The Constitution Commandeth: Thou Shalt Not Protect the Same Subject Matter Under Design Patent and Trade Dress Laws

Chicago-Kent Journal of Intellectual Property Chicago-Kent Journal of Intellectual Property

Volume 21

Issue 1

PTAB Bar Association

Article 4

2021

The Constitution Commandeth: Thou Shalt Not Protect the Same The Constitution Commandeth: Thou Shalt Not Protect the Same

Subject Matter Under Design Patent and Trade Dress Laws Subject Matter Under Design Patent and Trade Dress Laws

Kenneth B. Germain

Louis H. Sitler

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Part of the Intellectual Property Law Commons

Recommended Citation Recommended Citation

Kenneth B. Germain & Louis H. Sitler,

The Constitution Commandeth: Thou Shalt Not Protect the Same

Subject Matter Under Design Patent and Trade Dress Laws

, 21 Chi.-Kent J. Intell. Prop. 88 (2021).

Available at: https://scholarship.kentlaw.iit.edu/ckjip/vol21/iss1/7

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THE CONSTITUTION

COMMANDETH: THOU SHALT NOT

PROTECT THE SAME SUBJECT MATTER

UNDER DESIGN PATENT AND TRADE

DRESS LAWS

BY KENNETH B. GERMAIN* AND LOUIS H. SITLER**

For many years and still currently, it has been assumed—and even

expressly asserted—that it is perfectly permissible to “stack” various legal

theories (concurrently or consecutively) to protect nonfunctional “designs” for

products. This is despite infrequent but cogent arguments that the available

theories, notably design patents and product design trade dress—both of which

are based upon federal statutes—are not Constitutionally compatible due to at

least the concept of Superfluity. The authors of this article carefully examine

the origin, nature, and meaning of these two types of IP protections in the

context of their two Constitutional bases—the Patent/Copyright Clause and

the Commerce Clause—and conclude that, indeed, “stacked” protections are

not Constitutionally permissible; the authors then recommend a workable

solution which they dub, the “Kewanee Kompromise.”

expressed in this article are those of its authors, and not necessarily views of their employer (Wood,

Herron & Evans, LLP, of Cincinnati, Ohio).

* Kenneth B. Germain (Of Counsel, Wood, Herron & Evans, LLP). Based in part upon professional

lectures given by Mr. Germain including “An Unhurried Look At The Protectability/Preemption Of Trade

Dress,” U.S. Patent and Trademark Office’s Annual Trademark Law Update Program (Arlington,

Virginia; October 27, 1995); “Resolved: That U.S. Trademark Law Sometimes is Trumped By Patent and

Advanced Symposium: “Evolution and Revolution in Trademark Law” (New York, New York; March

4-5, 1999); “The Interface and Conflict Between Utility Patents, Design Patents and Copyrights, On the

One Hand, and Trademark/Trade Dress Rights, on the Other Hand,” Advanced Seminar on Trademark

Law sponsored by Practicing Law Institute (New York, NY; June 30, 2005); “Hapless Halloween: The

Slaying of ‘Son of TrafFix’ (aka Considering the Constitutionality of Combining Product Design Trade

Dress Protection and Design Patent Protection),” Faculty Colloquium at the University of Dayton School

of Law (Dayton, Ohio; October 31, 2012); “Why the Constitution Disallows Dual Protection Under

Design Patent and Trade Dress Regimes for the Same Subject Matter,” Wood Herron & Evans LLP

(Cincinnati, OH; July 15, 2019); “THE CONSTITUTION COMMANDETH: Thou Shall Not Protect the

Same Subject Matter Under Design Patent and Trade Dress Laws,” AIPLA Webinar Series, (December

10, 2019); “Does the Constitution Permit Dual Protection Under Design Patent and Trade Dress for the

Same Subject Matter?,” Program in Law and Technology Seminar at the University of Dayton (Dayton,

OH; June 11, 2021).

** Louis H. Sitler (Associate, Wood, Herron & Evans, LLP).

2022 THE CONSTITUTION COMMANDETH 89

PREFACE ..................................................................................................... 90

INTRODUCTION ........................................................................................ 94

II.

THE PUBLIC’S RIGHT TO COPY ............................................................... 95

III.

FEDERAL PREEMPTION LINE OF CASES ................................................ 99

IV.

HISTORY AND PURPOSE OF DESIGN PATENTS ................................... 104

ANTI-TRUST LEGISLATION .................................................................. 107

VI.

TRADEMARKS/TRADE DRESS ............................................................. 109

VII.

THE CONSTITUTIONAL CONFLICT .................................................... 112

VIII.

CENTURY APPROACH LEADING UP TO TRAFFIX ...................... 123

IX.

THE SUPREME COURT’S 21ST CENTURY TREATMENT OF THE ISSUE 132

CENTURY APPROACH OF THE LOWER COURTS ............................ 138

XI.

WHAT DO ACADEMICS THINK? ......................................................... 141

XII.

WHAT DO PRACTITIONERS THINK? .................................................. 148

XIII.

WHY DON’T JUDGES AND ATTORNEYS ACKNOWLEDGE AND

EMBRACE THE CONFLICT? ............................................................. 150

XIV.

RESOLVING THE CONFLICT: THE “KEWANEE KOMPROMISE” ........ 152

XV.

CONCLUSION .................................................................................... 157

90 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

Preface - by Kenneth B. Germain

About a decade ago, my expertise as a potential testimonial expert

witness was engaged in connection with Bobrick Washroom Equip., Inc. v.

American Specialties, Inc.

After careful study and analysis, I submitted

three Expert Reports, one each regarding (1) Aesthetic Functionality, (2)

Likelihood of Confusion, and (3) Unconstitutionality of Trade Dress

Protection for Expired Design Patents. My conclusions on these three topics

were as follows: (1) The “Convex Arc” design common to all of Plaintiff’s

trade dress claims—based in part on “incontestable” trademark

registrations—was unprotectable because this design was “functional”, not

in a mechanical/useful way, but because it was “aesthetically functional” in

that it “serves as an attractive, upscale, design that competitors (including

Defendant) should be allowed to approximate —even to ‘copy’—so that

commercial buyers will have access to multiple sources of this attractive,

upscale design.” (2) Assuming, arguendo, that Plaintiff’s design actually

was protectable, I concluded that, applying the relevant (Sleekcraft)

factors—as much as possible based on the then-incomplete factual record—

there was no sufficient and satisfactory basis on which to find “likelihood of

confusion” actionable under the Lanham Act. (3) Continuing to assume,

again arguendo, that Plaintiff’s design actually was protectable and also that

Plaintiff could establish likelihood of confusion with Defendant’s (very

similar) design, I concluded as follows:

The act of acquiring the design patents on the Convex Arc effectively and

permanently precluded protection of the covered feature(s) under federal

trade dress law (including Lanham Act § 32, for registered marks, and §

43(a), for unregistered marks) and/or under any/all state law doctrines.

This results from the preemptive effects of the Patent/Copyright Clause of

the U.S. Constitution and the Supremacy Clause of the U.S. Constitution.

Because (1) and (2) are not relevant to this article, only (3) will be discussed

now. As I recall, both parties were major players in the restroom accessory

design/manufacturing business, specifically including such devices as

stainless-steel paper towel dispensers and sanitary napkins disposal

receptacles. Plaintiff (Bobrick) had obtained more than 15 design patents—

among them U.S. Des. Pat. No. 332,894 and U.S. Des. Pat. No. 342,175,

displayed below next to each respective verbal claim. These two design

patents (plus the others for the same design, for similar products) had run

their course (then 14 years) and expired.

2. No. CV 10-6938-SVW (PLAx), 2010 U.S. Dist. LEXIS 147813 (C.D. Cal. Dec. 15, 2010).

2022 THE CONSTITUTION COMMANDETH 91

However, their owner, Bobrick, also obtained a trademark registration, U.S.

Trademark Reg. No. 2, 951,014, for this line of products, shown below next

to the Identification of Goods:

And this registration had, in time, attained “incontestable” status per the

Lanham Act.

This registration—plus parallel common law principles—

provided the basis for the Bobrick v. ASI lawsuit. (By the way, Bobrick’s

line of “Convex Arc” products was marketed under the word mark

CONTURA, whereas, ASI’s very similarly-designed and directly-competing

products were marketed as ROVAL).

The case was decided in favor of Defendant (ASI) on a totally separate

basis, namely, utilitarian functionality.

Thus, none of my three raised-and-

3. § 15, 15 U.S.C. § 1065.

4. Cf. Bobrick Washroom Equip., Inc. v. Am. Specialties, Inc., No. CV 10-6938 SVW (PLA), 2012

U.S. Dist. LEXIS 111465 (C.D. Cal. Aug. 8, 2012). This opinion contained a comprehensive albeit

somewhat unconvincing analysis of the utilitarian functionality defense that actually won the

day. Ostensibly following TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), but

really relying upon the earlier (and thus somewhat less authoritative) Disc Golf Ass’n v. Champion Discs,

Inc., 158 F.3d 1002 (9th Cir. 1998) case, the Bobrick court expressly considered four relevant factors

(including “alternative designs”). Bobrick, 2012 U.S. Dist. LEXIS 111465 at *18. Notably, the judge

stated that a design could be deemed functional as long as “some utilitarian advantage” could be

identified. Id. at *19; see also id. at *22. This broad standard gave an immediate benefit to

92 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

resolved issues was mentioned by the court. Relevant to the current article,

my unconstitutionality thesis was not probed at all.

But, query, what would have happened if the court had avoided

utilitarian functionality, and then disagreed with my aesthetic functionality

and likelihood of confusion conclusions? In that scenario—not one that I’d

consider outside the realm of possibility—how would the court have handled

my back-up unconstitutionality thesis? Admittedly, the District Court might

have elected to elude this last-ditch argument and, even if it “needed” to deal

with it, sought every possible way to avoid making groundbreaking law on

such an unchartered basis! But that does not resolve an issue that could be

critical to another case…

Fast forward about ten years with me now working in tandem with Lou

Sitler (one of my former trademark law students and now an associate at the

same firm). With the passage of time, surprisingly, the protectionist

environment in the IP practice field has not changed at all, as it remains

common to stack types of protection for non-functional product features

(designs, configurations, color-combinations, etc.). Indeed, it remains

common for veteran, high-profile practitioners to openly tout the availability

and favorability of using more than one type of IP for the same product

design—consecutively and/or concurrently.

The written materials for the

cited webinar—probably provided to me by one of the authors (two of whom

are decades-old friends and respected colleagues of mine)—unabashedly

impliedly and sometimes expressly assume that there is absolutely no reason

why more than one of these three IP protections cannot be used for the very

same “design.” A few specifics:

Mr. Litowitz relies on the age-old success of Coca Cola in first getting

a design patent on its classic little-bottle shape, followed by later getting a

Defendant. Next, the court weighed the effect of a few advertising claims made by Plaintiff early-on;

these claims stated that the new “convex arc” design was “stronger and stiffer” and “more impact-

resistant” than pre-existing designs. Id. at *21-22; see also id. at *28-29. The judge viewed these bits of

advertising copy as proof that Plaintiff had “touted” functional characteristics of its new design. But the

judge was unmoved by direct testimony from Plaintiff’s VP of Marketing candidly admitting that Plaintiff

really had had no factual basis for these claims and, indeed, removed them from its advertising soon after

it learned that they were not validated by testing. See id. at *29-30. Further, the judge discounted expert

testimony that any augmentations of strength and/or durability needed to be put into perspective by

considering particular angles, etc., of stress. Id. at *22. Not to be overlooked, in a brief Order, the Ninth

Circuit affirmed, stating:

The district court…properly identified and evaluated the factors enumerated in Disc Golf Ass’n

v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998), and concluded that both

Bobrick’s registered trademark and alleged unregistered trade dress were functional. These

factual findings of functionality were supported by ample evidence, including expert testimony

presented by ASI and an advertisement from Bobrick documenting the functionality of the

product. The district court correctly viewed the Bobrick product design as a whole, and did not

base its determination merely on the conclusion that the component parts of the Contura Series

were functional. Bobrick Washroom Equip., Inc. v. Am. Specialties, Inc., 565 Fed. Appx. 660,

661 (9th Cir. 2014) (citations omitted).

5. See, e.g., Robert Litowitz, Meredith Wilkes & Roberta Jacobs-Meadway, Trade Dress, Design

Patent, and Copyright: Strategies to Maximize Protection, Challenge and Defeat Infringement Strafford

(Nov. 12, 2020), https://perma.cc/AR3F-DZ4X.

2022 THE CONSTITUTION COMMANDETH 93

trademark registration for the same (or highly similar) shape.

He also

positively references Lanard Toys, Ltd. v. Dolgencorp LLC,

one of a few

modern appellate cases that seems to be comfortable with double

protection.

Ms. Jacobs-Meadway, whose slide set is entitled “Copyright Law as an

Alternative” (doubtlessly in relation to other protections for non-functional

designs), includes phrases such as “Nothing precludes claims for

trademark/trade dress”, “Jewelry designs are subject to copyright protection

as well as trade dress protection . . .”, and “Furniture designs may be subject

to copyright as well as trade dress and design patent rights.”

And it’s not like these commentators are outliers of any type!

It continues to amaze me that so few—maybe none at all—recent cases

mention, let alone decide, whether the overall Constitution-based IP scheme

prohibits the duplicate (possibly triplicate) protections so blithely

recommended by leading lawyers such as Litowitz, Wilkes, and Jacobs-

Meadway. And this, despite my numerous public protestations to the

contrary for decades!

The instant article grapples with this conundrum, explicating and

examining the caselaw (which largely, but not entirely, supports the views

Lou and I now eschew), exploring the carefully calibrated views of

academics (largely siding with our views), and practitioners (whose views

usually just “assume” overlapping is acceptable). It recommends a

resolution (overlap not permitted) and a solution (the so-called Kewanee

Kompromise); it also posits why the practicing bar has not taken up this

defense-oriented challenge in litigation.

6. Id. at slide 14.

7. 958 F.3d 1337 (Fed. Cir. 2020).

8. Litowitz, Wilkes & Jacobs-Meadway, supra note 5 at slide 45.

9. Id. at slides 71, 78, and 79.

10. See Germain, supra note *.

94 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

I. INTRODUCTION

The founders of this country, over two hundred years ago, recognized

that invention is necessary to make America a strong economic power.

Accordingly, the founders granted Congress the power to enact patent and

Constitution.

From the beginning, the Supreme Court recognized this

Clause as creating a right to copy. This Clause, which is often referred to as

the “Patent and Copyright Clause”,

recites:

The Congress shall have power… To promote the Progress of Science and

useful Arts, by securing for limited Times to Authors and Inventors the

exclusive Right to their respective Writings and Discoveries[.]

The two phrases in the Patent Clause that create the right to copy are, “to

promote the progress” and “for limited times.” The right to copy promotes

progress by allowing the public to build on the inventions in expired patents

and stimulate new invention.

It is self-evident why the right to copy

follows from the constitutional mandate that patent rights be for limited

times: if the right to copy never returned, the patent monopoly would not be

limited in time.

When asked to balance the concerns of patent law against those of

unfair competition law with respect to the copying of product designs, the

Supreme Court has ruled repeatedly over the years that the right to copy must

prevail.

The Court established the policies of patent law in a series of

decisions analyzing the conflict between the federal patent laws and state

11. Both Benjamin Franklin and Thomas Jefferson were noted inventors themselves. Jefferson was

a moving force behind the Convention’s recognition of the importance of encouraging invention, and was

the author of the 1793 Patent Act. See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 7-9 (1966).

12. See Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 228-29 (1964).

13. For purposes of brevity, the Patent and Copyright Clause will be referred to herein as the “Patent

Clause.” The authors note that dubbing this clause “the Intellectual Property Clause” (or, for short, “the

IP clause”) is misleading. There is no doubt that this Clause only embraces patents and copyrights; such

other types of “intellectual property” as trade secrets and trademarks certainly are not included. Thus,

other authors who employ “IP Clause” references are misspeaking. See Theodore H. Davis Jr., Copying

in the Shadow of the Constitution: The Rational Limits of Trade Dress Protection, 80 Minn L. Rev. 595,

605-06 (1996); Robert G. Bone, A New Look at Trade Secret Law: Doctrine in Search of Justification,

86 Calif. L. Rev. 241, 265 (1998). One commentator, Professor Pollack, notes, and the authors agree,

that the terms Patent Clause or Intellectual Property Clause “both use[] words not in the text and

incorrectly implies the primacy of rights granted patent and copyright holders.”

Malla Pollack, What Is

Congress Supposed to Promote?: Defining “Progress” in Article I, Section 8, Clause 8 of the United

States Constitution, or Introducing the Progress Clause, 80 Neb. L. Rev., 755, n.1 (2001). Professor

Pollack concludes that the best name for the Clause is the “Progress Clause.” Id.

14. U.S. Const. art. I, § 8, cl. 8. (In re Bergy points out that this is really two clauses in one: the

15. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480–81 (1974).

16. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 231–32 (1964); Bonito Boats, Inc. v. Thunder

Craft Boats, Inc., 489 U.S. 141, 146 (1989); Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249, 255

(1945); August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1288 (Fed. Cir. 2011); Kewanee Oil, 416

U.S. at 480–81.

17. See Bonito Boats, 489 U.S. at 167-68; Sears, 376 U.S. at 232-33; Compco Corp. v. Day-Brite

Lighting, Inc., 376 U.S. 234, 235, 238 (1964); Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 119-22

(1938); Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185 (1896).

2022 THE CONSTITUTION COMMANDETH 95

laws. In deciding these early cases, the Supreme Court spoke in terms of the

public rights guaranteed by the patent laws.

These decisions discuss

whether the patent laws conflict with and therefore “preempt” state laws

under the Supremacy Clause.

Specifically, the Court found a public right

in the subject matter of expired patents and focused its analyses on whether

or not the common law doctrine in question usurped this public right.

II.

THE PUBLIC’S RIGHT TO COPY

In as early as 1896, in Singer Mfg. Co. v. June Mfg. Co., the Supreme

Court set the foundation for the concept that, in return for granting a patent,

the public receives the right to copy the patented invention upon the

expiration of the patent term.

In this case, the Court permitted copying of

SINGER sewing machines’ mechanical features after their patents had

expired.

The Singer company owned a portfolio of utility patents for its

SINGER sewing machines, which represented a general product line of

sewing machines. The Court recognized that, by having patents and thus a

monopoly for the SINGER machine, “none of the machines as a whole were

open to public competition.”

The Court further recognized that this

monopoly was only for specific durations, stating, “[w]hen these patents

expired every one had an equal right to make and vend such machines.”

18. Otherwise referred to as the right to copy doctrine or the public bargain doctrine. Id.

19. Article VI, Clause 2 of the Constitution, often referred to as the “Supremacy Clause,” provides

that ”[t]his Constitution, and the Laws of the United States which shall be made in Pursuance thereof;

and all Treaties made, or which shall be made, under the Authority of the United States, shall be the

supreme Law of the Land; and the Judges in every State shall be bound thereby, any Thing in the

Constitution or Laws of any State to the Contrary notwithstanding.” U.S. Const. art. VI, cl. 2.

20. Robert G. Bone, In Trademark Functionality Reexamined, 7 J. Leg. Analysis 183, 185-186

(2015). Professor Bone introduced and advocated the unusual idea that there is no “right to copy” per se,

but merely a strong pro-copying policy that must be weighed along with other factors:

Section 5 … focuses on the right to copy product features not protected by patent or copyright,

and argues that this right is in fact no right at all, but rather a policy to be balanced with others

in the social welfare calculus. This policy has value because it promotes competition in the

product market, facilitates downstream innovation, and channels patentable inventions to the

patent system. It follows that the social benefits of allowing free copying of product features

should depend on the extent to which copying promotes these three goals, and it also follows

that those benefits must be balanced against the costs of denying trademark protection measured

in terms of consumer confusion and resulting harm. Id.

He explains his thesis in detail, id. at 218-21, reaching this conclusion:

[T]he so-called right to copy should not be treated as a utility-constraining right capable of

cutting off trademark protection by its own force. It makes sense only as a statement of policy,

and as a policy it must be balanced against the Lanham Act’s policy of preventing consumer

confusion. Id. at 221 (footnote omitted).

Aside from running totally counter to the long-held views of the senior author of the current article—to

the effect that “the rule” is free and open competition (provided that it is fair), with specific “exceptions”

being limited to carefully-drawn and usually narrowly interpreted, mostly legislation-based protections—

it is worth noting that an examination of scholarly articles in the roughly five years since publication of

the Bone article, no adherents to his view have appeared.

21. See Singer, 163 U.S. at 185-86.

22. Id. at 185-202.

23. Id. at 179.

24. Id. at 189.

96 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

The Court explained: “[i]t is self evident that on the expiration of a patent

the monopoly created by it ceases to exist, and the right to make the thing

formerly covered by the patent becomes public property. It is upon this

condition that the patent is granted.”

Thus, in holding that the newcomer

had a right to copy SINGER sewing machines, the Court’s attitude towards

monopolies created by the Patent Clause was that, upon termination of the

monopoly, the public has a right to copy that which had been protected by

the monopoly (i.e., by the patent), and any means by which this right is

disregarded as improper. This holding set the stage for the public bargain

doctrine.

Four decades later, the Supreme Court reached a similar conclusion in

Kellogg Co. v. Nat’l Biscuit Co.

Applying the law of unfair competition,

the Court held that it was not unfair competition for Kellogg Co. to copy

National Biscuit Co.’s pillow-shaped shredded wheat biscuit after

invalidation of the design patent for the biscuit shape and expiration of the

utility patents for the machines that make it.

More particularly, the Court

stated, “a design patent was taken out to cover the pillow-shaped form,” and

“upon expiration of the patents the form, as well as the name, was dedicated

to the public.”

The Kellogg Court reinforced the right to copy precedent

of Singer, stating:

Where an article may be manufactured by all, a particular manufacturer

can no more assert exclusive rights in a form in which the public has

become accustomed to see the article and which, in the minds of the

public, is primarily associated with the article rather than a particular

producer, than it can in the case of a name with similar connections in the

public mind.

Again, it remains clear that the Supreme Court interpreted the “Patent

Clause” as providing the public with an inherent right to copy that which had

been suspended by the patent monopoly, and that any means used by the

original patent holder to assert exclusive rights over the product beyond the

expiration of the monopoly would be improper. In this regard, the Patent

Clause may mandate the public bargain, being the “quid pro quo

25. The Court further explained, with respect to the trademark:

It follows, as a matter of course, that on the termination of the patent there passes to the public

the right to make the machine in the form in which it was constructed during the patent. . . . To

say otherwise would be to hold that although the public had acquired the device covered by the

patent, yet the owner of the patent or the manufacturer of the patented thing had retained the

designated name which was essentially necessary to vest the public with the full enjoyment of

that which had become theirs by the disappearance of the monopoly. In other words, that the

patentee or manufacturer could take the benefit and advantage of the patent upon the condition

that at its termination the monopoly should cease, and yet when the end was reached disregard

the public dedication and practically perpetuate indefinitely an exclusive right.

Id. at 185-86.

26. 305 U.S. 111 (1938).

27. See id. at 119-22 (Kellogg had made reasonable efforts to distinguish its product by using a

different carton, label, company name, and biscuit size).

28. Id. at 119-20.

29. Id. at 120.

2022 THE CONSTITUTION COMMANDETH 97

arrangement,” in itself because dedication of patented inventions to the

public domain is an important way that the patent law “promote[s] the

progress of … useful Arts.”

Perhaps the strongest statement of the public bargain doctrine can be

found in the Supreme Court’s decision in Scott Paper Co. v. Marcalus Mfg.

Co.:

By the force of the patent laws not only is the invention of a patent

dedicated to the public upon its expiration, but the public thereby becomes

entitled to share in the good will which the patentee has built up in the

patented article or product through the enjoyment of his patent monopoly.

