# Kohler Co. v. Moen Incorporated, F/k/a Stanadyne, Inc.

> Court of Appeals for the Seventh Circuit · December 14, 1993 · 12 F.3d 632

URL: https://www.frixlaw.com/law-library/cases/9486254

## Case

- **Full name:** KOHLER CO., Plaintiff/Appellant, v. MOEN INCORPORATED, F/K/A Stanadyne, Inc., Defendant/Appellee
- **Court:** Court of Appeals for the Seventh Circuit
- **Decided:** December 14, 1993
- **Citations:** 12 F.3d 632; 29 U.S.P.Q. 2d (BNA) 1241; 1993 U.S. App. LEXIS 32752; 1993 WL 515722
- **Precedential status:** Published
- **Opinion:** Dissent by Cudahy
- **Judges:** Cudahy, Coffey, Eschbach
- **Cited by:** 99 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/9486254

## How later opinions describe it (automated extraction)

- concluding, in a case involving faucet manufacturer, which received a trademark after demonstrating that "purchasers of its products recognized the source of its faucets by their distinctive shapes," that product configurations were entitled to trademark protection
- stating that “a fundamental rule of statutory construction requires that statutes are to be construed, if possible, in harmony with ... other applicable statutes”
- noting that a trademark owner has an indefinite term of protection and must also prove secondary meaning and likelihood of confusion in an infringement suit, which the owner of a design patent need not do
- noting that a fundamental canon of statutory construction directs courts to harmonize two potentially conflicting statutes, insomuch as such harmony is possible

## Opinion text

CUDAHY, Circuit Judge,
dissenting.
The majority opinion is an admirably lucid presentation of the point of view adopted by the Court of Appeals for the Federal Circuit and its predecessor, the Court of Customs and Patent Appeals, during about the last twenty years. Unfortunately, this view notoriously lacks the support and endorsement of the Supreme Court. See Application of Honeywell, Inc., 497 F.2d 1344 (C.C.P.A.), cert. denied, 419 U.S. 1080 , 95 S.Ct. 669 , 42 L.Ed.2d 674 (1974); In re Teledyne, 696 F.2d 968 (Fed.Cir.1982). 1 See also John Pegram, Trademark Protection of Product and Container Configurations, 81 Trademark Rep. 1 , 5-18 (1991); Jay Dratler, Jr., Trademark Protection for Industrial Designs, 1988 U.Ill. L.Rev. 887 (1988). ,In adopting the position that the configuration or design of products themselves may be the subject of federal trademark protection, the Federal Circuit and the courts that have followed it seem to have taken lightly the emphasis placed on the right to copy by decisions of the Supreme Court not only recently but stretching back for a century. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 , 109 S.Ct. 971 , 103 L.Ed.2d 118 (1989); Sears, Roebuck & Co. v. Stiffel, 376 U.S. 225 , 84 S.Ct. 784 , 11 L.Ed.2d 661 (1964); Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 , 84 S.Ct. 779 , 11 L.Ed.2d 669 (1964); Kellogg Co. v. National Biscuit Co., 305 U.S. 111 , 59 S.Ct. 109 , 83 L.Ed. 73 (1938); Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169 , 16 S.Ct. 1002 , 41 L.Ed. 118 (1896). While I have the greatest respect for the Federal Circuit, its decisions do not bind us. I think those decisions should not be followed when they seem , to be so much in conflict with relevant "Supreme Court authority. The essential issue before us is whether to follow lower court cases that lack the endorsement of the Supreme Court and that defeat the important right to copy unpatented articles recently proclaimed yet again by the Supreme Court in Bonito Boats, 489 U.S. at 151-153 , 109 S.Ct. at 977-79 . See also Pegram, Trademark Protection, at 18-23. This is a crucially important issue for the maintenance of a free and competitive economy. We should not hesitate to go back to fundamentals in the analysis of the problem.
The majority correctly states the two basic arguments presented, by Kohler for denying federal trademark registration to product configurations. Kohler contends that the practice is an unconstitutional violation of the Patent Clause of the Constitution and is anticompetitive. These are both fundamental questions and the majority has been unable to answer them at a fundamental level.
