TrafFix Devices, Inc. v. Marketing Displays, Inc.

Background

An inventor created a dual-spring mechanism to keep roadside signs upright in strong wind. A company that owned the now-expired patents, Marketing Displays, Inc. (MDI), sold sign stands that showed the visible spring design. A competitor, TrafFix, copied an MDI stand after reverse engineering it abroad and used a similar product name. MDI sued under the Lanham Act for trademark and trade dress infringement; the trademark and antitrust rulings are not before the Court. The lower courts split on whether the visible dual-spring design could be protected as trade dress after the patents expired.

Reasoning

The central question was how an expired utility patent affects a claim that a product’s look is protected trade dress. The Court held that a feature claimed in an expired patent is strong evidence that the feature is functional. When a design is functional — because it is essential to how the product works or affects cost or quality — trade dress protection is not available. MDI could not overcome the heavy burden to prove the dual-spring design was nonfunctional. Because the dual-spring mechanism was shown in the patents to prevent toppling and reduce twisting, the Court concluded it was functional and so ineligible for trade dress protection. The Court reversed the Court of Appeals and sent the case back for proceedings consistent with this rule.

Real world impact

The decision means manufacturers cannot use trade dress to keep exclusive control of functional features once their patents expire. Competitors may copy useful mechanical designs that are shown in expired patents. The ruling stresses that patent law, not trademark law, is the proper way to reward design inventions.