Petition for Writ of Certiorari — TrafFix Devices, Inc. v. Marketing Displays, Inc.

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a Supreme Court, UE

FILED

9915 7 1MAR27 200

No. 99-———

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In THE

Supreme Court of the United States

TRAFFIX DEVICES, INCORPORATED,

Petitioner.

Vv.

MARKETING DISPLAYS, INCORPORATED,

Respondent.

Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Sixth Circuit

PETITION FOR A WRIT OF CERTIORARI

JEANNE-MARIE MARSHALL JOHN G. ROBERTS, JR.*

RICHARD W. HOFFMANN GREGORY G. GARRE

REISING, ETHINGTON, BARNES, HOGAN & HARTSON L.L.P.

KISSELLE, LEARNMAN & 555 Thirteenth Street, N.W.

McCULLOocH, P.C. Washington, D.C. 20004

201 W. Big Beaver—Suite 400 (202) 637-5810

Troy, Michigan 48084

(248) 689-3500

* Counsel of Record Counsel for Petitioner

i 33pe

QUESTION PRESENTED

Whether this Court should resolve the circuit conflict—

expressly acknowledged and deepened by the Sixth Cir-

cuit below—on whether federal trade dress protection

extends to a product configuration covered by an expired

utility patent.

(i)

RULE 29.6 STATEMENT

_ The caption contains the names of all parties that

appeared in the Sixth Circuit. Petitioner TrafFix Devices,

Incorporated has no parent companies or subsidiaries.

TABLE OF CONTENTS

QUESTION PRESENTED on... ---2-cncencseceseeceeesemes =

RULE 29.6 STATEMENT ................. —

CONSTITUTIONAL AND STATUTORY PROVI-

DF OL

INTRODUCTION —_

STATEMENT OF THE CASE .

REASONS FOR GRANTING THE WRIT ........... =

I. AS THE SIXTH CIRCUIT EXPRESSLY AC-

KNOWLEDGED, THE CIRCUITS ARE SPLIT

ON WHETHER A PRODUCT CONFIGURA-

TION COVERED BY AN EXPIRED UTILITY

PATENT IS ENTITLED TO TRADE DRESS

PROTECTION .................

Ill. THE SIXTH CIRCUIT DECISION CON-

FLICTS WITH NEARLY A CENTURY’S

WORTH OF THIS COURT’S PRECEDENT

ESTABLISHING THE PUBLIC’S RIGHT TO

COPY AND USE AN INVENTION UPON

EXPIRATION OF THE PATENT ..................

Ill. THE CIRCUIT CONFLICT CONCERNS A

MATTER OF OVERRIDING IMPORTANCE

AS TO WHICH NATIONAL UNIFORMITY

IS REQUIRED .........

Page

TABLE OF CONTENTS—Continued

APPENDICES

APPENDIX A:

Opinion of the Court of Appeala, dated December

EE eee

APPENDIX B:

APPENDIX C:

Order of the District Court, dated July 9, 1997......

APPENDIX D:

Opinion and Order of the District Court, dated

xxx EE

TABLE OF AUTHORITIES

CASES: Page

Bonito Boats, Inc. vy. Thunder Craft Boats, Inc.,

489 U.S. 141 (1989) ... passim

Brazton Vv. United States, 500 U.S. 344 (1991)... 9

Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d B12

(9th Cir.), cert. denied, 498 U.S. 872 (1989) _.. 17

Coats v. Merrick Thread Co., 149 U.S. 562 (1893)... 19

Compco Corp. v. Day-Bright Lighting, Inc., 376

U.S. 284 (1964) ................ 22

Dise Golf Ass'n Vv. Champion Discs, Inc., 158 F.3d

1002 (9th Cir. 1998) 17

Elmer v. ICC Fabricating, Inc., 67 F.3d 1571

CC , 16, 24

Esercizio v. Roberts, 944 F.2d 1235 (6th Cir.

1991), cert. denied, 606 U.S. 1219 (1992) ........ 11, 28

Graham v. John Deere Co., 388 U.S. 1 (1966) —..... 25

1.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27

(ist Cir. 1996) ........................ 25

Kellogg Co. v. National Biscuit Co., 305 U.S. 111

IED cssesisiatitieneiit artes tacesiitiammseinamnnenin 3, 19, 20-21

Kohler Co. v. Moen, Inc., 12 F.8d 6382 (7th Cir.

yx 14, 23, 27

Midwest Indus., Inc. v. “Karavan Trailers, Inc.,

175 F.8d 1356 (Fed. Cir.), cert. denied, 120

QF KF 15, 16, 18

Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526

(6th Cir. 1998) 15

Pfagi vy. Welle Electronics, Inc., 5626 U.S. 55

(1998) 19, 27

Qualitez Co. v. Jacobson Prods. Co., 514 US. 159

(1995) 10, 25-26

Sarkisian v. Winn-Proof Corp., 697 F.2d 1818 (9th

Cir.), cert. denied, 460 U.S. 1062 (1988) _........ 5

Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S.

fF £ ee 21, 26

Sears, Roebuck & Co. v. Stiffel Co., 876 U.S. 225

(1964) 21-22, 28, 25, 27

Singer yah Co. v. Jume oe -_ 168 U.S. 169

(1896) .. sesepeneentinnerenestatienstienaeate ' 19-20, 23

TABLE OF AUTHORITIES—Continued

Sunbeam Prods., Inc. v. West Bend Co., 128 F.3d

146 (5th Cir. 1997), cert. denied, 528 U.S. 1118

AE Se — 14, 15

Thomas & Betts Corp. v. Panduit Corp., 188 F.3d

277 (7th Cir.), cert. denied, 119 S. Ct. 336

i ee 12, 18, 17

Thomas & Betts Corp. v. Panduit Corp., 935

F. Supp. 1899 (N.D. Ill. 1996) .....................-..... 12, 26

Thomas & Betts Corp. v. Panduit Corp., 65 F.3d

654 (7th Cir. 1995) .............. aeeastinsiateaiamaaaiaes - 18

Two Pesos, Inc. vy. Taco Cabana, Inc., 506 US.

Fo a 8

Vornado Air Circulation Sys., Inc. v. Duracraft

Corp., 58 F.8d 1498 (10th Cir. 1995), cert.

denied, 516 U.S. 1067 (1996) —.............ccee passim

Wal-Mart Stores, Inc. v. Samara Bros., Inc., 68

U.S.L.W. 4217 (U.S. Mar. 22, 2000) ................ 8, 24, 26

Zip Dee, Inc. v. Dometic Corp., 981 F. Supp. 602

BQ )e————————E 10, 18

CONSTITUTION :

U.S. Const. art. 1, § 8, Ch. 8 oo... ccccccccceesennennennees .2, 4, 24-25

STATUTES:

15 USC. $1125 (8) ocr ce csceeevvreeeveeneneren 2,

15 U.S.C. § 1125(a) (3)

)) _yyyy————————————————————-- 1

28 U.S.C. § 1291 pcusenauennSeSSeneEASEsUnASASOESTSEOAERSSED 1

PT) | a

GE TAG, Ge GBD cccccsccccscnccessesnscsscesssscssesscnescesnesesses

85 U.S.C. § 164(a) (2) ....... -

RULES:

S. Ct. Rule 10 ............. 2

S. Ct. Rule 10(a) ............... 9

S. Ct. Rule 10(c) ...... ‘ 19

Corp., 21 J. Corp. L. 827 (1996) 28

4, 18, 28, 24, 28, 29

the Back Door: At-

Trade

pired Utility Patents, 92 Nw. U. L. Rev. 779

)

equest to the High Court:

42 Wayne L. Rev. 1649 (1996) ... 28

J. Thomas McCarthy, McCarthy on Trademarks

and Unfair Competition (4th ed. 1996) ............ 6-7,

14, 17, 18, 28

Willajeanne F. McLean, Opening Another Can of

Worms: Protecting Product Configuration as

vit

TABLE OF AUTHORITIES—Contiaued

Kevin E. Mohr, At the Interface of Patent and

Trademark Law: Should a Product Configura-

tion Disclosed in a Utility Patent Ever Qualify

for Trade Dress Protection?, 19 Hastings Comm.

& Ent. LJ. 839 (1997) :

Note, Recent Case (Vornado), 109 Harv. L. Rev.

1457 (1996) -

David W. Opderbeck, Form and Function: Pro-

tecting Trade Dress Rights in Product Con-

figurations, 20 Seton Hall Legis. J. 1 (1996) —.

Michael S. Pérez, Reconciling the Patent Act and

the Lanham Act: Should Product Configura-

tions Be Eutitled to Trade Dress Protection

After the Bzpiration of a Utility or Design

Patent?, 4 Tex. Intell. Prop. J. 388 (1996)...

Michael E. Peters, When Patent and Trademark

Law Hit the Fan: Potential Effects of Vornado

Air Circulation Systems, Inc. v. Duracraft

Corp. on Legal Protection for Industrial Design,

14 Temp. Envtl. L. & Tech. J. 123 (1996) .__.

Judith Beth Prowda, The Trouble With Trade,

Drese Protection of Product Design, 61 Alb. L.

Rev. 1809 (1998)

Page

am -senhy 26, 27, 28

18, 28

In THE

Supreme Court of the Auited States

No. 99- ——

TRAFFIX Devices, INCORPORATED,

‘ Petitioner,

MARKETING DISPLAYS, INCORPORATED,

Respondent.

PETITION FOR A WRIT OF CERTIORARI

Petitioner TrafFix Devices, Incorporated (“TrafFix”)

respectfully petitions this Court for a writ of certiorari

to review the judginent of the United States Court of

Appeals for the Sixth Circuit in this case.

OPINIONS BELOW

The opinion of the Sixth Circuit is reported at 200

F.3d 929 and reproduced in the appendix hereto (“App.”)

at la. The June 2, 1997 opinion of the District Court

for the Eastern District of Michigan is reported at 967

F, Supp. 953 and reproduced at App. 68a. The June 12,

1997 opinion of the District Court is reported at 971

F. Supp. 262 and reproduced at App. 25a.

JURISDICTION

The judgment of the Sixth Circuit was entered on

December 29, 1999. App. la. The jurisdiction of the

Sixth Circuit was based on 28 U.S.C. §§ 1291 and

1292(a)(1). The jurisdiction of this Court is invoked

under 28 U.S.C. § 1254(1).

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

The Patent Clause of the United States Constitution

grants Congress the power “[t]o promote the Progress of

Science and useful Arts by securing for limited Times to

Authors and Inventors the exclusive Right to their re-

spective Writings and Discoveries.” U.S. Const. art. I,

§ 8, cl. 8.

Section 43(a) of the Lanham Act, 15 U.S.C.

§ 1125(a), provides in part:

(1) Any person who, on or in connection with any

goods or services, or any container for goods, uses

in commerce any word, term, name, symbol, or

device, or any combination thereof, or any false

designation of origin, false or misleading description

of fact, or false or misleading representation of fact,

which—

(A) is likely to cause confusion, or to cause mistake,

or to deceive as to the affiliation, connection, or asso-

ciation of such person with another person, or as to

the origin, sponsorship, or approval of his or her

goods, services, or commercial activities by another

person ** *

shall be liable in a civil action by any person who

believes that he or she is or is likely to be damaged

by such act.

INTRODUCTION

This is one of the unusual cases in which all the cus-

tomary criteria for certiorari are readily met. See S. Ct.

Rule 10. First, as the Sixth Circuit expressly acknowl-

edged below, “[a] circuit split exists as to whether a

utility patent disclosure forecloses trade dress protection

funder the Lanham Act].” App. 18a.’ Because “the in-

1 Section 48(a) of the Lanham Act, 15 U.S.C. § 1126(a), makes

actionable the “false or misleading” use of marks on goods or

ability freely to copy significant features of patented prod-

ucts after the patents expire impinges seriously upon the

patent system’s core goals,” the Tenth Circuit has held

that federal trade dress protection does not extend to a

product configuration covered by a utility patent. Vor-

nado Air Circulation Sys., Inc. v. Duracraft Corp., 58

F.3d 1498, 1508 (10th Cir. 1995), cert. denied, 516 U.S.

1067 (1996). Other circuits—including the Sixth Circuit

below—have taken the contrary view, allowing trade dress

protection despite the fact that a product configuration is

covered by a utility patent. See App. 18a-19a.

Second, the Sixth Circuit position squarely conflicts

with the decisions of this Court. This Court has “long

held that after the expiration of a federal patent, the

subject matter of the patent passes to the free use of the

public as a matter of federal law.” Bonito Boats, Inc.

Vv. Thunder Craft Boats, Inc., 489 U.S. 141, 152 (1989).

“It follows, as a matter of course, that on the termination

of tie patent there passes to the public the right to make

the [product] in the form in which it was constructed

during the patent.” Kellogg Co. v. National Biscuit Co.,

305 U.S. 111, 120 (1938) (emphasis added; quotation

omitted). The Sixth Circuit position that a product's con-

figuration—or form—may be cloaked with trade dress

protection after its patent monopoly has lapsed flouts this

“almost 100 year[{]”-old doctrine. Bonito Boats, 489

U.S. at 165. More fundamentally, this backdoor use of

services used in interstate commerce, including unregistered trade

dress. See id. § 1125(a)(3); Wal-Mart Stores, Inc. v. Samara Bros.,

Inc., 68 U.S.L.W. 4217, —— (U.S. Mar. 22, 2000). Trade dress

“originally included only the packaging, or ‘dressing,’ of a product,”

but in recent years has been interpreted to include a product’s

configuration or design. Wal-Mart Stores, 68 U.S.L.W. at ——-;

see Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 768, 764 n.1

(1992) ; Kevin E. Mohr, At the Interface of Patent and Trademark

— a oe ee Utility Patent

Qualify for Trade Dress ection?, 19 Hastings Comm.

Ent. L.J. 389, $42 n.4 (1997). 7 “

federal trademark jaw contravenes the Constitution's

grant of authority to Congress to secure to inventors the

exclusive right to use their inventions “for limited Times.”

U.S. Const. art. I, §8, cl. 8 (emphasis added).

Third, the conflict deepened by this case concerns a

matter of overriding importance. “{I]mitation and re-

finement through imitation are both necessary to inven-

tion itself and the very lifeblood of a competitive econ-

omy.” Bonito Boats, 489 U.S. at 146. Extending trade

dress protection to the subject of expired patents seriously

taints this “lifeblood.” At the same time, the conflict on

this issue has “shrouded the right to copy from expired

utility patents in considerable uncertainty,” and “sub-

ject[ed] a patentee’s competitors to the threat of unpre-

dictable trade dress litigation.” Todd R. Geremia, Pro-

tecting the Right to Copy: Trade Dress Claims for Con-

figurations in Expired Utility Patents, 92 Nw. U. L. Rev.

779, 782 (1998). “One of the fundamental purposes

behind the Patent and Copyright Clauses of the Consti-

tution was to promote national uniformity in the realm of

intellectual property,” Bonito Boats, 489 U.S. at 162, and

thereby avoid such confusion.

The Court should grant the writ, resolve the acknowl-

edged circuit conflict, and restore uniformity to this eco-

nomically vital area of the Nation’s law.

STATEMENT OF THE CASE

The parties manufacture and sell stands for highway

traffic signs and other highway safety products. Respond-

ent Marketing Displays, Inc. (“MDI”) has manufactured

and sold a commercially successful traffic sign stand since

the mid-1970s under the registered trademark “WIND-

MASTER.” WINDMASTER sign stands—used to hold

signs such as “ROAD WORK AHEAD”—have a narrowly

spaced, dual-spring base that enables them to withstand

wind without tipping over. The dual-spring configuration

was developed by MDI’s president in the mid-1960s, and

is covered by two utility patents issued by the United

States Patent and Trademark Office (“PTO”)—U:S. Pat-

ent Numbers 3,646,696 and 3,662,482. The last of these

patents expired in 1989, seventeen years after it was is-

sued. App. 2a-3a, 26a-27a.

Utility patents may be issued for any novel, useful,

and nonobvious process, machine, manufacture, or com-

Position of matter. 35 U.S.C. §§ 101-103. They secure to

their holder a monopoly on the use of the invention for

the life of the patent. See id. § 154(a)(2). Among other

things, MDI’s patent documents provide:

One of the novel points of structure in the present

invention is the provision of a pair of spring con-

nections as opposed to a single spring connectionf.]

. . * The reason for providing two spaced apart

spring connections is to force the sign to deflect in

a direction along the longitudinal axis of the base

and to prevent twisting of the sign frame. Thus, it is

not a matter of choice whether one or two springs

are used in [the] mvention. [See 6th Cir. App. 95%

960 (File History of U.S. Patent No. 3,646,696).]

See also id. 956 (“specifically limiting [claim] to a pair of

spaced coil springs”) (same); id. 1290 james at

vention). Shortly after the patents were issued, MDI en-

forced its patent monopoly to enjoin a competitor (Winn-

Proof) from selling a spring mounted sign stand virtually

identical to MDI’s WINDMASTER sign stand. See Sar

kisian v. Winn-Proof Corp., 697 F.2d 1313 (9th Cir.),

cert. denied, 460 U.S. 1052 (1983).

TrafFix’s president knew that MDI utility :

pired in 9060, and Gar cir cepieation of 0 eatat Gs

underlying invention enters the public domain. As a

result, TrafFix in the early 1990s reengineered a sign

stand that—while differing from MDI’s stand im various

respects such as color and release mechanism—autilized the

same basic configuration, including dual-spring base, cov-

ered by MDI’s expired utility patents. In 1994 TrafFix

applied to the PTO for protection of its own “WIND-

BUSTER” trademark on this sign stand. The PTO

granted TrafFix this trademark in 1995 (after the requi-

site notice period), and registered the mark in 1996.

TrafFix brought its sign stand to market in 1994—nearly

five years after MDI’s utility patents had expired—and

began selling the stand under the WINDBUSTER mark

in 1995. App. 3a-4a.

Just as it had done nearly two decades earlier in the

case of Winn-Proof, MDI moved to block TrafFix’s entry

into the market. But this time—since MDI’s patent

monopoly had lapsed—MDI turned to federal trademark

law. In July 1995 MDI filed this action in the District

Court for the Eastern District of Michigan, asserting

claims under the Lanham Act that TrafFix had infringed

its trade dress, infringed MDI’s WINDMASTER trade-

mark, and engaged in unfair competition. TrafFix coun-

terclaimed, alleging that MDI had engaged in unfair com-

petition and violated the federal antitrust laws. Both

parties moved for summary judgment. On January 13,

1997, the District Court granted summary judgment for

MDI on its trademark claim and on TrafFix’s antitrust

claim, issuing an amended opinion on June 2, 1997. Id.

