Trade Dress Product Configurations

April 29, 2001 Richard L. Kirkpatrick Annual Meeting San Francisco Intellectual Property Law Association Marketing Displays v. TrafFix WindMaster® Vornado

Spiral fan grill trade dress Vornado (10th Cir.)

“Where a disputed product configuration is

S part of a claim in a utility patent, and S the configuration is a - described - significant - inventive aspect of the invention, so that without it the invention could not fairly be said to be the same invention, patent law prevents its protection as trade dress, even if the configuration is nonfunctional.” Thomas & Betts v. Panduit

Cable tie trade dress oval shape disclosed in specification and drawing but not specifically claimed Thomas & Betts (7th Cir.)

“Whether or not a feature is claimed is not necessarily . . . a good indictor of its relative importance to the invention as a whole.”

(Additional elements may simply narrow the claim for purposes of receiving a patent on the rest of the invention.) Thomas & Betts (7th Cir.)

“The focus on what is or is not claimed is misguided for another reason.

“In the patent “bargain” the claims define what the patentee receives . . . .

“What the public receives is the entire invention as disclosed in the claims but primarily in the patent specifications . . . .” Disc Golf

9th Cir. - affirming summary judgment of functionality of parabolic chain design Disc Golf (9th Cir.)

“With respect to the factor of utilitarian advantage, the existence of an expired utility patent is weighty evidence of functionality, although that fact alone is not dispositive.” Disc Golf (9th Cir.)

Trade dress proponent contended that the “gist of the invention” was an “energy absorbing structure” over a basket, and that the parabolic chain design “illustration” was “merely incidental.” Disc Golf (9th Cir.)

Court: “When read in conjunction with the patent claims and illustrations, the [background] description clearly discloses . . . utilitarian advantages . . . ” Disc Golf (9th Cir.)

Court rejected declaration of inventor as creating issue of fact on fiunctionality.

“A kind of estoppel arises. That is, one cannot argue that a shape is functionally advantageous in order to obtain a utility patent and later assert that the same shape is non-functional in order to obtain trademark protection.” Trade Dress Product Configurations

April 29, 2001 Richard L. Kirkpatrick Annual Meeting San Francisco Intellectual Property Law Association