The trouble with trade dress protection of product design.

• Author: Prowda, Judith Beth

INTRODUCTION

Courts have recently wrestled with the relationship between patent law and trademark law.(1) What happens when two federal statutes, the Patent Act and the Lanham Act, overlap?(2) Should one of the federal laws yield? Where should courts draw the line when a utilitarian invention and product identifying feature are the same? Nowhere is this issue more striking than in cases where product configurations have also been the subject of patent protection. In such instances, trade dress protection can have potentially far-reaching effects for manufacturers of patented articles and the public alike.

Since there is little uniformity among federal circuits, or even courts within circuits, this area of law remains unsettled as different tests for functionality in trade dress have emerged.(3) Because of the split among courts on the standards of protectability of trade dress in product configuration cases, the issue seems ripe for Supreme Court resolution in the near future. Without direction from the Supreme Court on the issue of trade dress protection of product fact-specific courts likely will continue to chart their own course based on fact-specific analyses and narrow doctrinal interpretations in this volatile area of law.

Traditionally, trade dress has referred to the packaging and labeling of goods.(4) In recent years, however, the contours of trade dress protection have expanded to include product design,(5) as reinforced by two Supreme Court trademark cases.(6) Under the expanded concept of trade dress protection of product design, as opposed to its "dress," or "packaging,"(7) "prior distinctions between `package' or `container' and `product configuration' become blurred and hardly worth defending."(8) This development also underscores the tension existing between federal trademark and patent laws with regard to functionality, as the edges of distinct intellectual property regimes intersect.

While a few courts have held that nonfunctional elements of a product's design may receive trade dress protection,(9) the Tenth Circuit in Vornado Air Circulation Systems, Inc. v. Duracraft Corp.,(10) held that trade dress protection is not available for product configurations comprising a "significant inventive aspect" of a previously patented invention, regardless of functionality.(11) Although the Seventh Circuit, in Thomas & Betts Corp. v. Panduit Corp.,(12) passed up an opportunity to address directly the tension between the patent and trademark laws (instead limiting its decision to whether the product configuration in question had acquired secondary meaning),(13) the Northern District of Illinois, on remand, formulated a bright line test that permitted slavish copying of the "best mode" of the patent.(14) Meanwhile, another judge in the Northern District of Illinois in Zip Dee, Inc. v. Dometic Corp.,(15) set forth a framework that denies "trademark protection to a product configuration that has been claimed as part of a utility patent"(16) if the product configuration is functional within the context of the utility patent or if it is needed by competitors to compete.(17)

In this Article, I examine the ambit of trade dress protection as applied to product design.(18) I review several of the recent cases that examine the conflict between trade dress and patent in product configuration, focusing on the analysis of the functionality issue by the courts.(19) I argue that a product may receive both patent and trade dress protection concurrently and consecutively without running afoul of the Patent Act or Lanham Act.(20) However, it is my contention that this double protection will only be afforded in circumstances where the design serves as a source indicator.(21) The key inquiry is to ask whether the design feature is functional or nonfunctional under trade dress law and whether it indicates source (through inherent distinctiveness or secondary meaning).

1. BACKGROUND

   1. Development of Trade Dress Doctrine

      The choice of product design is essential to the success of a product because consumers generally make their purchase selections, whether consciously or subconsciously, by means of symbols.(22) These symbols may include not only brand names, slogans, labels, and distinctive lettering and color, but also the packaging of a product, the container, and even the configuration of the product itself.(23) Once a consumer is satisfied with a product, the package, container, or product design may become the identifying symbol, a sort of purchasing guide for the future.(24) Indeed, an innovative design can transform an ordinary or drab product into commercially valuable property.(25)

