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The Effect of Utility Patents on Trade Dress Protection Claims

By James W. Faris

The functionality doctrine in trademark law denies trade dress protection to product features that contribute to the utility of the product. “[A] product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1999) (quotation omitted). Under the Supreme Court's decision in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), product features claimed in a utility patent are presumptively functional. And one who seeks to establish trade dress protection for that feature “must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.” Id. at 29-30.

The Seventh Circuit's recent decision in Specialized Seating v. Greenwich Industries, L.P., No. 07-1435, 2010 WL 3155922 (7th Cir. Aug. 11, 2010), highlights several important considerations that are often overlooked by counsel representing clients who claim trade dress rights in product designs. Paramount among those considerations is the effect that claims in a utility patent can have on the availability of trade dress protection.

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