4a, 68a. On June 12, 1997, the District Court granted

summary judgment for TrafFix on MDI’s trade dress and

unfair competition claims. Jd. 4a, 25a.

In disposing of the trade dress claim—the only claim

at issue here—the District Court began with the “well

established [rule] that in the case of an expired patent,

the federal patent laws do create a federal right to ‘copy

and use.’” Id. 46a-47a (quoting Bonito Boats, 489 U.S.

at 165 (emphasis in original) ). The court also observed

that “‘one cannot argue that a shape is functionally ad-

vantageous in order to obtain a utility patent and later

assert that the same shape is non-functional in order to

obtain trademark protection.” Id. 49a (quoting 1 J.

Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition § 7:89 (4th ed. 1996)).? Against this back-

drop, the District Court viewed the “expired utility patents

[as] especially strong evidence of the usefulness of the

dual-spring design”—‘“the most utilitarian aspect of MDI’s

sign stands”—and held that the alleged “trade dress is

functional as a matter of law,” and thus not protectible

under the Lanham Act. App. 55a (emphasis in original).

In so holding, the District Court also concluded that cloak-

ing MDI’s product configuration with trade dress protec-

tion would hinder competition. Id. 54a.

Both parties appealed. The Sixth Circuit affirmed the

District Court rulings on the trademark infringement and

antitrust claims, but reversed the dismissal of the trade

dress claim. In disposing of the latter claim, the Sixth

Circuit expressly recognized that “[a] circuit split exists

as to whether a utility patent disclosure forecloses trade

dress protection.” Id. 18a. “The Fifth, Seventh, and Fed-

eral Circuits have held or strongly suggested that a utility

patent disclosure does not prevent trade dress protection.”

Id. (citing cases). But “the Tenth Circuit, in an opinion

2 The District Court found “untenable” MDI’s argument that the

expired patents did not sufficiently disclose the dual-spring con-

figuration of the WINDMASTER sign stand, given that “MDI has,

in the past, enforced its rights in its * * * patents by enjoining

the manufacture of a product configuration virtually identical to

that being alleged to constitute trade dress in the instant case.”

App. 49a (emphasis added). See supra at 5.

3 As the District Court explained:

To prove a trade dress violation in contravention of section

43(a), a plaintiff must show, by a preponderance of the evi-

dence: 1) that the trade dress has obtained “secondary mean-

ing”; 2) that the trade dress of the two competing products

is confusingly similar; and 8) that the appropriated features

of the trade dress are primarily non-functional. [App. 32a]

The District Court concluded, as a matter of law, that this test

was not met. See id. 55a-56a, We focus here on the functionality

element of the test, which—as the District Court expressly held—

independently disposes of MDI’s trade dress claim. See id. 56a.

that preceded the contrary rulings of the other three cir-

cuits, has held that ‘[w)here a product configuration is a

significant inventive component of an invention covered

by a utility patent * * * it cannot receive trade dress pro-

tection under section 43(a).’” Id. 19a (quoting Vornado,

58 F.3d at 1500). The Sixth Circuit dismissed the Tenth

Circuit position and aligned itself with the circuits adopt-

ing the contrary view. Id.

The Sixth Circuit disagreed that MDI’s expired patents

precluded trade dress protection, holding that the District

Court should have applied “a functional analysis of the

trade dress unencumbered by any presumptions’ ——

from the expired patents. Id. 19a (emphasis added). The

court also criticized the District Court for focusing on

the utility of the configuration covered by the expired

patents, rather than the product’s “entire look.” Id. Even

though the dual-spring base is essentially the only product

element that distinguishes WINDMASTER sign stands

from the competition—“every other competitor uses the

other elements of a single upright, four leg members ex-

tending out at angles, and a sign”—the Sixth Circuit held

that the expired patents covering this configuration did not

bar trade dress protection. 7d. 20a. The court further

rejected the District Court’s conclusion that cloaking

MDI’s sign stands with trade dress protection would limit

competition. Id. 21a.‘

This petition followed.

REASONS FOR GRANTING THE WRIT

I. AS THE SIXTH CIRCUIT EXPRESSLY ACKNOWL-

EDGED, THE CIRCUITS ARE SPLIT ON WHETHER

A PRODUCT CONFIGURATION COVERED BY AN

EXPIRED UTILITY PATENT IS ENTITLED TO

TRADE DRESS PROTECTION.

1. This Court has stated that a “principal purpose for

which we use our certiorari jurisdiction * * * is to re-

solve conflicts among the United States courts of appeals.”

Braxton v. United States, 500 U.S. 344, 347 (1991).

See S. Ct. Rule 10(a). Typically, a circuit conflict must

be inferred from an analysis of allegedly conflicting cases.

Here, however, the Sixth Circuit expressly acknowledged

that “[a] circuit split exists as to whether a utility patent

vents its protection as trade dress, even if the configura-

tion is nonfunctional.” Vornado, 58 F.3d at 1510 (em-

phasis added). After carefully weighing the policies

served by the patent and trademark laws, the court of

appe.is grounded this holding on its conclusion “that core

patent principles [would] be significantly undermined” by

allowing trade dress protection for such a configuration.

at 1509. “The ‘centerpiece of federal patent policy’

is in its ‘ultimate goal of public disclosure and use.’” /d.

at 1507 (quoting Bonito Boats, 489 U.S. at 157). Ex-

tending “trade dress protection” to the subject of a utility

patent “directly interfere{s] with the public’s ability to

practice patented inventions after the patents have ex-

pired, and * * * undermines the principle that ideas in the

public domain should stay there.” Id. at 1508.

tection. Under existirg jurisprudence, however, “[c]on-

parlance.” Id. at 1506. This is because, for trademark

purposes, functionality is defined in terms of competitive

need. See Qualitex Co. v. Jacobson Prods. Co., 514

U.S. 159, 165 (1995). “If competitors need to be able

being functional and nonfunctional with the vagaries of

the marketplace.” Jd. at 1510 n.20.

selling a grill with the same configuration, Vornado sued

under the Lanham Act, claiming that its spiral grill was

entitled to trade dress protection. The Tenth Circuit held

that because the patented spiral configuration was a “sig-

nificant inventive aspect” of Vornado’s fans, “patent law

prevents its protection as trade dress, even if the configu-

ration is nonfunctional [in trademark parlance].” /d. at

1510.5

5 Zip Dee, Inc. v. Dometic Corp., 981 F. Supp. 602, 611 (N.D.

Ill. 1996), embraced the rationale of Vornado, and stated its basic

inquiry as follows: “whether the granting of a trademark (and

tion covered by a utility patent, the Sixth Circuit attaches

no weight to the compelling policies served by patent law

and, instead, grounds the determination solely on trade-

mark’s functionality doctrine. See id. (rejecting the Tenth

Circuit’s “per se rule” in favor of “a functional analysis

of the trade dress unencumbered by any presumptions’)

(emphasis added) .*

petual monopoly on the use of the key dual-spring base of MDI’s

sign stands, even though that configuration is plainly “a significant

inventive component of [the] invention.” Vornado, 58 F.3d at 1500.

©The Sixth Circuit decision in this case followed in line with

Esercizio v. Roberts, 944 F.2d 1235 (6th Cir. 1991), cert. denied,

fe =

HEE

tLe

pre

lit

c. Like the Sixth Circuit, the Seventh Circuit has held

“that there is no per se prohibition against features dis-

closed in a patent receiving trade [dress] protection after

the patent has expired.” Thomas & Betts Corp. v. Pan-

duit Corp., 138 F.3d 277, 288 (7th Cir. 1998). Thomas

& Betts involved a dispute between the Nation’s largest

suppliers of cable ties. Thomas & Betts obtained a patent

on a two-piece cable tie, and used it to great effect. After

the patent expived, Panduit introduced its own two-piece

cable tie. Thoruas & Betts sued to enjoin the sale of

Panduit’s product, claiming trade dress infringement under

the Lanham Act. The district court reviewed at length

the relationship between patent and trademark law and

held—in line with the Tenth Circuit rule—that “{a]s a

matter of law, a product configuration that is claimed or

otherwise disclosed within an expired utility patent is not

entitled to trademark protection.” 935 F. Supp. 1399,

1410 (N_D. Til. 1996).

Like the Tenth Circuit, the district court concluded

that the functionality doctrine did not adequately resolve

the conflict between the patent and trademark laws.

7 Moreover, as the Vornado court recognized, see 58 F.8d at

07, and other courts have echoed:

functionality doctrine.” Jd. “[{T)he fact that a feature

sought to be trademarked was contained in an expired

patent is ‘some evidence’ of functionality,” but no more.

Id. at 289."

[Functionality is really not a foolproof method of patrolling

the line between the patent and trademark laws. That is be-

cause the showing required of a person seeking a patent is

that an invention is useful—that it serves an identified bene-

ficial purpose. By contrast, functionality for trademark pur-

poses is based on competitive need. * * * Thus usefulness in

the patent context does not equal functionality in the trade-

mark context. [Zip Dee, 981 F. Supp. at 608 (citation

In so holding, the Seventh Circuit relied on its prior

decision in Kohler Co. v. Moen, Inc., 12 F.3d 632 (7th

Cir. 1993), where the court held that product configura-

tions in general are entitled to trademark protection.

Dissenting in that case, Judge Cudahy forcefully articu-

iated the basis for the contrary approach adopted by the

Tenth Circuit:

[W]hatever new law has been developed in

courts to authorize the use of product

trademarks as a substitute for design

out sanction from the Supreme Court.

has spoken repeatedly to disfavor the

competition law to avoid the “limited

vision of the Patent Clause. The Court

sized the importance of the right

aspect of the Patent Clause. The

constitutionally protected and is absolutely

to the successful long-term operation of a free and

competitive economy. [/d. at 651.]

Like the Tenth Circuit, Judge Cudahy also concluded that

trademark’s “extremely fuzzy” functionality doctrine was

an unsuitable means of protecting the compelling interests

served by the patent laws. Id. at 649.

rary

sd oF

SBA

Co., 123 F.3d 246 (Sth Cir. 1997), cert. denied, 523

U.S. 1118 (1998). In Sunbeam the Fifth Circuit upheld

an injunction under the Lanham Act barring one of Sun-

beam’s competitors from manufacturing and marketing a

stand mixer that “replicated the product configuration of

a stand mixer made by Sunbeam.” Id. at 249. In doing

so, the court of appeals held “that the fact that the Amer-

ican Classic Mixmaster® incorporates functional fea-

Seventh and Tenth Circuits are fundamentally divided on how to

resolve the question presented. See 1 McCarthy, supra, §6:10 at

6-18 (“In the Thomas & Betts case, the Seventh Circuit rejected

the [Tenth Circuit] view” in Vornado).

render it functional”). This analysis plainly conflicts with

the Tenth Circuit rule, as the Fifth Circuit has subse-

quently acknowledged. See Pebble Beach Co. v. Tour 18

I Ltd., 155 F.3d 526, 549 & n.16 (Sth Cir. 1998) (citing

Vornado and noting that Fifth Circuit applies different

“trade-dress analysis” than Tenth Circuit in assessing

“federal trademark protection for product designs and

configurations” ) .

e. The Federal Circuit has also noted the circuit con-

flict and rejected the Tenth Circuit position. In Midwest

Industries, Inc. vy. Karavan Trailers, Inc., 175 F.3d 1356,

1364 (Fed. Cir.), cert. denied, 120 S. Ct. 527 (1999),

the court of appeals held that the “availability of trade

dress protection does not depend on whether a patent

has been obtained for the product or feature in question.”

The district court in that case—applying Vornado—had

held the plaintiff was not entitled to trade dress protec-

tion for a product configuration (a winch mounted on

trailers used to haul watercraft) covered by a patent.

See id. at 1358. The Federal Circuit reversed, specifically

rejecting the Tenth Circuit’s “holding to the contrary” in

Vornado: “As we view the interaction between patent

law and the Lanham Act, [the fact that the product con-

figuration is covered by a utility patent] is not a sufficient

basis on which to deny Lanham Act protection to trade

dress that would otherwise qualify for such protection.”

Id. at 1364 (emphasis added). According to the Federal

Circuit, trade dress protection remains available for a

product configuration—tregardless of whether it is covered

by an expired utility patent—as long as it passes trade-

mark’s functionality analysis. /d.

In Karavan Trailers the Federal Circuit adopted its own

rule in reconciling patent law and the Lanham Act. /d.

at 1358-61. Prior to that time, the court applied the law

of the regional circuit from which the appeal arose. Thus,

in Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1579

(Fed. Cir. 1995), the Federal Circuit—applying Eleventh

Circuit law—trefused to allow trade dress protection for a

product configuration that was covered by a utility patent.

In so holding, the Federal Circuit ruled that the public’s

right to copy and use inventions covered by expired pat-

ents would be frustrated by allowing trade dress protec-

tion in these circumstances:

Enforcing a “trade dress” right defined, as it was

here, to be essentially coextensive with, and in fact

broader than, claim 1 of the" ‘944 patent would

frustrate that right because trade dress protection

may last indefinitely.and thus competitors could not

effectively “copy and ust” the invention after the

patent expires. * * * [E]}nforcing such a trade dress

would effectively extend the life of the patent. [Id.

at 1580.]

The disparate analyses in Karavan Trailers and Elmer

underscore the conflict and confusion on the question pre-

sented. As the Federal Circuit recognized, its decision in

Karavan Trailers to apply its own law rather than regional

circuit precedent to such questions will do nothing to

alleviate the conflict, because “questions involving con-

flicts between patent law and other causes of action can

and do arise in cases over which this Court does not have

appellate jurisdiction.” 175 F.3d at 1361. What has

resulted is-what the Federal Circuit warned could happen

—“that district courts and litigators could find themselves

confronting two differing lines of authority when faced

with conflicts between patent law and state or federal

trademark claims.” /d.

f. The Ninth Circuit has carved out a middle ground

in the circuits. While allowing trade dress protection for

Ass'n Vv. Champion Discs Inc., 158 F.3d 1002, 1006 (9th

Cir. 1998) (emphasis added). See also Clamp Mfg. Co.

v. Enco Mfg. Co., 870 F.2d 512, 516 (9th Cir.)

(an expired utility patent “weigh[{s] strongly” on func-

tionality), cert. denied, 493 U.S. 872 (1989); but cf.

Thomas & Betts, 138 F.3d at 289 (“the fact that a fea-

ture sought to be trademarked was contained in an ex-

pired patent is ‘some evidence’ of functionality”) (em-

phasis added). In Disc Golf the court of appeals—in

the course of holding that a product design covered by

an expired utility patent was not entitled to trade dress

protection—also recognized that “‘a kind of estoppel

arises’” when one “ ‘argue{s] that a shape is functionally

advantageous in order to obtain a utility patent and

later assert{s] that the same shape is non-functional in

order to obtain trademark protection.”” 158 F.3d at

1008 (quoting 1 McCarthy, supra, § 7:89).

In rejecting MDI’s trade dress claim, the District Court

below essentially followed the Ninth Circuit approach.

See App. 49a (existence of expired utility patent is en-

titled to “great weight” in functionality analysis, and gives

rise to a “kind of estoppel”) (quoting 1 McCarthy, supra,

§ 7:89). As discussed, however, the Sixth Circuit flatly

rejected this approach, and—far from according great

weight to MDI’s expired utility patents—held that in

determining whether MDI is entitled to trade dress pro-

tection, the District’Court should have applied “a func-

tional analysis of the trade dress unencumbered by any

presumptions” stemming from the expired patent. Id.

19a (emphasis added).

3. The circuit conflict on the question presented by

this petition is direct and undeniable. It has been ex-

ptessly acknowledged by the circuits, see App. 18a; Kara-

van Trailers, 175 F.3d at 1364, and has been widely

reported by commentators.’ Moreover, the conflict is out-

come determinative here. MDI is plainly not entitled to

trade dress protection under the Tenth Circuit rule. MDI's

trade dress claim also fails as a matter of law under the

Ninth Circuit approach. But MDI’s sign stand may be

cloaked with trade dress protection under the rule fol-

lowed in the Fifth, Seventh, Federal, and now Sixth Cir-

cuits—nullifying the nearly 100-year-old right of the pub-

lic to copy and use inventions after their patent protection _

expires. Guidance is sorely needed from this Court.

9 See, ¢.g., 1 McCarthy, supra, § 6:10 (recognizing conflict) ; R.

. v. Panduit Corp.—

;

323, 340 (1999) (“Courts are

split on the issue of whether product configurations that formerly

received patent protection should also receive trademark protec-

tion.”) ; Judith Beth Prowda, The Trouble With Trade Dress Pro-

tection of Product Design, 61 Alb. L. Rev. 1309, 1310 (1998)

(“Because of the split among courts on the standards of protecta-

bility of trade dress in product configuration cases, the issue seems

ripe for Supreme Court resolution in the near future. Without

direction from the Supreme Court * * *, courts likely will continue

to chart their own course.”); Manotti L. Jenkins, A Request to

the High Court: Don’t Let the Patent Laws Be Distracted By A

Flashy Trade Dress, 15 J. Marshall J. Computer & Info. L. 323,

824 (1997) (“[T]he Supreme Court must resolve a conflict between

two important federal statutes in intellectual property law: the

Patent Act and the Lanham Act. As is shown below, the need for

Court resolution of this conflict is even more glaring in light of

the disagreement among the federal circuits on how best to solve

the problem.”); Michael S. Pérez, Reconciling the Patent Act and

the Lanham Act: Should Product Configurations Be Entitled to

Trade Dress Protection After the Expiration of a Utility or De-

sign Patent?, 4 Tex. Intell. Prop. J. 383, 884 (1996) (“Given the

split among circuits, the issue appears ripe for Supreme Court

intervention.”).

I. THE SIXTH CIRCUIT DECISION CONFLICTS

WITH NEARLY A CENTURY’S WORTH OF THIS

COURTS PRECEDENT ESTABLISHING THE

PUBLIC'S RIGHT TO COPY AND USE AN IN-

VENTION UPON EXPIRATION OF THE PATENT.

1. The need for plenary review is heightened still fur-

ther by the fact that the Sixth Circuit decision conflicts

with this Court’s own decisions. See S. Ct. Rule 10(c).

This Court has “long held that after the expiration of a

federal patent the subject matter of the patent passes to

the free use of the public as a matter of federal law.”

