No. 99-1571 

In the Supreme Court of the United States 

TRAFFIX DEVICES, INC., PETITIONER 

v. 

MARKETING DISPLAYS, INC. 

ON WRIT OF CERTIORARI 
TO THE UNITED STATES COURT OF APPEALS 
FOR THE SIXTH CIRCUIT 

BRIEF FOR THE UNITED STATES 
AS AMICUS CURIAE SUPPORTING PETITIONER 

SETH P. WAXMAN 

Solicitor General 

Counsel of Record 

DAVID W. OGDEN 

Assistant Attorney General 

LAWRENCE G. WALLACE 

Deputy Solicitor General 

JEFFREY A. LAMKEN 

Assistant to the Solicitor 

General 

ANTHONY J. STEINMEYER 
MARK S. DAVIES 

Attorneys 

Department of Justice 
Washington, D.C. 20530-0001 
(202) 514-2217 

QUESTION PRESENTED 

Whether and to what extent a party may maintain a trade 
dress infringement action under the Lanham Act, 15 U.S.C. 
1051-1127 (1994 & Supp. IV 1998), to challenge the copying 
of product features after a utility patent covering the fea- 
tures has expired. 

(I) 

TABLE OF CONTENTS 

Page 

Interest of the United States ...................................................... 
1 

Statement ........................................................................................ 1 

Summary of argument .................................................................. 

5 

Argument: 

Trade dress protection does not extend to utilitarian 
features shown to be functional by an expired utility 
patent ........................................................................................... 6 

A. Patent and trademark law guarantee the right 
to copy publicly disclosed utilitarian product 
designs not protected by patent .................................. 
7 

B. Features disclosed to have utility in an expired 
patent are not protected as trade dress under the 
Lanham Act ..................................................................... 
12 

C. Respondent is not entitled to trade dress 
protection ......................................................................... 27 

Conclusion ....................................................................................... 30 

TABLE OF AUTHORITIES 

Cases: 

Astoria Fed. Sav. & Loan Ass’n v. Solimino, 501 

U.S. 104 (1991) ........................................................................ 
15, 17 

Best Lock Corp. v. Schlage Lock Co., 413 F.2d 1195 
(C.C.P.A. 1969) ....................................................................... 
14 

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 
489 U.S. 141 (1989) ............................................................ 
passim 

Coats v. Merrick Thread Co., 149 U.S. 562 
(1893) ........................................................................................ 8 

Compco Corp. v. Day-Brite Lighting, Inc., 376 

U.S. 234 (1964) .................................................................. 
9, 18, 19 

Daniel v. Electric Hose & Rubber Co., 231 F. 827 
(3d Cir. 1916) .......................................................................... 
15 

Dennison Mfg. Co., In re, 39 F.2d 720 (C.C.P.A. 
1930) ......................................................................................... 11 

(III) 

IV 

Cases—Continued: Page 

Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 
1002 (9th Cir. 1998) ................................................................ 
14, 15 

Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. 

Cir. 1995) ................................................................................. 

12 

Esercizio v. Roberts, 944 F.2d 1235 (6th Cir. 1991), 
cert. denied, 505 U.S. 1219 (1992) ....................................... 
19 

Goodyear Tire & Rubber Co. v. Robertson, 18 

F.2d 639 (D. Md. 1927), aff ’d, 25 F.2d 833 (4th Cir. 
1928) ......................................................................................... 11 

Inwood Labs. v. Ives Labs., 456 U.S. 844 (1982) ........ 

6, 12, 25 

J.A. Scriven Co. v. W.H. Towles Mfg. Co., 32 App. 

D.C. 321 (1909) ....................................................................... 

15 

J.C. Penney Co. v. H.D. Lee Mercantile Co., 120 

F.2d 949 (8th Cir. 1941) ........................................................ 

11 

James Heddon’s Sons v. Millsite Steel & Wire 

Works, Inc., 128 F.2d 6 (6th Cir.), cert. denied, 317 
U.S. 674 (1942) ........................................................................ 

11 
Kellogg Co. v. National Biscuit Co., 305 U.S. 111 
(1938) ..................................................................... 

8, 11, 17, 21, 22 

Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 
58 F.3d 27 (2d Cir. 1995) ....................................................... 
29 

Morton-Norwich Prods., In re, 671 F.2d 1332 
(C.C.P.A. 1982) ................................................................. 
9-10, 15 

National Stone-Tile Corp., In re, 57 F.2d 382 
(C.C.P.A. 1932) ....................................................................... 
11 

Pope Automatic Merchandising Co. v. McCrum- 
Howell Co., 191 F. 979 (7th Cir. 1911), cert. denied, 
223 U.S. 730 (1912) ................................................................ 
11 

Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 
(1995) ............................................... 

2, 5, 6, 11, 12, 13, 23, 25, 26 

Sarkisian v. Winn-Proof Corp., 686 F.2d 671 (9th 

Cir. 1981) ................................................................................. 

28 

Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 
(1964) .................................................................................. 9, 17, 18 

V 

Cases—Continued: Page 

Shanango Ceramics, Inc., In re, 362 F.2d 287 
(C.C.P.A. 1966) ....................................................................... 
14 

Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169 
(1896) .................................................................................. 
8, 17, 23 

Sparklets Corp. v. Walter Kidde Sales Co., 104 

F.2d 396 (C.C.P.A. 1939) ...................................................... 

14 

Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 
246 (5th Cir. 1997), cert. denied, 523 U.S. 1118 
(1998) ........................................................................................ 29 

Sylvania Elec. Prods. v. Dura Elec. Lamp Co., 247 

F.2d 730 (3d Cir. 1957) .......................................................... 
11-12 

Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 
277 (7th Cir.), cert. denied, 525 U.S. 929 (1998) ............... 
19 

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 
(1992) ........................................................................................ 
1, 6 

U.S. Elec. Mfg. Corp. v. Bright Star Battery Co., 
6 N.Y.S.2d 690 (1938) ............................................................ 
11 

United States v. Dubilier Condenser Corp., 289 

U.S. 178 (1933) ........................................................................ 

1, 7 

United States v. Wells, 519 U.S. 482 (1997) ...................... 
17 

Vornado Air Circulation Sys. v. Duracraft Corp., 
58 F.3d 1498 (10th Cir. 1995), cert. denied, 516 
U.S. 1067 (1996) .............................................................. 
16, 22, 23 

Wal-Mart Stores, Inc. v. Samara Bros., 120 S. Ct. 
1339 (2000) .................................................................... 
1, 20, 21, 25 

Zip Dee, Inc. v. Dometic Corp., 931 F. Supp. 602 
(N.D. Ill. 1996) .................................................................... 
16, 23 

Statutes and regulations: 

Patent Act of 1790, ch. 7, 1 Stat. 110 ..................................... 

7 

Trademark Act of 1946 (the Lanham Act), ch, 540, 
60 Stat. 427, as amended, 15 U.S.C. 1051 et seq. .............. 
1 

15 U.S.C. 1052(e)(5) (Supp. IV 1998) ............................ 
24 

15 U.S.C. 1114 (1994 & Supp. IV 1998) ........................ 
2 

15 U.S.C. 1123 ................................................................... 18 

VI 

Statutes and regulations—Continued: 
Page 

15 U.S.C. 1125(a) (§ 43(a)) ............................................. 
2, 6, 21 

15 U.S.C. 1125(a)(3) ........................................................ 
24, 29 

15 U.S.C. 1127 .................................................................... 
1 

35 U.S.C. 102 ............................................................................. 
13 

35 U.S.C. 102(b) ........................................................................ 
20 

35 U.S.C. 103 (1994 & Supp. IV 1998) .................................. 
13 

35 U.S.C. 112 ............................................................................. 
1 

Miscellaneous: 

H.R. 3163, 105th Cong., 2d Sess. (1998) ................................ 

24 

H.R. Rep. No. 250, 106th Cong., 1st Sess. (1999) ................ 
24 

1 J. McCarthy, Trademarks and Unfair Competition 
(4th ed. 2000) ........................................ 

10, 11, 12, 14, 23, 24, 29 

W. McLean, Opening Another Can of Worms: Pro- 
tecting Product Configuration as Trade Dress, 
66 U. Cin. L. Rev. 119 (1997) ............................................... 