Hence we have held that the patentee may not exclude the public from

participating in that good will or secure, to any extent, a continuation of

his monopoly by resorting to the trademark law and registering as a

trademark any particular descriptive matter appearing in the

specifications, drawings or claims of the expired patent, whether or not

such matter describes essential elements of the invention or claims.

In this case, the defendant was charged with infringing a patent that it

had assigned to the plaintiff.

The issue was whether the assignor was

estopped, by virtue of his assignment of his rights to the patent, from arguing

that the expired patent covered his allegedly infringing device.

The Court

found that the assignor was not estopped, reasoning that application of the

doctrine of estoppel under these circumstances would be inconsistent with

the public bargain rule that the subject matter of expired patents is dedicated

to the public.

In so holding, the Court decreed:

The public has invested in such free use by the grant of a monopoly to the

patentee for a limited time. Hence any attempted reservation or

continuation in the patentee or those claiming under him of the patent

monopoly, after the patent expires, whatever the legal device employed,

runs counter to the policy and purpose of the patent laws.

Thus, once the subject of an expired patent has entered the public domain,

the rights in it cannot be subject to private barter, sale, or waiver.

30. Kevin E. Mohr, At the Interface of Patent and Trademark Law: Should a Product Configuration

Disclosed in a Utility Patent Ever Qualify for Trade Dress Protection, 19 H

ASTINGS COMM. & ENT. L.J.

339, 348 (1996), explaining that:

The Patent Clause and statutes passed pursuant to it were intended to create a bargain between

society and the inventor, a straightforward quid pro quo arrangement in which the government

would grant to inventors a limited-duration monopoly allowing them to exploit their inventions

without fear of competition. In return, the inventor was obliged to disclose to the public

precisely how the invention worked, so that others could improve upon it and make further

advances in the relevant technology. Thus, the inventor’s disclosure was to be the consideration

that would support the government’s grant of patent rights; only if properly disclosed would

the invention be available for use, thus allowing society to benefit from its bargain. Further,

once the patent term expired, the invention would enter the public domain and become available

for the public to use and copy freely. Id.

31. 326 U.S. 249, 256 (1945) (emphasis added).

32. Id. at 251.

33. Id. at 250.

34. Id. at 257-58.

35. Id. at 256.

36. The successful Petitioners in TrafFix Devices, Inc. v. Marketing Displays, Inc. explain this

concept in their brief:

98 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

Another indication of the Supreme Court’s concern regarding patent-

based monopolies was evidenced by Blonder-Tongue Laboratories, Inc. v

University of Illinois Foundation.

In this case, the Court held that an

alleged patent infringer can use res judicata and collateral estoppel to

foreclose an infringement suit where the patent claim in question had already

been declared invalid in an earlier, albeit unrelated lawsuit.

In so holding,

the Court stated, so long as “a patentee has had a full and fair chance to

litigate the validity of his patent in an earlier case,” a plea of estoppel may

later be raised to defend “a charge of infringement of a patent that has once

been declared invalid.”

Significantly, this defense may be raised by any

accused infringer and there is no requirement that the accused infringer be

involved in the previous litigation.

As a result of the holding in Blonder-Tongue, reinforcing the Court’s

continuing concern regarding patent-based monopolies,

it is apparent that

the Court recognized that patent litigation is an important public tool that has

the potential to minimize monopolies and open markets, benefitting not just

the prevailing party in a given suit, but also benefitting competitors and

consumers throughout the economy. Specifically, “[t]his view is deeply

intuitive and has been the basis for a number of judicial and legislative

enactments to increase the number of patent challenges brought to

fruition.”

Moreover:

By 1971, the Court had consciously recognized a line of decisions aimed

at “encouraging authoritative testing of patent validity,” and, in more

recent years, has continued to root decisions in the ‘strong public interest’

found in the adjudication of patent rights. Following this doctrine, a

number of courts have refused to enforce—and declared federally

preempted—otherwise-valid contracts that might impair a party’s

incentives or ability to bring a patent challenge.

Those decisions [Singer, Kellogg, and Scott Paper] shaped the common law that Congress

sought to codify in the Lanham Act and, in particular, defined the outer limit of that law in the

case of patented inventions. In codifying that law, the presumption is that Congress sought to

bring the Singer rule with it.

Brief for Petitioner at 28, TafFix Devices, Inc. v. Marketing Displays, Inc., 121 S.Ct. 1255 (2001) (No.

99-1571), 2000 WL 35796342, at 28.

37. 402 U.S. 313 (1971).

38. See id. at 350.

39. Id. at 333, 350.

40. But see infra note 88 (noting that some patent practitioners and academics do not view a patent

as creating a monopoly; rather, they argue that patents merely provide the owner with negative rights).

See e.g., Adam Mossoff, Exclusion and Exclusive Use in Patent Law, 22 H

ARV. J.L. & TECH. 321 (2009);

see also What Rights Will a Patent Give to Me?, R

ICHARDS PATENT LAW (Oct. 12, 2021),

https://perma.cc/UKH5-283P. However, many sources use the term “monopoly” without reservation. See

e.g., Moshe H. Bonder, Patent & Lanham Acts: Serving Two Legitimate Purposes or Providing an

Indefinite Monopoly?, 15 A

LB. L.J. SCI. & TECH. 1 (2004).

41. Stephen Yelderman, Do Patent Challenges Increase Competition?, 83 U.

CHI. L. REV. 1943,

1946 (2016).

42. Id. (citing Lear, Inc. v Adkins, 395 U.S. 653, 674-75 (1969); Warner-Jenkinson Co. v. Allied

Chem. Corp., 567 F.2d 184, 188 (2d Cir. 1977); Atlas Chem. Indus., Inc. v. Moraine Prods., 509 F.2d 1,

6 (6th Cir. 1974); Panther Pumps & Equip. Co. v. Hydrocraft, Inc., 468 F.2d 225, 230-32 (7th Cir.

1972); Massillon-Cleveland-Akron Sign Co. v. Golden State Advert. Co., 444 F.2d 425, 427 (9th Cir.

2022 THE CONSTITUTION COMMANDETH 99

Although decided before Blonder-Tongue, the case of Lear v. Adkins

is illustrative in this regard. The issue in front of the Court in Lear was

whether patent licensees are permitted to challenge the validity of an

underlying patent, specifically in a suit for unpaid royalty payments.

The

Court held that patent licensees are permitted to challenge the validity of the

underlying patent.

In its opinion the Court explained that, “we granted

certiorari in the present case… to reconsider the validity of the … rule in the

light of our recent decisions emphasizing the strong federal policy favoring

free competition in ideas which do not merit patent protection.”

The Court

elucidated its holding by stating, “[t]he national policy expressed in the

patent laws, favoring free competition and narrowly limiting monopoly,

cannot be frustrated by private agreements among individuals, with or

without the approval of the State.”

III.

FEDERAL PREEMPTION LINE OF CASES

Most of the above-discussed cases set forth a federal policy of freedom

to use product features that had been restricted only by the limited monopoly

deemed necessary to “promote the progress of science and useful arts.”

These policy standpoints further align with the landmark cases of Sears,

Roebuck & Co. v. Stiffel Co.

and Compco Corp. v. Day-Brite Lighting,

Inc.,

wherein the Supreme Court held that certain state unfair competition

laws were preempted by federal law. In doing so, the Court confirmed the

principle that a state may not prohibit copying something that the federal

government had left in the public domain, freely to be copied by all, thereby

reaffirming the right to copy doctrine.

In Sears, the senior party had obtained design and utility patents on a

“pole lamp—a vertical tube having lamp fixtures along the outside, the tube

being made so that it will stand upright between the floor and ceiling of a

room.”

Subsequently, the junior party sold a “pole lamp” virtually

identical to the one produced by the senior party, at a substantially lower

price.

The senior party then brought suit claiming, first, that the junior

1971). See also Edward Katzinger Co. v. Chi. Metallic Mfg. Co., 329 U.S. 394, 401-02 (1947) (holding

that a party is not estopped from challenging a patent’s validity despite a contractual covenant to refrain

from doing so); Beckman Instruments, Inc. v. Tech. Dev. Corp., 433 F.2d 55, 62 (7th Cir. 1970), abrogated

by Act of Aug. 27, 1982 § 17, Pub. L. No. 97-247, 96 Stat. 317, 322 (refusing to enforce an arbitration

provision for a patent validity claim)).

43. 395 U.S. 653 (1969).

44. Id. at 655-56.

45. Id. at 676.

46. Id. at 656 (citing Sears, Roebuck v. Stiffel Co., 376 U.S. 225 (1964); Compco Corp. v. Day-Brite

Lighting, Inc., 376 U.S. 234 (1964)).

47. Id. at 677.

48. 376 U.S. 225 (1964).

49. Id. at 234 (1964).

50. Id. at 225-26 (internal quotations omitted).

51. Id. at 226.

100 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

party had infringed the senior party’s patents and, second, that by selling the

pole lamps, Sears had created confusion about the source of the lamps and

thus had engaged in unfair competition under Illinois law.

Reversing the

Seventh Circuit, the Supreme Court held that Illinois’ unfair competition law

was incompatible with federal patent law, and therefore unconstitutional.

In so holding, the Court explained:

An unpatentable article, like an article on which the patent has expired, is

in the public domain and may be made and sold by whoever chooses to do

so. What Sears did was to copy Stiffel’s design and to sell lamps almost

identical to those sold by Stiffel. This it had every right to do under the

federal patent laws… Sharing in the goodwill of an article unprotected by

patent or trade-mark is the exercise of a right possessed by all—and in the

free exercise of which the consuming public is deeply interested…

[W]hile federal law grants only 14 or 17 years’ protection to genuine

inventions… States could allow perpetual protection to articles too lacking

in novelty to merit any patent at all under federal constitutional standards.

This would be too great an encroachment on the federal patent system to

be tolerated.

While the “pole lamp” in Sears was found to be an “unpatentable

article”

(i.e., one not meeting the requirements for patentability), the Court

made clear that, for any article deserving and acquiring patent protection,

“when the patent expires the monopoly created by it expires, too, and the

right to make the article—including the right to make it in precisely the shape

it carried when patented—passes to the public.”

The Court further stated that the Supremacy Clause of the United States

Constitution prohibits states from “extend[ing] the life of a patent beyond its

expiration date or giv[ing] a patent on an article which lacked the level of

invention required for federal patents.”

The Court found that to do so

“would run counter to the policy of Congress of granting patents only to true

inventions, and then only for a limited time.”

The Court emphasized that

“[j]ust as a State cannot encroach upon the federal patent laws directly, it

cannot, under some other law, such as that forbidding unfair competition,

give protection of a kind that clashes with the objectives of the federal patent

laws.”

The second case, Compco, involved a similar set of facts as in Sears.

The article at issue in Compco, a light reflector, previously had been

protected by a design patent held by the senior party.

The junior party had

52. Id. at 226. The District Court held that the allegedly infringed patents were invalid. Id.

53. Id. at 227-28.

54. Id. at 231-32 (internal citation omitted).

55. Id. at 231.

56. Id. at 230 (internal citations omitted).

57. Id. at 231.

58. Id. (emphasis added).

59. Id.

60. See 376 U.S. 234 (1964). The District Court held that the design patent was invalid. Id. at 235.

2022 THE CONSTITUTION COMMANDETH 101

been held liable for unfair competition under Illinois law for having copied

the light reflector.

The Supreme Court took a step further and opined that

the unconstitutionality of the state law does not result only from its conflict

with federal patent policy by virtue of the Supremacy Clause,

but also due

to its collision with the limitations set forth in the Patent Clause itself, which

provides for time-limited property rights on novel intangible subject

matter.

The Supreme Court is not alone in concluding that the time-limited

property rights guaranteed by the Patent Clause cannot be overridden by state

laws. Scholars also have commented on such conflicts with the absolute time

limits for patents as established by Congress and commanded by the Patent

Clause.

As explained by a noted design patent specialist, Perry Saidman:

[T]he subject matter of an expired patent enters the public domain, and the

public has a right to copy it. Any attempt to claim…protection in the same

subject matter is void as against public policy. This respects the bargain

between the inventor, beneficiary of a 14 or 20 year monopoly on the

design or invention, and the public. When the patent monopoly is over,

it’s over, and no other law, state or federal, can be used to extract that

subject matter from the public domain.

During the next two decades, the Supreme Court may have seemed to

move away from the strict views it had embraced in Sears and Compco.

However, in 1989, the Court returned to the basic rationale

of Sears and Compco in Bonito Boats, Inc. v. Thunder Craft Boats, Inc.

that case, the Court revisited and reaffirmed the basic principle that “after

the expiration of a federal patent, the subject matter of the patent passes to

61. Id. at 234-35.

62. See supra note 6.

63. Id. at 237-38.

64. See Malla Pollack, Unconstitutional Incontestability? The Intersection of the Intellectual

Property and Commerce Clauses of the Constitution: Beyond A Critique of Shakespeare Co. v. Silstar

Corp., 18 Seattle U. L. Rev. 259, 274 (1995), explaining that:

Seemingly, if a separate constitutional phrase (1) includes a limit by negative implication, and

(2) this limit has not been interpreted out of the clause, Congress cannot by pass the limit

through the Commerce Clause. As discussed immediately below, the “limited times” provision

in the Intellectual Property Clause fills these requirements.

See also Anthony E. Dowell, Trade Dress Protection of Product Designs: Stifling the Progress of Science

and the Useful Arts for an Unlimited Time, 70 Notre Dame L. Rev. 137, 168 (1994), explaining that:

[T]he Patent Clause limits Congress’s power to grant monopolies. Congress may grant

monopolies only for a limited time…the right to copy unpatented inventions is rooted in the

Patent Clause. Accordingly, the federal trademark and unfair competition law may conflict with

not only the coequal patent laws but also the Constitution.

65. Perry J. Saidman, Kan TrafFix Kops Katch the Karavan Kopy Kats? or Beyond Functionality:

Design Patents are the Key to Unlocking the Trade Dress/Patent Conundrum, 82 J. Pat. & Trademark

Off. Soc’y 839 (2000).

66. See Goldstein v. California, 412 U.S. 546, 571 (1973) (analyzing the preemptive effects of the

federal copyright laws and upholding a state law prohibiting sound recordings); see also Kewanee Oil

Co. v. Bicron Corp., 416 U.S. 470, 491 (1974) (finding no preemption of state trade secret law by patent

law).

67. 489 U.S. 141 (1989).

102 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

the free use of the public as a matter of federal law.”

The Court again

addressed a state’s interference in the field of patent law, and struck down a

state statute prohibiting the use of a direct-molding process to closely copy

unpatented boat hulls. The Court’s decision is consistent with the

Sears/Compco doctrine and reaffirmed the public’s right to copy.

In Bonito Boats, the senior party developed a hull design for a fiberglass

recreational boat which was very favorably received by the boating

market.

However, that party never filed a patent application to protect

its design under federal patent laws. The junior party allegedly used the

senior party’s hull, which was publicly available, in a direct molding process

to duplicate its design and then sell the duplicates. The senior party sued the

junior party pursuant to the state ”plug molding” statute which made it

“unlawful to use the direct molding process to duplicate for the purpose of

sale any manufactured vessel.”

The critical issue for the Supreme Court

was whether the federal patent statute preempted the state ”plug molding”

statute.

The Court held that the state statute was preempted, explaining that “the

ultimate goal of the patent system is to bring new designs and technologies

into the public domain.”

Thus, state law protection for techniques and

designs that are already disclosed in the marketplace may conflict with the

very purpose of patent laws by decreasing the range of ideas and depriving

society of “the building blocks of further innovation.”

Moreover, “state

regulation of intellectual property,” the Court noted, “must yield to the extent

that it clashes with the balance struck by Congress in our patent

laws.”

Once “the public has paid the congressionally mandated price for

disclosure” of the invention, “the States may not render the exchange

fruitless by offering patent-like protection to the subject matter of the expired

patent.”

Once the patent monopoly has expired, “the thing formerly

covered by the patent becomes public property.”

And significantly, if a

publicly known design or utilitarian idea is unprotected by a patent, the

subject is in the same position as an expired patent.

Such protection by

the state would seriously interfere with the federal ”patent statute’s careful

68. Bonito Boats, Inc., 489 U.S. at 152 (citing Kellogg and Singer). The Bonito Boats Court added:

“For almost 100 years it has been well established that in the case of an expired patent, the federal patent

laws do create a federal right to ‘copy and to use.’” Id. at 165.

69. Id. at 144.

70. Id. at 144-45.

71. Id. at 153.

72. Id. at 151.

73. Id.

74. Id. at 152.

75. Id.

76. Id. (internal citation omitted).

77. Id.

2022 THE CONSTITUTION COMMANDETH 103

balance between public right and private monopoly to promote certain

creative activity.”

The Court observed that trade dress (i.e., product configuration) was a

potential type of protection that fell within the subject matter of design

patents.

While the Court made this connection, it stopped short of saying

that the broader doctrine of trademark protection can never be extended to

patentable subject matter; it also did not state that full trademark protection

should be afforded to patentable subject matter. The Court merely stated that

“limited regulations” and/or “some conditions” can be placed on the use of

patentable designs “in order to prevent consumer confusion as to source.”

Further, the Court explained that “we have consistently reiterated the

teaching of Sears and Compco that ideas once placed before the public

without the protection of a valid patent are subject to appropriation without

significant restraint.”

Indeed, other language in Bonito Boats suggests that there are strict and

narrow bounds to the restrictions that can be legally placed on the use of

patentable subject matter.

For example, the Court identified, as a matter of

federal policy, a “federal right to ‘copy and use’” the subject matter of an

expired patent.

Further, the Court indicated that a law that protects an

unpatented product from copying undermines the entire patent system:

A state law that substantially interferes with the enjoyment of an

unpatented utilitarian or design conception which has been freely

disclosed by its author to the public at large impermissibly contravenes the

ultimate goal of public disclosure and use which is the centerpiece of

federal patent policy.

Although this language expressly refers to state law, the reasoning of

the Court—including the underlying principle that publicly-known ideas

“are the tools of creation available to all” would appear to be equally

applicable to any federal law that “substantially interferes” with the use of a

utilitarian or design concept disclosed through a patent.

The Court

78. Id. at 167.

79. Id. at 154.

80. Id. at 154, 165.

81. Id. at 156 (emphasis added).

82. As properly presented by the successful Petitioners in TrafFix Devices, Inc. v. Marketing

Displays, Inc.:

[E]specially when a product is the subject of an expired patent, a legislature may not “prohibit

the copying of the article itself.” That would result in the sort of perpetual patent monopoly the

Framers expressly sought to preclude. In Bonito Boats, the Court reaffirmed this principle when

it observed that the statute at issue there, “[i]n essence, *** prohibit[ed] the entire public from

engaging in a form of reverse engineering of a product in the public domain.” That result

impermissibly “restrict[ed] the public’s ability to exploit” a product configuration within the

public domain. (internal citations omitted). U.S. Pet. Brief, supra note 36, at 34-35.

83. Bonito Boats, Inc., 489 U.S. at 165.

84. Id. at 156-57.

85. Id. at 156. The authors recognize and fully acknowledge that the Sears and Compco decisions

dealt with a state law vs. federal law conflict, and that states could not, because of the Supremacy Clause,

create their own patent or patent-like laws. In this regard, this Supremacy Clause line of cases, albeit

104 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

concluded that Sears had correctly found “that States may not offer patent-

like protection to intellectual creations.”

If the states were allowed to create

patent-like rights, they would disrupt the balance that Congress had created

and adhered to for over 200 years in the field of patent law.

In view of the Supreme Court cases discussed above, it is crystal clear

that patents grant limited monopolies and the public has a right to copy that

can only be temporarily denied. In this regard, the Court has consistently

concluded that when patent rights end, the public has the right to copy what

was previously protected by the patent. To this end, the public, including

any competitors, has full right to copy and use, if done without causing undue

risk of unfair competition in the form of likely confusion. As discussed

below in section V of this article, Congress has similarly guarded against the

stifling effects of permitting perpetual monopolies.

IV.

HISTORY AND PURPOSE OF DESIGN PATENTS

The original purpose of patent law was to protect the public from

unwarranted monopolies.

The framers of the Constitution, knowing the

importance of balancing free competition and government-sponsored

monopoly, empowered Congress to grant monopolies, but only “[t]o

promote the Progress of Science and the useful Arts” and then only for

“limited times.”

Thus, the Patent Clause is both a power granted to and a

limitation on Congress.

Under this framework, the standards of patentability are designed to

ensure that society benefits from the grant of a patent. In this regard,

Congress may not grant patent rights to inventions or designs that do not

relevant to the issue, does not dispose of the federal law vs. federal law conflict probed in further detail

below in section VII of this paper. Here is a brief and cogent introduction per the Petitioners in TrafFix:

Congress is no more free to use trademark law as a means of extending the patent monopoly than are the

States. The Lanham Act is a product of Congress’ Commerce Clause authority, not its patent power.

While potent, the Commerce Clause does not empower Congress to override the express limits in other

parts of the Constitution. See U.S. Const. art. I, § 8, cl. 3; College Sav. Bank v. Florida Prepaid Post-

secondary Educ. Expense Bd., 119 S. Ct. 2219, 2224 (1999); see also Gibbons v. Ogden, 22 U.S. (9

Wheat) 1, 196 (1824) (Commerce Clause “power, like all others vested in Congress, is complete in itself,

may be exercised to its utmost extent, and acknowledges no limitations, other than are prescribed in the

Constitution.”) (Marshall, C.J.) (emphasis added); North American Co. v. SEC, 327 U.S. 686, 704-705

(1946) (Commerce Clause power “is limited by express provisions in other parts of the Constitution”).

Thus, in establishing trade dress protection under Section 43(a) [of the Lanham Act], the Commerce

Clause does not empower Congress to establish what are, in essence, patent monopolies of unlimited

times. U.S. Pet. Brief, supra note 36, at 35.

86. Id. at 156.

87. See Graham, 383 U.S. at 7.

88. U.S. Const. art. I, § 8, cl. 8. The authors note and acknowledge that some patent practitioners

and academics do not view a patent as creating a monopoly - a concept that a person can patent an idea

and have complete ownership of the idea for a limited time. See supra note 40. Rather, patents provide

the owner with negative rights. In this regard, a patent provides its owner with the right to prevent others

from making, using, selling, or offering for sale, the same invention. With this understanding, many

operate under the misconception that getting a patent is equal to owning and controlling the market of its

sale. However, without a market and customers, a patent can never create a monopoly. While this view

is plausible, with a market and customers, a patent can certainly be used to facilitate a monopoly.

2022 THE CONSTITUTION COMMANDETH 105

meet specific standards of patentability. In order for society to benefit from

a design or functional invention, it must be a new, useful, and nonobvious

innovation.

An invention or design that is not new is already in the public

domain and not susceptible to private monopoly. The novelty and

nonobviousness requirements are necessary, according to Thomas Jefferson,

for “drawing a line between the things which are worth to the public the

embarrassment of an exclusive patent, and those which are not.”

While design patents and utility patents both find their origins in the

“Patent Clause,” historically, the “substantive requirements for design

patents were separate and distinct from their utility patent counterparts.”

In this regard, the early Patent Office commissioners had an enormous

impact on the development of the patent law and its practice, especially as it

related to design patents.

The merger of design and utility patent standards

to define the current era of design patent rules began in the Act of 1842.

The 1902 Act rang in the era of inventiveness and nonobviousness, which

has lasted until the present.

In this regard, the novelty and nonobviousness

requirements now are applied to both design and utility patent regimes.

The last major revision to the design patent laws occurred as part of the

larger Patent Act of 1952.

Under that statute, a design patent was granted

to “[w]hoever invents any new, original and ornamental design for an article

of manufacture.”

Additionally, this section incorporated a more restrictive

version of the catchall section, which provided: “The provisions of this title

relating to patents for inventions shall apply to patents for designs, except as

otherwise provided.”

