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Intellectual Property Newsletter

Functional Features: No Trade Dress Protection

The Lanham Act is a federal statute that generally addresses the registration, use, and infringement of trademarks, trade dress, and related marks. Even though trade dress can be protected under the Lanham Act, the individual seeking protection must first prove that the trade dress is not “functional.”

Section 43(a)(3)

According to Section 43(a)(3) of the Lanham Act, in a civil action for trade dress infringement, “the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.” Referencing this section, the Supreme Court has said, “This burden of proof gives force to the well-established rule that trade dress protection may not be claimed for product features that are functional.”

The Inwood Formulation: Functionality

In the landmark case Inwood Laboratories, Inc. vs. Ives Laboratories, Inc., the Supreme Court set forth the following rule: “In general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”

The rationale underlying the Inwood rule is the desire to promote competition. Stated differently, granting trade dress protection to particular product features would prohibit competitors from legitimately copying functional design features. In the words of the Supreme Court, “The Lanham Act does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity.”

Recent Supreme Court Case

In 2001, the Supreme Court addressed whether a particular design feature could be protected as trade dress. In that case, the plaintiff-manufacturer held an expired patent for a dual-spring design mechanism that kept outdoor road signs upright in strong wind conditions. When a competitor began to market sign stands with a similar dual-spring mechanism, the plaintiff sued for trade dress infringement. After considering the prior patent, the Court concluded that a “utility patent is strong evidence that the features therein claimed are functional.”

“If trade dress protection is sought for [the dual-spring mechanism] the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption [in Section 43(a)(3)] that features are deemed functional unless proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the [dual-spring mechanism], one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.”

Note that the Court did not alter the general rule that functional features may not be the subject of trade dress protection. Rather, the court fashioned more of an evidentiary rule; i.e., “disclosure of a feature in the claims of a utility patent constitutes strong evidence of functionality.”

Here, after analysis, the Court ultimately denied plaintiff’s trade dress infringement claim because plaintiff could not overcome the “strong evidentiary inference of functionality.” In other words, the plaintiff was unable to prove that its dual-spring design feature was not functional.

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