10, 12 
Restatement of Torts (1938) .......................... 
5, 10, 13, 22, 25, 26 

Restatement (Third) Unfair Competition (1995) ................ 
14, 22 

S. Rep. No. 1333, 79th Cong., 2d Sess. (1946) ...................... 
6 

Trademarks Amendments Act of 1999: Hearings Before 
the Subcomm. on Courts & Intellectual Property of the 
House Comm. on the Judiciary, 106th Cong., 1st Sess. 
(1999) ........................................................................................ 24 

Trade-marks: Hearings Before a Subcomm. of the 

Senate Comm. on Patents, 78th Cong., 2d Sess. 
(1944) ........................................................................................ 17 

Trademark Manual of Examining Procedure (2nd ed. 
1993, rev. ed. 1997) ................................................................ 15 

INTEREST OF THE UNITED STATES 

The United States has a strong interest in protecting the 
pro-inventive policies of the patent system, as well as the 
procompetitive policies of the trademark and antitrust laws. 
In addition, the United States Patent and Trademark Office 
must determine the registrability of proposed trademarks, 
including product designs claimed as trade dress. 

STATEMENT 

1. This Nation’s patent laws have long represented a 
“carefully crafted bargain for encouraging the creation and 
disclosure of new, useful, and non-obvious advances in 
technology.” Bonito Boats, Inc. v. Thunder Craft Boats, 
Inc., 489 U.S. 141, 146, 150-151 (1989). To encourage innova- 
tion, the inventor of a new and useful advance is given “the 
exclusive right to practice the invention for a period of 
years.” Id. at 151. In exchange, the inventor must disclose 
how to make the invention, 35 U.S.C. 112, so that, after the 
patent expires, “the knowledge of the invention enures to 
the people, who are thus enabled without restriction to 
practice it and profit by its use.” United States v. Dubilier 
Condenser Corp., 289 U.S. 178, 187 (1933). 

The Trademark Act of 1946 (the Lanham Act), ch. 540, 60 
Stat. 427, as amended, 15 U.S.C. 1051 et seq., provides a 
federal system for the registration, protection, and regula- 
tion of trademarks, which the Act defines as “any word, 
name, symbol, or device, or any combination thereof [used or 
intended to be used] to identify and distinguish [a pro- 
ducer’s] goods * * * from those manufactured or sold by 
others.” 15 U.S.C. 1127. The term trademark extends to 
“trade dress,” which has come to include not only a product’s 
packaging but also its “total image and overall appearance” if 
those serve to identify the producer. Two Pesos, Inc. v. Taco 
Cabana, Inc., 505 U.S. 763, 764 n.1 (1992); Wal-Mart Stores, 
Inc. v. Samara Bros., 120 S. Ct. 1339, 1343 (2000). By regis- 

(1) 

2 

tering an eligible mark with the United States Patent and 
Trademark Office, a person may obtain the exclusive right to 
use that mark. 15 U.S.C. 1114 (1994 & Supp. IV 1998). 
Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), also 
extends protection to unregistered marks, creating a cause 
of action against anyone who uses in commerce “any word, 
term, name, symbol, or device, or any combination thereof” 
that “is likely to cause confusion * * * as to the origin * * * 
of his or her goods.” 15 U.S.C. 1125(a). 

Unlike patent law, the Lanham Act is not designed to 
encourage invention. Instead, it helps consumers identify 
the source of goods. “[B]y preventing others from copying a 
source-identifying mark,” the Act “reduce[s] the customer’s 
costs of * * * purchasing decisions” because the appearance 
of a mark on an item “quickly and easily assures a potential 
customer that” the item “is made by the same producer as 
other similarly marked items that he or she liked (or dis- 
liked) in the past.” Qualitex Co. v. Jacobson Prods. Co., 514 
U.S. 159, 163-164 (1995) (internal quotation marks omitted). 
Protecting trademarks also encourages product quality, 
because it “helps assure a producer that it (and not an imi- 
tating competitor) will reap the financial, reputation-related 
rewards associated with a desirable product.” Id. at 164. 

2. Respondent manufactures and sells portable, spring- 
mounted, wind-resistant stands for traffic signs under the 
WINDMASTER trademark. Pet. App. 2a, 26a. In 1972, 
respondent’s president obtained two utility patents (Nos. 
3,662,482 and 3,646,696, hereinafter the ’482 and ’696 
patents) on a sign display device. The patented device con- 
sists of an unanchored base to which “two spaced apart” up- 
right spring connections of specified rigidity are mounted; 
those springs are attached to an upright bar or member, 
which supports the sign to be displayed. 971 F. Supp. at 277 
(photo); ’482 Patent at 4 (claim 1). The springs permit the 
sign to yield to the wind and thus make it less susceptible to 
tipping over. The use of two springs prevents the sign from 

3 

“twisting” on its frame. Pet. App. 2a, 18a; ’482 Patent at 1 
(summary), 5 (claim 1). 

Shortly after respondent’s patents expired, petitioner 
reverse engineered the WINDMASTER sign and began 
selling its own version. Pet. App. 3a. Petitioner also 
improved on the design, creating and patenting a “quick 
release” mechanism. J.A. 253. The TrafFix Devices brand 
name appears on all of petitioner’s stands. Ibid. 

Respondent filed this trade dress infringement action 
under the Lanham Act, seeking to preclude petitioner from 
using its design.1 
Respondent claimed that the design of its 

sign—consisting of “(a) a relatively narrow base member; 
(b) a pair of vertically arranged closely spaced coil springs 
attached to the base member; (c) a plurality of leg members 
attached to the base member * * *; (d) an upright member 
attached to the coil springs; and (e) a sign attached to the 
upright member”—is trade dress that identifies the sign as 
made by respondent. Pet. App. 29a. The district court 
observed that respondent was required to prove, among 
other things, that “the appropriated features of the trade 
dress are primarily non-functional.” Id. at 32a, 48a. The 
court, however, found that “the only significant distinction in 
appearance” between respondent’s stand and those of its 
competitors “is the vertical dual-spring design or con- 
figuration,” since each of the competing stands “includes the 
other four features.” Id. at 48a. 

Focusing on the dual-spring design, the district court 
concluded that respondent could not show that its alleged 
trade dress was “primarily non-functional.” Pet. App. 46a- 
55a. The court observed that, in patent enforcement liti- 
gation, respondent had asserted that the dual-spring mecha- 

1 Respondent also sought to enjoin petitioner from using the name 
WINDBUSTER because it was similar to respondent’s WINDMASTER 
mark. The district court granted the injunction, Pet. App. 68a-93a, the 
court of appeals affirmed, id. at 4a-12a, and petitioner did not seek further 
review. 

4 

nism enables the sign “to be stable against tipping under 
high wind conditions” by permitting it “to deflect in a 
direction along the longitudinal axis” while preventing the 
sign from “twisting.” Id. at 50a-51a. The court found that 
the “utility patents are especially strong evidence of the 
usefulness of the dual-spring design.” Id. at 55a. 

3. The court of appeals reversed in relevant part. Pet. 
App. 1a-24a. The court agreed that the “two spaced apart 
spring connections” enable the sign to yield to the wind 
while “prevent[ing] twisting of the sign frame.” Id. at 18a. 
And the court noted that federal courts are divided on the 
extent to which an expired utility patent “forecloses trade 
dress protection.” Ibid. The court concluded, however, that 
“[s]o long as it is possible to protect the appearance” of the 
sign stand “without protecting the design, a per se rule is not 
necessary.” Id. at 19a. 

In this case, the court of appeals suggested, it might be 
possible to protect respondent’s trade dress without fore- 
closing use of vertically arranged coil springs. Any com- 
petitor who uses dual coil springs, the court stated, could be 
required to use leg members other than the straight ones 
used by respondent (such as “U-shaped” leg members) or 
“other uprights (twin poles, A-shaped, etc.)” to “create an 
entirely different look altogether.” Pet. App. 19a. “It takes 
little imagination,” the court continued, “to conceive of a 
hidden dual-spring mechanism or a tri or quad-spring mecha- 
nism.” Ibid. The court also stated that “other competitors 

* * * avoid emulating” respondent’s trade dress by not 
using the dual spring design; petitioner must do likewise, the 
court stated, or “find some other way to set its sign apart to 
avoid infringing [respondent’s] trade dress.” Id. at 20a. 

The court of appeals rejected the district court’s con- 
clusion that protecting respondent’s stand design as trade 
dress “would put its competitors at a disadvantage beyond 
the merely reputational,” even though the district court had 
found the design to be one of a limited number of superior 

5 

designs. Pet. App. 20a; id. at 53a. “The appropriate 
question,” the court stated, “is whether the particular prod- 
uct configuration is a competitive necessity.” Id. at 20a. 
Here, the court indicated, respondent’s design may not be a 
competitive necessity. Id. at 20a-21a. Although the equally 
effective competing designs are patented, the court sug- 
gested that petitioner “could come up with its own design, or 
license one of the outstanding patents, or use the dual-spring 
design in a way that does not infringe [respondent’s] trade 
dress.” Id. at 21a. 