The Supreme Court has made clear that the patent monopoly which may be secured by obtaining a design patent on a product may not be indefinitely extended through the *645 use of a federal trademark on the product configuration. Thus, in Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249 , 66 S.Ct. 101 , 90 L.Ed. 47 (1946), the Court summarized the rationale for this rule:
The public has invested in such free use by the grant of a monopoly to the patentee for a limited time. Hence any attempted reservation or continuation in the patentee or those claiming under him of the patent monopoly, after the patent expires, whatever the legal device employed, runs counter to the policy and purpose of the patent laws_
By the.force of the patent laws not only is the invention of a patent dedicated to the public upon its expiration, but the public thereby becomes entitled to share in the good will which the patentee has built up in the patented article or product through the enjoyment of his patent monopoly. Hence we have held that the patentee may not exclude the public from participating in that good will or secure, to any extent, a continuation of his monopoly by resorting to the trademark law and registering as a trademark any particular descriptive matter appearing in the .specifications, drawings or claims of the expired patent, whether or not such matter describes essential elements of the invention or claims.
Id. at 256 , 66 S.Ct. at 104-05 (emphasis supplied) (citations omitted).
In Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 16 . S.Ct. 1002, 41 L.Ed. 118 (1896), Singer made patented sewing machines- for several years having a distinctive form and appearance. 163 U.S. at 175 , 16 S.Ct. at 1004 . After the expiration of the principal patents, June Manufacturing Company began making sewing machines with the same appearance. Id. Singer complained that June, “for the purpose of inducing the belief that sewing machines manufactured and sold by it [June] were made by [Singer], was making and selling machines of the exact size, shape, ornamentation, and general appearance as” Singer’s machines. Id. at 170 , 16 S.Ct. at 1002 . The Court refused to enjoin the copying of Singer’s product configuration and held:
It is self-evident that on the expiration of a patent the monopoly created by it ceases to exist, and the right- to make the thing formerly covered by the patent becomes public property. It is upon this condition that the patent is granted. It follows, as a matter of course, that on the termination of the patent there passes to the public the right to make the machine in the form in which it was constructed during the patent. We may, therefore, dismiss without further comment the complaint as to the form in which the defendant made his machines.
Id. at 185 , 16 S.Ct. at 1008 (emphasis supplied).
In Kellogg Co. v. National Biscuit Co., 305 U.S. 111 , 59 S.Ct. 109 , 83 L.Ed. 73 (1938) the shredded wheat biscuit was the subject of a design patent held by National Biscuit covering the pillow-shaped form. Upon the expiration of the patent, the Court allowed Kellogg to manufacture the same biscuit under the name “shredded wheat.” The Court held that “upon expiration of the patents the form ... was dedicated to the public.” 305 U.S. at 119-20 , 59 S.Ct. at 114 .
Certainly, if tie Patent Clause gives the right to copy an article which was once covered by a patent, the public must also retain the fight to copy an article which has never been even temporarily removed from the public domain by reason of being patented. Thus, in Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 , 84 S.Ct. 784 , 11 L.Ed.2d 661 (1964), Sears copied and sold at a lower price a pole lamp marketed by Stiffel. Id. at 226 , 84 S.Ct. at 786. The1 Court in upholding Sears said:
An unpatentable article, like an article on which the patent has expired, is in the public domain and may be made and sold by whoever chooses to do so. What Sears did was to copy Stiffel’s design and to sell lamps almost identical to those sold by Stiffel. This it had every right to do under the federal patent law.
Id. at 231, 84 S.Ct. at 789 (emphasis supplied).
In Compco Corp. v. Day-Brite Lighting, Inc., in upholding Compco’s right to market a *646 copy of a Day-Brite light fixture, the-Court emphatically restated the constitutional policy in.favor of free competition:
To forbid copying would interfere with the ■ federal policy, found in Art. I, § 8, cl. 8, of the Constitution and in the implementing federal statutes, of allowing free access to ■copy whatever the federal patent and copyright laws leave in the public domain. Here Day-Brite’s fixture has been held not to be entitled to a design or mechanical patent. Under the federal patent laws it is, therefore, in the public domain and can be copied in every detail by whoever pleases. It is true that the trial court found that the configuration of Day-Brite’s fixture identified Day-Brite to the trade because the arrangement of the ribbing had, like a trademark, acquired a “secondary meaning” by which that particular design was associated with Day-Brite. But if the design is not entitled to a design patent or other federal statutory protection, then it can be copied at will. 2
