US Supreme Court Briefs

No. 99-1571


In the Supreme Court of the United States


TRAFFIX DEVICES, INC., PETITIONER

v.

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 infringementaction 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 coveringthe features has expired.

INTEREST OF THE UNITED STATES

The United States has a strong interest in protecting the pro-inventivepolicies of the patent system, as well as the procompetitive policies ofthe trademark and antitrust laws. In addition, the United States Patentand 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 craftedbargain for encouraging the creation and disclosure of new, useful, andnon-obvious advances in technology." Bonito Boats, Inc. v. ThunderCraft Boats, Inc., 489 U.S. 141, 146, 150-151 (1989). To encourage innovation,the inventor of a new and useful advance is given "the exclusive rightto 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, sothat, after the patent expires, "the knowledge of the invention enuresto the people, who are thus enabled without restriction to practice it andprofit by its use." United States v. Dubilier Condenser Corp., 289U.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 regulation of trademarks, which the Act defines as "anyword, name, symbol, or device, or any combination thereof [used or intendedto be used] to identify and distinguish [a producer's] goods * * * fromthose manufactured or sold by others." 15 U.S.C. 1127. The term trademarkextends to "trade dress," which has come to include not only aproduct'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 registering an eligible mark with the UnitedStates Patent and Trademark Office, a person may obtain the exclusive rightto 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 unregisteredmarks, creating a cause of action against anyone who uses in commerce "anyword, term, name, symbol, or device, or any combination thereof" that"is likely to cause confusion * * * as to the origin * * * of his orher 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. "[B]y preventingothers from copying a source-identifying mark," the Act "reduce[s]the customer's costs of * * * purchasing decisions" because the appearanceof a mark on an item "quickly and easily assures a potential customerthat" the item "is made by the same producer as other similarlymarked items that he or she liked (or disliked) in the past." QualitexCo. v. Jacobson Prods. Co., 514 U.S. 159, 163-164 (1995) (internal quotationmarks omitted). Protecting trademarks also encourages product quality, becauseit "helps assure a producer that it (and not an imitating competitor)will reap the financial, reputation-related rewards associated with a desirableproduct." Id. at 164.

2. Respondent manufactures and sells portable, spring- mounted, wind-resistantstands for traffic signs under the WINDMASTER trademark. Pet. App. 2a, 26a.In 1972, respondent's president obtained two utility patents (Nos. 3,662,482and 3,646,696, hereinafter the '482 and '696 patents) on a sign displaydevice. The patented device consists of an unanchored base to which "twospaced apart" upright spring connections of specified rigidity aremounted; those springs are attached to an upright bar or member, which supportsthe 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 makeit less susceptible to tipping over. The use of two springs prevents thesign from "twisting" on its frame. Pet. App. 2a, 18a; '482 Patentat 1 (summary), 5 (claim 1).

Shortly after respondent's patents expired, petitioner reverse engineeredthe WINDMASTER sign and began selling its own version. Pet. App. 3a. Petitioneralso improved on the design, creating and patenting a "quick release"mechanism. J.A. 253. The TrafFix Devices brand name appears on all of petitioner'sstands. Ibid.

Respondent filed this trade dress infringement action under the Lanham Act,seeking to preclude petitioner from using its design.1 Respondent claimedthat the design of its sign-consisting of "(a) a relatively narrowbase member; (b) a pair of vertically arranged closely spaced coil springsattached to the base member; (c) a plurality of leg members attached tothe base member * * *; (d) an upright member attached to the coil springs;and (e) a sign attached to the upright member"-is trade dress thatidentifies the sign as made by respondent. Pet. App. 29a. The district courtobserved that respondent was required to prove, among other things, that"the appropriated features of the trade dress are primarily non-functional."Id. at 32a, 48a. The court, however, found that "the only significantdistinction in appearance" between respondent's stand and those ofits competitors "is the vertical dual-spring design or configuration,"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 respondentcould not show that its alleged trade dress was "primarily non-functional."Pet. App. 46a-55a. The court observed that, in patent enforcement litigation,respondent had asserted that the dual-spring mechanism enables the sign"to be stable against tipping under high wind conditions" by permittingit "to deflect in a direction along the longitudinal axis" whilepreventing the sign from "twisting." Id. at 50a-51a. The courtfound that the "utility patents are especially strong evidence of theusefulness of the dual-spring design." Id. at 55a.

3. The court of appeals reversed in relevant part. Pet. App. 1a-24a. Thecourt agreed that the "two spaced apart spring connections" enablethe sign to yield to the wind while "prevent[ing] twisting of the signframe." Id. at 18a. And the court noted that federal courts are dividedon the extent to which an expired utility patent "forecloses tradedress protection." Ibid. The court concluded, however, that "[s]olong 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 protectrespondent's trade dress without foreclosing use of vertically arrangedcoil springs. Any competitor who uses dual coil springs, the court stated,could be required to use leg members other than the straight ones used byrespondent (such as "U-shaped" leg members) or "other uprights(twin poles, A-shaped, etc.)" to "create an entirely differentlook altogether." Pet. App. 19a. "It takes little imagination,"the court continued, "to conceive of a hidden dual-spring mechanismor a tri or quad-spring mechanism." Ibid. The court also stated that"other competitors * * * avoid emulating" respondent's trade dressby not using the dual spring design; petitioner must do likewise, the courtstated, 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 conclusion that protectingrespondent's stand design as trade dress "would put its competitorsat a disadvantage beyond the merely reputational," even though thedistrict court had found the design to be one of a limited number of superiordesigns. Pet. App. 20a; id. at 53a. "The appropriate question,"the court stated, "is whether the particular product configurationis a competitive necessity." Id. at 20a. Here, the court indicated,respondent's design may not be a competitive necessity. Id. at 20a-21a.Although the equally effective competing designs are patented, the courtsuggested that petitioner "could come up with its own design, or licenseone of the outstanding patents, or use the dual-spring design in a way thatdoes not infringe [respondent's] trade dress." Id. at 21a.

