Protecting Nonfunctional Product Configurations as Intellectual Property
| Publication year | 1995 |
| Pages | 2705 |
1995, December, Pg. 2705. Protecting Nonfunctional Product Configurations as Intellectual Property
Consumer products are often designed with aesthetically appealing features that may or may not be required for the product to be "functional." These features may be protected from a competitor's use with patents or as trade dress. Recently, however, the Tenth Circuit Court of Appeals has held that a patentee may be precluded from asserting trade dress rights if a patented product has claim language that includes "nonfunctional" embodiments in the patent. Thus, preplanning is required to assure that nonfunctional product configurations are adequately protected as intellectual property for the anticipated life of the product.
Trade dress refers to the "total image" of a product, including features such as size, shape, color, color combinations, texture or graphics.(fn1) Trade dress protection applies not only to the packaging of the product, but the product configuration itself.(fn2) Furthermore, the trade dress of a product may be protected indefinitely, providing in essence a perpetual monopoly against competitors attempting to copy or use confusingly similar packaging or product features.
Under § 43(a) of the Lanham Act, codified at 15 U.S.C. § 1125(a), a federal cause of action is provided to remedy false designations of origin.(fn3) The trade dress of a product is eligible for protection under § 43(a) if it is so distinctive as to become, in effect, an unregistered trademark.(fn4) To prevail in a trade dress infringement case and prevent unauthorized imitation and copying of the appearance of a product, a plaintiff must show that (1) the product's feature or combinations of features are nonfunctional; (2) the trade dress has acquired secondary meaning or is so inherently distinctive that consumers identify it as an indicator of its source or brand; and (3) potential customers are likely to be confused by the defendant's trade dress into thinking that the defendant is affiliated, connected or associated with the plaintiff or that the defendant's goods originated with or are sponsored or approved by the plaintiff.(fn5)
As a defense, an alleged infringer may assert that the...
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