532 U.S. 23 (2001) (U.S. Supreme Court)
TrafFix Devices v. Marketing Displays is a cornerstone Supreme Court decision on the functionality doctrine in trade dress law under Section 43(a) of the Lanham Act.
Whether the dual-spring configuration of MDI's sign stand—disclosed in its expired utility patents—constitutes functional product design such that it is ineligible for trade dress protection under Section 43(a) of the Lanham Act, and whether the availability of alternative designs or the presence of secondary meaning can overcome functionality.
A product feature is functional, and thus not protectable as trade dress, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article (the Inwood test). An expired utility patent is strong evidence that the features claimed therein are functional. When utilitarian functionality is established under the Inwood standard, there is no need to proceed to a competitive-necessity or alternative-designs analysis, and secondary meaning cannot rescue the claim. Product design trade dress cannot be inherently distinctive (Wal-Mart v. Samara); the plaintiff bears the burden of proving nonfunctionality in product-configuration cases (15 U.S.C. § 1125(a)(3)).
The dual-spring design is functional under the Inwood standard and therefore not protectable as trade dress under the Lanham Act. The existence and disclosures of MDI's expired utility patents provide strong evidence of functionality, and the availability of alternative designs does not alter the analysis. The Sixth Circuit's judgment was reversed.
TrafFix is the leading modern articulation of the functionality doctrine in trade dress. It: (1) cements the Inwood functionality standard for utilitarian features; (2) treats an expired utility patent as powerful evidence of functionality; (3) clarifies that alternative designs and competitive necessity are not determinative when utilitarian functionality is established; (4) reinforces that secondary meaning cannot save functional features; and (5) reminds litigants that the plaintiff bears the burden to prove nonfunctionality for product design. The decision protects the public's right to copy functional innovations once patent protection ends, delineates the line between patent and trademark, and guides how to plead and prove trade dress claims in product-configuration disputes.