SUMMARY OF ARGUMENT

In enacting the Lanham Act in 1946, Congress acted against a legal backgroundthat featured two related and well-established principles. First was theprinciple that, under federal patent law, utilitarian conceptions "placedbefore the public without the protection of a valid patent" are inthe public domain and thus "subject to appropriation without significantrestraint." Bonito Boats, 489 U.S. at 156. The second was the "functionality"doctrine of trademark law, which bars utilitarian features-i.e., featuresthat affect the goods' "purpose, action, or performance, or the facilityor economy of processing, handling, or us[e]"-from being withdrawnfrom the public domain as trade dress. Restatement of Torts § 741(b)(ii),at 623, § 742, at 628-629 & cmt. a (1938) (1938 Restatement); seealso Qualitex, 514 U.S. at 164.

In our view, the functionality doctrine-properly construed in light of itsimportant role in ensuring that useful features are withdrawn from the publicdomain only pursuant to valid (and temporally finite) patents-precludesrespondent's trade dress claim. Where, as here, an expired utility patentdiscloses that the feature alleged as trade dress contributes to the operationof the formerly patented device, the feature must be considered "functional"for purposes of the Lanham Act and thus ineligible for trade dress protection.That conclusion is consistent with this Court's repeated recognition thatpatent law accords the public the right to copy utilitarian conceptionsin expired patents, and serves the interests of judicial economy. Lookingto the scope of the patent claims will often permit courts to determinethe functionality of features in expired patents without resort to extensiveproceedings or difficult and nuanced tests. Such a clear standard is necessaryto ensure that trade dress litigation- or the threat thereof-does not underminethe substantive goal of patent law, which is to ensure that unpatented innovationsmay serve as building blocks for further advances.

ARGUMENT

TRADE DRESS PROTECTION DOES NOT EXTEND TO UTILITARIAN FEATURES SHOWN TOBE FUNCTIONAL BY AN EXPIRED UTILITY PATENT

The Lanham Act seeks "to codify and unify the common law of unfaircompetition and trademark protection." Inwood Labs. v. Ives Labs.,456 U.S. 844, 861 n.2 (1982) (White, J., concurring); Two Pesos, 505 U.S.at 785 (Thomas, J., concurring).2 In particular, Section 43(a) of the LanhamAct prohibits competitors from using a trademark or trade dress that is"likely to cause confusion * * * as to the origin" of goods. 15U.S.C. 1125(a). In enacting the Lanham Act, Congress acted against a backgroundof (and incorporated) two related and well-established principles: first,the longstanding rule that, under federal patent law, publicly disclosedutilitarian conceptions unprotected by patent are in the public domain tobe exploited and used as building blocks for further innovation by all;and second, the traditional functionality doctrine, which ensures that trademarkprotection does not interfere with competition, and which helps define theseparate domains of patent and trademark law by preventing the latter fromwithdrawing useful conceptions from the public domain in perpetuity.

In our view, the functionality doctrine resolves this case. Although thatdoctrine is sometimes difficult to apply, its application is not difficultin cases like this one. In particular, where an expired utility patent showsthat the features alleged as trade dress contribute to the operation ofthe claimed invention, those features must be considered "functional"and thus ineligible for Lanham Act protection. The contrary conclusion wouldabridge the fundamental patent-law principle that utilitarian conceptionsunprotected by patent are in the public domain and may be copied by all.

A. Patent And Trademark Law Guarantee The Right To Copy Publicly DisclosedUtilitarian Product Designs Not Protected By Patent

1. Patent law represents a carefully calibrated balance between the needto encourage "the creation and disclosure of new, useful, and non-obviousadvances in technology," Bonito Boats, 489 U.S. at 151, and the "ultimategoal" of ensuring that those advances eventually enter the public domainfor public use and benefit, id. at 151, 157. Accordingly, although patentlaw gives inventors "the exclusive right to practice the inventionfor a period of years," id. at 151, it conditions that grant on disclosureof how to make the invention, so that "the knowledge of the inventionenures to the people, who are thus enabled without restriction to practiceit and profit by its use" once the patent expires. Dubilier CondenserCorp., 289 U.S. at 186-187. See also Patent Act of 1790, ch. 7, 1 Stat.110 (requiring disclosure of how to "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, "bring[ing] newdesigns and technologies into the public domain" is "the ultimategoal of the patent system," Bonito Boats, 489 U.S. at 151.

To achieve that end, patent law has long required that unpatented utilitarianconceptions, once publicly disclosed, be available for public use notwithstandingother claims to protection. See Bonito Boats, 489 U.S. at 157. Indeed, theeffectiveness of patent law in encouraging significant advances over priorart, and disclosure of those advances, depends "almost entirely ona backdrop of free competition in the exploitation of unpatented designsand innovations." Id. at 151. It is fundamental that unpatented utilitarianconceptions be available "as the building blocks of further innovation."Ibid. Thus, "the efficient operation of the federal patent system dependsupon substantially free trade in publicly known, unpatented design and utilitarianconceptions." Id. at 156.

Concomitantly, this Court has consistently recognized that the expirationof a patent affords the public a virtually unrestricted right to copy theinvention. Thus, in 1896, this Court rejected a claim of unfair competitionbased on the similarity of two designs, declaring:

[O]n the expiration of a patent * * * the right to make the thing formerlycovered by the patent becomes public property * * * [and] there passes tothe public the right to make the machine in the form in which it was constructedduring the patent.

Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185 (1896). See also Coatsv. Merrick Thread Co., 149 U.S. 562, 572 (1893) (patentees could not, undertrademark law, "claim a monopoly" on the design "beyond thelife 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").

