A Case To Study On Patent And Trade Dress Protection

The Fourth Circuit in McAirlands Inc. v. Kimberly-Clark Corp. recently held that ownership of a utility patent does not necessarily preclude a claim in trade dress rights, particularly where the patent does not specifically cover the asserted trade dress. Remanding the district court's decision granting summary judgment to Kimberly-Clark, the Fourth Circuit held that, although plaintiff McAirlaids owned a utility patent, this fact alone was not sufficient to warrant a finding that its textile pattern was functional and, therefore, not eligible for trade dress protection.

McAirlaids produces a textile material marketed under the brand "Airlaid," that is made from shredded cellulose fiber and used in various absorbent goods such as medical supplies, hygiene products, and food packages. The process to make the Airlaid textile, which involves passing sheets of fluff pulp through steel rollers at a high pressure, imprints an embossed dot pattern on the textile. McAirlaids owns two utility patents for the process of making the Airlaid textile, along with a federal trademark registration for the embossed dot pattern.

Kimberly-Clark, which also manufactures absorbent products, began to use a similar embossed dot pattern on its GoodNites bed mats, prompting McAirlaids to file suit for trademark infringement. Kimberly-Clark filed a motion for summary judgment asserting that, because McAirlaids' dot pattern was functional and therefore not entitled to trade dress protection, its infringement action should fail. The district court agreed and issued an order cancelling McAirlaids' federal registration.

McAirlaids appealed, arguing that in granting summary judgment to Kimberly-Clark, the district court misinterpreted the scope of its utility patents and failed to consider the remaining facts in the record. As set forth in Traffix Devices Inc. v. Marketing Displays Inc., a design that is "essential to the use or purpose of the article ... or affects the cost or quality of the article" is functional and cannot serve as a trademark. In determining functionality, courts look to a number of factors, including the existence of a utility patent, advertising touting the utilitarian features of a design, the effect of the design on manufacturing, and the availability of alternative designs.

While the Court recognized that a utility patent serves as strong evidence of functionality, McAirlaids successfully argued that, because its utility patents cover a process...