Most importantly, the 1952 Act also codified the

89. See 35 U.S.C.S. §§ 101-03 (Current through Public Law 117-39, approved August 31, 2021)

90. Graham, 383 U.S. at 1, 9.

91. See Jason J. Du Mont, A Non-Obvious Design: Reexamining the Origins of the Design Patent

Standard, 45 Gonz. L. Rev. 531, 538 (2010) (explaining that it “was the compartmentalization of these

two regimes that kept the widespread rubric of invention in utility patents from spreading to designs.”).

92. See id. at 537.

93. See id. at 539-45.

94. See id. at 589-95.

95. Compared to utility patents, a determination of whether a design is obvious over the prior art

can be challenging. See, e.g., Campbell Soup Co. v. Gamon Plus, Inc., 939 F.3d 1335 (Fed. Cir. 2019)

(reversing the Board’s determination of obviousness based on the primary reference, but affirming

obviousness based on a secondary reference).

96. On Sept. 16, 2011, the Leahy-Smith America Invents Act (AIA) was passed by Congress, Pub.

L. No. 112-29, 125 Stat. 284 (2011), which made minor revisions to the design patent laws. One notable

change to design patents that resulted from the AIA was that the term of a design patent was increased to

15 years (from 14 years).

97. 35 U.S.C. § 171.

98. Id.

106 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

nonobviousness requirement in § 103

as a condition to patentability for all

patents.

100

While Congress was working to resolve the confusion surrounding the

design patent laws through the legislation discussed above, the PTO and

courts continued to struggle with the issue of functionality in design—often

referred to as the doctrine of functionality. This doctrine stems from 35

U.S.C. § 171, which requires that, to be patentable as a design, a design must

be “ornamental.”

101

Thus, the common understanding is that a design which

is “functional” cannot be “ornamental.”

102

Judicial in origin, the doctrine of

functionality arises in both design patent validity and infringement

analyses.

103

Today, design patents are not granted for designs that are

99. 35 U.S.C. § 103 states:

A patent for a claimed invention may not be obtained, notwithstanding that the claimed

invention is not identically disclosed as set forth in section 102, if the differences between the

claimed invention and the prior art are such that the claimed invention as a whole would have

been obvious before the effective filing date of the claimed invention to a person having

ordinary skill in the art to which the claimed invention pertains. Patentability shall not be

negated by the manner in which the invention was made.

100. Framed as a condition to patentability by the Patent Act of 1952, rather than the rubric of

invention, it is now clear that the nonobviousness requirement applies to both utility and design patents.

See Du Mont, supra note 91, at 535.

101. As explained by one commentator, “[d]esign patents were a recognition by Congress ‘that the

useful arts would be stimulated by that which appeals to the eye, and that protection should be granted to

those who create a pleasing design’.” Wayne A. Kalkwarf, The Commerce Clause Versus the Patent and

DEA 351, 384 (2014) (quoting Mark A.

LoBello, The Dichotomy Between Artistic Expression and Industrial Design: To Protect or Not to

Protect, 13 W

HITTIER L. REV. 107, 110 (1992)). Mr. Kalkwarf continued to explain that, “[t]he law

manifestly contemplates that giving certain new and original appearances to a manufactured article may

enhance its salable value, may enlarge the demand for it, and may be a meritorious service to the public.”

Id. at 385 (quoting Gorham Co. v. White, 81 U.S.511, 525 (1871)). Again, symbiosis is noted, plus

emphasis on the restriction of design patents to tangible products, which contrasts trade dress.

102. See Manual of Patent Examining Procedure § 1504.01(c), U.S.

PATENT & TRADEMARK OFFICE

(9th ed., rev. Aug. 2017).

103. See Andrew Beckerman-Rodau, Design Patent Evolution: From Obscurity to Center Stage, 32

ANTA CLARA COMPUTER & HIGH TECH. L.J. 53, 65 (2015) (citing 35 U.S.C. §171(d) and Bonito Boats,

Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148 (1989)), explaining that:

A functionality test is not expressly embodied in the statutory requirement for obtaining design

patent protection. Nevertheless, a judicially developed functionality test or limitation provides

courts with a method of assessing whether the subject matter of a design patent satisfies the

ornamental requirement. The Supreme Court stated that ‘a design must present an aesthetically

pleasing appearance that is not dictated by function alone.’ The aesthetic appearance necessary

to satisfy the ornamental requirement is not limited to designs that have a certain degree of

beauty such as might be found in the fine arts. Such a test would be highly subjective.

Consequently it would be difficult to draw a line between what is and is not beautiful or within

the category of fine art. To avoid this difficulty, courts have utilized the more objective standard

of functionality.

2022 THE CONSTITUTION COMMANDETH 107

“dictated by function alone.”

104

This doctrine, however, did not fully

develop until the patent code began to resemble its modern form.

105

ANTI-TRUST LEGISLATION

Throughout history, Congressional attitudes towards monopolies,

including monopolies created through the patent system, have been skeptical

at best.

106

While patent laws are some of the oldest and most fundamental

in our country, the Founders understood the threat of monopolies and

debated the concepts of patents and monopolies when drafting the

Constitution. For example, by the time he drafted the first patent act in

1793, Thomas Jefferson had come to tolerate limited monopolies on

inventions as a necessary evil to insure that “ingenuity should receive a

liberal encouragement.”

107

In this regard, the Constitution itself directly

empowers Congress to pass a patent statute, and it further provides Congress

with the authority to create the patent system to thereby minimize the

potential for monopolies by limiting the duration of time in which a patent

owner can enforce a patent against a competitor.

108

While Congress has

always been skeptical towards monopolies, Congress didn’t act on this

concern until after the Supreme Court’s holding in Pope Mfg. Co. v.

Gormully & Jeffery Mfg. Co.

109

In this case, the Court reprimanded litigants

who had obtained patents ”principally to forestall competition, rather than to

obtain the just rewards of an inventor.”

110

Witnessing this and the potential

for negative effects on free trade and commerce, Congress enacted the

104. See Du Mont, supra note 91, at 538 n.38, stating:

Today, de facto functionality simply means that the design performs a

function. Alternatively, de jure functionality is a legal conclusion that the article’s design is

“dictated by function alone,” and it is therefore ineligible for a design patent. (internal citations

omitted). When speaking of de jure functionality…the article’s design was dictated solely by

its function or by function alone. However, it is also commonly articulated as requiring the

design to be primarily non-functional. See, e.g., Rosco, v. Mirror Lite. Co., 304 F.3d 1373, 1378

(Fed. Cir. 2002); Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563, 1567 (Fed. Cir.

1996). While the Federal Circuit seems to use these terms synonymously (i.e., primarily and

solely functional), its locution could lead to different holdings. Id.

105. In 2011, Congress signed into law the Leahy-Smith America Invents Act (Pub. L. No. 112-29,

125 Stat. 284 (2011)), which made significant changes to the patent system, including: Patentable Subject

Matter, changing to a First-Inventor-to-File Priority System, Prior User Rights, Assignee Filing, Post-

Grant Review Proceedings, Public Participation in USPTO Procedures, USPTO Fees, Patent Marking,

and Best Mode. See Congressional Research Service Report, R42014, https://perma.cc/7FRV-8U8V.

106. See e.g., Michael R. Mattioli, The Impact of Open Source on Pre-Invention Assignment

Contracts, 9 U.

PA. J. LAB. & EMP. L. 207, 227 (2006).

107. Id. (quoting a Letter from Thomas Jefferson to Oliver Evans (May 2, 1807), in 11 The Writings

of Thomas Jefferson 202 (Andrew A. Lipscomb ed., Memorial ed. 1904)).

108. See U.S. Const. art I, § 8, cl. 8 (“The Congress shall have power … to promote the Progress of

Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to

their respective Writings and Discoveries[.]”).

109. 144 U.S. 254 (1892).

110. Id. at 260.

108 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

Sherman Act in 1890, which prohibited restraints of trade and attempts to

monopolize any part of interstate commerce.

111

However, around the beginning of the 20

century, through certain

decisions

112

Congress was again alerted to abuses of the patent laws by patent

holders seeking to overextend the reaches of their patent-granted

monopolies. In response, Congress passed the Clayton Act in 1914; this Act,

inter alia, prohibited the sale of patented goods on the condition that the

purchaser not use a competitor’s products if doing so substantially decreased

competition.

113

In addition to the Clayton Act, in 1914 the Federal Trade Commission

(“FTC”) was created by the Federal Trade Commission Act (“FTCA”).

114

The FTC’s mission is to “protect consumers and promote competition.”

115

Congress passed the FTCA “in response to widespread concern about the

growth and behavior of monopolies and cartels.”

116

The original FTCA

protected the marketplace by prohibiting “unfair methods of

competition.”

117

In 1938, Congress amended the FTCA to further prohibit

“unfair or deceptive acts or practices.”

118

With that amendment, the

consumer, along with business competitors, became a concern of the FTC.

In this regard, when the FTC determines that a company has violated the

prohibitions against “unfair methods of competition” or “unfair or deceptive

acts or practices,” it “shall issue . . . an order requiring such person,

partnership, or corporation to cease and desist from using such method of

competition or such act or practice.”

119

Following this amendment, and

111. See ch. 646, 26 Stat. 209 (1890); see also Ohio v. Am. Express Co., 138 S. Ct. 2274, 2283 (2018)

(explaining “[s]ection 1 of the Sherman Act prohibits ‘[e]very contract, combination in the form of trust

or otherwise, or conspiracy, in restraint of trade or commerce among the several States.’ 15 U. S. C. §1.

This Court has long recognized that, ‘[i]n view of the common law and the law in this country’

when the Sherman Act was passed, the phrase ‘restraint of trade’ is best read to mean ‘undue

restraint.’ Standard Oil Co. of N. J. v. United States, 221 U. S. 1, 59-60, 31 S. Ct. 502, 55 L. Ed. 619

(1911). This Court’s precedents have thus understood §1 ’to outlaw only unreasonable restraints.’ State

Oil Co. v. Khan, 522 U. S. 3, 10, 118 S. Ct. 275, 139 L. Ed. 2d 199 (1997)”).

112. E.g., Heaton-Peninsular Button-Fastener Co. v. Eureka Specialty Co., 77 F. 288, 296 (6th Cir.

1896) (holding that if the plaintiff obtained a monopoly on its unpatented fasteners via a patent,

“the monopoly in the unpatented staple results as an incident from the monopoly in the use of

complainant’s invention, and is therefore a legitimate result of the patentee’s control over the use of his

invention by others.”); Henry v. A. B. Dick Co., 224 U.S. 1 (1912) (holding that a patentee could achieve

a monopolist’s profits either by selling machines at a higher price or by extending his monopoly to

appurtenant products).

113. See Ch. 323, 38 Stat. 730 (1914) (codified as amended at 15 U.S.C. §§ 12-27 (1994)).

114. Chapter 311 of the 63rd Congress, 38 Stat. 717 (1914).

115. See Our History, F

EDERAL TRADE COMMISSION, https://www.ftc.gov/about-ftc/our-history (last

visited Oct. 7, 2021) [https://perma.cc/K9EP-VGDQ].

116. See Peter C. Ward, Restitution for Consumers Under the Federal Trade Commission Act: Good

Intentions or Congressional Intentions?, 41 A

M. U.L. REV. 1139, 1141 (1992).

117. Federal Trade Commission Act, ch. 311, § 5(a), 38 Stat. 717, 719 (1914) (current through Public

Law 116-91, approved December 19, 2019).

118. Wheeler-Lea Act of 1938, ch. 49, Pub. L. No. 75-447, 52 Stat. 111, 111 (1938) (amending

Federal Trade Commission Act, ch. 311, 38 Stat. 717 (1914)) (“Unfair methods of competition in or

affecting commerce, and unfair deceptive acts or practices in or affecting commerce are hereby declared

unlawful.”).

119. 15 U.S.C. § 45 (current through Public Law 116-91, approved December 19, 2019).

2022 THE CONSTITUTION COMMANDETH 109

generally from the 1930s through the present, antitrust law has viewed

patents as “problematic monopolies that should be curbed to the greatest

extent possible.”

120

Although Congress struck a balance with patent holders in the 1952

Patent Act, the tensions between Congress and patent holders largely

remained. These tensions again came to a head in the latter half of the 20

century and early part of the 21

century, beginning with the joint Justice

Department (DOJ) and FTC IP-Antitrust Guidelines of 1995.

121

These

guidelines provide that in most cases patent licensing agreements are to be

evaluated by weighing the pro-competitive and anticompetitive effects of

each agreement.

122

Thus, Congress’s attitude towards monopolies over the

years remains clear: while IP laws justifiably grant exclusive rights

or monopoly privileges to creators or inventors, the privileges are ultimately

beholden to public interests. Therefore, Congress has consistently seen the

need to limit the scope of monopolies to protect the interests of the public.

VI.

TRADEMARKS/TRADE DRESS

Trade dress is an extension of trademark law, having a judicial origin

that can be traced back through the history of trademark law and tort

common law.

123

Unlike patent law, trademark law is not rooted in the notion

of stimulating innovation. Like misappropriation, it is grounded in the law

of unfair competition and misrepresentation/deceit, where one merchant’s

actions threaten to deceive the customers of another into mistaking the true

source of the junior merchant’s goods or services.

124

In this regard,

trademarks and trade dress are source identifiers. Defined generally, trade

dress is the overall image or appearance used to identify the source of a

product or service to purchasers.

125

Although historically trade dress has

been less recognized than traditional trademarks and service marks per

se, trade dress serves the same function of identifying the origin of its

owners’ goods and services and distinguishing these goods and services from

those of others.

126

To qualify as trade dress for purposes of protection under

120. Alden F. Abbott, The evolving IP-antitrust interface in the USA - the recent gradual weakening

of patent rights, J.

ANTITRUST ENFORCEMENT 2(2), 363, (2014).

121. US Department of Justice and US Federal Trade Commission, Antitrust Guidelines for the

Licensing of Intellectual Property (1995 Guidelines).

122. See id.

123. See Kenneth B. Germain, Unfair Trade Practices Under Section 43(a) of the Lanham Act:

You’ve Come a Long Way, Baby–Too Far, Maybe?, 49 I

ND. L.J. 84, 85-87 (1973).

124. See id. at 97.

125. See Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 209-10, 120 S. Ct. 1339, 1342-43 (2000);

see also Two Pesos, 505 U.S. at 764 (1992) (describing trade dress of a product as “essentially its total

image and overall appearance.”).

126. See Wal-Mart Stores, 529 U.S. at 209-10.

110 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

Section 32 or Section 43(a) of the Lanham Act, a product must be (1) a

distinctive indicator of origin and (2) nonfunctional.

127

At the outset, the goal of trade dress protection was to prevent obvious

acts of piracy where one manufacturer would “dress” its product like that of

another manufacturer (e.g., copy a competitor’s label), attempting to deceive

consumers into mistakenly purchasing goods from a different maker.

128

However, by the late nineteenth century, courts began to recognize that it

was necessary to protect against not only the approximation of a brand label,

but also the mimicking of product packaging and unique product designs.

129

In light of this increasing need to prevent close copying and piracy, state law

principles for protection began to evolve. In this regard, most early trade

dress cases during the late nineteenth and early twentieth centuries addressed

only the protectability of wholly nonutilitarian label designs.

130

For

example, one early court recognized the availability of relief on a showing

that “the defendant fraudulently, deceitfully, and with the intent to injure [the

plaintiff’s] business … simulated [the plaintiff’s] wrappers, and thus

deceived the public into buying large quantities of the spurious [product] as

the genuine.”

131

Similarly, another very early court concluded that equity

would enjoin use of the elements making up packaging “when all, or a

number of them, are combined … and so arranged and exhibited that when

they strike the eye of the intending purchaser, possessed of ordinary

intelligence and judgment, the false impression is likely to be produced that

the goods of the plaintiffs are offered.”

132

To this end, a defendant becomes

liable when its use of a mark creates “a likelihood of confusion” about

whether the plaintiff is affiliated or associated with the defendant, or whether

the plaintiff originated, sponsored, or approved of the defendant’s

goods.

133

The early emphasis on fraudulent conduct was modified;

modernly, it matters not whether the defendant created or threatened

confusion intentionally or accidentally.

134

Federal statutory protection for trade dress emerged in 1946 in the guise

of Section 43(a) of the Lanham Act.

135

However, when enacted, the Lanham

127. See id.

128. See Stephen F. Mohr et al., U.S. Trade Dress Law, Exploring the Boundaries (Int’l Trademark

Ass’n eds., 1997).

129. See id.

130. See, e.g., Isador Straus v. Notaseme Hosiery Co., 240 U.S. 179, 180 (1916) (use of

nonfunctional design held confusingly similar to federally registered mark).

131. M. A. Thedford Med. Co. v. Curry, 96 Ga. 89, 93, 22 S.E. 661, 663 (1895).

132. Fisher v. Blank, 33 N.E. 1040, 1041 (N.Y. 1893).

133. See 15 U.S.C. § 1114(1)(a) (imposing trademark liability when defendant uses a registered mark

“likely to cause confusion”); see also, regarding unregistered marks, 15 U.S.C. § 1125(a) (2020).

134. J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS § 23:106 (4th ed. 2005) (“The modern

rule at common law is that the issue of infringement of any kind of trade symbol . . . is determined solely

by the likelihood of confusion test.”); id. at § 23:107 (noting that intent to deceive is not an element of

the federal cause of action for trademark; trademark is a “no-fault” tort).

135. See Davis Jr. supra note 13, at 605-06 explaining how “courts hearing unfair competition and

trade dress cases did not create a separate body of federal law, but instead relied equally upon state and

2022 THE CONSTITUTION COMMANDETH 111

Act was not the expansive statute it is today, and it has a long history of

evolution.

136

The Lanham Act has become the main vehicle for protecting

trade dress protection today.

137

Various amendments to the Lanham Act

confirmed that protection had become available not only for registered

trademarks, but also for unregistered trademarks and trade dress of various

types.

138

While trade dress has a long history of clashing with utility patents, the

focus of the instant article is on the ornamental and nonfunctional aspects of

design patents and trade dress. To this end, some argue that the protections

offered by design patents and trade dress serve unique and separate

functions, for both the public and the owner of the intellectual property.

139

However, in practice, the line is very blurred. Essentially, both design

patents and trade dress protection give the owner the right to prohibit another

party from intruding upon its legal rights and to prevent them from using its

federal precedents.” Further explaining that, “[a]s late as the Trademark Act of 1905…the federal cause

of action for infringement extended only to marks registered with the Commissioner of Patents… the

Trademark Act of 1920 recognized for the first time a cause of action against the infringement of

unregistered ‘designations of origin’ (rather than merely of word marks), it nevertheless offered little

guidance on the subject of what might qualify for protection” (footnotes omitted).

136. See Germain, supra note 123, at 109-12, explaining how “[e]arly interpretations of § 43(a) were

[quite] conservative. They either restricted § 43(a) to actions for passing-off or confined its effect to

‘include only such false descriptions or representations as are of substantially the same economic nature

as those which involve infringement or other improper use of trade-marks,’” and further explaining how

the law evolved through court decisions which “sounded the death knell for the single-source rule, and

signaled the birth of a new federal law of unfair competition.” (internal citations omitted).

137. The Lanham Act has its basis in the Commerce Clause, U.S. Const. art. I, §8, cl. 3, which grants

Congress the authority to regulate “commerce” – widely defined – which includes trademark, trade name,

and trade dress. As explained by Pollack, supra note 64, at 298-99:

The idea of using the Commerce Clause to expand Congressional power over intellectual

property is not new. The [Supreme] Court alludes to this power as early as the Trade-Mark

Cases in 1879. Congress eventually followed the Court’s suggestion by linking the Lanham

Act, the federal trademark statute, to “all commerce which may lawfully be regulated by

Congress.” Perhaps in an excess of caution, Congress has rested several pieces of intellectual

property legislation, at least in part, on the Commerce Clause. None of these, however, suggest

Congress believes that by legislating under the Commerce Clause, it can by pass the “limited

times” provision of the Intellectual Property Clause. No court has yet ruled on the

constitutionality of federal intellectual property legislation under the Commerce Clause. While

several authors have argued the constitutionality or constitutional basis of Congressional action

in this field under the Commerce Clause, no one has raised any argument undermining the

Intellectual Property Clause time limit requirement.

138. See Bonder supra note 40, at 12-13 (2004) (citations omitted), explaining that:

Section 43(a) of the Lanham Act was amended November 16, 1989 to provide for a cause of

action to four categories of statements: (1) “any word, term, name, symbol, or device, or any

combination thereof;” (2) “any false designation of origin;” (3) a “false or misleading

description of fact;” and (4) a “false or misleading representation of fact.” The amended version

of section 43(a) added causes of action for false and misleading trademarks and

false advertising. This section also provides protection for trade dress infringement. In

summary, a successful claim for trade dress infringement under 43(a) requires the plaintiff to

establish three elements: (1) that the trade dress has the requisite distinctiveness and, if

necessary, secondary meaning; (2) that it is nonfunctional; and (3) that the defendant has created

a likelihood of confusion among the public as to the source of the product.

139. See id. at 8; see also Ronald J. Horta, Without Secondary Meaning, Do Product Design Trade

Dress Protections Function as Infinite Patents?, 27 S

UFFOLK U. L. REV. 113, 128 (1993) (explaining that

“[t]he stated purposes of design patents and trade dress are very different and no overlap exists between

the two. No authority states that patented designs indicate the source of a product and no authority holds

that trade dress protections are rewards for innovation.”).

112 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

design. As discussed above, design patents only cover ornamental designs

embodied in “articles of manufacture” and, by definition, the ornamentation

embodied in useful objects.

140

In comparison, trademark law, including the

Lanham Act, is not designed to encourage creativity and invention; rather, it

aims to prevent consumer confusion regarding the source of products and

prevents free riding on the good will that trademark owners have built. Thus,

trade dress is premised upon a distinctive, non-functional identification of

the source of a product. However, the effect on competition is the same for

design patent or trade dress infringement: both provide an owner with a cause

of action to prohibit another from using its design, but for very different

purposes (i.e., ornamental re useful object vs. “source”). The net result of

trade dress protection is virtually infinite protection for designs—extending

any patent rights and monopoly well beyond the statutory period expressly

required by the Patent Clause of the Constitution. Accordingly, the

extension of design patent protection through trade dress protection may

interfere with the right to copy guaranteed by the Constitution, which

includes designs that are unpatented but would otherwise qualify for design

patent protection.

141

Extending such rights threatens to leave the language of

the Patent Clause without effect.

142

This is contrary to the purpose of the

Constitution and violates critical canons of constitutional construction.

VII.

THE CONSTITUTIONAL CONFLICT

For protection of product designs, trade dress and design patents have

significant overlap, not only with respect to the subject matter, but also

regarding the tests for validity and infringement. Some argue that design

patents and trade dress protection are intended to serve unique and separate

functions, for both the public and the owner, and the existence of design

patent rights is independent of the ownership of trademark rights.

143

140. Useful articles are those which have “an intrinsic utilitarian function that is not merely to portray

the appearance of the article or to convey information.” 17 U.S.C. § 101 (Definitions).

141. Trade dress protection for such designs ignores the one-year statutory bar under 35 U.S.C. §

102(b).

142. As propounded by the successful Petitioners in TrafFix:

Nor is there any indication that in establishing national trademark protection, Congress sought

to disrupt the “carefully crafted bargain” underlying the patent system.… Extending federal

trade dress protection to product configurations that are the subject of expired patents would

deprive the public of the benefit of its bargain and effectively repeal that venerable federal

right. U.S. Pet. Brief, supra note 36, at 28.

143. See David S. Welkowitz, Trade Dress and Patent – The Dilemma of Confusion, 30 R

UTGERS

L.J. 289, 306 (1999), explaining that:

It is not the function of trademark to protect designers against copying per se. Properly

understood, the function of trademark law is to protect the reputation of the mark owner and to

provide accurate information to potential purchasers. It is not to give exclusive property rights

in an object to its maker. This is the difference between a true intellectual property right (which

gives exclusionary rights to the owner) and protection against unfair competition (which seeks

to make sure that the competitive market operates properly).