After the Lanham Act was enacted in 1946, this Court adhered to that rule,invalidating state laws that attempted to grant exclusive rights in utilitarianfeatures 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, theCourt held state unfair competition law to be pre-empted insofar as it purportedto bar one company from copying and selling nearly exact copies of an unpatentedlamp design created and popularized by another. Competitors, the Court declared,"had every right" to engage in such copying and selling "underthe federal patent laws." Id. at 231. The Court reached the identicalconclusion 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 thatbarred the copying of an unpatented boat hull design. "[W]e have consistentlyreiterated the teaching of Sears and Compco," the Court stated, "thatideas once placed before the public without the protection of a valid patentare subject to appropriation without significant restraint." 489 U.S.at 156. The Court also rejected the assertion that patent law says "nothingabout the right to copy or the right to use." Id. at 164. "Foralmost 100 years," the Court explained, "it has been well establishedthat in the case of an expired patent, the federal patent laws do createa federal right to 'copy and to use.'" Id. at 165.

2. The rule that unpatented utilitarian conceptions cannot be withdrawnfrom the public domain-and are freely available for all to copy, refine,and use-has long been a feature of substantive trademark and unfair competitionlaw as well. The common law accomplished that goal (and ensured that trademarkswould not inhibit robust competition) through a sharp distinction betweenthe trademark (used to identify the source) on the one hand and the productor its packaging on the other. "[I]t was long the rule that a trademarkmust be something other than, and separate from, the merchandise to whichit is applied." In re Morton-Norwich Prods., 671 F.2d 1332, 1336 (C.C.P.A.1982); W. McLean, Opening Another Can of Worms: Protecting Product Configurationas Trade Dress, 66 U. Cin. L. Rev. 119, 122 (1997). As courts began protectingproduct packaging and later product designs as trade dress, however, theyemployed the doctrine of "utilitarian functionality" to thosesame ends, i.e., to protect competition and "accommodate trade dresslaw to the policies of patent law." 1 J. McCarthy, Trademarks and UnfairCompetition § 7.63, at 7-137 (4th ed. 2000).

Under the functionality doctrine, a product feature may be protected astrade dress if it primarily serves to designate the producer. If the featureis functional in a utilitarian sense, however, it cannot be protected exceptby patent. The 1938 Restatement of Torts (§ 741(b)(ii), at 623 &628, cmt. j) thus observed that, so long as proper labeling is employed,the copying of functional features-even those that have acquired meaningas "an indication of the source"-is permitted. A feature is consideredfunctional, the Restatement explained, if it "affects [the goods']purpose, 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-typeconsiderations such as making the product work more efficiently, with fewerparts and longer life, or with less danger to operators, or be shaped soas 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-inaddition to and in congruity with its role of protecting competition-a specificpurpose of keeping the domains of patent and trademark law distinct. Itensures that, if "there is to be an exclusive right for functionalfeatures, such protection can only be gained by utility patent protectionlimited in time, not perpetual protection under trademark law." 1 McCarthy,supra, § 7:64, at 7-141. As one court explained in 1911:

If one manufacturer should make an advance in effectiveness of operation,or in simplicity of form, or in utility of color; and if that advance didnot entitle him to a monopoly by means of a * * * patent; and if by meansof unfair trade suits he could shut out other manufacturers [from] the benefitsof the unpatented utilities, * * * he would be given gratuitously a monopolymore effective than that of the unobtainable patent in the ratio of eternityto 17 years.

Pope Automatic Merchandising v. McCrum-Howell Co., 191 F. 979, 981-982 (7thCir. 1911), cert. denied, 223 U.S. 730 (1912). Before the Lanham Act wasenacted, courts regularly invoked functionality to ensure that trademarkand unfair competition law would not intrude on the principles of patentlaw by withdrawing from the public domain those useful conceptions thatpatent law renders publici juris.3 This Court, indeed, employed functionalityto that very end more than 60 years ago, rejecting efforts to assert tradedress rights in the shape of a product after expiration of the patent. Kellogg,305 U.S. at 122 (rejecting unfair competition 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 doctrinelimits the scope of protection available under that Act-ensuring that trademarklaw 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, 732 (3d Cir. 1957) (purpose of rule is "obviouslyto prevent the grant of perpetual monopoly by * * * trade-mark in the situationwhere a patent has either expired, or * * * cannot be granted"); Elmerv. ICC Fabricating, Inc., 67 F.3d 1571, 1580 (Fed. Cir. 1995) ("[P]atentlaw, not trade dress law, is the principal means for providing exclusiverights in useful product features."). This Court too recognized theimportance 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] inhibitinglegitimate competition by allowing a producer to control a useful productfeature. It is the province of patent law, not trademark law, to encourageinvention by granting inventors a monopoly over new product designs or functionsfor a limited time, 35 U.S.C. §§ 154, 173, after which competitorsare free to use the innovation. If a product's functional features couldbe used as trademarks, however, a monopoly over such features could be obtainedwithout regard to whether they qualify as patents and could be extendedforever (because 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 ProtectedAs 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 contextof an expired utility patent its application is often straightforward. Where,as here, the expired patent includes as part of the claimed invention thefeature alleged to be trade dress, or the patent's specifications or enforcementotherwise show that the feature contributes to the device's operation, itmust be considered "functional" under the Lanham Act and thusineligible for trade dress protection. In other words, assertions of utilitywithin the scope of the patent should be dispositive as to functionality.That conclusion follows from the purpose and traditional definition of functionality;ensures consistency and conformity with patent-law principles; and servesimportant policy interests.