Bonito Boats, 489 U.S. at 152 (citing Coats v. Merrick

Thread Co., 149 U.S. 562 (1893); Singer Mfg. Co. v.

June Mfg. Co., 163 U.S. 169 (1896); Kellogg Co. v.

National Biscuit Co., 305 U.S. 111 (1938)). Yet, as the

Tenth Circuit observed in Vornado, 58 F.3d at 1505,

“distinguishing [this line of cases] has become a veritable

jurisprudence art form in recent years [among the lower

courts ].”

2. The “federal patent system * * * embodies a care-

fully crafted bargain”: an inventor “who is willing to

reveal to the public the substance of his discovery” may

be granted, in the form of a patent, a limited “right to

exclude others from making, using, or selling [his] inven-

tion,” but once that limited monopoly expires “the inven-

tion inures to the people, who are thus enabled without

restriction to practice it and profit by its use.” Bonito

Boats, 489 U.S. at 150-151 (quotations omitted). See

Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 63-64

(1998). Under this system—and “implicit in the Patent

Clause itself”’—‘“exploitation of ideas [is] the rule, to

which the protection of a federal patent is the exception.”

Bonito Boats, 489 U.S. at 151. A long line of this

Court’s cases proves this rule.

Thus, for example, in Singer Manufacturing Co. v.

June Manufacturing Co., 163 U.S. at 185, the Court

observed:

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 con-

dition that the patent is granted. It follows, as a

matter of course, that on 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.

Singer arose when—after expiration of Singer’s patents

—a competitor introduced a sewing machine with the

same “general external appearance” as Singer’s. Jd. at

170. Singer sued to enjoin the sale of the competitor’s

machine under state law on the ground that, inter alia,

the product was confusingly similar to Singer’s. Id. This

Court recognized “that the necessary result of the exist-

ence of [Singer’s] patent was to give to the Singer ma-

chines, as a whole, a distinctive character and form which

caused them to be known as Singer machines”—i.e., in

modern parlance, trade dress. Jd. at 179. But in view of

the public’s right to copy and use the subject of an ex-

pired patent, the Court rejected the notion that a “man-

ufacturer, on the cessation of [its patent] monopviy, [has]

the right to prevent the making by another of a like

machine in the form in which it was made during the life

of the patents.” Jd. at 184.

Kellogg is to the same effect. There, the National Bis-

cuit Company brought suit under state unfair competition

law to enjoin Kellogg’s sale of shredded wheat in the

same “generally known * * * pillow-shaped form” as

National Biscuit’s cereal. 305 U.S. at 113. National Bis-

cuit had obtained product and process patents on its

shredded wheat cereal. This Court held that Kellogg

had the right to copy the biscuit upon expiration of the

patents. As Justice Brandeis wrote for the Court:

The plaintiff has not the exclusive right to sell shred-

ded wheat in the form of a pillow-shaped biscuit—

the form in which the article became known to the

public. That is the form in which shredded wheat

was made under the basic patent. * * * Hence, upon

expiration of the patents the form * * * was dedi-

cated to the public. [Jd. at 119-120.2°]

In Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225,

230 (1964), the Court reaffirmed that “when the patent

expires the monopoly created by it expires, too, and the

right to make the article—including the right to make it

in precisely the shape it carried when patented—passes to

the public.” That case involved a dispute over the sale

of pole lamps. Stiffel secured a patent on this type of

lamp, and used it with “decided commercial success.” Jd.

at 226. When Sears marketed a “substantially identical

lamp,” Stiffel sued for patent infringement and unfair

competition under state law. Because it was determined

that Stiffel’s patent was invalid, this Court held that Sears

“had every right to [copy its pole lamp] under the federal

patent laws. That Stiffel originated the pole lamp and

made it popular [was] immaterial.” Jd. at 231.

The Court further held that state unfair competition

law could not be invoked to defeat the public’s right to

copy under the patent laws. “Just as a State cannot

encroach upon the federal patent laws directly, it can-

not, under some other law, such as that forbidding unfair

competition, give protection of a kind that clashes with

the objectives of the federal patent laws.” Jd. Stiffel

sought “perpetual protection” for its pole lamp under

unfair competition law, when “federal law grants only

14 or 17 years’ protection to genuine inventions.” Id. at

232. According such protection “would be too great an

10 See also Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249,

256 (1945) (“we have held that the patentee may not * * * 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”).

encroachment on the federal patent system to be toler-

ated.” Id.™

Bonito Boats underscores the continuing vitality of these

principles. There, the Court invalidated a state law mak-

ing it unlawful to use a particular process to duplicate

an unpatented boat hull. As the Court explained, the

law at issue “substantially restrict[ed] the public’s ability

to exploit ideas that the patent system mandates shall be

free for all to use,” and thus intolerably altered the “care-

ful balance” underlying the federal patent system. 489

U.S. at 167. In so holding, the Court was “troubled” by

the lower court’s statement that “the patent laws say

‘nothing about the right to copy or the right to use.’”

Id. at 164 (quoting decision). “For almost 100 years,”

the Court admonished, “it has been established that in

the case of an expired patent, the federal patent laws do

create a federal right to ‘copy and to use.’” Id. at 165

(emphasis in original).

3. As the Tenth Circuit observed in Vornado, 58 F.3d

at 1505, while it is possible “to identify distinctions be-

tween those cases and the one before us today,” it is

“impossible to ignore the clear and continuing trend [that

this Court’s precedents] collectively manifest in favor of

the public’s right to copy.” The Sixth Circuit decision

below—as well as the decisions of the other circuits that

allow trade dress protection for a product configuration

covered by an expired patent—buck this clear trend, and

“substantially restrict[] the public’s ability to exploit ideas

that the patent system mandates shall be free for all to

11 Compeo Corp. Vv. Day-Bright Lighting, Inc., 376 U.S. 284

(1964), was decided the same day as Sears and laid down the same

law. See id. at 287 (“[W]hen an article is unprotected by a patent

or a copyright, state law may not forbid others to copy that article.

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 federal

patent and copyright laws leave in the public domain.”).

(this Court’s] precedents”) (quotation omitted); Kohler

Co. Vv. Moen, Inc., 12 F.3d at 647 (discussing conflict

with this Court’s decisions) (Cudahy, J., dissenting) ;

Esercizio v. Roberts, 944 F.2d at 1253 (Kennedy, J.,

dissenting) (same).

Boats establish, the public’s—and thus TrafFix’s—right

to copy the configuration made popular by MDI may not

be defeated by cloaking the subject of MDI’s patents

with “perpetual protection” under trademark law, when

patent law “grants only * * * 17 years’ protection” for

this configuration. Sears, 376 U.S. at 232. A contrary

result “would be too great an encroachment on the federal

patent system to be tolerated.” Jd.”

copying of the article itself.” Id. at 232-223. When Sears was

decided, trade dress was a much narrower concept than it is today;

indeed, as Sears indicates, it was generally limited to a product's

“packaging” or “markings.” Id. The doctrine had not yet evolved

to the point where it is today, extending to a product’s configura-

Hah

lif

Paed

;

Vornado, 58 F.3d at 1508. See also ’

cating, Inc., 67 F.3d at 1580, quoted supr

Geremia, supra, at 805 (unless courts follow

Circuit approach, “it is likely that an onslaught of

patents expired) that it received in invoking the patent

laws to block the sale of Winn-Proof’s sign stands (before

its patents expired). See supra at 5.

infringement, trade dress is a judge-made concept that

only recently has evolved to the point where it encom-

passes product configuration or design. See Wal-Mart

Stores, Inc. v. Samara Bros., Inc., 68 US.LW. at ——;

Mohr, supra, at 370-371. In any event, even if Congress

did intend the Lanham Act to extend this far, the Con-

limited Times.” U.S. Const. art. I, § 8, cl 8 (emphasis

added). Thus, “Congress may not create patent monop-

olies of unlimited duration.” Bonito Boats, 489 U.S. at

146. See I1.P. Lund Trading ApS vy. Kohler Co., 163

F.3d 27, 51 (ist Cir. 1998) (“A central limitation on

Stitution itself, is that it is limited in time.”) (Boudin, J.,

concurring ) .4

Congress may not contravene the Patent Clause directly

by issuing patents of unlimited duration, and it may not

do so indirectly by cloaking the discoveries embodied in

patents with trademark protection once they have entered

the public domain.* This Court has already recognized

as much, in the context of discussing the purpose behind

trademark’s functionality doctrine:

It is the province of patent law, not trademark law,

to encourage invention by granting inventors a mo-

nopoly over new product designs or functions for a

limited time, 35 U.S.C. §$§ 154, 173, after which

competitors are free to use the innovation. If a

product’s functional features could be used as trade-

marks, however, a monopoly over such features

could be obtained without regard to whether they

qualify as patents and could be extended forever (be-

13 The Framers’ decision to limit Congress’ patent power to the

grant of monopolies for “limited Times” was by no means fortui-

tous. As this Court has explained, the Patent Clause “was written

against the backdrop of the practices—-eventually curtailed by the

Statute of Monopolies—of the Crown in granting monopolies to

court favorites in goods or businesses which had long before been

enjoyed by the public.” Graham v. John Deere Co., 383 U.S. 1,

5-6 (1966) (citing Peter Meinhardt, Inventions, Patents and Mo-

nopoly 30-35 (London 1946)).

14 See Sears, 376 US. at 231; Seott Paper Co., 326 U.S. at 256

(“any attempted * * * continuation in the patentee * * * of the

patent monopoly, after the patent expires, whatever the legal device

employed, runs counter to the policy and purpose of the patent

law”) (emphasis added).

cause trademarks. may be renewed in perpetuity).

{Qualitex, 514 U.S. at 164-165.]

In relegating the determination whether a product con-

figuration covered by an expired patent is entitled to

trade dress protection to a run-of-the-mine functionality

analysis, the Sixth Circuit—and other circuits that follow

the same basic approach—have undermined broader in-

stitutional concerns reflected in this Court’s cases. “Ap-

plying a strict rule—one that precludes from trade dress

protection any feature or configuration disclosed in a

utility patent * * *—would best effectuate patent goals

by ensuring that all matters disclosed in a patent are free

for all to copy and use.” Mohr, supra, at 429. Such a

“strict rule” also would “prevent [these types of cases]

from arising in the first place,” since “[i]nventors would

have a relatively clear and predictable standard, and care-

ful claims draftsmanship and prosecution would prevent

the sacrifice of potential trade dress rights wher obtaining ~- ance

utility patent protection.” Note, Recent Case (Vornado),

109 Harv. L. Rev. 1457, 1462 (1996). “Anything less

than a strict rule,” on the other hand, would make the

market “hesitant to take advantage of inventions coming

off patent for fear of [Lanham Act litigation],” stifling

competition. Thomas & Betts Corp., 935 F. Supp. at 1408.

See Wal-Mart Stores, 68 U.S.L.W. at (“[c ompeti-

tion is deterred * * * not merely by successful suit but

by the plausible threat of successful suit”).

Promoting litigation rather than competition is, to say

the least, not what Congress—let alone the Framers—

had in mind in establishing the patent system.

IIL THE CIRCUIT CONFLICT CONCERNS A MATTER

OF OVERRIDING IMPORTANCE AS TO WHICH

NATIONAL UNIFORMITY IS REQUIRED.

“One of the fundamental purposes behind the Patent

and Copyright Clauses of the Constitution was to promote

national uniformity in the realm of intellectual property.”

Bonito Boats, 489 U.S. at 162. See Sears, 376 US. at

231 n.7 (it is “[t}he purpose of Congress to have national

uniformity in patent and copyright laws”). The acknowl-

edged circuit split on the question presented seriously

impedes such uniformity, allowing—indeed, encouraging

—the public to copy and use product configurations cov-

ered by expired patents in some parts of the country, but

subjecting the public to liability for trade dress infringe-

ment for doing so in others.

This lack of uniformity is especially intolerable in light

of the undeniable importance of the question presented.

“[I)}mitation and refinement through imitation are both

necessary to invention itself and the very lifeblood of a

competitive economy.” Bonito Boats, 489 U.S. at 146.

The position adopted by the Sixth Circuit below—and

the other circuits that allow trade dress protection for the

subject of an expired utility_patent—penalizes imitation

~-—~‘and” thus ‘stifles competition. See Kohler Co. v. Moen,

Inc., 12 F.3d at 644 (“This is a crucially important issue

for the maintenance of a free and competitive economy.”)

(Cudahy, J., dissenting). Similarly, “{a] central tenet

of intellectual property protection in the United States

is the existence of a bargain between society on the one

hand, and inventors * * * on the other.” Mohr, supra,

at 344. This bargain “encourages both the creation and

public disclosure of new and useful advances in technology,

in return for an exclusive monopoly for a limited period

of time.” Pfaff v. Wells Electronics, Inc., 525 U.S. at 63-

64. According product configurations that are the subject

of expired patents perpetual trade dress protection radi-

cally alters this bargain, shortchanging the public—which

grants patent monopolies only on the condition that, when

they expire, the public has the right to copy the invention

as it sees fit.

Given the exceptional importance of the question pre-

sented, it is not surprising to find that it has already been

the subject of extensive scholarly commentary“—and

litigation. As the breadth of the conflict implicated by

this case underscores, “[nJumerous cases in recent years

have struggled with the relationship between patent and

15 The academic commentary grappling with the question pre-

sented by this case is practically legion. See, e.g., 1 McCarthy, supra,

86:10, Utility Patent and Trademark Conflict: Product Shapes;

Gwendolyn Gill, Through the Back Door: Attempts to Use Trade

Dress to Protect Expired Patents, 67 U. Cin. L. Rev. 1269 (1999);

R. Lawton Jordan III, Thomas & Betts Corp. v. Panduit Corp.—

Toward A Coherent View of Trade Dress Protection for Product

Configuration, 6 J. Intell. Prop. L. 323 (1999); Todd R. Geremia,

Protecting the Right to Copy: Trade Dress Claims for Configura-

tions in Expired Utility Patents, 92 Nw. U. L. Rev. 779 (1998);

Judith Beth Prowda, The Trouble With Trade Dress Protection of

Product Design, 61 Alb. L. Rev. 1309 (1998); Manotti L. Jenkins,

A Request to the High Court: Don’t Let the Patent Laws Be

Distracted By A Flashy Trade Dress, 15 J. Marshall J. Computer

& Info. L. 323 (1997); Willajeanne F. McLean, Opening Another

Can of Worms: Protecting Product Configuration as Trade Dress,

66 U. Cin. L. Rev. 119 (1997); Kevin E. Mohr, At the Interface

of Patent and Trademark Law: Should a Product Configuration

Disclosed in a Utility Patent Ever Quality for Trade Dress Protec-

tion?, 19 Hastings Comm. & Ent. L.J. 339 (1997); Ruby Ann

David, Federal Preemption of a Federal Statute: The Case of

Vornado Air Circulation Systems v. Duracraft Corp., 21 J. Corp. L.

Santa Clara L. Rev. 258 (1996); Andrea Falk, Harmonization of

the Patent Act and Federal Trade Dress Law: A Critique of

Vornado Air Circulation Sys. v. Duracraft Corp., 21 J. Corp. L.

827 (1996); Kerrie A. Laba, Have Trade Dress Infringement

Claims Gone Too Far Under the Lanham Act?, 42 Wayne L.

Rev. 1649 (1996); David W. Opderbeck, Form and Function:

Protecting Trade Dress Rights in Product Configurations, 20

Seton Hall Legis. J. 1 (1996); Michael S. Pérez, Reconcil-

ing the Patent Act and the Lanham Act: Should Product Con-

figurations Be Entitled to Trade Dress Protection After the

Expiration of a Utility or Design Patent?, 4 Tex. Intell. Prop. J.

383 (1996); Michael E. Peters, When Patent and Trademark Law

Hit the Fan: Potential Effects of Vornado Air Circulation Systems,

Inc. v. Duracraft Corp. on Legal Protection for Industrial Design,

14 Temp. Envtl. L. & Tech. J. 123 (1996); Anthony E. Dowell,

Trade Dress Protection of Product Designs: Stifling the Progress

of Science and the Useful Arts for an Unlimited Time, 70 Notre

Dame L. Rev. 137 (1994). Like the federal circuits, the commenta-

tors are deeply divided on this important issue, too.

trademark law in the context of trade dress.” Jordan,

supra, at 324 (footnote omitted). And, as one com-

mentator has observed, the fact that some courts—includ-

ing the Sixth Circuit below—have embraced “trade dress

infringement claims involving product configurations dis-

closed in expired utility patents” is likely to result in an

“onslaught” of such claims in the future. Geremia, supra,

at 805. See also Gill, supra, at 1295 (discussing “sheer

number cases involving the intersection of patent and

trademark law (under the guise of trade dress)”). The

question presented, therefore, is not going to resolve it-

self. Quite the contrary, it only has become more press-

ing with the issuance of decisions—such as the Sixth Cir-

cuit decision below—greatly expanding the law of trade

dress and granting established businesses a new and power-

ful weapon against firms trying to enter the marketplace.

The federal circuits are sharply divided on whether

federal trade dress protection extends to a product con-

figuration covered by an expired utility patent. The courts

themselves have acknowledged the split. The Sixth Cir-

cuit decision below not only deepens the conflict, but also

contravenes this Court’s own precedents. The question

presented is undeniably important, both as an economic

and doctrinal matter. Under this Court’s customary cri-

teria, certiorari is plainly warranted.

CONCLUSION

For the foregoing reasons, the petition for a writ of

certiorari should be granted.

JEANNE-MARIE MARSHALL

RICHARD W. HorFFMANN

REISING, ETHINGTON, BARNES,

KISSELLE, LEARNMAN &

McCULLocH, P.C.

201 W. Big Beaver—Suite 400

Troy, Michigan 48084

(248) 689-3500

* Counsel of Record

Respectfully submitted,

JOHN G. RoBERTs, JR.*

GREGORY G. GARRE

HOGAN & HARTSON L.L.P.

555 Thirteenth Street, N.W.

Washington, D.C. 20004

(202) 637-5810

Counsel for Petitioner

APPENDICES

‘=e! eT.

APPENDIX A

UNITED STATES COURT OF APPEALS

SIXTH CIRCUIT

Nos. 97-1148, 97-2096 and 97-2097

MARKETING DISPLAYS, INCORPORATED,

Plaintiff-A ppellee/Cross-A ppellant,

Vv.

TRAFFIX Devices, INCORPORATED,

Defendant-A ppellant/Cross-A ppellee.

