000) (holding that trade dress protection now
always requires proof of secondary meaning, regardless of its status as either inhe rently distinctive or descriptive).
70. See Hoffman, supra note 62, at 179. See also Abercrombie & Fitch Co.
v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) (stating that the taxonomy for
determining the strength of a trademark, from weakest to strongest, include g eneric, descriptive, suggestive, arbitrary, or fanciful; and also that generic marks are
not protectable).
71. See Hoffman, supra note 62, at 179. Secondary meaning can be shown
by a number of factors, including consumer recognition, the ability of the consumer
to identify the source and the advertising or sales techniques used by the trade
dress owner that focus on the trade dress. See id.
72. Trademark Manual of Examining Procedure (TMEP) § 1202.03.
73. See MCC ARTHY, supra note 54, § 7:63.
74. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995) (holding
that the green/gold color of a dry-cleaning press pad was protectable as trade dress
since the color was not functional, but served as a source-identifying feature).
75. See Hoffman, supra note 62, at 189.
D:\106756585.doc
336
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
so, patent protection requires [a] level of innovation that is new, useful, and
unobvious. Similar standards do not apply to trade dress or trademark. 76
Trade dress protection and trademark registration are restricted so that
their extent does not reach that of a patent, where functional features are
the purpose of the limited protection.77
This discussion illustrates how two kinds of intellectual property developed for differing public policy purposes. As mentioned, and importantly,
while patents enjoy a limited term of protection, trademarks and trade
dress have potentially unlimited durations of protection. 78 Because of this,
issues of monopolization and unfair competition are clearly implied, and
the circuit courts were left to decipher the correct application of trade dress
protection.
D. Brief Discussion of Supreme Court Cases that Precede the Circuit
Split Cases
It is of relevance that the Supreme Court has addressed the preliminary
question of whether trademark protection can be extended to unpatented
product designs with respect to state unfair competition laws.79 The SearsCompco doctrine arose out of two cases that held that federal patent laws
preempt state unfair competition laws.80 In Sears, the plaintiff had patents
on a lamp, and, after achieving commercial success, Sears began to sell
identical lamps to compete with the plaintiff.81 Reversing the lower court’s
decision, the Supreme Court determined that state unfair competition laws
cannot prevent copying because under federal patent law, an unpatentable
article is in the public domain.82 Likewise, the Compco case led to a similar conclusion that a lighting fixture could be copied since it was not enti-
See id.
See MCCARTHY, supra note 54, at §§ 7:63, 7:64.
See supra notes 53-5 and accompanying text.
See David W. Opderbeck, An Economic Perspective on Product Configuration Trade Dress, 24 SETON HALL LEGIS. J. 327, 336 (2000).
80. See Sears Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964) (stating
that federal patent laws prevail to the extent that state laws allow protection to
articles that cannot be patented under federal law); Compco Corp. v. Day-Brite
Lighting, Inc., 376 U.S. 234, 238 (1964) (holding “if the design is not entitled to a
design patent or other federal statutory protection, then it can be copied at will”).
81. See Sears Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964). See also
Opderbeck, supra note 79, at 336.
82. See Opderbeck, supra note 79, at 337. See also Sears Roebuck & Co.,
376 U.S. at 231 (stating “[a]n unpatentable article, like an article on which the
patent has expired, is in the public domain and may be made and sold by whoever
chooses to do so”).
76.
77.
78.
79.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 337
tled to any federal statutory protection.83
This seemingly restrictive case law was later modified and clarified to
say that the Sears-Compco doctrine was not intended to preempt all trade
dress protection via state law for all unpatented articles. 84 The Bonito
Boats decision reinforced the Sears-Compco doctrine in that federal patent
protection preempts state unfair competition laws, but allows state protection of unpatented designs in situations where “consumer confusion is likely to result; the design ‘idea’ itself may be freely exploited in all other contexts.”85 The Court pointed to the protections of the Lanham Act, § 43(a),
as a reminder that a balance between patent law and unfair competition is
codified.86 The Court later held that trade dress protection is not inherently
anti-competitive.87 Thus, the Court firmly resolved against upholding state
unfair competition laws if they conflicted with the federal patent laws.
With this backdrop, the circuit courts were left to decipher exactly where
the clash between patent law and federal trade dress protection resolved
itself.
83. See Compco Corp., 376 U.S. at 238. Interestingly, the Sears case and
the Compco case were decided by the Supreme Court on the same day, but on different grounds. The Sears decision was grounded in the Supremacy Clause, U.S.
Const. art. VI, cl. 2, while the Compco case found support in the Intellectual Property Clause, U.S. Const. art. I, § 8, cl. 8. Both cases decided that the state laws at
issue were unconstitutional, but the Compco case clearly gives the Intellectual
Property Clause substantially more weight, which would arguably make it a violation of the Constitution to copy functional features. See Davis, supra note 51, at
609-13.
84. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146
(1989) (holding that a Florida statute prohibiting the copying of unpatented boat
hulls was invalid because the statute gave the original boat hull designer rights
against all the world, similar to what would be granted in a federal patent, but not
fulfilling the necessary requirements of a patent).
85. Bonito Boats, Inc., 489 U.S. at 158. See also Davis, supra note 51, at
618 (stating that Bonito Boats really only stands for the proposition that the Intellectual Property Clause, Art. I, § 8, cl. 8 of the Constitution, does not “affir matively restrict . . . state action” in protecting intellectual property rights). It was after
the Sears-Compco and Bonito Boats decisions that courts in trade dress cases have
generally required nonfunctionality. See Davis, supra note 51, at 619. This may
be the most significant aspect of the aforementioned line of cases. See, e.g., Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995) (commenting on the functionality doctrine’s ability to prevent the inhibition of competition since producers will
be unable to control a useful feature); Two Pesos v. Taco Cabana, Inc., 505 U.S.
763 (1992) (stating that Lanham Act protection depends upon functionality).
86. See Bonito Boats, Inc., 489 U.S. at 146. See also Opderbeck, supra note
79, at 341.
87. See Two Pesos, Inc., 505 U.S. at 763.
D:\106756585.doc
338
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
III. THE CIRCUIT SPLIT
With the aforementioned developments in the law, it is no wonder that
the circuit courts have disagreed regarding the ability to assert trade dress
rights despite the already existing utility patent protection. The Fifth, Second, Seventh, Tenth and Federal Circuit Courts of Appeals have contributed to the discussion involving the extent of trade dress protection and its
probable ramifications.88 Each of the contributing decisions will now be
discussed in turn.
A. Opposing Trade Dress Protection in the Wake of Expired Patents
The Tenth Circuit’s opinion was expressed in a 1995 decision involving
the spiral design of a grill on a fan. 89 The court addressed whether product
configuration could be protected as trade dress. 90 Vornado had obtained a
utility patent on the fan, and the spiral design of the grill was claimed in
the patent application.91 The lower court determined that the fan grill was
nonfunctional, thus leading to the conclusion that Vornado’s grill design
was protectable as trade dress.92 The district court reasoned that Vornado’s
competitors did not need to use the disclosed design, and that consumers
were likely to be confused by the use of a similar design by Duracraft. 93
The court enjoined Duracraft from further use of its fan. 94
But the Appellate Court reversed, stating, “. . . this case clearly shows
that trade dress protection can directly interfere with the public’s ability to
practice patented inventions after the patents have expired, and that it undermines the principle that ideas in the public domain should stay there.” 95
The court felt that the purposes of the Lanham Act, section 43(a), did not
include protecting against consumer confusion that arises from the copying
of configurations that are “significant parts of patented inventions.” 96 The
court stated:
[W]here a disputed product configuration is part of a claim in a utility patent,
88. See infra notes 89-134 and accompanying text.
89. See Vornado Air Sys., Inc. v. Duracraft Corp., 58 F.3d 1498 (10th Cir.
1995).
90.
91.
92.
93.
94.
95.
96.
See id.
See id. at 1500.
See id. at 1501.
See id. at 1502. See also Mohr, supra note 57, at 394-95.
See Vornado Air Sys., Inc., 58 F.3d at 1502.
Id. at 1508.
Id. at 1509.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 339
and the configuration is a described, significant inventive aspect of the invention, see 35 U.S.C. § 112, so that without it the invention could not fairly be
said to be the same invention, patent law prevents its protection as trade
dress, even if the configuration is nonfunctional. 97
Thus, Vornado, the court concluded, could not receive trade dress protection for its fan grill because it was a significant inventive element of the
patented product.98 It is of particular relevance that the configuration at
issue was claimed in the patent obtained.99
The court’s reasoning rested on the Supreme Court’s interpretation of
the meaning of functionality. 100 Functionality depends on the needs of the
competitor to make an equally competitive product.101 If a trade dress is
functional, it does not merit protection, even if it is inherently distinctive
or has acquired secondary meaning.102 Thus, a viable argument was created
in the Tenth Circuit to illustrate that patent protection should not be unduly
extended under trade dress law where the product configuration is a signif-
97. Id. at 1510. But see Intellectual Property- Patent and Trade Dress LawTenth Circuit Applies “Significant Inventive Aspect” Test to Determine Whether
Utility Patent Precludes Trade Dress Protection, 109 HARV. L. REV. 1457, 1458
(1996) (commenting on the general test devised by the Tenth Circuit that allowed
them to conclude that “patent concerns precluded trade dress protection for the
spiral grill” and determining that the court erred by failing to define the test more
specifically); Michael S. Perez, Reconciling the Patent Act and the Lanham Act:
Should Product Configurations Be Entitled to Trade Dress Protection After the
Expiration of a Utility or Design Patent?, 4 TEX. INTELL. PROP. L.J. 383, 411-12
(arguing that the test set forth by the Tenth Circuit is flawed because “it would
preclude trade dress protection for significant patented features in situations where
the public would not be denied the benefit of the inventions,” and it is “too narrow
because it would permit trade dress protection for design features that are inextr icably tied to patented processes where the designs do not contribute to the overall
‘inventiveness’ of the process”).
98. See Vornado Air Sys., Inc., 58 F.3d at 1510.
99. This is particularly relevant because it allowed the Tenth Circuit to ea sily conclude that the spiral fan design was a significant inventive component of the
patented invention without conducting a functionality test. See Vornado Air Sys.,
Inc., 58 F.3d at 1509-10. But see Respondent’s Brief at 31, TrafFix Devices, Inc.
v. Marketing Displays, Inc., 530 U.S. 1260 (2000) (No. 99-1571) (“[I]t is submitted that the Vornado Court did not recognize that distinctive, nonfunctional product
features can be separated from the utilitarian features which are the proper subject
of a patent. Despite noting that ‘availability of equally satisfactory alternatives for
a particular feature’ is ‘often the fulcrum on which Lanham Act functionality analysis turns’, the Vornado Court ignored any functionality analysis in reaching its
result.” Id.)
100. See Vornado Air Sys., Inc., 58 F.3d at 1507.
101. See Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 164 (1995).
102. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775 (1992).