376 U.S. at 237-38, 84 S.Ct. at 782 (emphasis supplied).
Finally and very clearly, in Bonito Boats the Court held that a Florida statute prohibiting the direct molding of unpatented boat hulls conflicted with the policy that product designs are dedicated to the public unless they are protected by a valid patent. 489 U.S. at 157-60 , 109 S.Ct. at 981-82 . The Court explained:
[T]he federal standards for patentability, at a minimum, express the congressional determination that patent-like protection is unwarranted as to certain classes of intellectual property. The States are simply not free in this regard to offer equivalent protections to ideas which Congress has determined should belong to all. For almost 100 years it has been, well established that in the case of an expired patent, the federal patent laws do create a federal right to “copy and to use.” Sears and Compco extended that rule to potentially patentable ideas which are fully exposed to the public.
Id. at 164-65 , 109 S.Ct. at 984-85 (emphasis supplied).
Bonito Boats clearly affirmed the federal policy furthering the right to copy. The Court recognized as well that Sears did not preclude states from enacting laws to prevent consumer confusion through unfair competition laws. Id. at 154, 157-58 , 109 S.Ct. at 979, 981 . However, the majority opinion here seems to read into Bonito Boats’ careful discussion of permissible state laws an exemption for any state or federal law dealing with trademarks or trade dress. But the Court only acknowledged that states could continue to enact unfair competition laws so long as, and to the extent that, they did not conflict with the federal policy embodied in Sears/Compco:
‘[Sjtates are free to regulate the use of such intellectual property in any manner not inconsistent with- federal law.’ At the same time, we have consistently reiterated the teaching of Sears and Compco that ideas once placed before the public without the protection of a valid patent are subject to appropriation without significant restraint.
Id. at 156 , 109 S.Ct. at 980 (citations omitted).
Moen — and the majority here — argue that Sears, Compco and Bonito Boats are concerned with the interface between federal patent law and the state law of unfair competition. The cases therefore merely involve application of the Supremacy Clause and federal preemption of state law. Superficially, this argument may have some appeal but it ignores the fact that the Lanham Act (comprising the federal law of trademarks and unfair competition) essentially federalizes the common law of trademarks and unfair com *647 petition. And the Lanham Act provides a federal trademark register to which generally recognized principles of notice may be applied. Therefore, the conflict that the Court found between state law and federal patent law as a prerequisite to preemption in Sears, Compco and Bonito Boats is exactly the same conflict as would develop between federal patent law and federal trademark law if a design patent could be made perpetual by trademarking the design. As a matter of commercial reality, therefore, the relation of patent law to state unfair competition law is exactly the same as its relation to federal trademark law. 3
The conflict, then, is directly between a federal statutory scheme rooted in the Constitution and a federal codification of the common law. 4 As the Court noted in Bonito Boats, the Lanham Act’s federalization of the common law of unfair competition reflects a congressional affirmation of policies that must be made conformable with the constitutionally rooted patent laws: 489 U.S. at 166 , 109 S.Ct. at 985 . Mindful of the policies underlying federal trademark law as succinctly described by the majority here, we must determine whether any trademark interests served by recognizing entire products as trademarks are sufficiently weighty to defeat the crucial policies served by the patent laws.
Congress has thus given federal recognition to many of the concerns that underlie the state tort of unfair competition, and the application of Sears and Compco to nonfunctional aspects of a product which has been .shown to identify sources must take account of competing federal policies in this regard.
What is at stake here is the right to copy the thing itself — that is, to copy its configuration or design. The configuration or design of a product is as generic as the name of the product. As the Supreme Court cases demonstrate, the constitutional right to copy after a patent expires or in the absence of a patent is the reciprocal of the constitutional right to prohibit copying for a limited term under the Patent Clause. To ignore this principle is to. permit perpetual monopolies on product ideas or particular product designs and to inhibit product development. Kohler has provided some horrible examples of allowing federal trademark registration to substitute for the grant of a design patent. One example consists of what appears to be a simple white disc. This product is a round beach towel, which has been granted registration as a trademark on the Principal Register. The registrant presumably has a monopoly on the production of beach towels that are round. Other registrations (and monopolies) may follow for triangular beach towels, trapezoidal beach towels or whatever. As a result of the ease now before us, only Moen *648 will be legally entitled to supply replacement handles for Moen faucets. Moen will have the equivalent of a perpetual design patent on its faucets and faucet handles — in violation of the Constitution.
