OCTOBER TERM, 2000
Syllabus
TRAFFIX DEVICES, INC.
v. MARKETING DISPLAYS, INC.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SIXTH
CIRCUIT
No.99-1571. Argued November 29, 2000-Decided March 20, 2001
Respondent, Marketing Displays, Inc. (MDI), holds now-expired
utility patents for a "dual-spring design" mechanism that keeps
temporary road and other outdoor signs upright in adverse wind
conditions. MDI claims that its sign stands were recognizable to
buyers and users because the patented design was visible near the
sign stand's base. After the patents expired and petitioner TrafFix
Devices, Inc., began marketing sign stands with a dual-spring
mechanism copied from MDI's design, MDI brought suit under the
Trademark Act of 1946 for,
inter alia, trade dress
infringement. The District Court granted TrafFix's motion for
summary judgment, holding that no reasonable trier of fact could
determine that MDI had established secondary meaning in its alleged
trade dress, i.
e., consumers did not associate the
dual-spring design's look with MDI; and, as an independent reason,
that there could be no trade dress protection for the design
because it was functional. The Sixth Circuit reversed. Among other
things, it suggested that the District Court committed legal error
by looking only to the dual-spring design when evaluating MDI's
trade dress because a competitor had to find some way to hide the
design or otherwise set it apart from MDI's; explained, relying on
Qualitex Co. v.
Jacobson Products Co., 514 U. S. 159, 165, that
exclusive use of a feature must put competitors at a significant
non-reputation-related disadvantage before trade dress protection
is denied on functionality grounds; and noted a split among the
Circuits on the issue whether an expired utility patent forecloses
the possibility of trade dress protection in the product's
design.
Held: Because MDI's dual-spring design is a functional
feature for which there is no trade dress protection, MDI's claim
is barred. Pp. 28-35.
(a) Trade dress can be protected under federal law, but the
person asserting such protection in an infringement action must
prove that the matter sought to be protected is not functional, 15
U. S. C. § 1125(a)(3). Trade dress protection must subsist with the
recognition that in many instances there is no prohibition against
copying goods and products. An expired utility patent has vital
significance in resolving a trade dress claim, for a utility patent
is strong evidence that the features therein claimed are
functional. The central advance claimed in the expired util-
24
24 TRAFFIX DEVICES, INC.
v. MARKETING DISPLAYS, INC.
Syllabus
ity patents here is the dual-spring design, which is an
essential feature of the trade dress MDI now seeks to protect.
However, MDI did not, and cannot, carry the burden of overcoming
the strong evidentiary inference of functionality based on the
disclosure of the dual-spring design in the claims of the expired
patents. The springs are necessary to the device's operation, and
they would have been covered by the claims of the expired patents
even though they look different from the embodiment revealed in
those patents, see
Sarkisian v.
Winn-Proof Corp., 697
F. 2d 1313. The rationale for the rule that the disclosure of a
feature in a utility patent's claims constitutes strong evidence of
functionality is well illustrated in this case. The design serves
the important purpose of keeping the sign upright in heavy wind
conditions, and statements in the expired patent applications
indicate that it does so in a unique and useful manner and at a
cost advantage over alternative designs. Pp.28-32.
(b) In reversing the summary judgment against MDI, the Sixth
Circuit gave insufficient weight to the importance of the expired
utility patents, and their evidentiary significance, in
establishing the device's functionality. The error was likely
caused by its misinterpretation of trade dress principles in other
respects. "'In general terms a product feature is functional,' and
cannot serve as a trademark, 'if it is essential to the use or
purpose of the article or if it affects the cost or quality of the
article.'''
Qualitex, supra, at 165 (quoting
Inwood
Laboratories, Inc. v.
Ives Laboratories, Inc., 456 U. S. 844, 850, n.
10). This Court has expanded on that meaning, observing that a
functional feature is one "the exclusive use of [which] would put
competitors at a significant non-reputation-related disadvantage,"
Qualitex, supra, at 165, but that language does not mean
that competitive necessity is a necessary test for functionality.