D:\106756585.doc
340
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
icant component in the formerly patented article. 103
B. Allowing Trade Dress Protection in the Wake of Expired Patents
The Fifth Circuit had a contrary interpretation of the conflict between
patent and trade dress protection in Sunbeam Products, Inc. v. West Bend
Co.104 Sunbeam involved an alleged copy of the configuration of a stand
mixer that incorporated certain functional features that were previously
named in utility patents.105 The court focused on the overall shape and configuration of the mixer, concluding that it was nonfunctional, and found
without merit the argument by West Bend that certain features were functional, therefore making them not entitled to trade dress protection.106 The
test employed by the court, dubbed the “utilitarian standard of functionality,”107 focused on whether the features of the configuration would impede
the competing market.108 Of greatest importance to the court was that there
were other manufacturers who competed with the Sunbeam product.109 The
court’s rebuttal to West Bend’s argument that functional features cannot
receive trade dress protection substantially said:
[T]he trade dress claim in the instant case entails a combination of several
features, with individual utility patents granted to certain features. In this regard, the principle that trade dress is the “total image” of a product, rather
than its isolated components, is dispositive . . . . [G]ranting trade dress protection to the arbitrary product configuration of the American Classic
Mixmaster® would not restrict any competitors from copying the individual
functional features after the individual utility patents have expired, but would
simply prohibit competitors from copying the arbitrary combination of features embraced in [the mixer]. Hence, there is no conflict between patent law
and trademark law in the instant case. 110
The court concluded that protecting the trade dress would not frustrate
competition.111
The Fifth Circuit did not particularly take into consideration the purpos-
103. See supra notes 89-102 and accompanying text.
104. Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246 (5th Cir. 1997).
105. See id. at 256.
106. See id. at 256-57.
107. Id. at 255.
108. See id.
109. See id. at 257.
110. Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246, 256 n.19 (5th
Cir. 1997).
111. See id. at 257.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 341
es of the patent laws, as Sunbeam’s product was nonfunctional in nature.112
Consequently, the Fifth Circuit’s interpretation that trade dress must be
considered in totality allowed it to distinguish the utility patents from the
trade dress, unlike the Tenth Circuit’s decision that the utility patent precluded the ability of the manufacturer to obtain trade dress protection at
all.
In 1998, the Seventh Circuit directly addressed the apparent conflict between trademark protection of product configurations and patent law, and,
agreeing with the Fifth Circuit, found that trade dress was available. The
conflict arose between manufacturers of cable ties – “small nylon belts
used to bundle wires” comprised of a head on one end that has a slit and
locking mechanism.113 A patent was obtained on the cable tie in 1965, expiring in 1982.114 The utility patent claimed the head of the tie as one of its
elements, but it did not claim the shape of the head; that was merely disclosed in the patent specifications.115 This fact allowed the court to distinguish Vornado, since in that case the fan grill was not part of the claims in
the patent.116 This distinction seems to be the sole purpose for the Seventh
Circuit’s lack of uniformity with the Vornado decision.
Based on the lack of claims as to the tie head, and in light of Supreme
Court decisions that were cited as supporting the distinctions between patent law and trademarks,117 the court overturned the district court’s ruling,
112. See id. at 256.
113. Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 282 (7th Cir.
1998), cert. denied, 119 S. Ct. 336 (1998). Note that the parties to this Seventh
Circuit case wrote amici briefs in the TrafFix case for their respective arguments.
See infra note 154 and accompanying text.
114. The life of a patent used to be seventeen years, but was increased to
twenty years from the time of filing beginning in 1995. See 35 U.S.C. § 154(a)(2)
(1994). The term of a design patent remains fourteen years from the date of issue.
See 35 U.S.C. § 173 (1994).
115. See Thomas & Betts, 138 F.3d at 282.
116. See id. See also Mohr, supra note 57, at 398. A patent application includes a claims section as part of the specification that “is particularly written to
describe in exact detail the actual invention for which the inventor seeks patent
protection. A patent is granted solely for the invention described in the claims, not
for what may be described elsewhere in the specification.” Gill, supra note 50, at
1274-75.
117. Each of the Supreme Court cases is distinguished as to the case at bar.
See, e.g., Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989) (no
trade dress protection granted under a state unfair competition law, since the federal patent laws would preempt state law); Sears, Roebuck & Co. v. Stiffel Co., 376
U.S. 225 (1964) (monopoly ends when patent protection ends, so unfair competition laws of the state cannot attempt to extend the rights); Singer Mfg. Co. v. June
Mfg. Co., 163 U.S. 169, 179 (1896) (the machine’s shape was dictated in the patent
and covered all components, so trade dress was not an option); Scott Paper Co. v.
D:\106756585.doc
342
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
finding that there “is no per se prohibition against features disclosed in a
patent receiving trademark protection after the patent has expired.” 118 The
Court went further in stating “a configuration of an article cannot receive
trademark registration if its purpose is to contribute functional advantages
to the article or if the configuration results from functional considerations.”119 However, in light of this conclusive statement of law, and after
distinguishing this case from the Tenth Circuit’s Vornado decision,120 the
court found that there was no conflict with patent laws with respect to the
Thomas & Betts trade dress because the shape of the invention was not
claimed in the prior patent. 121 It seems that the Seventh Circuit may have
agreed with the Tenth Circuit, if not for the fact that the trade dress in
question (the shape of the head of a cable tie) was never claimed in the
previous patent, and, as a result, even if nonfunctional, there existed no
conflict between the trademark protection and the patent protection, even if
the trade dress was nonfunctional.
The question of conflict presented itself yet again, this time in the Court
of Appeals for the Federal Circuit.122 The invention at issue was a curved
winch post mounted to the front of trailers, necessary to draw watercraft
onto the trailers for tow.123 The district court granted an injunction to Karavan, the defendant, based upon the Tenth Circuit Vornado case.124 The
district court concluded that because the winch was discussed in a prior
patent and claimed within a corresponding claim of that patent, the winch
was a “significant inventive aspect” 125 of the patent, thereby rendering it
unprotectable trade dress.126 The appeals court found this conclusion to be
erroneous because there was no determination as to whether the winch in
question was functional, which was necessary to decipher whether trade-
Marcalus Mfg. Co., 326 U.S. 249 (1945) (dicta stated that patent protection ends a
monopoly in favor of public use, but the case was decided on assignor e stoppel, not
trademark law, so was not dispositive). The Thomas & Betts court discussed each
of the foregoing to show that this case could allow trade dress protection as exclusive from the former utility patents. See Thomas & Betts, 138 F.3d at 285-87.
118. Thomas & Betts, 138 F.3d at 288.
119. Id.
120. See supra notes 89-103 and accompanying text for a discussion of Vornado.
121. See Thomas & Betts, 138 F.3d at 289.
122. See Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed.
Cir. 1999).
123. See id. at 1357.
124. See id. at 1358.
125. Vornado Air Circulation Systems, Inc. v. Duracraft Corp., 58 F.3d 1498,
1510 (10th Cir. 1995) (court held that Lanham Act protection was not available
when the component was significant in the utility patent).
126. See Midwest Indus., Inc., 175 F.3d at 1358.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 343
mark protection was at all available.127
The court’s test included a careful look into the functionality of the
winch post, which led to a determination that although the winch post was
a significant inventive aspect in the prior patent claims, that was not the
same as determining it to be functional. 128 The functionality test employed
by the Federal Circuit is that stated by the Supreme Court in Qualitex:
“that Midwest’s right to exclude others from using that feature ‘would put
competitors at a significant non-reputation-related disadvantage.’”129 Functionality is stated as the sole test in an inquiry into the relationship between
the Lanham Act and the patent laws.130 Its purpose is summarily presented
in the Qualitex case:
The functionality doctrine prevents trademark law, which seeks to promote
competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature .
. . . If a product’s functional features could be used as trademarks . . . a monopoly over such features could be obtained without regard to whether they
qualify as patents and could be extended forever (because trademarks may be
renewed in perpetuity). 131
The Federal Circuit conscientiously focused not on whether a utility patent has been granted in the past, but rather on the functionality of the features questioned.132 The significance of the prior patent is merely evidence
of whether the asserted trade dress is functional.133 The Federal Circuit
used Supreme Court precedent to establish that there is not a conflict between the patent laws and the Lanham Act, although none of those cases
mentioned address the issue on point.134
The Marketing Displays case arose in the midst of the circuit split and
raised a similar question. The arguments presented to the Supreme Court
by each side passionately argue, and add to, the logic that emerges from
the Tenth Circuit Vornado decision and those decisions opposing it. It already seems clear, however, that the Supreme Court was in a position to
either maintain the functionality doctrine or do away with it, as it is a
source of confusion for all of the circuit courts.
127. See id. at 1361, 1364.
128. See id. at 1364.
129. See id. See also Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 165
(1995) (setting forth the test for functionality).
130. See Midwest Industries, Inc., 175 F.3d at 1364.
131. See id. at 1362, quoting Qualitex, 514 U.S. at 164-65.
132. See id.
133. See id.
134. See id. at 1363.
D:\106756585.doc
344
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
IV. ARGUMENTS BEFORE THE SUPREME COURT
A. Petitioner TrafFix’s Position
The foregoing discussion of the circuit split 135 laid the foundation on
which the parties of the Sixth Circuit case 136 built their arguments for the
Supreme Court. The pre-existing issue for the Circuit Courts of Appeals in
applying trademark law under the Lanham Act was magnified by Congress’ 1999 amendment to the Lanham Act expressly allowing trade dress
protection for unregistered trade dress.137 Despite the long line of Supreme
Court cases that directly assert the limited protection of the patent laws as
a monopoly, a new question is at stake, one that arises from congressional
intent to protect trade dress. 138
The Petitioner, TrafFix Devices, posited that trade dress protection
should not be allowed where the article seeking protection was the subject
of an expired utility patent.139 The Petitioner argued for a per se rule
against trade dress protection for expired utility patents. Thus, the Petitioner attempted to establish that MDI cannot be entitled to any further protection since its patents for the traffic sign stands expired before TrafFix copied it, and any different interpretation would be allowing MDI to neglect
its end of the patent bargain.140 Specifically, TrafFix argued that “[t]he
public’s right to copy from expired patents should not be subordinated to a
135. See supra Part III, notes 88-134 and accompanying text.
136. See Marketing Displays III, supra note 11, at 929.
137. See 15 U.S.C. § 1125(a)(3) (Supp. V 1994) (acknowledges “civil actions
for trade dress infringement under this chapter for [unregistered] trade dress”). See
also Petitioner’s Brief, supra note 28, at 26.