2022 THE CONSTITUTION COMMANDETH 113

However, the Federal Circuit, in Apple Inc. v. Samsung Elecs. Co.,

144

pointed

out that Ninth Circuit law acknowledges significant differences between the

policies and purposes of trademark/trade dress law, on the one hand, and

patent and copyright laws, on the other hand, stating:

The protection for source identification… must be balanced against “a

fundamental right to compete through imitation of a competitor’s product

. . . .” This “right can only be temporarily denied by the patent or copyright

laws.” In contrast, trademark law allows for a perpetual monopoly and its

use in the protection of “physical details and design of a product” must be

limited to those that are “nonfunctional.”

145

In closing this discussion, the court paused to clarify what it had not

considered:

Because we conclude that the jury’s findings of nonfunctionality of the

asserted trade dresses were not supported by substantial evidence, we do

not reach [Defendant’s] arguments on the fame and likely dilution of the

asserted trade dresses, the Patent Clause of the Constitution, or the dilution

damages.

146

At least one commentator has come to a similar conclusion regarding

the differences in trademark/trade dress law and design patent law as a result

of the policies underlying each type of protection, concluding that, “[i]t is

evident that limited trade dress protection can be provided for expired patent

features without violating patent law principles or undermining trade dress

law objectives.”

147

In formulating these assertions, the commentator

focused on the underlying policies of the Patent and Lanham Acts, claiming

that each serves a distinctly different purposes and, as a result, no conflict

exists.

148

However, the authors of the instant article now assert that the

underlying policies, albeit arguably different, cannot save trade dress

protection that has been acquired for a product configuration previously

protected by an expired design patent from violating the “Limited Times”

provision of the Patent Clause.

For some, this policy argument is rooted in the Tenth Circuit’s holding

in Vornado Air Circulation Sys. v. Duracraft Corp.,

149

where the court

opined that, where patent law and trade dress law intersect, the policies of

144. 786 F.3d 983 (Fed. Cir. 2015) (reversed and remanded by Samsung Elecs. Co. v. Apple Inc., 137

S. Ct. 429 (2016) on grounds unrelated to the Federal Circuit’s statement regarding trade dress). The

Court reversed the Federal Circuit, stating that, “[t]he Federal Circuit’s narrower reading of ‘article of

manufacture’ cannot be squared with the text of § 289.” Id. at 435-36.

145. Id. at 991 (internal citations omitted) (emphasis added).

146. Id. at 996 (emphasis added).

147. Michael S. Perez, Reconciling the Patent Act and the Lanham Act: Should Product

Configurations Be Entitled to Trade Dress Protection After the Expiration of a Utility or Design Patent?,

4 T

EX. INTELL. PROP. L.J. 383, 413 (1996). But note that this view was expressed before the modern era

of Wal-Mart (U.S. 2000), and that it totally failed to consider any possible constitutional conflict.

148. See id. at 403 (explaining that the purpose of the Patent Act is, “primarily to stimulate further

invention and to permit the public to practice the invention once the patent expires,” compared to the

primary purpose of the Lanham Act, which is “to prevent consumer confusion in the marketplace due to

false or misleading marks.”) (internal citations omitted).

149. 58 F.3d 1498, 1500 (10th Cir. 1995).

114 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

both federal statutes must be balanced “in a way that preserves the purposes

of both and fosters harmony between them.”

150

Twenty odd years later, the

Seventh Circuit came to a similar conclusion in Arlington Specialties, Inc. v.

Urban Aid, Inc.,

151

stating:

Because trademark protection for trade dress has no time limit, giving one

competitor a perpetual and exclusive right to a useful product feature

would result in a perpetual competitive advantage. “The Lanham Act does

not exist to reward manufacturers for their innovation in creating a

particular device; that is the purpose of the patent law and its [limited]

period of exclusivity.”

152

However, and like the holding in Vornado Air, such arguments fail to

address the constitutional conflict of allowing trade dress protection for

expired patent features as a result of patent law’s specific statutory scheme

rooted in the Constitution. In particular, keep in mind that the Patent Clause

of the Constitution mandates that Congress grant monopolies only for limited

times to inventions or designs that meet specific standards of patentability.

153

As explained by Professor Malla Pollack, “[t]he [Patent/Copyright] Clause

of the Constitution, even read with the Commerce Clause, prevents Congress

from giving authors or inventors exclusive rights unbounded by premeasured

time limitations.”

154

Moreover, the views set forth above by commentators, such as Mr.

Perez, were made pre-2000, before the modern era of Wal-Mart Stores v.

Samara Bros.

155

, TrafFix Devices, Inc. v. Marketing Displays, Inc.

156

, and

Dastar Corp. v. Twentieth Century Fox Film Corp.

157

In summary, as

discussed in further detail below, these modern-era cases represent a

paradigm shift in the Supreme Court’s treatment of trademarks as a species

of intellectual property. As explained by Professor David Welkowitz, these

cases suggest:

First…that WalMart was the beginning of a paradigm shift in trademark

law. Second, some of the lower courts have not fully implemented this

new paradigm, perhaps in part because they do not recognize it, perhaps

in part out of habit, or perhaps in part because they are accustomed to

developing trademark law on their own, with the Supreme Court operating

largely in the background. Third, the new paradigm could lead to a

150. Id. at 1507.

151. 847 F.3d 415 (7th Cir. 2017).

152. Id. at 418 (quoting TrafFix, 532 U.S., at 34). In affirming the District Court, the Seventh

Circuit’s opinion was full of philosophical explanations such as these:

This feature of trademark law presents both an opportunity for producers and a potential threat

to consumers. Other forms of federal intellectual property — patents and copyrights — come

with time limits, after which competitors and the public are free to copy the protected item.

Trademark protection does not expire, though, as long as the protected mark is being used in

commerce to designate the origin of a product. Id.

153. See supra note 2 and accompanying text.

154. Pollack, supra note 64, at 260.

155. 529 U.S. 205, 210 (2000).

156. 532 U.S. 23 (2001).

157. 539 U.S. 23 (2003).

2022 THE CONSTITUTION COMMANDETH 115

reexamination of recent extensions of trademark law that tend to treat

trademark less like unfair competition and more like property.

158

Wal-Mart addresses one of the latest developments in trademark law,

namely, the use of the design of a product itself as a trademark. Then, in

Dastar, the Court made statements to the effect that federal law recognizes

a right to copy. For example, the Court declared broadly that the “right to

copy . . . passes to the public” upon expiration of a patent.

159

Following this,

the Court quoted a passage from TrafFix, cautioning against the “‘misuse or

overextension’ of trademark and related protections into areas traditionally

occupied by patent or copyright.”

160

The Court returned to The Trade-Mark

Cases to note that “[f]ederal trademark law ‘has no necessary relation to

invention or discovery,’” thus, accentuating the separation of trademark from

other intellectual property.

161

However, in practice, the line is blurred, and there is no statutory

guidance or specific provision to make it clear whether a design should be

protected as either a design patent or trade dress, or both.

162

Professor David

Welkowitz has explained the practical overlap between design patent

protection and trade dress protection:

[E]ven a cursory examination of the elements of trade dress infringement

for product configurations and the elements of design patent infringement

reveals marked similarities. These similarities suggest that current trade

dress law has crossed over the line separating patent protection from trade

dress protection. The task here is to cut through the rhetoric of what the

laws are supposed to protect and to focus on what they actually protect. A

closer examination reveals a true similarity in the actual operation of these

two sets of laws. This invites further suspicion that trademark has intruded

improperly into patent law.

163

Welkowitz goes on to conclude that:

[T]he facets of trademark law touted as distinguishing the two—the

requirements of distinctiveness, likelihood of confusion, and non-

functionality—in the end do not do enough to preclude courts from

enjoining the simple act of copying another’s non-patented design (or a

design whose patent has expired). Second, the elements of infringement

under both design patent and trade dress law look for similar things, and

ask similar questions. This further indicates a confluence, rather than a

separation, of the two forms of protection.

164

Furthermore, courts often have struggled when attempting to harmonize

trade dress and design patent protection for product design. In this regard, it

158. David Welkowitz, The Supreme Court and Trademark law in the New Millennium, 30 WM.

MITCHELL L. REV. 1659, 1687 (2004).

159. 539 U.S. at 33.

160. Id. at 34 (citing to TrafFix, 532 U.S., at 29).

161. Id.

162. This is unlike the functionality doctrine that rejects trade dress protection for functional designs

and steers such designs toward utility patents. See 1 J

EROME GILSON & ANNE GILSON LALONDE, GILSON

TRADEMARKS § 2A.10 (2019).

163. Welkowitz, supra note 143, at 343.

164. Id. at 357.

116 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

has been common practice for courts to assert that design patents and

trademarks protect different things and, as such, there is little likelihood of

interference with each other’s core values.

165

As discussed above—and

unsatisfactorily—these discussions seldom go beyond this conclusory

assertion, which is inappropriate.

166

For example, in Groeneveld Transp.

Efficiency, Inc. v. Lubecore Int’l, Inc.,

167

the majority

168

emphatically

expressed its policy orientation, namely to “reaffirm that trademark law is

designed to promote brand recognition, not to insulate product

manufacturers from lawful competition.”

169

In so doing, the majority stated:

A manufacturer who desires protection against copying must satisfy the

requirements of protectability under the copyright or patent regimes and

must also submit itself to the limited time periods of protection afforded

under those regimes. Those requirements and their attendant restrictions

incentivize valuable artistic and scientific creations while ensuring that the

social costs of monopoly are contained within reasonable bounds.

170

The majority starkly contrasted the property-based protections derived from

the Patent Clause from the deceit-based protection based on unfair

competition principles:

The clear import of the twin principles that copying in the absence of

concern of trademark law is not about copying per se but about copying

that engenders consumer confusion, is that the appropriate “intent” to

165. See e.g., In Re Mogen David Wine Corp., 328 F.2d 925, 929 (C.C.P.A. 1964); Zip Dee, Inc., v.

Domestic Corp., 931 F. Supp. 602, 606 (N.D. Ill. 1996); Herman Miller, Inc. v. A. Studio S.R.L., No.

1:04-CV-781, 2006 U.S. Dist. LEXIS 59210, at *49-50 (W.D. Mich. Aug. 22, 2006); In re Yardley, 493

F.2d 1389, 1394 (C.C.P.A. 1974); Ferrari S.P.A. Esercizio Fabriche Automobili E Corse v. Roberts, 944

F.2d 1235, 1240 (2d Cir. 1991); Kohler Co. v. Moen, Inc., 12 F.3d 632, 638-39 (7th Cir. 1993); Mech.

Plastics Corp. v. Titan Techs., Inc., 823 F.Supp. 1137 (S.D.N.Y. 1993); Winning Ways, Inc., v. Holloway

Sportswear, Inc., 903 F.Supp. 1457, 1461 (D. Kan. 1995); Hubbell Inc. v. Pass & Seymour, Inc., 883

F.Supp. 955, 959 (S.D.N.Y. 1995); Topps Co. v. Gerrit J. Verburg Co., 1996 U.S. Dist. LEXIS 18556

(S.D.N.Y. Dec. 12, 1996); Ashley Furniture Indus. v. Sangiacomo N.A., 187 F.3d 363, 376-77 (4th Cir.

1999).

166. As explained by Moshe Bonder:

Trade dress law is not intended to provide exclusive property rights, nor should it be used in

this manner. In recognizing the differences between the two acts courts have consistently

identified three principles in developing a workable distinction. “First, courts have asserted that

[the acts aim to] protect different [items] and therefore there is little likelihood of interference

with each other’s core values. Unfortunately, [this argument] seldom goes much beyond the

assertion.” Second, courts without exception have held that when a feature is functional it is

not entitled to trade dress protection; this requirement is a distinguishing element not required

in patent law. Third, where courts have asserted a requirement to establish confusion in

maintaining a trade dress action, it has resulted in an important separation from the

requirements of design patent infringement. Bonder, supra note 40, at 23-24.

167. 730 F.3d 494 (6th Cir. 2013).

168. Id. at 521 (Judge Helene N. White dissented, arguing that the majority’s articulation of the key

issue presented framed the issue on appeal “in a manner that assumes the very issues to be considered –

whether the trade dress is functional and whether there is a reasonable likelihood of confusion—without

any acknowledgement that reasonable inferences to the contrary not only exist but were accepted by a

jury and the district court”).

169. Id. at 500.

170. Id. at 512.

2022 THE CONSTITUTION COMMANDETH 117

focus on is not the intent to copy but rather the intent

to deceive or confuse.

171

For purposes of validity, design patents protect the “new, original and

ornamental design for an article of manufacture.”

172

An ornamental design

can be surface ornamentation on an article of manufacture, the configuration

of an article of manufacture, or a combination of both.

173

An article of

manufacture, unlike the subject of copyright protection, must necessarily

serve a utilitarian purpose.

174

The test for infringement of a design patent is

the ordinary observer test, which the Supreme Court historically described

as follows:

[I]f, in the eye of an ordinary observer, giving such attention as a purchaser

usually gives, two designs are substantially the same, if the resemblance

is such as to deceive such an observer, inducing him to purchase one

supposing it to be the other, the first one patented is infringed by the

other.

175

Prior to Egyptian Goddess v. Swisa,

176

the test for design patent

infringement was a two-part inquiry. However, the ruling in Egyptian

Goddess removed the second, more difficult, requirement that the design

meet a “point of novelty” test.

177

As a result of the point-of-novelty test

being removed, the ordinary-observer test became the sole test for

infringement.

178

Under the ordinary observer test, the factfinder need only

determine that the ordinary observer is likely to be deceived

179

into buying

one product thinking it to be another for a finding of infringement.

180

The

Federal Circuit, in Apple Inc. v. Samsung Elecs. Co.,

181

clarified the

171. Id. at 514.

172. 35 U.S.C.S. § 171(a) (Current through Public Law 117-39, approved August 31, 2021)(For a

design to be patentable, this section requires that a design be “original”); M.P.E.P. § 1504(d) (“a design

which simulates an existing object or person is not original as required by the statute”); Id. (“a design for

an article which simulates a well known or naturally occurring object or person should be rejected under

35 U.S.C. 171 as nonstatutory subject matter in that the claimed design lacks originality”) (For example,

the CCPA in In re Smith, 25 U.S.P.Q. 359, 360 (C.C.P.A. 1935), stated that “to take a natural form, in a

natural pose, . . . does not constitute invention,” when affirming the rejection of a claim to a baby doll).

173. See Gorham Co. v. White, 81 U.S. 511, 525 (1871); In re Blum, 374 F.2d 904, 907 (C.C.P.A.

1967).

174. See L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F. 2d 1117, 1123 (Fed. Cir. 1993).

175. See Gorham Mfg. Co., 81 U.S. at 528 (emphasis added); see also Egyptian Goddess, Inc. v.

Swisa, Inc., 543 F.3d 665, 683 (Fed. Cir. 2008) (reaffirming the use of the ordinary observer test as the

standard for design patent infringement).

176. 543 F.3d 665, 671 (Fed. Cir. 2008).

177. Id. at 668.

178. Id.

179. Id. at 670-71 The authors note that “likelihood,” not actual deception (whether intentional or

not), is a common characteristic of trademarks and, more particularly, trade dress. Contrast this with

design patents, in which actual deception is not a relevant consideration for infringement).

180. See Apple, Inc. v. Samsung Elec. Co., Ltd., 786 F.3d 983, 999-1000 (Fed. Cir. 2015) (holding

that Apple was not required to show that any Apple customers were actually deceived into buying a

Samsung phone thinking that it was an Apple phone, but that the phones were so substantially similar

that it was likely that the ordinary observer would be deceived). See supra note 144, rev’d, Samsung

Elecs. Co. v. Apple, Inc., 137 S. Ct. 429 (2016) (reversed and remanded on other grounds).

181. 786 F.3d 983 (Fed. Cir. 2015), rev’d, Samsung Elecs. Co., 137 S. Ct. at 435-36 (on grounds

unrelated to the court’s statement regarding actual deception and the ordinary observer test).

118 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

deception consideration for the ordinary observer test; the court explained

that actual deception is not a requirement for a finding of design patent

infringement, and that the ordinary observer test set forth in Gorham Co.

only requires a finding that an “ordinary purchaser would be likely to mistake

the [accused] designs for the [patented design].”

182

However, in a

subsequent case, Lanard Toys, Ltd. v. Dolgencorp LLC,

183

the Federal

Circuit deemphasized focus on consumer deception and clarified that the

ordinary observer test should consider element-by-element distinctions

between the patented design and the prior art, and between the patented

design and the accused product.

184

In any event, some argue that “[u]sing

consumer deception as the lynchpin to the finding of [design patent]

infringement unmoors the infringement analysis from protecting the

innovative aspects of designs and instead hinges protections on the consumer

of the product.”

185

Indeed, protection through the lens of the consumer is

more consistent with the goal of trademark law than design patent law.

186

Moreover, by focusing the infringement analysis on the consumer, courts

have interwoven the trademark objectives into the design patent

infringement test.

187

Tying the infringement analysis to deception of the

ordinary consumer pushes design patents into the waters of trade dress

protections, resulting in increased overlap between the two means for

protecting product designs.

As discussed above, trade dress protects “the total image and overall

appearance of a product or business as reflected in such features as size,

shape, color or color combinations, design of a label, texture, graphics or

sales techniques.”

188

Generally, trade dress protection includes the

packaging or design of a product. At least formally, trade dress protection

for product designs follows the structure of other trademark and trade dress

analyses, as set forth by the Supreme Court in Wal-Mart.

189

First, the design

must be a “distinctive” source identifier

190

, which can be demonstrated in

either of two ways: by showing that the design is “inherently distinctive” or

182. Id. at 1000 (citing Gorham, 81 U.S. at 530).

183. 958 F.3d 1337 (Fed. Cir. 2020).

184. See id. at 1343. The court further explained that:

[T]he district court struck the correct balance of considering the ornamental aspects of the

design while remaining focused on how an ordinary observer would view the overall design.

See Richardson, 597 F.3d at 1295 (“[The court] recited the significant differences between the

ornamental features of the two designs but, in determining infringement, it mainly focused on

whether an ordinary observer would be deceived into thinking that any of the [accused] designs

were the same as [the] patented design”). Id. at 1344.

185. Carl J. Hall, A Patently Offensive Test: Proposing Changes to the Test for Design Patent

Infringement, 53 V

AL. U.L. REV. 297, 328 (2018).

186. Id.

187. Id.

188. Joel W. Reese, Defining the Elements of Trade Dress Infringement under Section 43(a) of the

Lanham Act, 2 T

EX. INTELL. PROP. L.J. 103, 104 (1994).

189. 529 U.S. 205, 210 (2000).

190. Id.

2022 THE CONSTITUTION COMMANDETH 119

by showing that the design has “acquired distinctiveness” (a.k.a “secondary

meaning”).

191

If the design is distinctive, a plaintiff must show that there is

a likelihood of confusion (of goods, source, sponsorship or approval)

between its trade dress and the trade dress of another, and that the design is

nonfunctional.

192

However, it is important to note that the issue of when

trade dress can be considered inherently distinctive, and when it requires

secondary meaning, has been addressed in Wal-Mart.

193

The Court

determined that when a trade dress is found in the packaging of a product the

trade dress might be inherently distinctive, but when the trade dress in

question is of the product design or configuration itself, secondary meaning

is required.

194

In view of Egyptian Goddesss, the tests for trademark infringement and

design patent infringement both appear to involve questions of consumer

perception.

195

To this end, trade dress is infringed if a similar design is

“likely to cause confusion, or to cause mistake, or to deceive.”

196

The

primary, and often exclusive, test for determining likelihood of confusion is

the similarity of the designs. Although packaged slightly differently, when

viewed from the perspective of a lay juror, the determination of the

likelihood of consumer confusion for both design patent infringement and

trade dress infringement is essentially one in the same. Thus, under both

design patent and trademark law, a firm may prevent competitors from using

designs that are likely to cause confusion and/or deception.

The infringement tests are not the only area of overlap between design

patent and trade dress protections for product design: the subject matter is

equally comparable.

197

The most obvious similarity between design patent

law and trade dress law is that both are aimed at protecting non-functional

features. Additionally, similarities also exist in the requirements for

qualifying for protection under both doctrines. The distinctiveness

requirement for trade dress and the nonobviousness and novelty

requirements for design patents are akin in that both measure the amount of

singularity the claimant needs to attain protection. Therefore, it is evident

191. Id.

192. Id.

193. Id. at 216.

194. See id.

195. See Gerard N. Magliocca, Ornamental Design and Incremental Innovation, 86 M

ARQ. L. REV.

845 (2003) (stating that both “trademark and design patent infringement focus on the commercial impact

of the competing works”).

196. Lanham Act § 43(a), 15 U.S.C. § 1125(a) (2020). Also, §32 regarding registered marks.

197. In this regard, section 43(a) of the Lanham Act significantly broadened the availability of

trademark-type protection for product designs beyond protection for designs actually registered and thus

protectable under 32(1). This also complicated the Compco phrase “or other federal statutory protection”.

See generally Germain, supra note 123. Whereas Compco (and Sears) both applied to federal law versus

state law conflicts, resolvable via the Supremacy Clause, once trade dress became federalized, via

registration or even section 43(a) of the Lanham Act, the conflict became federal law versus federal law,

and there the Supremacy Clause is no help at all. Thus enters the concept of Superfluity, as will be

explained in further detail below.

120 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

that both the Lanham Act and the Patent Act actually provide similar

protection for similar subject matter. As a result, trade dress protection of

product designs has the potential for undermining the goals of the Patent Act

by extending a patentee’s monopoly on a particular design beyond the

absolute time limits established by Congress and commanded by the Patent

Clause. One commentator points out some salient similarities and

dissimilarities between trade dress and design patents, stating:

Because the trade dress and design patent protection are arguably nearly

identical following Egyptian Goddess, allowing the overlap of protection

would essentially create an extended right. This rights overlap is

particularly troublesome because together they cancel out each other’s

limitations. Trade dress protection for product design requires that

secondary meaning be established before the protection attaches, a burden

much lessened by the immediate protection a design patent grants. Design

patents allow immediate protection, but they are limited because they only

last for a short period of time. However, trade dress protection could

extend the same right indefinitely.

198

The question is not simply whether the limits of the Patent Clause apply

to federal patent laws, but whether those limits impact any laws that may

grant patent-like protection under the guise of another federal legislative

scheme. As discussed above, it is well recognized that protection for product

design trade dress has the potential to overlap with design patent

protection.

199

Both intellectual property systems are eligible to provide some

form of protection to the configuration of a particular product. Unlike patent

protection (which will at some point expire, thus comporting with the Patent

Clause requirement that protections exist only “for limited times”), federal

trade dress protection (provided pursuant to the Commerce Clause) is

potentially limitless: it remains effective for as long as the trade dress

continues to serve as an indication of source.

200

198. Ellie B. Adkins, Unchecked Monopolies: The Questionable Constitutionality of Design Patent

and Product Design Trade Dress Overlap in Light of Egyptian Goddess, Inc. v. Swisa, Inc., 4 I

NTELL.

PROP. BRIEF 57, 67 (2013).

199. See e.g., Jenny Yoo Collection, Inc. v. David’s Bridal, Inc., No. 1:16—cv—02647 (S.D.N.Y.

filed Apr. 8, 2016) (alleging both trade dress and design patent infringement in designs of convertible

bridesmaid’s dresses); Deckers Outdoor Corp. v. J.C. Penney Co. Inc., 45 F. Supp. 3d 1181 (C.D. Cal.

2014); Puma SE v. Forever 21, Inc., No. CV17-2523 PSG Ex, 2017 U.S. Dist. LEXIS 211140 (C.D. Cal.

June 29, 2017) (alleging trade dress and design patent infringement in a line of designer footwear). Courts

have explicitly endorsed these overlapping claims. See Kohler, 12 F.3d at 638 (“[A] product’s different

qualities can be protected simultaneously, or successively, by more than one of the statutory means for

protection of intellectual property.”).