Argued Sept. 21, 1999

Decided Dec. 29, 1999

Before: BOGGS and DAUGHTREY, Circuit Judges;

and McKINLEY,* District Judge.

OPINION

BOGGS, Circuit Judge.

This consolidated appeal concerns three related but

distinct disputes between the parties. Marketing Devices,

Inc. (owner of the WindMaster trademark) claims that

TrafFix Displays, Inc. (owner of the WindBuster trade-

mark) has infringed its trademark, infringed its trade

* The Honorable Joseph H. McKinley, Jr., United States District

Judge for the Western District of Kentucky, sitting by designation.

dress, and violated federal unfair competition laws in the

process. TrafFix denies these charges, and counterclaims

that MDI, by aggressively pursuing sham litigation to ex-

tend its patent, has violated § 2 of the Sherman Antitrust

Act, which prohibits attempts to monopolize. MDI’s un-

fair competition claim turns on the same evidence as its

trademark and trade dress claims, so the three real dis-

putes raised for consideration are 1) infringement of the

WindMaster trademark, 2) infringement of the Wind-

Master trade dress, and, should those claims prove suffi-

ficiently unfounded, 3) MDI’s alleged attempt to monopo-

lize through sham litigation. TrafFix appeals the district

court’s order granting summary judgment against Traf-

Fix and enjoining use of its infringing trademark, as well

as the dismissal of its antitrust counterclaim. MDI cross-

appeals the district court’s grant of summary judgment to

TrafFix on MDI’s trade dress and federal unfair competi-

tion claims.

We find no reason to disturb the district court’s order

permanently enjoining use of the WindBuster trademark.

However, because we believe that MDI established genu-

ine issues of material fact on its trade dress and unfair

competition claims, we reverse the district court’s sum-

mary judgment on those issues. In light of these holdings,

we affirm summary judgment for MDI on the antitrust

counterclaim brought by TrafFix.

MDI manufactures a number of different products for

sale to the highway construction industry. In particular,

it markets a popular, wind-resistant, mobile, traffic-sign

stand under the brand name WindMaster, which was trade-

marked July 5, 1977. The WindMaster sign’s design

depends in part on patents for a dual-spring base that

helps the sign resist windy conditions. MDI’s president

industry. Knowing that the technology protected by a

patent becomes available to the public after the patent

expires, TrafFix owner and president Jack Kulp sent an

MDI sign to Korea to be reverse engineered into a prod-

uct he could sell in competition with MDI. Before found-

ing TrafFix, Kulp had distributed WindMaster signs as an

employee at another company. TrafFix brought its sign

to market in the fall of 1994, but did not begin using the

brand name WindBuster until mid-1995. Kulp says he

chose the name WindBuster, Suggested by a business asso-

ciate, because it connoted wind resistance, he liked it, and

it sounded “like breaking and busting a bronco... .”

Before using the name, Kulp directed a patent attorney

to conduct a trademark search to determine the avail-

ability of WindBuster as a trademark for traffic signs.

tween WindBuster and the other marks, especially given

the “specialized field” and “discriminating” consumer base.

TrafFix then filed an application to register WindBuster

as a trademark with the United States Patent and Trade-

mark Office on February 10, 1994. The examining at-

torney found no similar registered mark that would bar

registration. The PTO published the proposed new trade-

mark in its Official Gazette on March 14, 1995, to pro-

vide an opportunity for anyone to object to the mark’s

use. No one objected within the post-publication period

prescribed by law. Thus, the PTO allowed the Wind-

Buster trademark on June 21, 1995. The trademark regis-

tration for WindBuster issued on January 9, 1996.

In the meantime, MDI quickly became aware of the

new trademark and filed its initial complaint in this case

on July 11, 1995. In an order dated January 13, 1997,

the district court granted summary judgment to MDI on

its trademark infringement claim, permamently enjoined

TrafFix’s use of the infringing mark, and dismissed Traf-

Fix’s antitrust counterclaim. Then, on June 12, 1997, the

district court granted summary judgment to TrafFix, dis-

missing MDI’s trade dress and unfair competition claims.

The parties filed timely notices of appeal on the issues

adverse to them, and the district court certified all lia-

bility issues as final for appeal on September 11, 1997.

This court reviews de novo the district court’s grant of

summary judgment as a trademark infringement and its

issuance of a permanent injunction. See Daddy's Junky

Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109

F.3d 275, 280 (6th Cir.1997). Because the district court

granted summary judgment rather than conducting a trial

on this issue, a de novo standard of review applies to the

entire appeal of the trademark and trade dress claims.

See id. at 279-80. Summary judgment on the antitrust

counterclaim is likewise reviewed de novo, but this court

reviews for abuse of discretion the district court’s decision

not to allow discovery on the antitrust counterclaim.

See Glen Eden Hosp., Inc. v. Blue Cross and Blue Shield

of Mich., Inc., 740 F.2d 423, 428 (6th Cir.1984).

Ill

As noted by the district court, to prevail on a motion

for summary judgment in its Lanham Act trademark in-

fringement claim, MDI must prove that the purportedly

infringing mark is “likely to cause confusion” in prospec-

tive purchasers’ minds. 15 U.S.C. § 1114; See Wynn Oil

Co. v. Thomas, 839 F.2d 1183, 1186 (6th Cir.1988);

See also Homeowners Group, Inc. v. Home Mktg. Spe-

cialists Inc., 931 F.2d 1100, 1107 (6th Cir.1991) (iden-

tifying the ultimate question as “whether relevant consum-

ers are likely to believe that the products or services

offered by the parties are affiliated in some way”);

Daddy's Junky Music, 109 F.3d at 280 (calling the

key question “whether the defendant's use of the disputed

mark is likely to cause confusion among consumers regard-

ing the origin of the goods offered by the parties”). Like-

lihood of trademark confusion can be a question of law

appropriate for determination on a motion for summary

judgment. See WSM, Inc. v. Tennessee Sales Co., 709

F.2d 1084, 1086 (6th Cir.1983).

The Sixth Circuit has identified eight factors as inform-

ing the likelihood of confusion inquiry:

1. strength of the plaintiff's mark;

relatedness of the goods;

similarity of the marks;

evidence of actual confusion;

marketing channels used;

likely degree of purchaser care;

defendant's intent in selecting the mark; [and]

8. likelihood of expansion of the product lines.

Frisch’s Restaurants, Inc. v. Elby’s Big Boy, 670 F.2d

642, 648 (6th Cir.1982), quoting AMF Inc. v. Sleekcraft

Boats, 599 F.2d 341, 348 (9th Cir.1979). None of these

factors is a sine qua non for the plaintiff's case, so the

defendant does not necessarily establish a genuine issue of

I AWA YH

material fact merely by disproving the existence of any

one—or even a majority of—the factors. See Wynn Oil,

839 F.2d at 1186. Rather, summary judgment for the

plaintiff is appropriate if, upon consideration of all fac-

tors, the district court determines that no reasonable jury

could fail to find that confusion of the marks would be

likely.

TrafFix argues that summary judgment is not appro-

priate whenever “there is a dispute regarding the under-

lying factors.” That argument misconstrues the holding in

Homeowners, where this court stated:

To resist summary judgment in a case where the

likelihood of confusion is the dispositive issue, a non-

moving party must establish, through pleadings, depo-

sitions, answers to interrogatories, admissions and

affidavits in the record, that there are genuine factual

disputes concerning those of the Frisch's factors

which may be material in the context of the specific

case.

Homeowners, 931 F.2d at 1107. This language does not

indicate that any disputed factor is enough, because any

one factor standing alone may not be material. Indeed,

the district court is apt to find, as it did here, that at

least one factor favors the nonmoving party. Since that

does not prevent an overall finding of confusion in the

movant’s favor, it would be illogical for a merely disputed

factor to preclude summary judgment. Homeowners must

be understood to mean that the nonmoving party’s burden

is to identify a disputed factor or set of factors whose

resolution would necessarily be dispositive on the likeli-

hood of confusion issue.

Without regard to the Frisch’s factors, TrafFix claims

its own registered mark earns a presumption against in-

fringement by virtue of the PTO’s allowing the Wind-

Buster trademark. It cites no case law in direct support

of this proposition. It cites an 1894 Supreme Court case

holding that where the question of priority of invention

im a patent case is doubtful, the decision of the patent

office must control. See Morgan v. Daniels, 153 U.S. 120

125, 14 S.Ct. 772, 38 L.Ed. 657 (1894). Even that case

expressly states that the patent office’s decision may be

overcome by testimony “sufficient to produce a clear con-

viction that [it] made a mistake.” Jd. at 129, 14 S.Ct.

772. The other case cited by TrafFix says that the pre-

sumption of a patent's validity is a statutory presumption

that the constant burden (notwithstanding the presump-

tion) is to convince the court of a patent's invalidity by

clear evidence, and that no deference is due a PTO deci-

sion with respect to evidence the PTO did not consider.

See American Hoist & Derrick Co. v. Sowa & Sons, 725

F.2d 1350, 1360 (Fed.Cir.1984). None of this helps

TrafFix. TrafFix argues for a procedural presumption

(or at least a reasonable inference drawn in its favor)

that the trademark examining attorney at the PTO ac-

tually examined the WindMaster mark and found that

the WindBuster mark did not infringe it. But, as the

district court noted, there is no evidence that the PTO

considered the WindMaster mark, and the PTO might

have made a mistake.

A brief review of the lower court findings on each of

the Frisch’s factors will demonstrate the validity of its

went conclusion that there is sufficient likelihood of con-

usion to warrant a permanent injunction

WindBuster mark. —e

A. Strength of the plaintiff's mark

TrafFix concedes the incontestable status of MDI’s

WindMaster trademark as to the goods listed in the regis-

tration certficate. The district court found that the prod-

uct description in the registration certificate was broad

enough to cover MDI’s traffic signs, especially given the

“virtually identical” language used in the certificate Traf-

Fix received for its WindBuster mark. This factor clearly

favors MDI.

B. Relatedness of the goods

TrafFix does not contest on appeal the district court’s

finding that the parties’ goods are related. Hence, this

factor clearly favors MDI.

C. Similarity of the marks

TrafFix relies on the PTO’s registering of its own Wind-

Buster trademark as suffiicently credible evidence of dis-

similarity to create a genuine issue of material fact. The

district court found that the WindMaster and Wind-

Buster marks connote the same meaning and resemble one

another in look and sound, especially given the similar

script and capitalization of the fifth letter and the domi-

nance of the “Wind” prefix. Moreover, as the district

court, held, such a dominant impression receives great

weight in determining the likelihood of confusion. See

Kangol v. Kangaroos U.S.A. Inc., 974 F.2d 161, 163

(Fed.Cir.1992). Indeed, it would be difficult for TrafFix

to adopt a mark that is closer to WindMaster than is

WindBuster. This factor favors MDI.

D. Evidence of actual confusion

TrafFix contends that the lack of evidence of actual

confusion precludes summary judgment on likelihood of

confusion. Because the two parties had been competing

with the similar marks for over two years when summary

judgment was briefed, TrafFix also argues for an infer-

ence that significant concurrent sales means that no like-

lihood of confusion has existed. Alternatively, TrafFix

9a"

suggests that isolated evidence of actual confusion means

little given the length of time during which the marks

competed. The district court appropriately refused the

invitation to draw an inference of no actual confusion

from the dearth of evidence, because the marks had not

competed against one another for nearly as long as marks

in prior cases where such an inference has been drawn.

Moreover, because a Lanham Act case only requires proof

of pay en and not actual confusion, this factor

is not as central as TrafFix » ¢

Music, 109 F.3d at 284. wijohiaaaiaiiemel

The district court deemed as hearsay and refused to

admit into evidence the declarations of MDI employees

attesting to telephone conversations in which purchasers

called asking about WindBuster signs.! The court accepted

a declaration from a purchaser stating that he assumed

WindBuster was an MDI product, but called the testimony

de minimis proof. However, even one case of actual

confusion can be significant. See id. at 284-85. This is

true both because it suggests there may be other undis-

covered instances of actual confusion, and because it

1 MDI argues that the declarations of its employees about

instances of confusion are not hearsay since = are not =

offered to prove the truth of any matter asserted by the callers

(e.g., that the callers were already purchasing MDI’s products).

Moreover, MDI argues that the declarations fall within the state

of mind exception that has been recognized by the Second, Fifth,

Seventh, and Tenth Circuits, but rejected by the Eighth Circuit

and not decided by the Sixth Circuit. See Fun-Damental Too. Ltd.

v. Gemmy Ind. Corp., 111 F.3d 998, 1008-04 (2d Cir.1997) ; Armco,

Ine. v. Armco Burglar Alarm Co., 698 F.2d 1155, 1160 (5th Cir.

1982) ; International Kennel Club of Chicago, Ine. v. Mighty Star

Ine., 846 F.2d 1079, 1090-91 (7th Cir.1988) ; Jordache Enterprises,

Ine. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1487 (10th Cir.1987). But

see Duluth News-Tribune v. Mesabi Pub. Co., 84 F.3d 1093, 1098

(8th Cir.1996). Like the district court, we find no need to address

ary question since MDI prevails trademark

issue without the use of this evidence. the

10a

strongly suggests the potential for confusion. The district

court found that this factor favors neither party, but we

hold that it favors MDI at least slightly.

E. Marketing channels used

TrafFix does not contest on appeal the district court’s

finding that the parties use similar trade channels. Hence,

this factor clearly favors MDI.

F. Likely degree of purchaser care

TrafFix agrees with the district court’s finding that

professional purchasers comprise the buyer class in this

case and points to the affidavit of its expert and this

court’s previous holding that such buyers will have a low

propensity to be confused. See Homeowners, 931 F.2d at

1111. MDI contends that the “vast majority of buyers are

unskilled contractors and buyers who consider price as the

primary factor, and whose decisions are typically based

on need, convenience and cost.” Significantly, the de

minimis example of actual confusion produced by MDI

came from a professional purchaser. He understood there

were two marks, but he assumed erroneously that Wind-

Buster was another item in the WindMaster line. Pur-

chaser care may be higher than average in this case, but

some mistakes are still likely. At most, this factor slightly

favors TrafFix.

G. Defendant's intent in selecting the mark

The district court held that seeking an opinion of a

trademark attorney and receiving approval of the Trade-

mark Office prior to using the WindBuster mark precludes

a finding of improper intent by TrafFix. That Kulp, the

owner of TrafFix, sought the advice of counsel and the

approval of the PTO does not disprove that he hoped to

trade on the goodwill and reputation of the WindMaster

lla

brand. It merely indicates that he wanted to do so while

staying within the bounds of the law. Intent in selecting

the mark is a factor more likely to favor the owner of an

infringing mark who was unaware of the prior similar

mark. See Worthington Foods, Inc. v. Kellogg Co., 732

F.Supp. 1417, 1449-50 (S.D.Ohio 1990); See also Little

Caesar Enters., Inc. v. Pizza Caesar, Inc., 834 F.2d 568,

572 (6th Cir.1987).

Kulp formerly distributed WindMaster signs, was aware

of the favorable reception of WindMaster products in the

marketplace, reverse-engineered a WindMaster sign to de-

velop his own product, mimicked the WindMaster sign’s

appearance, and selected a similar name It strains credu-

lity to believe WindBuster was associated in Kulp’s mind

more with the idea of a bucking bronco than with a

similar-sounding sucessful manufacturer of road-sign

stands. Still, finding of willful and intentional trademark

infringement seems improper given that TrafFix did delay

using its mark until it received PTO approval.

If the WindBuster mark was chosen with the intent to

cause confusion, that alone may be sufficient to infer

confusing similarity. See Homeowners, 931 F.2d at 1111,

citing Wynn Oil, 839 F.2d at 1189. There is at least

some record evidence suggesting that TrafFix misled its

attorney with regard to some relevant facts in rendering

his opinion. Thus, while this factor may not favor either

party, TrafFix is not wholly innocent here.

H. Likelihood of expansion of the product lines

The parties agreed that this factor favored neither of

them.

Looking at the eight factors together, only purchaser

care favors TrafFix, and that only slightly. This one

factor by itself does not create a genuine issue of material

12a

fact as to the likelihood of confusion. The district court

found more factors favoring TrafFix, which suggests it

made every effort to draw inferences in favor of TrafFix.

Yet the district court nonetheless concluded that Wind-

Master and WindBuster are confusingly similar marks as a

matter of law. The arguments on appeal provide no rea-

son to disturb that decision.

The Lanham Act’s protection of registered trademarks

extends also to unregistered trade dress. See Two Pesos,

Inc. v. Taco Cabana, Inc., 505 U.S. 763, 765 n. 2, 112

S.Ct. 2753, 120 L.Ed.2d 615 (1992); See also Esercizio

v. Roberts, 944 F.2d 1235, 1238 (6th Cir.1991). To

recover for trade dress infringement under § 43(a) of the

Lanham Act, 15 U.S.C. § 1125(a), MDI must prove by

a preponderance of the evidence: 1) that its trade dress

has obtained “secondary meaning” in the marketplace;

2) that the trade dress of the two competing products is

confusingly similar; and 3) that the appropriated features

of the trade dress are primarily nonfunctional. See Eser-

cizio, 944 F.2d at 1239; See also Kwik-Site Corp. v. Clear

View Mfg. Co. Inc., 758 F.2d 167, 178 (6th Cir.1985).

To defeat summary judgment, MDI must show a genuine

issue of material fact as to each of these issues.

A. Secondary meaning

A product's trade dress becomes sufficiently distinctive

to qualify for protection under the Lanham Act if it is

either inherently distinctive or if it acquires secondary

meaning. See Two Pesos, 505 U.S. at 769, 112 S.Ct.

2753. “To acquire a secondary meaning in the minds of

the buying public, an article of merchandise . . . must

proclaim its identification with its source, and not simply

stimulate inquiry about it.” Esercizio, 944 F.2d at 1239,

13a

quoting West Point Mfg. Co. v. Detroit Stampin

222 F.2d 581, 595 (6th Cir.1955); See also + hg

Betts Corp. v. Panduit Corp., 65 F.3d 654, 659 (7th

Cir.1995) (“Thomas & Betts I’) (“Consumers must. . .

desire the product with the particular feature because it

signifies that producer”). To test secondary meaning, the

district court applied the seven factors used in the Sassa-

fras Enterprises trade dress case:

1. direct consumer testimony;

consumer surveys;

exclusivity, length, and manner of use;

amount and manner of advertising;

amount of sales and number of customers;

established place in the market; and

7. proof of intentional copying.