138. See 15 U.S.C. § 1125(a)(3) (Supp. V 1994).
139. See Petitioner’s Brief, supra note 28, at 9.
140. See Petitioner’s Brief, supra note 28, at 9. The MDI patents leave no
room for doubt that the sign stand was novel, useful, and nonobvious, since a patent will not be granted if these three requirements are not met. See 35 U.S.C. §§
101, 102, 103 (1994). The Petitioner discusses prior litigation in which MDI was
involved to provide further proof that the product configuration at issue is co mpletely covered by the expired utility patents. See Petitioner’s Brief, supra note 28,
at 22. Specifically, Sarkisian v. Winn-Proof Corp., 697 F.2d 1313 (9th Cir. 1983),
proved very valuable to TrafFix even though a per se rule was not adopted. Since
the Supreme Court conducted an inquiry into functionality, Sarkisian was used to
show the parts of the sign stand that were considered functional by MDI.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 345
factbound inquiry - dressed in terms of functionality - into whether there is
a ‘competitive need’ to copy a particular configuration, at a particular
point in time, in a particular market.” 141 This argument is in fact bolstered
by a prior Supreme Court decision, which found support in the purposes
for the granting of a patent itself.142 Two issues of particular interest are
raised: the right to copy as part of the patent bargain and the doctrine of
functionality. Each of these issues will be discussed in turn.
i. The Patent Bargain
A recurring theme throughout the Petitioner’s Brief involved a statement
made in Bonito Boats, Inc. v. Thunder Craft Boats, Inc. 143 There the Court
declared that the underlying patent system is a “carefully crafted bargain”
that balances an individual’s exclusive right to invent and patent, while
maintaining that the ultimate right will pass to the public. 144 The bargain
“encourag[es] the creation and disclosure of new, useful, and nonobvious
advances in technology and design in return for the exclusive right to practice the invention for a period of years.” 145 Further, it is in “consideration
of its disclosure and the consequent benefit to the community” that a patent is granted.146 In fact, the Court in Bonito Boats addressed the question
of state unfair competition laws that may conflict with federal patent protection.147 However, the Petitioner argued that there is no difference between that discussion and the one currently before the Court involving
federal Lanham Act issues. Whether the conflict arises between state and
federal laws or two federal statutes, upon expiration of the patent, it is to
return to the public domain for the public’s benefit. 148
The Petitioner argued that the Supreme Court not only repeatedly set
forth the purposes and limitations of the patent bargain, but it has also up-
141. Petitioner’s Brief, supra note 28, at 11.
142. See id. A number of Supreme Court cases have stood for the proposition
that patents are to be granted for a limited duration, as set forth by the paten t laws
originating in the Constitution. TrafFix used many of these cases in its brief to
support the proposition. See Petitioner’s Brief, supra note 28, at 14-18. See also
United States v. Steffens, 100 U.S. 82 (1879); Graham v. John Deere Co., 383 U.S.
1 (1966); Kendall v. Winsor, 62 U.S. 322 (1858); Sears, Roebuck & Co. v. Stiffel
Co., 376 U.S. 225 (1964). It is worth noting that the Court in these cases was
commenting on the accepted purpose of a patent, not on the potential overlap of
protection from trademark law.
143. See 489 U.S. 141 (1989).
144. See id. at 150.
145. Id. at 150-51.
146. Id. at 151.
147. See id.
148. See Petitioner’s Brief, supra note 28, at 16.
D:\106756585.doc
346
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
held the public’s right to copy and use what was once protected in expired
patents, since the right to copy is the benefit the public received for making the patent bargain.149 “[T]he Court has repeatedly emphasized that unfair competition or trademark law may not be applied in a manner that
would defeat the public’s right to copy and use the subject of expired patents, or create what are in effect patent monopolies of unlimited duration.”150 The Petitioner used a number of cases to develop this history of
the Court’s decisions.151 The Petitioner first likened its case to that of
Singer, decided by the Court in 1896.152 In Singer, the Court would not
enjoin a competitor from producing a sewing machine that had the same
overall appearance as Singer’s, since Singer’s utility patent had expired,
and the monopoly protection on the distinctive character of its sewing machine expired with it.153 The Court stated that “on the termination of the
patent there passes to the public the right to make the machine in the form
in which it was constructed during the patent.”154
The Petitioner found further support for its proposition in a 1938 Supreme Court case, Kellogg Co. v. National Biscuit Co.155 The Kellogg case
was a dispute over Kellogg’s right to make shredded wheat in a pillowshaped form where National Biscuit had previously held product and process patents on the same shaped shredded wheat. 156 The Court essentially
followed the Singer precedent and affirmed Kellogg’s right to manufacture
pillow-shaped shredded wheat. The only condition placed on Kellogg was
that it somehow distinguish its product so that the consumer would in no
way be confused by the similarity of the products. 157 Based on Singer and
149. See id. at 17-18.
150. Id. at 17.
151. In addition to those that will be discussed with particular detail, see
Scott Paper v. Marcalus Mfg. Co., 326 U.S. 249, 256 (1945) and Bonito Boats,
Inc., 489 U.S. at 152.
152. Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169 (1896).
153. See Petitioner’s Brief, supra note 28, at 18. See also Singer, 163 U.S. at
179.
154. Singer, 163 U.S. at 185. One amicus argued that Singer provides a
bright-line rule that items formerly covered by patents necessarily enter the public
domain, and therefore no part of the item could be the subject of Lanham Act p rotection. See Amicus Brief of Panduit Corp. in support of Petitioner at 4-7; Marketing Displays, Inc. v. TrafFix Devices, Inc., 530 U.S. 1260 (2000) (No. 99 -1571).
But see Amicus Brief of Thomas & Betts, at 12; Marketing Displays, Inc. v.
TrafFix Devices, Inc., 530 U.S. 1260 (2000) (No. 99-1571) (stating Singer is not
dispositive because it predates the Lanham Act).
155. See 305 U.S. 111 (1938).
156. See id. at 113, 117.
157. See id. at 120. Kellogg distinguished its product by using cartons that
displayed the Kellogg name. See id. at 120-21.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 347
Kellogg, the Petitioner concluded that “[i]f anything, the public’s right to
copy an article is only stronger where . . . it has enjoyed patent protection
and, therefore, the public has conferred a patent monopoly upon the inventor in exchange for the right to copy the product upon expiration of the
patent. That is the essence of the patent bargain.” 158
The amici in support of the Petitioner also had concerns over extending
patent protection in light of the purposes set forth for issuing patents. The
thrust of the arguments again resided in the bargain theory of patent: the
weight of the constitutional right to grant patents found in the Intellectual
Property Clause is heavier and cannot be overcome by the Lanham Act,
enacted by Congress pursuant to the Commerce Clause.159 A particularly
potent point was that the patent bargain includes the good will associated
with the patented product that, along with the patented invention, passes
into the public domain at the end of the patent term. 160 If the good will of
the product is part of the patent, and good will is essentially secondary
meaning as necessary for trade dress protection, it follows that when the
patent expires, there can be no trade dress protection. 161 Not only is the
good will part of the patent, but it would be inequitable for the original
patent holder to break her contract, so to speak, by then getting trade dress
protection.162 Further, the patent holder is not completely disadvantaged at
the expiration of her patent, since the patent holders are the original owners and can use that fact in advertising to the public. 163 The original patent
owner can assert the superiority of her product, having been the first to
manufacture it. Since the patent owner has been given this advantage, if
used to the fullest, lack of trade dress protection will have little adverse
economic effect.164
The Petitioner’s argument on the patent bargain was dependent upon the
Court equating state unfair competition laws with the federal Lanham
Act,165 as each of the cases presented by the Petitioner in support of its
158. Petitioner’s Brief, supra note 28, at 20.
159. See Amicus Brief of Malla Pollack Supporting Petitioner at 7, Marketing
Displays, Inc. v. TrafFix Devices, Inc., 530 U.S. 1260 (2000) (No. 99 -1571) [hereinafter Amicus Brief of Pollack].
160. See id. at 6-7 (arguing that the Court in Kellogg held that good will was
included in the plaintiff’s investment in a patent, and when that expired, all of the
rights of protection did as well).
161. See id.
162. See id. at 9.
163. See id. at 10.
164. See id. at 11-12 (arguing that economics should not even be part of the
discussion in considering trade dress protection after expired patents, since the
right to copy stems from the Constitution).
165. See Petitioner’s Brief, supra note 28, at 25. The line of Supreme Court
D:\106756585.doc
348
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
contentions about the patent bargain involved a state unfair competition
claim. It seems fair to assume, however, that there is a difference between
state unfair competition laws and federal recognition of trade dress protection. Certainly there is an identical purpose between the two, as the Lanham Act provides “national protection of trademarks in order to secure to
the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers,”166 and state
unfair competition laws attempt to prevent the same on a local level. But
surely there is some weight in the fact that the Lanham Act is federally
mandated protection of trademarks and trade dress. In other words, although state law can, and often is preempted by federal statutes, federal
statutes are deemed “capable of coexistence, [and] it is the duty of the
courts . . . to regard each as effective.”167
Perhaps one of the most significant arguments that was set forth in the
Thomas & Betts Amicus Brief supporting the Respondent is that the Petitioner’s case analyses used to support this proposition were not dispositive
in determining that there should in fact be no trade dress protection for
expired patents.168 Many of the cases used by the Petitioner predate the
Lanham Act, so they are not precisely on point. 169 Those pre-Lanham Act
cases used by Petitioner to fashion its per se rule are also unpersuasive
since they “were all attempts to restrict the sale of utilitarian products
through rights arising under state law. And in each case, [the Supreme]
Court invalidated such claims based upon federal preemption under the
Supremacy clause.”170 The MDI case differs in that there are two compet-
cases discussed earlier in this section deal with federal patent laws preempting state
unfair competition laws, while the Lanham Act is another federal law enabling the
protection of trade dress. See supra notes 143-58 and accompanying text.
166. Petitioner’s Brief, supra note 28, at 25 (quoting Park ‘N Fly, Inc. v.
Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985)).
167. Respondent’s Brief, supra note 99, at 13 (quoting Morton v. Mancari,
417 U.S. 535, 551 (1974)). It has been argued that the balancing of the federal
statutes in this case is precisely what has forced the courts to create new tests to
determine whether trade dress protection should be granted. See Gill, supra note
50, at 1290. However, as will be addressed, if the courts use doctrines already in
place, such as the functionality doctrine, there is no need for them to create their
own tests. See infra notes 297-314 and accompanying text.
168. See Thomas & Betts Amicus Brief, supra note 154, at 12-15.
169. See, e.g., Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169 (1896); Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938); Scott Paper Co. v. Marcalus
Mfg. Co., 326 U.S. 249 (1945). The Lanham Act was passed in 1946. See 15
U.S.C. § 1051-1127 (1994).
170. Thomas & Betts Amicus Brief, supra note 154, at 12-13. The cases to
which Thomas & Betts are referring are Sears, Compco, and Bonito Boats, discussed supra notes 80-87 and accompanying text.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 349
ing federal rights involved. In fact, the Lanham Act was not interpreted to
protect the design of a product until after its enactment. 171 Thus, Thomas &
Betts argued the Petitioner’s primary support in its argument against trade
dress protection is at best conjecture as to what the Supreme Court would
have decided had there been a Lanham Act with which to contend. More
importantly, the conjecture is futile because the Court is bound to decipher
the conflict before it, so there is nothing to suggest which way the former
cases would have come out since there was no conflict of federal laws.172
By recognizing trade dress protection under section 43(a) of the Lanham
Act, it is true that Congress probably did not intend to extend the life of a
patent monopoly, but it is far-reaching to conclude that Congress intended
there should be no protection of product configuration at all, since the
Lanham Act says just the opposite. It is presumed that Congress was aware
of the extent of patent protection when they willingly extended the Lanham Act to protect trade dress in 1999.173 Further, unfair competition laws
and patent protection have almost always co-existed.174 Thus, it is questionable whether the Petitioner is accurate in the presumption that prior
Supreme Court cases involving state unfair competition laws are dispositive on the same issue if raised under the Lanham Act.
