TRAFFIX DEVICES INC. v. MARKETING DISPLAYS INC.

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Case Basics
Docket No. 
99-1571
Petitioner 
TrafFix Devices Inc.
Respondent 
Marketing Displays Inc.
Opinion 
Advocates
(Argued the cause for the petitioner)
(Argued the cause for the United States, as amicus curiae, by special leave of court, supporting the petitioner)
(Argued the cause for the respondent)
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Facts of the Case 

Marketing Displays, Inc. (MDI) held utility patents for a "dual-spring design" mechanism that keeps temporary road and other outdoor signs upright in wind. After the patents expired, TrafFix Devices, Inc. began marketing sign stands with a dual-spring mechanism copied from MDI's design. MDI brought suit under the Trademark Act of 1964 for, among other things, trade dress infringement. MDA claimed that its sign stands were recognizable to buyers and users because the patented design was visible. In granting summary judgement for TrafFix, the District Court concluded that MDI had not established a "secondary meaning," or that consumers did not associate the look of the dual-spring design with MDI. The court also found that there could be no trade dress protection for the design because it was functional. In reversing, the Court of Appeals suggested that the District Court committed legal error by looking only to the dual-spring design when evaluating MDI's trade dress because a competitor had to find some way to hide the design or otherwise set it apart from MDI's and noted the issue whether an expired utility patent forecloses the possibility of trade dress protection in the product's design.

Question 

Is Marketing Displays, Inc.'s trade dress infringement claim precluded because its dual-spring design is a functional feature for which there is no trade dress protection?

Conclusion 
Decision: 9 votes for TrafFix Devices Inc., 0 vote(s) against
Legal provision: 15 U.S.C. 1051

Yes. In a unanimous opinion delivered by Justice Anthony M. Kennedy, the Court held that because MDI's dual-spring design is a functional feature for which there is no trade dress protection, MDI's claim is barred. "A utility patent is strong evidence that the features therein claimed are functional, " wrote Justice Kennedy. Focusing on the dual-spring design, Justice Kennedy continued that "[w]here the expired patent claimed the features in question, one who seeks to establish trade dress protection 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." "MDI did not, and cannot, carry the burden," concluded the Court.

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TRAFFIX DEVICES INC. v. MARKETING DISPLAYS INC.. The Oyez Project at IIT Chicago-Kent College of Law. 19 June 2014. <http://www.oyez.org/cases/2000-2009/2000/2000_99_1571>.
TRAFFIX DEVICES INC. v. MARKETING DISPLAYS INC., The Oyez Project at IIT Chicago-Kent College of Law, http://www.oyez.org/cases/2000-2009/2000/2000_99_1571 (last visited June 19, 2014).
"TRAFFIX DEVICES INC. v. MARKETING DISPLAYS INC.," The Oyez Project at IIT Chicago-Kent College of Law, accessed June 19, 2014, http://www.oyez.org/cases/2000-2009/2000/2000_99_1571.