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If attorneys are thinking of extending the 20-year protection over their clients’ utility patent claims through trade dress, a recent U.S. Supreme Court opinion may cause them to think again. In the March 20 decision in TrafFix Devices Inc. v. Marketing Displays Inc., [FOOTNOTE 1]the court announced a new heavy-burden presumption that pits more than 600 million functional features claimed in the U.S. patent database against the protection of features in existing trade dress property. Moreover, the opinion may have a significant impact on a client who is litigating product-configuration trademarks and, importantly, applying for product-configuration trademarks. Trademark law gives a cause of action to businesses for the unauthorized use of the distinctive features embodied in their products without requiring federal registration of this trade dress. In TrafFix, the court recognized the vital significance a prior patent has in resolving trade dress claims. [FOOTNOTE 2]In doing so, the court added to an existing statutory presumption [FOOTNOTE 3]by unanimously holding that a person who asserts trade dress protection for subject matter covered by an expired utility patent claim now has the heavy burden of proving that the matter sought to be protected is not functional. [FOOTNOTE 4]Under this new ruling, a feature recited in a utility patent claim is strong evidence that such feature is functional and thus not entitled to trade dress protection, unless the party seeking trade dress protection overcomes the heavy burden of proving nonfunctionality. [FOOTNOTE 5] From the early 1970s until 1989, the claimant in the case, Marketing Displays Inc. (MDI) of Farmington Hills, Mich., [FOOTNOTE 6]sold several millions of dollars per year of traffic warning-sign stands under the protection of the patent claims set out in two utility patents. These patent claims are directed to a dual-spring mechanism that is adapted to hold a traffic warning sign upright against gusts of wind. [FOOTNOTE 7] The patent claims covering MDI’s dual-spring design expired with the patents in 1989. Under patent law, the expiration of a patent grant releases the claimed subject matter into the public domain. Thus, as of 1989, MDI’s competitors had good reason to believe that they could use MDI’s dual-spring technology without MDI’s permission. As of 1989, however, MDI also had good reason to believe that its spring-mounted wind-resistant sign stands still were protected by federal law, even though the utility patents that protected the product had expired. Independent of the functional protection offered by federal patent law, federal trademark law provides protection over the distinctive appearance or dress of a product used in commercial trade. Assuming other requisites are met, if the distinctiveness works to identify the product with its manufacturer or source, a product that acquires this distinctiveness is a trade dress. [FOOTNOTE 8]MDI made many investments in the advertising and sale of its sign product since the early 1970s. Thus, MDI had reason to believe that the effects of its investments were sufficient to continue identifying the dual-spring design with a single manufacturer or seller, here MDI, beyond the 1989 expiration of the two patents. In the fall of 1994, the accused infringer in the case, TrafFix Devices Inc. of San Clemente, Calif., [FOOTNOTE 9]began selling a spring-mounted wind-resistant sign stand that looked like MDI’s product. MDI and TrafFix products looked alike because they were. In developing its sign stand, TrafFix sent one of MDI’s sign stands to Korea to be reverse engineered — in a word, copied. [FOOTNOTE 10] HISTORY OF THE CASE In July 1995, MDI sued TrafFix under the Trademark Act for trade dress infringement based on the copied dual-spring design. The district court in Detroit ruled against MDI, asserting that the dual-spring design was functional and thus not a trade dress. In 1999, the U.S. Circuit Court of Appeals for the 6th Circuit reversed, reasoning that MDI’s investments in its sign stand were sufficient to identify the functional features of the dual-spring design with a single manufacturer or seller, here MDI. The 6th Circuit also noted a split in the circuit courts. One line of cases held that the existence of a material, expired utility patent does not foreclose trade dress protection in a product’s dress. The other line adhered to a bright-line rule that foreclosed trade dress protection in view of a material, expired utility patent. [FOOTNOTE 11] Five years after MDI began its suit against TrafFix Devices, the U.S. Supreme Court granted certiorari in view of the circuit split to define better the boundary between federal utility patent law and trade dress law under the Trademark Act. The particular task placed before the Court