[A] product design which has a particular appearance may be functional because it is “essential to the use or purpose of the article” or “affects the cost or quality of the article.”
TrafFix Devices, Inc. v. Marketing Displays, Inc.
Plaintiff made and patented a road sign with springs holding it to decrease the effect of wind on the sign. After the patents expired, their competitor, defendant, made similar signs with a similar name. Plaintiff sued for defendant infringing on its trade mark with the name and its trade dress of the dual-spring design.
District court found for plaintiff on the trademark issue, but against it on the trade dress issue.
Court of appeals affirmed on the trademark issue, but reversed on the trade dress issue because there could be other ways of using a spring for its function without having two visible springs.
Can functional elements of a design be protected by trade dress?
Trade dress, the design or packaging of a product, can be protected when it has acquired a distinctiveness that provides a secondary meaning of identifying the product. However, the person asserting trade dress protection has the burden of proving that the elements protected are not functional.
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Plaintiff previously acquired a patent for the dual-spring feature. This is strong evidence that the feature provides a function, as this is the purpose of a patent. Because it is a functional component of the product and not an "arbitrary flourish," it cannot be protected by trade dress.
No, functional elements of a design cannot be protected by trade dress. Reversed and remanded.