Courts have attempted to reconcile any conflict between trademark and patent law by invoking the rubric of functionality. The functionality defense seeks to protect the integrity of the utility patent system by excepting from configuration trademarks those products for which trademark protection would result in a perpetual monopoly inconsistent with the utility patent laws. Vaughn Mfg. Co. v. Brikam Int’l Inc., 814 F.2d 346, 349 (7th Cir.1987) (“The defense exists because granting exclusive rights to functional features of products is the domain of patent, not trademark, law.”); W.T. Rogers, 778 F.2d at 338. No one questions that functional features not protected by a valid utility patent, or for which the patent has expired, are open to everyone to copy. Trademarks may not be acquired to defeat the right to copy. Yet Moen and the courts on which it relies (and the majority here) claim that this should not also be the case with respect to nonfunctional features when design patents are not available to protect them. See Honeywell, 497 F.2d at 1347-49 . 5
Yet there is no basis for treating the subject matter of design and utility patents differently: if functional matter not protected by a utility patent is available for all to copy, then it follows that ornamental or aesthetic designs not protected by design patents are also free for everyone to copy. Design and utility patents are created by the same law, 35 U.S.C. §§ 1-376 (1984). There is nothing in the patent law itself that would allow a distinction to be made between design and utility patents for purposes of extending trademark protection to one but not to the other. To the contrary, the law applicable to utility patents applies to design patents as well: “The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.” 35 U.S.C. § 171 (1984).
The argument for distinguishing between the subjects of design and utility patents is that, although freedom to copy functional features may be essential to competition, freedom to copy aesthetic features is not essential. W.T. Rogers, 778 F.2d at 339 (trademark for “ornamental, fanciful shapes and patterns” does not hinder competition). In this circuit, “functional means not simply that the feature serves a function, but that the feature is necessary to afford a competitor the means to compete effectively.... A feature is functional,if it is one that is costly to design around or do without, rather than one that is costly to have.” Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 1188-89 (7th Cir.1989). The Court .of Customs and Patent Appeals described in even stronger terms “the public policy ... as not the right to slavishly copy articles which are not protected by patent or copyright, but the need to copy those articles, which is more properly termed the right to compete effectively.” In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1339 (C,C.P.A.1982). See also Ralph Brown, Design Protection: An Overview, 34 U.C.L.A.L.Rev. 1341, 1359-74 (1987) (discussion of functionality in various circuits).
Courts have struggled with the obvious fact that design features can be as essential to competition — “functional”—as utilitarian features. Some have developed the doctrine of “aesthetic functionality” to reconcile this conflict. See Ralph Brown, Design Protection, at 1367-68. Although this circuit has apparently rejected that view, W.T. Rogers, 778 F.2d at 340, we have recognized that *649 “there may come a point where the design feature is so important to the value of . the product to consumers that continued trademark protection would deprive them of competitive alternatives.” W.T. Rogers, 778 F.2d at 347; Schwinn, 870 F.2d at 1191 . More succinctly, we have found “beauty is function.” W.T. Rogers, 778 F.2d at 343. At the same time, not all designs that enhance a product’s appeal have been found to be “functional.” Schwinn, 870 F.2d at 1191 . We are therefore left with a significant “undistributed middle” in applying this doctrine to aesthetic features. Ralph Brown, Design Protection, at 1366-67.