was to determine the litigation effects that functional features recited in an apparatus claim of an expired patent had on a trade dress not registered on the principal trademark register. The choices presented to the Court were to adopt the bright-line rule or to adopt the position as to what trade dress law does not do. The Court seemed to look beyond this thinking to issue a rule consistent with intellectual property theory in view of a fundamental principle of tort law. This principle holds that a wronged party cannot recover twice from the same defendant for a single tortuous act. This is just as true in intellectual property causes of action as it is in other torts. [FOOTNOTE 12]Thus, consistent with this fundamental principle, trade dress law, patent law, copyright law or other intellectual property law cannot protect subject matter that is protected by another intellectual property law when an intellectual property holder may recover double the money compensation from the same infringer for a single tortuous act. Adhering to this fundamental remedy principle is particularly important in the intellectual property area, where a variety of federal laws work together to protect the intangible features of a single item. The squat, brightly decorated plastic bottles for Tide’s liquid laundry detergent may serve as an example. [FOOTNOTE 13] For this three-dimensional tangible item, there are at least six protections offered by federal law to different subject-matter features. A copyright may protect the bottle’s “original and creative” features, [FOOTNOTE 14]a utility patent may protect its “functional” features, [FOOTNOTE 15]and an ornamental-design patent may protect its “ornamental” features. [FOOTNOTE 16] If the ornamental features of Tide’s bottle are “distinctive,” the distinctive features may be protected three ways under trademark law. To the extent the distinctive features are registered on the principal register, they may be protected by a trademark. [FOOTNOTE 17]To the extent the distinctive features are not registered on the principal register, they may be protected by a trade dress. [FOOTNOTE 18]Moreover, to the extent the distinctive features cannot be registered on the principal register, they may be protected on the supplemental register by a configuration of goods. [FOOTNOTE 19] NO DOUBLE DIPPING The above statutory protections appear to overlap so as to allow double recovery, but courts have never allowed such double recovery. [FOOTNOTE 20]One way they prevent it is by ruling on the intellectual property protection boundaries offered by federal law. For example, the Supreme Court recently granted certiorari to define the boundaries of the Plant Variety Protection Act in view of the Patent Act in a case involving seed and seed-grown plant protection. [FOOTNOTE 21]The TrafFix Devicesopinion is along this same vein in that TrafFix Devicesconcerned defining the boundaries of trade dress protection in view of utility patent claims. In TrafFix Devices, the court asserted that if the subject matter of MDI’s dual-spring design was covered by an issued utility patent claim, there is a very strong presumption that the claimed subject matter is functional. [FOOTNOTE 22]Although not expressly stated by the court, to the extent that this very strong presumption worked in favor of MDI and its patent protection over the functional features of its dual-spring design, it logically should work against MDI’s assertion of trade dress protection over the designs’ similar ornamental features. This would prevent double recovery for the same subject matter. By increasing to a heavy burden the statutory burden of proving that the matter sought to be protected is not functional in cases of prior utility patents, the TrafFix Devicescourt acknowledged that not every feature in a patent claim is functional. Moreover, the court prevented MDI from recovering under a trade dress that which MDI could have recovered under the prior patents. Thus, the rule issued in the TrafFix Devicesopinion is consistent with intellectual property theory in view of the above fundamental principle of tort law. UNRESOLVED ISSUES The TrafFix Devicesopinion’s consistency with intellectual property theory offers an opportunity to explore some unanswered questions related to product-configuration trademark and trade dress issues. One question not answered is how TrafFix Devicesaffects the holding in the 2000 case of Wal-Mart Stores Inc. v. Samara Bros. Inc. [FOOTNOTE 23]Through Wal-Mart Stores, the court requires litigants to argue over whether a trade dress feature is part of the ornamental packaging placed about a commercial item (presumptively distinctive) [FOOTNOTE 24]or is part of the ornamentation of the commercial item itself (presumptively nondistinctive). [FOOTNOTE 25]One factor the court offered to resolve this issue is