The Supreme Court cases used by the Petitioner raise questions in addition to the issue of state unfair competition versus federal law. Substantively, Singer175 and Kellogg176 seem to present some questionable precedent.177 Singer proposes that the whole of a patented article passes into the
public domain upon expiration of the patent, including the goodwill of the
maker, design of the product and configuration of the product, despite
clear palming-off by the competitor.178 Even with clear examples of palm-
171. See Thomas & Betts Amicus Brief, supra note 154, at 13. It was in the
1970s and 1980s that the appellate courts began to recognize product configuration
protection. See Trade Dress Developments, 624 PLI/Pat 599, 606 (2000).
172. See Thomas & Betts Amicus Brief, supra note 154, at 13-14.
173. See Petitioner’s Brief, supra note 28, at 26.
174. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 166
(1989) (patent protection and unfair competition laws have existed for almost 200
years).
175. 163 U.S. 169 (1896).
176. 305 U.S. 111 (1938).
177. See supra notes 149-158 for Petitioner’s interpretation of why these two
cases preclude trade dress protection for an expired utility patent.
178. See Singer 163 U.S. at 185. The defendant in the Singer case not only
manufactured machines identical to Singer’s, but also “numbered its machines with
serial numbers in the millions in the same manner as Singer, even though the d efendant had not manufactured millions of machines, and added a ‘dummy’ tension
screw in the same location as a working tension screw on the genuine Singer machines.” Opderbeck, supra note 79, at 332. It is difficult to imagine a case where
D:\106756585.doc
350
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
ing-off by the defendant, the court would not allow trade dress protection
to Singer because of expired utility patents. 179 Perhaps the Court’s interpretation presupposes that no more than one form of intellectual property protection can be afforded to a single product. After the amendment of the
Lanham Act, it seems presumptuous to conclude that any element of an
invention that has been revealed in a patent necessarily becomes part of the
public domain, even if it would unjustifiably confuse consumers. 180 As
consumer markets expand and products become more readily available for
purchase, such as on the Internet, the public’s right not to be confused
grows in importance, since consumers should be entitled to trust the quality of a product associated with a particular name. Hence, a right to copy a
patented product exactly as it exists, configuration included, seems increasingly irrational.
Because more than one federal law may apply and confer protection to
an article, the inquiry should be into more than merely the balance struck
by the patent bargain. The inquiry should include whether there is a balance between the differing intellectual property rights bestowed. A patented article, upon expiration of the patent, may have developed a particular
identity protectable as trade dress, and neglecting to recognize this protection may lead to a greater infringement of rights, namely stripping the patentee of trade dress rights to which they are entitled.
Even more, the Court itself in the Singer and Kellogg cases seems to
recognize this possibility. In Singer, while the Court held that the sewing
machine and the name “Singer” both became part of the public domain at
the expiration of the patents, the Court also required that the prevailing
defendant clearly indicate the manufacturing source on its own machines
so that consumers would not be confused. 181 If the Court wanted the defendant to indicate the source, this probably meant that the name “Singer”
had not become generic, but did have a secondary meaning to the interest-
consumers would be more confused as to source and quality than in a case such as
this, where the defendant intentionally “borrows” the goodwill of the former patent
holder.
179. See Singer, 163 U.S. at 185.
180. See Opderbeck, supra note 79, at 369. Further, if there was a per se
prohibition of trade dress rights for features of expired patents, “a patentee with . . .
narrow claims could disclose a variety of alternative designs which, though not
patentable, would then preclude competitors from using those designs to disti nguish their products. This would be equivalent to obtaining trademark rights ‘in
gross,’ without accompanying goodwill, something trademark law prohibits.” Id.
at 369-70.
181. See Thomas F. Cotter, Is This Conflict Really Necessary?: Resolving an
Ostensible Conflict Between Patent Law and Federal Trademark Law, 3 MARQ.
INTELL. PROP. L. REV. 25, 42-43 (1999).
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 351
ed public, so that trade dress protection would have been appropriate. 182
The Court weakened its decision in Kellogg in the same respect by requesting that Kellogg clearly indicate that it was the source of its version of
shredded wheat, despite the fact that the “name and shape [of the shredded
wheat] had entirely entered the public domain.” 183 Thus, it is questionable
whether these two Supreme Court cases can justify a per se rule that trade
dress protection is unavailable, since they seem to lend some credence to
the opposing perspective: that there is merit in preventing consumer confusion via trademark protection of the patented configuration.
ii. The Functionality Doctrine
There is yet another pressing argument that trade dress protection should
not be available in the wake of patent protection. It revolves around the
long-standing functionality doctrine.184 In TrafFix Devices, the Petitioner
questioned the meaning and application of “functionality” in the context of
trade dress protection for product configuration. The Petitioner argued
quite persuasively that:
[T]his Court itself has admonished that functional - or “useful” - product features are not entitled to trademark protection under Section 43(a). Moreover,
Congress recently amended Section 43(a) to provide that in an action for
trade dress infringement, the plaintiff “has the burden of proving that the
matter sought to be protected is not functional.” As the Committee Report
accompanying this amendment explains, “functional marks should be dealt
with under the patent law.” Indeed, the Report goes on to observe that the
amendment seeks to discourage owners of patents that are “about to expire”
from attempting to register their invention as “a trademark, which receives
protection as long as the owner uses it in commerce.” Cloaking the subject of
an expired utility patent – such as MDI’s dual-spring sign stand – with trade
dress protection would frustrate Congress’ express intent to reserve such protection for marks that are “not functional.”185
The functionality principle is precisely that which the Petitioner sought
182. See id.
183. Id. at 44.
Thus, on one hand the Court is suggesting that the name
“Shredded Wheat” became generic, and was therefore unable to receive trademark
protection, while on the other hand, it is imposing upon the party seeking to benefit
from the expired patent the responsibility of differentiating their product so co nsumers do not become confused as to the source. See id. at 43-44.
184. See supra notes 130-34 and accompanying text (discussing the functionality doctrine).
185. Petitioner’s Brief, supra note 28, at 30 (citations omitted).
D:\106756585.doc
352
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
to abolish.186 The alleged failure of this doctrine is shown in part by the
contradictory interpretations of the meaning of functionality by the circuit
courts:
Some lower courts (including the Sixth Circuit below) have construed the
concept of functionality so that it is possible for a product or its features to be
functional in a literal sense – and, thus, be useful and meet the requirements
of utility patent protection – but not in a legal sense due to factors extraneous
to the product itself, such as the competitive need to imitate it . . . . The public’s right to copy from expired utility patents should not be subordinated to
this judge-made and counter-intuitive concept of ‘functionality.’ 187
In other words, a defense of functionality in an infringement suit would
not work because the patent only protects useful features, but these useful
features are not considered functional under trademark law, so functionality does not prevent an overlap of the patent laws and the trademark laws. 188
This argument is consistent with the decision in Vornado Air Circulation
Systems.189 A finding by a court “that there is no ‘competitive need’ for the
public to enjoy the fruits of a particular discovery, at a particular point in
time, in a particular market” would unduly extend the monopoly granted
by a patent for an indeterminate amount of time, and is contrary to the very
purposes of the patent laws.190 Since a product feature will not qualify for
utility patent protection unless it is useful, and a product feature is functional if it is essential to the use of the article, it debatably follows that a
product feature covered by a utility patent is functional and cannot be covered by trade dress protection.
Indeed, for some interested amici, the functionality doctrine was the determining factor in resolving that trade dress protection should be unavail-
186. See id. at 30-33.
187. Id. at 32.
188. See Mohr, supra note 57, at 389. It is noted that:
There is a potential gap . . . between what is functional and solely the
province of patent law, and what is merely “useful” and thus protectable
under trademark law. Unlike the functionality doctrine, patent law r equires only that an invention have a utilitarian function . . . not that it be
the best or even one of the best . . . . The utilitarian nature of a feature in
an invention alone thus will not preclude trade dress protection.
Id. at 391.
189. Vornado Air Circulation Sys., Inc. v. Duracraft Corp., 58 F.3d 1498
(10th Cir. 1995) (holding that a component is functional if a competitor needs that
component to make an equivalent and competitive product).
190. Petitioner’s Brief, supra note 28, at 38.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 353
able for expired utility patents.191 The United States argued that “where an
expired utility patent shows that the features alleged as trade dress contribute to the operation of the claimed invention, those features must be considered ‘functional’ and thus ineligible for Lanham Act protection.” 192 This
assertion is founded in the purposes of patent rights and trademark protection, the latter of which “must be something other than, and separate from,
the merchandise to which it is applied.”193 Thus, functionality is the doctrine that differentiates trademark and patent law, since any other interpretation would allow monopoly rights to useful trade dress features for much
longer than the Constitutional grant intended to permit. 194
Part of the fear surrounding the functionality doctrine is probably due to
the fact-specific inquiries necessary to determine if a product is functional.195 This leaves an implication that the doctrine is not clearly enough defined so as to be effectively applied by all of the circuits in the same way.
The doctrine of functionality is in place so that a feature that is utilitarian
cannot be protected to the detriment of those who wish to compete with the
product, but cannot, due to the limited number of configurations available.196 The following four possible factors in determining functionality
have been identified:
(1) the existence of a utility patent disclosing the utilitarian advantages of the
design; (2) the existence of advertisements and promotions which tout the
functional and utilitarian advantages of the product; (3) the existence of other
alternative designs; and (4) whether the design results from a . . . superior
method of manufacturing the article. 197
It seems most logical that courts apply this doctrine, using the existence
of a prior utility patent as one factor, rather than making it a determinative
inquiry that trade dress protection should not be allowed. The fact that part
of an invention is revealed in a patent and is therefore useful does not
191. See Amicus Brief of the United States Supporting Petitioner at 7,
TrafFix Devices, Inc. (No. 99-1571) [hereinafter Amicus Brief of the U.S.]. But
see Amicus Brief of Pollack, supra note 159, at 8-9 (“[T]he trademark doctrine of
‘functionality’ is irrelevant to material which was protected by a patent; the patent
bargain is an independent, constitutionally mandated limit on former patent hol ders’ rights to exclude.”).
192. Amicus Brief of the U.S., supra note 191, at 7.
193. Id. at 9 (quoting In re Morton-Norwich Prods., 671 F.2d 1332, 1336
(C.C.P.A. 1982)).
194. See id. at 10-13.
195. See Falk, supra note 3, at 834 n.67.
196. See, e.g., Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).
197. Falk, supra note 3, at 834-35.
D:\106756585.doc
354
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
mean that this aspect has not come to be identified with a particular source.
