TrafFix Devices, Inc. v. Marketing Displays, Inc.

United States Supreme Court
532 U.S. 23 (2001)

ELI5:

Rule of Law:

An expired utility patent is strong evidence that the features claimed within it are functional. To claim trade dress protection for such a feature, the party must carry the heavy burden of proving the feature is not functional, such as by showing it is merely an ornamental, incidental, or arbitrary aspect of the device.

Facts:

Robert Sarkisian invented and obtained two utility patents for a dual-spring mechanism designed to keep outdoor road signs upright in strong winds.
Marketing Displays, Inc. (MDI) became the holder of these patents and sold sign stands that prominently featured the visible dual-spring design, marketing them under the name 'WindMaster.'
The Sarkisian patents expired, dedicating the invention to the public domain.
After the patents expired, a competitor, TrafFix Devices, Inc., began selling sign stands that incorporated a nearly identical dual-spring mechanism.
TrafFix had reverse-engineered an MDI product to create its competing sign stands, which it sold under the name 'WindBuster.'

Procedural Posture:

Marketing Displays, Inc. (MDI) sued TrafFix Devices, Inc. in the U.S. District Court for the Eastern District of Michigan for trade dress infringement.
The District Court granted summary judgment in favor of TrafFix, ruling that the dual-spring design was functional and therefore not protectable as trade dress.
MDI, as appellant, appealed to the U.S. Court of Appeals for the Sixth Circuit, with TrafFix as the appellee.
The Sixth Circuit Court of Appeals reversed the District Court, finding there was a genuine issue of fact as to whether the design was functional.
The U.S. Supreme Court granted certiorari to resolve a conflict among the circuit courts on whether an expired patent forecloses trade dress protection.

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Issue:

Is a product design feature that was a significant inventive component of an expired utility patent legally functional and therefore ineligible for trade dress protection under the Lanham Act?

Opinions:

Majority - Justice Kennedy

Yes. A product feature that was a central component of an expired utility patent is considered functional and cannot be protected as trade dress. The existence of an expired utility patent provides strong evidence that the features described within it are functional, not merely ornamental. Patent law's purpose is to grant a limited-term monopoly in exchange for the invention's eventual entry into the public domain; allowing trade dress protection for a functional feature would subvert this purpose by creating a perpetual monopoly. The Court clarified that a feature is functional if it is essential to the use or purpose of the article or if it affects its cost or quality. The 'competitive necessity' test is a secondary consideration, primarily for cases of aesthetic functionality, and does not need to be reached if the feature is functional under this traditional definition. Here, the dual-spring design was the very invention claimed in the Sarkisian patents and was described as providing utilitarian advantages, making it undeniably functional and unprotectable as trade dress.

Analysis:

This decision significantly limits the scope of trade dress protection for product designs that were once patented, reinforcing the boundary between patent and trademark law. It establishes that patent law, not trademark law, is the appropriate vehicle for protecting useful inventions, and that such protection is finite. By confirming that an expired patent creates a strong presumption of functionality, the Court prevents companies from using trade dress to achieve a 'backdoor patent' and extend their monopoly indefinitely. The ruling also clarifies the legal test for functionality, prioritizing the 'essential to use or purpose' standard over the 'competitive necessity' standard for utilitarian features, thereby making it more difficult to claim trade dress protection for any feature that makes a product work better or is cheaper to produce.

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