200. As explained by the Petitioners in TrafFix,

The consequences of this phenomenon [the notion of federal trade dress protection in a

product’s configuration] are far-reaching, and bring federal trademark law into direct conflict

with patent law and the policies underlying that law. Quite unlike product packaging, labeling,

or even ornamental design, there are typically only a finite number of configurations or shapes

that a product may take. That is especially true in the case of a utility patented invention, made

to perform a particular use or function. At the same time, cloaking product configurations with

federal trade dress protection does not simply give the producer a tool to strengthen source

identification of its product, but the perpetual right to use that configuration for as long as the

producer likes, effectively - and indefinitely - taking the configuration out of the public domain.

In the case of a patented invention, this result directly interferes with the constitutionally

grounded and time-honored right of the public to copy and use the subject of expired patents.

2022 THE CONSTITUTION COMMANDETH 121

Thus, herein lies the Constitutional conflict: trade dress protection of

product designs, federalized

201

through section 43(a) of the Lanham Act

which was enacted under the broad constitutional power grant of the

Commerce Clause,

202

conflicts with the Patent Clause by offering potentially

unlimited, patent-like protection to designs that never met or do not meet the

criteria for patentability (e.g., the invention must at least be novel, useful,

and nonobvious), thereby evading the “Limited Times” provision of the

Patent Clause.

203

As explained by one commentator in discussing the

eligibility for trade dress protection after design patents expire, “we have no

means to reconcile the issue,” therefore, “we have to directly confront the

issue between the right of the public to copy and trade dress protection.”

204

And, as explained next, there is no reason to conclude that Congress intended Section 43(a), or

any other provision of the Lanham Act, to achieve that result. U.S. Pet. Brief, supra note 36, at

27.

201. As explained by Dowell, supra note 64, at 168-69:

Federal trademark law is no different from state trademark law. The standards for federal and

state trade dress infringement claims are the same. The Lanham Act merely federalizes the

common law of trademarks and unfair competition. As applied to product designs, section 43(a)

of the Lanham Act prohibits “any false designation of origin” that is “likely to cause confusion,

or to cause mistake, or to deceive.” Courts have read into this general prohibition all of the

technical requirements for trademark protection of a product design. The doctrines of secondary

meaning/inherent distinctiveness, functionality, and the multifactor confusion test are entirely

judge-made and a product of the common law. Because federal and state trademark law are the

same, any conflict between federal patent law and state trademark law must also exist between

federal patent law and federal trademark law.

202. U.S. Const. art. I, § 8, cl. 3, known as the Commerce Clause, states that the United States

Congress shall have power “[t]o regulate Commerce with foreign Nations, and among the several States,

and with the Indian Tribes.”

203. About 15 years ago, Professor Welkowitz, in an insightful article, The Supreme Court and

Trademark Law in the New Millennium, 30 W

M. MITCHELL L. REV. 1659 (2004), saw this latest conflict

in the context of copyright law. In his view, Wal-Mart, TrafFix, and Dastar all “resisted uses of trademark

law that prevent copying of public domain materials.” Id. at 1687. Specifically:

[In Dastar], the Court again asserted that the Lanham Act’s foundations “were not designed to

protect originality or creativity.” In what must be termed a rather ironic use of a recent case, it

concluded: “To hold otherwise would be akin to finding that [section] 43(a) created a species

of perpetual patent and copyright, which Congress may not do.” Citing Eldred v. Ashcroft, 537

U.S. 186, 208 (2003)… for the limiting proposition in Dastar demonstrates just how far

removed the Court wants trademark law to be from traditional intellectual property.

Id., quoting Dastar (citations omitted). (emphasis added). He soon expanded by writing:

The primary message seems to be that the post-Lanham Act expansion of trademark law into

something akin to traditional intellectual property law deeply concerns the Court. Admittedly,

the justices may have different reasons for their concerns… Several of the Justices may be

concerned that Congress is beginning to reach the boundaries of its enumerated powers.

Although the Commerce Clause gives Congress broad power to regulate, the existence of a

specific power to regulate intellectual property, a power that allows rights only for “limited

times” and that impliedly contains other limitations, may be viewed as an implicit limit on

Congress’s power to expand the scope of trademark rights, especially where those rights would

rival the limited intellectual property rights provided in the Patent and Copyright Clause.

Id., at 1689, citing Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 346 (1991) (other citations

omitted). And finally, he opined that “the Court may be signaling that there are limits to Congress’s

power to regulate these areas under the Commerce Clause, as opposed to the Patent and Copyright

Clause.” Id. at 1700.

204. Takashi Saito, Dressing Design Patent: A Proposal for Amending the Design Patent Law in

Light of Trade Dress, 89 J.

PAT. & TRADEMARK OFF. SOC’Y 682, 686 (2007). In a recent opinion, the

Third Circuit, in Ezaki Glico Kabushiki Kaisha v. Lotte Int’l Am. Corp., 2021 U.S. App. LEXIS 2288 (3d

Cir. January 28,2021), explained:

By contrast, trademark law protects not inventions or designs per se, but branding. A trademark

is a “word, name, symbol, or device . . . used by a person[] . . . to identify and distinguish his

122 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

TrafFix

205

provided the Supreme Court with an opportunity to address

the potential conflict between “unlimited” trade dress protection and the

limits provided by the Patent Clause. Although the Court resolved the

dispute before it on the basis of the doctrine of functionality, it went out of

its way to highlight the underlying and still unresolved constitutional

issue:

206

[Defendant] and some of its amici argue that the Patent Clause of the

Constitution of its own force, prohibits the holder of an expired utility

patent from claiming trade dress protection. We need not resolve this

question. If, despite the rule that functional features may not be the subject

of trade dress protection, a case arises in which trade dress becomes the

practical equivalent of an expired utility patent, that will be time enough

to consider the matter.

207

As the Court was able to resolve the issue without reaching the constitutional

question, it prudently declined to reach that question.

The TrafFix opinion signaled a first step toward considering the conflict

between the Patent Clause and trade dress protection provided pursuant to

the Commerce Clause. But the case’s focus on utility patents and the

doctrine of functionality resolved the controversy, providing little guidance

on how to handle the question of whether the non-functional features claimed

in an expired design patent could thereafter be protected as trade dress,

thereby arguably extending the design patent from a type of protection

offered “for limited times” to one of potentially limitless duration.

208

Notably, the issue presented to the Supreme Court in TrafFix did not

develop overnight. Leading up to the TrafFix decision, a number of lower

courts had been faced with the issue, each concluding that the same feature

can simultaneously or sequentially be protected under some combination of

the patent and trademark laws, upholding an anti-copying protectionist status

or her goods . . . from those manufactured or sold by others and to indicate the source of the

goods.” 15 U.S.C. §1127. Trademark law can protect a product’s “trade dress[,] [which] is the

overall look of a product or business.” Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 308

(3d Cir. 2014). That includes not only a product’s packaging but also its design, such as its size,

shape, and color. Id. at *6-7 (internal citations omitted).

205. 532 U.S. 23 (2001).

206. Functionality, including aesthetic functionality, is a purely judge-made doctrine designed to

reconcile the tension between the patent and trademark laws. See Christopher J. Kellner, Rethinking the

Procedural Treatment of Functionality: Confronting the Inseparability of Useful, Aesthetically Pleasing,

and Source-identifying Features of Product Deigns, 46 E

MORY L.J. 913 (1997). The doctrine of

functionality was eventually codified in the Lanham Act, 15 U.S.C. § 1115 (Section 33(b)(8) of the

Lanham Act). However, some view the term “aesthetic functionality” as oxymoronic, a view that the

authors disagree with. See McCarthy on Trademarks § 7:81, at 7–298 (“Aesthetic functionality is an

oxymoron. Ornamental aesthetic designs are the antithesis of utilitarian designs.”).

207. It is notable that the granted writ of certiorari included “the issue whether the existence of an

expired utility patent forecloses the possibility of the patentee’s claiming trade dress protection in the

product’s design. TrafFix, 532 U.S. at 28.

208. See generally Clifford W. Browning, TrafFix Revisited: Exposing the Design Flaw in the

Functionality Doctrine, 94 T

RADEMARK REP. 1059, 1059 (2004); see also Karl Horlander, The U.S.

Constitutional Limits of Product Configuration Trade Dress Rights, 97 T

RADEMARK REP. 752, 753-56

(2007).

2022 THE CONSTITUTION COMMANDETH 123

quo.

209

In the discussion below, we will review how most of the lower

courts, with their protectionist attitudes, improperly restricted the public’s

right to copy. Notably, these decisions have essentially denied that such a

right exists, with discussions that seldom go beyond a conclusory assertion

that the same feature can simultaneously or sequentially be protected

through a combination of patent and trademark laws.

VIII.

CENTURY APPROACH LEADING UP TO TRAFFIX

As evidenced by the Singer, Sears, Compco, and Bonito-Boats

decisions, for over 100 years the Supreme Court has been defending the

public’s right to copy, standing up time and again against protectionists.

210

It’s quite clear that protectionism is proliferating in the niche practice of

intellectual property. Clients pay lawyers to protect their intellectual

property, which is often the foundation of their business, so, naturally,

lawyers are going to “zealously” pursue every available option to protect

their clients’ interests. Patent law is designed to encourage innovation and

the dissemination of knowledge.

211

The reasonable underlying belief is that

a societally optimal level of innovation requires some degree of invention

protection to incentivize creation and knowledge dissemination.

212

However, granting that some level of protection is necessary, overprotection

imposes clear losses on consumers and competitors. Protectionist attitudes

and judicial status quo have led to the acceptance of a conflict-containing

dual protection strategy for product designs.

213

As noted above, a number of lower courts have concluded that the same

feature can simultaneously or sequentially be protected under some

combination of design patent and trademark laws.

214

This, indeed, is the

209. See generally Saidman, supra note 65, at 839 (discussing how anti-copying, or protectionist,

attitudes appear in these and other court opinions leading up to the TrafFix decision).

210. See section II of this article.

211. See Graham, 383 U.S. at 7-9 (1966).

212. As explained by James Madison, because an invention is the fruit of individual labor, the

individual should reap the reward. Also, society benefited by rewarding the inventor. Through the reward

of a government-sponsored monopoly, invention and public disclosure are encouraged. “The right to

useful inventions . . . belong[s] to the inventors. The public good fully coincides . . . with the claims of

individuals.” T

HE FEDERALIST No. 43, at 309 (James Madison) (B. Wright ed., 1961).

213. One commentator referred to section 43(a) as “the most protectionist design law of them all.”

See Melissa R. Gleiberman, From Fast Cars to Fast Food: Overbroad Protection of Product Trade Dress

Under Section 43(a) of the Lanham Act, 45 S

TAN. L. REV. 2037 (1993) (citing J.H. Reichman, Design

Protection and the New Technologies: The United States Experience in a Transnational Perspective, 19

BALT. L. REV. 6, 87 (1989)).

214. See e.g., In re Mogen David Wine Corp., 328 F.2d at 930; In re Yardley, 493 F.2d at 1394;

Ferrari S.P.A. Esercizio Frabriche Automobili E Corse, 944 F.2d at 1240; Kohler Co., 12 F.3d at 638-

39; Mechanical Plastics Corp. v. Titan Techs., Inc., 823 F. Supp. 1137, 1142 (S.D.N.Y. 1993) (holding,

“a product’s different aspects can be protected simultaneously by more than one of the statutory means

for the protection of intellectual property.”); Winning Ways, Inc. v. Holloway Sportswear, Inc., 903 F.

Supp. 1457, 1460-61 (D. Kan. 1995) (while the court showed concern about acquisition of secondary

meaning during the design patent period, the court denied summary judgment for the defendant,

emphasizing that no court had refused dual protection.); Hubbell Inc. v. Pass & Seymour, Inc., 883 F.

Supp. 955, 959-60 (S.D.N.Y. 1995) (holding that there is no conflict between design patent and trade

124 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

traditional view, as expressed in a number of cases. In this regard, two

decisions by the former Court of Customs and Patent Appeals (CCPA)

215

form the cornerstone for many later court decisions that find no conflict

between trademark law and patent law and, more particularly, condone the

use of trade dress and design patent for dual protection of a product’s

configuration.

In the first case, In re Mogen David Wine Corp.,

216

the CCPA allowed

trademark registration of a product configuration (a wine bottle design)

notwithstanding the fact that the configuration was the subject of an expired

design patent. In so holding, the court totally and blithely ignored the

established doctrine of patent law that indubitably provides others with a

right to copy the subject matter of an expired patent.

217

Clearly, the absence

of any discussion of this “right to copy” recognized by the Supreme Court

illustrates the narrow focus of the analysis in Mogen David. As noted by one

commentator:

The court did finally discuss the then recently decided Sears and Compco

cases and distinguished them on the basis that they involved federal

preemption of state laws. Incredibly, all three of the Mogen David

opinions lacked any mention of the Supreme Court cases of Singer or

Kellogg or Scott Paper, all of which had a strong right to copy flavor. How

the [CCPA] case came to be taken so seriously by so many courts in their

later decisions is therefore somewhat mystifying.

218

In the second case, In re Honeywell, Inc.,

219

which was decided several

years after Mogen David, the CCPA permitted trademark registration for

certain features of a thermostat that were previously claimed in an expired

design patent. In so holding, the CCPA stated, “this court decided [in Mogen

David I] that the public interest—protection from confusion, mistake, and

deception in the purchase of goods and services—must prevail over any

alleged extension of design patent rights, when a trademark is non-functional

and does in fact serve as a means to distinguish the goods of the trademark

owner from those of others.”

220

Neither Mogen David nor Honeywell

mentions any possible constitutional conflict. Most later court decisions

addressing the issue of trade dress protection for the subject matter of

dress protection because the protections serve different purposes, and further stating that this view is

consistent with other cases.); Topps Co. v. Gerrit J. Verburg Co., 1996 U.S. Dist. LEXIS 18556 (S.D.N.Y.

1996); Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir. 1998).

215. These two decisions are In re Mogen David Wine Corp., 328 F.2d 925, (C.C.P.A. 1964) and In

re Honeywell, Inc., 497 F.2d 1344 (C.C.P.A. 1974).

216. 328 F.2d 925.

217. See, e.g., Kellog Co. v. National Biscuit Co., 305 U.S. 111, 118 (1938) (explaining that the right

to make an article as it was made during the life of a patent “passed to the public upon the expiration of

the patent”).

218. Saidman, supra note 65, at 839.

219. 497 F.2d 1344 (CCPA 1974).

220. Id. at 1348.

2022 THE CONSTITUTION COMMANDETH 125

expired design patents have followed the incomplete Mogen

David/Honeywell rationale.

221

One appellate case that deserves attention is Ferrari S.P.A. Esercizio

Fabriche Automobili E Corse v. Roberts,

222

which demonstrates how a

misfocused and overbroad reading of § 43(a) can undermine the integrity of

the patent system. The majority in Ferrari determined that the exterior

shapes and features of two FERRARI (plaintiff) automobiles had acquired

secondary meaning and were nonfunctional.

223

The court further held that

the plaintiff had proven likelihood of confusion between its cars and the

defendant’s automobiles.

224

Although the exterior designs of plaintiff’s

automobiles were potentially patentable, the plaintiff never sought a design

patent for either design. Instead, the plaintiff relied on trade dress protection

under the Lanham Act which, from the viewpoint of the plaintiff, is far

superior because of its potentially infinite duration. In so holding, the

majority specifically noted that “[c]ourts have consistently rejected [the]

argument that the availability of design patent protection

precludes applicability of the Lanham Act for products whose trade dress

have acquired strong secondary meaning.”

225

The majority further held that

this broad protection did not conflict with federal patent law for two reasons:

first, because federal trademark law and federal patent law address different

interests and objectives; and second, because Compco and Sears “involved

only the preemption of state unfair competition law by federal patent law,

not the scope of federal trademark or unfair competition law.”

226

In dissent, Judge Kennedy explained that “while the purposes of the

Lanham Act and federal patent laws are not identical,” there is nonetheless

“some overlap and congruity of purpose among these laws. Both the Lanham

Act and federal patent laws affect commercial activity, particularly in the

area of design patents.”

227

Undeniably, the Sears-Compco-Bonito Boats line

of decisions explicitly recognized that federal patent laws and unfair

competition laws are interrelated.

228

In Judge Kennedy’s view, “the

rationale applied in this trilogy of cases … applies with equal force to federal

trademark laws.”

229

Thus, Judge Kennedy concluded that:

[T]he criteria used by the majority to determine the availability and scope

of protection by the Lanham Act for unpatented designs … enlarge the

221. For example, in In re Yardley, 493 F.2d 1389 (C.C.P.A. 1974), a case involving copyrights, the

CCPA held that an overlap in protection was available under the proposition that different IP rights have

different purposes, and if a work has many parts it may be appropriate to protect different parts with

different regimes.

222. 944 F.2d 1235 (6th Cir. 1991).

223. Id. at 1246-47.

224. Id. at 1244.

225. Id. at 1240.

226. Id. at 1241.

227. Id. at 1253 (Kennedy, J., dissenting).

228. Id.

229. Id.

126 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

Lanham Act’s scope of protection beyond its statutory language and

congressional intent, and result in an injunction that runs afoul of the

Supreme Court’s holdings in Sears, Compco and Bonito Boats. Congress

intended that the rights in a design should expire with their design patent.

The effect of the majority’s holding is to give Ferrari the equivalent of a

design patent in perpetuity.

230

Another noteworthy appellate case is Kohler Co. v. Moen Inc.

231

There,

the Seventh Circuit decided 2-1, over a thought-provoking constitution-

based dissent by Judge Cudahy, that “courts have consistently held that a

product’s different qualities can be protected simultaneously, or

successively, by more than one statutory means for protection of intellectual

property.”

232

The majority opinion utterly fails to directly address the

concept of the constitutional right to copy. Instead, it attempts to sweep

Judge Cudahy’s concerns aside with two arguments, neither of which is

particularly convincing. The first is that trade dress protection is not the

equivalent of design patent protection.

233

The majority bases this argument

on the fact that the two forms of protection serve different purposes, have

different criteria (pointing again to the fact that trademark infringement

requires proof of likelihood of confusion), and represent distinct bodies of

law.

234

Because of these differences, the majority explains its belief that

product design trade dress does not provide patent-like protection for

designs:

While a patent creates a type of monopoly pricing power by giving the

patentee the exclusive right to make and sell the innovation, a trademark

gives the owner only the right to preclude others from using the mark when

such use is likely to cause confusion or to deceive.

235

Although this argument has some superficial appeal, it glosses over the

practical effect of providing trade dress protection to product designs: when

the design of the product is protected against imitation by others, this

protection is virtually the same as that stemming from a design patent. Thus,

the product design trade dress does provide “patent-like” protection.

236

Judge Cudahy effectively refutes the majority’s reliance on the differences

between the two forms of protection as sufficient to obviate any conflict:

230. Id. This position aligns with the extreme position taken by one particular author and with which

the current authors disagree. See infra notes 408-09.

231. 12 F.3d 632 (7th Cir. 1993).

232. Id. at 638-39.

233. Id. at 637.

234. See id. at 637-38.

235. Id. at 637.

236. At best, the practical effects of the “additional elements” of secondary meaning and likelihood

of confusion seem to be that product design trade dress protection extends only to a portion of the universe

of product designs that may be covered by design patents. With respect to those designs it does cover

(regardless of whether they were covered by a design patent or even whether they would meet the

standards for such protection), product design trade dress protection does provide “patent-like”

protection—given that the product design is the mark, there is no way to use the product design without

infringing the mark, effectively granting the manufacturer a monopoly in the product design.

2022 THE CONSTITUTION COMMANDETH 127

It is also incorrect or irrelevant to say that there is no conflict between

configuration trademarks and the design patent law, because in a

trademark case a plaintiff must also prove secondary meaning and

likelihood of confusion. Likelihood of confusion only relates to whether

there has been an infringement, not whether a product configuration is

entitled to protection in the first place. In fact, Compco explicitly rejected

likelihood of confusion and secondary meaning as sufficient reasons to

grant a monopoly:

A State of course has power to impose liability upon those who,

knowing that the public is relying upon an original manufacturer’s

reputation for quality and integrity, deceive the public by palming off

their copies as the original. That an article copied from an

unpatented article could be made in some other way, that the design

is “nonfunctional” and not essential to the use of either article, that

the configuration of the article copied may have a “secondary

meaning” which identifies the maker to the trade, or that there may

be “confusion” among purchasers as to which article is which or as

to who is the maker, may be relevant evidence in applying a State’s

law requiring such precautions as labeling; however, and regardless

of the copier’s motives, neither these facts nor any others can furnish

a basis for imposing liability for or prohibiting the actual acts of

copying and selling.

237

The majority’s second argument challenges Judge Cudahy’s reliance on

a number of Supreme Court decisions—including Sears, Compco, and

Bonito Boats—as misplaced, because those decisions involved questions of

potential conflicts between state and federal law, and were based on the

Supremacy Clause.

238

The majority stated that the preemption principles

espoused in those cases are inapplicable where a claim under federal

trademark law is involved, relying in part on the language in Compco that

referred to the availability of “other federal statutory protection.”

239

Further,

the majority noted that language in Bonito Boats even allows for state

protection of trade dress without conflict with the federal patent scheme.

240

Judge Cudahy’s dissent contains a compelling rebuttal to each of these

points. With respect to the fact that at least some of the cited decisions

involved questions of state law, and therefore were concerned with the

application of the Supremacy Clause, he stated that compartmentalizing

these decisions fails to face the reality that the Lanham Act is effectively

nothing more than the federalization of the common law of trademarks and

unfair competition.

241

Judge Cudahy further states:

237. Id. at 649 (Cudahy, J., dissenting, quoting 376 U.S. at 238) (emphasis supplied by Judge

Cudahy).

238. See id. at 639. The majority’s reading of Compco as a Supremacy Clause case appears to be in

error, as Compco’s holding was grounded in the Patent Clause. See Davis Jr., supra note 13, at 610-12

(noting that the Compco decision makes “no reference whatsoever” to the Supremacy Clause, and that it

“instead expressly rested the outcome on the Supremacy Clause’s far more obscure cousin, the [Patent]

Clause”).

239. See id. at 639-40.

240. See id. at 641 (quoting language from Bonito Boats that references permissible limited

regulations on the use of product designs to prevent consumer confusion).

241. See id. at 646-47 (Cudahy, J., dissenting). Judge Cudahy is not alone in this assertion:

128 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

[T]he conflict that the Court found between state law and federal patent

law as a prerequisite to preemption in Sears, Compco and Bonito Boats is

exactly the same conflict as would develop between federal patent law and

federal trademark law if a design patent could be made perpetual by

trademarking the design. As a matter of commercial reality, therefore, the

relation of patent law to state unfair competition law is exactly the same

as its relation to federal trademark law.

242

Judge Cudahy also did not see the Compco reference to the availability of

“other federal statutory protection” for designs as precluding the possibility

of a conflict between design patent protection and product design trade dress

protection. He argued that the phrase

does not create an exception to the constitutional policy consistently

pronounced in Compco, Sears and the cases we have discussed. Although

the use of the phrase recognizes the possibility of further congressional

action, it does not preclude conflicts between such statutes and the

constitution.

243

Judge Cudahy also noted that the Supreme Court’s reaffirmation of the

principles of Sears and Compco in Bonito Boats does not include “any such

blanket reference to a federal exemption.”