Where the design is functional under the
Inwood formulation
there is no need to proceed further to consider competitive
necessity. This Court has allowed trade dress protection to
inherently distinctive product features on the assumption that they
were not functional.
Two Pesos, Inc. v.
Taco Cabana,
Inc., 505 U. S.
763, 774. Here, however, beyond serving the purpose of
informing consumers that the sign stands are made by MDI, the
design provides a unique and useful mechanism to resist the wind's
force. Functionality having been established, whether the design
has acquired secondary meaning need not be considered. Nor is it
necessary to speculate about other design possibilities. Finally,
this Court need not resolve here the question whether the Patent
Clause of the Constitution, of its own force, prohibits the holder
of an expired utility patent from claiming trade dress protection.
Pp. 32-35.
200 F.3d
929, reversed and remanded.
25
KENNEDY, J., delivered the opinion for a unanimous Court.
John G.
Roberts, Jr., argued the cause for
petitioner.
With him on the briefs were Gregory G. Garre and JeanneMarie
Marshall.
Deputy Solicitor General Wallace argued the cause for the United
States as amicus curiae urging reversal. With him on the brief were
Solicitor General Waxman, Assistant Attorney General Ogden, Jeffrey
A. Lamken, Anthony J. Steinmeyer, and Mark S. Davies.
John A. Artz argued the cause for respondent. With him on
the brief were
John S.
Artz, Robert P. Renke, and
Lisa A. Sarkisian. *
JUSTICE KENNEDY delivered the opinion of the Court. Temporary
road signs with warnings like "Road Work Ahead" or "Left Shoulder
Closed" must withstand strong gusts of wind. An inventor named
Robert Sarkisian obtained two utility patents for a mechanism built
upon two springs (the dual-spring design) to keep these and other
outdoor signs upright despite adverse wind conditions. The holder
of the now-expired Sarkisian patents, respondent Marketing
Displays, Inc. (MDI), established a successful business in the
manufacture and sale of sign stands incorporating the patented
feature. MDI's stands for road signs were recognizable to buyers
and users (it says) because the dual-spring design was visible near
the base of the sign.
*Briefs of amici curiae urging reversal were filed for the
Holmes Group, Inc., by James W Dabney; for Panduit Corp. by Roy E.
Hofer, Jerome Gilson, Cynthia A. Homan, and Philip A. Jones; and
for Malla Pollack, pro se.
Briefs of
amici curiae urging affirmance were filed for
the American Intellectual Property Association by
Louis T.
Pirkey; and for Thomas & Betts Corp. by
Sidney David
and
Roy H. Wepner.
Theodore H. Davis, Jr., Marie V. Driscoll, and Helen Hill
Minsker filed a brief for the International Trademark Association
as amicus curiae.
26
26 TRAFFIX DEVICES, INC.
v. MARKETING DISPLAYS, INC.
This litigation followed after the patents expired and a
competitor, TrafFix Devices, Inc., sold sign stands with a visible
spring mechanism that looked like MDI's. MDI and TrafFix products
looked alike because they were. When TrafFix started in business,
it sent an MDI product abroad to have it reverse engineered, that
is to say copied. Complicating matters, TrafFix marketed its sign
stands under a name similar to MDI's. MDI used the name
"WindMaster," while TrafFix, its new competitor, used
"WindBuster."
MDI brought suit under the Trademark Act of 1946 (Lanham Act),
60 Stat. 427, as amended, 15 U. S. C. § 1051
et seq.,
against TrafFix for trademark infringement (based on the similar
names), trade dress infringement (based on the copied dual-spring
design), and unfair competition. TrafFix counterclaimed on
antitrust theories. After the United States District Court for the
Eastern District of Michigan considered cross-motions for summary
judgment, MDI prevailed on its trademark claim for the confusing
similarity of names and was held not liable on the antitrust
counterclaim; and those two rulings, affirmed by the Court of
Appeals, are not before us.