This seems acutely apparent where trade dress protection is sought for part
of an invention, not the whole patented item. 198 In fact, the functionality
doctrine may even be utilized to minimize the conflict between the Patent
Act and Lanham Act.199 An argument to do away with the functionality
doctrine and replace it with a per se prohibition neglects to consider that it
would be just as difficult for the court to determine whether a product configuration is disclosed in a utility patent under a per se prohibition as it is
to determine if that configuration is functional. 200 These considerations,
opposed by the Petitioner, were embraced by the Respondent, Marketing
Displays, in its brief advocating for trade dress protection. 201
B. Respondent Marketing Display’s Position
Despite Petitioner’s seemingly convincing brief opposing the recognition of trade dress protection in light of expired utility patents, the Respondent was left with a strong argument in favor of such protection, and
this argument was supported by multiple amici briefs presented to the
Court.202 In essence, the Respondent saw no conflict between unfair competition laws and the federal patent laws. 203 Each of these intellectual
property protections stems from different policy purposes and protects
different features of a product, and, therefore, the two are not mutually
exclusive.204 But how can this be, given TrafFix’s argument identifying the
ostensible overlap between patent protection and trade dress protection?
Each of the arguments set forth by the Petitioner was, predictably, opposed by the Respondent in its brief. Thus, what follows will be an analy-
198. See Marketing Displays, Inc. v. TrafFix Devices, Inc., 532 U.S. 23
(2001).
199. See Falk, supra note 3, at 838-39 (arguing that the Tenth Circuit in Vornado erred in creating the “significant inventive component” test since they could
have used the same evidence that made the fan grill a significant component to find
it functional instead, thus vitiating the need to address the conflict between patent
law and the Lanham Act).
200. See, e.g., Todd R. Geremia, Comment, Protecting the Right to Copy:
Trade Dress Claims for Configurations in Expired Utility Patents, 92 NW. U. L.
REV. 779, 815 (1998) (arguing that a per se rule is feasible because courts can
compare the specifications of the utility patents to determine whether configurations are covered by the patents).
201. See infra notes 202-269 and accompanying text.
202. See, e.g., Amicus Brief of Thomas & Betts, supra note 154; Brief of
Amicus Curiae The American Intellectual Property Law Association in Support of
Respondent, TrafFix Devices, Inc., (No. 99-1571) [hereinafter Amicus Brief of
AIPLA].
203. See Respondent’s Brief, supra note 99, at 1.
204. See id. at 10.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 355
sis of the counter-arguments to the patent bargain theory and the doctrine
of functionality.205 Additionally, however, the Respondent and its amici
asserted that there is no true right to copy, that the remedies differ immensely for patent and trademark infringement, and that there are practical
reasons why a per se prohibition should not be in place. Each of these ideas will be discussed forthwith.
i. Balancing Two Federal Rights: The Patent Act and the Lanham
Act
1. The Patent Bargain Revisited
The Respondent argued that “all of the various intellectual property
rights, including patents, copyrights, trademarks, trade dress and trade secrets, can exist concurrently in the same product without trespassing on
each other.”206 Both trademark and patent protection are supplied by federal law, authorized by the Constitution. 207 Because trademark and patent
laws are enacted and authorized constitutionally, absent Congressional
intent to the contrary, both can co-exist and one cannot preempt the other.208
The Respondent and its amici concluded that the Lanham Act and the
Patent Act are complementary, and to find otherwise would undermine the
purposes of the acts themselves.209 Not only can trademark and patent
rights exist simultaneously by way of federal law, but they each embody
such differing purposes that there seems to be no conflict in upholding
them separately.210 The policies underlying the Lanham Act “[help] to
205. See supra notes 143-201 and accompanying text (delineating Petitioner’s
discussion of the patent bargain and the functionality doctrine).
206. Respondent’s Brief, supra note 99, at 11.
207. See id. at 13. See also 15 U.S.C. §§ 1051-58 (authorizing unfair competition and trademark protection); U.S. CONST., art. I, § 8, cl. 3 (Commerce Clause
granting authority to Congress to pass federal legislation codifying trademark law);
and 35 U.S.C. §§ 1-376 (the patent laws).
208. See Respondent’s Brief, supra note 99, at 13. See also Morton v.
Mancari, 417 U.S. 535, 551 (1974) (courts must find both trademark and patent
laws effective unless there is a differing congressional intent); Thomas & Betts
Corp. v. Panduit Corp., 138 F.3d 277, 285 (7th Cir. 1998) (“federal trademark protection cannot be preempted by patent law.”). See also Davis, supra note 51, at
641 (stating that Congress is free to create protections outside of the Intellectual
Property Clause, provided “efforts to evade the Clause’s limits . . . create qualitatively different protection.”)
209. See Respondent’s Brief, supra note 99, at 16-28.
210. See supra notes 45-78 and accompanying text (discussing the public
policy purposes behind trademark protection as opposed to patent protection).
D:\106756585.doc
356
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
stimulate competition by providing consumers with a means to readily
identify the sources of goods and services in the marketplace.” 211 Trademark and trade dress protect the owner while encouraging the public to
make improvements on the product protected by the mark. 212 On the other
hand, patent protection provides incentive to the public to invent by allowing inventors a limited monopoly in return for which the public will receive full disclosure of the new invention. 213
This discussion leads to an important distinction made by the Respondent with respect to the truly unique rights provided by trademark and patent protection. A patent grants an exclusionary right; it does not “grant its
owner the right to make or market a product.” 214 What is allowed is the
right for the patentee, for a limited time, to make, use or sell the invention
himself, excluding others from copying his invention. Contrarily, trade
dress protection is only permitted if the product has acquired such a distinctive identity in the marketplace that its source should be protected.215
Thus, trade dress does not protect the invention itself, only the invention
insofar as it has come to be recognized. 216 The Respondent did not deny
that there exists a patent bargain that should be respected. Rather, the argument was that the rights differ so drastically as between patents and
trade dress that the bargain struck between the inventor and the government when a patent is granted is a non-issue in a trade dress case.
The Respondent did not stand alone in its belief that the patent bargain
will not be disrupted by trade dress protection. The amici were duly concerned with the way that the Petitioner interpreted patent and trademark
laws. The Thomas & Betts Corporation stressed that, “a patentee does not
receive through the patent any right to practice an invention, let alone an
exclusive right . . . . [T]he only right received through a patent is the negative right to exclude others from making, using, and selling the invention
211. Respondent’s Brief, supra note 99, at 14.
212. See id. at 13-14.
213. See id. at 15.
214. Id. at 16. Further,
[a] patent does not confer on its owner any positive property rights such as
the right to make, to use, or to sell the patented invention. Instead, the patent
owner is granted the right to exclude others from making, using, or selling
the patented invention without the patent owner’s permission for the duration
of the patent.
Gill, supra note 50, at 1275.
215. See Respondent’s Brief, supra note 99, at 17-18.
216. See Lanham Act § 43(a), 15 U.S.C. § 1125(a) (Supp. V 1994).
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 357
defined by the patent’s claims.” 217 Further, Thomas & Betts argued:
Since a patent never gives its owner the right to practice the invention during
the patent term, this nonexistent right cannot ‘enure’ to the public upon exp iration. All that occurs when a patent expires is that the patent itself ceases to
be an impediment to the public’s practice of the invention – that is, to the extent the public would have the right to practice the invention in the absence
of the patent, the expiration of the patent removes that obstacle. 218
In support of this argument, Thomas & Betts offered the Patent Act of
1952, which clarified that a patent excludes others from using an invention; it does not grant others the right to use the invention. 219 The patentee
herself may be prevented from use of the patent if there are later patents
that have not expired and would prevent use, or she may be prevented from
using the patent due to other laws that will not allow use of the invention.220 Thus, the public does not actually have a “right” to practice a patented invention upon expiration of the patent, and it would be an erroneous interpretation of the patent laws to say otherwise.
2. Is There a Right to Copy?
The former argument is inextricably entwined with the argument that the
right to copy a patented product on the expiration of the patent is not an
absolute right, but a right implied by the time limitation placed on patent
protection.221 “The right to copy the subject matter of an expired utility
patent has always yielded to other equally compelling policies, such as the
unfair competition laws or state police power interests.” 222 The Respondent
was critical of TrafFix’s attempt to interpret some Supreme Court cases so
narrowly that they seem to support preempting trade dress protection, since
217. Amicus Brief of Thomas & Betts, supra note 154, at 8. Note that Thomas & Betts was involved in similar litigation involving a patent for cable ties, and
upon expiration of the patent, Thomas & Betts successfully sought trade dress pr otection in 1994 before the Seventh Circuit Court of Appeals. See Thomas & Betts
Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir. 1998).
218. Amicus Brief of Thomas & Betts, supra note 154, at 8.
219. See 35 U.S.C. § 154 (1994).
220. See Amicus Brief of Thomas & Betts, supra note 154, at 10. (using, as
an example, Eli Lily & Co. v. Medtronic Inc., 496 U.S. 661 (1990), where the
owner of a patent on a drug still could not promote the use of that drug because
there was no FDA approval).
221. See Respondent’s Brief, supra note 99, at 26-27.
222. Id. at 27.
D:\106756585.doc
358
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
none of them explicitly recognizes a right to copy.223 This weighed heavily
in MDI’s favor: federal trademark protection would supersede any right to
copy if there is no explicit right to copy in the first place.
But there is clear Supreme Court precedent, pre-dating the Lanham Act,
that recognizes a right to copy the material in expired patents. 224 So, is
there really a right to copy? 225 It would be inaccurate to deny a right to
copy at all; perhaps the issue should be the extent of the recognized right.
It seems particularly contrary to the Intellectual Property Clause and the
purpose of granting patents to conclude that an item is able to be copied
as-is at the close of the patent period.226 Perhaps a more plausible interpretation of the “right to copy” is that the idea passes to the public so that
others may improve upon the invention, create an individual version of the
invention, even develop a more identifiable version for consumers. However, allowing the copying of an invention exactly as it exists simply because that invention has passed into the public domain does not seem to be
what was envisioned by the Intellectual Property Clause. 227 A right to copy
is really a limited right for the public to copy what genuinely passes to the
public domain, not any feature or item that is protected by other laws. 228
3. Secondary Meaning
223. See id. at 28-29.
224. See supra notes 149-83 and accompanying text discussing the Singer
and Kellogg cases thoroughly. Another Supreme Court case is often cited as re cognizing the right to copy. See Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S.
249, 250 (1945) (holding that a patent assignor has a complete defense to an action
for infringement where the alleged infringing device is that of an expired patent).
Significantly, the Court discusses copying in the TrafFix decision. See TrafFix
Devices, Inc. v. Marketing Displays, Inc., 121 S.Ct. 1255, 1260 (2001) (stating “. .
. in many instances there is no prohibition against copying goods and products”).
225. See In re Mogen David Wine Corp., 328 F.2d 925 (C.C.P.A. 1964)
(holding there is no absolute right to copy subject matter covered in an expired
patent); Leatherman Tool Group, Inc. v. Cooper Indust., 131 F.3d 1011 (Fed. Cir.
1997) (holding there is no affirmative right to copy). See also Ethan Andelman,
Thomas & Betts Corp. v. Panduit Corp., 14 B ERKELEY TECH. L.J. 229, 233 (1999)
(discussing that there is no right to copy even though it may appear that the S upreme Court pronounced otherwise).