SUMMARY OF ARGUMENT 

In enacting the Lanham Act in 1946, Congress acted 
against a legal background that featured two related and 
well-established principles. First was the principle that, 
under federal patent law, utilitarian conceptions “placed 
before the public without the protection of a valid patent” 
are in the public domain and thus “subject to appropriation 
without significant restraint.” Bonito Boats, 489 U.S. at 156. 
The second was the “functionality” doctrine of trademark 
law, which bars utilitarian features—i.e., features that affect 
the goods’ “purpose, action, or performance, or the facility or 
economy of processing, handling, or us[e]”—from being 
withdrawn from the public domain as trade dress. Restate- 
ment of Torts § 741(b)(ii), at 623, § 742, at 628-629 & cmt. a 
(1938) (1938 Restatement); see also Qualitex, 514 U.S. at 164. 

In our view, the functionality doctrine—properly con- 
strued in light of its important role in ensuring that useful 
features are withdrawn from the public domain only pur- 
suant to valid (and temporally finite) patents—precludes 
respondent’s trade dress claim. Where, as here, an expired 
utility patent discloses that the feature alleged as trade 
dress contributes to the operation of the formerly patented 
device, the feature must be considered “functional” for pur- 
poses of the Lanham Act and thus ineligible for trade dress 
protection. That conclusion is consistent with this Court’s 

6 

repeated recognition that patent law accords the public the 
right to copy utilitarian conceptions in expired patents, and 
serves the interests of judicial economy. Looking to the 
scope of the patent claims will often permit courts to 
determine the functionality of features in expired patents 
without resort to extensive proceedings or difficult and 
nuanced tests. Such a clear standard is necessary to ensure 
that trade dress litigation— or the threat thereof—does not 
undermine the substantive goal of patent law, which is to 
ensure that unpatented innovations may serve as building 
blocks for further advances. 

ARGUMENT 

TRADE DRESS PROTECTION DOES NOT EXTEND 
TO UTILITARIAN FEATURES SHOWN TO BE FUNC- 
TIONAL BY AN EXPIRED UTILITY PATENT 

The Lanham Act seeks “to codify and unify the common 
law of unfair competition and trademark protection.” In- 
wood Labs. v. Ives Labs., 456 U.S. 844, 861 n.2 (1982) (White, 
J., concurring); Two Pesos, 505 U.S. at 785 (Thomas, J., con- 
curring).2 In particular, Section 43(a) of the Lanham Act 
prohibits competitors from using a trademark or trade dress 
that is “likely to cause confusion * * * as to the origin” of 
goods. 15 U.S.C. 1125(a). In enacting the Lanham Act, Con- 
gress acted against a background of (and incorporated) two 
related and well-established principles: first, the long- 
standing rule that, under federal patent law, publicly dis- 

2 The Lanham Act consolidated the 1905 Trademark Act and other 
“scattered” trademark laws into one statute. S. Rep. No. 1333, 79th Cong., 
2d Sess. 3, 5 (1946). The Act’s legislative history noted that “[t]here is 
much that is good” under present law and expressed an intent to 
“preserve[] the things which have demonstrated their usefulness.” Id. at 

3. At the same time, Congress did alter some common law rules “to 
‘dispense with mere technical prohibitions,’ ” Qualitex, 514 U.S. at 171 
(quoting S. Rep. 1333, supra, at 3), such as by permitting registration of 
descriptive marks (if they have acquired secondary meaning), ibid. Where 
Congress altered existing law, however, it did so explicitly. See, e.g., ibid. 

7 

closed utilitarian conceptions unprotected by patent are in 
the public domain to be exploited and used as building blocks 
for further innovation by all; and second, the traditional func- 
tionality doctrine, which ensures that trademark protection 
does not interfere with competition, and which helps define 
the separate domains of patent and trademark law by 
preventing the latter from withdrawing useful conceptions 
from the public domain in perpetuity. 

In our view, the functionality doctrine resolves this case. 
Although that doctrine is sometimes difficult to apply, its 
application is not difficult in cases like this one. In 
particular, where an expired utility patent shows that the 
features alleged as trade dress contribute to the operation of 
the claimed invention, those features must be considered 
“functional” and thus ineligible for Lanham Act protection. 
The contrary conclusion would abridge the fundamental 
patent-law principle that utilitarian conceptions unprotected 
by patent are in the public domain and may be copied by all. 

A. Patent And Trademark Law Guarantee The Right To 

Copy Publicly Disclosed Utilitarian Product Designs Not 
Protected By Patent 

1. Patent law represents a carefully calibrated balance 
between the need to encourage “the creation and disclosure 
of new, useful, and non-obvious advances in technology,” 
Bonito Boats, 489 U.S. at 151, and the “ultimate goal” of 
ensuring that those advances eventually enter the public 
domain for public use and benefit, id. at 151, 157. Accord- 
ingly, although patent law gives inventors “the exclusive 
right to practice the invention for a period of years,” id. at 
151, it conditions that grant on disclosure of how to make the 
invention, so that “the knowledge of the invention enures to 
the people, who are thus enabled without restriction to prac- 
tice it and profit by its use” once the patent expires. Dubil- 
ier Condenser Corp., 289 U.S. at 186-187. See also Patent 
Act of 1790, ch. 7, 1 Stat. 110 (requiring disclosure of how to 

8 

“make, construct, or use the” invention “to the end that the 
public may have full benefit thereof, after the expiration of 
the patent term”). Thus, “bring[ing] new designs and 
technologies into the public domain” is “the ultimate goal of 
the patent system,” Bonito Boats, 489 U.S. at 151. 

To achieve that end, patent law has long required that 
unpatented utilitarian conceptions, once publicly disclosed, 
be available for public use notwithstanding other claims to 
protection. See Bonito Boats, 489 U.S. at 157. Indeed, the 
effectiveness of patent law in encouraging significant advan- 
ces over prior art, and disclosure of those advances, depends 
“almost entirely on a backdrop of free competition in the ex- 
ploitation of unpatented designs and innovations.” Id. at 151. 
It is fundamental that unpatented utilitarian conceptions be 
available “as the building blocks of further innovation.” Ibid. 
Thus, “the efficient operation of the federal patent system 
depends upon substantially free trade in publicly known, 
unpatented design and utilitarian conceptions.” Id. at 156. 

Concomitantly, this Court has consistently recognized 
that the expiration of a patent affords the public a virtually 
unrestricted right to copy the invention. Thus, in 1896, this 
Court rejected a claim of unfair competition based on the 
similarity of two designs, declaring: 

[O]n the expiration of a patent * * * the right to make 
the thing formerly covered by the patent becomes public 
property * * * [and] there passes to the public the 
right to make the machine in the form in which it was 
constructed during the patent. 

Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185 (1896). 
See also Coats v. Merrick Thread Co., 149 U.S. 562, 572 
(1893) (patentees could not, under trademark law, “claim a 
monopoly” on the design “beyond the life of the patent”); 
Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 119-120 
(1938) (concluding that, “upon expiration of the patent[], the 
form” of the product “was dedicated to the public”). 

9 

After the Lanham Act was enacted in 1946, this Court 
adhered to that rule, invalidating state laws that attempted 
to grant exclusive rights in utilitarian features that, as a 
matter of patent law, are in the public domain. In Sears, 
Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964), for example, 
the Court held state unfair competition law to be pre-empted 
insofar as it purported to bar one company from copying and 
selling nearly exact copies of an unpatented lamp design 
created and popularized by another. Competitors, the Court 
declared, “had every right” to engage in such copying and 
selling “under the federal patent laws.” Id. at 231. The 
Court reached the identical conclusion in Compco Corp. v. 
Day-Brite Lighting, Inc., 376 U.S. 234, 237 (1964). 

More recently, in Bonito Boats, this Court invalidated a 
Florida law that barred the copying of an unpatented boat 
hull design. “[W]e have consistently reiterated the teaching 
of Sears and Compco,” the Court stated, “that ideas once 
placed before the public without the protection of a valid 
patent are subject to appropriation without significant re- 
straint.” 489 U.S. at 156. The Court also rejected the 
assertion that patent law says “nothing about the right to 
copy or the right to use.” Id. at 164. “For almost 100 years,” 
the Court explained, “it has been well established that in the 
case of an expired patent, the federal patent laws do create a 
federal right to ‘copy and to use.’ ” Id. at 165. 

