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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2001
- **Citation:** 532 U.S. 23

## Text

. Supreme Court, U

: FILED
7 4

No. 99-1571 AUG 24 2000

In the Supreme Court of the United States

—

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— — 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
6
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
27
. ͥ — — 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)

IV
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

VI

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)

2

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

3

“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.

1

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

5

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

6

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.

7

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

8

“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

10

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:

11

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).

12

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

13

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-

14

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
*

15

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.

16

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

17

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.

18

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

19

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.

20

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).

21

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.

22

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”).

23

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

24

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.

25

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.

26

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.

— —

27
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

28

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.

29

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.

30

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

31

SETH P. WAXMAN
Solicitor General

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385014_0361%3A09. Public record. Not legal advice.