Amicus Curiae Brief — TrafFix Devices, Inc. v. Marketing Displays, Inc.

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Text

. Supreme Court, U

: FILED

7 4

No. 99-1571 AUG 24 2000

In the Supreme Court of the United States

—

— — oe ed

TRAFFIX DEVICES, INC., PETITIONER

MARKETING DISPLAYS, INC.

ON WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE SIXTH CIRCUIT

BRIEF FOR THE UNITED STATES

AS AMICUS CURIAE SUPPORTING PETITIONER

SETH P. WAXMAN

Solicitor General

Counsel of Record

DAVID W. OGDEN

Assistant Attorney General

LAWRENCE G. WALLACE

Deputy Solicitor General

JEFFREY A. LAMKEN

Assistant to the Solicitor

General

ANTHONY J. STEINMEYER

MARK S. DAVIES

Attorneys

Department of Justice

Washington, D.C. 20530-0001

(202) 514-2217

QUESTION PRESENTED

Whether and to what extent a party may maintain a trade

dress infringement action under the Lanham Act, 15 U.S.C.

1051-1127 (1994 & Supp. IV 1998), to challenge the copying

of product features after a utility patent covering the fea-

tures has expired. a

— —

TABLE OF CONTENTS

Page

Interest of the United States . . . . eee, 1

. k. ö. . —— ä — 1

err — — — 5

Argument:

Trade dress protection does not extend to utilitarian

features shown to be functional by an expired utility

A. Patent and trademark law guarantee the right

to copy publicly disclosed utilitarian product

designs not protected by patent 7

B. Features disclosed to have utility in an expired

patent are not protected as trade dress under the

AES ences 12

C. Respondent is not entitled to trade dress

. ͥ — — 30

TABLE OF AUTHORITIES

Cases:

Astoria Fed. Sav. & Loan Ass'n v. Solimino, 501

8 15, 17

Best Lock Corp. v. Schlage Lock Co., 413 F.2d 1195

(C. C. P. A. 1000 eee K» — 14

Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

ce passim

Coats v. Merrick Thread Co., 149 U.S. 562

—. ——ü— — —

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

r ˙ —˙;m —wüm erinnrreriatieneeserees 9, 18, 19

Daniel v. Electric Hose & Rubber Co., 231 F. 827

Ee 15

Dennison Mfg. Co., In re, 39 F.2d 720 (C.C.P.A.

—. — — ½— 11

(IIT)

Cases-—Continued: Page

Disc Golf Ass n v. Champion Discs, Inc,, 158 F.3d

14, 15

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

211. —ñ— 12

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

cert. denied, 505 U.S. 1219 (1992————— 19

Goodyear Tire & Rubber Co. v. Robertson, 18

F. 2d 639 (D. Md. 1927), aff'd, 25 F.2d 833 (4th Cir.

— ä—— 11

Inwood Labs. v. Ives Labs., 456 U.S. 844 (1982) 6, 12, 25

JA. Scriven Co. v. WH. Towles Mfg. Co., 32 App.

D.C. 321 (1909) 15

J.C. Penney Co. v. H.D. Lee Mercantile Co., 120

F. 2d 949 (8th Cir. 1941) 11

James Heddon’s Sons v. Millsite Steel & Wire

Works, Inc., 128 F. 2d 6 (6th Cir.), cert. denied, 317

U.S. 674 (1942) 11

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

(1938) 8, 11, 17, 21, 22

Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc.,

58 F.3d 27 (2d Cir. 1995) 29

Morton-Norwich Prods., In re, 671 F.2d 1332

(C.C.P.A. 1982) .... 9-10, 15

National Stone-Tile Corp., In re, 57 F.2d 382

(C.C.P.A. 1932) 11

Pope Automatic Merchandising Co. v. McCrum-

Howell Co., 191 F. 979 (7th Cir. 1911), cert. denied,

223 U.S. 730 (1912) ...... 11

Qualitex Co. v. Jacobson Prods. Co., 514 U.. 159

(1995) 2, 5, 6, 11, 12, 13, 23, 25, 26

Sarkisian v. Winn-Proof Corp., 686 F. 2d 671 (9th

Cir. 1981) 28

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

(1964) 9, 17, 18

Cases—Continued: Page

Shanango Ceramics, Inc., In re, 362 F.2d 287

(C.C.P.A. 1966) 14

Singer Mfg. Co. v. June Mfg. Co., 163 US. 169

(1896) 8, 17, 23

Sparklets Corp. v. Walter Kidde Sales Co., 104

F. 2d 396 (C.C.P.A. 1939) 14

Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d

246 (5th Cir. 1997), cert. denied, 523 U.S. 1118

(1998) 29

Sylvania Elec. Prods. v. Dura Elec. Lamp Co., 247

F. 2d 730 (3d Cir. 1957) 11-12

Thomas & Betts Corp. v. Panduit Corp., 138 F.3d

277 (7th Cir.), cert. denied, 525 U.S. 929 (1998) 19

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763

(1992) 1,6

U.S. Elec. Mfg. Corp. v. Bright Star Battery Co.,

6 N. V. S. 2d 690 (1938) 11

United States v. Dubilier Condenser Corp., 289

U.S. 178 (1933) : 1. 7

United States v. Wells, 519 U.S. 482 (1997) 17

Vornado Air Circulation Sys. v. Duracraft Corp.,

58 F.3d 1498 (10th Cir. 1995), cert. denied, 516

U.S. 1067 (1996) 16, 22, 23

Wal-Mart Stores, Inc. v. Samara Bros., 120 S. Ct.

1339 (2000) 1, 20, 21, 25

Zip Dee, Inc. v. Dometic Corp., 931 F. Supp. 602

(N.D. Ill. 1996) 16, 23

Statutes and regulations:

Patent Act of 1790, ch. 7, 1 Stat. 110 7

Trademark Act of 1946 (the Lanham Act), ch, 540,

60 Stat. 427, as amended, 15 U.S.C. 1051 et Se 1

15 U.S.C. 1052(e)(5) (Supp. IV 1998) 24,

15 U.S.C. 1114 (1994 & Supp. IV 1998) 2

15 U.S.C. 1123 18

Statutes and regulations—Continued: Page

ya 2, 6, 21

I 24, 29

„ 1

...... —⏑—§ . 13

11 —— — —— 20

35 U.S.C. 108 (1994 & Supp. IV 1998) ..ccccccccsccccccsoccsseesesee 13

SD le — T— òö — 1

Miscellaneous:

H.R. 3163, 105th Cong., 2d Sess. (1998) 24

H.R. Rep. No. 250, 106th Cong., Ist Sess. (1999) ................ 24

1 J. McCarthy, Trademarks and Unfair Competition

(4th ed. 2000) .. 10, 11, 12, 14, 23, 24, 29

W. McLean, Opening Ansther Can of Worms: Pro-

tecting Product Configuration as Trade Dress,

66 U. Cin. L. Rev. 119 (1997) . 0 10 — 10,12

Restatement of Torts (1938) 5, 10, 13, 22, 25, 26

Restatement (Third) Unfair Competition (1995) 14, 22

S. Rep. No. 1333, 79th Cong., 2d Sess. (1946) 6

Trademarks Amendments Act of 1999: Hearings Before

the Subcomm. on Courts & Intellectual Property of the

House Comm. on the Judiciary, 106th Cong., Ist Sess.

(1999) * 24

Trade-marks: Hearings Before a Subcomm. of the

Senate Comm. on Patents, 78th Cong., 2d Sess.

ee 17

Trademark Manual of Examining Procedure (2nd ed.

1993, rev. ed. 1997) .... ie 15

INTEREST OF THE UNITED STATES

The United States has a strong interest in protecting the

pro-inventive policies of the patent system, as well as the

procompetitive policies of the trademark and antitrust laws.

In addition, the United States Patent and Trademark Office

must determine the registrability of proposed trademarks,

including product designs claimed as trade dress.

