Thank you for sharing!

Your article was successfully shared with the contacts you provided.
Intellectual property law has evolved over the years to provide differing levels of protection, each appropriate for differing forms of innovation. For example, a trademark can be used to protect a new product name or other indication of a product’s source. Likewise, a patent can be used to protect a novel and non-obvious article of manufacture, machine, composition or process. A trademark can be registered with the U.S. Patent and Trademark Office. The registration can be renewed every 10 years and provide perpetual protection for the trademark. And while a patent also is registered with the PTO, it expires 20 years after the filing of the inventor’s application. Sometimes a product’s packaging can act as a trademark. This is commonly referred to as trade dress, and the trade dress can also be registered. For example, Capri Sun fruit punch is sold in a unique foil pouch. The public now associates that foil pouch with its producer, Kraft. Indeed, Kraft has registered the trade dress and is the owner of U.S. Trademark Registration 1,418,517. However, the developer of the pouch also obtained U.S. Patent No. 3,380,646, which was issued on April 30, 1968. That patent expired on April 30, 1985, and its teachings entered the public domain. The question arises whether a company can maintain some level of protection in its trade dress despite the expiration of its underlying patent. The U.S. Supreme Court has addressed the effect of patent expiration on several occasions. Nabisco owned a patent for shredded wheat cereal, its method of manufacture and the machinery used to produce it. In Kellogg Co. v. National Biscuit Co. (1938), the court held that once Nabisco’s patent expired, competitors were free to copy its shape. National Biscuit (or Nabisco) failed to prove that the public associated the cereal’s pillow shape with Nabisco and thus view it as a trademark. As a result, Kellogg was allowed to continue to produce a similarly shaped shredded wheat cereal. REVISITING THE ISSUE The Supreme Court has revisited the interaction between trade dress and patent protection once again with its recent opinion in TrafFix Devices v. Marketing Displays (2001). The respondent, Marketing Displays Inc. (MDI), holds now-expired utility patents for a “dual-spring design” mechanism that keeps temporary road signs and other outdoor signs upright in adverse wind conditions. MDI claims that its sign stand was recognizable to buyers and users because the patented design was visible near the sign stand’s base. After the patents expired and petitioner TrafFix Devices Inc. began marketing sign stands with a dual-spring mechanism copied from MDI’s design, MDI brought suit under the Trademark Act of 1964 for trade dress infringement. Unlike Capri Sun, however, MDI does not appear to ever have registered its trade dress. To prevail on a trade dress infringement claim, a plaintiff must show that the trade dress has obtained secondary meaning, that the trade dress is primarily nonfunctional and that confusing similarity exists. Secondary meaning is a factual showing that the relevant consuming public has come to associate the trade dress with a specific source for the products, in this case MDI. The district court granted summary judgment in favor of TrafFix, holding that no reasonable trier of fact could determine that MDI had established secondary meaning in its alleged trade dress. Further, it found that the dual-spring element of the trade dress was purely functional. Thus, no trade dress ever could be found in that purely functional element. The 6th U.S. Circuit Court of Appeals reversed. It held that the district court had erred in ruling that MDI failed to show a genuine issue of material fact regarding whether it had secondary meaning in its alleged trade dress. The court then analyzed the functionality prong. It held that the district court had erred in focusing on the dual-spring mechanism. Instead, the 6th Circuit explained that TrafFix could have achieved the same functionality while either hiding the dual spring mechanism or developing a different design. It explained that the “exclusive use of a feature must put competitors in a significant nonreputation-related disadvantage before trade dress protection is denied on functionality grounds.” Thus, it found that MDI’s exclusive use of the dual-spring design did not put TrafFix in a significant nontrade dress-related disadvantage. The Supreme Court rejected this view. It explained that while a significant nonreputation-related disadvantage caused by exclusive use was sufficient to define functionality, it was not a necessary element of functionality. Instead, the Court found that functionality of the feature was strongly indicated by MDI’s two expired patents. It held that “an expired utility patent has vital significance in resolving a trade dress claim, for a utility patent is strong evidence that the features therein claimed are functional.” This strong evidence of functionality places a heavy burden on MDI to show that the feature is not functional, for instance by showing that it is merely an ornamental, incidental or arbitrary aspect of the device. Indeed, the Court could not overlook MDI’s own assertions in earlier patent infringement litigation when MDI asserted the important functionality of the dual-spring design in keeping a sign upright even in heavy winds. The Supreme Court failed to go to the extreme position of finding that trade dress simply expires upon the expiration of co-existent patents. However, it has helped define the standard by which patents will be viewed when determining whether trade dress is merely functional. David W. Carstens is a partner in Carstens, Yee & Cahoon, an intellectual property boutique in Dallas.

This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.

To view this content, please continue to their sites.

Not a Lexis Advance® Subscriber?
Subscribe Now

Not a Bloomberg Law Subscriber?
Subscribe Now

Why am I seeing this?

LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.

For questions call 1-877-256-2472 or contact us at [email protected]

Reprints & Licensing
Mentioned in a Law.com story?

License our industry-leading legal content to extend your thought leadership and build your brand.


ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2021 ALM Media Properties, LLC. All Rights Reserved.