This functional/nonfunctional dichotomy is purely judge-made and is not based on the patent law. Nor, for that matter, is it based on the trademark law. Patent law does not require that an invention — whether protected by a utility patent or by a design patent — be something that is essential for competition. For utility patents, the invention need only be useful, 35 U.S.C. § 101 (1984). Competitors often design around a utility patent. Design patents, on the other hand, protect ornamental designs of an article of manufacture, 35 U.S.C. § 171 (1984), whether or not they are essential for competition. If we are to rely on the patent law, we know that that which is not protected by. a utility patent or that on which a utility patent has expired is free'for everyone to copy, regardless whether the matter in question is needed to compete or not. The same should be true of design features which are unprotected by a design patent. It does not matter, that the design may not be necessary for competition. And, in any event, the attempt to categorize product features as “essential” or “non-essential” for competition is perplexing and ultimately vain.
The “functionality” doctrine has proved to be at best an extremely fuzzy border between design patent and trademark law. While utility patents and trademarks usually encompass unrelated subject matter, Judge Rich accurately noted that “functionality, ornamental appearance, and good industrial design are matters which are closely intermingled. The very best product design has long been called functional design.” Honeywell, 497 F.2d at 1351 (Rich, J., concurring). The line between nonfunctional and functional is difficult to draw and an obvious source of litigation.
It is also incorrect or irrelevant to say that there is no conflict between configuration trademarks- and the design patent law, because in a trademark ease a plaintiff must also prove secondary meaning and likelihood of confusion. Likelihood of confusion only relates to whether there has been an infringement, not whether a product configuration is entitled to protection in the first place. In fact, Campeo explicitly rejected likelihood of confusion and Secondary meaning as sufficient reasons to grant a monopoly:
A State of course has power to impose liability upon those who, knowing that the public is relying upon an original manufacturer’s reputation for quality and integrity, deceive the public by palming off their copies as the original. That an article copied from, an unpatented article could be made in some other way, that the design is “nonfunctional” and not essential to the use of either article, that the configuration of the article copied may have a “secondary meaning” which identifies the maker to the trade, or that there may be “confusion” among purchasers as to which article is which or as to who is the maker, may be relevant evidence in applying a State’s law requiring such precautions as labeling; however, and regardless of the copier’s motives, neither these facts nor any others can furnish a basis for imposing liability for or prohibiting the actual acts of copying and selling-.
376 U.S. at 238, 84 S.Ct. at 782 (emphasis supplied). Even where a product configuration has achieved significance as an identifier of the source of the goods, the remedy is not to create a monopoly in the configuration. In Kellogg v. National Biscuit, the Court observed,
[D]ue to the long period in which the plaintiff or its predecessor was the only manufacturer of the product, many people have come to associate the product, and as a consequence the name by which the prod *650 uct is generally known, with the plaintiffs factory at Niagara Falls.
305 U.S. at 118 , 59 S.Ct. at 113 .
And the Court concluded:
Where an article may be manufactured by all, a particular manufacturer can no more assert exclusive rights in a form in which the public has become accustomed to see the article and which, in the minds of the public, is primarily associated with the article rather than a particular producer, than it can in the case of a name with similar connections in the public mind. Kellogg Company was free to use the pillow-shaped form, subject only to the obligation to identify its product lest it be mistaken for that of the plaintiff.
305 U.S. at 120 , 59 S.Ct. at 114 .
Thus, in Kellogg the shape of National Biscuit’s “shredded wheat” was held to be generic and unprotectable as a trademark even though it was associated in the public mind with a particular producer. The shape of the product was like its name. The appropriate method of identifying it with its producer was to mark it with the distinctive mark or name of its manufacturer — not to grant a monopoly on its shape. Adequate labeling is sufficient and is the appropriate way to avoid source confusion.
Granting trademark protection to product configurations conflicts directly and importantly with the public policy favoring competition and disfavoring monopolies and monopolistic practices. In American Safety Table Co., Inc. v. Schreiber, 269 F.2d 255 (2d Cir.), cert. denied, 361 U.S. 915 , 80 S.Ct. 259 , 4 L.Ed.2d 185 (1959), the Second Circuit declared:
In approaching the question of whether Schreiber & Goldberg’s copying of the Amco machine is actionable, it must be remembered that the interests and equities of the litigants at bar are not the only ones which must be considered. Indeed, the underlying principles of our competitive economy and the desirability of passing on to the American public the advances of technical progress not only are entitled to consideration, in fact they dominate the picture although the interests of the public are not represented by either of the parties to the action....
