Expired Patents Rarely Will Product Trade Dress Protection for Product
Description The Supreme Court held that a product that had been protected by a patent, now expired, whose patent feature was now being copied by competitors, was not due trade dress protection. The patent protection was for a functional device, not distinctive product packaging or presentation that is ornamental or incidental to the design of the product.
Topic Intellectual Property
Key Words Patents; Trade Dress; Functionality
C A S E   S U M M A R Y
Facts Marketing Displays (MDI) holds an expired patent for a "dual-spring design" mechanism that keeps outdoor signs upright during strong winds. After its patent expired, a competitor, TrafFix, began selling sign stands with a similar dual-spring mechanism. MDI sued TrafFix for trade dress infringement. The district court held that there was no trade dress protection for the design because it was a functional design that had lost its patent protection. The appeals court reversed in favor of MDI. TrafFix appealed.
Decision Reversed. Because MDI's dual-spring design is a functional feature for which there is no trade dress protection, MDI's claim is barred. Trade dress protection may not be claimed for product features that are functional; a patent is strong evidence that the features involved are functional. To overcome that presumption, the expired patent holder would have to show that the feature is not functional, but only an ornamental or incidental aspect of the device. This device, which kept signs from blowing over in the wind, is clearly functional. Trade dress concerns the design or packaging of a product that acquires a distinctiveness that served to identify the product with its manufacturer.
Citation TrafFix Devices, Inc. v. Marketing Displays, Inc., - S.Ct. - (2001 WL 265741, Sup. Ct., 2001)

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