TrafFix Devices, Inc. v. Marketing Displays, Inc.
The Supreme Court ruled that a company could not use trade dress law to stop a competitor from copying the dual-spring design of its road-sign stands, because that design had already been covered by the company's own now-expired patents.
The decision makes clear that when a product feature was claimed in an expired patent, that fact is strong evidence the feature is functional -- and functional features cannot be protected as trade dress, even if customers have come to associate the look with one company.
“A utility patent is strong evidence that the features therein claimed are functional.”
The Court's central rule on how an expired patent affects a later trade dress claim.
How it got here: A federal trial court ruled against MDI on its trade dress claim; the Sixth Circuit reversed; the Supreme Court took the case to resolve a circuit split.
The Case in Depth
What happened
Marketing Displays, Inc. (MDI) sold road-sign stands using a dual-spring mechanism that kept signs upright in wind, based on patents from inventor Robert Sarkisian. After those patents expired, competitor TrafFix Devices copied the look by reverse-engineering an MDI product and sold its own sign stands with a similar spring design and a similar name, "WindBuster" versus MDI's "WindMaster."
The question before the Court
If a company's road-sign stand design was already covered by an expired patent, can that company still stop a competitor from copying the design using trademark law?
Why it matters
Manufacturers whose patents have expired cannot use trademark law to keep a competitive edge over a design once the patent monopoly runs out. Competitors are free to copy functional features of expired-patent products, which keeps prices down and preserves the bargain at the heart of the patent system: exclusivity for a limited time only.
What changes now
The case goes back to the lower courts for further proceedings consistent with the Supreme Court's ruling, meaning MDI's trade dress claim over the dual-spring design cannot succeed. The separate trademark ruling over the similar "WindMaster"/"WindBuster" names and the rejected antitrust counterclaim were not before the Court and remain as previously decided. This is a final decision on the trade dress question.
What this does not decide
The Court expressly did not decide whether the Constitution's Patent Clause itself bars trade dress protection for expired-patent features, saying that question could wait for a case where trade dress became the practical equivalent of an expired patent. It also left open how arbitrary or ornamental features disclosed in a patent might be treated differently.
How the Court got there
The legal reasoning, step by step
- The Court explained that trade dress protection -- legal protection for a product's look or packaging when it signals who made it -- cannot cover features that are functional, meaning essential to how the product works or to its cost or quality.
- A feature disclosed in the claims of a utility patent is strong evidence that the feature is functional, and this evidence adds weight to the existing rule that a company seeking trade dress protection must prove its design is not functional.
- Applying this to the sign stands, the Court found the dual-spring design was the central advance claimed in MDI's own expired patents, and MDI's past patent-infringement lawsuit against another company (Winn-Proof) confirmed that even differently-arranged dual springs fell within those patent claims.
- The Court rejected the lower appeals court's test asking only whether copying the design was a 'competitive necessity.' Instead, a feature is functional whenever it is essential to the product's use or purpose or affects its cost or quality -- the competitive-necessity question only matters for a separate category called esthetic functionality, which was not at issue here.
- Because the dual-spring design was functional under this standard, the Court held it was unnecessary to even consider whether the design had acquired secondary meaning, since functional features cannot receive trade dress protection regardless of consumer association.
Doctrinal impact
Cases affected by this decision
Distinguishes Qualitex Co. v. Jacobson Products Co. (514 U. S. 159)
Clarifies that Qualitex's competitive-necessity language applies only to esthetic functionality, not the traditional functionality test.
Distinguishes Two Pesos, Inc. v. Taco Cabana, Inc. (505 U.S. 763)
Notes that case assumed the trade dress was non-functional, unlike the functional design at issue here.