How Patent Applications Can Affect Trade Dress Protection in the United StatesJune 2019 – INTABulletin
A product’s distinctive appearance may be subject to trade dress protection under U.S. trademark law provided it has acquired secondary meaning (or acquired distinctiveness) and the specific design elements being claimed are not functional. Put differently, the term “trade dress” refers to the aesthetic and non-utilitarian design elements of a product, separate from its packaging, that have acquired source-identifying significance in the market. Trade dress is a subset of trademark protection that requires a fairly high bar to establish protection.
The U.S. Supreme Court set this bar in Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216 (2000), holding that “a product’s design is distinctive, and therefore protectable, only upon a showing of secondary meaning.” Under Section 2(f) of the Lanham Act, “secondary meaning” refers to evidence that the product’s design features (the mark to be protected) have “become distinctive as applied to the applicant’s goods or services in commerce.” 15 U.S.C. § 1052(f). This evidence must demonstrate that the primary significance of the trade dress, as viewed by consumers, is not the product itself but the source of the product.
Trade dress sought to be protected must also not be functional. Section 2(e)(5) of the Lanham Act prohibits registration of “matter that, as a whole, is functional.” 15 U.S.C. § 1052(e)(5). As set forth in Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, n. 10 (1982), “a product 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.”
A feature is also functional if its “exclusive use … would put competitors at a significant non-reputation-related disadvantage.” Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165 (1995). In TrafFix Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23, 34 (2001), the U.S. Supreme Court observed that where protection is sought for ornamental aspects of a product’s features, which are also reflected in patent claims, this protection could still apply despite the patent filing if “the manufacturer could perhaps prove that those aspects do not serve a purpose within the terms of the utility patent.”
It is not uncommon for producers to seek utility patent protection for novel, non-obvious, inventive elements of new products. By their nature, utility patents require that the claimed subject matter be “useful,” which connotes functional attributes. In some cases, design patent protection may also be sought for new and original ornamental designs of an article of manufacture. See 35 U.S.C. § 171.
There is, therefore, a risk in applying for utility patent protection and trade dress protection for the same product because of the inherent tension between the utilitarian usefulness required for patent protection, and the non-functionality of the same product’s design features required for trade dress protection. Manufacturers may seek both types of protection to thwart knock-off products that may look like the original while avoiding certain patented claims by designing around them.
TTAB No Fan of Dyson’s Application
In re Dyson Limited, 2015 WL 1518041 (TTAB Mar. 11, 2015; non-precedential), illustrates this tension between patent and trade dress law. Dyson, the iconic fan and vacuum company, filed a trademark application with the U.S. Patent and Trademark Office to register the design of its electric fans, which it described as a “three-dimensional configuration of circular ring on top of a column-shaped base with inlets and buttons.” As referenced in the decision, the design appeared as follows:
Registration was refused because the claimed design elements were deemed functional, notwithstanding that evidence submitted by Dyson was sufficient to establish acquired distinctiveness.
The Trademark Trial and Appeal Board (TTAB) affirmed the refusal on functionality grounds, finding that utility patents issued to Dyson for the same product “indicate that each of the visible elements of the design … is functional.” The patents, for example, disclosed functional claims for the “circularity of the ring-shaped nozzle … and the cylindrical shape of the base.” Similarly, “the array of intake vents encircling the entire base increases efficiency by allowing air to enter the device from any direction” and the conventional circular shape of the buttons “is one of a few superior shapes for buttons, and making them in a different, more distinctive shape most likely would entail added expense of design and manufacture.”
The TTAB, however, found that Dyson’s advertisements had not touted the utilitarian aspects of its trade dress. Although certain design aspects had been noted in advertisements, they were too generalized in nature. For example, while Dyson’s advertising included statements such as “Airflow is accelerated through an annular aperture” and “Air Multiplier technology generates smooth, uninterrupted airflow by using an annular jet to draw in surrounding air and multiply it up to 15x,” these statements did “not actually say that the annular shape of the aperture or the jet is what causes the acceleration of airflow.”
Finally, the TTAB examined whether, under Inwood, the design was “essential to the purpose” of the fan, such that if variations of the designs “would alter the functional qualities of a competitor’s goods, then it would be clear that the design ‘affects the … quality of the article.’” The TTAB concluded that the circular shape of the design was functional because competitors’ designs featuring non-circular-shaped air discharge areas were not “functionally equivalent alternatives” because “a circular nozzle maximizes the discharge area of the fan.”
Two recent TTAB cases further illustrate the interrelationship between utility patents and trade dress, but leave room for both to exist in narrow circumstances:
Engine Design Doesn’t Spark
In Kohler Co. v. Honda Giken Kogyo K.K., 125 U.S.P.Q.2d 1468 (TTAB Dec. 20, 2017; precedential), Honda sought registration of the following product configuration for its GX engines (expressly disclaiming “the design mark’s purely functional components, namely levers, bolts, nuts and caps”):
The primary design was described as “an overall cubic design, with a slanted fan cover, the fuel tank located above the fan cover on the right, and the air cleaner located to the left of the fuel tank.” Actual products incorporating Honda’s GX engine design were noted in the opinion.
After overcoming functionality objections from the examiner, the application was published for opposition. Kohler filed an opposition alleging functionality and lack of acquired distinctiveness. After reviewing an extensive evidentiary record, the TTAB sustained the opposition, finding that the claimed trade dress was primarily functional and had not acquired distinctiveness.