1. The functionality doctrine serves to prevent one producer from obtainingcontrol over "a useful product feature" under trademark law, becausethe exclusive right to such a feature must be obtained, if at all, onlyfor 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 contributesto the operation of the patented device-is ordinarily dispositive evidencethat the feature is "useful" and thus can be protected only bypatent. Traditionally (and at the time the Lanham Act was passed), a featurehas been considered functional if it "affects [the device's] purpose,action, or performance, or the facility or economy of processing, handling,or us[e]," 1938 Restatement § 742, at 628-629 & cmt. a, orif it influences "cost or quality," Qualitex, 514 U.S. at 165,169. Where the feature is claimed as part of the patented device, or thepatent otherwise shows the feature's usefulness in the scope of the device,the feature necessarily meets that definition. Indeed, since the requirementsfor patent protection (such as the requirement of a significant advanceover prior art, 35 U.S.C. 102, 103 (1994 & Supp. IV 1998)) are moredemanding than the test of functionality (even small advances may be functional),a patent claim for a feature generally makes functionality an a fortioriconclusion. For the same reason, such a feature is also "essentialto the use or purpose" of the invention. See Qualitex, 514 U.S. at165, 169. Without the feature, the invention would not operate the sameway (or perhaps at all).

Accordingly, courts have often recognized that a patent "disclosingthe primary functional significance of [a] configuration" claimed astrade dress "incontrovertably establishes primary functionality"and "suffices" to justify summary 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. ChampionDiscs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998) ("expired utilitypatent is weighty evidence of functionality"); Restatement (Third)Unfair Competition § 17, at 174, cmt. b (1995) ("particularlypersuasive evidence of functionality"); 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 functionallyadvantageous in order to obtain a utility patent [but] later assert[ing]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 establishfunctionality, since "many non-functional shapes and configurationshappen to be described or pictured as an incidental detail in functionalpatents." 1 McCarthy, supra, § 7:89, at 7-227; Best Lock, 413F.2d at 1199 ("patent may not be evidence of functionality in regardto" arbitrary features "disclosed in the patent but which arenot attributed any functional significance"). But where careful examinationreveals that the feature is a utilitarian part of the patented invention,the patent is irrefutable evidence of functionality. See Disc Golf, 158F.3d at 1006; 1 McCarthy, supra, § 7:89, at 7-227.

That was settled trademark law before the Lanham Act was passed. In SparkletsCorp. v. Walter Kidde Sales Co., 104 F.2d 396, 399 (C.C.P.A. 1939), forexample, the court rejected a trade dress claim for a "groove"included in the product because an expired patent made it "perfectlyevident that the groove was at least believed by the patentee to have utilityat the time of making application," leaving the court "unableto escape the conclusion that the groove as an entity possessed utilityand, for that reason * * * is not a proper subject for registration as atrade-mark." Other courts repeatedly reached similar conclusions. SeeJ.A. Scriven Co. v. W.H. Towles Mfg. Co., 32 App. D.C. 321 (1909); Danielv. Electric Hose & Rubber Co., 231 F. 827, 834 (3d Cir. 1916). Thereis every reason to believe that the Lanham Act-an effort "to codifyand unify the common law of unfair competition and trademark protection,"see p. 6 & n.2, supra-was designed to incorporate (or at least not intendedto repudiate) that pre-existing principle. See Astoria Fed. Sav. & LoanAss'n v. Solimino, 501 U.S. 104, 108 (1991) (courts presume Congress "haslegislated with an expectation that" well-established principles "willapply except when a statutory purpose to the contrary is evident")(internal quotation marks omitted). The United States Patent and TrademarkOffice (USPTO) also views claims of utility in an expired utility patentas generally fatal to efforts to register a feature as a trademark, eventhough it formally employs a four-factor test.4

2. That approach is necessary to ensure that trade dress protection underthe Lanham Act does not provide perpetual protection for unpatented utilitarianconceptions that, as a matter of patent law, are in the public domain. SeeZip Dee, Inc. v. Dometic Corp., 931 F. Supp. 602, 611 (N.D. Ill. 1996) ("thepolicies underlying patent law dictate the denial of trademark protectionto a product configuration that has been claimed as part of a utility patent* * * if the configuration is functional within the context of the utilitypatent"); Vornado Air Circulation Sys. v. Duracraft Corp., 58 F.3d1498, 1510 (10th Cir. 1995) ("[W]here a disputed product configurationis * * * a described, significant inventive aspect of" the inventionclaimed in the expired patent, "patent law prevents its protectionas trade dress."), cert. denied, 516 U.S. 1067 (1996). Indeed, as thisCourt has observed, any law that withdraws utilitarian features from thepublic domain may "conflict with the very purpose of the patent lawsby decreasing the range of ideas available as the building blocks of furtherinnovation." Bonito Boats, 489 U.S. at 151. Protecting the operationalfeatures disclosed in expired utility patents would certainly have thateffect. It is, after all, "no great trick to build up secondary meaningin a product configuration if [competitors] are kept from utilizing thatconfiguration for 17 years by the sword and shield of patent protection."Zip Dee, 931 F. Supp. at 615. Consequently, protecting features shown tobe functional by an expired patent as trade dress would convert patentsinto a "springboard for converting a legislatively-created" limited-durationpatent "monopoly into a court-enforced permanent monopoly" underthe Lanham Act-"an impermissible" intrusion on the patent-lawgoal of placing publicly disclosed inventions in the public domain. Ibid.;see Vornado, 58 F.3d at 1508 ("the inventor's supply of ideas itselfand freedom to experiment with them" would be diminished by such tradedress protection). Indeed, respondent's design here served as a buildingblock for petitioner's now-patented quick-release mechanism. J.A. 252-253.

