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).