      Package and container merchandising has been indispensable in the distribution and sale of products since the beginning of commerce.(26) By the end of the nineteenth century, the classic package, the Uneeda Biscuit Box, had become firmly entrenched as a promotional tool in the United States.(27) Manufacturers quickly recognized the potential marketing effect of a distinctively designed package or container. Eventually, consumers were demanding whiskey in the "pinched bottle,"(28) "the first popular example of a mark consisting of the design or shape of a product's container."(29) While tests have shown that few consumers can distinguish among premium beers or liquors in unmarked containers, it is indisputable that a package, container, or product design can add intangible qualities and values to the physical contents.(30) Indeed, the distinctive shape of a Coca-Cola bottle is a modern-day example of a powerful product image.(31) As the marketplace has provided an abundance of product variations, the prospect of capturing a significant portion of the value of the innovation will depend on the ability of the product to distinguish itself from its competitors by its look and the image it evokes.(32)

      Hence, trade dress, or the overall appearance of a product,33 serves critical functions in commerce. It enables consumers to identify products so that they may make repeat purchases of products that have satisfied them or avoid making repeat purchases of products that have disappointed them. This reduces consumer search time and costs, and gives producers the incentive to invest in goodwill and offer a high quality of goods and services.(34)

   2. Policy Objectives of the Patent Act and Lanham Act

      Patent law and trademark law serve different objectives.(35) Congress passed the Patent Act in 1952 pursuant to the Patent Clause of the U.S. Constitution.(36) The three basic principles of the federal patent system, as summarized by the Supreme Court in Aronson v. Quick Point Pencil Co.,(37) are: (1) "to foster and reward invention" by permitting an inventor to license inventions in exchange for royalties;(38) (2) to "promote[] disclosure of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires;"(39) and (3) "to assure that ideas in the public domain remain there for free use of the public."(40)

      Congress enacted the Lanham Act in 1946 to serve two primary purpose.(41) First, the Lanham Act promotes "the distinguishability of goods and services for the protection of the public as well as of businesses."(42) Second, the Lanham Act protects the goodwill of manufacturers and merchants and their investment of "energy, time, and money" from "misappropriation by pirates and cheats."(43) The vehicle primarily used for trade dress protection under federal law is section 43(a) of the Lanham Act,(44) which covers unregistered and registered marks.(45)

      Producers increasingly have invoked section 43(a) of the Lanham Act to protect a wide range of trade dress characteristics, including the decor of a restaurant,(46) the exterior design of a building or business,(47) color,(48) fragrance,(49) artistic style,(50) and even the configuration of the product itself.(51)

      In contrast to patent law, which grants a monopoly for a limited period of time,(52) the Lanham Act affords protection for a potentially infinite duration.(53) Thus, by relying on the Lanham may avoid the stringent requirements of patent law.(54) For protection under section 43(a) of the Lanham Act,(55) a trade dress must be "distinctive;" that is, it must be either inherently distinctive,(56) or it must have acquired secondary meaning.(57) Second, it must be "nonfunctional."(58) Finally, to establish a violation under section 43(a), there must be a likelihood of confusion as to the origin or sponsorship of the defendant's goods or services.(59)

      Of these elements, defining functionality has proven the most problematical, and the confusion on this point has colored the holdings of the cases on product configuration trademarks.(60) The definition of functionality is by no means unitary. Indeed, as one commentator noted, "[i]t seems that there are as many definitions of what is `functional' as there are courts."(61) The basis for the doctrine of functionality is the strong public policy of promoting free competition by preventing the monopolization of functional features of products unprotected by patents.(62) If functional features were given trademark or trade dress protection, such protection would surely clash with the objectives of federal patent law.(63) Courts therefore must carefully balance the functionality doctrine of trade dress law and strict requirements of patent law on functional features.(64)

   3. Early Cases

      Early case law has emphasized the relevance of prior utility patents to the scope of trade dress protection. The Supreme Court addressed the issue of copying a product configuration over 100 years ago in Singer Manufacturing Co. v. June Manufacturing Co.(65) The plaintiff in Singer, claiming unfair competition and trademark infringement, sought to enjoin the defendant from copying the size, shape, and design of its distinctive sewing machine.(66) Certain features of the sewing machine were the subject matter of...