More Reading: TrafFix and the Expired Design Patent

Clifford W. Browning stirs the still smoldering embers of the Supreme Court's TrafFix decision in his thought-provoking article entitled "TrafFix Revisited: Exposing the Design Flaw in the Functionality Doctrine," 94 Trademark Reporter 1059 (September-October 2004). TrafFix, of course, concerned the impact of an expired utility patent on trademark protection for a product feature. Browning ponders the possible impact of an expired design patent.


In TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001), the Supreme Court refused to decide whether pursuant to the Patent Clause of the Constitution, by its own force, a product feature claimed in an expired utility patent may be freely copied -- i.e., is not a proper subject for trade dress protection. The Petitioner had requested such a ruling, but the Court saw no reason to decide that question:

"If, despite the rule that functional features may not be the subject of trade dress protection, a case arises in which trade dress becomes the practical equivalent of an expired utility patent, that will be time enough to consider the matter." 532 U.S. at 35.

Thus the Court deemed its functionality test to be sufficient for the problem at hand, ruling that an expired utility patent claiming the product feature is "strong evidence of functionality," and that one who seeks trade dress protection in such case carries a "heavy burden" to show that the feature is not functional, "for instance, by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device."

Slokevage "Garment Rear" U.S. Design Patent 410,689
Here, according to Browning, the "design flaw" in the Supreme Court's functionality doctrine is exposed. A product feature that is merely "ornamental" is a potential subject for a design patent. Indeed, new, original, and ornamental designs for articles of manufacture are the very subject matter of design patents. See 35 U.S.C. §171. Browning asks, does TrafFix suggest that an expired design patent would be evidence of the nonfunctionality of the product feature? If so, then TrafFix "puts the functionality doctrine at direct cross-purposes with the view that there is a federal right to 'copy and use' the inventions of expired patents." The functionality doctrine would not prohibit trade dress protection, and yet patent-like protection (of the design variety) would be accorded the product feature despite expiration of its patent protection.

Browning asserts that, should this design patent question ever come before the Court, it will force a decision on the "right to copy and use" issue. The Court will not be able to say, as it did in TrafFix, that the functionality doctrine suffices, because ornamental designs are not functional.