244

Finally, with respect to the language in Bonito Boats that allegedly

authorizes state regulation of product designs and other trade dress, Judge

Cudahy recognized that the Supreme Court had stated that, although states

can pass laws intended to prevent consumer confusion, states’ authority to

do so is limited:

[T]he majority opinion here seems to read into Bonito Boats’ careful

discussion of permissible state laws an exemption for any state or federal

law dealing with trademarks or trade dress. But the Court only

acknowledged that states could continue to enact unfair competition laws

[C]ritics contend that trade dress laws should still be preempted because these laws are “merely

federalized” state common law for trademarks and unfair competition. One of the most compelling

arguments for the impermissibility of the interaction between the two acts is the extension of “patent-

like” protection after the expiration of a utility or design patent by the use of trade dress law. Further, the

two acts allow a product design to obtain indefinite trade dress protection without secondary meaning,

resulting in a lack of assurance of the trade dress as a source indicator and circumvention of patent law.

Bonder, supra note 40, at 23 (footnotes omitted).

242. Id. at 647.

243. Id. at 646 n.2 (Cudahy, J., dissenting) (emphasis in original). Although Judge Cudahy

recognizes that the phrase “other federal statutory protection” is often used to justify application of the

Lanham Act to product designs, he does not state one other potential explanation for this phrase—namely,

that the phrase may refer to copyright protection for product designs. Indeed, interpreting the phrase as

a reference to the federal copyright statute creates a certain internal harmony within the context in which

it appears. The court in Compco begins by stating that the federal policy embodied in the Patent Clause

permits free copying of “whatever the federal patent and copyright laws leave in the public domain.” 376

U.S. at 237. It concludes with the thought that “if the design is not entitled to a design patent or other

federal statutory protection, then it can be copied at will.” Id. at 238. Simple parallel construction leads

to the conclusion that the second statement also refers to copyright. This conclusion is somewhat

reinforced when one considers that intervening discussion identifies no other federal statutory protection

that might be implicated, and in fact gives short shrift to the lower court’s finding that the product design

“had, like a trademark, acquired a ‘secondary meaning.’” Id. Indeed, an interpretation that can be drawn

from this language is that evidence of secondary meaning (or evidence that the design would be entitled

to trademark protection) is not sufficient to overcome the federal right to copy.

244. Id.

2022 THE CONSTITUTION COMMANDETH 129

so long as, and to the extent that, they did not conflict with the federal

policy embodied in Sears/Compco.

245

Such limited regulations might include, as suggested by Sears, a requirement

for labeling of the products to prevent consumer confusion.

246

In concluding his analysis, Judge Cudahy again “grounded” his position

on constitutional concerns:

If the issue before us is a conflict between a well-defined statutory scheme

(the design patent laws) enacted under a specific and limited constitutional

directive (the Patent Clause) and a judicial doctrine (protection of product

configurations as trademarks) only remotely incident to a general statutory

scheme (the Lanham Act), the specific, constitutionally-mandated

provisions should control.

247

As was the case with the constitutional right to copy issue, the majority failed

to address this issue in its opinion.

248

A third appellate case that deserves attention is Ashley Furniture,

249

which the Fourth Circuit similarly determined that, “traditional trade dress

protection for product configuration will not undermine either utility or

245. Id.

246. See 376 U.S. at 232.

247. Kohler, 12 F.3d at 651 (Cudahy, J., dissenting).

248. Commentators have applauded Judge Cudahy’s Kohler dissent. See, e.g., Katherine J.

Strandburg, Rounding the Corner on Trade Dress, 29 Y

ALE J. ON REG. 387, 378-388 (2012), explaining

that, “Judge Cudahy penned a well-known dissent [in Kohler], later described by commentators as

‘spirited,’ ‘elegant,’ and ‘forceful.’” (internal citations omitted). Further explaining how “recent Supreme

Court cases suggest that Judge Cudahy got it right.” See also Margreth Barrett, Consolidating the Diffuse

Paths to Trade Dress Functionality: Encountering TrafFix on the Way to Sears, 61 W

ASH. & LEE L. REV.

79, 145 n.287 (2004) (in his “now famous dissent,” Judge Cudahy correctly declared that utility patents

and design patents required the same treatment regarding functionality); David W. Opderbeck, An

Economic Perspective on Product Configuration Trade Dress, 24 S

ETON HALL LEGIS. J. 327, 347-48

(2000), explaining that:

Judge Cudahy’s dissent in Kohler elegantly illustrates the dichotomy of views concerning

trade dress protection for product configurations… According to Judge Cudahy, a central theme

of Supreme Court patent jurisprudence is the public’s right to copy a non-patented design. In

contrast to the majority’s exegesis of Compco, Judge Cudahy’s dissent emphasized the

Supreme Court’s discussion of the Constitutional mandate that whatever is unprotected by

patent and copyright may be freely copied. According to Judge Cudahy, this policy was

reinforced in Bonito Boats, where the Court recognized that for nearly a century, patent has

incorporated a public right to copy and use an article after the patent protection has been

exhausted. Judge Cudahy was not concerned that the Sears-Compco cases dealt with

preemption of state unfair competition law. Because the Lanham Act federalized state unfair

competition law, there is a conflict between “a federal statutory scheme rooted in the

Constitution and a federal codification of the common law.” Under these circumstances, the

explicit constitutionally-proscribed requirement should control (emphasis added). Id.

Opderbeck further explains:

Judge Cudahy did not accept the standard response that the functionality doctrine resolves this

conflict. He likened a truly “functional” product feature to one that could be protected by a

utility patent. An ornamental feature, however, might be protected by a design patent, not a

utility patent. Since design patents may protect ornamental designs regardless of whether they

are “essential for competition,” a product configuration that was the subject of an expired

design patent may nevertheless be protected from copying under the Lanham Act. In

Judge Cudahy’s view, this would permit a producer to obtain a monopoly on an essentially

generic form outside the patent laws’ boundaries. Judge Cudahy therefore would not have

extended trade dress protection to product configurations. Id. at 348.

249. 187 F.3d 363 (4th Cir. 1999). In this regard, another appellate case worth noting is Thomas &

Betts Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir. 1998).

130 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

design patent law.”

250

In that case, the plaintiff alleged that the defendant

had copied one of the plaintiff’s designs for a bedroom suite, in violation of

federal trade dress law.

251

In passing, the majority confronted the notion that

one “justification for heightening trade dress requirements in product

configuration cases is the perceived need to protect the boundaries between

trade dress, copyright, and patent law.”

252

In rejecting this notion, the court

downplayed any potential conflict between the two forms of protection,

stating, “the trade dress rule that functional aspects of a product, although

patentable, are not protectable as trade dress directly eliminates any conflict

between patents for useful items and trade dress protection for product

configuration.”

253

Critically, the majority opinions in these aforementioned decisions fail

to contain any significant analysis of the potential constitutional conflict

between design patent protection and protection of product design trade

dress. The Mogen David opinion only contains one reference to Article I,

Section 8, of the Constitution, and that is found in a quotation from another

case, which the court summarily dismissed, stating, “[we]…see no reason to

consider appellant’s patents except to the extent they may contain evidence

of the functionality of the outline shape sought to be registered as a

trademark.”

254

The court’s simplistic mantra was merely that trademark

rights exist independently of design patent rights, “under different law and

for different reasons.”

255

Finally, in many of these cases, courts have

referenced the doctrine of functionality as the safeguard that precludes a

conflict between patent and trade dress protection.

256

However, the

traditional functionality doctrine serves only to obviate a conflict with

utilitarian features contained in a utility patent; it does nothing to resolve any

potential conflicts between trade dress protection for ornamental product

designs and design patent protection. Judge Posner—as early as 1995—

expressly noted the limitations of the functionality doctrine when he wrote:

250. 187 F.3d at 376.

251. Id. at 366.

252. Id. at 376.

253. Id. The court further reasons:

[P]ermitting such trade dress protection would not impermissibly give the trade dress plaintiff

a perpetual design patent… Trade dress rights do, of course, persist indefinitely, while design

patents provide only 14 years of protection. But the trade dress plaintiff must establish

likelihood of customer confusion in order to be protected at all “which the design patent owner

need not do; there is therefore no necessary inconsistency between the two modes of

protection.” Moreover, “compared to patent protection, trademark protection is relatively weak

because it precludes competitors only from using marks that are likely to confuse or deceive

the public.” It should also be noted that trade dress rights, although of indefinite duration, are

not necessarily perpetual. Such rights terminate if the trade dress is abandoned, or if the trade

dress becomes generic through public usage…A current design patent, by contrast, would

continue to provide protection regardless of such eventualities. Id. (internal citations omitted).

254. See 328 F.2d at 931.

255. Id. at 930.

256. See W.T. Rogers Co. v. Keene, 778 F.2d 334 (7th Cir. 1985).

2022 THE CONSTITUTION COMMANDETH 131

[P]rovided that a defense of functionality is recognized, there is no conflict

with federal patent law, save possibly with 35 U.S.C. § 171, which allows

a 14-year patent to be granted for a nonfunctional ornamental design — a

design patent.

257

In summary, the most well-developed constitutional discussion of this

issue comes in the Kohler decision—however, the substance is found in the

dissenting opinion by Judge Cudahy, not in the majority opinion that held

there was no conflict.

258

Judge Cudahy found that allowing trade dress

protection for product designs conflicts with the “right to copy” inherent in

the Patent Clause and recognized by the Supreme Court for more than a

hundred years.

259

He concluded that, at a fundamental level, protecting

product design as trade dress is an unconstitutional violation of the Patent

Clause.

260

To reach this conclusion, Judge Cudahy referenced a number of older

Supreme Court cases, including Scott Paper, Kellogg, and Singer. The heart

of his constitutional objection, however, appears to be rooted in this language

from the Compco decision:

To forbid copying would interfere with the federal policy, found in Art. I,

§ 8, cl. 8, of the Constitution and in the implementing federal statutes, of

allowing free access to copy whatever the federal patent…laws leave in

the public domain. Here [Plaintiff’s] fixture has been held not to be

entitled to a design or mechanical patent. Under the federal patent laws it

is, therefore, in the public domain and can be copied in every detail by

whoever pleases. It is true that the trial court found that the configuration

of [Plaintiff’s] fixture identified [Plaintiff] to the trade because the

arrangement of the ribbing had, like a trademark, acquired a “secondary

meaning” by which that particular design was associated with [Plaintiff].

But if the design is not entitled to a design patent or other federal statutory

protection, then it can be copied at will.

261

He viewed the Supreme Court’s later Bonito Boats decision as

reaffirming this principle.

262

The clear focus of Judge Cudahy’s concern is

the right to copy or freedom to copy a product design that is not protected by

patent (or copyright):

What is at stake here is the right to copy the thing itself — that is, to copy

its configuration or design. The configuration or design of a product is as

generic as the name of the product. As the Supreme Court cases

demonstrate, the constitutional right to copy after a patent expires or in the

absence of a patent is the reciprocal of the constitutional right to prohibit

copying for a limited term under the Patent Clause. To ignore this

257. Id. at 337 (emphasis added).

258. The majority summarily disposed of Kohler’s constitutional arguments, holding that, “[i]n sum,

courts have consistently held that a product’s different qualities can be protected simultaneously, or

successively, by more than one of the statutory means for protection of intellectual property.” Kohler, 12

F.3d at 638.

259. See id. at 644 (Cudahy, J., dissenting).

260. See id.

261. 12 F.3d at 646 (Cudahy, J., dissenting) (quoting Compco; emphasis in the original).

262. See id.

132 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

principle is to permit perpetual monopolies on product ideas or particular

product designs and to inhibit product development.

263

IX. THE SUPREME COURT’S 21ST CENTURY TREATMENT OF THE ISSUE

In Wal-Mart Stores, Inc., decided in 2000, the Court determined that in

a civil action under § 43(a) of the Lanham Act for infringement of

unregistered trade dress, product configuration trade dress will be deemed

distinctive, and therefore protectible, only upon a showing of secondary

meaning.

264

In Wal-Mart, the plaintiff designed and sold children’s clothes,

which the defendant copied with only minor changes.

265

The issue for the

Court to decide can be summarized as, under what circumstances is a senior

product’s design distinctive, and therefore protectible, in an action for

infringement of unregistered trade dress?

266

In answering that question, the

Court held that, “in an action for infringement of unregistered trade dress

under § 43(a) of the Lanham Act, a product’s design is distinctive, and

therefore protectible, only upon a showing of secondary meaning.”

267

In so

holding, the Court was forced to confront its previous holding in Two Pesos,

Inc. v. Taco Cabana, Inc.,

268

which had been decided only eight years

prior.

269

The holding in Two Pesos amalgamated the two types of trade

dress, package and design, saying they were to be treated the same.

270

The

Court in Wal-Mart judicially side-stepped

271

its previous holding in Two

Pesos by attempting to carefully differentiate the two types of trade dress

and then treat them separately and significantly differently. In any event, the

practical effect of Wal-Mart created a catch-22 for practitioners, as

succinctly summarized by one commentator:

[W]hat will a [product owner] do if it believes that its device has source-

identifying product configuration trade dress but it does not wish to risk

263. Id. at 647 (Cudahy, J., dissenting).

264. See Wal-Mart Stores, Inc., 529 U.S. at 216.

265. Id. at 207.

266. Id.

267. Id. at 216.

268. 505 U. S. 763 (1992).

269. The respondent in Wal-Mart asserted that the Court’s decision in Two Pesos forecloses a

conclusion that product-design trade dress can never be inherently distinctive. Id. at 214. In response,

the Court explained:

In that case, we held that the trade dress of a chain of Mexican restaurants, which the plaintiff

described as “a festive eating atmosphere having interior dining and patio areas decorated with

artifacts, bright colors, paintings and murals,” 505 U. S., at 765 (internal quotation marks and

citation omitted), could be protected under § 43(a) without a showing of secondary meaning,

see id., at 776. Two Pesos unquestionably establishes the legal principle that trade dress can be

inherently distinctive, see, e. g., id., at 773, but it does not establish that product-design trade

dress can be. Two Pesos is inapposite to our holding here because the trade dress at issue, the

decor of a restaurant, seems to us not to constitute product design. It was either product

packaging—which, as we have discussed, normally is taken by the consumer to indicate

origin—or else some tertium quid that is akin to product packaging and has no bearing on the

present case. Id. at 214-15.

270. See Two Pesos, 505 U.S. at 775-76.

271. It is the opinion of the authors that the Court silently overruled Two-Pesos through its opinion

in Wal-Mart.

2022 THE CONSTITUTION COMMANDETH 133

losing that source-identifying significance in a race to secondary meaning

in the market with potential competitors?

272

This commentator answered this question by explaining, simply:

The [product owner] will elect to file a design patent application that

claims the nonfunctional, ornamental features of the product configuration

trade dress of the device. The [product owner] will then have the 14-year

term of the design patent within which to claim exclusive rights to use the

product configuration trade dress in the market, thereby preventing any

competitors from entering the race to secondary meaning using the patent

laws as an enforcement sword.

273

One year after the Wal-Mart decision, the Court in TrafFix signaled a

first step toward considering the conflict between the Patent Clause and trade

dress protection provided pursuant to the Commerce Clause. In TrafFix, the

Court was presented with a claim for trade dress infringement based on a

copied design that had been the subject of an expired utility patent.

274

Instead

of considering the right to copy, the Court based its holding on

functionality.

275

Specifically, the Court held that an expired utility patent

covering the design claimed to be covered by trade dress “adds great weight

to the statutory presumption” that the design is functional and not protectable

by trade dress.

276

However, its final paragraph came as close as the Supreme

Court has come in recent times to confronting directly the issue of a potential

conflict between the limited times protection available for patents and the

potentially unlimited protection available for product design trade dress. The

Court opted not to decide the patent-related trade dress issue and, instead,

based its decision on the functionality doctrine, which originally had been

fashioned entirely by lower courts, which only years later was codified in the

U.S. Trademark (Lanham) Act.

277

Significantly, the TrafFix decision

provided little or no guidance on how to handle the question of whether

features claimed in an expired design patent could thereafter be protected as

trade dress, thereby arguably extending the design patent from a type of

protection offered for limited times to one of potentially limitless duration.

Although the Court disposed of the issue on the basis of the doctrine of

functionality, it went out of its way to highlight:

[Defendant] and some of its amici argue that the Patent Clause of the

Constitution of its own force, prohibits the holder of an expired utility

patent from claiming trade dress protection. We need not resolve this

question. If, despite the rule that functional features may not be the subject

272. Browning, supra note 208, at 1059.

273. Id.

274. See 532 U.S. 23, 25-26.

275. Id. at 32.

276. Id. at 29-30.

277. See In re Morton-Norwich Prods., Inc., 671 F.2d 1332 (C.C.P.A. 1982) (citing In re Mogen

David Wine Corp., 328 F.2d 925, 932 (C.C.P.A. 1964)). The court in Mogen David noted: “We know of

no provision of patent law, statutory or otherwise, that guarantees to anyone an absolute right to copy the

subject matter of any expired patent. Patent expiration is nothing more than the cessation of the patentee’s

right to exclude under the patent law.” 328 F.2d at 930. See also Lanham Act, §33(b)(8), 15 U.S.C.A.

§1052(e)(5) (2021).

134 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

of trade dress protection, a case arises in which trade dress becomes the

practical equivalent of an expired utility patent, that will be time enough

to consider the matter.

278

This statement provides no definitive answer to the underlying

constitutional issue; rather, the Court is simply noting that the issue is one

that likely will need to be confronted in the future.

279

In 2003, in the wake of the Wal-Mart and TrafFix decisions, the

Supreme Court chose to decide Dastar Corp. v. Twentieth Century Fox Film

Corp.

280

This case involved the unique circumstance of copying and

distributing, totally without attribution, expired copyrighted content, and

queried whether § 43(a) of the Lanham Act prevents such use of this work.

281

In reversing the Ninth Circuit and holding for the Defendant, the Court

decided that “origin” (in the phrase “false designation of origin” in Section

43(a)) does not include the creator of the copied underlying work.

282

The

Court refused to read “43(a)… as creating a cause of action for, in effect,

plagiarism - the use of otherwise unprotected works and inventions without

attribution … .”

283

Implicit in the Court’s ruling was a questioning, if not a

stoppage, of the historical judicial expansion of § 43(a). The Court

emphasized that “§43(a) ‘does not have boundless application as a remedy

for unfair trade practices.’”

284

Although the framed issue, and its analysis,

looks like a strict and technical matter of defining the word “origin” in the

“false designation of origin” phrase, the opinion contained a sweeping and

important statement about the nature of trademark protection and its

relationship to broad copyright (and patent) policy:

In sum, reading the phrase “origin of goods” in the Lanham Act in

accordance with the Act’s common-law foundations (which were not

designed to protect originality or creativity), and in light of the copyright

and patent laws (which were), we conclude that the phrase refers to the

producer of the tangible goods that are offered for sale, and not to the

author of any idea, concept, or communication embodied in those goods…

To hold otherwise would be akin to finding that 43(a) created a species of

perpetual patent and copyright, which Congress may not do.

285

As explained by one commentator, through this decision the Court

appears to have been backtracking to “build on its earlier struggles with

issues of federal preemption in an attempt to both limit and redefine the role

of trademark protection and to create brighter lines of demarcation between

278. Id. at 35. It is notable that the granted writ of certiorari included “the issue whether the existence

of an expired utility patent forecloses the possibility of the patentee’s claiming trade dress protection in

the product’s design.” TrafFix, 532 U.S. at 28 (emphasis added). As such, the entire Supreme Court

orientation concerned utility patents, not design patents.

279. Id. at 35.

280. 539 U.S. 23 (2003).

281. Id. at 25.

282. See 539 U.S. at 36.

283. Id.

284. Id. at 29.

285. Id. at 37 (emphasis added).

2022 THE CONSTITUTION COMMANDETH 135

trademark and other aspects of intellectual property law.”

286

It should be

noted that in 2004—shortly after the Supreme Court’s decisions in Wal-

Mart,

287

TrafFix,

288

Moseley v. V Secret Catalogue,

289

and Dastar

290

—

Professor Welkowitz analyzed the Court’s sea-changed attitudes toward the

relationship between trademark law, on the one hand, and patent and

The Supreme Court’s four trademark opinions this millennium have three

critical factors in common: … (iii) all four decisions took a narrow view

of the protective umbrella afforded by the trademark laws. The clarity of

these results is striking—obviously, the Court is sending a message. One

part of the message is clear: the Court is unhappy with the expansive view

of trademark protection put forth by many lower courts. This unhappiness

appears to stem from the Court’s conviction that trademark law remains

an offshoot of unfair competition rather than a subset of intellectual

property law.

291

[T]he Court’s trademark case in 2000—Wal-Mart—represents a fairly

clear break from the bulk of the Court’s late twentieth century trademark

jurisprudence. It also marks a clear beginning of a jurisprudence that

harkens back to the late nineteenth and early twentieth centuries and its

discomfort with the treatment of trademarks as a species of intellectual

property.

292

As if to make clear that trademark law is different from copyright and

patent, the Court noted that those doctrines would permit protection for

many product designs, and ameliorate the consequences of its decision. In

other words, the message to trademark owners is, if you want intellectual

property protection, use “real” intellectual property doctrines, not

trademark law.

293

And finally, “Ordinary trademark law is grounded in unfair competition and

consumer protection, not intellectual property.”

294

In Wal-Mart, the Supreme Court significantly curtailed use of the

Lanham Act to prevent product design approximations.

295

The Court’s

opinion in TrafFix substantially furthers that undertaking. Whereas the

Court explicitly avoided the right to copy issue, the Court clarified that the

286. Sheldon W. Halpern, A High Likelihood of Confusion: Wal-Mart, TrafFix, Moseley, and Dastar

– The Supreme Court’s New Trademark Jurisprudence, 61 N.Y.U. Ann. Surv. Am. L. 237, 259 (2005).

287. 529 U.S. 205, 210 (2000).

288. 532 U.S. 23 (2001).

289. 537 U.S. 418 (2003). Moseley is a leading authority on trademark dilution which, unlike

traditional trademark infringement claims, does not require any showing of likelihood of confusion.

According to Welkowitz, “like Wal-Mart and TrafFix, Moseley presented the Court with an issue of the

extent of trademark protection in a new and different form from that found in traditional cases.”

Welkowitz, supra note 158, at 1681-82. Welkowitz further explained, “[t]he Court again emphasized the

consumer protection and unfair competition roots of trademark law and took a narrow view of trademark

protection, the scope of which is more akin to a property right than to consumer protection.” Id. at 1684.

290. 539 U.S. 23 (2003).

291. Welkowitz, supra note 158, at 1660.

292. Id. at 1676 (footnotes omitted).

293. Id. at 1678-79.

294. Id. at 1683.

295. See 529 U.S. at 213.

136 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

time to consider the matter will be a case “in which trade dress becomes the

practical equivalent of an expired utility patent.”

296

That said, years earlier, the Court arguably had acknowledged that both

types of protection may be available for the same design (whether

simultaneously or sequentially) without conflict.

297

In Bonito Boats, for

example, the Court stopped short of holding that its prior Sears and Compco

decisions precluded any state regulation of items that fall within the broad

scope of patentable subject matter, noting that the Sears decision expressly

left open the possibility that trademark and other unfair competition laws can

be used to protect trade dress—identified as “potentially the subject matter

of design patents”—so as to prevent purchasers from being misled as to the

source of goods.

298

But this was oblique. Although the Wal-Mart Court

noted that a manufacturer could obtain protection for a product design that

had not yet obtained secondary meaning by securing a design patent or

coexist without conflict.

299

Indeed, that Court further failed to make mention

of patent law’s specific statutory scheme rooted in the Constitution and the

Constitutional conflict that would result from allowing dual protection for

product design.

300

The language in Bonito Boats and Wal-Mart hardly seems to close the

door on the matter, at least not in the eyes of the Supreme Court. Certainly,

the Court’s concluding paragraph in TrafFix—written twelve years after

Bonito Boats and one year after Wal-Mart—provides strong evidence that

the Court considered the issue unresolved.

The simple fact is that, although the language in these cases points to

the possibility of overlapping protection, it stops far short of holding that

both types of protection actually are available. Careful reading of the

opinions raises questions about the intended scope of the relevant statements.