STATEMENT

1. This Nation’s patent laws have long represented a

“carefully crafted bargain for encouraging the creation and

disclosure of new, useful, and non-obvious advances in

technology.” Bonito Boats, Inc. v. Thunder Craft Boats,

Inc., 489 U.S. 141, 146, 150-151 (1989). To encourage innova-

tion, the inventor of a new and useful advance is given “the

exclusive right to practice the invention for a period of

years.” Id. at 151. In exchange, the inventor must disclose

how to make the invention, 35 U.S.C. 112, so that, after the

patent expires, “the knowledge of the invention enures to

the people, who are thus enabled without restriction to

practice it and profit by its use.” United States v. Dubilier

Condenser Corp., 289 U.S. 178, 187 (1933).

The Trademark Act of 1946 (the Lanham Act), ch. 540, 60

Stat. 427, as amended, 15 U.S.C. 1051 et seq., provides a

federal system for the registration, protection, and regula-

tion of trademarks, which the Act defines as “any word,

name, symbol, or device, or any combination thereof [used or

intended to be used] to identify and distinguish [a pro-

ducer’s] goods * * * from those manufactured or sold by

others.” 15 U.S.C. 1127. The term trademark extends to

“trade dress,” which has come to include not only a product’s

packaging but also its “total image and overall appearance” if

those serve to identify the producer. Two Pesos, Inc. v. Taco

Cabana, Inc., 505 U.S. 763, 764 n.1 (1992); Wal-Mart Stores,

Inc. v. Samara Bros., 120 S. Ct. 1339, 1343 (2000). By regis-

(1)

tering an eligible mark with the United States Patent and

Trademark Office, a person may obtain the exclusive right to

use that mark. 15 U.S.C. 1114 (1994 & Supp. IV 1998).

Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), also

extends protection to unregistered marks, creating a cause

of action against anyone who uses in commerce “any word,

term, name, symbol, or device, or any combination thereof”

that “is likely to cause confusion * * * as to the origin * * *

of his or her goods.” 15 U.S.C. 1125(a).

Unlike patent law, the Lanham Act is not designed to

encourage invention. Instead, it helps consumers identify

the source of goods. “(Bly preventing others from copying a

source-identifying mark,” the Act “reduce[s] the customer's

costs of * * * purchasing decisions” because the appearance

of a mark on an item “quickly and easily assures a potential

customer that” the item “is made by the same producer as

other similarly marked items that he or she liked (or dis-

liked) in the past.” Qualitex Co. v. Jacobson Prods. Co., 514

U.S. 159, 163-164 (1995) (internal quotation marks omitted).

Protecting trademarks also encourages product quality,

because it “helps assure a producer that it (and not an imi-

tating competitor) will reap the financial, reputation- related

rewards associated with a desirable product.” Id. at 164.

2. Respondent manufactures and sells portable, spring-

mounted, wind-resistant stands for traffic signs under the

WINDMASTER trademark. Pet. App. 2a, 26a. In 1972,

respondent’s president obtained two utility patents (Nos.

3,662,482 and 3,646,696, hereinafter the 482 and 696

patents) on a sign display device. The patented device con-

sists of an unanchored base to which “two spaced apart” up-

right spring connections of specified rigidity are mounted;

those springs are attached to an upright bar or member,

which supports the sign to be displayed. 971 F. Supp. at 277

(photo); 482 Patent at 4 (claim 1). The springs permit the

sign to yield to the wind and thus make it less susceptible to

tipping over. The use of two springs prevents the sign from

“twisting” on its frame. Pet. App. 2a, 18a; 482 Patent at 1

(summary), 5 (claim 1).

Shortly after respondent’s patents expired, petitioner

reverse engineered the WINDMASTER sign and began

selling its own version. Pet. App. 3a. Petitioner also

improved on the design, creating and patenting a “quick

release” mechanism. J.A. 253. The TrafFix Devices brand

name appears on all of petitioner’s stands. Ibid.

Respondent filed this trade dress infringement action

under the Lanham Act, seeking to preclude petitioner from

using its design.! Respondent claimed that the design of its

sign—consisting of “(a) a relatively narrow base member;

(b) a pair of vertically arranged closely spaced coil springs

attached to the base member; (c) a plurality of leg members

attached to the base member * * *; (d) an upright member

attached to the coil springs; and (e) a sign attached to the

upright member“ is trade dress that identifies the sign as

made by respondent. Pet. App. 29a. The district court

observed that respondent was required to prove, among

other things, that “the appropriated features of the trade

dress are primarily non-functional.” Jd. at 32a, 48a. The

court, however, found that “the only significant distinction in

appearance” between respondent’s stand and those of its

competitors “is the vertical dual-spring design or con-

figuration,” since each of the competing stands “includes the

other four features.” Id. at 48a.

Focusing on the dual-spring design, the district court

concluded that respondent could not show that its alleged

trade dress was “primarily non-functional.” Pet. App. 46a-

55a. The court observed that, in patent enforcement liti-

gation, respondent had asserted that the dual-spring mecha-

! Respondent also sought to enjoin petitioner from using the name

WINDBUSTER because it was similar to respondent’s WINDMASTER

mark. The district court granted the injunction, Pet. App. 68a-93a, the

court of appeals affirmed, id. at 4a-12a, and petitioner did not seek further

review.

nism enables the sign “to be stable against tipping under

high wind conditions” by permitting it “to deflect in a

direction along the longitudinal axis” while preventing the

sign from “twisting.” Jd. at 50a-5la. The court found that

the “utility patents are especially strong evidence of the

usefulness of the dual-spring design.” Id. at 55a.

3. The court of appeals reversed in relevant part. Pet.

App. la-24a. The court agreed that the “two spaced apart

spring connections” enable the sign to yield to the wind

while “prevent[ing] twisting of the sign frame.” Id. at 18a.

And the court noted that federal courts are divided on the

extent to which an expired utility patent “forecloses trade

dress protection.” Jbid. The court concluded, however, that

“[s]o long as it is possible to protect the appearance” of the

sign stand “without protecting the design, a per se rule is not

necessary.” Id. at 19a.

In this case, the court of appeals suggested, it might be

possible to protect respondent’s trade dress without fore-

closing use of vertically arranged coil springs. Any com-

petitor who uses dual coil springs, the court stated, could be

required to use leg members other than the straight ones

used by respondent (such as “U-shaped” leg members) or

“other uprights (twin poles, A-shaped, etc.)” to “create an

entirely different look altogether.” Pet. App. 19a. “It takes

little imagination,” the court continued, “to conceive of a

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

nism.” Ibid. The court also stated that “other competitors

* * * avoid emulating” respondent’s trade dress by not

using the dual spring design; petitioner must do likewise, the

court stated, or “find some other way to set its sign apart to

avoid infringing [respondent’s] trade dress.” Id. at 20a.

The court of appeals rejected the district court’s con-

clusion that protecting respondent’s stand design as trade

dress “would put its competitors at a disadvantage beyond

the merely reputational,” even though the district court had

found the design to be one of a limited number of superior

designs. Pet. App. 20a; id. at 53a. “The appropriate

question,” the court stated, “is whether the particular prod-

uct configuration is a competitive necessity.” Id. at 20a.

Here, the court indicated, respondent’s design may not be a

competitive necessity. Id. at 20a-2la. Although the equally

effective competing designs are patented, the court sug-

gested that petitioner “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 [respondent’s] trade

dress.” Id. at 21a.

SUMMARY OF ARGUMENT -

In enacting the Lanham Act in 1946, Congress acted

against a legal background that featured two related and

well-established principles. First was the principle that,

under federal patent law, utilitarian conceptions “placed

before the public without the protection of a valid patent”

are in the public domain and thus “subject to appropriation

without significant restraint.” Bonito Boats, 489 U.S. at 156.

The second was the “functionality” doctrine of trademark

law, which bars utilitarian features i. e., features that affect

the goods’ “purpose, action, or performance, or the facility or

economy of processing, handling, or us[e]”—from being

withdrawn from the public domain as trade dress. Restate-

ment of Torts § 741(b)(ii), at 623, § 742, at 628-629 & cmt. a

(1938) (1938 Restatement); see also Qualitex, 514 U.S. at 164.

