Consolidating the Diffuse Paths to Trade Dress Functionality: Encountering TrafFix on the Way to Sears

Washington and Lee Law Review, Winter 2004 by Barrett, Margreth

Turning to the case before it, the Third Circuit found that the lighting fixture's design was related to the product's utilitarian function, and thus was functional. The court characterized the product's utilitarian function broadly, not only to facilitate illumination, but also to provide "architectural compatibility with the structure or building on which it is mounted."88 The plaintiff in Keene argued that there were alternative designs for the lighting fixture and thus that the fixture design should be deemed nonfunctional.89 The court appeared to reject this argument.90

The Third Circuit's standard for functionality, as described in Keene, is similar in spirit to a strict interpretation of the Inwood standard, which asks whether the product feature is "essential to the use or purpose of the article" or "affects the cost or quality of the article."91 In each case, the courts deemed product features that play a material or important role in the function of the product functional and thus unprotectable under trade dress laws. Only incidental or arbitrary features are likely to be protectable.92 Indeed, the Third Circuit itself has described its standard as "congruent" with the Inwood standard.93 It is important to note, however, that some more recent Third Circuit panels have suggested that the availability of alternative features maybe relevant to the functionality requirement, suggesting that the Third Circuit may have been moving toward the practical effect standard adopted by the majority of circuits.94

2. The Practical Effect Standard

The practical effect standard is the most widely followed general approach in the circuits: The Second, Fifth, Seventh, Ninth, Tenth, and Federal Circuits have adopted it, though each varies somewhat in articulating and applying it. Essentially, these Courts reject the notion that all product features that play a significant role in the product (apart from source identification) must be deemed functional and left in the public domain. Rather, they undertake to evaluate the actual likely impact of protection on competition in each case and find a product feature "functional" only if the potential impact of protection on competition is "undue" or "significant" under the circumstances. They all consider the availability of alternative product features in the course of this evaluation, though they may consider other factors as well. Underlying this approach is the assumption that the interests in preventing consumer confusion about the source of goods and in protecting producers' investment in their chosen indications of origin are essentially equal to the interest in protecting the right of competitors to copy unpatented product features. Thus, competitors may be prohibited from copying unpatented product features that serve to indicate the origin of the product to consumers, unless the potential interference with competition (through exclusion of copyists) appears to be significant.

One of the most influential decisions in this group is that of Judge Rich for the Court of Customs and Patent Appeals (the forerunner of the Court of Appeals for the Federal Circuit) in In re Morton-Norwich Products, Inc.95 In Morton-Norwich, the appellant was seeking to register the shape, or configuration, of the container it used to sell various household products, alleging that the shape had acquired secondary meaning as a trademark.96 The appellant already owned a design patent on the shape and a utility patent for the container's spray top mechanism.97 The question was whether the container configuration was functional.