Trade Dress Protection for Product Configurations: Is There a Conflict with Patent Policy

Jay Dratler, University of Akron School of Law

Abstract

During the past decade, legal protection for trade dress passed two important milestones. In 1988, Congress gave its imprimatur to the courts' freestyle development of the law up to that time, thereby ratifying developments that otherwise might have been condemned as judicial legislation. In 1992 the Supreme Court implicitly acknowledged that ratification and established the basic parameters for trade dress protection. These two events, more than any others, helped the subterranean growth of trade dress protection for product configurations burst into the sun.

Partly as a result of these developments, trade dress litigation, which includes litigation over product configurations, has burgeoned in recent years. Some jurists see this sort of litigation as a natural development of the law of trade symbols in federal fora, providing valuable and sometimes necessary protection for the legitimate identifiers of a product's source. Others see it as a dangerous development in intellectual property law, undermining the integrity of the patent system by providing patent-like protection on the cheap. In short, the flowering of litigation that appears to some courts like a robust garden appears to others like a plague of weeds.

The dispute is not confined to matters of general policy. It infects virtually every element of trade dress doctrine. Indeed, with respect to trade dress protection for product configurations, the federal circuits are not so much split as splintered. They disagree on the standard for determining whether product features are inherently distinctive, thereby enjoying protection without a demonstration of secondary meaning. They disagree on the standard for determining which product features are functional and consequently not entitled to protection in the absence of a patent. Finally, they disagree on the process for determining whether a likelihood of confusion between the plaintiff's and defendant's trade dress exists, and even whether the same standard for likelihood of confusion should apply to product configuration cases as to other cases of unfair competition. In short, the federal courts in this field disagree on virtually every aspect of legal doctrine on which it is possible to disagree. This article is an attempt to light a candle in the darkness. It focuses on two aspects of the puzzle that, in my view, have failed to receive sufficient emphasis. The first is the unique set of purposes served by the law of trade symbols, which is both broader than and different from the purposes of patent law. Proper appreciation of the differences and their consequences may help to avoid an exaggerated perception of a conflict between the two fields of law.

The second aspect of the puzzle that may deserve more attention is the question of remedies. Patent remedies are clearly defined. If there is infringement, an injunction usually will issue, and the defendant's commerce in the infringing products will be halted. Trade symbol remedies, however, are more subtle and flexible. Injunctive relief is standard, but it should and does have infinite gradations. It covers the gamut from plenary injunctions precluding the marketing of specified products in specified dress, to orders requiring the minutest changes in labeling or packaging. Exploiting this vital difference between the two fields of law is perhaps the principal means by which courts can avoid conflicts between them.

In elucidating these points, this article begins by discussing the purposes of trade symbol law, how they differ from those of patent protection, and how a conflict in policy may arise. It then analyzes the applicability of the Supreme Court's trilogy of pre-emption decisions to federal trade dress protection under the Lanham Act, including constitutional issues. Finding nothing determinative in those decisions, it next turns to the three elements of trade dress protection: (1) distinctiveness, (2) nonfunctionality, and (3) likelihood of confusion, with emphasis on trade dress and product configurations.

In discussing functionality, this article analyzes the potential for conflict with patent law in the the style of another noted preemption decision, Kewanee Oil Co. v. Bicron Corp. There the Supreme Court upheld state trade secret law against a challenge based upon federal patent policy; this article follows the Kewanee Court's lead in addressing the impact of in-force and expired patents, as well as patentability, on trade dress protection for product configurations. Finally, this article examines remedies for infringing trade dress in product configurations and shows how properly tailored relief can both advance the purposes of trade symbol protection and avoid conflict with patent policy, even in the hardest cases. In the process, this article reveals how remedial aspects of trade dress protection, which are often neglected in analyzing issues of liability, are intimately related both to the substantive doctrines of trade dress protection and to the policies that it serves.