2. The rule that unpatented utilitarian conceptions can- 
not be withdrawn from the public domain—and are freely 
available for all to copy, refine, and use—has long been a 
feature of substantive trademark and unfair competition law 
as well. The common law accomplished that goal (and en- 
sured that trademarks would not inhibit robust competition) 
through a sharp distinction between the trademark (used to 
identify the source) on the one hand and the product or its 
packaging on the other. “[I]t was long the rule that a trade- 
mark must be something other than, and separate from, the 
merchandise to which it is applied.” In re Morton-Norwich 

10 

Prods., 671 F.2d 1332, 1336 (C.C.P.A. 1982); W. McLean, 
Opening Another Can of Worms: Protecting Product Con- 
figuration as Trade Dress, 66 U. Cin. L. Rev. 119, 122 (1997). 
As courts began protecting product packaging and later 
product designs as trade dress, however, they employed the 
doctrine of “utilitarian functionality” to those same ends, i.e., 
to protect competition and “accommodate trade dress law to 
the policies of patent law.” 1 J. McCarthy, Trademarks and 
Unfair Competition § 7.63, at 7-137 (4th ed. 2000). 

Under the functionality doctrine, a product feature may 
be protected as trade dress if it primarily serves to desig- 
nate the producer. If the feature is functional in a utilitarian 
sense, however, it cannot be protected except by patent. 
The 1938 Restatement of Torts (§ 741(b)(ii), at 623 & 628, 
cmt. j) thus observed that, so long as proper labeling is 
employed, the copying of functional features—even those 
that have acquired meaning as “an indication of the 
source”—is permitted. A feature is considered functional, 
the Restatement explained, if it “affects [the goods’] pur- 
pose, action, or performance, or the facility or economy of 
processing, handling, or us[e].” Id. § 742, at 628-629 & cmt. a. 
Thus, functionality traditionally has depended on “practical, 
engineering-type considerations such as making the product 
work more efficiently, with fewer parts and longer life, or 
with less danger to operators, or be shaped so as to reduce 
expenses of delivery or damage in shipping.” 1 McCarthy, 
supra, § 7:64, at 7-140 to 7-141. 

Consistent with its origins, the functionality doctrine has 
long served—in addition to and in congruity with its role of 
protecting competition—a specific purpose of keeping the 
domains of patent and trademark law distinct. It ensures 
that, if “there is to be an exclusive right for functional 
features, such protection can only be gained by utility patent 
protection limited in time, not perpetual protection under 
trademark law.” 1 McCarthy, supra, § 7:64, at 7-141. As one 
court explained in 1911: 

11 

If one manufacturer should make an advance in effective- 
ness of operation, or in simplicity of form, or in utility of 
color; and if that advance did not entitle him to a mono- 
poly by means of a * * * patent; and if by means of 
unfair trade suits he could shut out other manufacturers 
[from] the benefits of the unpatented utilities, * * * he 
would be given gratuitously a monopoly more effective 
than that of the unobtainable patent in the ratio of 
eternity to 17 years. 

Pope Automatic Merchandising v. McCrum-Howell Co., 191 
F. 979, 981-982 (7th Cir. 1911), cert. denied, 223 U.S. 730 
(1912). Before the Lanham Act was enacted, courts regu- 
larly invoked functionality to ensure that trademark and 
unfair competition law would not intrude on the principles of 
patent law by withdrawing from the public domain those 
useful conceptions that patent law renders publici juris.3 
This Court, indeed, employed functionality to that very end 
more than 60 years ago, rejecting efforts to assert trade 
dress rights in the shape of a product after expiration of the 
patent. Kellogg, 305 U.S. at 122 (rejecting unfair competi- 
tion claim based on copying of “pillow-shaped” shredded 
wheat biscuit); see Qualitex, 514 U.S. at 165. 

Although the Lanham Act did not explicitly mention 
functionality until 1998, see pp. 24 n.11, 29, infra, federal 
courts understood that the doctrine limits the scope of 
protection available under that Act—ensuring that trade- 
mark law does not intrude on the domain of patent law—long 
before. See 1 McCarthy, supra, § 7.63, at 7-137. See, e.g., 
Sylvania Elec. Prods. v. Dura Elec. Lamp Co., 247 F.2d 730, 

3 See, e.g., In re National Stone-Tile Corp., 57 F.2d 382, 383 (C.C.P.A. 
1932); Goodyear Tire & Rubber Co. v. Robertson, 18 F.2d 639, 641 (D. Md. 
1927), aff ’ d, 25 F.2d 833, 834 (4th Cir. 1928); U.S. Elec. Mfg. Corp. v. 
Bright Star Battery Co., 6 N.Y.S.2d 690, 691 (1938); James Heddon’s Sons 

v. Millsite Steel & Wire Works, Inc., 128 F.2d 6, 13 (6th Cir.), cert. denied, 
317 U.S. 674 (1942); J.C. Penney Co. v. H.D. Lee Mercantile Co., 120 F.2d 
949 (8th Cir. 1941); In re Dennison Mfg. Co., 39 F.2d 720 (C.C.P.A. 1930). 

12 

732 (3d Cir. 1957) (purpose of rule is “obviously to prevent 
the grant of perpetual monopoly by * * * trade-mark in the 
situation where a patent has either expired, or * * * cannot 
be granted”); Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 
1580 (Fed. Cir. 1995) (“[P]atent law, not trade dress law, is 
the principal means for providing exclusive rights in useful 
product features.”). This Court too recognized the impor- 
tance of that doctrine under the Lanham Act well before the 
term “functionality” appeared in it. See, e.g., Inwood Labs., 
456 U.S. at 850 n.10. In 1995, the Court explained: 

The functionality doctrine prevents trademark law * * * 
[from] inhibiting legitimate competition by allowing a 
producer to control a useful product feature. It is the 
province of patent law, not trademark law, to encourage 
invention by granting inventors a monopoly over new 
product designs or functions for a limited time, 35 U.S.C. 
§§ 154, 173, after which competitors are free to use the 
innovation. If a product’s functional features could be 
used as trademarks, however, a monopoly over such fea- 
tures could be obtained without regard to whether they 
qualify as patents and could be extended forever (be- 
cause trademarks may be renewed in perpetuity). 

Qualitex, 514 U.S. at 164-165. 

B. Features Disclosed To Have Utility In An Expired Patent 

Are Not Protected As Trade Dress Under The Lanham 
Act 

Although functionality analysis is sometimes difficult to 
apply, see McLean, supra, at 125; 1 McCarthy, supra, § 7:67, 
at 7-147, in the context of an expired utility patent its appli- 
cation is often straightforward. Where, as here, the expired 
patent includes as part of the claimed invention the feature 
alleged to be trade dress, or the patent’s specifications or en- 
forcement otherwise show that the feature contributes to 
the device’s operation, it must be considered “functional” 
under the Lanham Act and thus ineligible for trade dress 

13 

protection. In other words, assertions of utility within the 
scope of the patent should be dispositive as to functionality. 
That conclusion follows from the purpose and traditional defi- 
nition of functionality; ensures consistency and conformity with 
patent-law principles; and serves important policy interests. 

1. The functionality doctrine serves to prevent one 
producer from obtaining control over “a useful product fea- 
ture” under trademark law, because the exclusive right to 
such a feature must be obtained, if at all, only for a limited 
time under patent law. Qualitex, 514 U.S. at 164. In our 
view, the assertion that a feature has utility in the scope of a 
patent—i.e., a patent claim or specification indicating that 
the feature contributes to the operation of the patented 
device—is ordinarily dispositive evidence that the feature is 
“useful” and thus can be protected only by patent. Tra- 
ditionally (and at the time the Lanham Act was passed), a 
feature has been considered functional if it “affects [the 
device’s] purpose, action, or performance, or the facility or 
economy of processing, handling, or us[e],” 1938 Restate- 
ment § 742, at 628-629 & cmt. a, or if it influences “cost or 
quality,” Qualitex, 514 U.S. at 165, 169. Where the feature is 
claimed as part of the patented device, or the patent 
otherwise shows the feature’s usefulness in the scope of the 
device, the feature necessarily meets that definition. Indeed, 
since the requirements for patent protection (such as the 
requirement of a significant advance over prior art, 35 
U.S.C. 102, 103 (1994 & Supp. IV 1998)) are more demanding 
than the test of functionality (even small advances may be 
functional), a patent claim for a feature generally makes 
functionality an a fortiori conclusion. For the same reason, 
such a feature is also “essential to the use or purpose” of the 
invention. See Qualitex, 514 U.S. at 165, 169. Without the 
feature, the invention would not operate the same way (or 
perhaps at all). 

