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Protecting Trade Dress in Once-Patented Subject Matter
The recent decision, Fuji Kogyo Co. v. Pacific Bay Int'l, Inc., 461 F.3d 675 (6th Cir. 2006), confronts the question deliberately left unresolved in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), of whether a product design claimed in a prior utility patent can ever be protectable trade dress under the Lanham Act. Although setting a high bar to protectability, indeed a 'presumption' and 'heavy burden' that material claimed in a utility patent is functional and hence unprotectable once the patent term ends, the Supreme Court, of course, expressly elected not to foreclose such protection entirely. Thus, it refused the invitation of defendant TrafFix, and 'some of its amici,' to rule that 'the Patent Clause of the Constitution, Art. I '8, cl. 8, of its own force, prohibits the holder of an expired utility patent from claiming trade dress protection.' 532 U.S. at 35. Without itself addressing the constitutional question of how narrowly 'limited times' means 'limited times,' Fuji Kogyo does nothing to ease the burden in establishing trade dress protection for once-patented subject matter; it offers as well a new (if, perhaps, less than fully developed) analytical approach for applying the TrafFix presumption, asking whether the claimed trade dress would have infringed the expired patents.
A fishing line guide is one of a series of eyelets mounted along the length of a rod, through which the fishing line is threaded. Asked to tackle the question of whether Fuji Kogyo's previously patented fishing line guides could be protected as trademarks, the Sixth Circuit did not spare the rod in holding that because the designs were within the scope of Fuji Kogyo's expired patents, which to the court meant that Fuji Kogyo's own designs would have infringed its patents, either literally or under the doctrine of equivalents, judgment had been properly granted after trial dismissing its infringement claims and canceling the trademark registrations it had secured for the designs.
A potentially barbed issue in the waters left deliberately uncharted in TrafFix was that Fuji Kogyo's line guides were the subject not only of prior patent claims (and hence presumptively functional under TrafFix), but also ' on the other side of the ledger ' protected by three subsisting federal trademark registrations (which arguably should have overcome the presumption of functionality under 15 U.S.C. '1125(a)(3) and conferred a statutory presumption of validity under 15 U.S.C. '1115(a)), and had been the subject of seven design patents, which, although expired, likewise presumptively established the ornamental, non-functional nature of the designs under 35 U.S.C. '171. Although Fuji Kogyo might thus have entailed a knotty challenge of unsnarling a tangled line of evidentiary presumptions, the court cast aside any latent legal conflicts among the Lanham Act and the two patent presumptions, saying simply that there were present factual issues that could only be resolved at trial, 461 F.3d at 684, and that, in this instance, the evidence of functionality overcame the statutory presumptions of non-functionality under trademark and design patent law.
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