Limits on trade dress protection when also securing a utility patent

Types of intellectual property rights

Four main types of intellectual property rights are used to protect products: patents, trademarks, trade secrets and copyrights. The product may be protected by one or more of these types of intellectual property rights. For example, a design patent may be sought for the ornamental look of the product.  Simultaneously, a utility patent may be sought for the utilitarian features of the product. Additionally, a trademark (i.e., trade dress) may be sought for the product configuration.

Example of protecting a product with multiple intellectual property rights

For example, a bottle of Coca-Cola is protected by a number of intellectual property rights. The Coca-Cola formula is protected as a trade secret. The Coca-Cola brand is a trademark. The shape of the bottle is protected as a trade dress. The bottle itself or manufacturing methods for the bottle may be protected by a patent.

Fact pattern of In re Change Wind Corp.

In In re Change Wind Corp. (TTAB July 20, 2017), the Trademark Trial and Appeal Board (TTAB) refused to register a trade dress on the principal register under Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5), on the grounds that the product design is functional. The applicant filed both a utility patent application and a trademark application for the trade dress of the product. A diagram of the product is shown below.

Although a product may be protected both by a utility patent and a registered trader dress, there are limits to that protection.  The following explains one of those limitations.

Trademark law specifies extent protection afforded under trade dress protection

Section 2(e)(5) of the Trademark Act provides that registration of a product design be denied if it “comprises any matter that, as a whole, is functional.” Generally, a product design or product feature is considered to be functional in a utilitarian sense if it is: (1) “essential to the use or purpose of the article;” or if it (2) “affects the cost or quality of the article.”[1]

Legal definition of functionality

The law normally reviews four nonexclusive categories of evidence in determining whether a particular design is functional:

(1) the existence of a utility patent disclosing the utilitarian advantages of the design;

(2) advertising materials in which the originator of the design touts the design’s utilitarian advantages;

(3) the availability to competitors of functionally equivalent designs; and

(4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.[2]

Trade dress applicant/patent owner arguments

In In re Change Wind Corp., the TTAB refused to register the trade dress on the principal register of the Trademark Office primarily for the statements made in a corresponding utility patent application (U.S. Pat. No. 9103321). The trademark applicant contended that the their corresponding patent described utilitarian advantages associated with a different part of the product and not what was shown in the applied-for trade dress such as flaps, boundary layers and spoilers of the wings.  In particular, the patent owner argued that the patent was directed to the mechanical gear drive train system. The trademark applicant also argues that the features and its marks are not functional components.

Trademark Appeal Board analysis

Unfortunately, the TTAB disagreed. The TTAB found that the features claimed in the trade dress application were necessary for the utilitarian function of the invention. One of the issues or hurdles that the patent owner/trademark applicant could not overcome was that the applied for trade dress was nearly identical to the figures used in the utility patent. (see Fig. 1A of US Pat. No. 9103321 below).  The TTAB stated that “the preferred embodiment of the invention shown in figures 1A and 1B of the patent … are in essence the applied-for mark, also shown below, except that the ‘magnetic repulsion levitated rotary wing hub’ which the helical wings attach is not displayed in the drawings for the applied-for mark, and the rods that are part of the rotary wing hub and are shown in the trademark application drawing are not claimed as part of the mark.”

The TTAB examined a number of statements made in the patent which showed how various features of the applied for mark was functional. In my opinion, this may have been the reason that the trademark application was refused registration. If the look of the applied-for trade dress was not functional, then the patent drafter should have considered making the patent drawingslook differently from the applied for trade dress so as to illustrate and describe the various features separate and apart from the ornamentation shown in the applied-for trade dress. In this case, the drawings in the trade dress application appears to be identical to the patent drawings.

Another downfall of utilizing the same drawing for the applied for trade dress as in the figures of the utility patent is that now the patent owner/trade dress application now has statements made during the appeal process for the trade dress registration that may be used to limit the scope of patent protection afforded under the patent.  The patent owner/trade dress application characterized the product and the function protected by the patent.  For example, the patent owner/trade dress application argued that various features of the helical blades are nonfunctional. Moreover, the patent owner/trade dress applicant argued that the patent describes utilitarian advantages associated with mechanical gear drive train system and with components that are not found in the design sought to be registered. This statement appears to means that anything shown in the trademark application is not part of the claimed subject matter in the utility patent. This statement could be considered a disclaimer of subject matter in the patent and the patent claims cannot now be enlarged to encompass anything that is shown in the trade dress application.

I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

[1] TrafFix Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)).

[2] In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982).