Accordingly, courts have often recognized that a patent 
“disclosing the primary functional significance of [a] config- 

14 

uration” claimed as trade dress “incontrovertably estab- 
lishes primary functionality” and “suffices” to justify sum- 
mary judgment. Best Lock Corp. v. Schlage Lock Co., 413 
F.2d 1195, 1199 (C.C.P.A. 1969); In re Shanango Ceramics, 
Inc., 362 F.2d 287, 291 (C.C.P.A. 1966) (similar); Disc Golf 
Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 
1998) (“expired utility patent is weighty evidence of func- 
tionality”); Restatement (Third) Unfair Competition § 17, at 
174, cmt. b (1995) (“particularly persuasive evidence of func- 
tionality”); 1 McCarthy, supra, § 7:89, at 7-224 (“a valid 
functional patent disclosing the utilitarian advantages” of the 
feature “is very strong, if not conclusive, evidence of [its] 
functionality”). Some courts have concluded that a “kind of 
estoppel” arises, precluding patentees from arguing “that a 
shape is functionally advantageous in order to obtain a utility 
patent [but] later assert[ing] that the same shape is non- 
functional in order to obtain trademark protection.” Disc 
Golf, 158 F.3d at 1008 (quoting 1 McCarthy, supra § 7:89, at 
7-208). 

Of course, mere mention of a feature in a patent does not 
necessarily establish functionality, since “many non- 
functional shapes and configurations happen to be described 
or pictured as an incidental detail in functional patents.” 1 
McCarthy, supra, § 7:89, at 7-227; Best Lock, 413 F.2d at 
1199 (“patent may not be evidence of functionality in regard 
to” arbitrary features “disclosed in the patent but which are 
not attributed any functional significance”). But where care- 
ful examination reveals that the feature is a utilitarian part 
of the patented invention, the patent is irrefutable evidence 
of functionality. See Disc Golf, 158 F.3d at 1006; 1 
McCarthy, supra, § 7:89, at 7-227. 

That was settled trademark law before the Lanham Act 
was passed. In Sparklets Corp. v. Walter Kidde Sales Co., 
104 F.2d 396, 399 (C.C.P.A. 1939), for example, the court 
rejected a trade dress claim for a “groove” included in the 
product because an expired patent made it “perfectly evi- 

15 

dent that the groove was at least believed by the patentee to 
have utility at the time of making application,” leaving the 
court “unable to escape the conclusion that the groove as an 
entity possessed utility and, for that reason * * * is not a 
proper subject for registration as a trade-mark.” Other 
courts repeatedly reached similar conclusions. See J.A. 
Scriven Co. v. W.H. Towles Mfg. Co., 32 App. D.C. 321 
(1909); Daniel v. Electric Hose & Rubber Co., 231 F. 827, 834 
(3d Cir. 1916). There is every reason to believe that the 
Lanham Act—an effort “to codify and unify the common law 
of unfair competition and trademark protection,” see p. 6 & 

n.2, supra—was designed to incorporate (or at least not 
intended to repudiate) that pre-existing principle. See 
Astoria Fed. Sav. & Loan Ass’n v. Solimino, 501 U.S. 104, 
108 (1991) (courts presume Congress “has legislated with an 
expectation that” well-established principles “will apply 
except when a statutory purpose to the contrary is evident”) 
(internal quotation marks omitted). The United States 
Patent and Trademark Office (USPTO) also views claims of 
utility in an expired utility patent as generally fatal to 
efforts to register a feature as a trademark, even though it 
formally employs a four-factor test.4 

2. That approach is necessary to ensure that trade dress 
protection under the Lanham Act does not provide perpetual 
protection for unpatented utilitarian conceptions that, as a 

4 The USPTO looks to the factors identified in Morton-Norwich, 671 
F.2d at 1341, as required by the Federal Circuit and its predecessor 
courts. See Trademark Manual of Examining Procedure § 1202.03(a)(iii) 
(2nd ed. 1993, rev. ed. 1997). The factors are (1) “the existence of an 
expired utility patent which disclosed the utilitarian advantage of the 
design sought to be registered as a trademark;” (2) whether the inventor 
“touts its utilitarian advantages through advertising;” (3) whether “there 
are other alternatives available;” and (4) whether “a particular design 
results from a comparatively simple or cheap method of manufacturing the 
article.” 671 F.2d at 1341. Accord Disc Golf, 158 F.3d at 1006 (similar 
test). In cases like this one, where an expired utility patent exists, the 
first Morton-Norwich factor is almost always dispositive. 

16 

matter of patent law, are in the public domain. See Zip Dee, 
Inc. v. Dometic Corp., 931 F. Supp. 602, 611 (N.D. Ill. 1996) 
(“the policies underlying patent law dictate the denial of 
trademark protection to a product configuration that has 
been claimed as part of a utility patent * * * if the config- 
uration is functional within the context of the utility 
patent”); Vornado Air Circulation Sys. v. Duracraft Corp., 
58 F.3d 1498, 1510 (10th Cir. 1995) (“[W]here a disputed 
product configuration is * * * a described, significant inven- 
tive aspect of ” the invention claimed in the expired patent, 
“patent law prevents its protection as trade dress.”), cert. 
denied, 516 U.S. 1067 (1996). Indeed, as this Court has 
observed, any law that withdraws utilitarian features from 
the public domain may “conflict with the very purpose of the 
patent laws by decreasing the range of ideas available as the 
building blocks of further innovation.” Bonito Boats, 489 
U.S. at 151. Protecting the operational features disclosed in 
expired utility patents would certainly have that effect. It 
is, after all, “no great trick to build up secondary meaning in 
a product configuration if [competitors] are kept from 
utilizing that configuration for 17 years by the sword and 
shield of patent protection.” Zip Dee, 931 F. Supp. at 615. 
Consequently, protecting features shown to be functional by 
an expired patent as trade dress would convert patents into 
a “springboard for converting a legislatively-created” 
limited-duration patent “monopoly into a court-enforced per- 
manent monopoly” under the Lanham Act—“an imper- 
missible” intrusion on the patent-law goal of placing publicly 
disclosed inventions in the public domain. Ibid.; see Vor- 
nado, 58 F.3d at 1508 (“the inventor’s supply of ideas itself 
and freedom to experiment with them” would be diminished 
by such trade dress protection). Indeed, respondent’s design 
here served as a building block for petitioner’s now-patented 
quick-release mechanism. J.A. 252-253. 

More fundamentally, this Court has held that, “in the case 
of an expired patent,” patent law creates not only “a federal 

17 

right to ‘copy and to use,’ ” Bonito Boats, 489 U.S. at 165, but 
also “the right to make [the article] in the form in which it 
was constructed during the patent” notwithstanding a claim 
to trade dress protection, Singer Mfg. Co., 163 U.S. at 185. 
See also Kellogg Co., 305 U.S. at 122; Sears, 376 U.S. at 230; 
Bonito Boats, 489 U.S. at 164-165; pp. 7-9, supra. Correctly 
applied, the functionality doctrine ensures consistency 
between the Lanham Act and that well-settled body of law. 
In particular, by deeming useful parts of the invention to be 
“functional” for purposes of the Lanham Act—thus making 
them ineligible for perpetual trade dress protection—the 
doctrine ensures that the Lanham Act does not withdraw 
from the public domain those features that, as a matter of 
patent law, are dedicated to the public. There is, moreover, 
no evidence that the Lanham Act, which was largely de- 
signed to consolidate and unify existing common law trade- 
mark and unfair competition doctrines, was intended to 
overturn the result in Singer and its progeny by providing 
federal trade dress protection where patent law otherwise 
barred it. See Astoria, 501 U.S. at 108. See also United 
States v. Wells, 519 U.S. 482, 495 (1997) (Court presumes 
“that Congress expects its statutes to be read in conformity 
with this Court’s precedents”). To the contrary, Represen- 
tative Lanham indicated that the functionality doctrine 
would continue to perform its traditional role of ensuring 
that utilitarian conceptions will not be withdrawn from the 
public domain as trade dress in contravention of patent-law 
principles.5 

5 Responding to concerns that trademark law might accord one 
competitor trade dress rights in a useful design, such as a trademark tire 
balancer, or the shape of a package that permits it to be shipped by boat or 
truck, Trade-marks: Hearings Before a Subcomm. of the Senate Comm. 
on Patents, 78th Cong., 2d Sess. 73, 74 (1944), Representative Lanham 
stated that, “when you get into the matter of functions, you get into the 
field of patents, and * * * a trademark is not used to indicate functions,” 
id. at 74. 

