Talk:Traffix Devices, Inc. vs. Marketing Displays, Inc., 532 U.S. 23 (2001)
Manufacturer of “WindMaster” outdoor sign stands brought trademark and trade dress infringement action against competitor that used “WindBuster” mark for its traffic sign stands. The United States District Court for the Eastern District of Michigan, 967 F.Supp. 953, enjoined competitor's use of infringing trademark and dismissed counterclaim, but, 971 F.Supp. 262, granted summary judgment for competitor on trade dress claim. Competitor appealed, and manufacturer cross-appealed. The Court of Appeals for the Sixth Circuit, 200 F.3d 929, affirmed in part, reversed in part, and remanded. Competitor petitioned for certiorari which was granted. The Supreme Court, Justice Kennedy, held that existence of expired utility patents claiming dual-spring design mechanism for keeping outdoor signs upright in adverse wind conditions created strong evidentiary inference of design's functionality, and failure of manufacturer to overcome that inference by showing that design was merely ornamental, incidental, or arbitrary precluded trade dress protection for the design.
The design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source; and a design or package which acquires this secondary meaning, assuming other requisites are met, is a“ trade dress” which may not be used by a competitor in a manner likely to cause confusion as to the origin, sponsorship, or approval of the goods. Held: Because MDI's dual-spring design is a functional feature for which there is no trade dress protection, MDI's claim is barred. Pp. 1259-1263.
Trade dress protection must subsist with the recognition that in many instances there is no prohibition against copying goods and products. In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying. As the Court has explained, copying is not always discouraged or disfavored by the laws which preserve our competitive economy. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 160, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989). Allowing competitors to copy will have salutary effects in many instances. “Reverse engineering of chemical and mechanical articles in the public domain often leads to significant advances in technology.” Ibid. Because the dual-spring design is functional, it is unnecessary for competitors to explore designs to hide the springs, say, by using a box or framework to cover them, as suggested by the Court of Appeals. Ibid. The dual-spring design assures the user the device will work. If buyers are assured the product serves its purpose by seeing the operative mechanism that in itself serves an important market need. It would be at cross-purposes to those objectives, and something of a paradox, were we to require the manufacturer to conceal the very item the user seeks.
In a case where a manufacturer seeks to protect arbitrary, incidental, or ornamental aspects of features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, a different result might obtain. There the manufacturer could perhaps prove that those aspects do not serve a purpose within the terms of the utility patent. The inquiry into whether such features, asserted to be trade dress, are functional by reason of their inclusion in the claims of an expired utility patent could be aided by going beyond the claims and examining the patent and its prosecution history to see if the feature in question is shown as a useful part of the invention. No such claim is made here, however. MDI in essence seeks protection for the dual-spring design alone. The asserted trade dress consists simply of the dual-spring design, four legs, a base, an upright, and a sign. MDI has pointed to nothing arbitrary about the components of its device or the way they are assembled. The Lanham Act does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity. The Lanham Act, furthermore, does not protect trade dress in a functional design simply *35 because an investment has been made to encourage the public to associate a particular functional**1263 feature with a single manufacturer or seller. The Court of Appeals erred in viewing MDI as possessing the right to exclude competitors from using a design identical to MDI's and to require those competitors to adopt a different design simply to avoid copying it. MDI cannot gain the exclusive right to produce sign stands using the dual-spring design by asserting that consumers associate it with the look of the invention itself. Whether a utility patent has expired or there has been no utility patent at all, a product design which has a particular appearance may be functional because it is “essential to the use or purpose of the article” or “affects the cost or quality of the article.” Inwood, 456 U.S., at 850, n. 10, 102 S.Ct. 2182.