First, there is some question as to whether the language in Bonito Boats

applies to matter for which a patent actually has been obtained. To use the

words of the Court, the language of Sears that authorizes states to place some

conditions on the use of trade dress gives rise to “an implicit recognition that

all state regulation of potentially patentable but unpatented subject matter is

not ipso facto pre-empted by the federal patent laws.”

301

The reference to

“unpatented subject matter” may imply that no such conditions can be placed

on patentable subject matter for which a patent was, in fact, not obtained.

More importantly, just as Bonito Boats stopped short of saying that

trademark protection never can be extended to patentable subject matter, that

296. Id. at 35.

297. See Bonito Boats, 489 U.S. 141 (1989).

298. See 489 U.S. at 154.

299. See 529 U.S. 205, 214 (2000).

300. See id.

301. 489 U.S. at 154 (emphasis added).

2022 THE CONSTITUTION COMMANDETH 137

case also does not state that full trademark protection should be afforded to

patentable subject matter. The Court merely stated that “limited regulations”

and/or “some conditions” can be placed on the use of patentable designs “in

order to prevent consumer confusion as to source.”

302

Further, the Court

explained that “we have consistently reiterated the teaching of Sears and

Compco that ideas once placed before the public without the protection of a

valid patent are subject to appropriation without significant restraint.”

303

Phrases such as “limited regulations” and “without significant restraint” do

not appear to equate with full trademark protection. More suitable as a

“limited regulation” is the example given by the Court in Sears, namely, that

manufacturers be required to label their products to prevent consumer

confusion.

304

Indeed, other language in Bonito Boats suggests that there are strict and

narrow bounds to the restrictions that can be placed legally on the use of

patentable subject matter. For example, the Court identified, as a matter of

federal policy, a “federal right to ‘copy and use’” the subject matter of an

expired patent.

305

Further, the Court indicated that a law that protects a

formerly-patented product from copying undermines the entire patent

system:

A state law that substantially interferes with the enjoyment of an

unpatented utilitarian or design conception which has been freely

disclosed by its author to the public at large impermissibly contravenes the

ultimate goal of public disclosure and use which is the centerpiece of

federal patent policy.

306

Although this language expressly refers to state law, the reasoning of

the Court—including the underlying principle that publicly-known ideas

“are the tools of creation available to all” —would appear to be equally

applicable to any federal law that “substantially interferes” with the use of a

utilitarian or design concept disclosed through a patent.

307

Finally, it should be noted that in discussing trademarks and trade dress,

the Bonito Boats Court spoke in terms of “trademarks, labels, or distinctive

trade dress in the packaging of goods.”

308

Not mentioned is product design

trade dress. Although protection for product design was not unheard of in

1989, it apparently did not gain real momentum until the 1990’s.

309

Hence,

302. 489 U.S. at 154 & 165.

303. Id. at 156 (emphasis added).

304. See Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 232 (1964).

305. See 489 U.S. at 165.

306. Id. at 156-57.

307. See Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 379 (2d Cir. 1997) (noting

that “the Lanham Act must be construed in the light of a strong federal policy in favor of vigorously

competitive markets,” and finding Sears and Compco relevant even if their preemption analysis does not

strictly apply to the Lanham Act).

308. 489 U.S. at 154.

309. See generally Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 209-10 (2000) (explaining that

“in recent years [the concept of trade dress] has been expanded by many courts of appeals to encompass

the design of a product”).

138 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

there is some question as to whether the statements in Bonito Boats would

apply equally to product design trade dress claims.

310

The discussion in Wal-Mart regarding the possibility of obtaining a

design patent also falls short of saying that the two types of protection can

coexist without conflict. There the Court did not expressly rule that both

could simultaneously coexist for the same feature

311

—it merely noted that

the availability of other protections, such as design patent protection, reduces

the harm that might result from the imposition of a requirement that a party

only can claim trademark rights in a product design once secondary meaning

has been established.

312

As discussed above, earlier Supreme Court

decisions arguably could be said to have provided a clear answer on this

subject, at least in cases where an expired patent is involved.

313

However,

while Singer, Kellogg, and Scott Paper all appear to foreclose the possibility

of using other forms of protection for patentable subject matter—or at least

for subject matter that actually had been protected by a patent—more recent

decisions are less clear on the subject. Sears/Compco, Bonito Boats, and

TrafFix all presented the Court with the opportunity to build upon the

foundation laid by these earlier cases and simply hold that federal patent

protection is the only available protection for patentable subject matter.

None of these decisions reached that holding, however. Instead, in each

instance, the Court applied a non-constitutional rationale and relied upon a

different basis to resolve the case before it.

CENTURY APPROACH OF THE LOWER COURTS

It should be noted that a number of lower court cases following the Wal-

Mart, TrafFix, and Dastar decisions have concluded that the same feature

can simultaneously or sequentially be protected under some combination of

the patent and trademark and/or copyright laws.

314

This, indeed, is, and

continues to be, the traditional, protectionist view. Notably, although most

310. Cf. id. at 212-15 (providing reasons for treating product design trade dress differently from

product packaging trade dress). Indeed, the Court in Wal-Mart clearly differentiated between these two

types of trade dress, concluding that one (product packaging) can be inherently distinctive whereas the

other (product design) cannot, and the default is product design (to protect copying). See id. at 215.

Compare this restrictive approach of Wal-Mart with Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763

(1992), which was much more expansive.

311. In fairness, however, the Court did state, without any words of disapproval, that the plaintiff had

obtained design patent protection covering “certain elements” of its claimed trade dress. See 529 U.S. at

214.

312. See id. at 214.

313. See supra, section I.

314. See RDF Media Ltd. v. Fox Broad. Co., 372 F. Supp. 2d 556, 564 (C.D. Cal. 2005) (stating that

“trademark and copyright protection may coexist”); Blue Nile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240,

1244 (W.D. Wash. 2007) (“Parallel claims under the Copyright Act and Lanham Act, however, are not

per se impermissible.”); Sleep Sci. Partners v. Lieberman, 2010 U.S. Dist. LEXIS 45385 at *11 (N.D.

Cal., May 10, 2010) (same); Oldcastle Precast, Inc. v. Granite Precasting & Concrete, Inc., 2010 U.S.

Dist. LEXIS 53775 at *8 (W.D. Wash., June 1, 2010) (same); Solo Cup Operating Corp. v. Lollicup USA,

Inc, 2017 U.S. Dist. LEXIS 132193 (N.D. Ill. 2017) (constitutional question raised and noted, but then

summarily set aside, as avoided by non-functionality).

2022 THE CONSTITUTION COMMANDETH 139

of the 21

Century decisions are district court cases—which only

perfunctorily espouse this position—there are new appellate cases that

totally blithely assume that trade dress and patent (and/or copyright) claims

can coexist.

315

In a recent opinion, Lanard Toys Ltd. v. Dolgencorp LLC,

316

the Federal

Circuit affirmed the lower court’s summary judgment holding in favor of the

defendant on the plaintiff’s claims for design patent infringement, copyright

infringement, trade dress infringement, and unfair competition. The plaintiff

made a “Chalk Pencil” and filed suit against the defendant, a competitor, for

selling a similar looking product to the plaintiff’s former distributor and

retailer. The court viewed each issue in the case as a separate matter

warranting a separate analysis, and disposed of each issue individually. In

so doing, the court carelessly and casually assumed that the overlap of each

cause of action (e.g., trade dress infringement and design patent

infringement) was noncontroversial. There was no mention of any possible

conflict—constitutional or otherwise.

317

Another “traditional” appellate case is Fuji Kogyo Co., Ltd. v. Pac. Bay

Int’l, Inc.

318

In this case, the plaintiff, creator of particular product designs,

acquired four utility patents, seven design patents and three trademark

registrations. Plaintiff first protected its product design by design patents,

319

but as they began to expire, plaintiff sought to register its product designs as

trademarks. Three of these were registered eventually.

320

Later, the Sixth

Circuit affirmed the district court’s cancellation of these registrations on the

basis of functionality.

321

In its opinion, the appellate court observed that the

plaintiff was attempting to extend its patent monopoly through trademark

law by obtaining trademark protection for the same configuration that had

been protected under its now-expired utility patents.

322

Significantly, the

court noted in passing that “[t]he existence of [a] design patent does not

preclude the same product from protection as a trademark under the Lanham

Act either simultaneously or successively.”

323

315. See, e.g., Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020); Craft Smith,

LLC v. EC Design, LLC, 969 F.3d 1092 (10th Cir. 2020).

316. 958 F.3d 1337, 1339 (Fed. Cir. 2020).

317. In an analogous case—involving the interface between copyright and trade dress instead of the

design patent and trade dress interface—the Tenth Circuit analyzed both copyright infringement and trade

dress infringement for the same product without any mention of possible conflict, constitutional or

otherwise, between the two types of protection. See Craft Smith, 969 F.3d 1092.

318. 461 F.3d 675 (6th Cir. 2006).

319. Id. at 679.

320. Id.

321. Id. at 690.

322. See id. at 689.

323. Id. at 683 (citing to Kohler Co. v. Moen Inc., 12 F.3d 632, 638 (7th Cir. 1993) (noting that a

trademark owner has an indefinite term of protection and must also prove secondary meaning and

likelihood of confusion in an infringement suit, which the owner of a design patent need not do).

However, in making this assertion, the Fuji court totally ignored Cudahy’s dissent in Kohler). Separately,

the court added that “[a] design patent, counter to a utility patent, is presumptive evidence of

140 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

However, in Groeneveld, decided by the same court a few years later,

the Sixth Circuit rejected this view, took a policy-based approach, and stated,

“trademark law is designed to promote brand recognition, not to insulate

product manufacturers from lawful competition.”

324

Indeed, the Groeneveld

court starkly contrasted the property-based protections derived from the

Patent Clause from the deceit-based protection based on unfair competition

principles, stating:

The clear import of the twin principles that copying in the absence of

concern of trademark law is not about copying per se but about copying

that engenders consumer confusion, is that the appropriate “intent” to

focus on is not the intent to copy but rather the intent

to deceive or confuse.

325

Other courts have rejected this majority view. For example, the Seventh

Circuit, in Jay Franco & Sons, Inc. v. Franek,

326

noted that, “many cases say

that fashionable designs can be freely copied unless protected by patent

law,”

327

and, in holding for the defendant, proclaimed:

Franek chose to pursue a trademark, not a design patent, to protect the

stylish circularity of his beach towel. Cf. Kohler Co. v. Moen Inc., 12 F.3d

632, 647 (7th Cir. 1993) (Cudahy, J., dissenting)… He must live with that

choice. We cannot permit him to keep the indefinite competitive

advantage in producing beach towels this trademark creates.

328

To this end, the courts that have held that multiple types of intellectual

property protection can be combined generally note that trademark

protection is concerned with interests materially different from patent or

involves considerations (such as proof of likelihood of confusion) that are

not required in copyright or patent cases.

329

However, the appropriateness

and ability of these additional considerations to avoid a conflict is seriously

subject to question.

nonfunctionality.” Fuji Kogyo Co., Ltd. v. Pac. Bay Int’l, Inc., 461 F.3d 675, 683. The court mainly

focused on functionality of the product designs resulting from the expired utility patents and

advertisement materials. Id. at 684-90. In this regard, it seems that the court could not find an appropriate

test to analyze “non-functionality” due to conflicting presumptions. Id. at 684. If there had been an apt

test for “non-functionality,” the court would have been better equipped to analyze the non-functionality

issues resulting from the expired design patents.

324. See Groeneveld Transp. Efficiency, Inc. v. Lubecore Int’l, Inc., 730 F.3d 494, 500 (6th Cir.

2013).

325. Id. at 514.

326. 615 F.3d 855 (7th Cir. 2010).

327. Id. at 860 (citing Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 109 S. Ct. 971,

103 L. Ed. 2d 118 (1989); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S. Ct. 784, 11 L. Ed. 2d

661, 1964 Dec. Comm’r Pat. 425 (1964); Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.

Ct. 779, 11 L. Ed. 2d 669, 1964 Dec. Comm’r Pat. 421 (1964); Kellogg Co. v. National Biscuit Co., 305

U.S. 111, 59 S. Ct. 109, 83 L. Ed. 73, 1939 Dec. Comm’r Pat. 850 (1938); Singer Manufacturing Co. v.

June Manufacturing Co., 163 U.S. 169, 16 S. Ct. 1002, 41 L. Ed. 118, 1896 Dec. Comm’r Pat. 687

(1896)).

328. 615 F.3d at 861. There was no mention of any possible conflict—constitutional or otherwise.

329. See, e.g., supra note 165 and accompanying text.

2022 THE CONSTITUTION COMMANDETH 141

XI. WHAT DO ACADEMICS THINK?

The three most recent—all post-2003—and most focused and in-depth

scholarly treatments of the constitutional conflict are articles published by

Professor Aaron Perzanowski,

330

Professor Jeanne Fromer

331

and longtime

former Permanent Sixth Circuit Legal Advisor Wayne Kalkwarf, in 2008,

2012, and 2014, respectively. Each of these articles deserves detailed

explication. First, Perzanowski.

According to Perzanowski, the simple fact is that the Constitution

provides two separate and distinct grants of authority that give rise to the

possibility of at least two types of simultaneous or sequential intellectual

property protection being available for the same product design feature. A

non-utilitarian product design may be protectable under design patent law

under the grant of authority in the Patent Clause (and possibly under

law as product design trade dress under the general authority of the

Commerce Clause.

332

It has been noted that the Commerce Clause power,

as it is understood today, would enable Congress to enact a variety of laws

that have traditionally been enacted pursuant to other grants of power.

333

But

does Perzanowski endorse such duplicative protection as constitutionally

acceptable? He explains that commentators have identified two theories that

inform our ability to identify whether a conflict exists between two different

constitutional provisions:

First, because the legislative powers enumerated in the Constitution are

cumulative, “what cannot be done under one of them may very well be

doable under another.” Second, and equally true, Congress may not

circumvent the limits imposed by one provision of the Constitution simply

by acting under another grant of authority.

334

At first glance, these two principles appear to be at odds. One places

limits on Congress’ power, while the other denies those limits. The conflict

330. Aaron K. Perzanowski, The Penumbral Public Domain: Constitutional Limits on Quasi-

PA. J. CONST. L. 1081 (2008).

331. Jeanne C. Fromer, The Intellectual Property Clause’s External Limitations, 61 D

UKE L.J. 1329

(2012).

332. This is the position taken by the courts in cases such as Ashley Furniture Indus. v. Sangiacomo

N.A., 187 F.3d 363 (4th Cir. 1999); Ferrari S.P.A. Esercizio Fabriche Automobili E Corse v. Roberts,

944 F.2d 1235 (6th Cir. 1991); and In re Mogen David Wine Corp., 328 F.2d 925 (C.C.P.A. 1964) (all

holding that both patent protection and trade dress protection can coexist for the same product features).

333. But see United States v. Lopez, 514 U.S. 549, 588 (1995) (Thomas, J., concurring) (explaining

that the broad reach of the modern Commerce Clause power could easily encroach on other specific grants

of constitutional power).

334. Perzanowski, supra note 330, at 1088 (citations omitted); see also Andrew M. Hetherington,

Constitutional Purpose and Inter-clause Conflict: The Constraints Imposed on Congress by the

ICH. TELECOMM. TECH. L. REV. 457, 459-60 (2003) (noting that “the prevailing

view among legal academics is… that Congress may not ignore the restrictions on its power contained in

one clause merely by legislating under another clause,” but also recognizing that some courts have

concluded that “as a general matter, the fact that legislation reaches beyond the limits of one grant of

legislative power has no bearing on whether it can be sustained under another” (internal quotation marks

omitted)).

142 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

only exists when each is considered separately. However, read carefully and

in conjunction with one another, the two merge to provide the basic principle

for Constitutional analysis. As explained by Perzanowski:

In isolation, neither fully accounts for the complex interactions between

the provisions of [the Constitution], but taken together, they explain that

Congress is free to legislate under any sufficient constitutional grant, so

long as it does not contravene applicable limitations elsewhere in the

Constitution.

335

He does note, however, that “determining whether a limit constrains

other grants of authority is not always an easy task.”

336

As explained by

Malla Pollack, “[t]he constitutional phrase ‘limited times’ should be

interpreted to mean that Congress’ exclusive grants to authors and inventors

must be temporally finite.”

337

Thus, “although Congress has passed

intellectual property statutes by relying on the Commerce Clause, none of

these statutes attempts to bypass the ‘limited times’ provision.”

338

Pollack

concluded by stating that, “[no commentator] has suggested a theory that

allows Congress to bypass the ‘limited times’ provision.”

339

The basic principle espoused here—that a conflict exists where

legislation clashes with the objectives or the limitations imposed by other

applicable law—is essentially the same principle that underlies Supremacy

Clause jurisprudence. Under the Supremacy Clause, if a particular state law

stands as an obstacle to the accomplishment of the “full purposes and

objectives” of federal law, the two are in conflict, and the state law is

preempted.

340

Analogously, in cases of potential inter-Clause conflict, if a

particular law enacted pursuant to one grant of authority stands as an obstacle

to the accomplishment of the “purposes and objectives” of another grant, the

two are in conflict.

341

The only practical difference between cases involving

the Supremacy Clause and cases involving inter-Clause conflicts is the

difficulty in determining which law prevails. In Supremacy Clause cases, a

clear hierarchy exists and informs that, in cases of a conflict between federal

and state laws, federal law prevails.

342

No such hierarchy exists in terms of

the various Clauses of Section 8 of Article I of the Constitution. Each Clause

stands alongside the other as a separate and alternative grant of congressional

power.

343

335. Perzanowski, supra note 330, at 1088.

336. Perzanowski admits his article is aimed at “the copyright power of Clause 8, but the general

principles and some of the limits addressed are equally applicable to the patent power.” Id. at 1082, n. 4.

Although the focus of the present article is on (design) patents, it is understood that the principles

discussed herein also applies to copyrights, since they both come from the Patent and Copyright Clause.

337. Pollack, supra note 64, at 287.

338. Id. at 288, apparently intending “intellectual property” to refer to “patent and copyright”—

incorrectly, as explained supra note 13.

339. Id. at 289.

340. See, e.g., Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 479-80 (1974).

341. See Hetherington, supra note 333, at 500.

342. See, e.g., Sears, Roebuck & Co. v. Stiffel Co. 376 U.S. 225, 229 (1964).

343. See United States v. Moghadam, 175 F.3d 1269, 1277 (11th Cir. 1999).

2022 THE CONSTITUTION COMMANDETH 143

Although the Supreme Court cases on inter-Clause conflicts do not

reveal a consistent approach, Perzanowski views these cases as

demonstrating “a general receptiveness to the notion that the limits of one

enumerated power may, under appropriate circumstances, restrain Congress

from acting under an alternative source of authority.”

344

As explained by

Perzanowski:

The rule against superfluity must be applied any time the Commerce

Clause would provide Congress with authority denied by other

enumerated powers…. Where Congress uses the Commerce Clause to

eliminate or ignore a limit within another enumerated power, that limit

must be applied externally, and the commerce power must yield.

345

To this end, patent protection arguably is within the reach of the

expansive Commerce Power.

346

Hence, in order to avoid rendering the

Patent Clause superfluous, the limitations of the Patent Clause must apply to

exercises of the Commerce Clause power that concern patentable subject

matter.

347

Now, turning to Fromer. At the beginning of her lengthy and

multifaceted constitutional examination—most of the details of which are

well beyond the scope of the current article—and shortly after dissing the

terms “Intellectual Property Clause” and “IP Clause” as “inaccurate in at

least two ways,”

348

she set forth the nature of her inquiry and examination,

coupled with her detailed conclusion, in these terms:

This Article relies on the text, structure, and history of the IP Clause, as

well as subsequent governmental activity, Supreme Court doctrine, and

policy, to show that the IP Clause operates to forbid Congress from using

its other powers “To promote the Progress of Science and useful Arts”

through laws that reach beyond the scope of the IP Clause’s prescription

to “secur[e] for limited Times to Authors and Inventors the exclusive

Right to their respective Writings and Discoveries.” This evidence shows

that if Congress seeks, via legislation, to promote the progress of science

and useful arts, the only way it can do so is by enacting laws that secure

to authors and inventors exclusive rights in their writings and discoveries

for limited times…

If the structural purpose of a law is to promote the progress of science and

useful arts, the law may use only the means specified in the IP Clause to

pursue that purpose. This understanding of external limitations imposed

by the IP Clause yields varying collisions with other constitutional

provisions, primarily the Commerce… powers. To evaluate laws that have

multiple constitutional purposes, a presumption ought to exist against the

344. Perzanowski, supra note 330, at 1089.

345. Id. at 1102-03.

346. See, e.g., Robert P. Merges & Glenn H. Reynolds, The Proper Scope of the Copyright and Patent

Power, 37 H

ARV. J. ON LEGIS. 45, 63-64 (2000).

347. See Perzanowski, supra note 330, at 1102 (stating that “a Commerce Clause unrestrained by

external limits would empower Congress to enact legislation that disregards the limits of [the Patent

Clause] — durational or otherwise,” and that such an interpretation would not only render the Patent

Clause redundant, it would strip the Clause of all meaning).

348. Fromer, supra note 331, at 1331, n.1. To conform with common practice, she proceeds to use

“IP Clause.”

144 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

constitutionality of laws that promote the IP Clause’s ends but subvert its

means, a presumption that may be overcome only by clear and convincing

evidence that Congress intentionally chose to supersede the IP Clause’s

means because of paramount, legitimate interests pursuant to its other

more permissive powers. This presumption ought to be extremely difficult

to overcome when a law’s means interfere with the IP Clause’s means

instead of merely diverging from the means included in the IP Clause…

349

Accordingly, Fromer specifically and carefully took issue with the

views of another professor, Thomas Nachbar, who had claimed that the

Patent Clause does not place limits on other constitutional powers.

350

She

persuasively touted the superiority of the sequentially-stated views of

Professors Rochelle Dreyfuss and Malla Pollack, who had concluded:

“Restrictions on constitutional grants of legislative power, such as the

simply by announcing that it was acting under some broader authority,”

351

and “[a]ccepting that Congress may not do an end run around a limitation in

one clause of the Constitution by invoking a more general clause, Congress

may not grant (at least some types of) exclusive rights to something close to,

but not quite, the writings of authors or the discoveries of

inventors.”

352

Fromer further explained:

[The Patent] Clause is structured differently from the other Article I,

Section 8 powers. It is the only clause that specifies the means for carrying

out the allotted power: “by securing for limited Times to Authors and

Inventors the exclusive Right to their respective Writings and

Discoveries.” The natural reading of this clause, given its unique structure,

is that Congress has the power to promote the progress of science and

useful arts using solely the specified means.

353

She continued to pound this point, relying upon early comments by Framers

such as James Madison and some 21st Century scholars.

354

Then she

concluded:

This discussion would seem strongly to establish the IP Clause’s internal

limits, but what of the ability of Congress to invoke its other powers to use

alternative means, including the rejected means? The same history seems

strongly to support the inference that the Framers intended Congress to

possess no means to promote the progress of science and useful arts other

349. Id. at 1413-14.

350. Id. at 1334 (citing Thomas B. Nachbar, Intellectual Property and Constitutional Norms, 104

COLUM. L. REV. 272 (2004)); see Fromer, supra note 331, at 1334, n.12 (citing two articles by Edward

Walterscheid).

351. Id. at 1335, n.15 (citing Rochelle Cooper Dreyfuss, A Wiseguy’s Approach to Information

Products: Muscling Copyright and Patent into a Unitary Theory of Intellectual Property, 1992 Sup. Ct.

Rev. 195, 230 (“Restrictions on constitutional grants of legislative power, such as the Copyright Clause,

would be meaningless if Congress could evade them simply by announcing that it was acting under some

broader authority.”)); Malla Pollack, The Right To Know?: Delimiting Database Protection at the

Juncture of the Commerce Clause, the Intellectual Property Clause, and the First Amendment, 17

Cardozo Arts & Ent. L.J. 47, 60 (1999).