In our view, the functionality doctrine—properly con-

strued in light of its important role in ensuring that useful

features are withdrawn from the public domain only pur-

suant to valid (and temporally finite) patents—precludes

respondent’s trade dress claim. Where, as here, an expired

utility patent discloses that the feature alleged as trade

dress contributes to the operation of the formerly patented

device, the feature must be considered “functional” for pur-

poses of the Lanham Act and thus ineligible for trade dress

protection. That conclusion is consistent with this Court’s

repeated recognition that patent law accords the public the

right to copy utilitarian conceptions in expired patents, and

serves the interests of judicial economy. Looking to the

scope of the patent claims will often permit courts to

determine the functionality of feafũres in expired patents

without resort to extensive proceedings or difficult and

nuanced tests. Such a clear standard is necessary to ensure

that trade dress litigation— or the threat thereof—does not

undermine the substantive goal of patent law, which is to

ensure that unpatented innovations may serve as building

blocks for further advances.

ARGUMENT

TRADE DRESS PROTECTION DOES NOT EXTEND

TO UTILITARIAN FEATURES SHOWN TO BE FUNC-

TIONAL BY AN EXPIRED UTILITY PATENT

The Lanham Act seeks “to codify and unify the common

law of unfair competition and trademark protection.” In-

wood Labs. v. Ives Labs., 456 U.S. 844, 861 n.2 (1982) (White,

J., concurring); Two Pesos, 505 U.S. at 785 (Thomas, J., con-

curring).” In particular, Section 43(a) of the Lanham Act

prohibits competitors from using a trademark or trade dress

that is “likely to cause confusion * * * as to the origin” of

goods. 15 U.S.C. 1125(a). In enacting the Lanham Act, Con-

gress acted against a background of (and incorporated) two

related and well-established principles: first, the long-

standing rule that, under federal patent law, publicly dis-

2 The Lanham Act consolidated the 1905 Trademark Act and other

“scattered” trademark laws into one statute. S. Rep. No. 1333, 79th Cong.,

2d Sess. 3, 5 (1946). The Act’s legislative history noted that It here is

much that is good” under present law and expressed an intent to

preservel] the things which have demonstrated their usefulness.” Id. at

3. At the same time, Congress did alter some common law rules “to

‘dispense with mere technical prohibitions,’” Qualiter, 514 U.S. at 171

(quoting S. Rep. 1333, supra, at 3), such as by permitting registration of

descriptive marks (if they have acquired secondary meaning), ibid. Where

Congress altered existing law, however, it did so explicitly. See, e.g., ibid.

closed utilitarian conceptions unprotected by patent are in

the public domain to be exploited and used as building blocks

for further innovation by all; and second, the traditional func-

tionality doctrine, which ensures that trademark protection

does not interfere with competition, and which helps define

the separate domains of patent and trademark law by

preventing the latter from withdrawing useful conceptions

from the public domain in perpetuity.

In our view, the functionality doctrine resolves this case.

Although that doctrine is sometimes difficult to apply, its

application is not difficult in cases like this one. In

particular, where an expired utility patent shows that the

features alleged as trade dress contribute to the operation of

the claimed invention, those features must be considered

“functional” and thus ineligible for Lanham Act protection.

The contrary conclusion would abridge the fundamental

patent-law principle that utilitarian conceptions unprotected

by patent are in the public domain and may be copied by all.

A. Patent And Trademark Law Guarantee The Right To

Copy Publicly Disclosed Utilitarian Product Designs Not

Protected By Patent

1. Patent law represents a carefully calibrated balance

between the need to encourage “the creation and disclosure

of new, useful, and non-obvious advances in technology,”

Bonito Boats, 489 U.S. at 151, and the “ultimate goal” of

ensuring that those advances eventually enter the public

domain for public use and benefit, id. at 151, 157. Accord-

ingly, although patent law gives inventors “the exclusive

right to practice the invention for a period of years,” id. at

151, it conditions that grant on disclosure of how to make the

invention, so that “the knowledge of the invention enures to

the people, who are thus enabled without restriction to prac-

tice it and profit by its use” once the patent expires. Dubil-

ier Condenser Corp., 289 U.S. at 186-187. See also Patent

Act of 1790, ch. 7, 1 Stat. 110 (requiring disclosure of how to

“make, construct, or use the” invention “to the end that the

public may have full benefit thereof, after the expiration of

the patent term”). Thus, “bringling] new designs and

technologies into the public domain” is “the ultimate goal of

the patent system,” Bonito Boats, 489 U.S. at 151.

To achieve that end, patent law has long required that

unpatented utilitarian conceptions, once publicly disclosed,

be available for public use notwithstanding other claims to

protection. See Bonito Boats, 489 U.S. at 157. Indeed, the

effectiveness of patent law in encouraging significant advan-

ces over prior art, and disclosure of those advances, depends

“almost entirely on a backdrop of free competition in the ex-

ploitation of unpatented designs and innovations.“ Id. at 151.

It is fundamental that unpatented utilitarian conceptions be

available “as the building blocks of further innovation.” Ibid.

Thus, “the efficient operation of the federal patent system

depends upon substantially free trade in publicly known,

unpatented design and utilitarian conceptions.” Id. at 156.

Concomitantly, this Court has consistently recognized

that the expiration of a patent affords the public a virtually

unrestricted right to copy the invention. Thus, in 1896, this

Court rejected a claim of unfair competition based on the

similarity of two designs, declaring:

Oln the expiration of a patent * * * the right to make

the thing formerly covered by the patent becomes public

property * * * [and] there passes to the public the

right to make the machine in the form in which it was

constructed during the patent.

Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185 (1896).

See also Coats v. Merrick Thread Co., 149 U.S. 562, 572

(1893) (patentees could not, under trademark law, “claim a

monopoly” on the design “beyond the life of the patent”);

Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 119-120

(1938) (concluding that, “upon expiration of the patent[], the

form” of the product “was dedicated to the public”).

9 =

After the Lanham Act was enacted in 1946, this Court

adhered to that rule, invalidating state laws that attempted

to grant exclusive rights in utilitarian features that, as a

matter of patent law, are in the public domain. In Sears,

Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964), for example,

the Court held state unfair competition law to be pre-empted

insofar as it purported to bar one company from copying and

seiling nearly exact copies of an unpatented lamp design

created and popularized by another. Competitors, the Court

declared, “had every right” to engage in such copying and

selling “under the federal patent laws.” Jd. at 231. The

Court reached the identical conclusion in Compco Corp. v.

Day-Brite Lighting, Inc., 376 U.S. 234, 237 (1964).

More recently, in Bonito Boats, this Court invalidated a

Florida law that barred the copying of an unpatented boat

hull design. [Wie have consistently reiterated the teaching

of Sears and Compco,” the Court stated, “that ideas once

placed before the public without the protection of a valid

patent are subject to appropriation without significant re-

straint.” 489 U.S. at 156. The Court also rejected the

assertion that patent law says “nothing about the right to

copy or the right to use.” Jd. at 164. “For almost 100 years,”

the Court explained, “it has been well established that in the

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

federal right to ‘copy and to use.’” Jd. at 165.

2. The rule that unpatented utilitarian conceptions can-

not be withdrawn from the public domain—and are freely

available for all to copy,-refine, and use—has long been a

feature of substantive trademark and unfair competition law

as well. The common law accomplished that goal (and en-

sured that trademarks would not inhibit robust competition)

through a sharp distinction between the trademark (used to

identify the source) on the one hand and the product or its

packaging on the other. “(I]t was long the rule that a trade-

mark must be something other than, and separate from, the

merchandise to which it is applied.” In re Morton-Norwich

Prods., 671 F.2d 1332, 1336 (C.C.P.A. 1982); W. McLean,

Opening Another Can of Worms: Protecting Product Con-

figuration as Trade Dress, 66 U. Cin. L. Rev. 119, 122 (1997).