226. See Singer, 163 U.S. at 169 (1896).
227. See Andelman, supra note 225, at 238-41 (arguing that “an absolute
right to copy exists only for items fully in the public domain, i.e., not protected by
any body of intellectual property law”). Thus, a patented article may pass into the
public domain as far as patent law is concerned, but there are other areas of law
that may still prevent outright copying. See id. at 240.
228. See id.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 359
The American Intellectual Property Law Association (AIPLA) filed as
amicus and took another approach in its belief that the patent laws and the
Lanham Act are complementary.229 AIPLA asserted that a safeguard already in place is the necessity of secondary meaning in acquiring trade
dress protection.230 In other words, a trade dress can only be protectable if
it is source identifying, not simply a useful feature. 231 The argument is that
a per se rule should not apply because some manufacturers go to great
lengths to develop secondary meaning, even during the term of their patents, and if they are automatically precluded from trade dress protection at
the end of this term, they may be losing much of the goodwill they have
made concerted efforts to develop.232 With this additional precaution in
practice, there is arguably little need for concern about an overlap of the
Lanham Act and the patent laws. AIPLA removes the question of trade
dress protection from conflict with the patent bargain by magnifying the
differences between these two rights.
AIPLA grasps the heart of the policy for allowing both trade dress and
patent protection for a single product. 233 With secondary meaning now
essential to any trade dress protection recognition, it is the party seeking
this protection that will have to show that it is the source recognized by
consumers of the product.234 The conflict between patent rights and trademark rights is thereby reduced. The right that will extend beyond the expiration of any applicable patent will not be the exclusionary right that initially belonged to the patentee, but the producer’s right to continue to profit from her invention by reducing consumer confusion in the applicable
market. In other words, the product configuration that produces evidence
of secondary meaning is worthy of trade dress protection, just as any other
product - even one without a prior patent - has had to produce secondary
meaning.235 Thus, there is no bias against the patentee simply for having
229. See Amicus Brief of AIPLA, supra note 202.
230. See Amicus Brief of AIPLA, supra note 202, at 17. Secondary meaning
was not always necessary for every assertion of trade dress protection. But the
Supreme Court changed this recently in Wal-Mart. See infra notes 273-309 and
accompanying text.
231. See Amicus Brief of AIPLA, supra note 202, at 17.
232. See id. at 18-20.
233. See supra notes 229-32 and accompanying text.
234. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000).
235. Some examples of registered trade dress prove illustrative.
LIFESAVER candies with a center hole, the LEVI tag on jeans, and th e three
stripes on ADIDAS products are all registered trade dress. See MCCARTHY, supra
note 54, § 8:7. If each of these configurations were to be registered today, regi stration would require that secondary meaning has developed. But it is not difficult
to see that these configurations clearly indicate source, and therefore, secondary
D:\106756585.doc
360
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
received a patent, and there is no deprivation to the public, who are still
free to develop a competing product so long as they distinguish it sufficiently.236
The Respondent and its amici set forth the inherent differences between
patent and trade dress protection succinctly. They argued that the patent
bargain was not the correct inquiry in these circumstances. The focus
should be on the presence of secondary meaning and the balancing of the
differing policies underlying patent and trademark law. The Respondent
then turned to the functionality doctrine to continue its argument that trade
dress protection should not be prohibited for patent holders.
ii. The Functionality Doctrine
Of course, the Respondent addressed the conflict that exists when trade
dress appears to protect a functional feature. Respondent argued for a
functionality test that has been supported by a number of the Circuit
Courts of Appeals.237 Essentially, a feature would be functional if “constraints limit the available alternatives to the extent that others need the
same trade dress in order to fairly compete.” 238 Thus, a trade dress is nonfunctional if “the number of alternatives is sufficient that appropriation of
one poses no great threat to competition.” 239 In other words, functionality
of a trade dress is defined according to the alternative configurations that
are available to competitors.240 With such an approach, a functionality inquiry may consider the existence of a patent, but its existence would only
be one factor in determining whether the feature or product configuration
is in fact functional, or whether it has many alternatives so that competi-
meaning would be fairly easily developed. If there were former patents on these
objects, secondary meaning could still have developed during the course of the
patent protection, and the configuration should thus receive the benefit of that protection.
236. But see Amicus Brief of Pollack, supra note 159, at 10 (arguing that the
patentee is not disadvantaged for having received a patent even if she is denied
trade dress protection).
237. See, e.g., Fun-Damental Too Ltd. v. Gemmy Indus. Corp., 111 F.3d 993,
1002 (2d Cir. 1997); Intsy*Bit, Inc. v. Poly-Tech Industries, 95 F.3d 663, 673 (8th
Cir. 1996); Tools USA and Equip. Co. v. Champ Frame Straightening Equip., Inc.,
87 F.3d 654, 657 (4th Cir. 1996). It seems that this test originated from the S upreme Court itself, according to the Respondent’s interpretation. See Qualitex Co.
v. Jacobson Products Co., 514 U.S. 159, 165-66 (1995).
238. Respondent’s Brief, supra note 99, at 20.
239. Id. Evidence of the availability of other alternatives is generally only
one factor used in determining functionality, but it seems to be the one factor upon
which the courts place most emphasis. See Mohr, supra note 57, at 388.
240. See Respondent’s Brief, supra note 99, at 21.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 361
tion is not stifled.241 If this is the case, MDI should not be precluded from
trade dress protection unless their dual-spring design is functional in that
competitors would be forced to use alternatives that lack the functional and
economic advantages of the design.242
It is noted that the functionality discussion is buttressed by the Lanham
Act itself, as amended in 1999.243 Congress has acknowledged that trade
dress protection is acceptable for nonfunctional product features even if a
patent did exist on that product.244 MDI, therefore, wanted to stress that
they have trade dress protection for the overall nonfunctional aspects of the
traffic sign stands, not the functional features that were previously covered
by patent protection.245
The AIPLA adamantly opposed the adoption of a per se rule as pursued
by the Petitioner, TrafFix, because of the existence of the functionality
doctrine.246 At the forefront, AIPLA emphasized that the rights protected
by a patent were not the same as those protected by trademark law under
the Lanham Act. The Petitioner, therefore, was incorrect in its desire to
impose a per se rule, especially because the Tenth Circuit case upon which
Petitioner relied was incorrectly decided.247 The complicated test set forth
by the Tenth Circuit in its interpretation of earlier cases would lead to a
lack of uniformity where there is already a safeguard in place: the Lanham
241. See id. at 21-22.
242. See Amicus Brief of AIPLA, supra note 202, at 17:
[I]f courts properly apply the functionality doctrine, a manufacturer ca nnot use trade dress litigation to preclude competitors from copyin g a
configuration that is necessary in order to practice a useful invention no
longer covered by a patent. If a product’s configuration meets the rigo rous criteria for trade dress protection . . . it should not be unenforceable
merely because the manufacturer previously obtained a patent on an invention its product embodies.
243. See 15 U.S.C. § 1125(a)(3) (Supp. V 1994) (trade dress rights available
for nonfunctional features of a product configuration).
244. See Respondent’s Brief, supra note 99, at 27. The House Report on the
1999 amendment states, “the owner of a patent that is about to expire may try to
register it as a trademark, which receives protection as long as the owner uses it in
commerce.” H.R. Rep. No. 250 (106th Cong., 1st Session 1999). It further states,
however, that “functional marks should be dealt with under the patent law.” Id.
Thus, the distinction still comes down to functionality.
245. See Respondent’s Brief, supra note 99, at 27.
246. See Amicus Brief of AIPLA, supra note 202, at 10.
247. See id. at 10-12 (stating that “the Tenth Circuit created a new test to be
applied when a defendant raises an expired patent as a defense to trade dress i nfringement. In contrast to the well-developed functionality test . . . the test applied
in [the Tenth Circuit case] requires courts to construe patent claims to decide
whether an element is a ‘significant inventive aspect.’”).
D:\106756585.doc
362
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
Act requires nonfunctionality for trade dress protection.248 Further, “if
courts properly apply the functionality doctrine, a manufacturer cannot use
trade dress litigation to preclude competitors from copying a configuration
that is necessary in order to practice a useful invention no longer covered
by a patent.”249
It is questionable whether application of the functionality doctrine in a
proper way will be enough of a safeguard to prevent extending a patent
monopoly. There is no reason why the functionality doctrine cannot be a
useful reality. First and foremost, specifications that are necessary for patent applications often include many features that are not functional with
respect to the patent, but reveal one mode of practicing the patent. 250 This
makes it particularly burdensome to the patentee to have a per se rule prohibiting later trade dress protection, since the patentee will want to reveal
as little as possible in her application so that she may later assert trade
dress interests. If the patentee reveals as little of her invention as possible,
there is a possible adverse effect on the public, since the public will not
benefit from a more complete disclosure. 251 Moreover, even if a feature is
disclosed that later comes to be a source-identifier, the mere fact that it has
been disclosed in a patent is not a good indicator that it is essential, or utilitarian, to the whole invention.252 Essentially, because the intellectual
property rights sought are so fundamentally different, whether trade dress
rights are bestowed should not depend on a patent, but should depend on a
fresh inspection of the requirements for acquiring trade dress. 253 Nonfunctionality is precisely one of these requirements. It should be a primary
inquiry before granting trade dress rights, but whether there is a patent
should be nothing more than evidence in the functionality inquiry. 254
iii. Different Remedies, Different Rights
Among all of the other distinct differences between patent protection
248. See Amicus Brief of AIPLA, supra note 202, at 12-13.
249. See id. at 17.
250. See Andelman, supra note 225, at 242-43 (illustrating that the cable tie
at issue in the Thomas & Betts litigation happened to disclose an oval head in the
patent, but the head could have assumed a different shape, since there is nothing to
indicate that this shape was chosen for utilitarian reasons).
251. This is not necessarily true, since the patent laws require a complete
disclosure of the best mode of practicing the invention. See 35 U.S.C. § 112
(1988).
252. See Andelman, supra note 225, at 243.
253. See id. at 241-43.
254. This, in fact, seems to be the direction the Supreme Court goes in its
analysis of this case. See TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S.
Ct. 1255 (2001).