18 

In addition, any suggestion that the Lanham Act effec- 
tively superseded the patent-law right to copy cannot be 
reconciled with this Court’s decisions in Sears and Compco, 
supra, which were decided almost two decades after the 
Lanham Act’s passage. In those companion cases, the Court 
held that patent law pre-empts state unfair competition law 
insofar as the latter bars copying of unpatented designs, 
because such designs are, “[u]nder the federal patent laws 

* * * in the public domain and can be copied in every detail 
by whoever pleases.” Compco, 376 U.S. at 237-238; see 
Sears, 376 U.S. at 231-232 (similar). The holdings and 
“reasoning at the core” of those decisions were subsequently 
reaffirmed in Bonito Boats, 489 U.S. at 156-157, forty years 
after the Lanham Act’s passage. Although respondent 
argues (Br. in Opp. 6) that Sears and Compco are distin- 
guishable because they involved state unfair competition 
laws, it is implausible to suppose that this Court would have 
held a state prohibition on copying to be inconsistent with, 
and pre-empted by, federal law if a federal statute—the 
Lanham Act—also would have prohibited copying in those 
circumstances. Indeed, in Compco itself, the Court accepted 
for purposes of its decision that the prerequisites for 
Lanham Act protection—secondary meaning and confusion 
as to source, see 15 U.S.C. 1123—had been met. 376 U.S. at 
237 (confusion), 238 (secondary meaning).6 Moreover, the 
fact that the result in Sears and Compco necessarily would 
affect the scope of Lanham Act protection could hardly have 
been lost on the Court, since the issue was specifically 
raised. 62-108 Resp. Br. at 14-15 (arguing that, if the state 

6 Because Compco involved a design patent rather than a utility 
patent, the Court’s opinion also expresses concern that functionality 
analysis might not fully reconcile the scope of trade dress protection with 
patent-law right-to-copy principles. 376 U.S. at 238. The scope of the 
right to copy that arises on the expiration of a design patent does not 
readily correlate with the functionality doctrine, because the subject 
matter of design patents is, by definition, ornamental and non-functional. 

19 

law prohibition on copying were invalid, “it could with the 
same force be argued that trademark rights residing in the 
shape or configuration of an article could not be enforced by 
a federal court * * * as similarly amounting to the grant of 
a monopoly in the nature of a patent”) (emphasis added).7 

It is possible to read Singer, Sears and their progeny as 
stating a broader rule—as authorizing reproduction of not 
merely the invention, i.e., those elements that contribute or 
help make the invention function as intended, but also every 
jot and tittle of the patentee’s product design during the 
time the product was patented, including wholly arbitrary 
elements that serve no purpose other than to indicate the 
product’s origin. This Court, however, has cautioned that 
the “absolutist terms” of some of its early decisions should 
not be read as foreclosing “limited regulation[]” of copying 
“to prevent consumer confusion as to source.” Bonito Boats, 
489 U.S. at 154 (emphasis added). In our view, where the 

7 Relying on Compco’s assertion that the patent-law right to copy 
extends to products that are not “entitled to a design patent or other 
federal statutory protection,” some courts have held that, because the 
Lanham Act falls under the rubric of “other federal statutory protection,” 
it may be treated as a free-standing exception to the patent-law right to 
copy. Esercizio v. Roberts, 944 F.2d 1235, 1241 (6th Cir. 1991) (quoting 376 
U.S. at 238), cert. denied, 505 U.S. 1219 (1992); Thomas & Betts Corp. v. 
Panduit Corp., 138 F.3d 277, 287 (7th Cir.), cert. denied, 525 U.S. 929 
(1998). There is, however, no persuasive evidence that the Lanham Act, 
by creating a federal trade dress right, was meant to displace the ordinary 
and longstanding rule that unpatented utilitarian conceptions, as a matter 
of patent law and the functionality doctrine, cannot be protected in 
perpetuity as trade dress. See pp. 16-19, supra. Moreover, as explained 
above, the argument cannot be reconciled with Compco’s result. It is hard 
to see how federal patent law would pre-empt state unfair competition law 
if another federal law—the Lanham Act itself—offered the same 
protection against copying that state law sought to provide. Finally, it is 
likewise incorrect to assume that one can “reconcile” the Lanham Act with 
patent-law principles by sequentially protecting utilitarian features 
covered by expired patents under patent and then trademark law; such an 
approach would defeat the right to copy unpatented utilitarian conceptions 
that patent law furnishes. 

20 

element alleged as trade dress is only incidentally included in 
the patent or product, i.e., where the feature is not a 
utilitarian part of the invention itself, there is no bar to trade 
dress protection under the Lanham Act. See p. 14, supra. 
The contrary rule would not serve the patent-law purpose of 
ensuring that the invention enters the public domain, and 
would needlessly undermine the Lanham Act’s source- 
identification goal.8 

3. Finally, treating expired patent claims as irrefutable 
evidence of functionality is supported by important policy 
considerations. First, it enables courts (and competitors) to 
determine the availability of trade dress protection based on 
the patent itself (and its enforcement), without extensive 
proceedings or inquiries. In contrast, the multi-factor tests 
used by some courts, see note 4, supra, often require exten- 
sive proceedings and nuanced balancing. That is especially 
true of the approach, erroneously adopted by some courts, of 
declining to find functionality in the absence of a showing of 
competitive “need,” see pp. 22-26, infra, since questions of 
“need” are notoriously difficult and require intense factual 
development, including consideration of alternative designs, 
consumer preference, and cost. 

Avoiding uncertainty and potentially protracted pro- 
ceedings is especially important due to the strong incentive 
that patentees often have to extend the term of their ex- 
clusive rights. Because competitors may be deterred “not 
merely by successful suit but by the plausible threat of 
successful suit,” Wal-Mart, 120 S. Ct. at 1345, any test that 
cannot easily be applied and resolved on summary judgment 
will undermine competition and the patent-law goal of 

8 Similarly, the right to copy an invention upon the patent’s expiration 
would not extend to improvements covered by separate, unexpired im- 
provement patents; the original invention could be copied, but the 
improvements—even if used during the life of the patent—could not. See 
also 35 U.S.C. 102(b) (public disclosure does not put unpatented invention 
in public domain if patent application filed during 1-year grace period). 

21 

making all prior art a building block for further technological 
advances. Consumers “should not be deprived of the bene- 
fits of competition with regard to the utilitarian and esthetic 
purposes that product design ordinarily serves”—or the 
innovations those designs may be adapted to advance—“by a 
rule of law that facilitates plausible threats of suit against 
new entrants” and further innovation. Id. at 1344.9 

Permitting parties to assert exclusive trade dress rights 
in product features notwithstanding the expiration of a 
patent covering those features would also “lead to admini- 
strative problems of no small dimension.” Bonito Boats, 489 
U.S. at 161. The “federal patent scheme provides a basis for 
the public to ascertain the status of the intellectual property 
embodied in any article in general circulation” because “[t]he 
availability of damages in an infringement action is made 
contingent upon affixing a notice of patent to the protected 
article.” Id. at 161-162. Because Section 43(a) of the Lan- 
ham Act, 15 U.S.C. 1125(a), does not require such notices, it 
would leave competitors with no certain way of knowing, in 
advance, whether the utilitarian feature they wish to use 
remains in the public domain. 

Finally, viewed in light of the serious adverse impact on 
competition and innovation, the cost of denying trade dress 
protection to features covered by an expired patent seems 
comparatively small. Producers seeking to establish means 

9 For that reason, this Court determined in Wal-Mart that producers 
claiming trade dress protection for product designs must show “secondary 
meaning,” i.e., that the public associates the design with the source, and 
rejected a multi-factor test for determining whether a design is inherently 
distinctive. See 120 S. Ct. at 1344-1345. Here, however, proof of 
secondary meaning is not an effective barrier. The very fact that, because 
of the patent, only one producer made a particular product for some 20 
years will very often cause the public to associate the design (if not the 
good) with that producer. For the same reason, it may be extraordinarily 
difficult to determine whether “the primary significance” of the design “in 
the minds of the consuming public is not the product but the producer.” 
Kellogg Co., 305 U.S. at 118. 

22 

by which prospective purchasers may identify their products 
have almost infinite options at their disposal; there thus is 
little need for them to rely on the utilitarian features dis- 
closed in their patents. Vornado, 58 F.3d at 1510. Here, for 
example, respondent could have painted its dual-springs 
with an arbitrary and non-functional pattern, or used a 
unique badge or logo to distinguish its stand from others. 
Having failed to do so, it cannot now demand that others 
refrain from using its no-longer patented invention as a price 
of competing. In addition, producers can demand that com- 
petitors clearl 
label their products, see, e.g., 1938 Restatement 

§ 742; Kellogg Co., 305 U.S. at 120-121. And respondent did 
just that, obtaining an injunction against petitioner’s use of a 
descriptive but confusingly similar brand name. See note 1, 
supra. Moreover, the “ TrafFix Devices” name appears on 
all of petitioner’s signs. See J.A. 253. 