As courts began protecting product packaging and later

product designs as trade dress, however, they employed the

doctrine of “utilitarian functionality” to those same ends, i. .,

to protect competition and “accommodate trade dress law to

the policies of patent law.” 1 J. McCarthy, Trademarks and

Unfair Competition § 7.63, at 7-137 (4th ed. 2000).

Under the functionality doctrine, a product feature may

be protected as trade dress if it primarily serves to desig-

nate the producer. If the feature is functional in a utilitarian

sense, however, it cannot be protected except by patent.

The 1938 Restatement of Torts (§ 741(b)(ii), at 623 & 628,

emt. j) thus observed that, so long as proper labeling is

employed, the copying of functional features—even those

that have acquired meaning as “an indication of the

source”—is permitted. A feature is considered functional,

the Restatement explained, if it “affects [the goods'] pur-

pose, action, or performance, or the facility or economy of

processing, handling, or us[e].” Id. § 742, at 628-629 & cmt. a.

Thus, functionality traditionally has depended on “practical,

engineering-type considerations such as making the product

work more efficiently, with fewer parts and longer life, or

with less danger to operators, or be shaped so as to reduce

expenses of delivery or damage in shipping.” 1 McCarthy,

supra, § 7:64, at 7-140 to 7-141.

Consistent with its origins, the functionality doctrine has

long served—in addition to and in congruity with its role of

protecting competition—a specific purpose of keeping the

domains of patent and trademark law distinct. It ensures

that, if “there is to be an exclusive right for functional

fe tures, such protection can only be gained by utility patent

protection limited in time, not perpetual protection under

trademark law.” 1 McCarthy, supra, § 7:64, at 7-141. As one

court explained in 1911:

If one manufacturer should make an advance in effeetive-

ness of operation, or in simplieity of form, or in utility of

color; and if that advance did not entitle him to a mono-

poly by means of a patent; and if by means of

unfair trade suits he could shut out other manufacturers

[from] the benefits of the unpatented utilities, he

would be given gratuitously a monopoly more effective

than that of the unobtainable patent in the ratio of

eternity to 17 years.

Pope Automatic Merchandising v. McCrum-Howell Co., 191

F. 979, 981-982 (7th Cir. 1911), cert. denied, 223 U.S. 730

(1912). Before the Lanham Act was enacted, courts regu-

larly invoked functionality to ensure that trademark and

unfair competition law would not intrude on the principles of

patent law by withdrawing from the public domain those

useful conceptions that patent law renders pubdlici juris.“

This Court, indeed, employed functionality to that very end

more than 60 years ago, rejecting efforts to assert trade

dress rights in the shape of a product after expiration of the

patent. Kellogg, 305 U.S. at 122 (rejecting unfair competi-

tion claim based on copying of “pillow-shaped” shredded

wheat biscuit); see Qualitex, 514 U.S. at 165.

Although the Lanham Act did not explicitly mention

functionality until 1998, see pp. 24 n.11, 29, infra, federal

courts understood that the doctrine limits the scope of

protection available under that Act—ensuring that trade-

mark law does not intrude on the domain of patent law—long

before. See 1 McCarthy, supra, § 7.63, at 7-137. See, e.g.,

Sylvania Elec. Prods. v. Dura Elec. Lamp Co., 247 F. 2d 730,

3 See, eg, In re National Stone-Tile Corp, 57 F. 2d 382, 383 (C. C. P. A.

1932); Goodyear Tire & Rubber Co. v. Robertson, 18 F.2d 639, 641 (D. Md.

1927), aff'd, 25 F.2d 833, 834 (4th Cir. 1928); U.S. Elec. Mfg. Corp. v.

Bright Star Battery Co., 6 N.Y.S.2d 690, 691 (1938); James Heddon's Sons

v. Millsite Steel & Wire Works, Inc., 128 F.2d 6, 13 (6th Cir.), cert. denied,

317 U.S. 674 (1942); J.C. Penney Co. v. H.D. Lee Mercantile Co., 120 F.2d

949 (8th Cir. 1941); Jn re Dennison Mfg. Co., 39 F.2d 720 (C. C. P. A. 1930).

732 (3d Cir. 1957) (purpose of rule is “obviously to prevent

the grant of perpetual monopoly by * * * trade-mark in the

situation where a patent has either expired, or * * * cannot

be granted”); Elmer v. ICC Fabricating, Inc., 67 F.3d 1571,

1580 (Fed. Cir. 1995) (“{P]Jatent law, not trade dress law, is

the principal means for providing exclusive rights in useful

product features.”). This Court too recognized the impor-

tance of that doctrine under the Lanham Act well before the

term “functionality” appeared in it. See, e.g., Inwood Labs.,

456 U.S. at 850 n.10. In 1995, the Court explained:

The functionality doctrine prevents trademark law * * *

from] inhibiting legitimate competition by allowing a

producer to control a useful product feature. It is the

province of patent law, not trademark law, to encourage

invention by granting inventors a monopoly 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 trademarks, however, a monopoly over such fea-

tures could be obtained without regard to whether they

qualify as patents and could be extended forever (be-

cause trademarks may be renewed in perpetuity).

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

B. Features Disclosed To Have Utility In An Expired Patent

Are Not Protected As Trade Dress Under The Lanham

Act

Although functionality analysis is sometimes difficult to

apply, see McLean, supra, at 125; 1 McCarthy, supra, § 7:67,

at 7-147, in the context of an expired utility patent its appli-

cation is often straightforward. Where, as here, the expired

patent includes as part of the claimed invention the feature

alleged to be trade dress, or the patent’s specifications or en-

forcement otherwise show that the feature contributes to

the device’s operation, it must be considered “functional”

under the Lanham Act and thus ineligible for trade dress

protection. In other words, assertions of utility within the

scope of the patent should be dispositive as to functionality.

That conclusion follows from the purpose and traditional defi-

nition of functionality; ensures consistency and conformity with

patent-law principles; and serves important policy interests.

1. The functionality doctrine serves to prevent one

producer from obtaining control over “a useful product fea-

ture” under trademark law, because the exclusive right to

such a feature must be obtained, if at all, only for a limited

time under patent law. Qualitex, 514 U.S. at 164. In our

view, the assertion that a feature has utility in the scope of a

patent—i.e., a patent claim or specification indicating that

the feature contributes to the operation of the patented

device—is ordinarily dispositive evidence that the feature is

“useful” and thus can be protected only by patent. Tra-

ditionally (and at the time the Lanham Act was passed), a

feature has been considered functional if it “affects [the

device’s] purpose, action, or performance, or the facility or

economy of processing, handling, or usle], 1938 Restate-

ment § 742, at 628-629 & cmt. a, or if it influences “cost or

quality,” Qualitex, 514 U.S. at 165, 169. Where the feature is

claimed as part of the patented device, or the patent

otherwise shows the feature’s usefulness in the scope of the

device, the feature necessarily meets that definition. Indeed,

since the requirements for patent protection (such as the

requirement of a significant advance over prior art, 35

U.S.C. 102, 103 (1994 & Supp. IV 1998)) are more demanding

than the test of functionality (even small advances may be

functional), a patent claim for a feature generally makes

functionality an a fortiori conclusion. For the same reason,

such a feature is also “essential to the use or purpose” of the

invention. See Qualitex, 514 U.S. at 165, 169. Without the

feature, the invention would not operate the same way (or

perhaps at all).