More fundamentally, this Court has held that, "in the case of an expiredpatent," patent law creates not only "a federal right to 'copyand to use,'" Bonito Boats, 489 U.S. at 165, but also "the rightto make [the article] in the form in which it was constructed during thepatent" 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, 376U.S. at 230; Bonito Boats, 489 U.S. at 164-165; pp. 7-9, supra. Correctlyapplied, the functionality doctrine ensures consistency between the LanhamAct and that well-settled body of law. In particular, by deeming usefulparts of the invention to be "functional" for purposes of theLanham Act-thus making them ineligible for perpetual trade dress protection-thedoctrine ensures that the Lanham Act does not withdraw from the public domainthose 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 designedto consolidate and unify existing common law trademark and unfair competitiondoctrines, was intended to overturn the result in Singer and its progenyby providing federal trade dress protection where patent law otherwise barredit. 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 statutesto be read in conformity with this Court's precedents"). To the contrary,Representative Lanham indicated that the functionality doctrine would continueto perform its traditional role of ensuring that utilitarian conceptionswill not be withdrawn from the public domain as trade dress in contraventionof patent-law principles.5

In addition, any suggestion that the Lanham Act effectively superseded thepatent-law right to copy cannot be reconciled with this Court's decisionsin Sears and Compco, supra, which were decided almost two decades afterthe Lanham Act's passage. In those companion cases, the Court held thatpatent law pre-empts state unfair competition law insofar as the latterbars copying of unpatented designs, because such designs are, "[u]nderthe federal patent laws * * * in the public domain and can be copied inevery detail by whoever pleases." Compco, 376 U.S. at 237-238; seeSears, 376 U.S. at 231-232 (similar). The holdings and "reasoning atthe core" of those decisions were subsequently reaffirmed in BonitoBoats, 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 distinguishablebecause they involved state unfair competition laws, it is implausible tosuppose that this Court would have held a state prohibition on copying tobe inconsistent with, and pre-empted by, federal law if a federal statute-theLanham Act-also would have prohibited copying in those circumstances. Indeed,in Compco itself, the Court accepted for purposes of its decision that theprerequisites for Lanham Act protection-secondary meaning and confusionas to source, see 15 U.S.C. 1123-had been met. 376 U.S. at 237 (confusion),238 (secondary meaning).6 Moreover, the fact that the result in Sears andCompco necessarily would affect the scope of Lanham Act protection couldhardly have been lost on the Court, since the issue was specifically raised.62-108 Resp. Br. at 14-15 (arguing that, if the state law prohibition oncopying were invalid, "it could with the same force be argued thattrademark rights residing in the shape or configuration of an article couldnot be enforced by a federal court * * * as similarly amounting to the grantof a monopoly in the nature of a patent") (emphasis added).7

It is possible to read Singer, Sears and their progeny as stating a broaderrule-as authorizing reproduction of not merely the invention, i.e., thoseelements that contribute or help make the invention function as intended,but also every jot and tittle of the patentee's product design during thetime the product was patented, including wholly arbitrary elements thatserve no purpose other than to indicate the product's origin. This Court,however, has cautioned that the "absolutist terms" of some ofits early decisions should not be read as foreclosing "limited regulation[]"of copying "to prevent consumer confusion as to source." BonitoBoats, 489 U.S. at 154 (emphasis added). In our view, where the elementalleged 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 ensuringthat the invention enters the public domain, and would needlessly underminethe Lanham Act's source-identification goal.8

3. Finally, treating expired patent claims as irrefutable evidence of functionalityis supported by important policy considerations. First, it enables courts(and competitors) to determine the availability of trade dress protectionbased on the patent itself (and its enforcement), without extensive proceedingsor inquiries. In contrast, the multi-factor tests used by some courts, seenote 4, supra, often require extensive 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, includingconsideration of alternative designs, consumer preference, and cost.

Avoiding uncertainty and potentially protracted proceedings is especiallyimportant due to the strong incentive that patentees often have to extendthe term of their exclusive rights. Because competitors may be deterred"not merely by successful suit but by the plausible threat of successfulsuit," Wal-Mart, 120 S. Ct. at 1345, any test that cannot easily beapplied and resolved on summary judgment will undermine competition andthe patent-law goal of making all prior art a building block for furthertechnological advances. Consumers "should not be deprived of the benefitsof competition with regard to the utilitarian and esthetic purposes thatproduct design ordinarily serves"-or the innovations those designsmay be adapted to advance-"by a rule of law that facilitates plausiblethreats of suit against new entrants" and further innovation. Id. at1344.9

Permitting parties to assert exclusive trade dress rights in product featuresnotwithstanding the expiration of a patent covering those features wouldalso "lead to admini-strative problems of no small dimension."Bonito Boats, 489 U.S. at 161. The "federal patent scheme providesa basis for the public to ascertain the status of the intellectual propertyembodied in any article in general circulation" because "[t]heavailability of damages in an infringement action is made contingent uponaffixing a notice of patent to the protected article." Id. at 161-162.Because Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), does not requiresuch notices, it would leave competitors with no certain way of knowing,in advance, whether the utilitarian feature they wish to use remains inthe public domain.

Finally, viewed in light of the serious adverse impact on competition andinnovation, the cost of denying trade dress protection to features coveredby an expired patent seems comparatively small. Producers seeking to establishmeans by which prospective purchasers may identify their products have almostinfinite options at their disposal; there thus is little need for them torely on the utilitarian features disclosed in their patents. Vornado, 58F.3d at 1510. Here, for example, respondent could have painted its dual-springswith an arbitrary and non-functional pattern, or used a unique badge orlogo to distinguish its stand from others. Having failed to do so, it cannotnow demand that others refrain from using its no-longer patented inventionas a price of competing. In addition, producers can demand that competitorsclearly label their products, see, e.g., 1938 Restatement § 742; KelloggCo., 305 U.S. at 120-121. And respondent did just that, obtaining an injunctionagainst petitioner's use of a descriptive but confusingly similar brandname. See note 1, supra. Moreover, the "TrafFix Devices" nameappears on all of petitioner's signs. See J.A. 253.

4. Notwithstanding the foregoing, there is a regrettable tendency (basedon one reading of the 1995 Restatement) for some courts to define functionality-andthus the scope of trade dress protection under the Lanham Act-as dependingsolely on whether competitors need a feature to compete.10 The court ofappeals here employed that approach, declaring that a configuration is notfunctional unless it is a "competitive necessity." Pet. App. 20a-21a.