I
We are concerned with the trade dress question. The District
Court ruled against MDI on its trade dress claim. 971 F. Supp. 262
(ED Mich. 1997). After determining that the one element of MDI's
trade dress at issue was the dualspring design, id., at 265, it
held that "no reasonable trier of fact could determine that MDI has
established secondary meaning" in its alleged trade dress, id., at
269. In other words, consumers did not associate the look of the
dualspring design with MDI. As a second, independent reason to
grant summary judgment in favor of TrafFix, the District Court
determined the dual-spring design was functional. On this rationale
secondary meaning is irrelevant because there can be no trade dress
protection in any event. In ruling on the functional aspect of the
design, the District Court
27
noted that Sixth Circuit precedent indicated that the burden was
on MDI to prove that its trade dress was nonfunctional, and not on
TrafFix to show that it was functional (a rule since adopted by
Congress, see 15 U. S. C. § 1125(a)(3) (1994 ed., Supp. V)), and
then went on to consider MDI's arguments that the dual-spring
design was subject to trade dress protection. Finding none of MDI's
contentions persuasive, the District Court concluded MDI had not
"proffered sufficient evidence which would enable a reasonable
trier of fact to find that MDI's vertical dual-spring design is
nonfunctional." 971 F. Supp., at 276. Summary judgment was entered
against MDI on its trade dress claims.
The Court of Appeals for the Sixth Circuit reversed the trade
dress ruling.
200 F.3d
929 (1999). The Court of Appeals held the District Court had
erred in ruling MDI failed to show a genuine issue of material fact
regarding whether it had secondary meaning in its alleged trade
dress, id., at 938, and had erred further in determining that MDI
could not prevail in any event because the alleged trade dress was
in fact a functional product configuration, id., at 940. The Court
of Appeals suggested the District Court committed legal error by
looking only to the dual-spring design when evaluating MDI's trade
dress. Basic to its reasoning was the Court of Appeals' observation
that it took "little imagination to conceive of a hidden
dual-spring mechanism or a tri or quad-spring mechanism that might
avoid infringing [MDI's] trade dress."
Ibid. The Court of
Appeals explained that "[i]f TrafFix or another competitor chooses
to use [MDI's] dual-spring design, then it will have to find
some other way to set its sign apart to avoid infringing
[MDI's] trade dress."
Ibid. It was not sufficient, according
to the Court of Appeals, that allowing exclusive use of a
particular feature such as the dual-spring design in the guise of
trade dress would "hinde[r] competition somewhat." Rather,
"[e]xclusive use of a feature must 'put competitors at a
significant non-reputation-related disadvantage' before
trade
28
28 TRAFFIX DEVICES, INC.
v. MARKETING DISPLAYS, INC.
dress protection is denied on functionality grounds."
Ibid. (quoting
Qualitex Co. v.
Jacobson Products
Co., 514 U. S.
159, 165 (1995)). In its criticism of the District Court's
ruling on the trade dress question, the Court of Appeals took note
of a split among Courts of Appeals in various other Circuits on the
issue whether the existence of an expired utility patent forecloses
the possibility of the patentee's claiming trade dress protection
in the product's design. 200 F. 3d, at 939. Compare
Sunbeam
Products, Inc. v.
West Bend Co., 123
F.3d 246 (CA5 1997) (holding that trade dress protection is not
foreclosed),
Thomas &
Betts Corp. v.
Panduit
Corp., 138 F. 3d 277
(CA7 1998) (same), and
Midwest
Industries, Inc. v.
Karavan Trailers, Inc., 175 F.3d
1356 (CA Fed 1999) (same), with
Vornado Air
Circulation Systems, Inc. v.
Duracraft Corp., 58 F.3d
1498, 1500 (CAlO 1995) ("Where a product configuration is a
significant inventive component of an invention covered by a
utility patent ... it cannot receive trade dress protection"). To
resolve the conflict, we granted certiorari. 530 U. S. 1260
(2000).
II
It is well established that trade dress can be protected under
federal law. The design 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. In these
respects protection for trade dress exists to promote competition.
As we explained just last Term, see
Wal-Mart Stores, Inc. v.
