A Patent Does Not Bar Trade Dress Protection Unless Configuration Is Functional
September 1, 1999
The U.S. Court of Appeals for the Federal Circuit recently concluded that
trade dress protection for a product configuration is enforceable unless
disclosures in the related patent demonstrate that the configuration is
primarily functional or utilitarian. Midwest Industries Inc. and Karavan
Trailers Inc. both make and sell trailers used for towing watercraft. Midwest
owned two design patents and sued Karavan, claiming patent infringement and
trade dress violation. Karavan moved to dismiss the trade dress claim because
granting trade dress protection for a design patent would improperly extend the
life of the patent. The district court for the Southern District of Iowa
eventually granted Karavan's motion, and Midwest appealed. In evaluating the law
of patent law in contrast to trade dress protection, the Federal Circuit
concluded that these laws exist independently and the termination of either has
no legal effect on the continuance of the other. Thus, if a patent identifies
components that are protectable by trade dress, if these components are not
functional, the fact that a patent has been acquired does not convert the trade
dress protectable components into non-protection matter. Midwest Industries
Inc. v. Karavan Trailers Inc., 175 F.3d 1356 (Fed. Cir. 1999).
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