July 19, 2001

Products Themselves Can Be Trademarks . . . Sometimes

Holland & Knight Newsletter
Thomas W. Brooke

The U.S. Supreme Court recently considered whether a patented product feature could be protected as a trademark after the patent expired.

The case, Traffix Devices, Inc. v. Marketing Displays, Inc., involved a unique product feature that was designed to keep outdoor signs upright in windy weather. The sign company sought and obtained patent protection. After the patent expired, the sign company claimed that the design of the outdoor sign was so unique that it served to identify the source of the sign - in other words, that the design acted as a trademark, in the same way that the word KODAK and the yellow and black film box serve as trademarks for the Eastman Kodak Company, or the distinctive white star on the cap of a pen, serves as a trademark for the pen manufacturer Mont Blanc.

The sign company's claim required the Court to reconcile the competing purposes of the patent and trademark statutes. Patents are intended to protect inventions; in exchange for disclosing an invention to the public, an inventor is granted a legal monopoly for a limited period of time (today, 20 years from the date that the application is filed). This time limit on the monopoly represents a fundamental policy of the patent law. Once the patent has expired, the invention is in the public domain for anyone to use.

Trademarks, on the other hand, are protected because they inform consumers about the source and quality of goods and services. If a consumer sees the mark L.A. GEAR on a pair of shoes, or NATIONAL GEOGRAPHIC on a magazine, or a flying red horse along with the word MOBIL at a gas station, they know what to expect. Trademarks can be protected forever, and, indeed, many well-known trademarks have been around for more than 100 years. A trademark does not prevent a competitor from selling a similar or identical product, however; they simply must do so under a different name.

Packaging, or "trade dress" can also identify a product's source, and thus can be a trademark. The words "Coca-Cola" do not have to be visible for us to recognize a Coke bottle, and even the most casual photographer knows that film in yellow and black boxes comes from Kodak and that film in green packaging comes from Fuji.

Sometimes, even the product itself or a feature of the product can be classified as trade dress and serve to identify the source of the product. The triangular shaped Toblerone candy bar and the pink insulation from Owens-Corning, for instance, are two examples.

In the case involving the windy weather highway signs, the U.S. Supreme Court observed that the sign company had earlier sought and obtained patent protection for its new and unique spring device designed to keep signs upright. This patent protection established that the device was functional, that is, that it served a useful purpose and was not merely a clever ornamental design that identified the product's source. Because the feature was functional, the Court held that the feature could not be protected as a trademark, so as not to allow the manufacturer to use the trademark law to gain an unlimited, patent-like monopoly and prevent others from using its invention.

The Court did not establish a permanent bar on trademark protection for product features protected by a patent. As a practical matter, however, the fact that a design feature is covered by a utility patent creates a strong presumption that the feature is function, and therefore is unprotectable as a trademark.

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