Samara Brothers, Inc., 529 U. S. 205 (2000),
various Courts of Appeals have allowed claims of trade dress
infringement relying on the general provision of the Lanham Act
which provides a cause of action to one who is injured when a
person uses "any word, term name, symbol, or device, or any
29
combination thereof ... which is likely to cause confusion ...
as to the origin, sponsorship, or approval of his or her goods." 15
U. s. C. § 1125(a)(1)(A). Congress confirmed this statutory
protection for trade dress by amending the Lanham Act to recognize
the concept. Title 15 U. s. C. § 1125(a)(3) (1994 ed., Supp. V)
provides: "In a civil action for trade dress infringement under
this chapter for trade dress not registered on the principal
register, the person who asserts trade dress protection has the
burden of proving that the matter sought to be protected is not
functional." This burden of proof gives force to the
well-established rule that trade dress protection may not be
claimed for product features that are functional.
Qualitex,
supra, at 164-165;
Two Pesos, Inc. v.
Taco Cabana,
Inc., 505 U. S.
763, 775 (1992). And in
Wal-Mart, supra, we were careful
to caution against misuse or overextension of trade dress. We noted
that "product design almost invariably serves purposes other than
source identification."
Id., at 213.
Trade dress protection must subsist with the recognition that in
many instances there is no prohibition against copying goods and
products. In general, unless an intellectual property right such as
a patent or copyright protects an item, it will be subject to
copying. As the Court has explained, copying is not always
discouraged or disfavored by the laws which preserve our
competitive economy.
Bonito Boats, Inc. v.
Thunder Craft
Boats, Inc., 489
U. S. 141, 160 (1989). Allowing competitors to copy will have
salutary effects in many instances. "Reverse engineering of
chemical and mechanical articles in the public domain often leads
to significant advances in technology."
Ibid.
The principal question in this case is the effect of an expired
patent on a claim of trade dress infringement. A prior patent, we
conclude, has vital significance in resolving the trade dress
claim. A utility patent is strong evidence that the features
therein claimed are functional. If trade dress protection is sought
for those features the strong evidence
30
30 TRAFFIX DEVICES, INC.
v. MARKETING DISPLAYS, INC.
of functionality based on the previous patent adds great weight
to the statutory presumption that features are deemed functional
until proved otherwise by the party seeking trade dress protection.
Where the expired patent claimed the features in question, one who
seeks to establish trade dress protection must carry the heavy
burden of showing that the feature is not functional, for instance
by showing that it is merely an ornamental, incidental, or
arbitrary aspect of the device.
In the case before us, the central advance claimed in the
expired utility patents (the Sarkisian patents) is the dualspring
design; and the dual-spring design is the essential feature of the
trade dress MD I now seeks to establish and to protect. The rule we
have explained bars the trade dress claim, for MD I did not, and
cannot, carry the burden of overcoming the strong evidentiary
inference of functionality based on the disclosure of the
dual-spring design in the claims of the expired patents.
The dual springs shown in the Sarkisian patents were well apart
(at either end of a frame for holding a rectangular sign when one
full side is the base) while the dual springs at issue here are
close together (in a frame designed to hold a sign by one of its
corners). As the District Court recognized, this makes little
difference. The point is that the springs are necessary to the
operation of the device. The fact that the springs in this very
different-looking device fall within the claims of the patents is
illustrated by MDI's own position in earlier litigation. In the
late 1970's, MDI engaged in a long-running intellectual property
battle with a company known as Winn-Proof. Although the precise
claims of the Sarkisian patents cover sign stands with springs
"spaced apart," U. S. Patent No. 3,646,696, col. 4; U. S. Patent
No. 3,662,482, col. 4, the Winn-Proof sign stands (with springs
much like the sign stands at issue here) were found to infringe the
patents by the United States District Court for the District of
Oregon, and the Court of Appeals for the
31
Ninth Circuit affirmed the judgment.
Sarkisian v.
WinnProof Corp., 697 F.2d
1313 (1983). Although the WinnProof traffic sign stand (with
dual springs close together) did not appear, then, to infringe the
literal terms of the patent claims (which called for "spaced apart"
springs), the WinnProof sign stand was found to infringe the
patents under the doctrine of equivalents, which allows a finding
of patent infringement even when the accused product does not fall
within the literal terms of the claims.