4. Notwithstanding the foregoing, there is a regrettable 
tendency (based on one reading of the 1995 Restatement) for 
some courts to define functionality—and thus the scope of 
trade dress protection under the Lanham Act—as depending 
solely on whether competitors need a feature to compete. 

10 

The court of appeals here employed that approach, declaring 
that a configuration is not functional unless it is a “competi- 
tive necessity.” Pet. App. 20a-21a. 

Even if one sets aside the linguistic difficulty inherent in 
equating “functionality” with “competitive necessity,” the 
approach is inappropriate, especially in the context of an ex- 
pired patent. As an initial matter, it unmoors functionality 
from its traditional role of protecting “the principle that 
there is only one legal source of exclusive rights in utilitarian 

10 See, e.g., Vornado, 58 F.3d at 1507 (stating that functionality de- 
pends on competitive impact and not on “inherent usefulness”); 
Restatement (Third) Unfair Competition § 17, at 172 (design functional if 
it offers benefits that are “important to effective competition” (apart from 
indicating source) and the benefits “are not practicably available through 
the use of alternative designs”). 

23 

features—utility patent law.” 1 McCarthy, supra, § 7:68, at 
7-147; Qualitex, 514 U.S. at 164-165 (if “functional features 
could be used as trademarks * * * a monopoly over such 
features could be obtained without regard to whether they 
qualify as patents and could be extended forever”); pp. 9-12, 
supra. If one focuses solely on competitive need, for 
example, the inventor of a particular type of mousetrap 
could extend his exclusive rights, initially obtained under 
patent, into eternity under trade dress law so long as a 
sufficient number of other effective mouse trap designs are 
available. Zip Dee, 931 F. Supp. at 608. Indeed, in this case, 
the court of appeals concluded that respondent’s clearly 
functional dual-spring design may be protected as trade 
dress since petitioner could invent, or obtain a license for, 
another patented design. Pet. App. 21a. That result strikes 
at “the very purpose of the patent laws” by preventing 
inventions claimed in expired patents from becoming “avail- 
able as the building blocks of further innovation.” Bonito 
Boats, 489 U.S. at 151. 

Such a result, moreover, would place the Lanham Act in 
conflict with the principle that, “at least in the case of an ex- 
pired patent,” competitors not only have “a federal right to 
‘copy and to use,’ ” Bonito Boats, 489 U.S. at 165, but also 
“the right to make [the invention] in the form in which it was 
constructed during the patent,” Singer Mfg. Co., 163 U.S. at 
185. Indeed, it would essentially eliminate that well-estab- 
lished right, except where copying is a competitive “necess- 
ity.” See 1 McCarthy, supra, § 7:68, at 7-148 & n.5, and 7-150 
(noting that competitive necessity test creates an unneces- 
sary conflict between trademark and patent-law principles). 
See also Vornado, 58 F.3d at 1510 (acknowledging the 
conflict and attempting to resolve it); Zip Dee, 931 F. Supp. 
at 608 (same). It is, of course, wholly inappropriate to adopt 
an approach to functionality that would place two otherwise 
harmonious statutory schemes at war with each other. 
Moreover, as explained above (pp. 10-12, 16-19, supra), such 

24 

an approach cannot be reconciled with the functionality 
doctrine as it existed when Congress passed the Lanham 
Act, with other principles of statutory construction, with 
Congress’s evident intent, or with this Court’s post-Lanham 
Act decisions. We therefore agree with the leading treatise 
that “truncat[ing]” functionality analysis by focusing on com- 
petitive necessity alone is “illogical”; instead, at least in the 
context of expired patents, a feature is functional either if 
protecting it would unduly impede competition or it is 
functional “in the traditional engineering-driven utilitarian 
sense.” 1 McCarthy, supra, § 7:68, at 7-148 & n.5; id. at 7-150 
(explaining that there is “no * * * policy conflict between 
federal patent policy and trade dress law” so long as courts 
adhere to “the traditional trade dress definition of 
‘functionality’ ”). 

11 

11 For the same reasons, it is inappropriate to read the 1998 Lanham 
Act amendment (which made functionality a bar to registration, 15 U.S.C. 
1052(e)(5) (Supp. IV 1998)) and the 1999 amendment (which assigned the 
burden of proving non-functionality to the party claiming protection, 15 
U.S.C. 1125(a)(3) (to be codified)) as making competitive need a pre- 
requisite to functionality. Although the House Report on the latter 
amendment observes that a “functional feature of trade dress is one that is 
commonly used by similar businesses, protection of which would hinder 
competition,” H.R. Rep. No. 250, 106th Cong., 1st Sess. 6 (1999), that 
statement is descriptive rather than definitional, and insufficient in any 
event to overcome the principle against construing statutes so as to create 
conflicts between them. Moreover, in the same paragraph, the Report 
specifically recognizes that functionality should prevent trademark law 
from intruding on patent-law principles, observing that “[f]unctional 
marks should be dealt with under patent law.” Id. at 7. Finally, treating 
either amendment or its legislative history as ratifying a particular 
definition of functionality would be especially inappropriate because 
Congress, when it enacted those amendments, specifically declined to pass 
a bill—H.R. 3163, 105th Cong., 2d Sess., § 2(c) (1998)—that would have 
codified a definition for functionality. See Trademarks Amendments Act 
of 1999: Hearing Before the Subcomm. on Courts and Intellectual 
Property of the House Comm. on the Judiciary, 106th Cong., 1st Sess. 13- 
14 (1999) (Statement of Michael K. Kirk) (urging House to revive H.R. 

25 

Finally, equating “functionality” with “competitive neces- 
sity” over-reads this Court’s decisions. Seizing on this 
Court’s statement that a feature is functional if the inability 
to copy it puts “competitors at a significant non-reputation- 
related disadvantage,” Qualitex, 514 U.S. at 165, the court of 
appeals emphasized the word “significant” in order to con- 
strue the phrase “significant * * * disadvantage” as a 
competitively disabling disadvantage. Pet. App. 20a-21a. As 
an initial matter, we do not believe that the Court intended 
the “significant * * * disadvantage” standard to be the ex- 
clusive approach to functionality, given the other articula- 
tions of functionality the Court used in Qualitex. For 
example, the Court stated that 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.” 514 U.S. at 165, 169 
(emphasis added, internal quotation marks omitted). See 
also id. at 162 (functional characteristic “an important” non- 
reputational “ingredient in the commercial success of the 
product”) (quoting Inwood Labs., 456 U.S. at 863 (White, J., 
concurring)). The Court’s use of a competition-based for- 
mulation in Qualitex, moreover, appears to have resulted 
from the fact that that case (like Inwood Labs.) involved a 
trademark color, for which the competitive formulation is 
particularly useful. 

12 Thus, while we agree that competitive 

3163 to provide “guidance as to when trade dress serves as a source 
identifier and when it is functional”). 

12 Even though they do not operate like utilitarian parts of a machine, 
colors may be functional in providing visual cues. For example, using the 
color orange on a can of soda may be functional because it identifies the 
contents as being orange-flavored, even though the color does not affect 
the way the can retains liquid. Focusing on competition in such a case 
shows the color to be functional because, if other makers of orange soda 
cannot color their cans orange, they may be competitively disadvantaged 
in the marketplace. See Wal-Mart, 120 S. Ct. at 1344. 

26 

necessity proves functionality, the absence of competitive 
necessity does not itself disprove it. 

13 

In any event, Qualitex is best understood as using the 
phrase “significant * * * disadvantage” to indicate a “non- 
trivial” or “meaningful” non-reputation-related disadvan- 
tage. Indeed, the Court specifically indicated that the 
functionality doctrine was designed to ensure that “useful” 
product features do not become protected as trade dress in 
perpetuity in derogation of patent law, 514 U.S. at 164; and it 
further clarified that the “functionality doctrine * * * 
protects competitors against a disadvantage (unrelated to 
recognition or reputation) that trademark protection might 
otherwise impose, namely, their inability reasonably to repli- 
cate important non-reputation-related product features,” id. 
at 169. The examples of “functionality” the Court cited like- 
wise indicate that meaningful disadvantage, not competitive 
necessity, is sufficient to establish functionality. 