Even if one sets aside the linguistic difficulty inherent in equating "functionality"with "competitive necessity," the approach is inappropriate, especiallyin the context of an expired patent. As an initial matter, it unmoors functionalityfrom its traditional role of protecting "the principle that there isonly one legal source of exclusive rights in utilitarian features-utilitypatent law." 1 McCarthy, supra, § 7:68, at 7-147; Qualitex, 514U.S. at 164-165 (if "functional features could be used as trademarks* * * a monopoly over such features could be obtained without regard towhether they qualify as patents and could be extended forever"); pp.9-12, supra. If one focuses solely on competitive need, for example, theinventor of a particular type of mousetrap could extend his exclusive rights,initially obtained under patent, into eternity under trade dress law solong 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 appealsconcluded that respondent's clearly functional dual-spring design may beprotected as trade dress since petitioner could invent, or obtain a licensefor, another patented design. Pet. App. 21a. That result strikes at "thevery purpose of the patent laws" by preventing inventions claimed inexpired patents from becoming "available as the building blocks offurther innovation." Bonito Boats, 489 U.S. at 151.

Such a result, moreover, would place the Lanham Act in conflict with theprinciple that, "at least in the case of an expired patent," competitorsnot 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 theform in which it was constructed during the patent," Singer Mfg. Co.,163 U.S. at 185. Indeed, it would essentially eliminate that well-establishedright, except where copying is a competitive "necessity." See1 McCarthy, supra, § 7:68, at 7-148 & n.5, and 7-150 (noting thatcompetitive necessity test creates an unnecessary conflict between trademarkand patent-law principles). See also Vornado, 58 F.3d at 1510 (acknowledgingthe 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 functionalitythat would place two otherwise harmonious statutory schemes at war witheach other. Moreover, as explained above (pp. 10-12, 16-19, supra), suchan approach cannot be reconciled with the functionality doctrine as it existedwhen Congress passed the Lanham Act, with other principles of statutoryconstruction, with Congress's evident intent, or with this Court's post-LanhamAct decisions. We therefore agree with the leading treatise that "truncat[ing]"functionality analysis by focusing on competitive necessity alone is "illogical";instead, at least in the context of expired patents, a feature is functionaleither 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 thereis "no * * * policy conflict between federal patent policy and tradedress law" so long as courts adhere to "the traditional tradedress definition of 'functionality'").11

Finally, equating "functionality" with "competitive necessity"over-reads this Court's decisions. Seizing on this Court's statement thata feature is functional if the inability to copy it puts "competitorsat a significant non-reputation-related disadvantage," Qualitex, 514U.S. at 165, the court of appeals emphasized the word "significant"in order to construe the phrase "significant * * * disadvantage"as a competitively disabling disadvantage. Pet. App. 20a-21a. As an initialmatter, we do not believe that the Court intended the "significant* * * disadvantage" standard to be the exclusive approach to functionality,given the other articulations of functionality the Court used in Qualitex.For example, the Court stated that a feature is functional if "it isessential to the use or purpose of the article or if it affects the costor quality of the article." 514 U.S. at 165, 169 (emphasis added, internalquotation marks omitted). See also id. at 162 (functional characteristic"an important" non-reputational "ingredient in the commercialsuccess of the product") (quoting Inwood Labs., 456 U.S. at 863 (White,J., concurring)). The Court's use of a competition-based formulation inQualitex, moreover, appears to have resulted from the fact that that case(like Inwood Labs.) involved a trademark color, for which the competitiveformulation is particularly useful.12 Thus, while we agree that competitivenecessity proves functionality, the absence of competitive necessity doesnot itself disprove it.13

In any event, Qualitex is best understood as using the phrase "significant* * * disadvantage" to indicate a "non-trivial" or "meaningful"non-reputation-related disadvantage. Indeed, the Court specifically indicatedthat the functionality doctrine was designed to ensure that "useful"product features do not become protected as trade dress in perpetuity inderogation of patent law, 514 U.S. at 164; and it further clarified thatthe "functionality doctrine * * * protects competitors against a disadvantage(unrelated to recognition or reputation) that trademark protection mightotherwise impose, namely, their inability reasonably to replicate importantnon-reputation-related product features," id. at 169. The examplesof "functionality" the Court cited likewise indicate that meaningfuldisadvantage, not competitive necessity, is sufficient to establish functionality.14

C. Respondent Is Not Entitled To Trade Dress Protection

Judged by the foregoing standards, respondent's design is not entitled totrade dress protection. Respondent's patents themselves, and respondent'slater enforcement of its patent rights, together make it clear that eachand every element of respondent's claimed trade dress is a utilitarian partof the patented device that passed into the public domain when the patentsexpired.

1. Respondent claims "trade dress" protection in a sign standwhich has "(a) a relatively narrow base member; (b) a pair of verticallyarranged closely spaced coil springs attached to the base member; (c) aplurality of leg members attached to the base member * * * ; (d) an uprightmember attached to the coil springs; and (e) a sign attached to the uprightmember." Pet. App. 29a. As the district court observed, the only oneof those features that differs from any other sign stand is the "pairof vertically arranged closely spaced coil springs." Id. at 48a; seealso id. at 60a ("Every single one of the competitors * * * marketsa sign stand with a narrow base, four leg members extending at angles fromthe base, an upright, and a sign."). But respondent's patents revealthe dual-spring design to be utilitarian because the "two spaced apartspring connections" permit the sign to yield to the wind without "twisting."Id. at 18a, 50a; '482 Patent at 4 (claim 1), 1 (summary). See also id. at2 (specification) ("[A]s the frame structure is deflected downwardly,the effective wind force is reduced much in the manner of a sail on a boatcoming 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).15 The "pluralityof leg members," Pet. App. 29a, prevents the sign from tipping over;indeed, the length of those legs is based on a formula disclosed in thepatent. '482 Patent at 5 (claim 1), 4 (specification). The "uprightmember attached" on top of "the coil springs" is utilitarianbecause it is necessary to display the sign. And the "sign attachedto the upright member" is utilitarian, because displaying the signis the very purpose of the stand.