Id., at 1321-1322;
see generally
Warner-Jenkinson Co. v.
Hilton Davis
Chemical Co.,
520
U. S. 17 (1997). In light of this past ruling-a ruling procured
at MDI's own insistence-it must be concluded the products here at
issue would have been covered by the claims of the expired
patents.
The rationale for the rule that the disclosure of a feature in
the claims of a utility patent constitutes strong evidence of
functionality is well illustrated in this case. The dual-spring
design serves the important purpose of keeping the sign upright
even in heavy wind conditions; and, as confirmed by the statements
in the expired patents, it does so in a unique and useful manner.
As the specification of one of the patents recites, prior art
"devices, in practice, will topple under the force of a strong
wind." U. S. Patent No. 3,662,482, col. 1. The dual-spring design
allows sign stands to resist toppling in strong winds. U sing a
dual-spring design rather than a single spring achieves important
operational advantages. For example, the specifications of the
patents note that the "use of a pair of springs ... as opposed to
the use of a single spring to support the frame structure prevents
canting or twisting of the sign around a vertical axis," and that,
if not prevented, twisting "may cause damage to the spring
structure and may result in tipping of the device." U. S. Patent
No. 3,646,696, col. 3. In the course of patent prosecution, it was
said that "[t]he use of a pair of spring connections as opposed to
a single spring connection ... forms an important part of this
combination" because it
32
32 TRAFFIX DEVICES, INC.
v. MARKETING DISPLAYS, INC.
"forc[es] the sign frame to tip along the longitudinal axis of
the elongated ground-engaging members." App. 218. The dual-spring
design affects the cost of the device as well; it was acknowledged
that the device "could use three springs but this would
unnecessarily increase the cost of the device."
Id., at 217.
These statements made in the patent applications and in the course
of procuring the patents demonstrate the functionality of the
design. MDI does not assert that any of these representations are
mistaken or inaccurate, and this is further strong evidence of the
functionality of the dual-spring design.
III
In finding for MDI on the trade dress issue the Court of Appeals
gave insufficient recognition to the importance of the expired
utility patents, and their evidentiary significance, in
establishing the functionality of the device. The error likely was
caused by its misinterpretation of trade dress principles in other
respects. As we have noted, even if there has been no previous
utility patent the party asserting trade dress has the burden to
establish the nonfunctionality of alleged trade dress features. MDI
could not meet this burden. Discussing trademarks, we have said"
'[i]n general terms, a product feature is functional,' and cannot
serve as a trademark, 'if it is essential to the use or purpose of
the article or if it affects the cost or quality of the article.'''
Qualitex, 514 U. S., at 165 (quoting
Inwood Laboratories,
Inc. v.
Ives Laboratories, Inc., 456 U. S. 844, 850, n. 10
(1982)). Expanding upon the meaning of this phrase, we have
observed that a functional feature is one the "exclusive use of
[which] would put competitors at a significant
nonreputation-related disadvantage." 514 U. S., at 165. The Court
of Appeals in the instant case seemed to interpret this language to
mean that a necessary test for functionality is "whether the
particular product configuration is a competitive necessity." 200
F. 3d, at 940. See also
Vornado, 58 F. 3d, at 1507
("Functionality, by contrast, has been defined
33
both by our circuit, and more recently by the Supreme Court, in
terms of competitive need"). This was incorrect as a comprehensive
definition. As explained in
Qualitex, supra, and
Inwood,
supra, a feature is also functional when it is essential to the
use or purpose of the device or when it affects the cost or quality
of the device. The
Qualitex decision did not purport to
displace this traditional rule. Instead, it quoted the rule as
Inwood had set it forth. It is proper to inquire into a
"significant non-reputation-related disadvantage" in cases of
esthetic functionality, the question involved in
Qualitex.
Where the design is functional under the
Inwood formulation
there is no need to proceed further to consider if there is a
competitive necessity for the feature. In
Qualitex, by
contrast, esthetic functionality was the central question, there
having been no indication that the green-gold color of the laundry
press pad had any bearing on the use or purpose of the product or
its cost or quality.