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 363
and trademark protection, the Respondent included a brief analysis of the
different remedies that are available in the case of infringement of one or
the other.255 It is argued that trade dress protection cannot be the equivalent
of a perpetual patent in light of the remedies available. In the infringement
of a patent, complete injunctive relief is the normal remedy, while the infringement of a trade dress may lead to a number of remedies that would
still allow the infringer to use the trade dress to some extent. 256 In fashioning a remedy, “courts have required the use of disclaimers, house-marks or
trade names, changes in product appearance, or corrective advertising to
curtail the likelihood of confusion.”257 Therefore, a court may simply require an infringer of a trade dress to alter the trade dress somewhat, but
allow continued use in that altered state. The public benefits because there
will be no product confusion, and, in this case, TrafFix would be able to
compete in the relevant market by making some changes to its product so
that it did not infringe upon MDI’s trade dress rights. 258 Since remedies are
the thrust of any infringement case, the fact that complete injunctive relief
is standard in a patent case and not in trade dress cases is another indication that the trade dress protection is not simply an extension of patent
protection as argued by the Petitioner.
iv. Practical Effects of a Per Se Prohibition
Finally, Respondent attempted to undercut the Petitioner’s argument by
addressing a practical effect of precluding trade dress protection for all
expired utility patents.259 Essentially, the concern is that a per se rule mandating that all expired utility patents be deemed functional would “upset
the harmonious balance struck between the patent laws and unfair competi-
255. See Respondent’s Brief, supra note 99, at 24.
256. See id.
257. Id. In order for infringement of a trade dress to be found, it must be
shown that the infringing product creates a likelihood of confusion by the purcha sing public. This is codified in 15 U.S.C. § 1125(a)(1)(A) (1994). In other words, if
two products simply appear to be very similar, that is not enough to find infringement. The Respondent, in its brief on page 22, uses as an example of the test for
likelihood of confusion a Sixth Circuit case that lists the following as factors for
likelihood of confusion: the strength of the plaintiff’s mark; the relatedness of the
goods; the similarity of the marks; evidence of actual confusion; marketing cha nnels used; likely degree of purchaser care; defendant’s intent in selecting the mark;
and the likelihood of expansion of the product line. See Frisch’s Restaurants, Inc.
v. Elby’s Big Boy, 670 F.2d 642, 648 (6th Cir. 1982). Other circuits use similar
tests in determining the likelihood of confusion, and it is because of this essential
test that the Respondent argues the marked differences in remedies available.
258. See Respondent’s Brief, supra note 99, at 25.
259. See Respondent’s Brief, supra note 99, at 37-38.
D:\106756585.doc
364
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
tion laws.”260 As examples, Respondent refers to the Coca-Cola® bottle,
the Volkswagen Beetle, and the Porsche 911 as famous shapes that were
protected by expired utility patents, and now have trade dress protection
that protects the public from confusion. 261 After all, “such a rule would
create the nonsensical position that trade dress protection could be available for a product that was never disclosed in a utility patent -- although it
met the statutory requirements for patentability -- but not for a product that
was actually disclosed in a utility patent.” 262
It seems that this would in turn affect the patent system since “[t]he
completeness of patent disclosures would be limited out of concern that the
disclosure may later prevent enforcement of any trade dress rights in the
same type of product which is the subject of the patent.” 263 Amici to the
Respondent addressed this issue as well.
Thomas & Betts asserted that there will be impractical effects if the position of the Petitioner is adopted. Specifically, there is strong opposition
to a per se rule whereby no trade dress rights would be recognized if there
was an expired utility patent that disclosed a product feature. 264 “In full
effect, to prevail in a trade dress claim under the Lanham Act, a claimant
would not only have to prove all existing elements of a claim, but also that
the trade dress feature is novel,” which is a patent requirement, not a trade
dress requirement.265 Because this per se rule would only apply to patent
holders, there would also be an adverse effect on the patent system, since
those seeking patent protection may be reluctant to do so and disclose in
rich detail what could be used against them in a later dispute over trade
dress.266
Extending this argument further leads to an interesting conclusion.
Thomas & Betts suggests that the Petitioner desires all materials in the
public domain be ineligible for protection under the Lanham Act. If this is
so, not only products entering the public domain via expired patents, but,
for example, those that became public through textbooks or foreign patents
would also be ineligible for trade dress protection.267 Otherwise, there
260. Id. at 38.
261. See id.
262. Id.
263. Respondent’s Brief, supra note 99, at 40.
264. See Amicus Brief of Thomas & Betts, supra note 154, at 16-18.
265. Id. at 16.
266. See id. at 17.
267. See id. at 18. “Suppose a product feature appeared in Popular Mechan-
ics, but the person who created the feature never obtained a patent. If one accepts
the arguments of Petitioner . . . why should there be a distinction between product
features which entered the public domain upon expiration of a patent and [product
features] which entered the public domain through other channels . . . ?” Id.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 365
would be discriminating effects against patent owners.
It is not clear that a per se rule prohibiting trade dress protection for expired utility patents would be any easier to apply, 268 although, it is argued,
an advantage is that it is preferable because there will be no fear of litigation for those who wish to copy a product at the expiration of a patent. 269
However, the ease of application is only one factor to consider in formulating such a profound rule. While there might be a reduction in litigation,
there would most certainly be reluctance in applying for patents at all in
certain circumstances where the inventor suspects that the product would
prove to be a success on the market. Thus, there are practical reasons for
avoiding a per se law prohibiting trade dress protection for expired patents.
V. RECENT SUPREME COURT ACTIVITY
Although the Supreme Court has not directly addressed the issue of the
competing policies of trade dress under the Lanham Act and the Patent Act
before the TrafFix case, Bonito Boats270 represents the first case in which
the Court recognized that patent rights “represent . . . a ‘competing’ federal
policy that must be considered when addressing a claim under Section
43(a) of the Lanham Act.”271 In order to better understand where the progression of the Court’s investigation of trade dress protection has ended
up, an analysis of the recent Wal-Mart case is helpful.272
A. The Supreme Court and Trade Dress in Wal-Mart v. Samara
Brothers
The Supreme Court granted certiorari to the Second Circuit to hear the
Wal-Mart case on the limited question of what must be shown to establish
that a product’s design is inherently distinctive for purposes of trade dress
protection.273 The case involved the design of children’s clothing into
268. See Todd R. Geremia, Protecting the Right to Copy: Trade Dress Claims
for Configurations in Expired Utility Patents, 92 NW. U. L. REV. 779, 815 (1998).
269. See, e.g., Ronald J. Horta, Without Secondary Meaning, Do Product
Design Trade Dress Protections Function as Infinite Patents?, 27 SUFFOLK U. L.
REV. 113 (1993).
270. 489 U.S. 141 (1989).
271. William D. Raman, Litigating Copyright, Trademark & Unfair Competition Cases for the Experienced Practitioner, 624 PLI/Pat 599, 607 (2000).
272. See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205
(2000).
273. Id. at 1341.
D:\106756585.doc
366
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
which Samara, the clothing designer, claimed to have integrated particular
designs so that the product would be identified with Samara. 274 As a test
for determining if the trade dress was inherently distinctive, the Second
Circuit asked “‘whether the design was likely to be understood as an indicator of the product’s source.’”275 Based on this test, the Second Circuit
affirmed the lower court’s decision that “Wal-Mart’s marketing of the
knockoffs was willful piracy with an intent to deceive consumers as to the
source of the product.”276 But the Supreme Court reversed, ultimately deciding that product design was not inherently distinctive. 277 The Court was
explicit in stating that protection of product design could be had only
where there is proof of secondary meaning.278 Essentially, the Court was
interested in whether the trade dress to be protected was so distinct that
any consumer would identify the maker with the design. 279 With this decision, the Court slowed the growth of trade dress protection that has occurred in the recent past.280 No longer is any trade dress product protectable without secondary meaning, even if the trade dress is arbitrary, fanciful
or suggestive, all of which are protectable without secondary meaning under trademark law. It suffices to say that the Court considers all trade dress
equivalent to descriptive trademarks.281
The Court was, therefore, forced to reconcile the Wal-Mart decision
with its earlier decision in Taco Cabana v. Two Pesos, where it was held
that inherently distinctive trade dress was protectable without secondary
meaning.282 Without particular difficulty, it was deciphered that the trade
274. See Samara Brothers, Inc. v. Wal-Mart Stores, Inc., 165 F.3d 120, 126
(2d Cir. 1998).
275. See id. at 125 (quoting Landscape Forms, Inc. v. Columbia Cascade Co.,
113 F.3d 373, 378 (2d Cir. 1997).
276. Supreme Court Refines Trade Dress Protection Guidelines: Wal-Mart
Stores v. Samara Bros., 6 No. 17 ANDREWS INTELL. PROP. LITIG . REP. 3, 3 (Apr. 5,
2000).
277. See Raman, supra note 271, at 610.
278. Wal-Mart Stores, Inc., 529 U.S. at 211. The requirement of secondary
meaning for all trade dress changes the prior rule that inherently distinctive trade
dress was protectable upon its use. See Siegrun D. Kane, Trade Dress After WalMart: “Rolling Back” Product Design Protection, 616 PLI/Pat 653, 657, 663
(2000). After Wal-Mart, “to achieve protection for trade dress consisting of an
unregistered product design, plaintiff must prove that consumers perceive the d esign as a source indicator.” Id. at 657.
279. See Amicus Brief of AIPLA, supra note 202 and accompanying text.
280. See Kane, supra note 278, at 663.
281. This is true at least in the case of unregistered trade dress. See WalMart Stores, Inc., 529 U.S. at 211.
282. See Taco Cabana Int’l., Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1120 n.8
(5th Cir. 1991), aff’d, 505 U.S. 763 (1992), reh’g denied, 120 L. Ed. 2d, 947, 113
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 367
dress in Taco Cabana was product packaging, which does not need secondary meaning to be protected.283 This has significance for future cases,
including TrafFix, since it will have to be determined whether the trade
dress sought to be protected is product packaging or product design, the
latter of which will not be protected without secondary meaning. 284
It is difficult to determine just how much the Wal-Mart decision influenced the Court’s decision in TrafFix, although it is clear that this recent
decision had some impact, and, as the following will indicate, the WalMart decision aided as a predictor of where the Court was willing to go
with trade dress. It appears that the Court was unwilling to extend protection of trade dress any further than its recent expansion, this in light of
greater concern for securing free competition. 285 Perhaps the Court’s focus
upon secondary meaning can shed some light on an alternative solution to
resolving conflict between patent rights and trade dress rights. An exploration of secondary meaning leads to a conclusion that it can -- and now
must -- be a phase in an inquiry of whether trade dress protection is appropriate. If secondary meaning can be sufficiently established, the functionality of the product configuration should be explored, according to a specific
test. If it is determined that the configuration is non-functional, trade dress
protection should be available, despite the possibility of the existence of a
prior patent. Each of the phases in this suggested analysis will now be set
forth.286
i. Secondary Meaning
There are two possible ways to interpret the Court’s decision in WalMart in an application to cases of overlap between trade dress and patent
law. One interpretation of the true suggestion in the Wal-Mart decision in
relation to the TrafFix case is that “a manufacturer or producer would not
be placed at a disadvantage by not having protection upon adoption under
S. Ct. 20 (1992).
283. See Wal-Mart Stores Inc., 529 U.S. at 210.
284. It may seem fairly easy to make a distinction between product packaging
and product design, but usually this is not the case. An example would be the purchase of a Coca-Cola® bottle. Some, and probably most consumers buy the bottle
for the cola inside. But there are collectors that are interested only in the config uration of the bottle itself. Would a Coca-Cola® bottle be protectable as product
design or product packaging? Would the consumer’s intent suddenly become an
issue? See Respondent’s Brief, supra note 99, at 38.
285. See Wal-Mart Stores, Inc., 529 U.S. at 214.
286. Note that perhaps the better order of inquiry is first, whether functionality is established, and next, whether there is a secondary meaning. This is su ggested by the Court in the TrafFix decision. See infra notes 310-16 and accompanying
text.
