RESPONDENT:Marketing Displays Inc.
LOCATION:Attorney General’s Office of MA
DOCKET NO.: 99-1571
DECIDED BY: Rehnquist Court (1986-2005)
LOWER COURT: United States Court of Appeals for the Sixth Circuit
CITATION: 532 US 23 (2001)
ARGUED: Nov 29, 2000
DECIDED: Mar 20, 2001
John G. Roberts, Jr. – for the petitioner
John A. Artz – Argued the cause for the respondent
Lawrence G. Wallace – Argued the cause for the United States, as amicus curiae, by special leave of court, supporting the petitioner
Facts of the case
Marketing Displays, Inc. (MDI) held utility patents for a “dual-spring design” mechanism that keeps temporary road and other outdoor signs upright in wind. After the patents expired, 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 1964 for, among other things, trade dress infringement. MDA claimed that its sign stands were recognizable to buyers and users because the patented design was visible. In granting summary judgement for TrafFix, the District Court concluded that MDI had not established a “secondary meaning,” or that consumers did not associate the look of the dual-spring design with MDI. The court also found that there could be no trade dress protection for the design because it was functional. In reversing, the Court of Appeals 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 and noted the issue whether an expired utility patent forecloses the possibility of trade dress protection in the product’s design.
Is Marketing Displays, Inc.’s trade dress infringement claim precluded because its dual-spring design is a functional feature for which there is no trade dress protection?
Media for TrafFix Devices Inc. v. Marketing Displays Inc.
Audio Transcription for Opinion Announcement – March 20, 2001 in TrafFix Devices Inc. v. Marketing Displays Inc.
William H. Rehnquist:
The opinion of the Court in No. 99-1571, TrafFix Devices Inc. v. Marketing Displays Inc. will be announced by Justice Kennedy.
Anthony M. Kennedy:
Temporary road sign with warnings like, road work ahead or left shoulder closed, must withstand strong gusts of wind.
Now, this case begins with two patterns for a device that cam keep those signs standing despite the wind and the pattern involve two vertical springs and the parties call as the dual-spring design.
If you develop an absorbing interest in this subject let us caution you against looking for the dual-springs while you are driving by.
To begin with, the springs are behind the sign so you have to look backward.
Secondly, they are at base of the sign it is difficult to see so you have to stop your car, get out and look, but if you do you would probably be rewarded by seeing the dual-spring design.
The patterns in question gave protection of the dual-spring design to a company called Marketing Displays Inc. known as MDI.
When the patents expired the company called TrafFix became a competitor of MDI’s and used the same dual-spring design.
The two stands looked alike and that is because they were because TrafFix had copied MDI’s stand.
MDI could not sue for patent infringement since the patents had expired, but, it did sue TrafFix for infringing on its trade dress.
MDI said that this was its exclusive trade dress, the dual-spring design and that its customers identified MDI with it.
The Court of Appeals for the Sixth Circuit held that there was a material issue fact and that MDI could go to trial in order to establish its trade dress was not functional and that it had a secondary meaning.
We now reverse.
It is well established that trade dress can be protected under federal law.
Trade dress however does not extend to product design features that are functional.
Under the Lanham Act, the federal statute which confirms trade dress protection, the party who seeks to establish trade protection must bear the burden of showing that the product feature is nonfunctional.
An expired utility patent has vital significance in this inquiry a utility patent is strong evidence; the features claimed in the patent are functional.
A trade dress protection is sought for those features as it was for the dual-spring design in this case, the strong evidence of functionality based on the expired utility patent has great weight to the statutory presumptions that features are deemed functional until the party is seeking the trade dress protection can establish nonfunctionality.
The rule we have explained bars the trade dress claim here for MDI did not and cannot carry the burden of overcoming the strong evidence and a strong evidentiary inference of functionality.
Thereby the Court of Appeals in giving insufficient recognition to the importance of the expired utility patents and there evidentiary significance was likely caused by its misinterpretation of trade dress principles in other respects.
The Court of Appeals seem to regard our recent opinion in Qualitex Company v. Jacobson Products as mandating that a necessary test for functionality is whether the particular product configuration is a competitive necessity.
This was incorrect as a comprehensive definition.
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 and Qualitex did not purport to displace this traditional rule.
And the fact that the dual-spring design is functional means that there is no need to engage in speculation about other design possibilities such as the use of three or four springs or hiding the springs.
It would be a cross purposes to the laws objective and something of a paradox, were we to require the manufacturer to conceal the very item that the user seeks.
A different result may obtain in a case where a manufacturer attempts to protect arbitrary, incidental or ornamental aspects of the features of the product found in the patent claims.
There the manufacturer could perhaps prove that those aspects do not serve a purpose within the terms of the utility pattern.
No such claim is made here however and the judgment of the Court of Appeals for the Sixth Circuit is reversed.
The opinion of the Court is unanimous.