Products Themselves Can Be Trademarks . . . Sometimes

Author:Mr Thomas W Brooke
Profession:Holland & Knight LLP

The U.S. Supreme Court recently considered whether a patented product feature could be protected as a trademark after the patent expired.The case, Traffix Devices, Inc. v. Marketing Displays, Inc., involved aunique product feature that was designed to keep outdoor signs upright in windyweather. The sign company sought and obtained patent protection. After thepatent expired, the sign company claimed that the design of the outdoor sign wasso unique that it served to identify the source of the sign - in other words,that the design acted as a trademark, in the same way that the word KODAK andthe yellow and black film box serve as trademarks for the Eastman Kodak Company,or the distinctive white star on the cap of a pen, serves as a trademark for thepen manufacturer Mont Blanc.The sign company's claim required the Court to reconcile the competingpurposes of the patent and trademark statutes. Patents are intended to protectinventions; in exchange for disclosing an invention to the public, an inventoris granted a legal monopoly for a limited period of time (today, 20 years fromthe date that the application is filed). This time limit on the monopolyrepresents a fundamental policy of the patent law. Once the patent has expired,the invention is in the public domain for anyone to use.Trademarks, on the other hand, are protected because they inform consumersabout the source and quality of goods and services. If a consumer sees the markL.A. GEAR on a pair of shoes, or NATIONAL GEOGRAPHIC on a magazine, or a flyingred horse along with the word MOBIL at a gas station, they know what to expect.Trademarks can be protected forever, and, indeed, many well-known trademarkshave been around for more than 100 years. A trademark does not prevent acompetitor from selling a similar or identical product, however; they simplymust do so under a different name.Packaging, or "trade dress" can also identify a product's source,and thus can be a trademark. The words "Coca-Cola" do not have to bevisible for us to recognize a Coke bottle, and even the most...

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