See Sassafras Enters., Inc. v. Roshco, Inc., 915 F.Su

7 (N.D.1.1996). After examining these tg pe

lower court concluded that no reasonable trier of fact

could determine that MDI had established secondary

meaning in the trade dress of its WindMaster signs. How-

ever, the inquiry was hampered by the district court’s

confining the question to whether the dual-spring configu-

ration (rather than the trade dress in its entirety) iden-

tifies MDI as the source of the WindMaster sign.

SYP PF YP

1. Direct consumer testimony

MDI offered the deposition testimony of TrafFix em-

ployees and a former MDI marketing manager that they

could recognize an MDI WindMaster sign stand when

driving by on the highway. The district court did not

credit this evidence, reasoning that these deponents were

not consumers. MDI points to a Seventh Circuit case

l4a

where nonconsumer testimony was admitted to show sec-

ondary meaning where deponents were distributors rather

than ultimate consumers. See Thomas & Betts Corp. v.

Panduit Corp., 138 F.3d 277, 294 (7th Cir.1998)

(“Thomas & Betts II’).

2. Consumer surveys

No consumer surveys were provided to the court before

the motion for summary judgment was filed. The district

court refused to weigh unsworn testimony from 40 pur-

chasers attesting to their association of the WindMaster

trade dress with MDI that was submitted in untimely

fashion and without leave of the court.

3. Exclusivity, length, and manner of use

The district court acknowledged the length of time

over which MDI has used its trade dress, but discounted

that portion (all but five years) that overlapped with its

patents. MDI responds that the patents never covered the

trade dress, because the two are separate kinds of intel-

lectual property and that MDI, in any event, enjoyed five

years of unique trade dress after the patents expired and

before TrafFix began using a similar trade dress.

MDI also licensed its dual-spring configuration to

Eastern Metal company around 1986. The district court

found that this undercut identification of that product

feature with one source. See Sassafras, 915 F.Supp. at 8,

citing 1 J. Thomas McCarthy on Trademarks and Unfair

Competition § 8.02[5], (3d ed.1995). MDI asserts that

Eastern Metal paid in part for the use of the trade dress,

which should support that it has a secondary meaning

worth acquiring.

15a

4. Amount and manner of advertising

The distri ict court found that the amount of advertis in

. . * g

while substantial, did not establish much without showing

that a link was established in the mind of consumers.

Moreover, the court found that MDI’s advertising empha-

sized no meer aspect of WindMaster’s look, merely

pictured the uct, and did not identi j

trade dress. flag tia

MDI responds that its promotional literature, mailers,

and trade show miniature stands all illustrate the look of

the sign stand, and that other courts have found such

advertising persuasive. See Sara Lee Corp. v. American

Leather Prods., Inc., No. 97 C 4158, 1998 WL 433764,

at *13 (N.D.IIl. July 29, 1998) (“COACH’s print adver-

tisements highlight the trade dress to the consumer by

featuring the products in isolation”); See also Yamaha

Int'l Corp. v. Hoshino Gakki Co., 840 F.2d 1572 (Fed.

Cir.1988) (finding secondary meaning for shape of guitar

head always appearing in advertising and promotional

literature).

5. Amount of sales and number of customers

The district court discounted this factor since sales

success could be attributed to a number of factors other

than trade dress. It also noted that MDI’s figure of more

than $1 million in annual sales for over 20 years was not

compared to any competitor’s numbers to provide context.

MDI argues that the Only evidence in the record to ac-

count for WindMaster’s sales success is the goodwill built

up in its trademark and trade dress.

6. Established place in the market

No market-share information is in the record,

16a

7. Proof of intentional copying

The district court found that although TrafFix inten-

tionally copied MDI’s design, it did not necessarily do so

to confuse customers. In so finding it relied on deposition

testimony provided by TrafFix claiming that MDI’s design

was copied because it was believed to be in the public

domain after the WindMaster patents expired.

MDI responds that intentional copying merits a stronger

inference of trying to take advantage of an existing sec-

ondary meaning than the lower court allows; however,

the cases cited by MDI do not involve a utility patent

that could provide an ulterior motive here. See Esercizio,

944 F.2d at 1239; See also DAP Products, Inc. v. Color

Tile Mfg., Inc., 821 F.Supp. 488, 492 (S.D.Ohio 1993).

There is nothing to copy from a design-patented article

other than its look, but if form follows function, a similar

look might naturally result from copying the protected

mechanism in a utility patent. The inference MDI urges

does not conclusively show that TrafFix sought to take

advantage of an extant secondary meaning.

Nevertheless, drawing all reasonable inferences in favor

of the nonmoving party, we must conclude that MDI has

shown that a genuine issue of material fact exists as to

secondary meaning for its sign stand’s trade dress. Con-

sidering the sign stand as a whole, and not just the dual-

spring configuration, a reasonable juror could conclude

that the WindMaster sign stand had obtained secondary

meaning in the marketplace that TrafFix sought to mis-

appropriate.

B. Confusing similarity

After conducting a Frisch’s factor analysis as is proper

for trade dress as well as trademark confusion cases, the

district court was unwilling to hold as a matter of law

17a

that the two trade dresses are not confusingly similar.

Since the district court thus based its grant of summary

judgment for TrafFix on the other two requirements, there

— need to consider the Frisch’s factor analysis in detail

C. Primarily nonfunctional

Finally, MDI must show that the trade dress features

appropriated from WindMaster were primarily nonfunc-

tional. This requirement ensures that trade dress protec-

tion will not be used effectively to extend a patent: “The

np ot doctrine ae trademark law, which seeks

from instead inhibiting legitimate competition Ren rw

a producer to control a useful product feature.” Qualitex

Co. v. Jacobson Prods. Co., 514 U.S. 159, 164, 115

S.Ct. 1300, 131 L.Ed.2d 248 (1995). The Sixth Circuit

deems a product feature to be legally functional “if it is

essential to the use or purpose of the article or if it affects

the cost or quality of the article.” Esercizio, 944 F.2d

at 1246, quoting Inwood Laboratories, Inc. v. Ives Lab-

oratories, Inc., 456 U.S. 844, 850 n. 10, 102 S.Ct. 2182,

72 L.Ed.2d 606 (1982).

The district court’s conclusion that WindMaster’s pur-

ported trade dress was instead an unprotectable functional

element rested on three main findings. First, it found

that the utility patent disclosed the dual-spring design as

functional, so that WindMaster is estopped from arguing

that it is nonfunctional in the trade dress context. Second,

the district court found that the dual-spring design had

been promoted as functional, rather than as aesthetic or a

merely identifying feature. Finally, the lower court found

that recognizing WindMaster’s trade dress claim would

put competitors at a disadvantage by affecting the cost

and quality of the alternative designs remaining for their

use.

In determining that a prior utility patent creates a

presumption against a trade dress claim, the district court

relied heavily on the McCarthy treatise: “[O]ne cannot

argue that a shape is functionally advantageous in order

to obtain a utility patent and later assert that the same

shape is non-functional in order to obtain trademark pro-

tection.” 1 J. Thomas McCarthy on Trademarks and Un-

fair Competition § 7:89 (4th ed.1996). In his patent

application Sarkisian, MDI’s president, claimed that “two

spaced apart spring connections . . . prevent twisting of

the sign frame.” In subsequent successful litigation over

the patent, Sarkisian contended that closely-spaced dual-

coil springs were functionally equivalent and covered by

the patent. MDI contends that litigation over the patent

concerned the utility of the dual-spring design, while liti-

gation over trade dress concerns the appearance of the

dual-spring design.

A circuit split exists as to whether a utility patent

disclosure forecloses trade dress protection. The Fifth,

Seventh, and Federal Circuits have held or strongly sug-

gested that a utility patent disclosure does not prevent

trade dress protection. See Sunbeam Prods., Inc. v. West

Bend Co., 123 F.3d 246, 256 (Sth Cir.1997) (“[T)he

fact that the American Classic Mixmaster® incorporates

functional features named in utility patents does not com-

pel the conclusion that the product configuration is legally

functional”); Thomas & Betts Il, 138 F.3d at 288 (re

versing the district court’s misstatement of the law and

holding that “there is no per se prohibition against fea-

tures disclosed in a patent receiving trademark protection

after the patent has expired”); Midwest Indus., Inc. v.

Karavan Trailers, Inc., 175 F.3d 1356, 1362 (Fed.Cir.

1999) (“{S]tatements in a patent may provide evidence

that the asserted trade dress is functional, and thus not

entitled to legal protection. But the fact that a patent has

19a

been acquired does not convert what otherwise would

have been protected trade dress into nonprotected matter”

(citations omitted) ). Only the Tenth Circuit, in an opin-

ion that preceded the contrary rulings of the other three

circuits, has held that “[wJhere a product configuration

is a significant inventive component of an invention cov-

ered by a utility patent . . . it cannot receive trade dress

protection under section 43(a).” Vornado Air Circulation

Sys., Inc. v. Duracraft Corp., 58 F.3d 1498, 1500 (10th

Cir.1995).

The Tenth Circuit argued that a per se rule is necessary

to effect the public policy underlying patent law of releas-

ing protected designs after a period of time. But those

functional designs may be separated from the appearance

here. So long as it is possible to protect the appearance

without protecting the design, a per se rule is not neces-

sary. Here that might be possible, as MDI suggests, by

not extending trade dress protection “to vertically ar-

ranged coil springs with other leg members (U-shaped,

parallel, etc.) and/or with other uprights (twin poles,

A-shaped, etc.) [that] may create an entirely different

look altogether.” It takes little imagination to conceive

a hidden dual-spring mechanism or a tri or quad-spring

mechanism that might also avoid infringing WindMaster’s

trade dress. The best way to decide the feasibility of such

alternatives is to do a functional analysis of the trade

dress unencumbered by any presumptions other than the

ordinary burden of proof assumed by the plaintiff.

The district court next found functionality based on

WindMaster’s promotion of the dual-spring design’s per-

formance rather than its appearance. MDI argues that it

has not specifically promoted the appearance of the dual

springs because its trade dress is not confined to that ele-

ment. Rather, the entire look of its WindMaster display

sign stand has been promoted through pictures in catalogs

20a

and a miniature stand used at trade shows. MDI is cor-

rect to contend that the lower court committed legal error

by evaluating an individual component of the trade dress

rather than its entirety. See Merriam-Webster, Inc. v.

Random House, Inc., 35 F.3d 65, 71-72 (2d Cir.1994);

The Antioch Co. v. Western Trimming Corp., Nos. 98-

3876, 98-3943, 1999 WL 777556, at *3 (6th Cir.1999),

quoting Hartford House, Ltd. v. Hallmark Cards, Inc.,

846 F.2d 1268, 1271 (10th Cir.1988). The district court

focused solely on the dual-spring design because it says

that every other competitor uses the other elements of a

single upright, four leg members extending out at angles,

and a sign. This analysis fails to note that all of the other

competitors lack the dual-spring design; they avoid emu-

lating the trade dress in that manner. If TrafFix or an-

other competitor chooses to use the dual-spring design,

then it will have to find some other way to set its sign

apart to avoid infringing the WindMaster’s trade dress.

It is the combination of all the elements that, as MDI

correctly argues, could confuse the public.

Finally, the district court found that protecting the

trade dress asserted by MDI would put its competitors

at a disadvantage beyond the merely reputational. Because

the dual-spring design is one of a limited number of

superior designs, the lower court found that the design

element is a functional one. Presumably every limitation

on what another competitor can do hinders competition

somewhat. The appropriate question is whether the par-

ticular product configuration is 4 competitive necessity.

If it affects the cost or the quality or the objective (non-

reputational) desirability of competitors’ products nega-

tively enough, then the trade dress element may be deemed

legally functional. Having any effect on cost or quality

is not enough. Exclusive use of a feature must “put com-

petitors at a significant non-reputation-related disadvan-

2la

tage” before trade dress protection is denied on func-

tionality grounds. Qualitex, 514 U.S. at 165, 115 S.Ct.

1300 (emphasis added).

MDI points to its numerous competitors and their

equivalent products as proof that MDI’s trade dress is not

a competitive necessity. The district court stated that

those competitors’ designs are themselves patented and

therefore unavailable to TrafFix. That is beside the point.

TrafFix does not get to copy the trade dress of its com-

petitor whose patent has expired just because other design

options are still under patent. TrafFix could come up

with its own design, or license one of the outstanding

patents, or use the dual-spring design in a way that does

not infringe MDI’s trade dress. As with intellectual prop-

erty and competition law generally, the proper question

is the overall effect on competition if a particular trade

dress claim receives protection, not the prospects of any

particular competitor when that protection is granted. Cf.

Spectrum Sports, Inc. v. McQuillan, 506 U.S. 447, 458,

113 S.Ct. 884, 122 L.Ed.2d 247 (1993) (noting the pol-

icy of the Sherman Act to protect the public’s interest in

competition, not private concerns of competitors).

The same facts can support both trademark (and/or

trade dress) infringement and unfair competition under

§ 43(a) of the Lanham Act. See Frisch’s Restaurants,

849 F.2d at 1015. The unfair competition claim thus

must be remanded for further proceedings alo i

trade dress claim. saicaugs

The parties agree and the district court noted that “be-

fore reaching the merits of an antitrust claim, it is neces-

Sary to identify the relevant markets.” Potters Med. Ctr.

v. City Hosp. Ass'n, 800 F.2d 568, 574 (6th Cir.1986).

This prioritization, however, addresses market definition

22a

a bit prematurely, at least in the context of a claim of

sham litigation. The purpose of market definition is to

determine whether the antitrust defendant actually exerts

or threatens to exert monopoly control over any particular

market segment. Under § 2, a defendant obviously can-

not be illegally protecting a monopoly if it does not enjoy

a monopoly in the first place. By the same token, how-

ever, if the activity of which the purported monopolist is

accused would not be illegal even for a monopolist, then

identifying a monopolized market is superfluous. Thus,

while it is certainly necessary to identify a relevant market

in order to prove a § 2 violation, it is not necessary to

identify a relevant market in order to disprove a § 2 vio-

lation—which was MDI’s goal in seeking summary judg-

ment. As the Potters precedent itself demonstrates, it is

possible to affirm summary judgment on claims of sham

proceedings without first defining a relevant market. See

id. at 574-75.

For this reason, it is possible to dispense with the mar-

ket definition question until after deciding whether assert-

ing trade dress rights after the expiration of a patent in

the circumstances of this case can violate § 2. To prove

that trademark or trade dress infringement litigation vio-

lates § 2, it must first be shown that the suit was “objec-

tively baseless in the sense that no reasonable litigant

could realistically expect success on the merits.” Prof'l

Real Estate Investors, Inc. v. Columbia Pictures Indus.,

Inc., 508 U.S. 49, 60, 113 S.Ct. 1920, 123 L.Ed.2d 611

(1993). Then TrafFix must show that MDI filed a base-

less suit as “an attempt to interfere directly” with Traf-

Fix’s business relationships through the use of the process

of litigation rather than the outcome sought. Jd. at 60-

61, 113 S.Ct. 1920, citing Eastern R.R. Presidents Conf.

v. Noerr Motor Freight, Inc., 365 U.S. 127, 144, 81

S.Ct. 523, 5 L.Ed.2d 464 (1961). In other words, to

23a

prevail on its antitrust claim, TrafFix must show that

MDI brought its trade dress claim knowing it had no

chance for success and with the intent of deterring com-

petition.

As the district court noted, courts do allow parties to

pursue trade dress rights in the face of an expired patent.

See Kohler Co. v. Moen, Inc., 12 F.3d 632, 638 (7th

Cir.1993). TrafFix argues that trade dress rights may be

pursued after design patents expire, but not after utility

patents expire. TrafFix points to no authority for this

proposition, and there does not appear to be a per se rule

to this effect, as discussed, supra at 939-40 (noting the

weight of authority from other circuits against any such

per se rule). Thus, TrafFix cannot argue that MDI had

a baseless suit merely because its patent had expired.

Nor does TrafFix provide any reason to believe that

a utility patent and trade dress protection must be mu-

tually exclusive. The consensus on this question is that

patent and trademark law protect different interests, and

that “a product’s different qualities can be protected simul-

taneously, or successively, by more than one of the statu-

tory means for protection of intellectual property.”

Kohler, 12 F.3d at 638-39 (collecting sources). If pro-

tectable at all, the trade dress of MDI’s WindMaster signs

is protectable separately from its patents. Moreover, as

seen from the earlier discussion, MDI’s claim of trade-

mark and trade dress infringement is not so outlandish

as to appear to be brought only to burden a competitor

with litigation. This is especially true given the heretofore

unsettled character of trade dress protection for product

configurations in this circuit. Nor has TrafFix provided

an ounce of evidence suggesting an improper motive on

MDI’s part. For these reasons, the district court properly

held that MDI’s trade dress claim was not an unlawful

attempt to monopolize in violation of § 2.

24a

Since the activity that MDI has undertaken has not

been deemed anticompetitive, there is no reason to have

allowed discovery on the market definition issue. The

district court did not abuse its discretion in granting sum-

mary judgment before allowing discovery.

Summary judgment was appropriate on the trademark

infringement claim since TrafFix established no genuine

issue of material fact. However, because TrafFix received

PTO approval for its mark, it cannot be said to have will-

fully and intentionally infringed MDI’s mark. The dis-

trict court judgment on this issue is affirmed, and the

claim remanded to determine damages for the infringe-

ment. Despite the cross-motions for summary judgment

on the trade dress and unfair competition claims, it should

not have been granted to either party. MDI established a

genuine issue of material fact as to secondary meaning,

and the district court ruling was legally erroneous on the

functionality question. Thereforc, a grant of summary

judgment to TrafFix was unwarranted. Since the actions

pursued by MDI were thus clearly reasonable under the

law, no antitrust violation attaches, and it was not an

abuse of discretion not to allow discovery on the issue of

MDI’s market power. Accordingly, we AFFIRM the

judgment of the district court in part, REVERSE in part,

and REMAND the case for further proceedings consistent

with this opinion.

25a

APPENDIX B

UNITED STATES DISTRICT COURT

E.D. MICHIGAN

SOUTHERN DIVISION

Civil Action No. 95-40230

MARKETING Disp.ays, INC.,

Plaintiff,

TRAFFix Devices, INc.,

Defendant.

June 12, 1997

Order Denying Reconsideration

July 9, 1997

MEMORANDUM OPINION AND ORDER

GADOLA, District Judge.

Before the court are cross-motions for summary judg-

ment pursuant to Federal Rule of Civil Procedure 56.

