Trademark Law and Practice, Pages 143–148

TrafFix Devices, Inc. v. Marketing Displays, Inc.

Supreme Court of the United States, 2001

Facts:

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.

Procedural History:

  • 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.

Issue:

Can functional elements of a design be protected by trade dress?

Rules:

  • 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.

  • LexisNexis IconWestLaw LogoGoogle Scholar LogoPage 148

    [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.”

Reasoning:

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.

Holding:

No, functional elements of a design cannot be protected by trade dress. Reversed and remanded.

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