Unconstitutional Incontestability? the Intersection of the Intellectual Property and Commerce Clauses of the Constitution: Beyond a Critique of Shakespeare Co. v. Silstar Corp

• Publication year: 1994
• Citation: Vol. 18 No. 02

UNIVERSITY OF PUGET SOUND LAW REVIEWVolume 18, No. 2WINTER 1995

Unconstitutional Incontestability? The Intersection of the Intellectual Property and Commerce Clauses of the Constitution: Beyond A Critique of Shakespeare Co. v. Silstar Corp.

Malla Pollack(fn*)

Table of Contents

I. Introduction......................................... 260

II. The Triggering Case: Shakespeare v. Silstar........ 261

III. Background Statutory and Common Law.......... 262

A. Mere Descriptiveness .................... 263

B. Functionality .......................... 264

C. Incontestably-Registered Trademarks.......... 266

IV. Congress May Not By Pass the "Limited Times" Provision in the Intellectual Property Clause Through the Commerce Clause....................... 270

A. Other Clauses as Limits on the Commerce Clause 270

B. The Meaning of "Limited Times" in the Intellectual Property Clause................ 274

C. Intellectual Property Clause Limits on the Commerce Clause......................... 288

1. Equivalent Rights-A Thesis ............ 289

2. Court Statements..................... 297

3. Congress' Actions .................... 298

V. Constitutional Limits On The States? Suggesting Constitutional/Statutory Preemption............. 300

VI. Conclusion............................... 326

VII. Coda................................... 327

I. Introduction

The Congress shall have the power . . .

. . . .

(3) To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes;

. . . .

(8) To promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries [.](fn1)

"The monopoly privileges that Congress may authorize through copyright grants are neither unlimited nor primarily designed to provide a special private benefit."(fn2)

But trademarks are forever.(fn3)

This article makes several assertions:

(1) The Intellectual Property Clause of the Constitution, even read with the Commerce Clause, prevents Congress from giving authors or inventors exclusive rights unbounded by premeasured time limitations;

(2) Because such limits exist, even incontestable trademarks must be subject to functionality challenges in order to prevent conflict with the Patent Clause;

(3) The Intellectual Property Clause requires a similar challenge to prevent conflict with the Copyright Clause;

(4) The states are also limited by either direct constitutional mandate or statutory preemption.

Based on the first two assertions, this article argues that the Fourth Circuit's decision in Shakespeare Co. v. Silstar Corp.' (fn4) is unconstitutional. This outcome also highlights the importance of the last two assertions. The ramifications of the third assertion are left to another paper.

The fourth assertion is both the most interesting and the most theoretical. The latter part of this Article suggests that states are directly limited by the Intellectual Property Clause, especially if Congress passes any legislation under that Clause. This outcome may be considered to rest on (1) statutory /constitutional preemption created by the Intellectual Property Clause in combination with any federal legislation under that Clause, or (2) narrow constitutional preemption by the Intellectual Property Clause acting alone, or (3) a dormant Intellectual Property Clause,(fn5) or (4) the intersection of the Intellectual Property Clause and the Dormant Commerce Clause. However analyzed, Congress is constitutionally barred from removing this limitation.

Finally, this Article asserts that in an "evolving Constitution," the best reading of "limited times" may be "limited in relation to the economic life of the res."(fn6)

II. The Triggering Case: Shakespeare v. Silstar(fn7)

Shakespeare and Silstar are competing manufacturers of fishing rods.(fn8) Shakespeare sued Silstar for trademark infringement.(fn9) Silstar defended and counterclaimed, requesting cancellation of Shakespeare's mark.(fn10)