Plaintiff, Marketing Displays, Inc. (“MDI”) and defend-

ants, TrafFix Devices Inc. (“TrafFix”), filed their respec-

tive motions Om February 28, 1997. This court heard oral

argument om May 28, 1997. For the reasons set forth

below, this court will grant TrafFix’s motion for summary

judgment and deny MDI’s motion for summary judgment.

26a

Background

MDI manufactures and sells, inter alia, spring-mounted

wind-resistant sign stands. MDI has been manufacturing

and selling these sign stands since 1968 under the trade-

mark WINDMASTER. The first sign stand sold under

the WINDMASTER mark was a business-type wind-

resistant sign stand that was used to display advertise-

ments, such as those seen at gas stations.

In the mid 1970’s MDI modified its business-type wind-

resistant sign stands in order to utilize the wind-resistant

concept for traffic warning signs. The traffic-type wind-

resistant sign stands were used to hold signs such as

“ROAD WORK AHEAD” and “ROAD CONSTRUC-

TION AHEAD”. These traffic-type, spring-mounted wind-

resistant sign stands were then sold under the same mark

WINDMASTER in the traffic control field."

MDI’s WINDMASTER sign stands have been protected

by two utility patents: United States Patent Number

3,646,696 and 3,662,482 (hereinafter the “696” and

“482” patents, respectively). In obtaining the ‘696 pat-

ent MDI argued, before the United States Patent Office,

that its dual spring design had benefit over the prior art.

Moreover, MDI has, on at least one occasion, brought

suit to enforce those patents against an alleged infringer

who was manufacturing a sign stand containing a dual

spring configuration like the one at issue here. In that

1978 case,2 MDI succeeded in obtaining an injunction

1 In 1987, MDI introduced an orange corrosion-coated steel ver-

sion of its traffic sign and sold it under the mark STEELMASTER.

Since STEELMASTER is otherwise identical to the WINDMAS-

TER and is, in fact, part of the WINDMASTER line of products,

this court, for purposes of this opinion, will refer to the WIND-

MASTER and STEELMASTER products collectively as “WIND-

MASTER”.

2 Sarkisian v. Winn-Proof, Corp., 208 U.S.P.Q. 60 (D.Or.1978)

aff'd in part, rev'd in part, 686 F.2d 671 (9th Cir.1981).

27a

against the infringer from manufacturin

= g such a dual

MDI has also granted patent licenses to third-parties

having the dual Spring configuration at issue cor For

instance, MDI licensed Eastern Metal, under its utility

patents, to sell sign stands incorporating the dual spring

configuration at issue here in exchange for royalties and

rights to use Eastern Metal’s patents. Upon expiration of

MDI’s patents in 1989, Easte i

ee tm Metal stopped paying

While the ‘696 and ’482 patents were in force, MDI

clearly and consistently marked its sign stands with the

patent numbers which served to put the public on notice

of MDI’s rights. In addition, MDI has consistently identi-

ir those patents in its WINDMASTER product litera-

re.

The WINDMASTER line of stands has enjoyed com-

mercial success, selling over twenty million dollars to date.

In 1986, Jack Kulp founded TrafFix to manufacture and

sell traffic-type sign stands and related products. There-

after, TrafFix sent one of MDI’s WINDMASTER sign

stands to Korea to be “reverse engineered.” TrafFix ef-

fectively copied the WINDMASTER sign stand as the

product configurations of the parties’ products are vir-

tually identical. (See Figure 1). In 1994, TrafFix began

selling that product under the WINDBUSTER trade

name. Thereafter, on July 11, 1995, MDI filed the in-

stant action.

MDI brought this action against TrafFix allegi

ging that

TrafFix S WINDBUSTER spring-mounted wind-resistant

sign stands infringed upon MDI’s WINDMASTER trade-

mark and trade dress rights and constituted unfair com-

petition, pursuant to the Lanham Act.

28a

On January 13, 1997, this court, by memorandum

opinion and order *, granted MDI’s motion for summary

judgment that MDI’s WINDMASTER trademark was

infringed by TrafFix’s use of the confusingly similar mark

WINDBUSTER in connection with traffic sign stands.

The parties now seek summary judgment as to the issue

of whether MDI’s alleged trade dress rights in its dual

spring configuration sign stands is being infringed by

TrafFix’s dual spring configuration sign stand.* *

3 That opinion was non-substantially amended on May 29, 1997.

4Since this court previously granted MDI summary judgment

on Count I (Federal Trademark Infringement) of MDI’s four count

amended complaint and dismissed, by order dated September 7,

1995, Count III (common law unfair competition) and since Count

IV (Federal Unfair Competition) is governed by the same facts as

Count II (Trade Dress Infringement), summary judgment at this

time as to Count II would effectively resolve all of the remaining

issues in this case. Frisch’s Restaurants, Inc. v. Elby’s Big Boy,

849 F.2d 1012, 1015 (6th Cir.1988) (finding that the same facts can

support both trademark infringement and unfair competition under

§ 48(a)). 4

Moreover, while it is axiomatic that this court is not permitted

to resolve genuine issues of material facts on a motion for sum-

mary judgment—even where both parties have filed cross motions

for summary judgment, Taft Broadcasting Co. v. United States,

929 F.2d 240, 248 (6th Cir.1991), where, ae here, both parties

proceed on the same legal theory and rely on the same material

facts, the court is signaled that the case is ripe for summary judg-

ment, Shook v. United States, 713 F.2d 662, 665 (11th Cir.1983).

See also Bricklayers, Masons and Plasterers International Union

v. Stuart Plastering Co., 512 F.2d 1017, 1023 (5th Cir.1975) (Cross

motions for summary judgment may be probative of the non-

existence of a factual dispute).

5 Although Traffix’s instant motion is styled as a motion for

summary judgment as to functionality rather than as to trade

dress, it will have the same dispositive effect as a motion for sum-

mary judgment as to trade dress if this court finds that the dual

spring configuration is functional. See discussion of applicable

Law, infra, p. 266.

29a

Specifically, MDI asserts that it has trade dress rights

in its WINDMASTER sign stand which is comprised of:

(a) a relatively narrow base member;

(b) a pair of vertically arranged closely spaced coil

Springs attached to the base member;

member and extending therefrom at angles

thereof;

(d) —— member attached to the coil springs;

(e) a sign attached to the upright member.

For the purposes of this opinion, however, this court

finds that the only element of the alleged trade dress at

issue is the pair of vertically arranged closely spaced coil

springs (hereinafter “dual spring configuration” or “dual

spring design”).® See discussion infra, pg. 273.

Legal Standard

Rule 56(c) of the Federal Rules of Civil Procedure

provides that summary judgment “shall be rendered forth-

with if the pleadings, depositions, answers to interroga-

tories, and admissions on file, together with the affidavits,

if any, show that there is no genuine issue as to any

material fact and that the moving party is entitled to

judgment as a matter of law.” Summary judgment is

appropriate where the moving party demonstrates that

there is no genuine issue of material fact as to the ex-

istence of an essential element of the non-moving party’s

6 MDI effectively concedes this finding in its brief in su

rt of

its motion for summary judgment wherein it a oe

ers and persons in the traffic control industry associate MDI’s prod-

uct configuration—the dual spring design—with MDI.” MDI’s Brf.

at p. 8. (emphasis added).

30a

case on which the non-moving party would bear the bur-

den of proof at trial. Martin v. Ohio Turnpike Commis-

sion, 968 F.2d 606, 608 (6th Cir.1992); Celotex Corp.

v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91

L.Ed.2d 265 (1986). In considering a motion for sum-

mary judgment, the court must view the facts and draw

all reasonable inferences therefrom in a light most favor-

able to the non-moving party. 60 Ivy Street Corporation

v. Alexander, 822 F.2d 1432, 1435 (6th Cir.1987). The

court is not required or permitted, however, to judge the

evidence or make findings of fact. Id. at 1435-36. The

moving party has the burden of showing conclusively that

no genuine issue of material fact exists. Jd. at 1435.

A fact is “material” for purposes of summary judgment

where proof of that fact would have the effect of estab-

lishing or refuting an essential element of the cause of

action or a defense advanced by the parties. Kendall v.

Hoover Co., 751 F.2d 171, 174 (6th Cir.1984). In

other words, the disputed fact must be one which might

affect outcome of the suit under the substantive law con-

trolling the issue. Henson v. National Aeronautics and

Space Administration, 14 F.3d 1143, 1148 (6th Cir.

1994). A dispute over a material fact is genuine “if the

evidence is such that a reasonable jury could return a

verdict for the non-moving party.” Jd. Accordingly,

where a reasonable jury could not find that the non-

moving party is entitled to a verdict, there is no genuine

issue for trial and summary judgment is appropriate.

Feliciano v. City of Cleveland, 988 F.2d 649 (6th Cir.

1993).

Once the moving party carries its initial burden of

demonstrating that no genuine issues of material fact are

in dispute, the burden shifts to the non-moving party to

present specific facts to prove that there is a genuine issue

for trial. To create a genuine issue of material fact, the

3la

non-moving party must present more than just some evi-

of a disputed issue. As the United States Supreme

stated in Anderson v. Liberty Lobby, Inc., 477

U.S. 242, 249-50, 106 S.Ct. 2505, 2511, 91 L.Ed.2d

202 (1986):

There is no issue for trial unless there is sufficient

evidence favoring the non-moving party for a jury

to return a verdict for that party. If the [non-moving

party's} evidence is merely colorable, or is not sig-

nificantly probative, summary judgment may be

granted.

(Citations omitted); see also Celotex, 477 U.S. at 322-

23, 106 S.Ct. at 2552-53; Matsushita Elec. Indus. Co. v.

Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct.

1348, 1355-56, 89 L.Ed.2d 538 (1986). Consequent'y,

the non-moving party must do more than raise some dot

as to the existence of a fact; the non-moving party must

produce evidence that would be sufficient to require sub-

mission of the issue to the jury. Lucas v. Leaseway

Multi Transp. Serv., Inc., 738 F.Supp. 214, 217 (E.D.

Mich. 1990), aff'd, 929 F.2d 701 (6th Cir.1991).

Applicable Law

_ Section 43 (a) of the Lanham Act which creates a

civil cause of action for trademark infringement provides,

in relevant part, that:

Any person who, on or in connection with any goods

Or services, or any container for goods, uses in com-

merce any word, term, name, symbol, or device, or

any combination thereof, or any false designation of

origin, false or misleading description of fact, or

false or misleading representation of fact, which—

(1) is likely to cause confusion, or to cause

mistake, or to deceive as to the affiliation, con-

32a

nection, or association of such person with

other person, or as to the origin, sponsorshi

goods,

or approval of his or her

commercial activities by another person... .

shall be liable in a civil action by any person who

believes that he or she is or is likely to be damaged

by such act.

15 U.S.C. § 1125(a). The protection against infringe-

ment provided by section 43(a) includes the unregistered

“trade dress” of an article. Two Pesos, Inc., v. Taco

Cabana, Inc., 505 U.S. 763, 765 n. 2, 112 S.Ct. 2753,

2756 n. 2, 120 L.Ed.2d 615 (1992); Esercizio v. Roberts,

944 F.2d 1235, 1238 (6th Cir. 1991).

To prove a trade dress violation in contravention of

section 43(a), a plaintiff must show, by a preponderance

of the evidence: 1) that the trade dress has obtained

“secondary meaning;” 2) that the trade dress of the two

competing products is confusingly similar; and 3) tha

the appropriated features of the trade dress are primarily

non-functional. Esercizio, 944 F.2d at 1239; Kwik-Site

Corp. v. Clear View Mfg. Co. Inc., 758 F.2d 167, 178

(6th Cir.1985).

3 6

a. Secondary Meaning

The trade dress of a product may be identified in one

of two ways. A product's trade dress may be inherently

distinctive or it may acquire secondary meaning through

the consumer associating the trade dress with the prod-

uct’s source.?’ Two Pesos, Inc., 50S U.S. at 769, 112

7MDI has offered only a conclusory argument that the trade

dress of its WINDMASTER sign stand is inherently distinctive.

Accordingly, this court finds that the WINDMASTER sign stand

is not inherently distinctive and, therefore, will only address the

issue of secondary meaning.

the product rather than the product itself.” Inwood Labs.,

Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n. 11, 102

S.Ct. 2182, 2187 n. 11, 72 L.Ed.2d 606 (1982) (em-

Say ae. The Sixth Circuit Court of Appeals has

To acquire a secondary meaning in the minds of

the buying public, an article of merchandise when

shown to a prospective customer must prompt the

its source,” and not the negative inquiry as

to “Who makes that article?” cee ae

article must proclaim its identification with its source,

and not simply stimulate inquiry about it.

Esercizio, 944 F.2d at 1239 (citing West Point Mfg. Co.

v. Detroit Stamping Co., 222 F.2d 581, 595 (6th Cir.)

cert. denied, 350 U.S. 840, 76 S.Ct. 80, 100 L.Ed. 749

(1955)). In a trade dress action, the ultimate issue is

whether “[a] product feature’s primary significance to

consumers is as an identifier of source or as an element

which contributes to the inherent appeal of the product.”

Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654,

659 (7th Cir.1995) (emphasis added). In other words,

for our purposes, the question is whether the

In order to better evaluate MDI’s claim of the existence

of secondary meaning in the trade dress of its WIND-

MASTER product, this court will employ the seven part

test used in Sassafras Enterprises, Inc. v. Roshco, Inc.,

915 F.Supp. 1 (N.D.111.1996). In Sassafras, the district

34a

court identified the following factors for consideration in

determining the existence of secondary meaning in a trade

dress action: (1) direct consumer testimony; (2) con-

sumer surveys; (3) exclusivity, length, and manner of

use; (4) amount and manner of advertising; (5) amount

of sales and number of customers; (6) established place

in the market; and (7) proof of intentional copying. /d.

at 7 (citing Echo Travel, Inc. v. Travel Assoc., Inc., 870

F.2d 1264, 1267 (7th Cir.1989)). Cf. Blockbuster En-

tertainment Group v. Laylco, Inc., 869 F.Supp. 505, 510

(E.D.Mich.1994).* These factors, however, are signifi-

cant only to the extent that they help this court resolve

the ultimate issue, to wit: could a reasonable fact finder

conclude that in the minds of consumers the primary

significance of the dual spring configuration is to identify

MDI as the source of the WINDMASTER sign stand.

See Sassafras, 915 F.Supp. at 7.

1. Direct Consumer Testimony

In support of this factor, MDI offers the deposition

testimony of John McKenny, an engineer who is Traf-

Fix’s expert; Walt Kuczera, one of TrafFix’s principals;

® The Blockbuster court identified six factors tending to dem-

onstrate the existence of secondary meaning in a trademark dispute:

(1) advertising expendtures; (2) consumer studies linking the

name to the source; (3) sales success; (4) unsolicited media cover-

age; (5) attempts to plagiarize the mark; and (6) the length and

35a

stands are professional purchasers. As Prof. McCarthy

states: “[t}he meaning of a term to a non-purchasing

segment of the population is neither relevant nor impor-

tant.” 1 J. Thomas McCarthy, McCarthy on Trademarks

and Unfair Competition § 11.20 (4th ed.1996) (here-

inafter “McCarthy on Trademarks”). As such, this depo-

sition testimony does not establish the requisite “primary

significance” of the dual-spring design as a brand identifier

in the consumer’s mind. See Vornado Air Circulation

Systems v. Duracraft Corp., 58 F.3d 1498, 1502 n. 7

(10th Cir.1995). Accordingly, this factor favors Traf-

Fix.

2. Consumer Surveys

Neither MDI nor TrafFix provides survey evidence.

While such evidence is not required in trademark cases,

see Committee for Idaho’s High Desert Inc., v. Yost, 92

F.3d 814, 39 U.S.P.Q.2d 1705, 1711 (9th Cir.1996);

Charles Jacquin et Cie, Inc., v. Destileria Serralles, Inc.,

921 F.2d 467, 17 U.S.P.Q.2d 1104, 1110 (3d Cir.1990);

Indianapolis Colts Inc. v. Metropolitan Baltimore Foot-

ball Club, 34 F.3d 410, 31 U.S.P.Q.24 1811, 1815 (7th

Cir.1994), such evidence would have been particularly

useful in this trade dress action. Where, as here, a prod-

uct’s design feature is at issue, conumer survey evidence

would be extremely elucidating in discerning the specific

reason(s) that customers purchase the product in ques-

tion.

consumer’s mind as a brand identifier. See Sassafras, 915

F.Supp. at 7-8. Accordingly, this factor favors TrafFix.

36a

3. Exclusivity, Length and Manner of Use

MDI asserts that it has been manufacturing and selling

its wind resistant traffic stands since the mid-1970s.

MDI’s use of its dual-spring configuration obviously was

exclusive until its patents expired in 1989. In a situation

such as this, however, length of exclusive use may not

truly indicate acquisition of secondary meaning. The

Thomas & Betts court’s holding in this regard is directly

on point. That court stated:

It is not enough that the consumers associate the

form of the product with a particular producer.

Such an association is inevitable when the first comer

is the exclusive producer under a patent. Consumers

must also care that the product comes from a partic-

ular producer (though they need not be able to iden-

tify him) and must desire the product with the

particular feature because it signifies that producer.

Thomas & Betts, 65 F.3d at 658-59. Here, MDI was

clearly the first comer and exclusive producer under the

patent. That, however, is not sufficient to establish the

dual spring design as a source signifier.

Moreover, MDI acknowledges that it licensed Eastern

Metal, in approximately 1986, to use its WINDMASTER

dual-spring configuration for sign stands. This is similar

to Sassafras where the plaintiff, who sold pizza sets, pro-

vided its pizza set items to retailers who then marketed

sets under private label trademarks. In Sassafras, the

court found that private labeling arrangements may Op-

erate against a finding of secondary meaning because it

becomes more difficult to show that the configuration

identifies a single source. 915 F.Supp. at 8 (citing Mc-

Carthy on Trademarks, § 8.02[5) (3d. ed.1995)). Ac-

cordingly, this factor favors TrafFix.

37a

4. Amount and Manner of Advertising

MDI argues that the money it has spent over the last

twenty years in promotional literature, consumer contacts,

and trade shows is strong evidence of the secondary mean-

ing that has developed in the minds of consumers for its

sign stand. In Aromatique, Inc. v. Gold Seal, Inc., 28

F.3d 863 (8th Cir.1994), the court stated that:

Expenditures on advertising and promoting a trade-

mark may be relevant to a determination of second-

ary meaning because the amount spent may be indi-

cative of the extent to which the public associates

that advertised mark with the source of the product

bearing the mark.