At bottom, respondent's alleged trade dress consists of nothing more (orless) than the elements claimed or specified in its patents; respondent'salleged trade dress includes nothing arbitrary, fanciful, or otherwise non-usefulbeyond the patented device itself. Thus, the product design for which respondentclaims trade dress protection is not an article that incorporates the patenteddevice. It is the patented device. Consequently, when the patents for thatdevice expired, respondent's design fell into the public domain.

2. The court of appeals' contrary analysis does not withstand scrutiny.First, the court of appeals observed that a combination of functional featuresmay itself be non-functional and protected as trade dress. Pet. App. 20a.In the context of an expired utility patent, where each element allegedto be trade dress contributes to the functioning of the invention, thatis not true. To the contrary, when the elements alleged as trade dress arepart of the patented invention, and together make up the invention, thewhole is not merely functional; it is the invention.

Moreover, even outside the utility patent context, a combination or configurationof wholly functional elements will rarely be non-functional unless the particularcombination is somehow "arbitrary" and not driven by considerationsof utility, function, or simplicity. 1 McCarthy, supra, § 7:76, at7-177 (citing Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d27 (2d Cir. 1995)); see Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d246, 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 individuallyfunctional features will be just as functional as are the parts." 1McCarthy, supra, § 7:76, at 7-177. Here, the patents prove that thecombination of elements claimed as trade dress is functional, since allof the elements are part of the invention, and they are combined so as toimplement the invention in a straightforward manner. For that reason, itmakes no difference that other competitors "avoid emulating" respondent'strade dress by avoiding use of the dual-spring design. Pet. App. 20a. Thedual-spring mechanism is, in the end, the most functional and critical featurein the formerly patented invention; it permits the sign to yield to thewind without twisting. Once the patents expired, respondent lost the rightto exclude competitors from using that clearly functional feature; thatright to exclude cannot be resuscitated under the rubric of trade dressprotection.

For similar reasons, the court of appeals erred by speculating that competitorsmight be able to use a tri-spring or quad-spring mechanism, or a hiddentwo-spring mechanism. Pet. App. 19a-20a. Manifestly, altering the numberof springs or requiring the construction of a (flexible) housing to hidethe springs would undermine the product's simplicity of design, size, andcost. Nor, apparently, did respondent offer in district court to meet theburden of proving otherwise. See 15 U.S.C. 1125(a)(3) (assigning burdenof establishing non-functionality on party seeking trade dress protection).In any event, if the market could be permanently balkanized by claims toparticular functional designs (two springs versus three, three versus four),an extremely limited number of companies could utilize the invention. Thatwould undermine the patent-law goal of ensuring that inventions, upon expirationof patent protection, become publicly available building blocks for furtherinnovation.

Alternatively, the court of appeals suggested that petitioner, if it usesthe dual-spring design, must avoid the four other elements claimed as tradedress (straight legs, a short member connecting the legs and the springs,a member above the springs, and the sign), Pet. App. 19a-20a, even thoughthose elements are common to the sign stands made by every one of respondent'scompetitors, id. at 48a, 60a. In particular, the court suggested that petitioner(uniquely among competitors) must avoid wholly generic design features suchas straight legs and instead adopt an arbitrary design using curved legs,dual support members, an A-frame support member, or some other fancifulgloss if it uses the dual-spring mechanism. But the straightforward designof those four other features is also functional, and the court of appeals'proposed alterations-curved legs or multiple or A-shaped support members-wouldnegatively affect the simplicity of design and the cost of production. Morefundamentally, the court of appeals' approach puts the shoe on the wrongfoot. Simply put, respondent cannot rely on the most critical feature ofits public domain invention (the dual-spring mechanism) as the only thingthat distinguishes its sign stand from any other, and then demand that competitorsadopting the invention incorporate essentially arbitrary and unique featuresto set their sign stands apart. If respondent wishes to claim a design astrade dress, respondent has the burden of setting its own design apart fromthe merely functional.

CONCLUSION

Accordingly, the judgment of the court of appeals should be reversed.

Respectfully submitted.

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

AUGUST 2000

1 Respondent also sought to enjoin petitioner from using the name WINDBUSTERbecause it was similar to respondent's WINDMASTER mark. The district courtgranted the injunction, Pet. App. 68a-93a, the court of appeals affirmed,id. at 4a-12a, and petitioner did not seek further review.

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 "[t]here is muchthat is good" under present law and expressed an intent to "preserve[]the things which have demonstrated their usefulness." Id. at 3. Atthe same time, Congress did alter some common law rules "to 'dispensewith mere technical prohibitions,'" Qualitex, 514 U.S. at 171 (quotingS. Rep. 1333, supra, at 3), such as by permitting registration of descriptivemarks (if they have acquired secondary meaning), ibid. Where Congress alteredexisting law, however, it did so explicitly. See, e.g., ibid.

3 See, e.g., 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 Sonsv. 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); In re Dennison Mfg. Co., 39 F.2d 720 (C.C.P.A.1930).

4 The USPTO looks to the factors identified in Morton-Norwich, 671 F.2dat 1341, as required by the Federal Circuit and its predecessor courts.See Trademark Manual of Examining Procedure § 1202.03(a)(iii) (2nded. 1993, rev. ed. 1997). The factors are (1) "the existence of anexpired utility patent which disclosed the utilitarian advantage of thedesign 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 "aparticular design results from a comparatively simple or cheap method ofmanufacturing the article." 671 F.2d at 1341. Accord Disc Golf, 158F.3d at 1006 (similar test). In cases like this one, where an expired utilitypatent exists, the first Morton-Norwich factor is almost always dispositive.

5 Responding to concerns that trademark law might accord one competitortrade 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, "whenyou 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.