On the functionality issue, the TTAB reviewed a 1989 U.S. utility patent for a general purpose internal combustion engine that included the following drawing:
The opposer argued that this drawing was substantially similar to the applied-for mark, while Honda asserted that the patent itself did not describe or ascribe any benefit to the stylized components of the engine. The TTAB agreed, finding that while the patent “shows various views of the GX Engine, and mentions the relative location and shape of the engine’s fuel tank and air cleaner, including in the claims,” the actual patent claims focused on “the external structure and internal workings of the air cleaner and the precleaner themselves, which are internal components that are not part of the applied-for mark.” Thus, the patent did not ascribe functional benefits to the features cited in the trade dress application.
But the TTAB found two relevant Japanese utility model applications to be probative of functionality. Japanese Utility Model Act applications cover “the shape or structure of an article or combination of articles, industrially applicable, and characterized by creative technological concepts based on natural laws and rules.” Unlike the U.S. utility patent, these foreign applications focused on specific exterior features of the engine design and attributed functional characteristics to them, including “certain benefits to the overall shape of the engine, including compactness, light weight, adaptability to ‘a wide variety of applications,’ and ease of maintenance.” Another application noted that “the flat bottom of the fan cover, while not optimally-shaped … is dictated by the presence of an inclined cylinder,” again supporting a functionality finding.
Finally, while Honda submitted an expired U.S. design patent that had been issued for the engine, arguing that it was “presumptive evidence of non-functionality,” the TTAB disagreed, finding that the design patent drawings were not identical to the claimed trade dress of the engine and included many other elements. The TTAB emphasized that while the existence of one or more design patents “may be some evidence of non-functionality …, ‘the fact that a device is or was the subject of a design patent does not, without more, bestow upon said device the aura of distinctiveness or recognition as a trademark.’”
The Federal Circuit has also held that while a design patent covering the “very design for which trademark protection is sought ‘presumptively … indicates that the design is not de jure functional,’” unless the design patent and proposed mark are identical, “the presumption loses force, and the ‘similar’ design patents lack sufficient evidentiary value to overcome the strong conclusion … that [the applicant’s] utility patents underscore the functionality of significant elements of the proposed mark.” In re Becton, Dickinson and Co., 675 F.3d 1368, 1375 (Fed. Cir. 2012).
TTAB Sees the Light
Most recently, in Grote Industries, Inc. v. Truck-Lite Co., LLC f/k/a/ Truck-Lite Co., Inc., 126 U.S.P.Q.2d 1197 (TTAB Mar. 30, 2018; precedential), the applicant overcame a functionality challenge to its registration for the following design of a “combined stop-turn-tail lamp” for vehicles based on its patent filings:
The applicant also survived opposition to its pending application to register the configuration of a similar vehicle lighting fixture, appearing as follows (depicting in part the placement of six LED diodes):
The original trade dress registration and the pending application relied on claims of acquired distinctiveness for the same “Penta-Star Pattern” design, which was embodied in the following actual vehicle lighting fixture:
The TTAB reiterated that a utility patent is strong evidence that the features for which registration is sought “are essential to the use or purpose of the article (or affect the cost or quality of the item), and may constitute sufficient evidence of functionality standing alone.” In this case, Truck-Lite owned a utility patent for which a provisional patent application also had been filed. The applications contained the following drawings:
After reviewing the claims and disclosures in the patent applications, the TTAB concluded that trade dress protection was not foreclosed because the Penta-Star Pattern was “only incidentally disclosed” as a “preferred embodiment” of the patent, while stating that fewer or more than six LEDs would serve the same inventive purpose using alternate geometric shapes. Truck-Lite also presented evidence that the Penta-Star Pattern had been chosen for “aesthetic reasons from among other six-diode designs.” Nor did the patent disclose any utilitarian aspects of the placement of the optical elements reflected in the trade dress registration and application.
The TTAB also concluded that relevant advertising did not suggest any specific benefit arising from the six-diode pattern. There were alternative market designs that satisfied federal vehicle lighting regulations, and there was no evidence of a “clear benefit as to either cost or ease of manufacture attributable to the pattern.” Ironically, despite winning the functionality battle, Truck-Lite lost the proceedings because of a failure of proof of secondary meaning.
These decisions inform the following guiding principles on product designs eligible for potential patent and trade dress protection that have otherwise acquired, or are expected to acquire, provable secondary meaning:
- Advance, coordinated planning is required before filing utility, design, and trade dress applications for the same products. This includes provisional and any foreign patent applications that could be cited.
- Where the risk of market knock-offs of the visible product design is high, particular attention should be paid to drafting utility patent applications to try to avoid utilitarian claims and descriptions with respect to embodiments of specific trade dress design elements depicted in the patent drawings.
- Design patent applications should track as closely as possible the trade dress elements sought to be protected, as the more identical the patent and trade dress registration drawings are, the higher the likelihood of a finding of de jure non-functionality.
- Advertisements and marketing materials should, if possible, include statements about the aesthetic and source-identifying elements of a product’s design elements apart from any utilitarian advantages of other inventive elements.
This article originally appeared in the June 15, 2019 edition of the International Trademark Association's INTABulletin, Vol. 74 No. 10, titled "How Patent Applications Can Affect Trade Dress Protection in the United States."