I¢. at 872. Although such evidence may be indicative

of an association in the public’s mind, by itself, it is not

strong evidence. In Walt-West Enter., Inc. v. Gannett

Co., 695 F.2d 1050, 1060 (7th Cir.1982), the court ex-

plained that such advertising expenditures, as well as long

and exclusive use, were not germane to the issue of sec-

ondary meaning if the plaintiff could not show that the

expenditures caused the public to “regard the primary

significance of the [mark] as designating a single, though

perhaps anonymous, source .. .” As discussed supra, no

survey evidence has been offered to establish such an

association. Therefore, the relevance of the amount and

manner of advertising in this case is minimal.

Professor McCarthy has stated that the presence or

absence of “look for” promotion is relevant to the issue

of secondary meaning. 1 McCarthy on Trademarks,

§ 7:30 (4th ed.1996). MDI claims that it has used such

advertising in its literature. This court, however, finds no

evidence of “look for” type advertising in MDI’s literature

which would urge the reader to identify the WINDMAS-

TER product by the vertical dual-spring design. Instead,

38a

the brochures produced by MDI merely picture the stands

and its component parts. See Ohio Art. Co. v. Lewis

Galoob Toys, Inc., 799 F.Supp. 870, 883 (N.D.II1.1992)

(stating that “[s]econdary meaning cannot be established

by advertising that merely pictures the product and does

nothing to emphasize the mark or dress.”) Moreover,

while MDI’s advertising consistently identifies its patents

in product literature relating to the WINDMASTER sign

stands, it has never identified its WINDMASTER product

configuration as protected “trade dress” in any literature

that has been produced to date. Accordingly, this factor

favors TrafFix.

5. Amount of Sales and Number of Customers

MDI claims that the amount of commercial success its

sign stands have enjoyed indicates that purchasers equate

the product’s design with MDI. In Aromatique, however,

the court discussed the problems associated with using

evidence of sales to establish secondary meaning. The

court stated:

. . such evidence may not provide the basis for an

inference of secondary meaning because something

other than the secondary meaning of the trade dress

may have been responsible for the success of the

product. Success of a product is not among the types

of evidence described by the PTO as useful in estab-

lishing secondary meaning.

Aromatique, 28 F.3d at 873. This is particularly so

where, as in this case, the asserted trade dress is also the

most functionally useful feature of the product. In this

case the usefulness of the dual-spring design may very

well have been the reason for MDI’s sales success. Ac-

cordingly, such sales evidence is entitled to little if any

weight.

39a

: In any event, the only evidence of sales success pro-

vided by MDI is its assertion that sales of the product

have averaged over a million dollars a year for over

twenty years. While these appear to be impressive sales

figures, MDI did not provide a sufficient context for this

court to assess those figures. For instance, MDI does not

. compare its sales figures with that of its competitors.

Accordingly, this factor only slightly favors MDI.

6. Established Place in the Market

Neither MDI nor TrafFix has provided evidence of

MDI's established market share. Due to the lack of sup-

porting evidence, this factor favors neither party.

7. Proof of Intentional Copying

MDI argues that secondary meaning may be presumed

from TrafFix’s intentional acts of copying the design of

MDI’s dual spring configuration. The Seventh Circuit,

however, has stated that:

Copying is only evidence of secondary meaning if

the defendant’s intent in copying is to confuse con-

sumers and pass off his product as the plaintiff's. In

that situation, the defendant’s belief that plaintiff's

trade dress has acquired secondary meaning-so that

his copying will indeed facilitate his passing off-is

some evidence that the trade dress actually has ac-

quired secondary meaning.

Thomas & Betts, 65 F.3d at 663. In such a situation,

where the product itself is copied, evidence of intent is

often ambiguous. Blau Plumbing, Inc. v. S.O.S. Fix-It,

Inc., 781 F.2d 604, 611 (7th Cir.186). “[TJhe copier

may very well be exploiting a particularly desirable fea-

ture, rather than seeking to confuse consumers as to the

source.” Duraco Prods., Inc. v. Joy Plastic Enter., Ltd.,

40 F.3d 1431, 1453 (3d Cir.1994).

40a

At most this evidence could support an inference if

supported by additional facts. Sassafras, 915 F.Supp. at

10. MDI, however, provides no evidence to indicate that

TrafFix’s act of copying was done to confuse the public.

Conversely, TrafFix provides supporting deposition testi-

mony that the act of intentional copying was not done to

confuse consumers but was based upon the belief that

the patents covering the design had expired and the prod-

uct had moved into the public domain. Accordingly, this

factor favors TrafFix.

In sum, this court’s evaluation of the Sassafras factors

reveals that no reasonable trier of fact could determine

that MDI has established secondary meaning. Accord-

ingly, this court finds that the primary significance of the

appearance and configuration of MDI’s dual spring design

in the minds of consumers is not to identify it with its

source.

Even if this court were to assume, arguendo, that MDI

has established secondary meaning in itt WINDMASTER

product design, it would not find that TrafFix has in-

fringed MDI’s alleged trade dress rights since this court

finds that, as a matter of law, the MDI dual spring con-

figuration is functional. See discussion infra.

Although this court is not prepared to find, as a matter

of law, that no likelihood of confusion exists, this court

will nevertheless proceed to address that issue.

b. Likelihood of Confusion

In the Sixth Circuit, the legal test for determining

whether a “likelihood of confusion” exists is well settled.

In Frisch’s Restaurants, supra 670 F.2d at 642, the Court

of Appeals set forth eight factors that are relevant to a

likelihood of confusion analysis:

4la

strength of the plaintiff's [trade dress};

relatedness of the goods;

similarity of the [trade dresses];

evidence of actual confusion;

marketing channels used;

likely degree of purchaser care;

defendant’s intent in selecting the [trade dress];

8. likelihood of expansion of the product lines.

Id. at 648 (quoting AMF Inc. v. Sleekcraft Boats, 599

F.2d 341, 348 (9th Cir.1979)). In Wynn Oil Co. v.

Thomas, 839 F.2d 1183 (6th Cir.1988), the Sixth Cir-

cuit explained that the Frisch’s factors are:

. Simply a guide to help determine whether con-

fusion would be likely to result from simultaneous

use of the two contested [trade dresses]. They imply

no mathematical precision, and a plaintiff need not

show that all, or even most, of the factors listed are

present in any particular case to be successful.

Id. at 1186.

While it is true that this court’s likelihood of confusion

analysis must consider the same Frisch’s Restaurants factors

for an alleged trade dress infringement as it did for the

trademark infringement claim ® previously decided by this

court, it does not necessarily follow that this court’s con-

clusion must be the same.

~Q Yer Vp >

1. Strength of MDI’s Trade dress

Although this court has previously acknowledged that

MDI’s trademark, WINDMASTER, is strong, the same

9 See Esercizio, 944 F.2d at 1241-42 (holding that the Frisch's

Restaurant factors should be considered in determining likelihood

of confusion in a Lanham Act case).

42a

cannot be said for the alleged trade dress of the WIND-

MASTER sign stand. As this court found above, MDI

has not developed secondary meaning in its sign stand.

Despite its admittedly significant expenditures on adver-

tisements, those advertisements do not identify MDI’s

claimed trade dress rights in the WINDMASTER sign

stand nor do they urge the consumer to identify the

source of the WINDMASTER sign stand by the dual

spring design. Also, as noted above, MDI’s reliance on

the testimony of so-called consumers to identify the

WINDMASTER sign stand by the dual-spring configura-

tion is misplaced as those persons do not constitute the

relevant consumer market. Accordingly, this factor favors

TrafFix.

2. Relatedness Of The Goods

This court has previously found, in discussing trade-

mark infringement, that the WINDBUSTER products are

virtually identical to the WINDMASTER products. Noth-

ing in this court’s analysis regarding trade dress infringe-

ment changes that finding. Accordingly, this factor favors

MDI.

3. Similarity of the Trade Dress

While it is true that the WINDBUSTER and WIND-

MASTER sign stand products are virtually identical, it

does not follow that there is a similarity of trade dress.

This is so because there has been no showing by MDI

that consumers identify the source of the dual spring de-

sign with MDI rather than TrafFix or some other source.

As stated above, even if there was such an identification

of product source, there would be no violation of trade

dress rights as this court finds that the dual spring design

is functional. See discussion infra. Accordingly, this fac-

tor favors neither party.

43a

4. Evidence of Actual Confusion

This court previously held, in its January 13, 1997

opinion, that the testimony of MDI’s salesmen regarding

alleged customer confusion is inadmissible hearsay. Mem.

Op. and Order, January 13, 1997 at pg. 15. See also

Duluth News-Tribune v. Mesabi Pub. Co., 84 F.3d 1093,

1098 (8th Cir.1996). The Duluth News court stated that

such evidence is “hearsay of a particularly unreliable na-

ture given the lack of an opportunity for cross-examination

of the [customer] regarding the reason for the ‘confu-

sion.” Id. MDI urges this court to reconsider its prior

holding regarding the admissibility of such evidence. This

court, however, after reviewing the deposition testimony

of Messrs. Noone, Scully, and Hyde, declines to do so

and, in fact, is even more convinced that such testimony

should not be admitted. Neither Messrs. Noone, Scully,

nor Hyde were able to identify a specific individual cus-

tomer who had exhibited confusion or on what particular

occasion such confusion was alleged to have occurred.

Similarly, Mr. Lunt, whose testimony this court would

consider to be evidence of actual confusion since he is a

purchaser of sign stands, was instead referring to some-

one else’s “confusion.” Moreover, Mr. Lunt was not able

to testify that the “confusion” he referred to dealt with

the “style” of the products, stating: “I’m not sure we’re

talking about style of products or style of the advertise-

ment for it.”

Despite the almost complete lack of evidence as to

actual confusion, this court will, once again, refrain from

drawing an inference of no actual confusion. Accord-

ingly, this court finds that this factor does not favor either

party.

44a

5. Marketing Channels Used

This court has previously found, in discussing trade-

mark infringement, that the WINDBUSTER products and

the WINDMASTER products are distributed through

identical marketing channels. Nothing in this courts anal-

ysis regarding trade dress infringement changes that find-

ing. Accordingly, this factor favors MDI.

6. Likely Degree of Purchaser Care

This court previously ruled, in its January 13, 1997

opinion, that the relevant buyer class is composed of pro-

fessional purchasers which tends to lower the likelihood

of confusion. See Homeowners Group v. Home Marketing

Specialists, 931 F.2d 1100, 1111 (6th Cir.1991) (citing

2 McCarthy on Trademarks § 23:29 (2d ed.1984)).

MDI urges this court to reconsider its prior ruling in light

of the testimony of Messrs. Lunt, Hyde, Sculley, and

Noone. This court, however, declines to do so, in part,

because it has found that testimony inadmissible. Ac-

cordingly, this factor favors TrafFix.

7. TrafFix’s Intent In Selecting The Dual-Spring

Design

While it is indisputable that TrafFix copied the WIND-

MASTER dual-spring design, that fact is of limited rele-

vance in determining TrafFix’s intent since it is clear

that the patents covering that sign stand were in the pub-

lic domain at the time of copying and that the design

was desirable. In Esercizio, the Sixth Circuit stated that:

‘Where the copying by one party of another’s prod-

uct is not done to deceive purchasers and thus derive

a benefit from another’s name and reputation, but

rather to avail oneself of a design which is attractive

45a

and desirable, a case of unfair competition is not

made out.’

Esercizio, 944 F.2d at 1243 (quoting West Point Mfg.

Co., 222 F.2d at 586). The Esercizio court concluded

that “where Ferrari’s design enjoyed strong secondary

meaning and Roberts admitted that he designed his cars

to look like Ferrari’s, the intent to copy was clear.” Id.

In the instant case, this court has found that MDI,

unlike Ferrari in Esercizio, did not enjoy strong second-

ary meaning in its product design. Moreover, while Traf-

Fix did, in fact, copy MDI’s product design, MDI does

not direct this court to any evidence that the copying was

done with the intent to derive a benefit from the reputa-

tion of MDI. See Zin-Plas Corp. v. Plumbing Quality

AFG Co., 622 F.Supp. 415, 420 (W.D.Mich. 1985).

While this court did find that TrafFix infringed upon the

WINDMASTER mark by adopting the WINDBUSTER

mark, which was likely to confuse a purchaser as to the

source of the sign stand, it does not follow that TrafFix

intended to improperly trade upon the WINDMASTER

design, which this court has found lacks secondary mean-

ing, by copying it. Accordingly, this factor favors Traf-

Fix.

8. Likelihood of Expansion of the Product Lines

Both parties concede that this factor does not favor

either party.

Thus, after examining the eight Frisch factors, this

court, although firmly convinced, itself, that no likelihood

of confusion exists, can not say, as a matter of law, that

there is not a likelihood of confusion between the trade

dress of the WINDMASTER sign stand and the WIND-

BUSTER sign stand.

46a

c. Functionality

The Supreme Court has recently stated that:

‘In general terms, a product feature is functional,’

and cannot serve as a trademark, ‘if it is essential to

the use or purpose of the article or if it affects the

cost or quality of the article,’ that is, if exclusive use

of the feature would put competitors at a significant

non-reputation-related disadvantage.

Qualitex Co. v. Jacobson Products Co., 514 U.S. 159,

165, 115 S.Ct. 1300, 1304, 131 L.Ed.2d 248 (1995)

(quoting Inwood Labs., supra, 456 U.S. at 844, 102

S.Ct. at 2183-84). See also Esercizio, 944 F.2d at 1246

(stating that “[a] product feature is functional ‘if it is

essential to the use of purpose of the article or if it affects

the cost or quality of the article.’”) (quoting citation

omitted). Moreover, Professor McCarthy has stated that:

The existence of a valid functional patent disclosing

the utilitarian advantages of the configuration in

question is very strong, if not conclusive, evidence

of the functionality of the configuration in which

trademark significance is alleged.

1 McCarthy on Trademarks § 7:89 (4th ed.1996) (cit-

ing cases).

While it is axiomatic that the patent and trade dress

laws protect different interests, Thomas Betts Corp., 65

F.3d at 657-58, and that courts allow a party to assert

trade dress rights after its patent has expired, see, ¢.g.,

Kohler Co., v. Moen Inc., 12 F.3d 632, 638 (7th Cir.

1993); Application of Mogen David Wine Corp., 51

C.C.P.A. 1260, 328 F.2d 925, 930 (1964); Zip Dee, Inc.

v. Dometic Corporation, 931 F.Supp. 602, 612 (N.D.II1.

1996), it is also “well established that in the case of an

expired patent, the federal patent laws do create a federal

47a

right to ‘copy and use’.” Elmer v. ICC Fabricating, 67

F.3d 1571, 1580 (Fed.Cir.1995) (quoting Bonito Boats,

Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 165, 109

S.Ct 971, 985, 103 L.Ed2d 118 (1989) (emphasis in

original) ). The Elmer court, citing Qualitex, also stated

that “extending trademark/trade dress law to protect func-

tional features might create perpetual, patent-like rights

in unpatented or unpatentable items.” Id. See also Keene

a v. Paraffex Indus., 653 F.2d 822, 824 (3d Cir.

It is important to bear in mind that the burden remains

upon MDI to establish the non-functionality of the WIND-

MASTER sign stand rather than on TrafFix to show that

it is functional. Esercizio, 944 F.2d at 1239. Therefore,

MDI, as part of its burden of proving non-functionality

by a preponderance of the evidence, must overcome the

effective presumption that the disclosures of the ‘696 and

‘482 patents establish that the dual spring configuration of

the WINDMASTER sign stand is functional.’

Essentially, MDI makes three arguments in support of

its claim that the configuration it alleges as protected trade

dress is non-functional. First, MDI argues that its ‘696

and ‘482 utility patents are irrelevant to the issue of func-

tionality. Second, MDI argues that use by others of the

10 MDI concedes that while functionality is a question of fact,

where the facts pertainng to functionality are not in dispute, as

in this case, the court may rule on the question. See, e.g., HWE,

Ine. v. JB Research, Inc., 993 F.2d 694, 696 (9th Cir.1993) (affirm-

ing the district court’s decision in favor of defendant on summary

judgment that plaintiff did not meet its burden on issue of func-

tionality) ; Interactive Network, Inc. v. NTN Communications, Inc.,

875 F.Supp. 1398, 1409 (N.D.Cal.1995) (granting summary judg-

ment because party with burden of proving nonfunctionality could

not do so); San Francisco Mercantile Co., Inc. v. Beeba's Crea-

tions, Inc., 704 F.Supp. 1005, 1009 (C.D.Cal.1988) (granting sum-

mary judgment because disputed designs were functional).

48a

configuration it claims as trade dress is not a competitive

necessity. Third, MDI claims that its advertising has con-

tinuously promoted the “look” of its sign stand rather

than its utilitarian or functional advantages.

- At the outset, this court notes that when determining

whether a product configuration is functional, the prod-

uct configuration must be looked at in its entirety, not

as discrete features that may be functional individually.

Schwinn Bicycle Co. v. Ross Bicycles, Inc., 678 F.Supp.

1336, 1351 (N.D.IIL1988). See also, Hartford House,

Ltd. v Hallmark Cards, Inc., 846 F.2d 1268, 1272 (10th

Cir.1988). An overall design combination of features that

are individually functional is protectable if the combina-

tion of those elements is not functional. See Restatement

(Third) of Unfair Competition § 17, comment b (1995).

MDI claims that its trade dress comprises five elements

see supra, p. 265, and that these must be considered in

their entirety, not as individual components. However, the

only significant distinction in appearance between MDI's

sign stands and the sign stands of MDI’s competitors is

the vertical dual-spring design or configuration. Each of

the competitors’ sign stands identified by MDI includes

the other four features claimed as elements of the alleged

trade dress. Thus, while this court must look to the entire

claimed trade dress, it is clear that the only element of

MDI’s alleged trade dress that arguably sets MDI’s prod-

uct apart from its competitors, and thus could operate as

a source identifier, is the pair of vertically arranged closely

spaced coil springs.

