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The U.S. Supreme Court is not known for unanimous decisions — except when it comes to trade dress protection. Since 1992, the justices have been in complete agreement in three major trade dress cases. On Nov. 29, the Court will hear argument in a fourth dispute, TrafFix Devices Inc. v. Marketing Displays Inc., No. 99-1571. This time the question is whether federal trade dress protection can extend to a product configuration that had once been covered by a utility patent. MDI sells a traffic-sign stand popular with the highway construction industry. The dual-spring base, which helps the stand resist strong winds, had been covered by several patents, the last of which expired in 1989. TrafFix Devices sells a similar dual-spring traffic-sign stand. MDI claims that the TrafFix stand infringes on the trade dress of its own stand. TrafFix responds that MDI is improperly using a trade dress claim to revive its patent monopoly. If the three previous Supreme Court decisions are any indication, the justices will side with MDI — unanimously. But it’s also likely that the opinion will stiffen the requirements for stating a trade dress claim. THE RULE OF THREE The Court’s unanimous streak extends back to its 1992 decision in Two Pesos Inc. v. Taco Cabana Inc. There, the Court held that “inherently distinctive” trade dress does not require additional proof of secondary meaning in the marketplace. Secondary meaning had been necessary under the common law. Two Pesos appeared to be a broad invitation to claims of trade dress infringement. The invitation, however, was not as open as it seemed. In 1995, the Court issued the second unanimous opinion. Superficially, Qualitex Co. v. Jacobson Products Co. appeared to extend the same broad protections, but realistically the narrowing of requirements had begun. Qualitex involved trade dress protection for the color of a product. The Court resolved a split in the circuits by holding that color, without regard to other features, can be registered and protected as a trademark. The Court observed that shapes, sounds, and even fragrances have been candidates for trademark status and ruled that a product’s hue could be shielded from unfair competition under the Lanham Act. Yet the Court also suggested, without explicitly stating, that color is incapable of being inherently “distinctive.” Therefore, any trade dress claim based on color would need proof that the product had acquired secondary meaning. The third unanimous opinion was issued earlier this year in Wal-Mart Stores Inc. v. Samara Brothers Inc. The Court said that product design can be protected as an unregistered mark or symbol. But once again the justices limited which claims can be brought. The Wal-Mart Court held that product design cannot be protected as inherently distinctive. In other words, proof of secondary meaning is necessary. Thus as it did with color in Qualitex, the Court in Wal-Mart recognized another basis for a claim, but simultaneously restricted when such a claim can be made. PRETTY IN PATENTS Now the question in TrafFix Devices is whether the Court will extend trade dress protection to a product that had once been covered by a utility patent. The concern is that after the utility patent expires, the patent holder will turn to trade dress as a means of maintaining its monopoly. To prevent any such overlap, the general rule is that trade dress covers only nonfunctional features. Qualitex and Wal-Mart dealt with what were clearly nonfunctional features — color and design, respectively. But TrafFix Devices deals with a functional feature. MDI argues that because the configuration of its stand, including the appearance of the dual-spring base, is primarily nonfunctional, the fact that the dual-spring base is also functional should not preclude trade dress protection for the stand. There is a split in the circuits as to whether utility patent disclosure bars trade dress protection. Four U.S. Courts of Appeal — the Federal, 5th, and 7th circuits, and now the 6th in TrafFix Devices — have said no, while the 10th has said yes. The 10th Circuit found that a previously patented product’s configuration cannot be covered by trade dress once the patent expires. In Vornado Air Circulation Systems Inc. v. Duracraft Corp. (1995), the court relied on a per se rule disallowing trade dress protection in these circumstances. The argument for a per se rule rests on the policy of limiting a patent’s monopoly to increase competition. Conversely, the 6th Circuit in TrafFix Devices said that a product’s configuration may receive both patent protection for functional features and trade dress protection for nonfunctional features. The court concluded, “So long as it is possible to protect the appearance without protecting the design, a per se rule is not necessary.” In this case, the court said, it would not be difficult to conceive of a design that used the dual-spring mechanism without infringing MDI’s trade dress. Will the justices agree? The Supreme Court’s approach in Two Pesos, Qualitex, and Wal-Mart was to nominally recognize greater trade dress rights, while making pursuit of such rights difficult. The same result is likely in TrafFix Devices. The Court will probably side with the majority of circuits and hold that the fact of a patent on a product does not per se disallow trade dress protection. Nevertheless, the justices will likewise almost assuredly hold that such a product is protected only by a showing of secondary meaning in the market. Any other result would bring the three prior decisions into question and throw trade dress law back into the quagmire that predated the Court’s recent decisive stands.

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