6 Because Compco involved a design patent rather than a utility patent,the Court's opinion also expresses concern that functionality analysis mightnot fully reconcile the scope of trade dress protection with patent-lawright-to-copy principles. 376 U.S. at 238. The scope of the right to copythat arises on the expiration of a design patent does not readily correlatewith the functionality doctrine, because the subject matter of design patentsis, by definition, ornamental and non-functional.

7 Relying on Compco's assertion that the patent-law right to copy extendsto products that are not "entitled to a design patent or other federalstatutory protection," some courts have held that, because the LanhamAct falls under the rubric of "other federal statutory protection,"it may be treated as a free-standing exception to the patent-law right tocopy. Esercizio v. Roberts, 944 F.2d 1235, 1241 (6th Cir. 1991) (quoting376 U.S. at 238), cert. denied, 505 U.S. 1219 (1992); Thomas & BettsCorp. v. Panduit Corp., 138 F.3d 277, 287 (7th Cir.), cert. denied, 525U.S. 929 (1998). There is, however, no persuasive evidence that the LanhamAct, by creating a federal trade dress right, was meant to displace theordinary and longstanding rule that unpatented utilitarian conceptions,as a matter of patent law and the functionality doctrine, cannot be protectedin perpetuity as trade dress. See pp. 16-19, supra. Moreover, as explainedabove, the argument cannot be reconciled with Compco's result. It is hardto see how federal patent law would pre-empt state unfair competition lawif another federal law-the Lanham Act itself-offered the same protectionagainst copying that state law sought to provide. Finally, it is likewiseincorrect to assume that one can "reconcile" the Lanham Act withpatent-law principles by sequentially protecting utilitarian features coveredby expired patents under patent and then trademark law; such an approachwould defeat the right to copy unpatented utilitarian conceptions that patentlaw furnishes.

8 Similarly, the right to copy an invention upon the patent's expirationwould not extend to improvements covered by separate, unexpired improvementpatents; the original invention could be copied, but the improvements-evenif 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 ifpatent application filed during 1-year grace period).

9 For that reason, this Court determined in Wal-Mart that producers claimingtrade dress protection for product designs must show "secondary meaning,"i.e., that the public associates the design with the source, and rejecteda multi-factor test for determining whether a design is inherently distinctive.See 120 S. Ct. at 1344-1345. Here, however, proof of secondary meaning isnot an effective barrier. The very fact that, because of the patent, onlyone producer made a particular product for some 20 years will very oftencause 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 ofthe consuming public is not the product but the producer." KelloggCo., 305 U.S. at 118.

10 See, e.g., Vornado, 58 F.3d at 1507 (stating that functionality dependson competitive impact and not on "inherent usefulness"); Restatement(Third) Unfair Competition § 17, at 172 (design functional if it offersbenefits that are "important to effective competition" (apartfrom indicating source) and the benefits "are not practicably availablethrough the use of alternative designs").

11 For the same reasons, it is inappropriate to read the 1998 Lanham Actamendment (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 provingnon-functionality to the party claiming protection, 15 U.S.C. 1125(a)(3)(to be codified)) as making competitive need a prerequisite to functionality.Although the House Report on the latter amendment observes that a "functionalfeature of trade dress is one that is commonly used by similar businesses,protection of which would hinder competition," H.R. Rep. No. 250, 106thCong., 1st Sess. 6 (1999), that statement is descriptive rather than definitional,and insufficient in any event to overcome the principle against construingstatutes so as to create conflicts between them. Moreover, in the same paragraph,the Report specifically recognizes that functionality should prevent trademarklaw from intruding on patent-law principles, observing that "[f]unctionalmarks should be dealt with under patent law." Id. at 7. Finally, treatingeither amendment or its legislative history as ratifying a particular definitionof functionality would be especially inappropriate because Congress, whenit enacted those amendments, specifically declined to pass a bill-H.R. 3163,105th Cong., 2d Sess., § 2(c) (1998)-that would have codified a definitionfor functionality. See Trademarks Amendments Act of 1999: Hearing Beforethe Subcomm. on Courts and Intellectual Property of the House Comm. on theJudiciary, 106th Cong., 1st Sess. 13-14 (1999) (Statement of Michael K.Kirk) (urging House to revive H.R. 3163 to provide "guidance as towhen 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 thecolor orange on a can of soda may be functional because it identifies thecontents as being orange-flavored, even though the color does not affectthe way the can retains liquid. Focusing on competition in such a case showsthe color to be functional because, if other makers of orange soda cannotcolor their cans orange, they may be competitively disadvantaged in themarketplace. See Wal-Mart, 120 S. Ct. at 1344.

13 Some courts' exclusive reliance on competitive need may have resultedfrom a misinterpretation of the 1938 Restatement. Comment "a"of that Restatement, after giving a general explanation of utilitarian functionality,noted the doctrine of aesthetic functionality, which may apply "[w]hengoods are bought largely for their aesthetic value." After discussingthat issue, the Restatement added that the determination in such a caseturns on "whether prohibition of imitation by others will deprive theothers of something which will substantially hinder them in competition."In context, the competitive hindrance test appears to be an additional wayfunctionality may be found-especially useful in cases of aesthetic functionality-nota sine qua non without which functionality can never be found.

14 The Court, for example, approvingly cited the mode of analysis in a lowercourt decision holding that the color black, as applied to motor boat engines,was functional because it coordinated well with other colors and minimizedthe apparent size of the motor; and it similarly cited another holding thatthe color green was functional on farm machinery, since farmers might wanttheir machinery to match. See 514 U.S. at 169-170.

15 Although respondent's patents do not describe a "narrow" baseand show widely spaced springs, respondent has asserted that its patentsextend to stands with narrower bases and closely spaced springs as well.See Sarkisian v. Winn-Proof Corp., 686 F.2d 671 (9th Cir. 1981). Moreover,it is not disputed that positioning the springs closer together is functionalbecause it makes the stand smaller, lighter, and less costly to manufacture,as the district court expressly found. Pet. App. 54a.

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