Accordingly, courts have often recognized that a patent

“disclosing the primary functional significance of [a] config-

uration” claimed as trade dress “incontrovertably estab-

lishes primary functionality” and “suffices” to justify sum-

mary judgment. Best Lock Corp. v. Schlage Lock Co., 413

F.2d 1195, 1199 (C.C.P.A. 1969); In re Shanango Ceramics,

Inc., 362 F.2d 287, 291 (C.C.P.A. 1966) (similar); Disc Golf

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

1998) (“expired utility patent is weighty evidence of func-

tionality”); Restatement (Third) Unfair Competition § 17, at

174, emt. b (1995) (“particularly persuasive evidence of func-

tionality”); 1 McCarthy, supra, § 7:89, at 7-224 (“a valid

functional patent disclosing the utilitarian advantages” of the

feature “is very strong, if not conclusive, evidence of [its]

functionality”). Some courts have concluded that a “kind of

estoppel” arises, precluding patentees from arguing “that a

shape is functionally advantageous in order to obtain a utility

patent [but] later assertling] that the same shape is non-

functional in order to obtain trademark protection.” Disc

Golf, 158 F.3d at 1008 (quoting 1 McCarthy, supra § 7:89, at

7-208).

Of course, mere mention of a feature in a patent does not

necessarily establish functionality, since “many non-

functional shapes and configurations happen to be described

or pictured as an incidental detail in functional patents.” 1

McCarthy, supra, § 7:89, at 7-227; Best Lock, 413 F.2d at

1199 (“patent may not be evidence of functionality in regard

to” arbitrary features “disclosed in the patent but which are

not attributed any functional significance”). But where care-

ful examination reveals that the feature is a utilitarian part

of the patented invention, the patent is irrefutable evidence

of functionality. See Disc Golf, 158 F.3d at 1006; 1

McCarthy, supra, § 7:89, at 7-227.

That was settled trademark law before the Lanham Act

was passed. In Sparklets Corp. v. Walter Kidde Sales Co.,

104 F. 2d 396, 399 (C.C.P.A. 1939), for example, the court

rejected a trade dress claim for a “groove” included in the

product because an expired patent made it “perfectly evi-

— — — | gon

dent that the groove was at least believed by the patentee to

have utility at the time of making application,” leaving the

court “unable to escape the conclusion that the groove as an

entity possessed utility and, for that reason * is nota

proper subject for registration as a trade-mark.” Other

courts repeatedly reached similar conclusions. See J.A.

Scriven Co. v. W.H. Towles Mfg. Co., 32 App. D.C. 321

(1909); Daniel v. Electric Hose & Rubber Co., 231 F. 827, 834

(3d Cir. 1916). There is every reason to believe that the

Lanham Act—an effort “to codify and unify the common law

of unfair competition and trademark protection,” see p. 6 &

n.2, supra—was designed to incorporate (or at least not

intended to repudiate) that pre-existing principle. See

Astoria Fed. Sav. & Loan Ass’n v. Solimino, 501 U.S. 104,

108 (1991) (courts presume Congress “has legislated with an

expectation that” well-established principles “will apply

except when a statutory purpose to the contrary is evident”)

(internal quotation marks omitted). The United States

Patent and Trademark Office (USPTO) also views claims of

utility in an expired utility patent as generally fatal to

efforts to register a feature as a trademark, even though it

formally employs a four-factor test.‘

2. That approach is necessary to ensure that trade dress

protection under the Lanham Act does not provide perpetual

protection for unpatented utilitarian conceptions that, as a

4 The USPTO looks to the factors identified in Morton-Norwich, 671

F.2d at 1341, as required by the Federal Circuit and its predecessor

courts. See Trademark Manual of Examining Procedure § 1202.03(a)(iii)

(2nd ed. 1993, rev. ed. 1997). The factors are (1) “the existence of an

expired utility patent which disclosed the utilitarian advantage of the

design sought to be registered as a trademark;” (2) whether the inventor

“touts its utilitarian advantages through advertising;” (3) whether “there

are other alternatives available;” and (4) whether “a particular design

results from a comparatively simple or cheap method of manufacturing the

article.” 671 F.2d at 1341. Accord Disc Golf, 158 F.3d at 1006 (similar

test). In cases like this one, where an expired utility patent exists, the

first Morton-Norwich factor is almost always dispositive.

matter of patent law, are in the public domain. See Zip Dee,

Inc. v. Dometic Corp., 931 F. Supp. 602, 611 (N. D. III. 1996)

(“the policies underlying patent law dictate the denial of

trademark protection to a product configuration that has

been claimed as part of a utility patent * * * if the config-

uration is functional within the context of the utility

patent”); Vornado Air Circulation Sys. v. Duracraft Corp.,

58 F.3d 1498, 1510 (10th Cir. 1995) (“[WJhere a disputed

product configuration is * * * a described, significant inven-

tive aspect of” the invention claimed in the expired patent,

“patent law prevents its protection as trade dress.”), cert.

denied, 516 U.S. 1067 (1996). Indeed, as this Court has

observed, any law that withdraws utilitarian features from

the public domain may “conflict with the very purpose of the

patent laws by decreasing the range of ideas available as the

building blocks of further innovation.” Bonito Boats, 489

U.S. at 151. Protecting the operational features disclosed in

expired utility patents would certainly have that effect. It

is, after all, “no great trick to build up secondary meaning in

a product configuration if [competitors] are kept from

utilizing that configuration for 17 years by the sword and

shield of patent protection.” Zip Dee, 931 F. Supp. at 615.

Consequently, protecting features shown to be functional by

an expired patent as trade dress would convert patents into

a “springboard for converting a legislativ..y-created”

limited-duration patent “monopoly into a court-enforced per-

manent monopoly” under the Lanham Act—“an imper-

missible” intrusion on the patent-law goal of placing publicly

disclosed inventions in the public domain. Ibid.; see Vor-

nado, 58 F.3d at 1508 (“the inventor’s supply of ideas itself

and freedom to experiment with them” would be diminished

by such trade dress protection). Indeed, respondent’s design

here served as a building block for petitioner’s now-patented

quick-release mechanism. J.A. 252-253.

More fundamentally, this Court has held that, “in the case

of an expired patent,” patent law creates not only “a federal

right to ‘copy and to use, Bonito Boats, 489 U.S. at 65, but

also “the right to make [the article] in the form in which it

was constructed during the patent” notwithstanding a claim

to trade dress protection, Singer Mfg. Co., 163 U.S. at 185.

See also Kellogg Co., 305 U.S. at 122; Sears, 376 U.S. at 230;

Bonito Boats, 489 U.S. at 164-165; pp. 7-9, supra. Correctly

applied, the functionality doctrine ensures consistency

between the Lanham Act and that well-settled body of law.

In particular, by deeming useful parts of the invention to be

“functional” for purposes of the Lanham Act—thus making

them ineligible for perpetual trade dress protection—the

doctrine ensures that the Lanham Act does not withdraw

from the public domain those features that, as a matter of

patent law, are dedicated to the public. There is, moreover,

no evidence that the Lanham Act, which was largely de-

signed to consolidate and unify existing common law trade-

mark and unfair competition doctrines, was intended to

overturn the result in Singer and its progeny by providing

federal trade dress protection where patent law otherwise

barred it. See Astoria, 501 U.S. at 108. See also United

States v. Wells, 519 U.S. 482, 495 (1997) (Court presumes

“that Congress expects its statutes to be read in conformity

with this Court’s precedents”). To the contrary, Represen-

tative Lanham indicated that the functionality doctrine

would continue to perform its traditional role of ensuring

that utilitarian conceptions will not be withdrawn from the

public domain as trade dress in contravention of patent-law

principles.”

5 Responding to concerns that trademark law might accord one

competitor trade dress rights in a useful design, such as a trademark tire

balancer, or the shape of a package that permits it to be shipped by boat or

truck, Trade-marks: Hearings Before a Subcomm. of the Senate Comm.

on Patents, 78th Cong., 2d Sess. 73, 74 (1944), Representative Lanham

stated that, “when you get into the matter of functions, you get into the

field of patents, and * * a trademark is not used to indicate functions,”

id. at 74.

