Brief Fact Summary. Marketing Displays, Inc. (MDI) (Plaintiff) brought suit against TrafFix Devices, Inc. (Defendant) for trade dress infringement of a dual-spring mechanism designed to allow temporary road signs to remain standing in high gusts of wind.
Synopsis of Rule of Law. An expired utility patent, determined to serve functional purposes only, is not entitled to trademark protection.
A utility patent is strong evidence that the features therein claimed are functional.View Full Point of Law
Issue. Is an expired utility patent, determined to serve functional purposes only, entitled to trademark protection?
Held. (Kennedy, J.) No. An expired utility patent, determined to serve functional purposes only, is not entitled to trademark protection. Under trade dress law, a â€œdesign or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source; and a design or package which acquires this secondary meaning, assuming other requisites are met, is a trade dress which may not be used in a manner likely to cause confusion as to the origin, sponsorship, or approval of the goods.â€ Trade dress protection, however, may not prohibit the copying of goods and products, unless an intellectual property right protects those items. In this case, the patent had expired. Where a trade dress patent has expired, the person who seeks to reestablish the patent must show that the feature of the patent in question is not only functional by showing â€œthat it is merely an ornamental, incidental, or arbitrary aspect of the device.â€ The main purpose of the design of the dual-spring is to keep the sign standing upright in heavy winds. This purpose was specifically stated in the patent application. In addition, the design is essential to the use of those specific road signs. Therefore, the design is decidedly functional. Due to its functionality, competitors do not need to significantly alter or hide the dual-spring design. The court of appeals decision is reversed and remanded.
Discussion. The Supreme Court has stated that copying is not always prevented or discouraged in the interest of promoting competition. When competitors are permitted to copy certain products, it promotes competition and can lead to alternations that promote advances in technology or goods.