the predominant use of a product covered by the trade dress. An example provided by the court showed that a Coca-Cola bottle is packaging for beverage drinkers and product design for bottle collectors because a beverage drinker may consume the paid-for contents and a bottle collector may place the bottle among a worldwide collection of bottles. [FOOTNOTE 26]Proving which use predominates generally would require survey evidence from both litigants. Moreover, once the predominant use issue is resolved, the losing side may need to produce more survey evidence to rebut the resulting presumption on distinctiveness. [FOOTNOTE 27] Under TrafFix Devices, an accused trade dress infringer or product configuration infringer may avoid or delay applying the requirement set out in the Wal-Mart Storesopinion. By identifying the disputed feature as one of the approximately 600 million features [FOOTNOTE 28]claimed in the more than 6 million U.S. patents, an accused infringer may place the heavy burden on the trade dress producer to show that the feature is ornamental rather than functional. Another question is whether the TrafFix Devicesdecision applies at the trademark application stage. The TrafFix Devicescourt was faced with deciding the litigation effects that functional features recited in an apparatus claim of a patent had on features in trade dress. However, disputes over whether a trademark feature is functional occur at the trademark application stage as well. In an application for trademark registration of a product configuration such as Tide’s plastic bottle, trademark procedures require a trademark examiner to determine whether the features are functional or ornamental. [FOOTNOTE 29]To make this determination, an examiner may require that a trademark applicant provide copies of patent applications and other patent information. [FOOTNOTE 30]The trademark procedures also state that even if an examiner does not make such a request, an applicant “should indicate whether the proposed mark is the subject of either a design or utility patent. If so, the applicant should provide all information concerning the patent.” [FOOTNOTE 31] In TrafFix Devices, the court assigned a raised level of trademark importance to utility patents: “[A] prior patent, we conclude, has vital significance in resolving the trade dress claim.” [FOOTNOTE 32]The court nevertheless left unanswered the question of whether the heavy burden presumption of TrafFix Deviceswill apply at the trademark application stage. In view of the above trademark procedures and the level of importance prior patents now have in resolving functional vs. ornamental issues, it seems likely that TrafFix Deviceswill apply at the trademark application stage. Moreover, given the approximately 600 million features claimed in the U.S. patent database from which an examiner may pick and choose, TrafFix Devicesmay have a significant impact on clients applying for product configuration trademarks. The TrafFix Devicesopinion set out two definitions a court may use to determine whether a feature recited in a utility patent claim is functional. The court left open another issue by not providing instructions as to whether case law on the patent issues of “means plus function” [FOOTNOTE 33]and “function-way-results” [FOOTNOTE 34]may be used to make this determination as well. Functional features are recited in claims set out in published U.S. patent applications. Moreover, functional features are recited in claims set out in foreign patents and published foreign patent applications. The court left unanswered the questions of whether functional features in foreign patent documents may be used as supporting evidence that gives rise to the heavy burden presumption in a claim of trade dress protection. In TrafFix Devices, the court stated that “a utility patent is strong evidence that the features claimed therein are functional” [FOOTNOTE 35]but did not explain why this was true. One reason may be that both the utility patent applicant and the patent examiner are bound by U.S. law [FOOTNOTE 36]during the application stage to ensure that the apparatus features claimed therein are functional. This may be true for foreign patents that are issued from a country that engages in patent prosecution. This may also be true as against an applicant of a published patent application. ORNAMENTAL DESIGN PATENTS The court also did not address the use of functional and ornamental features set out in ornamental design patents in view of a trade dress claim. In an ornamental design patent, features sometimes appear in broken lines on the diagram submitted as part of the application to distinguish them from claimed ornamental features. These features may be ornamental or functional, but only incidentally so. Thus, it seems unlikely that an ornamental design patent is strong evidence that the