U. S. Supreme Court rules product’s functional feature is not protected by trade dress (8039)

TrafFix Devices, Inc. v Marketing Displays, Inc., No. 99-1571 was argued before the U.S. Supreme Court in late November, with Justice Anthony Kennedy handing down a decision this week. The high court reversed the Court of Appeals decision, indicating that the Sixth Circuit did not give sufficient weight to the importance of an expired utility patent.

Facts

Temporary road signs with warnings such as “Road Work Ahead” must withstand high wind gusts. Robert Sarkisian invented a dual-spring mechanism to keep such outdoor signs upright despite adverse wind conditions. Sarkisian obtained utility patents for his invention, and ultimately Marketing Designs, Inc. (MDI) manufactured and sold signs using this design, under a tradename “WindMaster.”

The patents expired and a competitor, TrafFix Devices, Inc. “reverse engineered” (essentially copied) the design and marketed an identical product under the tradename “Windbuster.”

MDI brought suit under the Trademark Act of 1964, 15 U.S.C. § 1051 et seq., against TrafFix for trademark infringement (based on similar names), trade dress infringement (based on the copied spring design), and unfair competition. TrafFix counterclaimed for antitrust violations.

District Court

At trial, the Eastern District of Michigan enjoined TrafFix from using the tradename Windbuster, and granted summary judgment against Marketing Displays, Inc. on the trade dress and unfair competition claims. The trial court also dismissed TrafFix’s antitrust counterclaim. 971 FSupp 262 (ED Mich 1997).

Circuit Court

The Sixth Circuit found no reason to disturb the permanent injunction against the use of the Windbuster trademark, as an infringement of the pre-existing WindMaster. However, on appeal, the court was not convinced that MDI established genuine issues of material fact on its trade dress and unfair competition claims, so the lower court was reversed on those rulings. 200 F3d 929 (6 Cir. 1999).

Appeal Of Trade Dress Issue

It is well established that trade dress can be protected under federal law. The design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer, and a design or package which acquires this secondary meaning, is a trade dress which may not be used in a manner likely to cause confusion as to its origin. Protection for trade dress exists to promote competition, and various Courts of Appeals have allowed claims of trade dress infringement relying on the general provision of the Lanham Act, 15 U.S.C. § 1125 (a)(1)(A).

Congress confirmed this statutory protection for trade dress when it amended the Lanham Act. Title 15 U.S.C. § 1125 (a)(3) provides: “In a civil action for trade dress infringement…the person who asserts trade dress protection has the burden of providing that the matter sought to be protected is not functional.” This codified burden of proof enforces the well-established rule that trade dress protection may not be claimed for product features that are not functional. Qualitex Co. vs. Jacobson Products Co., 514 U.S. 159, 164 (1995).

In this case, the principal question becomes: what is the effect of an expired patent on a claim of trade dress infringement≠ In his decision, Justice Kennedy states: “A prior patent has vital significance in resolving a trade dress claim. A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise.”

Reviewing the facts, the court concluded that the central advantage claimed in the expired utility patents was the dual-spring design, and yet the dual-spring design is the essential feature MDI now seeks to protect. MDI cannot carry the burden of overcoming the strong evidentiary inference of functionality based on the disclosure of the dual-spring design in the expired patents.

The court goes on to state that “The Lanham Act does not protect trade dress in a functional design simply because an investment has been made to encourage the public to associate a particular functional feature with a single manufacturer or seller. The Court of Appeals erred in viewing MDI as possessing the right to exclude competitors from using an identical design.”

For these reasons, the Supreme Court reversed the judgment of the Sixth Circuit, and remanded the case for further proceedings consistent with the opinion.