The first issue to be addressed in determining whether

MDI’s asserted trade dress is nonfunctional is the sig-

nifiance of MDI’s expired ‘696 and ‘482 patents. In In

re Morton—Norwich Products, Inc., 671 F.2d 1332

(C.C.P.A.1982), the court cited its prior decision in In

Re Shenango Ceramics, Inc., 53 C.C.PA. 1268, 362 F.2d

287, 291 (1966), stating that “the existence of an expired

49a

utility patent which disclosed the utilitarian advantage of

the design sought to be registered as a tradmark was evi-

dence that it was ‘functional’.” (citation omitted in orig-

inal). Moreover, Professor McCarthy has stated that:

Although the courts treat functional patents as

evidence of primary functionality, this evidence is

particularly entitled to great weight if the patent was

applied for by the same person who now asserts trade-

mark significance in the same configuration. A kind

of estoppel arises. That is, one cannot argue that

a shape is functionally advantageous in order to ob-

tain a utility patent and later assert that the same

shape is non-functional in order to obtain trademark

protection. Functional patent protection and trade-

mark protection are mutually exclusive.

1 McCarthy on Trademarks § 7:89 (4th ed.1996).

MDI argues that its ‘696 and ’482 patents are not rele-

vant to the issue of functionality because they do not dis-

close the closely-spaced vertical dual spring configuration of

the WINDMASTER traffic sign stands and therefore they

do not teach the specific configuration of the claimed WIND-

MASTER trade dress. This court, however, finds such

a position to be untenable given MDI’s past enforcement

of these utility patents. While the configuration being

claimed as trade dress in this case is not literally disclosed

in the ‘696 or ‘482 patents, MDI has, in the past, en-

forced its rights in its ‘696 and ’482 patents by enjoining

the manufacture of a product configuration virtually iden-

tical to that being alleged to constitute trade dress in the

instant case. See Winn-Proof Corp., supra, 203 U.S.P.Q.

at 60.%° In Winn-Proof, the court found that the Winn-

11 MDI urges this court to distinguish Winn-Proof because Sar-

kisian, who is the patent owner, was the plaintiff rather than MDI.

However, Sarkisian, who is the president and principal of MDI,

50a

Proof sign stand, which included two closely-spaced ver-

tical coil springs, infringed MDI’s ‘696 and ’482 patents

under the doctrine of equivalents and enjoined manufac-

ture of that sign stand. /d. at 68. In arguing for this judg-

ment, counsel for MDI,” in his post-trial brief, asserted

not only that the configuration of defendant’s sign stand

was substantially similar to the configuration now being as-

serted as trade dress by MDI, but also that the imitated

features are functional.

Specifically he stated:

. . . Sarkisian’s teaching of the “WindMaster” con-

cept was incorporated by plaintiff into a roadside con-

struction sign stand having a single upright and .. .

coil springs mounted close together in an arrangement

markedly similar to defendants’ models. . . . [T]he

unique manner in which “WindMaster” sign stands

with large display areas[] function, though un-

anchored and readily portable, to be stable against

tipping under high wind conditions [is] a function

fully incorporated in the accused devices of [the]

defendants . . . (emphasis added).

Furthermore, counsel asserted that all MDI’s various

sign designs, which would include the design now being

asserted as trade dress, are functionally equivalent:

As shown at trial, all the various “WindMaster” sign

stands incorporate all of the features, perform in the

same manner, and achieve the same results as the

sign stands disclosed and claimed in the ‘696 and

‘482 patents.

had all of “his” litigation expenses paid for by MDI. Accordingly,

this court will consider Mr. Sarkisian and MDI, for purposes of the

instant motions, to be interchangeable.

12 Present counsel for MDI, Mr. John A. Artz, also represented

Mr. Sarkisian in the Winn-Proof case.

Sla

These arguments that the closely-spaced dual-coil spring

design performs or functions in an equivalent manner to

the more spaced-apart dual-coil springs are especially sig-

nificant given the arguments that MDI made in its efforts

to obtain its patents. MDI argued that the functioning of

the dual-spring design was superior to the single-spring de-

sign taught by the prior art:

One of the novel points of structure in the present in-

vention is the provision of a pair of spring connec-

tions as opposed to a single spring connection as has

been used in the past in connection with signs. .. .

The reason for providing two spaced apart spring

connections is to force the sign to deflect in a direc-

tion along the longitudinal axis of the base and to

prevent twisting of the sign frame.

MDI has not explained how its two positions, one tout-

ing the functionality of the dual-spring design, whether

closely or widely spaced, for purposes of obtaining and

enforcing its patents, and the other, disclaiming the func-

tionality of its closely spaced dual-spring design for pur-

poses of obtaining trade dress protection, are not incon-

sistent. Instead, MDI argues that the “fact that MDI

previously asserted its patent rights against a sign stand

with coil springs is riot relevant . . . [because] that prior

case was patent infringement which focused on the utility

of the products as described by the patent claims—not

their physical appearance.” This response, however, misses

the point. As the Supreme Court stated in Qualitex:

The functionality doctrine prevents trademark law,

which seeks to promote competition by protecting a

firm’s reputation, from instead inhibiting legitimate

competition by allowing a producer to control a use-

ful product feature.

52a

Qualitex, 514 U.S. at 164, 115 S.Ct. at 1304 (emphasis

added) .°

MDI next argues that use by others of the configuration

it claims as trade dress is not a competitive necessity.

MDI states that the test of competitive necessity is

“whether the market would be forclosed if a competitor

could not market an identically configured product.” This

however, is something of an overstatement. According to

13 Without much in the way of elaboration, plaintiff directs this

court’s attention to a number of products that have been granted

trade dress rights despite having some utilitarian features. This

court, however, finds that each is distinguishable from the case

at bar. In In re Weber-Stephen Products Co., 3 USPQ2d 1659,

1987 WL 124298 (T.T.A.B.1987), the Court affirmed the registra-

tion for the configuration of the round Weber grill as non-func-

tional. While the Weber grill was patented, the Court found that

“nothing in the patent discloses any utilitarian advantages of this

particular design.” Further, the Court identified many equivalent

and available designs. In Black & Decker Corp. v. Int'l Sales and

Marketing, 36 USPQ2d 1851, 1995 WL 776943 (C.D.Cal.1995), the

Court’s 52 word analysis of functionality is of little assistance to

this court, especially given that the court made no mention of any

patent, expired or otherwise. In Jn re Honeywell, Inc., 8 USPQ2d

1600, 1988 WL 252417 (1988), the Court found that the patents

which had covered this device “relate[d] to the inner workings of

the thermostat .. . [and that] there is nothing of inherent utili-

tarian value about the circular round shape of the cover!).” Fur-

thermore, the Court found that in the 17 years since the patent

had expired, no one else had made use of a rounded circular cover

configuration and therefore concluded that a cover so shaped was

not a competitive necessity. In Sunbeam Products Inc. v. The West

Bend Co., 89 USPQ2d 1545, 1996 WL 6511639, the Court found

that while the mixer was comprised of many functional components,

many of which had been patented, the overall shape and configura-

tion was non-functional. Conversely, in the case at bar, the only

feature identified that could arguably be the product’s “trade dress”

is the most functional feature of the product. Finally, plaintiff

directs this Court to the Coca-Cola bottle example. All that plaintiff

offers as evidence of the non-functionality of the Coke bottle is a

trademark registration number. No evidence of any patent, expired

or otherwise, is offered, nor any analysis of its non-functionality.

53a

the Restatement (Third) of Unfair Competition § 17,

comment b (1995), “[A] design may be functional if it is

one of a limited number of superior designs.” (emphasis

added). Furthermore, the Federal Circuit has stated:

That another type of [design] would work equally as

well does not negate that this [design] was designed

functionally to enhance or at least not detract from

the rest of the system. ... If the feature asserted to

give a product distinctiveness is the best, or at least

one, of a few superior designs for its de facto pur-

pose, it follows that competition is hindered.

In re Bose Corp., 772 F.2d 866, 872 (Fed.Cir.1985) (em-

phasis in original). Moreover, the Supreme Court in

Qualitex noted that the exclusive use of the claimed con-

figuration may put competitors at a disadvantage if use

of that configuration “affects the cost or quality of the

article.” Qualitex, supra, 514 U.S. at 165, 115 S.Ct. at

1304.

As stated earlier, it is MDI’s burden to prove non-

functionality; thus, MDI must show not only that alterna-

tive designs exist, but also that those alternatives effec-

tively eliminate competitors’ need for the features that

MDI is asserting as protectable trade dress. See Elmer, 67

F.3d at 1580.

MDI argues that its asserted trade dress is nonfunctional

because the number of alternative sign stand designs avail-

able to TrafFix is “virtually unlimited.” MODI refers

specifically to designs made by six competitors in the traf-

fic control work zone market: Sign-Up Corp, Dicke Tool,

Eastern Metal, Work Area Protection, Korman Signs, and

Services and Materials. As TrafFix points out, however,

these purported alternatives are either unequal to MDI’s

dual spring design or unavailable. None of the so-called

alternative designs are capable of withstanding the 75

54a

mph winds tolerated by MDI’s sign stand.** Moreover,

four of the sign stands touted as alternatives which adver-

tise a wind resistant feature are patented and are therefore

unavailable for use by others.!°

As disclosed in its ‘696 and ’482 patents, MDI attrib-

utes its sign stands’ ability to withstand high winds to their

dual-spring construction. Furthermore, Mr. Hillstrom

stated that in changing the MDI sign stand from their

widely-spaced dual-spring design to the closely-spaced

dual-spring design, MDI reduced the size of the base, mak-

ing the sign stand more compact and lighter weight Also

according to Mr. Hillstrom, by changing to the closely-

spaced dual-spring design, MDI lowered the cost to manu-

facture the sign stand. Such evidence that a design feature

affects the cost or quality of an article was noted by the

Supreme Court to be particularly indicative of function-

ality. See Qualitex, 514 US. at 164-66, 115 S.Ct. at 1304.

MDI has not shown that competitors in the traffic work

zone sign stand market have no need for lightweight,

easily portable, wind resistant sign stands. Indeed, Mr.

Hillstrom stated that the changes in the design of the

WINDMASTER sign stands were made in response to just

such a perceived need. Moreover, MDI has not proffered

sufficient evidence that competitors have viable alternatives

to meet such a need. If the purported alternatives are not

available and equal, then they are not true alternatives.

MDI’s third argument is that its advertising has con-

tinuously promoted the “look” of its sign stand rather than

14 Further, TrafFix offers MDOT specifications as evidence that

many of the proposed alternatives do not match WINDMASTER’S

performance.

15 MDI also suggests, by way of a declaration from their designer,

Mr. Hillstrom, that hypothetical alternative designs can be used.

However, these designs are unsupported by any evidence that they

are equal in performance.

55a

its utilitarian or functional advantages. If a seller en-

courages customers “to ‘look for’ a particular product or

package feature,” this is “evidence of tradmark or trade

dress status in that feature[] as well as evidence of

the presence of secondary meaning.” 1 McCarthy on

Trademarks § 7:74 (4th ed.1996) (citing cases). On

the other hand, “{i]f a seller advertises the utilitarian ad-

vantages of a particular feature, this constitutes strong

evidence of functionality.” Jd.

While MDI has highlighted the dual-spring construc-

tion and its ability to withstand high winds in its promo-

tional literature, it has not, as discussed supra, utilized

“look for” advertising. Since the dual-spring construction

is arguably the most utilitarian aspect of MDI’s sign-

stands, the advertising that emphasizes that configuration

in the absence of any “look for” designation is significant

in finding the dual-spring design functional.

This court finds that MDI has not proffered sufficient

evidence which would enable a reasonable trier of fact to

find that MDI’s vertical dual-spring design is non-

functional. The expired utility patents are especially strong

evidence of the usefulness of the dual-spring design. The

alternative designs suggested by MDI are few and un-

equal to the WINDMASTER sign stand in performance.

Finally, MDI’s advertising emphasizes the functional ad-

vantages of the dual spring design rather than its look.

Thus, this court finds that the dual-spring design asserted

by MDI as trade dress is functional as a matter of law

and not entitled to trade dress protection under the

Lanham Act.

Conclusion

For the reasons stated above, this court finds that no

reasonable trier of fact could conclude that MDI has es-

tablished secondary meaning in its WINDMASTER sign

56a

stand design. Even assuming, arguendo, that MDI has

created a genuine issue of fact as to secondary meaning,

this court fiuds that, as a matter of law, the pair of ver-

tically arranged closely spaced coil springs attached to the

base member on the MDI WINDMASTER sign stand is

functional. Accordingly, MDI’s motion for summary judg-

ment is denied and TrafFix’s motion for summary judg-

ment is granted.

[Figure 1 Omitted in Printing]

57a

ORDER

IT IS HEREBY ORDERED that plaintiff, MARKET-

ING DISPLAYS, INC.’s, motion for summary judgment,

pursuant to Federal Rule of Civil Procedure 56(c), on

Counts IT and IV of its amended complaint, is DENIED.

IT IS FURTHER ORDERED that defendant, TRAF-

FIX DEVICES INC.’s, motion for summary judgment,

pursuant to Federal Rule of Civil Procedure 56(c), on

Counts II and IV of plaintiff's amended complaint, is

GRANTED and that plaintiff, MARKETING DIS-

PLAYS, INC., take nothing.

SO ORDERED.

58a

ORDER DENYING PLAINTIFF'S MOTION

FOR RECONSIDERATION

{July 9, 1997]

On June 10, 1997, this court entered an order grant-

ing the: defendant, TrafFix’s, motion for summary judg-

ment and denying the plaintiff, MDI’s, motion for sum-

mary judgment as to Courts II and IV of MDI’s amended

complaint. On June 24, 1997, MDI timely filed a motion

for reconsideration pursuant to Local Rule 7.1(h) (E.D.

Mich. Nov. 7, 1994). MDI asserts that this court erred

in 1) limiting its analysis of MDI’s trade dress to a pair

of vertically arranged closely spaced coil spings, 2) ruling

that MDI’s trade dress was not inherently distinctive,

3) ruling that MDI’s trade dress did not have secondary

meaning, 4) not ruling that there was a likelihood of

confusion between MDI’s alleged trade dress and TrafFix’

sign stand, and 5) ruling that MDI’s alleged trade dress

is functional as a matter of law.

While plaintiff asserts that this court committed “error”

for the reasons stated above, plaintiff never couches its

arguments in the appropriate legal standard of review of

a motion for reconsideration. The Local Rules for the

Eastern District of Michigan state that in a motion for

reconsideration “the movant shall not only demonstrate

a palpable defect by which the court and the parties have

been misled but also show that a different disposition of

the case must result from correction thereof.” L.R.

7.1(h)(3). A “palpable defect” is a defect which is ob-

vious, clear, unmistakable, manifest or plain. Webster's

New World Dictionary 974 (3rdEd.1988). The Local

Rules also provide that any motion for reconsideration

which merely presents the same issues relied upon by the

court, either expressly or by reasonable implication, shall

be denied. L.R. 7.1(h) (3).

MDI has not demonstrated that a palpable defect oc-

curred in this court’s June 10, 1997 order. In large part,

‘

59a

MDI’s arguments in support of reconsideration merely

reiterate the arguments it previously presented to this

court. This court has already considered these arguments

and has resolved them against MDI. This court, how-

ever, will take this opportunity to further elucidate the

conclusions of the June 10, 1997 opinion.

First, plaintiff argues that this court erred in narrowing

its consideration of MDI’s alleged trade dress to a pair

of vertically arranged closely spaced coil springs when

plaintiff defined its trade dress as comprising a narrow

base, closely spaced coil springs, four leg members ex-

tending at angles from the base, an upright, and a sign."

MDI contends that it is entitled to consideration of its

entire trade dress because the image and “look” which

separates it from its competitors is the entire “synergis-

tic” * combination of elements claimed.

1 Plaintiff asserts that TrafFix never contested MDI’s definition

of MDI’s alleged trade dress. This assertion, however, is incorrect.

See TrafFix’s Brief in Reply to MDI’s Opposition to TrafFix’s

Motion for Summary Judgment, p. 4.

2The court finds plaintiff’s use of the word “synergistic,” in

describing the combination of elements it alleges as its trade dress,

curious to say the least. As plaintiff’s counsel is aware, “Syner-

gism” is a concept in patent law sometimes discussed in relation to

the nonobviousness of an invention. This court is not aware of any

use or application of the term in the law of trade dress. In fact,

the Ninth Circuit in Sarkisian v. Winn-Proof Corp., 688 F.2d 647

a Cir.1982), a case intimately involved in this matter, stated

A definition of synergism that reflects its etymon is that the

elements in the combination must cooperate or interact with

each other. So defined, synergism distinguishes those inven-

tions in which parts are merely aggregated, and those in which

the parts coact with each other so that the result comes from

the combined effect of the several parts and not simply from

the separate action of each.

Id, at 649, fn. 1. That plaintiff would use a term that speaks to

the interactive functioning of the elements of MDI’s sign stand in

60a

Every single one of the competitors cited by MDI, how-

ever, markets a sign stand with a narrow base, four leg

members extending at angles from the base, an upright,

and a sign. As such, MDI’s argument that a pair of

vertically-arranged coil spings combined with other leg

members variously shaped, i.e., U-shaped, parallel, etc.,

and/or other uprights, i.c., twin poles, A-shaped, etc.,

may create an entirely different look altogether, is irrele-

vant to this court’s finding. Moreover, as this court

pointed out in its June 10, 1997 opinion, MDI’s own

references to its product effectively concede the fact that

the dual spring configuration is the only element that sets

MDI’s alleged trade dress apart from that of its competi-

tors. See Opinion and Order, p. 5, fn. 6. Also telling is

that in support of MDI’s assertion that all its competitors

_ “have different product configurations and designs,” MDI

describes ‘éach of them only in terms of its spring mech-

anism. See MDI’s Briéf-in. Opposition to TrafFix’s Mo-

tion for Summary Judgment, p. 11. Accordingly, this court

finds no palpable defect has occurred in this regard.

Plaintiff next argues that the court erred in finding that

. its trade dress is not inherently distinctive. Under the ap-

---plteable legal standards cited by this court, trade dress

can be identified in-one_of two ways, either as being in-

herently distinctive or as having acquired secondary mean-

ing. Plaintiff claims that it did not choose to argue in-

herent distinctiveness for purposes of this motion, but

instead chose to rely on its argument that its sign stands

had acquired secondary meaning. Yet, at oral argument,

when queried by this court as to what evidence supported

its claim of inherent distinctiveness, counsel for plaintiff

its efforts to describe its appearance seems to support rather than

contradict this court’s finding that MDI’s alleged trade dress is

functional. .

6la

merely offered the wholly unpersuasive fact that Messrs.

McKenney, Kuczera and Ursprung could identify a

WINDMASTER stand on the side of the road. Since

plaintiff has the burden of proving either secondary mean-

ing or inherent distinctrveness and chose

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