unclaimed features appearing therein are functional. The remaining features in an ornamental design patent may appear in solid lines so as to hold out these features as part of the claimed ornamental design. Thus, in view of the TrafFix Devicesholding, when a utility patent is strong evidence that the features claimed therein are functional, can it be said that an ornamental design patent is strong evidence that the features claimed therein are ornamental? Along these lines, the court wrote: “In a case where a manufacturer seeks to protect … ornamental aspects of features of a product found in the [utility] patent claims, a different result might be obtained.” [FOOTNOTE 37]In a 1997 Trademark Trial and Appeals Board case, however, the board held that the existence of a design patent alone is not sufficient evidence of nonfunctionality. [FOOTNOTE 38]In view of TrafFix Devices, the court may be posed to hear a case to decide the effect of an ornamental design patent on a claim of configuration trademark or trade dress infringement. Vincent P. Tassinariis a senior associate in the intellectual property and technology group at Sonnenschein Nath & Rosenthal. His practice includes patent and trademark prosecution and litigation. ::::FOOTNOTES:::: FN1 TrafFix Devices Inc. v. Marketing Displays Inc., (S. Ct. 1255 (2001)). FN2 Id.at 1005. FN315 U.S.C. 1125(a)(3) (a person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional). FN458 U.S.P.Q.2d at 1005. FN5 Id. FN6 Seewww.mdiworldwide.com. FN7U.S.Patent No. 3,646,696. To view this patent, enter 3,646,696 at http://164.195.100.11/netahtml/ srchnum.htm. FN815 U.S.C. 1125(a)(3) (creating the right of a civil action for trade dress infringement for trade dress without requiring the trade dress be registered on the principal trademark register). FN9 Seewww.traffixdevices.com/index2.htm. FN10 Marketing Displays Inc. v. TrafFix Devices Inc., 967 F. Supp. 953, 956 (E.D. Mich. 1997). FN1158 U.S.P.Q.2d at 1004. FN12 Johnson v. Jones, 921 F. Supp. 1573 (E.D. Mich. 1996) (double recovery not available for both copyright and trademark infringements). FN13Example taken from Wal-Mart Stores Inc. v. Samara Bros. Inc., 120 S. Ct. 1339, 1344 (2000). FN1417 U.S.C. 102(a) (“original” and “works of authorship”). FN1535 U.S.C. 101 (sometimes referred to as useful or utilitarian features). FN1635 U.S.C. 171. FN1715 U.S.C. 1052 (the principal register); See Application of Mogen David Wine Corp., 328 F.2d 925 (C.C.P.A. 1964). FN1815 U.S.C. 1125(a)(3). See also Ferrari SpA Esercizio Fabriche Automobili e Corse v. Roberts, 944 F.2d 1235 (6th Cir. 1991) (availability of design patent protection does not affect federal trade dress protection), cert. denied, 505 U.S. 1219 (1992). FN1915 U.S.C. 1091 (the supplemental register); See Application of Minnesota Mining & Mfg. Co., 335 F.2d 836 (C.C.P.A. 1964). FN20 See Johnson v. Jones, 921 F. Supp. 1573 (double recovery not available for both copyright and trademark infringements). FN21 J.E.M. Ag Supply Inc. v. Pioneer Hi-Bred International Inc., 121 S. Ct. 39 (Mem.) (2001) (Plant Variety Protection Act, 7 U.S.C. 2321 et seq; Patent Act, 35 U.S.C. 101, 161 et seq.). FN2258 U.S.P.Q.2d at 1006. FN23 Wal-Mart Stores Inc. v. Samara Bros. Inc., 120 S. Ct. 1339 (2000). FN24 Id.(because ornamental packaging is inherently distinctive, burden is on trademark examiner or accused infringer to show no distinctiveness to prevent ornamentation protection). FN25 Id.at 1345 (burden on property holder to show distinctiveness through secondary meaning to protect ornamentation). FN26 Id.at 1345. FN27 See, generally, Shashank Upadhye, “Trademark Surveys: Identifying the Relevant Universe of Confused Consumers,” Fordham Intell. Prop. Media & Ent. L.J. 549 (1998). FN28In the 6 million U.S. patents, one can assume 10 apparatus claims per patent, each claim including 10 functional features. Thus, the pool of functional features from which a trademark examiner or accused infringer may draw is approximately 600 million. FN29Trademark Manual of Examining Procedure (TMEP) 1202.03. FN30 See37 C.F.R. 2.61(b); In re Babies Beat Inc., 13 U.S.P.Q.2d 1729, 1731 (TTAB 1990) (registration properly refused when applicant failed to comply with examining attorney’s request for copies of patent applications and other patent information). FN31TMEP 1202.03(a)(iii). FN3258 U.S.P.Q.2d at 1005. FN3335 U.S.C. 112, � 6; D.M.I. Inc. v. Deere & Co., 755 F.2d 1570 (Fed. Cir. 1985) (Statutory law of “equivalence”). FN34 D.M.I. Inc. v. Deere & Co., 755 F.2d 1570 (Fed. Cir. 1985) (judicial law of “doctrine of equivalents”). FN3558 U.S.P.Q.2d at 1005. FN3635 U.S.C. 112, � 2 (“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention”). FN3758 U.S.P.Q.2d at 1007. FN38 In re Am. National Can Co., 41 U.S.P.Q.2d 1841 (T.T.A.B. 1997).

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