Recommended Reading: Germain and Sitler, "The Constitution Commandeth: Thou Shalt Not Protect the Same Subject Matter Under Design Patent and Trade Dress Laws"
Kenneth B. Germain and Louise H Sitler provide some pre-Yuletide reading material with their new article, "The Constitution Commandeth: Thou Shalt Not Protect the Same Subject Matter Under Design Patent and Trade Dress Law," 21 Chi.-Kent J. Intell Prop. 90 (2021). [Download here]. This is not the first time that Ken Germain has raised this issue, as the article points out. Perhaps the solution the authors propose should be called the "Germain De-stacking Doctrine."
Abstract
For many years and still currently, it has been assumed—and even expressly asserted—that it is perfectly permissible to “stack” various legal theories (concurrently or consecutively) to protect nonfunctional “designs” for products. This is despite infrequent but cogent arguments that the available theories, notably design patents and product design trade dress—both of which are based upon federal statutes—are not Constitutionally compatible due to at least the concept of Superfluity. The authors of this article carefully examine the origin, nature, and meaning of these two types of IP protections in the context of their two Constitutional bases—the Patent/Copyright Clause and the Commerce Clause—and conclude that, indeed, “stacked” protections are not Constitutionally permissible; the authors then recommend a workable solution which they dub, the “Kewanee Kompromise.”
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Text Copyright John L. Welch 2021.
posted by John L. Welch @ 12/17/2021
1 comments
1 Comments:
Interesting article and topic for debate. I, however, take the position that trademark protection and design patent protection are indeed protecting fundamentally different things and thus may coexist within the limitations of properly applied law. So long as the law as applied continues to focus on the interest being protected, there should be no preemption problem and no conflict.
As a trademark lawyer, I find unacceptable a situation where a company's unique and distinctive product design gains significant recognition as an indicator of source and then suddently, after 14 years, all competitors may then copy the distinctive product design. Under such a scenario, the product design has been functioning as a trademark and yet loses all trademark rights upon expiration of an underlying design patent. There is no sense in such a scenario - the public is not served by suddenly being misled by dozens of copycat designs flooding the market from a multitude of sources.
In order for a product design to be recognized and protected as a trade dress it already must pass a high bar in proving nonfunctionality and acquired distinctiveness. If a product design trade dress passes this bar, it should be protected as a source indicator -- because that's what it is.
Most patented designs will not meet the test, and the ones that do are worthy of protection. Otherwise we are punishing those who seek design patents for their product designs by removing any chance of trade dress protection from them -- a particularly inconsistent result given that 14 years of exclusivity will, in the case of the most distinctive designs, greatly contribute to those designs acquiring distinctiveness.
So, as much as I appreciate the scholarship and the persuasiveness of this well-written article, I disagree with the conclusion as elevating patent law over trademark law and creating a conflict where there is none. IMHO.
Let's by all means be strict before granting trade dress protection to product designs. But let's not make design patents an absolute bar to trade dress protection.
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