[limitation is the life blood of competition. It is the unimpeded availability of substantially equivalent units that permits the normal operation of supply and demand to yield the fair price society must pay for a given commodity. [Citations omitted.] Unless such duplication is permitted, competition may be unduly curtailed with the possible resultant development of undesirable monopolistic conditions.
Id. at 271-72.
Chief Judge Charles E. Clark in dissent in American Safety Table put it even more strongly:
We have only recently unequivocally reaffirmed these principles in Modern Aids Inc. v. R.H. Macy & Co., 2d Cir., 264 F.2d 93, 94 , where the court stated Per Curiam: “The plaintiff had no patent, and except for one proviso the defendant was free to imitate its machine as closely as it chose, no matter how much the competition might lessen the plaintiffs sales. That proviso was that, if the buying public had come to believe that every machine made after the plaintiffs model was the plaintiffs product, and had in any degree relied upon the source of the machine, rather than its performance, the plaintiff might have some relief. Even then, however, the relief would go no further than to require the defendant to make plain to buyers that the plaintiff was not the source of the machines sold by it."
Id. at 281-82 (emphasis supplied).
It is also no answer to Kohler’s argument that trademark registration for product configurations is anticompetitive to say that such a trademark creates only a relatively weak monopoly, or, as the majority contends, that it creates no “monopoly” at all. A restraint on competition need not be absolute to be effective. .Kohler cannot copy Moen’s unpat-ented faucet and handle unless it knows that Moen will be unable to prove a likelihood of confusion. At the end of the day, Moen has no patent, yet remains free from effective competition in the market for a popular brand of faucet.
*651 Nor do I share the majority’s belief that Chevron principles are of great consequence here, if they even apply. When the issue is the validity of a registered trademark, the U.S. Patent and Trademark Office’s determination establishes a prima facie case of validity. 15 U.S.C. § 1115 (a). (Supp.1993). But, when the issue is, as here, one of constitutional policy, the matter is clearly one to which the courts (and, in particular, the Supreme Court), as opposed to the agency, can speak with authority. In any event, the Patent and Trademark Office historically refused registration of overall product configurations as trademarks. See Ex Parte Mars Signal-Light Co., 85 U.S.P.Q. (BNA) 173 (Comm.Patents 1950); In re Duro-Test Corp., 134 U.S.P.Q. (BNA) 137 (TTAB 1962). Only when the Court of Customs and Patent Appeals took its misguided step in Honeywell in 1974 did the Patent and Trademark Office practice change. Further, it is common knowledge that the persistence of skilled intellectual property practitioners may eventually win registration for purported marks whose registrability is, to say the least, marginal. The courts must be vigilant to sustain constitutional limitations and to give appropriate weight to basic economic considerations like the need for competition.
With respect to the 1988 amendments of the Lanham Act, the list of trademarkable categories was not changed.- Both sides claim that this indicates an intent of Congress to either favor or disfavor trademarks on product configurations. It seems to me -that the congressional action or inaction shows very little one way or the other.
The effort to establish registrability of product configurations as trademarks is a bit like Samuel Clemens’ attempt to register his nom de plume, “Mark Twain,” as a trademark to prevent pirating of his novels. The “Mark Twain” Case, 14 F. 728, 730 (C.C.Ill.1883). - The court properly rejected this effort to acquire what amounted to copyright protection in the name of a trademark. 6 Id. at 731 . The “Mark Twain” case is analogous to the present problem. Moen, like Clemens, seeks refuge in trademark law for protection that is properly only available through the design patent or copyright laws. Here too we should decline to allow the use of a trademark to, in effect, extend design patent protection for all indefinite term.
If the issue before us is a conflict between a well-defined statutory scheme (the design .patent laws) enacted under a specific and limited constitutional directive (the Patent Clause) and a judicial doctrine (protection of product configurations as' trademarks) only remotely incident to a general statutory scheme (the Lanham Act), the specific, constitutionally-mandated provisions should control. See Morton v. Mancari, 417 U.S. 535, 550-51 , 94 S.Ct. 2474, 2482-83 , 41 L.Ed.2d 290 (1974).
