Robert Sarkisian had obtained utility patents on a dual-spring mechanism that kept temporary road signs upright in strong winds. After those patents expired, TrafFix copied MDI's sign stand and sold stands with a visible spring mechanism like MDI's. MDI claimed the visible dual-spring design had become protectable trade dress. The feature MDI sought to protect was the dual-spring design itself, which was also the central advance claimed in the expired patents.
Issue
Whether a manufacturer may claim trade dress protection for a product design feature that was claimed in an expired utility patent, and specifically whether MDI could protect its dual-spring sign-stand design under the Lanham Act.
Rule
Trade dress protection may not be claimed for product features that are functional, and the party asserting unregistered trade dress bears the burden of proving nonfunctionality. A utility patent is strong evidence that the features claimed in it are functional; when the expired patent claimed the feature at issue, the party seeking trade dress protection bears a heavy burden to show the feature is merely ornamental, incidental, or arbitrary. A 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; when functionality is established under that test, there is no need to consider competitive necessity or alternative designs.
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One of 10 multiple-choice questions for this case. Pick an answer to see why.
In Phoenix, Solterra Tools sold a portable work light with a distinctive side-mounted twin-brace hinge. Solterra's expired utility patent claimed that exact hinge arrangement and stated that the paired braces prevent wobble and extend bulb life by stabilizing the lamp head. After the patent expired, Mesa Forge began selling a light with the same visible twin-brace hinge, and Solterra sued for unregistered trade dress infringement.
Which is the strongest argument for Mesa Forge?
Explanation. A utility patent is strong evidence that the features it claims are functional. When the expired patent claimed the precise feature now asserted as trade dress, the trade-dress claimant bears a heavy burden to show the feature is not functional, such as by proving it is merely ornamental, incidental, or arbitrary. Because the patent described the hinge as preventing wobble and extending bulb life, the feature is functional under the rule that a feature is functional if it is essential to the article's use or purpose or affects its cost or quality. Secondary meaning and alternative designs do not rescue a functional feature. (Derived from TrafFix Devices, Inc. v. Marketing Displays, Inc. (2001).)