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 a

unique product feature that was designed to keep outdoor signs upright in windy

weather. The sign company sought and obtained patent protection. After the

patent expired, the sign company claimed that the design of the outdoor sign was

so 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 and

the 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 the

pen manufacturer Mont Blanc.

The sign company's claim required the Court to reconcile the competing

purposes of the patent and trademark statutes. Patents are intended to protect

inventions; in exchange for disclosing an invention to the public, an inventor

is granted a legal monopoly for a limited period of time (today, 20 years from

the date that the application is filed). This time limit on the monopoly

represents 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 consumers

about the source and quality of goods and services. If a consumer sees the mark

L.A. GEAR on a pair of shoes, or NATIONAL GEOGRAPHIC on a magazine, or a flying

red 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 trademarks

have been around for more than 100 years. A trademark does not prevent a

competitor from selling a similar or identical product, however; they simply

must 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 be

visible for us to recognize a Coke bottle, and even the most casual photographer

knows that film in yellow and black boxes comes from Kodak and that film in

green packaging comes from Fuji.

Sometimes, even the product itself or a feature of the product can be

classified as trade dress and serve to identify the source of the product. The

triangular shaped Toblerone candy bar and the pink insulation from

Owens-Corning, for instance, are two examples.

In the...

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