The Court has allowed trade dress protection to certain product
features that are inherently distinctive.
Two Pesos, 505 U.
S., at 774. In
Two Pesos, however, the Court at the outset
made the explicit analytic assumption that the trade dress features
in question (decorations and other features to evoke a Mexican
theme in a restaurant) were not functional.
Id., at 767, n.
6. The trade dress in those cases did not bar competitors from
copying functional product design features. In the instant case,
beyond serving the purpose of informing consumers that the sign
stands are made by MDI (assuming it does so), the dual-spring
design provides a unique and useful mechanism to resist the force
of the wind. Functionality having been established, whether MDI's
dual-spring design has acquired secondary meaning need not be
considered.
There is no need, furthermore, to engage, as did the Court of
Appeals, in speculation about other design possibilities, such as
using three or four springs which might serve the same purpose. 200
F. 3d, at 940. Here, the functionality of the spring design means
that competitors need not explore
34
34 TRAFFIX DEVICES, INC.
v. MARKETING DISPLAYS, INC.
whether other spring juxtapositions might be used. The
dual-spring design is not an arbitrary flourish in the
configuration of MDI's product; it is the reason the device works.
Other designs need not be attempted.
Because the dual-spring design is functional, it is unnecessary
for competitors to explore designs to hide the springs, say, by
using a box or framework to cover them, as suggested by the Court
of Appeals.
Ibid. The dual-spring design assures the user
the device will work. If buyers are assured the product serves its
purpose by seeing the operative mechanism that in itself serves an
important market need. It would be at cross-purposes to those
objectives, and something of a paradox, were we to require the
manufacturer to conceal the very item the user seeks.
In a case where a manufacturer seeks to protect arbitrary,
incidental, or ornamental aspects of features of a product found in
the patent claims, such as arbitrary curves in the legs or an
ornamental pattern painted on the springs, a different result might
obtain. There the manufacturer could perhaps prove that those
aspects do not serve a purpose within the terms of the utility
patent. The inquiry into whether such features, asserted to be
trade dress, are functional by reason of their inclusion in the
claims of an expired utility patent could be aided by going beyond
the claims and examining the patent and its prosecution history to
see if the feature in question is shown as a useful part of the
invention. No such claim is made here, however. MDI in essence
seeks protection for the dual-spring design alone. The asserted
trade dress consists simply of the dual-spring design, four legs, a
base, an upright, and a sign. MDI has pointed to nothing arbitrary
about the components of its device or the way they are assembled.
The Lanham Act does not exist to reward manufacturers for their
innovation in creating a particular device; that is the purpose of
the patent law and its period of exclusivity. The Lanham Act,
furthermore, does not protect trade dress in a functional design
simply
35
because an investment has been made to encourage the public to
associate a particular functional feature with a single
manufacturer or seller. The Court of Appeals erred in viewing MDI
as possessing the right to exclude competitors from using a design
identical to MDI's and to require those competitors to adopt a
different design simply to avoid copying it. MDI cannot gain the
exclusive right to produce sign stands using the dual-spring design
by asserting that consumers associate it with the look of the
invention itself. Whether a utility patent has expired or there has
been no utility patent at all, a product design which has a
particular appearance may be functional because it is "essential to
the use or purpose of the article" or "affects the cost or quality
of the article."
Inwood, 456 U. S., at 850, n. 10.
TrafFix and some of its
amici argue that the Patent
Clause of the Constitution, Art. I, § 8, cl. 8, of its own force,
prohibits the holder of an expired utility patent from claiming
trade dress protection. Brief for Petitioner 33-36; Brief for
Panduit Corp. as
Amicus Curiae 3; Brief for MalIa Pollack as
Amicus Curiae 2. We need not resolve this question. If,
despite the rule that functional features may not be the subject of
trade dress protection, a case arises in which trade dress becomes
the practical equivalent of an expired utility patent, that will be
time enough to consider the matter. The judgment of the Court of
Appeals is reversed, and the case is remanded for further
proceedings consistent with this opinion.
It is so ordered.
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