''TrafFix Devices, Inc. v. Marketing Displays, Inc.'', 532 U.S. 23 (2001), was a

United States Supreme Court The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. federal court cases, and over state court cases that involve a point o ...

decision in the area of

trademark A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others ...

law, holding that a

functional design Functional Design is a paradigm used to simplify the design of hardware and software devices such as computer software and, increasingly, 3D models. A functional design assures that each modular part of a device has only one responsibility and pe ...

could not be trademarked, and that a

patent A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...

ed design was presumed to be functional..

Background

The

plaintiff A plaintiff ( Π in legal shorthand) is the party who initiates a lawsuit (also known as an ''action'') before a court. By doing so, the plaintiff seeks a legal remedy. If this search is successful, the court will issue judgment in favor of the p ...

, Marketing Display, Inc., held

s (, ) on a two-spring design to keep

traffic sign Traffic signs or road signs are signs erected at the side of or above roads to give instructions or provide information to road users. The earliest signs were simple wooden or stone milestones. Later, signs with directional arms were introduce ...

s standing in strong winds. After the plaintiff's patents expired, the

defendant In court proceedings, a defendant is a person or object who is the party either accused of committing a crime in criminal prosecution or against whom some type of civil relief is being sought in a civil case. Terminology varies from one jurisdic ...

, TrafFix Devices, Inc., began manufacturing their own signs using the design. The plaintiff sued for

trade dress Trade dress is the characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers. Trade dress is an aspect of trademark law, which is a form of intelle ...

infringement based on copying of the recognizable design. The issue the Courts dealt with concerned the legal question of whether trade dress protection could apply to the subject of an expired patent.

Opinion of the Court

The Court, in a unanimous opinion by Justice

Anthony Kennedy Anthony McLeod Kennedy (born July 23, 1936) is an American lawyer and jurist who served as an associate justice of the Supreme Court of the United States from 1988 until his retirement in 2018. He was nominated to the court in 1987 by Presid ...

, held that there can be no trademark protection for something that is functional because that would work as a detriment to competitors based on something other than reputation, which is the key consideration in trademark law. The Court noted that the plaintiff has the burden of proving that the characteristic for which protection is sought is not

functional Functional may refer to: * Movements in architecture: ** Functionalism (architecture) ** Form follows function * Functional group, combination of atoms within molecules * Medical conditions without currently visible organic basis: ** Functional sy ...

—but having a patent for a design raises a very strong presumption that the design was functional. A design is functional if it serves any purpose that makes the product work better, or makes the product less expensive to produce. That an alternative design is available does not undercut the functionality of a given design.

Discussing trademarks, we have said “ ‘ general terms, 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.’ ”. Expanding upon the meaning of this phrase, we have observed that a functional feature is one the “exclusive use of
hich Ij ( fa, ايج, also Romanized as Īj; also known as Hich and Īch) is a village in Golabar Rural District, in the Central District of Ijrud County, Zanjan Province, Iran Iran, officially the Islamic Republic of Iran, and also ...
would put competitors at a significant non-reputation-related disadvantage.” . . . Where the design is functional under the ''Inwood'' formulation there is no need to proceed further to consider if there is a competitive necessity for the feature.

Here, Justice Kennedy said, the design was clearly functional, and the plaintiff could not carry the burden of proving otherwise because the very characteristic that is sought to be protected by trademark is the one whose functionality was previously sought to be covered by patent.

References

External links

* {{USArticleI 2001 in United States case law United States Supreme Court cases United States Supreme Court cases of the Rehnquist Court United States trademark case law

Background

Opinion of the Court

See also

References

External links