D:\106756585.doc
368
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
trade dress theories because it could initially secure protection by obtaining a design patent or copyright for the design.” 287 Such logic, carried to an
extreme suggests that “one may initially obtain a design patent or copyright on a product design and hold the world at bay under patent or copyright laws until secondary meaning is acquired, at which time it will hold
the world at bay under trade dress theories.” 288
According to this interpretation, the establishment of secondary meaning
sufficiently allows the patentee to protect her trade dress, just as any other
party would be free to do, despite the prior existence of the patent. Additionally, fear of a monopoly for an indefinite period of time is unfounded,
since under the patent laws, the patented invention will pass into the public
domain to the extent that no secondary meaning has been established.
Those configurations that have adequately developed as source-identifiers
are then tested for functionality, 289 as defined under trademark laws, and if
they are non-functional, the product is entitled to trade dress protection.
Contrarily, the reasoning in Wal-Mart can be used to illustrate that trade
dress protection should not be available for the expired utility patent. 290 It
is argued that
[t]rade dress in unregistered product configurations requires secondary meaning. “Secondary meaning” in the appearance of the article is the “good will
of the article.” This good will of the article belongs to the public at the end of
the patent term. The holder of an expired patent may not, therefore, claim an
exclusionary right to “secondary meaning” in any aspect of the article formerly marketed under the patent’s umbrella. Without secondary meaning, he
may not claim trade dress.291
It follows, therefore, that a per se rule should be in place excluding trade
dress protection for any product that has enjoyed patent protection, since
secondary meaning is nothing more than good will. 292
However, this interpretation is dependent upon an absolute right to copy
expired patents. The judicially-created right to copy is not absolute, but is
merely a right to copy that, in fact, does pass to the public under patent
laws, not something that remains protected under other laws. 293 With only
a limited right to copy, it follows that only a limited part of the invention
287. See Raman, supra note 271, at 611.
288. Id.
289. See infra notes 297-309 and accompanying text.
290. See Amicus Brief of Malla Pollack, supra note 159, at 6-7.
291. Id. (citations omitted).
292. See id.
293. See supra notes 221-28 and accompanying text.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 369
passes into the public domain. Those elements of the invention that have
secondary meaning are protected under the Lanham Act, so the goodwill
associated with those configurations is still entitled to protection. The
Lanham Act is precisely one of the “other” laws that is triggered at the
close of a patent term.294 It would be violated if the entire invention protected by patent automatically passed into the public domain.
Both of the aforementioned interpretations of the meaning of the WalMart decision revolve around the product obtaining secondary meaning.
The author proposes that if the inquiry remains with the acquisition of secondary meaning – or lack thereof – much of the conflict between trade
dress protection and patent protection will be resolved.
Secondary meaning has been criticized as difficult to determine because
its acquisition is generally a factual inquiry. 295 However, courts are adept
in determining secondary meaning, as they frequently employ a test of
secondary meaning in cases involving trademark. 296 Thus, it should remain
the first step in a determination of trade dress, followed by whether the
product is functional.
ii. The Functionality Doctrine as a Solution, Not a Problem
The Court in Wal-Mart imposed the requirement that all trade dress develop sufficient secondary meaning before protection is provided. 297 However, the Wal-Mart decision clearly did not in any way prohibit the conclusion that trade dress is available for expired patents.298 Prior to the TrafFix
decision, it was suggested that however the Court chose to resolve the
TrafFix issue, the functionality doctrine would not be the test that the
Court would adopt in its resolution, since the functionality doctrine lacks
precision.299 Just the opposite is true.300 The Court employed the function-
294. See 15 U.S.C. § 1125 (Supp. V 1994).
295. See, e.g., Todd R. Geremia, Protecting the Right to Copy: Trade Dress
Claims for Configurations in Expired Utility Patents, 92 NW. U. L. REV. 779, 786
n.44 (1998) (stating secondary meaning often requires considering “whether a
company encourages consumers to identify its product by its trade dress in its advertising, the length and manner of a company’s use of the trade dress, and whether
the public actually does identify the company’s product through its trade dress”).
296. See generally J. THOMAS MC C ARTHY, MCC ARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 14.01 (4th ed. 1996).
297. See Wal-Mart Stores Inc., 529 U.S. at 211.
298. See supra notes 273-96 and accompanying text.
299. See Perry J. Saidman, Kan TrafFix Kops Katch the Karavan Kopy Kats?
Or Beyond Functionality: Design Patents Are the Key to Unlocking the Trade
Dress/Patent Conundrum, 82 J. PAT. & TRADEMARK O FF. SOC’ Y 839, 856-57
(2000).
D:\106756585.doc
370
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
ality doctrine to hold that trade dress protection was not available in this
case.301
Indeed, it would have been troubling if the Court decided to do away
with the functionality doctrine. First, the functionality doctrine is a way to
even the playing field between those seeking trade dress rights who have
expired patents and those who do not, since both will have to prove nonfunctionality before they secure trade dress protection. 302 This does not
undercut the bargain theory of patents, since those features covered in the
patent that are functional still pass to the public domain. 303 Further, the
party seeking the trade dress protection is left with the burden of proving
non-functionality,304 a task that may be made more difficult if they once
owned a patent on the invention. A functionality test also allows the differences between patents and trademarks to continue to exist. In a practical
sense, the usefulness of an invention necessary to secure a patent305 really
does differ from the functional aspects precluded from trade dress protection.306 Utility as a prerequisite to issuance of a patent is to insure that the
invention is operable, or “functions for its intended purpose.” 307 This is to
say that the patented invention as a whole must be operable or it is unable
300. See TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 1255,
1259-60 (2001).
301. Id. at 1261.
302. See Hoffman, supra note 63, at 174.
303. See Malla Pollack, The Owned Public Domain: The Constitutional Right
Not to be Excluded – Or the Supreme Court Chose the Right Breakfast Cereal in
Kellogg v. National Biscuit Co., 22 HASTINGS COMM. & ENT. L.J. 265, 293-94
(2000) (arguing that holders of expired patents give no consideration in the patent
bargain “[i]f the consideration question is reduced to functionality”).
304. See Lanham Act § 43(a), 15 U.S.C. § 1125(a) (Supp. V 1994).
305. See 35 U.S.C. § 101 (1994) (stating “whoever invents or discovers any
new and useful . . . manufacture . . . or any new and useful improvement thereof,
may obtain a patent thereof, [subject to other requirements]”).
306. See Geremia, supra note 295, at 801-02 (stating “it is the nonreputationrelated, market-determined necessity of incorporating a product configuation, not
its actual utility [as necessary in a patent context], that determines [a product’s]
functionality”).
307. C HISUM ET AL., PRINCIPLES OF PATENT LAW 729 (1998). Not only is the
usefulness requirement for a patent dependent upon it being operable, but obtaining
a patent does not require the inventor to prove the superiority of the form of her
invention over other products. See Geremia, supra note 295, at 787-88 n.53. The
inventor need only show that hers is the best mode of the invention as she subjectively contemplates it to be. See 35 U.S.C. § 112 (1994). This is relevant since
there may be, and often are, better ways to embody an invention than the way the
patentee chose to do so. Since this is so, there is even more positive proof that
protecting the product configuration will not impede competition by monopolizing,
as others are free to use the invention and develop better methods or embodiments.
D:\106756585.doc
Printed On: 3/9/2016
2001] CONCURRENT PATENT AND TRADE DRESS PROTECTION 371
to be protected by patent. But it is possible for part of a patent to have developed meaning to the relative community that can now operate as trade
dress. So long as this element of the patent is not one that is so substantially a part of the invention that it is functional, it is feasible that there can be
later protection of the trade dress.308
Functionality in application may create substantial issues since it is primarily a factual question. However, courts are equipped to determine a
question of fact if they focus on “whether the feature’s availability to other
manufacturers gives consumers the benefit of a competitive market, or if
the item is incidental, merely distinguishes the brand, and other competitors can do without it.”309 Regardless of the fear over application of the
functionality doctrine, it endures, as the Supreme Court readily illustrated.
B. The Supreme Court Decision in Marketing Displays v. TrafFix
As discussed, the arguments in the TrafFix case occurred in November
2000, and the Supreme Court decision was passed down March 20,
2001.310 Its conclusion was that a former patent is strong evidence of functionality, and this being so, protection could not be provided to Marketing
Displays for its dual-spring sign design.311 Functionality is the premise on
which this decision turns.312 In fact, the Court states that “[f]unctionality
having been established, whether MDI’s dual-spring design has acquired
secondary meaning need not be considered.”313 This is more than ample
evidence that the Court is not only not going to do away with the functionality inquiry, but the functionality inquiry will become primary in determining whether trade dress is protectable in the wake of a patent, and sec-
308. There is some case law that supports this proposition. See, e.g., Zip
Dee, Inc. v. Dometic Corp., 931 F. Supp. 602 (N.D. Ill. 1996) (holding that trade
dress protection was available for a slatted awning cover that was disclosed in a
utility patent, but was not functional since it was a dependent element of another
claim, not an independent claim itself).
309. Robyn L. Phillips, Determining if a Trade Dress is Valid, 29 IDAHO L.
REV. 457, 477 (1992/1993).
310. See TrafFix Devices, Inc., 121 S. Ct. at 1255.
311. See id. at 1260. The Court focused particularly on the fact that in 1983,
MDI was the plaintiff in litigation related to the dual-spring design. In that case,
MDI argued that springs spaced apart in a competing design infringed the patent
despite the fact that their own patent had springs placed close together. MDI won
this argument. This basically precludes MDI from now arguing that the dual spring design was not covered as a functional feature in the patent. See id. at 126061. See also Sarkisian v. Winn-Proof Corp., 697 F.2d 1313 (9th Cir. 1983).
312. See TrafFix Devices, 121 S. Ct. at 1260-62.
313. Id. at 1262.
D:\106756585.doc
372
Printed On 3/9/2016:
NEW ENGLAND LAW REVIEW
[Vol. 36:1
ondary meaning will only be explored once it has been determined that the
product to be protected is non-functional.314
Despite the strength with which the Court employs the functionality
doctrine, it seems that it was particularly pertinent in this case, so that
Marketing Displays had little or no chance to meet its burden of proving
non-functionality.315 The Court does not extend its decision to hold that the
Intellectual Property Clause of the Constitution precludes trade dress protection for a product covered by an expired utility patent.316 In application,
however, there seems to be little chance that the holder of an expired patent will successfully meet her burden of proving that features are nonfunctional. Notwithstanding this steep burden of proof, it appears that trade
dress protection is indeed available for expired utility patents.
CONCLUSION
The Supreme Court’s decision in Marketing Displays, Inc. v. TrafFix
Devices, Inc., provides guidance in addressing the question of whether
trade dress protection should be available for a product configuration formerly the subject of a utility patent. This case was a proper vehicle to illustrate that trade dress protection should be a viable option for configurations, despite prior patents, since trade dress protection and patent protection are two separate and unique forms of intellectual property protection.
Existence of a patent should only be one element in a functionality test to
decipher whether the particular configuration in question is of a functional
nature. If the configuration is functional, trade dress protection should not
be afforded. Likewise, secondary meaning must also be established to
show that the configuration is properly identified with a source. If both of
these phases are satisfied, the owner of the product has proved that she has
a trade dress worthy of protection.
Alison Marcotte
314. See id.
315. See id.
316. See id. at 1263.