In addition, any suggestion that the Lanham Act effec-

tively superseded the patent-law right to copy cannot be

reconciled with this Court’s decisions in Sears and Compco,

supra, which were decided almost two decades after the

Lanham Act’s passage. In those companion cases, the Court

held that patent law pre-empts state unfair competition law

insofar as the latter bars copying of unpatented designs,

because such designs are, Julnder the federal patent laws

in the public domain and can be copied in every detail

by whoever pleases.” Compco, 376 U.S. at 237-238; see

Sears, 376 U.S. at 231-232 (similar). The holdings and

“reasoning at the core” of those decisions were subsequently

reaffirmed in Bonito Boats, 489 U.S. at 156-157, forty years

after the Lanham Act’s passage. Although respondent

argues (Br. in Opp. 6) that Sears and Compco are distin-

guishable because they involved state unfair competition

laws, it is implausible to suppose that this Court would have

held a state prohibition on copying to be inconsistent with,

and pre-empted by, federal law if a federal statute—the

Lanham Act—also would have prohibited copying in those

circumstances. Indeed, in Compco itself, the Court accepted

for purposes of its decision that the prerequisites for

Lanham Act protection—secondary meaning and confusion

as to source, see 15 U.S.C. 1123—had been met. 376 U.S. at

237 (confusion), 238 (secondary meaning)“ Moreover, the

fact that the result in Sears and Compco necessarily would

affect the scope of Lanham Act protection could hardly have

been lost on the Court, since the issue was specifically

raised. 62-108 Resp. Br. at 14-15 (arguing that, if the state

6 Because Compco involved a design patent rather than a utility

patent, the Court’s opinion also expresses concern that functionality

analysis might not fully reconcile the scope of trade dress protection with

patent-law right-to-copy principles. 376 U.S. at 238. The scope of the

right to copy that arises on the expiration of a design patent does not

readily « orrelate with the functionality doctrine, because the subject

matter of design patents is, by definition, ornamental and non-functional.

ee ee

law prohibition on copying were invalid, “it could with the

same force be argued that trademark rights residing in the

shape or configuration of an article could not be enforced by

a federal court * * * as similarly amounting to the grant of

a monopoly in the nature of a patent”) (emphasis added).

It is possible to read Singer, Sears and their progeny as

stating a broader rule—as authorizing reproduction of not

merely the invention, t. e., those elements that contribute or

help make the invention function as intended, but also every

jot and tittle of the patentee’s product design during the

time the product was patented, including wholly arbitrary

elements that serve no purpose other than to indicate the

product’s origin. This Court, however, has cautioned that

the “absolutist terms” of some of its early decisions should

not be read as foreclosing “limited regulation{]” of copying

“to prevent consumer confusion as to source.” Bonito Boats,

489 U.S. at 154 (emphasis added). In our view, where the

7 Relying on Compco’s assertion that the patent-law right to copy

extends to products that are not “entitled to a design patent or other

federal statutory protection,” some courts have held that, because the

Lanham Act falls under the rubric of “other federal statutory protection,”

it may be treated as a free-standing exception to the patent-law right to

copy. Esercizio v. Roberts, 944 F.2d 1235, 1241 (6th Cir. 1991) (quoting 376

U.S. at 238), cert. denied, 505 U.S. 1219 (1992); Thomas & Betts Corp. v.

Panduit Corp., 138 F.3d 277, 287 (7th Cir.), cert. denied, 525 U.S. 929

(1998). There is, however, no persuasive evidence that the Lanham Act,

by creating a federal trade dress right, was meant to displace the ordinary

and longstanding rule that unpatented utilitarian conceptions, as a matter

of patent law and the functionality doctrine, cannot be protected in

perpetuity as trade dress. See pp. 16-19, supra. Moreover, as explained

above, the argument cannot be reconciled with Compco’s result. It is hard

to see how federal patent law would pre-empt state unfair competition law

if another federal law—the Lanham Act itself—offered the same

protection against copying that state law sought to provide. Finally, it is

likewise incorrect to assume that one can “reconcile” the Lanham Act with

patent-law principles by sequentially protecting utilitarian features

covered by expired patents under patent and then trademark law; such an

approach would defeat the right to copy unpatented utilitarian conceptions

that patent law furnishes.

element alleged as trade dress is only incidentally included in

the patent or product, i.e, where the feature is not a

utilitarian part of the invention itself, there is no bar to trade

dress protection under the Lanham Act. See p. 14, supra.

The contrary rule would not serve the patent-law purpose of

ensuring that the invention enters the public domain, and

would needlessly undermine the Lanham Act’s source-

identification goal.

3. Finally, treating expired patent claims as irrefutable

evidence of functionality is supported by important policy

considerations. First, it enables courts (and competitors) to

determine the availability of trade dress protection based on

the patent itself (and its enforcement), without extensive

proceedings or inquiries. In contrast, the multi-factor tests

used by some courts, see note 4, supra, often require exten-

sive proceedings and nuanced balancing. That is especially

true of the approach, erroneously adopted by some courts, of

declining to find functionality in the absence of a showing of

competitive “need,” see pp. 22-26, infra, since questions of

“need” are notoriously difficult and require intense factual

development, including consideration of alternative designs,

consumer preference, and cost.

Avoiding uncertainty and potentially protracted pro-

ceedings is especially important due to the strong incentive

that patentees often have to extend the term of their ex-

clusive rights. Because competitors may be deterred “not

merely by successful suit but by the plausible threat of

successful suit,” Wal-Mart, 120 S. Ct. at 1345, any test that

cannot easily be applied and resolved on summary judgment

will undermine competition and the patent-law goal of

8 Similarly, the right to copy an invention upon the patent’s expiration

would not extend to improvements covered by separate, unexpired im-

provement patents; the original invention could be copied, but the

improvements—even if used during the life of the patent—could not. See

also 35 U.S.C. 102(b) (public disclosure does not put unpatented invention

in public domain if patent application filed during I- year grace period).

making all prior art a building block for further technological

advances. Consumers “should not be deprived of the bene-

fits of competition with regard to the utilitarian and esthetic

purposes that product design ordinarily serves”—or the

innovations those designs may be adapted to advance—“by a

rule of law that facilitates plausible threats of suit against

new entrants” and further innovation. Id. at 1344.

Permitting parties to assert exclusive trade dress rights

in product features notwithstanding the expiration of a

patent covering those features would also “lead to admini-

strative problems of no small dimension.” Bonito Boats, 489

U.S. at 161. The “federal patent scheme provides a basis for

the public to ascertain the status of the intellectual property

embodied in any article in general circulation” because “(t]he

availability of damages in an infringement action is made

contingent upon affixing a notice of patent to the protected

article.” Id. at 161-162. Because Section 43(a) of the Lan-

ham Act, 15 U.S.C. 1125(a), does not require such notices, it

would leave competitors with no certain way of knowing, in

advance, whether the utilitarian feature they wish to use

remains in the public domain.

Finally, viewed in light of the serious adverse impact on

competition and innovation, the cost of denying trade dress

protection to features covered by an expired patent seems

comparatively small. Producers seeking to establish means

9 For that reason, this Court determined in Wal-Mart that producers

claiming trade dress protection for product designs must show “secondary

meaning,” i.e., that the public associates the design with the source, and

rejected a multi-factor test for determining whether a design is inherently

distinctive. See 120 S. Ct. at 1344-1345. Here, however, proof of

secondary meaning is not an effective barrier. The very fact that, because

of the patent, only one producer made a particular product for some 20

years will very often cause the public to associate the design (if not the

good) with that producer. For the same reason, it may be extraordinarily

difficult to determine whether “the primary significance” of the design “in

the minds of the consuming public is not the product but the producer.”

Kellogg Co., 305 U.S. at 118.

by which prospective purchasers may identify their products

have almost infinite options at their disposal; there thus is

little need for them to rely on the utilitarian features dis-

closed in their patents. Vornado, 58 F.3d at 1510. Here, for

example, respondent could have painted its dual-springs

with an arbitrary and non-functional pattern, or used a

unique badge or logo to distinguish its stand from others.