Shakespeare had obtained federal registration and incontestable status for a mark that consisted of "a whitish-translucent, or clear, tip portion of the rod, combined with an opaque rod base."(fn11) This trademarked appearance is not primarily a product of aesthetic choice; it is the natural result of making a rod with a hollow graphite tube and a solid fiberglass tip-a superior combination of material that creates a strong, flexible, light-weight fishing rod. Leaving the tip clear or transparent and the base opaque is the cheapest way of making a superior rod because the manufacturer does not incur the expense of adding coloring.(fn12) The configuration also makes the rod's superior construction clearly visible to a consumer.(fn13) Shakespeare's "mark" is, therefore, "functional" as defined in trademark law.(fn14) Based on this conclusion, the district court ordered the Patent and Trademark Office (PTO) to cancel the mark's registration. The Fourth Circuit reversed-unconstitutionally. (fn15)

III. Background Statutory and Common Law

A trademark is a word, name, symbol, device, or any combination thereof used in commerce by a person to identify the goods or services of that person.(fn16) Trademark law protects consumers' mental association between the source of a product and the product itself. This allows consumers to easily locate goods of known quality and motivates suppliers to offer high quality merchandise.(fn17)

A. Mere Descriptiveness(fn18)

Words, names, symbols, and devices presented to courts or the PTO as "marks" are commonly separated into categories originally created by Judge Friendly:(fn19) generic,(fn20) descriptive, suggestive, and arbitrary or fanciful.(fn21) These categories are unclearly marked sections of a continuum from clear indications of product nature to clear indications of product source.(fn22)

Marks that merely describe a product are not inherently distinctive and do not inherently identify a particular source. Therefore, under most circumstances, they cannot be protected. However, descriptive marks may acquire enough distinctiveness to be protected.(fn23)

No one has ever created a clear test to determine whether a mark is "merely descriptive" or "suggestive." The distinction is very important because "suggestive" marks, as opposed to "merely descriptive" marks, can be protected without a showing of acquired distinctiveness.(fn24) One test looks at the role played by imagination: "A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods."(fn25) Another test considers whether or not competitors need the term to indicate the nature of their goods.(fn26) A third test focuses on the extent to which competitors already use the term.(fn27)

Marks that courts have held "descriptive" include KING SIZE (clothing for larger men),(fn28) FINELINE (for mechanical pencils),(fn29) BUFFERIN (for buffered aspirin),(fn30) and CONTINUOUS PROGRESS (for educational materials).(fn31) Marks held "suggestive" include CITIBANK (for an urban bank),(fn32) COPPERTONE (for sun tan oil),(fn33) LOC-TOP (for bottle closure caps),(fn34) and MATERNALLY YOURS (for maternity clothing shop).(fn35)

B. Functionality

"In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article."(fn36) Functional features are not protectible as trademarks.(fn37)

[T]he concept of functionality can be given a precise economic meaning. A nonfunctional feature, a feature that can be trade-marked, is one with perfect (or nearly perfect) substitutes, so that a property right will create no deadweight loss .... But if the feature lacks good substitutes, either because the product is worth less without it (the circular tire) or because it makes the product cheaper to produce ([the cheapest] container shape), trademark protection will be denied.(fn38)

No reference to "functionality" appears in the Lanham Act. The courts have refused to grant trademark protection to "functional" features. This judicial fiat sensibly prevents exclusive property in the "useful arts" without the need to meet the high criteria of the utility patent statutes and without the time limitations imposed on patent rights.(fn39) Congress has never spoken on this particular issue. The PTO, however, accepts the functionality doctrine and its policy rationale.(fn40) Although the Supreme Court has never directly considered the rule's legitimacy, the Court has assumed its legitimacy in several cases.(fn41)

C. Incontestably-Registered Trademarks

Trademarks that distinguish the goods of one business(fn42) can be registered on the principle register of the PTO.(fn43) If a trademark (1) is registered on the principle register, (2) is currently used in commerce, (3) has been both registered and used in commerce for the immediately preceding five consecutive years, and (4) is not generic,(fn44) a mere filing with the PTO transforms it into an incontestably-registered mark ("incontestable mark").(fn45) According to federal statute, the...