In my view, whatever new law has been developed in the lower courts to authorize the use of product configuration trademarks as a substitute for design patents is without sanction from the Supreme Court. The Court has spoken repeatedly to disfavor the use of unfair competition law to avoid the “limited times” provision of the Patent Clause. The Court has emphasized the importance of . the right to copy as an aspect of the Patent Clause. The right to copy is constitutionally protected and is absolutely essential to the successful long-term operation of a free and competitive economy. I therefore respectfully dissent.
. The phrase "other federal statutory protection” has been taken as a short cut to application of the Lanham Act to product configurations. See Pegram, Trademark Protection, at 19. The phrase, however, does not create an exception to the constitutional policy consistently pronounced in Compco, Sears and the cases we have discussed. Although the use of the phrase recog - nizes the possibility of further congressional action, it does not preclude conflicts between such statutes and the constitution. Notably, when the Supreme Court re-affirmed the Sears/Compco doctrine in Bonito Boats, 489 U.S. at 154—57, 109 S.Ct. at 979-81 , it omitted any such blanket reference to a federal exception. See Pegram, Trademark Protection, at 19-20.
. The majority argues that differences between stringent state unfair competition laws and the Lanham Act require us to distinguish the entire line of Supreme Court authority articulating a constitutional policy favoring a right to copy. I do not agree that one hundred years of policy can be ignored merely because the Lanham Act may differ somewhat from the state laws considered by the Court. The conflict posed by these state laws and the Lanham Act remains the same: whether trademark can be used as a back door to protection properly acquired by a design patent.
. The majority opinion cites part of one paragraph of this court's opinion in W.T. Rogers Co. v. Keene, 778 F.2d 334 (7th Cir.1985), for the proposition that we have already decided that there is no conflict between patent law and trademark protection of product configurations. See id. at 337 . I do not agree that W.T. Rogers disposed of this issue. In W.T. Rogers, Judge Posner traversed the rocky terrain of "functionality.” He indicated that although a functionality defense could avert a conflict between trademark and utility patent law, there might still be a clash with design patent law. Id. He pointed to the different standards for proving trademark and design patent infringement to harmonize the two modes of protection. But, respectfully, this is not an adequate answer to the anticompetitive features of trademark protection for product configurations. Judge Posner’s conclusion that there is no “necessary inconsistency” between trademark and patent law does not, as the majority states, tell us there is no possible inconsistency. And indeed, this inconsistency arises when, as here, a company resorts to trademark law to protect the very product itself. ‘
Moreover, I am not persuaded that passing references to trademarks for designs in Two Pesos, Inc. v. Taco Cabana, Inc., - U.S. -, 112 S.Ct. 2753 , 120 L.Ed.2d 615 (1992), which does not even indirectly address the issues here, sheds any light on the conflict between patent law and trademarks for product configurations.
. This perhaps unfortunate distinction between the functional and the non-functional seems to have taken root in Honeywell. The Court of Customs and Patent Appeals recognized that trademark rights are not available for functional — defined as "in essence utilitarian or dictated by reasons of engineering efficiency” — subject matter disclosed in a utility patent because such protection would conflict with public policy favoring coinpetition and the “right to copy.” 497 F.2d at 1348 . When trademark rights were sought for non-functional elements of a design patent, however, the court did not pursue the same policy. Rather, the court said it had "decided that the public interest — protection from confusion, mistake, and deception in the purchase of goods and services — must prevail over any alleged extension of design patent rights when a trademark is non-functional.” Id.
. The “Mark Twain’’ case clearly espouses a policy that materials not protected by copyright are available to the public and cannot be protected by trademark. The court noted that an author could obtain an injunction if a publisher attributed to him a work that he had never written. 14 F. at 730-31 . However, the court flatly rejected as a matter of policy any trademark interest Clemens sought to assert in the name "Mark Twain.”
■The invention of a nom de plume gives the writer no increase of right over another who uses his own name. Trade-marks are the means by which manufacturers of vendible merchandise designate or state to the public the quality of such goods, and the fact that they are the manufacturers of them ... but an áuthor cannot, by adoption of a nom de plume, be allowed to defeat the well-settled rules of the common law in .force in this country, that the 'publication of a literary work without copyright is a dedication to the public, after which any one may republish it.’
.Id. at 731-32.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9486254. Public record. Not legal advice.