14 

13 Some courts’ exclusive reliance on competitive need may have 
resulted from a misinterpretation of the 1938 Restatement. Comment “a” 
of that Restatement, after giving a general explanation of utilitarian 
functionality, noted the doctrine of aesthetic functionality, which may 
apply “[w]hen goods are bought largely for their aesthetic value.” After 
discussing that issue, the Restatement added that the determination in 
such a case turns on “whether prohibition of imitation by others will 
deprive the others of something which will substantially hinder them in 
competition.” In context, the competitive hindrance test appears to be an 
additional way functionality may be found—especially useful in cases of 
aesthetic functionality—not a sine qua non without which functionality 
can never be found. 

14 The Court, for example, approvingly cited the mode of analysis in a 
lower court decision holding that the color black, as applied to motor boat 
engines, was functional because it coordinated well with other colors and 
minimized the apparent size of the motor; and it similarly cited another 
holding that the color green was functional on farm machinery, since 
farmers might want their machinery to match. See 514 U.S. at 169-170. 

27 

C. Respondent Is Not Entitled To Trade Dress Protection 

Judged by the foregoing standards, respondent’s design is 
not entitled to trade dress protection. Respondent’s patents 
themselves, and respondent’s later enforcement of its patent 
rights, together make it clear that each and every element of 
respondent’s claimed trade dress is a utilitarian part of the 
patented device that passed into the public domain when the 
patents expired. 

1. Respondent claims “trade dress” protection in a sign 
stand which has “(a) a relatively narrow base member; (b) a 
pair of vertically arranged closely spaced coil springs 
attached to the base member; (c) a plurality of leg members 
attached to the base member * * * ; (d) an upright member 
attached to the coil springs; and (e) a sign attached to the 
upright member.” Pet. App. 29a. As the district court 
observed, the only one of those features that differs from 
any other sign stand is the “pair of vertically arranged close- 
ly spaced coil springs.” Id. at 48a; see also id. at 60a (“Every 
single one of the competitors * * * markets a sign stand 
with a narrow base, four leg members extending at angles 
from the base, an upright, and a sign.”). But respondent’s 
patents reveal the dual-spring design to be utilitarian be- 
cause the “two spaced apart spring connections” permit the 
sign to yield to the wind without “twisting.” Id. at 18a, 50a; 
’482 Patent at 4 (claim 1), 1 (summary). See also id. at 2 
(specification) (“[A]s the frame structure is deflected 
downwardly, the effective wind force is reduced much in the 
manner of a sail on a boat coming into the wind.”). 

The other design elements alleged to be trade dress are 
also functional. The “base” member element is utilitarian 
because it provides a “ground-engaging means” to support 
the “upstanding frame” and “spring structure.” ’482 Patent 
at 4 (claim 1). 

15 The “plurality of leg members,” Pet. App. 

15 Although respondent’s patents do not describe a “narrow” base and 
show widely spaced springs, respondent has asserted that its patents 

28 

29a, prevents the sign from tipping over; indeed, the length 
of those legs is based on a formula disclosed in the patent. 
’482 Patent at 5 (claim 1), 4 (specification). The “upright 
member attached” on top of “the coil springs” is utilitarian 
because it is necessary to display the sign. And the “sign 
attached to the upright member” is utilitarian, because 
displaying the sign is the very purpose of the stand. 

At bottom, respondent’s alleged trade dress consists of 
nothing more (or less) than the elements claimed or specified 
in its patents; respondent’s alleged trade dress includes 
nothing arbitrary, fanciful, or otherwise non-useful beyond 
the patented device itself. Thus, the product design for 
which respondent claims trade dress protection is not an 
article that incorporates the patented device. It is the pat- 
ented device. Consequently, when the patents for that 
device expired, respondent’s design fell into the public do- 
main. 

2. The court of appeals’ contrary analysis does not with- 
stand scrutiny. First, the court of appeals observed that a 
combination of functional features may itself be non-func- 
tional and protected as trade dress. Pet. App. 20a. In the 
context of an expired utility patent, where each element 
alleged to be trade dress contributes to the functioning of 
the invention, that is not true. To the contrary, when the 
elements alleged as trade dress are part of the patented in- 
vention, and together make up the invention, the whole is 
not merely functional; it is the invention. 

Moreover, even outside the utility patent context, a com- 
bination or configuration of wholly functional elements will 
rarely be non-functional unless the particular combination is 
somehow “arbitrary” and not driven by considerations of 

extend to stands with narrower bases and closely spaced springs as well. 
See Sarkisian v. Winn-Proof Corp., 686 F.2d 671 (9th Cir. 1981). More- 
over, it is not disputed that positioning the springs closer together is 
functional because it makes the stand smaller, lighter, and less costly to 
manufacture, as the district court expressly found. Pet. App. 54a. 

29 

utility, function, or simplicity. 1 McCarthy, supra, § 7:76, at 
7-177 (citing Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, 
Inc., 58 F.3d 27 (2d Cir. 1995)); see Sunbeam Prods., Inc. v. 
West Bend Co., 123 F.3d 246, 256 (5th Cir. 1997) (“arbitrary 
combination of functional features, the combination of which 
is not itself functional”), cert. denied, 523 U.S. 1118 (1998). 
In most cases, “the combination of individually functional 
features will be just as functional as are the parts.” 1 
McCarthy, supra, § 7:76, at 7-177. Here, the patents prove 
that the combination of elements claimed as trade dress is 
functional, since all of the elements are part of the invention, 
and they are combined so as to implement the invention in a 
straightforward manner. For that reason, it makes no 
difference that other competitors “avoid emulating” re- 
spondent’s trade dress by avoiding use of the dual-spring 
design. Pet. App. 20a. The dual-spring mechanism is, in the 
end, the most functional and critical feature in the formerly 
patented invention; it permits the sign to yield to the wind 
without twisting. Once the patents expired, respondent lost 
the right to exclude competitors from using that clearly 
functional feature; that right to exclude cannot be resusci- 
tated under the rubric of trade dress protection. 

For similar reasons, the court of appeals erred by specu- 
lating that competitors might be able to use a tri-spring or 
quad-spring mechanism, or a hidden two-spring mechanism. 
Pet. App. 19a-20a. Manifestly, altering the number of 
springs or requiring the construction of a (flexible) housing 
to hide the springs would undermine the product’s simplicity 
of design, size, and cost. Nor, apparently, did respondent 
offer in district court to meet the burden of proving other- 
wise. See 15 U.S.C. 1125(a)(3) (assigning burden of estab- 
lishing non-functionality on party seeking trade dress pro- 
tection). In any event, if the market could be permanently 
balkanized by claims to particular functional designs (two 
springs versus three, three versus four), an extremely 
limited number of companies could utilize the invention. 

30 

That would undermine the patent-law goal of ensuring that 
inventions, upon expiration of patent protection, become 
publicly available building blocks for further innovation. 

Alternatively, the court of appeals suggested that peti- 
tioner, if it uses the dual-spring design, must avoid the four 
other elements claimed as trade dress (straight legs, a short 
member connecting the legs and the springs, a member 
above the springs, and the sign), Pet. App. 19a-20a, even 
though those elements are common to the sign stands made 
by every one of respondent’s competitors, id. at 48a, 60a. In 
particular, the court suggested that petitioner (uniquely 
among competitors) must avoid wholly generic design fea- 
tures such as straight legs and instead adopt an arbitrary 
design using curved legs, dual support members, an A-frame 
support member, or some other fanciful gloss if it uses the 
dual-spring mechanism. But the straightforward design of 
those four other features is also functional, and the court of 
appeals’ proposed alterations—curved legs or multiple or A- 
shaped support members—would negatively affect the 
simplicity of design and the cost of production. More funda- 
mentally, the court of appeals’ approach puts the shoe on the 
wrong foot. Simply put, respondent cannot rely on the most 
critical feature of its public domain invention (the dual- 
spring mechanism) as the only thing that distinguishes its 
sign stand from any other, and then demand that com- 
petitors adopting the invention incorporate essentially 
arbitrary and unique features to set their sign stands apart. 
If respondent wishes to claim a design as trade dress, 
respondent has the burden of setting its own design apart 
from the merely functional. 

CONCLUSION 

Accordingly, the judgment of the court of appeals should 
be reversed. 

Respectfully submitted. 

31 

SETH P. WAXMAN 

Solicitor General 

DAVID W. OGDEN 

Assistant Attorney General 

LAWRENCE G. WALLACE 

Deputy Solicitor General 

JEFFREY A. LAMKEN 

Assistant to the Solicitor 

General 

ANTHONY J. STEINMEYER 
MARK S. DAVIES 

Attorneys 

AUGUST 2000