Having failed to do so, it cannot now demand that others

refrain from using its no-longer patented invention as a price

of competing. In addition, producers can demand that com-

petitors clearly label their products, see, e.g., 1938 Restatement

§ 742; Kellogg Co., 305 U.S. at 120-121: And respondent did

just that, obtaining an injunction against petitioner’s use of a

descriptive but confusingly similar brand name. See note 1,

supra. Moreover, the “TrafFix Devices” name appears on

all of petitioner’s signs. See J.A. 253.

4. Notwithstanding the foregoing, there is a regrettable

tendency (based on one reading of the 1995 Restatement) for

some courts to define functionality—and thus the scope of

trade dress protection under the Lanham Act—as depending

solely on whether competitors need a feature to eompete.“

The court of appeals here employed that approach, declaring

that a configuration is not functional unless it is a “competi-

tive necessity.” Pet. App. 20a-21a.

Even if one sets aside the linguistic difficulty inherent in

equating “functionality” with “competitive necessity,” the

approach is inappropriate, especially in the context of an ex-

pired patent. As an initial matter, it unmoors functionality

from its traditional role of protecting “the principle that

there is only one legal source of exclusive rights in utilitarian

10 See, eg, Vornado, 58 F.3d at 1507 (stating that functionality de-

pends on competitive impact and not on “inherent usefulness”);

Restatement (Third) Unfair Competition § 17, at 172 (design functional if

it offers benefits that are “important to effective competition” (apart from

indicating source) and the benefits “are not practicably available through

the use of alternative designs”).

features—utility patent law.” 1 McCarthy, supra, § 7:68, at

7-147; Qualitex, 514 U.S. at 164-165 (if “functional features

could be used as trademarks * * * a monopoly over such

features could be obtained without regard to whether they

qualify as patents and could be extended forever“); pp. 9-12,

supra. If one focuses solely on competitive need, for

example, the inventor of a particular type of mousetrap

could extend his exclusive rights, initially obtained under

patent, into eternity under trade dress law so long as a

sufficient number of other effective mouse trap designs are

available. Zip Dee, 931 F. Supp. at 608. Indeed, in this case,

the court of appeals concluded that respondent’s clearly

functional dual-spring design may be protected as trade

dress since petitioner could invent, or obtain a license for,

another patented design. Pet. App. 21a. That result strikes

at “the very purpose of the patent laws” by preventing

inventions claimed in expired patents from becoming “avail-

able as the building blocks of further innovation.” Bonito

Boats, 489 U.S. at 151.

Such a result, moreover, would place the Lanham Act in

conflict with the principle that, “at least in the case of an ex-

pired patent,” competitors not only have “a federal right to

‘copy and to use, Bonito Boats, 489 U.S. at 165, but also

“the right to make [the invention] in the form in which it was

constructed during the patent,” Singer Mfg. Co., 163 U.S. at

185. Indeed, it would essentially eliminate that well-estab-

lished right, except where copying is a competitive “necess-

ity.” See 1 McCarthy, supra, § 7:68, at 7-148 & n.5, and 7-150

(noting that competitive necessity test creates an unneces-

sary conflict between trademark and patent-law principles).

See also Vornado, 58 F.3d at 1510 (acknowledging the

conflict and attempting to resolve it); Zip Dee, 931 F. Supp.

at 608 (same). It is, of course, wholly inappropriate to adopt

an approach to functionality that would place two otherwise

harmonious statutory schemes at war with each other.

Moreover, as explained above (pp. 10-12, 16-19, supra), such

an approach cannot be reconciled with the functionality

doctrine as it existed when Congress passed the Lanham

Act, with other principles of statutory construction, with

Congress’s evident intent, or with this Court’s post-Lanham

Act decisions. We therefore agree with the leading treatise

that “truncat[ing]” functionality analysis by focusing on com-

petitive necessity alone is “illogical”; instead, at least in the

context of expired patents, a feature is functional either if

protecting it would unduly impede competition or it is

functional “in the traditional engineering-driven utilitarian

sense.” 1 McCarthy, supra, § 7:68, at 7-148 & n.5; id. at 7-150

(explaining that there is “no * * * policy conflict between

federal patent policy and trade dress law” so long as courts

adhere to “the traditional trade dress definition of

functionality“).

For the same reasons, it is inappropriate to read the 1998 Lanham

Act amendment (which made functionality a bar to registration, 15 U.S.C.

1052(e)(5) (Supp. IV 1998)) and the 1999 amendment (which assigned the

burden of proving non-functionality to the party claiming protection, 15

U.S.C. 1125(a)(3) (to be codified)) as making competitive need a pre-

requisite to functionality. Although the House Report on the latter

amendment observes that a “functional feature of trade dress is one that is

commonly used by similar businesses, protection of which would hinder

competition,” H.R. Rep. No. 250, 106th Cong., Ist Sess. 6 (1999), that

statement is descriptive rather than definitional, and insufficient in any

event to overcome the principle against construing statutes so as to create

conflicts between them. Moreover, in the same paragraph, the Report

specifically recognizes that functionality should prevent trademark law

from intruding on patent-law principles, observing that “(f]unctional

marks should be dealt with under patent law.” Id. at 7. Finally, treating

either amendment or its legislative history as ratifying a partie lar

definition of functionality would be especially inappropriate because

Congress, when it enacted those amendments, specifically declined to pass

a bill—H.R. 3163, 105th Cong., 2d Sess., § 2(c) (1998)—that would have

codified a definition for functionality. See Trademarks Amendments Act

of 1999: Hearing Before the Subcomm. on Courts and Intellectual

Property of the House Comm. on the Judiciary, 106th Cong., Ist Sess. 13-

14 (1999) (Statement of Michael K. Kirk) (urging House to revive H.R.

Finally, equating “functionality” with “competitive neces-

sity” over-reads this Court’s decisions. Seizing on this

Court’s statement that a feature is functional if the inability

to copy it puts “competitors at a significant non-reputation-

related disadvantage,” Qualitex, 514 U.S. at 165, the court of

appeals emphasized the word “significant” in order to con-

strue the phrase “significant * * * disadvantage” as a

competitively disabling disadvantage. Pet. App. 20a-2la. As

an initial matter, we do not believe that the Court intended

the “significant * * * disadvantage” standard to be the ex-

clusive approach to functionality, given the other articula-

tions of functionality the Court used in Qualiter. For

example, the Court stated that a feature is functional if “it is

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

the cost or quality of the article.” 514 U.S. at 165, 169

(emphasis added, internal quotation marks omitted). See

also id. at 162 (functional characteristic “an important” non-

reputational “ingredient in the commercial success of the

product”) (quoting Inwood Labs., 456 U.S. at 863 (White, J.,

concurring)). The Court’s use of a competition-based for-

mulation in Qualitex, moreover, appears to have resulted

from the fact that that case (like /nwood Labs.) involved a

trademark or, for which the competitive formulation is

particularly useful.” Thus, while we agree that competitive

3163 to provide “guidance as to when trade dress serves as a source

identifier and when it is functional”).

12 Even though they do not operate like utilitarian parts of a machine,

colors may be functional in providing visual cues. For example, using the

color orange on a can of soda may be functional because it identifies the

contents as being orange-flavored, even though the color does not affect

the way the can retains liquid. Focusing on competition in such a case

shows the color to be functional because, if other makers of orange soda

cannot color their cans orange, they may be competitively disadvantaged

in the marketplace. See Wal-Mart, 120 S. Ct. at 1344.

necessity proves functionality, the absence of competitive

necessity does not itself dispre*'s it.”

In any event, Qualitex is best understood as using the

phrase “significant * * * disadvantage” to indicate a “non-

trivial” or “meaningful” non-reputation-related disadvan-

tage. Indeed, the Court specifically indicated that the

functionality doctrine was designed to ensure that “useful”

product features do not become protected as trade dress in

perpetuity in derogation of patent law, 514 U.S. at 164; and it

further clarified that the “functionality doctrine * * *

protects competitors against a disadvantage (unrelated to

recognition or reputation) that trademark protection might

otherwise impose, namely, their inability reasonably to repli-

cate important non-reputation-related product features,” id.

at 169. The examples of “functionality” the Court cited like-

wise indicate that meaningful disadvantage, not competitive

necessity, is sufficient to establish functionality.”

13 Some courts’ exclusive reliance on competitive need may have

resulted from a misinterpretation of the 1988 Restatement. Comment “a”

of that Restatement, after giving a general explanation of utilitarian

functionality, noted the doctrine of aesthetic functionality, which may

apply (when goods are bought largely for their aesthetic value.” After

discussing that issue, the Restatement added that the determination in

such a case turns on “whether prohibition of imitation by others will

deprive the others of something which will substantially hinder them in

competition.” In context, the competitive hindrance test appears to be an

additional way functionality may be found—especially useful in cases of

aesthetic functionality—not a sine qua non without which functionality

can never be found.

4 The Court, for example, approvingly cited the mode of analysis in a

lower court decision holding that the color black, as applied to motor boat

engines, was functional because it coordinated well with other colors and

minimized the apparent size of the motor; and it similarly cited another

holding that the color green was functional on farm machinery, since

farmers might want their machinery to match. See 514 U.S. at 169-170.

— —

C. Respondent Is Not Entitled To Trade Dress Protection

Judged by the foregoing standards, respondent's design is

not entitled to trade dress protection. Respondent’s patents

themselves, and respondent’s later enforcement of its patent

rights, together make it clear that each and every element of

respondent’s claimed trade dress is a utilitarian part of the

patented device that passed into the public domain when the

patents expired.

1. Respondent claims “trade dress” protection in a sign

stand which has “(a) a relatively narrow base member; (b) a

pair of vertically arranged closely spaced coil springs

attached to the base member; (c) a plurality of leg members

attached to the base member z (d) an upright member

attached to the coil springs; and (e) a sign attached to the

upright member.” Pet. App. 29a. As the district court

observed, the only one of those features that differs from

any other sign stand is the “pair of vertically arranged close-

ly spaced coil springs.” Id. at 48a; see also id. at 60a (“Every

single one of the competitors * * * markets a sign stand

with a narrow base, four leg members extending at angles

from the base, an upright, and a sign.”). But respondent’s

patents reveal the dual-spring design to be utilitarian be-

cause the “two spaced apart spring connections” permit the

sign to yield to the wind without “twisting.” Jd. at 18a, 50a;

482 Patent at 4 (claim 1), 1 (summary). See also id. at 2

(specification) (“[A]s the frame structure is deflected

downwardly, the effective wind force is reduced much in the

manner of a sail on a boat coming into the wind.”).

The other design elements alleged to be trade dress are

also functional. The “base” member element is utilitarian

because it provides a “ground-engaging means” to support

the “upstanding frame” and “spring structure.” 482 Patent

at 4 (claim 1).“ The “plurality of leg members,” Pet. App.

15 Although respondent's patents do not describe a “narrow” base and

show widely spaced springs, respondent has asserted that its patents

29a, prevents the sign from tipping over; indeed, the length

of those legs is based on a formula disclosed in the patent

482 Patent at 5 (claim 1), 4 (specification). The “upright

member attached” on top of “the coil springs” is utilitarian

because it is necessary to display the sign. And the “sign

attached to the upright member” is utilitarian, because

displaying the sign is the very purpose of the stand.

At bottom, respondent’s alleged trade dress consists of

nothing more (or less) than the elements claimed or specified

in its patents; respondent’s alleged trade dress includes

nothing arbitrary, fanciful, or otherwise non-useful beyond

the patented device itself. Thus, the product design for

which respondent claims trade dress protection is not an

article that incorporates the patented device. It is the pat-

ented device. Consequently, when the patents for that

device expired, respondent’s design fell into the public do-

main.

2. The court of appeals’ contrary analysis does not with-

stand scrutiny. First, the court of appeals observed that a

combination of functional features may itself be non-func-

tional and protected as trade dress. Pet. App. 20a. In the

context of an expired utility patent, where each element

alleged to be trade dress contributes to the functioning of

the invention, that is not true. To the contrary, when the

elements alleged as trade dress are part of the patented in-

vention, and together make up the invention, the whole is

not merely functional; it is the invention.

Moreover, even outside the utility patent context, a com-

bination or configuration of wholly functional elements will

rarely be non-functional unless the particular combination is

somehow “arbitrary” and not driven by considerations of

extend to stands with narrower bases and closely spaced springs as well.

See Sarkisian v. Winn-Proof Corp., 686 F.2d 671 (9th Cir. 1981). More-

over, it is not disputed that positioning the springs closer together is

functional because it makes the stand smaller, lighter, and less costly to

manufacture, as the district court expressly found. Pet. App. 54a.

utility, function, or simplicity. 1 McCarthy, supra, § 7:76, at

7-177 (citing Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth,

Inc., 58 F.3d 27 (2d Cir. 1995)); see Sunbeam Prods., Inc. v.

West Bend Co., 123 F.3d 246, 256 (5th Cir. 1997) (“arbitrary

combination of functional features, the combination of which

is not itself functional”), cert. denied, 523 U.S. 1118 (1998).

In most cases, “the combination of individually functional

features will be just as functional as are the parts.” 1

McCarthy, supra, § 7:76, at 7-177. Here, the patents prove

that the combination of elements claimed as trade dress is

functional, since all of the elements are part of the invention,

and they are combined so as to implement the invention in a

straightforward manner. For that reason, it makes no

difference that other competitors “avoid emulating” re-

spondent’s trade dress by avoiding use of the dual-spring

design. Pet. App. 20a. The dual-spring mechanism is, in the

end, the most functional and critical feature in the formerly

patented invention; it permits the sign to yield to the wind

without twisting. Once the patents expired, respondent lost

the right to exclude competitors from using that clearly

functional feature; that right to exclude cannot be resusci-

tated under the rubric of trade dress protection.

For similar reasons, the court of appeals erred by specu-

lating that competitors might be able to use a tri-spring or

quad-spring mechanism, or a hidden two-spring mechanism.

Pet. App. 19a-20a. Manifestly, altering the number of

springs or requiring the construction of a (flexible) housing

to hide the springs would undermine the product’s simplicity

of design, size, and cost. Nor, apparently, did respondent

offer in district court to meet the burden of proving other-

wise. See 15 U.S.C. 1125(a)(3) (assigning burden of estab-

lishing non-functionality on party seeking trade dress pro-

tection). In any event, if the market could be permanently

balkanized by claims to particular functional designs (two

springs versus three, three versus four), an extremely

limited number of companies could utilize the invention.

That would undermine the patent-law goal of ensuring that

inventions, upon expiration of patent protection, become

publicly available building blocks for further innovation.

Alternatively, the court of appeals suggested that peti-

tioner, if it uses the dual-spring design, must avoid the four

other elements claimed as trade dress (straight legs, a short

member connecting the legs and the springs, a member

above the springs, and the sign), Pet. App. 19a-20a, even

though those elements are common to the sign stands made

by every one of respondent’s competitors, id. at 48a, 60a. In

particular, the court suggested that petitioner (uniquely

among competitors) must avoid wholly generic design fea-

tures such as straight legs and instead adopt an arbitrary

design using curved legs, dual support members, an A-frame

support member, or some other fanciful gloss if it uses the

dual-spring mechanism. But the straightforward design of

those four other features is also functional, and the court of

appeals’ proposed alterations—curved legs or multiple or A-

shaped support members—would negatively affect the

simplicity of design and the cost of production. More funda-

mentally, the court of appeals’ approach puts the shoe on the

wrong foot. Simply put, respondent cannot rely on the most

critical feature of its public domain invention (the dual-

spring mechanism) as the only thing that distinguishes its

sign stand from any other, and then demand that com-

petitors adopting the invention incorporate essentially

arbitrary and unique features to set their sign stands apart.

If respondent wishes to claim a design as trade dress,

respondent has the burden of setting its own design apart

from the merely functional.

CONCLUSION

Accordingly, the judgment of the court of appeals should

be reversed.

Respectfully submitted.

AUGUST 2000