352. Fromer, supra note 331, at 1335 (citing Pollack, supra note 351, at 60).

353. Id. at 1339-40 (footnotes omitted).

354. See id. at 1341 n. 41-43.

2022 THE CONSTITUTION COMMANDETH 145

than those adopted in the IP Clause. And even stronger evidence, taken

from the earliest congressional activity, encourages the drawing of this

inference.

355

Later on, Fromer invoked the classic Trade-Mark Cases opinion, proceeding

to connect that 1879 case to the 2003 Dastar case:

The Court indicated that the IP Clause designates the means that Congress

may use – “by securing for limited times, to authors and inventors, the

exclusive right to their respective writings and discoveries” - to promote

the progress of science and useful arts. The Court observed that “the

ordinary trade-mark has no necessary relation to invention or discovery”

and that a trademark should not be understood as a “writing[]” within the

bounds of the IP Clause.

356

And this, in turn, led her to reach this conclusion:

This reasoning constructs a channeling mechanism of sorts: laws

concerned with the promotion of the progress of science and useful arts

ought to be channeled into the purview of the IP Clause and must comply

with its limiting means, and those that are not must be channeled

elsewhere, into the purview of another enumerated power. In the Trade-

Mark Cases, the Court was called upon to deal with the latter situation. It

has not, however, been called upon to address directly the former

situation.

357

Regarding the apparently analogous treatment of the Bankruptcy Clause as

superseding the Commerce Clause in the Supreme Court’s 1982 Ry. Labor

Executives’ Ass’n v. Gibbons case,

358

Fromer proffered:

Although Professor Nachbar suggests that Gibbons was incorrectly

decided or should not be broadly applied to other Article I, Section 8

powers, the Court’s reasoning applies even more strongly to the IP Clause.

The historical and other evidence that the IP Clause should limit

Congress’s other enumerated powers is more robust than any evidence of

the negative implications one might draw from the uniformity requirement

of the Bankruptcy Clause. As such, the structural reasoning that the Court

employed in the bankruptcy context ought to apply even more readily to

the IP Clause to forbid Congress from evading the limited means allowed

for promoting the progress of science and useful arts by invoking another

enumerated power.

359

355. Id. at 1352.

356. Id. at 1360. In footnote 134, Fromer further explains:

The Supreme Court subsequently made a similar point in interpreting the phrase “origin of

goods” in the Lanham Act, ch. 540, 60 Stat. 427 (1946) (codified as amended in 15 U.S.C.

§§1051-1127 (2006)), the federal implementation of the trademark laws. The Court concluded

in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), that the rights

conferred by the Lanham Act belong to “the producer of the tangible goods that are offered for

sale” rather than “the author of any idea, concept, or communication embodied in those

goods.” Id. at 37. The Court rejected the latter, broader possible interpretation because it would

“create a species of perpetual patent and copyright, which Congress may not do.” Id.

Id. at 1360-61.

357. Id. at 1361 (footnote omitted).

358. 455 U.S. 457 (1982).

359. Fromer, supra note 331, at 1365 (footnotes omitted).

146 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

After discussing the consonance of the utilitarian nature of the Patent

Clause’s orientation with everything else she had discussed, Fromer

expounded:

The dominant policy underlying the protection of intellectual property in

the United States is utilitarian and is grounded in the IP Clause. This

utilitarian policy supplements the evidence discussed in the previous

Sections to support the idea that the IP Clause externally limits Congress’s

ability to use means other than those specified in the IP Clause to promote

the progress of science and useful arts.

360

Although late in her comprehensive article Fromer emphatically stated “The

collision between the Commerce and IP Clauses is direct,”

361

surprisingly,

the remainder of her article fails to even mention the intersection of design

patents and trade dress. Happily, another recent commentator did focus on

this matter—just two years later on.

Mr. Kalkwarf frontally-faced many relevant issues, and in doing

so made this salient statement:

The Patent/Copyright Clause authorizes patents for a limited time. Patents

may not be for perpetuity. Federal trademarks, as a creation of the

Commerce Clause, do not possess this constitutional restriction. The

limiting requirements of the Patent/Copyright Clause, as previously

examined, may not be trumped by the general provisions of the Commerce

Clause. Prior Supreme Court precedent and the rule against superfluity

both dictate that the specific time restriction of the Patent/Copyright

Clause must control any conflict between the two clauses. Any laws

passed under the Commerce Clause—in this case trademarks—must not

conflict with the limiting restrictions of the Patent/Copyright Clause, for

to do otherwise would render the Patent/Copyright Clause void.

362

His article also stated:

The ebb and flow of Supreme Court jurisprudence… establishes that the

Commerce Clause does not provide Congress absolute monarchical

authority. Rather, for Congress to properly exercise its Commerce Clause

power, the legislation must positively regulate this country’s

commerce. Further, the very language of the Commerce Clause, along

with other constitutional clauses, places affirmative limitations and

restrictions upon Congress’ power.

363

He further stated:

Because each clause has specific duties, functions, and restrictions, in the

constitutional conflict between the Commerce and

Patent/Copyright Clauses, the rules of statutory construction and Supreme

Court precedent establish that the gluttony of commerce may not ravish

the delicate morsel of patents and copyrights.

364

360. Id. at 1366 (footnotes omitted).

361. Id. at 1380.

362. Kalkwarf, supra note 101, at 423-24. Mr. Kalkwarf, a former graduate student in one of the

senior author’s “Intro to IP” law courses, provides the most recent and comprehensive analysis of the

current conflict concern. His article, oft-referenced herein, provides considerable support for the authors’

present thesis.

363. Id. at 367 (footnotes omitted).

364. Id. at 412-13.

2022 THE CONSTITUTION COMMANDETH 147

He concisely asked and answered this pivotal question: “may the

Commerce Clause, with its broad authority to regulate activity that would

logically include patents and copyrights, override the restrictions imposed

by the Patent/Copyright Clause? The answer must be no.”

365

He explained

that the central theory underlying this view is the rule against superfluity,

which essentially holds that a narrative should not be interpreted so as to

render portions of its text superfluous or meaningless.

366

The rule, often

relied upon when interpreting statutes and contracts, should apply with equal

force in the context of resolving inter-Clause Constitutional conflicts:

367

Under this approach, the commerce power is free to regulate activities that

substantially affect interstate commerce so long as it does not strip the

limits found in other enumerated powers of their meaning. If legislation

justified under the commerce power would effectively eliminate text

found elsewhere in the Constitution, the Commerce Clause must yield to

those external limits.

368

The Supreme Court expressly relied upon the rule against superfluity in

Railway Labor Executives’ Assn. v. Gibbons,

369

in which it found that a law

passed—ostensibly under the authority of the Commerce Clause—to protect

the interests of former employees of a railroad company to be

unconstitutional, on the ground that it contravened the uniformity

requirement of the Bankruptcy Clause. According to the Court, “hold[ing]

that Congress had the power to enact nonuniform bankruptcy laws pursuant

to the Commerce Clause … would eradicate from the Constitution a

365. Id. at 410.

366. In one sense, since the modern, expansive interpretation of the Commerce Clause could be

interpreted to give Congress the power to enact most, if not all, of the laws authorized by other Article I,

Section 8 clauses, this interpretation renders all of those clauses superfluous. Justice Thomas recognized

this possible view in United States v. Lopez, 514 U.S. 549, 588-89 (1995) (Thomas, J., concurring).

However, the rule against superfluity does not preclude the possibility that Congress’s enumerated powers

may be coextensive. That is, the rule does not apply where one clause provides an alternative source of

authority for an otherwise permissible law. Only when one clause is used to circumvent—and therefore

render meaningless—a limitation contained in another clause does the rule kick in.

367. Professor William Patry has discussed this same concept in terms of respecting the overall

structure of the Constitution, stating “constitutional limitations placed on Congress by a specific clause

… serve, in at least some circumstances, to bar Congress from circumventing their application by

legislating under a different clause.” William Patry, The Enumerated Powers Doctrine and Intellectual

Property: An Imminent Constitutional Collision, 67 G

EO. WASH. L. REV. 359, 376 (1999). He posited

that a statute that attempted to avoid the specific limitations of a constitutional grant would be struck

down as unconstitutional:

The rationale for the invalidation of such a statute would be structural: the Constitution sets

forth a scheme of limited powers that are intended to further specific constitutional objectives.

When Congress legislates in a manner that interferes with those objectives, it impairs the

constitutional scheme regardless of what power Congress legislates under. Id.

Professor Patry’s views are informed by the writings of Professor Laurence Tribe, who argued that both

text and structure must be considered in a constitutional analysis, as “[o]nly as an interconnected whole

do [the] provisions [of the Constitution] meaningfully constitute a frame of government.” Id. at 374

(quoting Laurence Tribe, Taking Text Seriously: Reflections on Free-Form Method in Constitutional

Interpretation, 108 H

ARV. L. REV. 1221, 1235-36 (1995)).

368. Id. at 1099-1100.

369. 455 U.S. 457 (1982).

148 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

limitation on the power of Congress.”

370

Mr. Kalkwarf analogized the

Railway case to the current constitutional issue:

The Commerce Clause allows for the regulation of activities affecting

interstate commerce, which concededly involves patents and copyrights.

However, the Patent/Copyright Clause serves as a security wall, a force

field as it were, to prohibit the Commerce Clause from encroaching upon

the limiting requirements applicable specifically to patents and

copyrights. Thus, just as Congress could not use the Commerce Clause to

violate the limiting terms of the Bankruptcy Clause, so too is Congress

prohibited from using the Commerce Clause to nullify the restrictions that

exist in the Patent/Copyright Clause.

371

In another analogous case, RadLAX Gateway Hotel, LLC v.

Amalgamated Bank,

372

the Supreme Court concluded that, “[a] well

established canon of statutory interpretation succinctly captures the problem:

‘[I]t is a commonplace of statutory construction that the specific governs the

general.’”

373

Although the Supreme Court set forth this principle in the

context of the Bankruptcy Code, this principle is equally applicable to the

issue at hand. In the same context, the Court further concluded that, “[t]he

general/specific canon is perhaps most frequently applied to statutes in

which a general permission or prohibition is contradicted by a specific

prohibition or permission. To eliminate the contradiction, the specific

provision is construed as an exception to the general one.”

374

XII.

WHAT DO PRACTITIONERS THINK?

Aside from the published comments proffered by Mr. Saidman,

375

who

bridges the academic/practical gap, very few established practitioners have

expressed their views on the instant issue in published formats. Notably, two

practitioners from a well-known all-IP firm provided a detailed written

analysis in connection with a major professional meeting just five years

370. Id. at 469. Similarly, in Perry v. United States, 294 U.S. 330 (1935), the Supreme Court has at

least implicitly recognized the possibility that the limits of one enumerated power can constrain another.

In that case, legislation enacted pursuant to the power to regulate the value of money was held to be

unconstitutional as it violated an inherent limitation on the power to borrow money on the credit of the

United States. See id. at 347.

371. Kalkwarf, supra note 101, at 411 (emphasis added). A similar view can be found in the Head

Money Cases, 112 U.S. 580 (1884), where the court began by considering whether the legislation was an

exercise of the commerce power or the taxation power. Finding that the real purpose behind the statute

was to regulate foreign commerce, the Court concluded that the law was not bound by the limits of the

Tax Clause. However, even though the Court concluded that the law was not enacted pursuant to the Tax

Clause, it nevertheless examined the challenged law in light of those limits, and concluded that it did

comport with them. The Court’s consideration of the question of whether a law enacted under the

Commerce Clause violated the Tax Clause’s requirement for uniformity strongly suggests that it

recognized that the limits of one Clause could restrict Congress’s power under another. Id. at 595-96.

372. 566 U.S. 639 (2012).

373. Id. at 645 (citing Morales v. Trans World Airlines, Inc., 504 U.S. 374, 384 (1992)).

374. Id.

375. Saidman, supra note 65.

2022 THE CONSTITUTION COMMANDETH 149

ago.

376

While the authors correctly noted that TrafFix “did not discuss the

effect of an expired design patent on trade dress protection,” they also

commented – not so surely “correctly” in the current authors’ opinion—that

“TrafFix does not appear to have any effect on the prior case law relating to

trademark protection for a design that was protected by a design patent.”

377

They went on to cite positively E-Z Bowz, LLC v. Prof’l Prod. Research

Co.,

378

which, in denying summary judgment for defendant on plaintiff’s

trade dress claims, considered the interaction of such claims with

coextensive design patent protections. The authors then commented as

follows:

In reaching its conclusion, the E-Z Bowz court specifically discussed the

effect of the existence of a design patent on a trade dress claim after the

TrafFix case and found that… a design patent not preclude trademark

protection in the same design…

However, the authors did not mention that E-Z Bowz made no reference

whatsoever to the Constitution. But to be fair to the authors, in the

conclusion to their article—a section perhaps pregnantly entitled “Still Not

Settled Precedent”—they candidly admitted the uncertainty still remaining,

in these particular terms:

But what about when the design patents . . . expire? Can the trademark

protection live on in perpetuity in its own right (assuming the trademark

continues to be used in commerce)? Although the law appears to be well

settled with respect to the availability of trademark protection despite the

existence of an expired design patent, the Supreme court has still not

expressly spoken to the issue and therefore, not all courts, nor the

Trademark Trial and Appeal Board, may be of one mind. Thus, we may

still have to wait for the Supreme Court to address the issue in order to

know definitely if design patent and trade dress protection can peacefully

coexist and extend one beyond the other.

379

And in a final paragraph, they saliently said: “Until [the Supreme Court

speaks], intellectual property law practitioners should consider both design

patents and trade dress protection for the unique, non-functional aspects of

[their] client’s product configuration and packaging.”

380

The upshot of these views is that until the Supreme Court frontally faces

and decides this issue, practitioners should continue to do what they have

been doing (often without any forethought or reservations whatsoever) for

years, namely obtaining both types of protection (simultaneously or

sequentially). As a “practical” matter, this may be sound advice.

381

376. T. Durkin and J. Shirk, Design Patents and Trade Dress Protection: Are the Two Mutually

Exclusive?, IPO Annual Meeting (Sept. 2016).

377. Id. at 9 (emphasis in the original).

378. 2003 U.S. Dist. LEXIS 15364 (S.D.N.Y. 2003).

379. Durkin, supra note 376, at 20.

380. Id.

381. Ms. Durkin was in attendance when the senior author of the current article professed the authors’

views about the unconstitutionality of double coverage in an AIPLA-sponsored debate with an established

patent practitioner from another all-IP firm about two years ago. See Kenneth Germain, “Why the

150 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

XIII. WHY DON’T JUDGES AND ATTORNEYS ACKNOWLEDGE AND

EMBRACE THE CONFLICT?

As is typical, “proving” a negative or the absence of something is

difficult, maybe impossible. Surmising suppositions may be the best that

can be done sensibly. Thus, when attempting to ascertain why judges and/or

practitioners don’t “get” a particular legal theory or concept—or don’t even

seem to realize that such a theory or concept is lurking in the vicinity of the

issue(s) actually being considered—the challenge is substantial.

It’s easier to contemplate why judges might not “see” or deal with a

non-obvious issue: it’s not their jobs to probe below the surface of the issues

actually presented to them by counsel. And, not being IP-educated/oriented,

judges may assume or easily be persuaded into believing that various types

of IP (e.g., design patents and trademarks/trade dress), which emanate from

different statutes derived from different constitutional provisions, are so

different and separate that it would be normal for them to coexist

comfortably. Indeed, even when judges sense an underlying issue

potentially of consequence to deciding a litigated case, they may prefer to

refrain from being proactive as a matter of discrete jurisprudence. This is

especially likely when the underlying issue involves the Constitution; after

all, there is a generally recognized principle that the Constitution only should

be interpreted and applied when all non-constitutional grounds for decision

have been considered without resolving the case.

382

And we, the authors of

this article, take no exception to this approach.

Perhaps this reluctance to parse the Constitution sometimes leads

judges to pursue—and find—ways to decide cases on grounds that are

somewhat questionable. A case in point is Bobrick v. ASI, discussed in the

Preface to this article. In that case, in the authors’ studied opinion—after

consulting with a bevy of patent lawyers all of whom were engineers before

they were lawyers—there was very doubtful reason for finding for

Defendant ASI (the close copyist, if you will) on the basis of utilitarian

functionality.

383

This is because the “convex arc” design in issue really did

not provide a mechanical or economical advantage to any maker of the

various stainless steel restroom accessories initially covered by Plaintiff’s

design patents and later covered by its trademark registrations. For example,

the load-bearing benefits of an arc are best realized when a weight is placed

Constitution Disallows Dual Protection Under Design Patent and Trade Dress Regimes for the Same

Subject Matter” AIPLA Design Rights Boot Camp (August 6, 2019). The debate opponent was Mr.

Richard Stockton, of Chicago’s Banner Witcoff firm. These same people re-debated about a year later.

See Kenneth Germain, “THE CONSTITUTION COMMANDETH: Thou Shall Not Protect the Same

Subject Matter Under Design Patent and Trade Dress Laws”, AIPLA Webinar Series (December 10,

2019).

382. See e.g., Hagans v. Lavine, 415 U.S. 528, 547 (1974) (explaining that a “court should not decide

federal constitutional questions where a dispositive nonconstitutional ground is available”).

383. Bobrick, 2012 U.S. Dist. LEXIS 111465 (aff’d in part by Bobrick Washroom Equip., Inc. v. Am.

Specialties, Inc., 2014 U.S. App. LEXIS 5560 (9th Cir. Cal., Mar. 26, 2014)).

2022 THE CONSTITUTION COMMANDETH 151

on the apex of the arc (i.e., the highest point along the curved portion). But

here the convex arc was not load-bearing; rather, it merely served as a

decorative front for the washroom products. Nevertheless, utilitarian

functionality was the judge’s stated basis for Defendant’s victory. Aesthetic

functionality—also alleged in the case—based on the marketplace advantage

of the innovative, attractive contour of Plaintiff’s devices’ front panels,

would have been a much sounder rationale for rejecting Plaintiff’s

claims. But that doctrine was less well-settled and probably less familiar to

the judge. A victory for Defendant of course could have been based on the

absence of likelihood of confusion, especially considering the environment

of large, expensive commercial contracts involved. In truth, only if the judge

had rejected utilitarian (and aesthetic) functionality, and then proceeded to

find the existence of likelihood of confusion, would Plaintiff have been in

position to prevail, and only in that scenario would Defendant’s last-ditch

defense—unconstitutionality—have ascended to a must-decide level. Seen

this way, the judge’s recourse to utilitarian functionality is understandable

(even if not correct).

The bigger question is why practitioners—specifically those

representing defendants who would stand to benefit from the additional

defense of alleged unconstitutionality—apparently almost never have raised

let alone pressed this defense. Certainly, this defense would be last-ditch for

the reasons outlined above. Nevertheless, in recent decades there must have

been some cases in addition to Bobrick in which such a defense could have

been asserted—and even considered and cautiously ruled upon by some

judges. But no such cases have been found: only a few perfunctory

rulings…

384

So, the “blame” falls on the lawyers who represented relevant

defendants. Here’s our hypothesis: lawyers generally, but particularly those

practicing IP law (including patent law and trademark law) are protection-

oriented. That is, their education, training, and mindset regarding IP issues

tends to be “how can we best protect our clients’ IP assets from being

infringed by their competitors?” IP lawyers sometimes represent defendants,

but they would be inclined to rely upon the more usual grounds for defense,

and, furthermore, consideration of the Constitution would not likely be on

their radar screens. Even if they conjured this up, they might be

uncomfortable in raising a theory that could be inconsistent with the pro-

protection preferences of many of their and/or their firms’ clients. And such

a defense would be seen as high-cost and low-success. So, why shoot the

golden goose?

384. See supra note 314.

152 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

XIV. RESOLVING THE CONFLICT: THE “KEWANEE KOMPROMISE”*

Despite significant but superficial recognition among lower courts of

the simultaneous or sequential availability of multiple types of intellectual

property protection for the same nonfunctional product feature, the question

remains unresolved as to whether a conflict exists between providing trade

dress protection for a product design and the constitutional limits on patent

protection under the Patent Clause. The Supreme Court’s treatment of the

interaction between patent and trademark law is a key reason why this issue

remains unresolved, as is the fact that the precise issue has not been presented

to the Court as yet. The lack of any in-depth constitutional analysis of the

potential conflict by any of the lower courts that have addressed the issue

constitutes another reason why the issue remains unresolved.

Although not expressly identified as such, concerns with superfluity

might have been in the mind of the TrafFix Court. As discussed above, the

Court took the extra step of noting the lingering constitutional issue involved

with providing trade dress protection for previously-patented useful subject

matter.

385

The Court’s obvious concern was with a situation in which trade

dress protection would be used to provide “the practical equivalent” of patent

protection.

386

The intuitive, albeit unstated, basis for this concern was that

providing patent-like protection for the previously-patented subject matter

through trade dress laws could render the Patent Clause—and its limits—

superfluous and therefore meaningless. This implicit basis is also reflected

in the Court’s opinion in Kewanee Oil Co. v. Bicron Corp.,

387

in this

cautionary statement noting that a constitutional conflict would arise if a

particular law provided a viable means to protect inventions that was more

attractive than patent law:

If a State, through a system of protection, were to cause a substantial risk

that holders of patentable inventions would not seek patents, but rather

would rely on the state [trade secret] protection, we would be compelled

to hold that such a system could not constitutionally continue to exist.

388

As suggested herein, extending trade dress protection to the subject matter

of an expired design patent effectively provides “the practical equivalent” of

patent protection for the subject matter of the expired design patent.

389

*Kredit is given to Perry Saidman for his clever K-kontaining title, Kan TrafFix Kops Katch the Karavan

Kopy Kats, 82 J. Pat. & Trademark Off. Soc’y 839 (2000).

385. See supra note 207.

386. TrafFix, 532 U.S. at 35.

387. 416 U.S. 470 (1974). The Court further explained that, “[t]rade secret law and patent law have

co-existed in this country for over one hundred years.…Congress, by its silence over these many years,

has seen the wisdom of allowing the States to enforce trade secret protection. Until Congress takes

affirmative action to the contrary, States should be free to grant protection to trade secrets.”). Id. at 493.

388. Id. at 484. The authors recognize that the Kewanee Oil decision dealt with a conflict between

state trade secret law and federal patent law. Although relevant to the issue, the Supremacy Clause line

of cases does not directly dispose of the federal law vs. federal law conflict presented herein.

389. This is a result of the unique nature of product design trade dress. With most trademarks and

even product packaging trade dress, the mark is distinct from the goods offered under the mark. However,

2022 THE CONSTITUTION COMMANDETH 153

The concern with superfluity comes into sharpest focus in situations

where the holder of a design patent seeks to claim trade dress protection for

the patented design. Because the protections are largely equivalent, at least

as a practical matter, and because trade dress protection is not constrained by

the “for limited times” limitation of patent protection, patent holders would

naturally view trade dress protection as an attractive supplement to patent

protection. This attractiveness lies at the heart of the problem. Any

interpretation or implementation of the trade dress laws that provides such

limitless patent-like protection has the effect of rendering the Patent Clause

meaningless. Such a result would necessarily be unconstitutional.

Granting trade dress protection for a product design that previously was

the subject of a design patent plainly conflicts with the purposes of the Patent

Clause. The Supreme Court has emphasized, time and again, that a central

tenet underlying the patent system is that matter which falls into the public

domain must remain free for all to use.

390

Indeed, the language of and

limitations contained in the Patent Clause suggests that its purpose is to

protect and expand the public domain.

391

Hence, the Patent Clause envisions

a system where a product design is protected for a limited time, after which

it is injected into the public domain for all to use, free from restraint.

392

Granting trade dress protection for the product design effectively removes it

from the public domain. The conflict is obvious.

Of course, it is not merely the conflict with the purpose of the Patent

Clause that gives rise to unconstitutionality. It is the conflict combined with

the fact that product design trade dress can render the limitations of the

Patent Clause meaningless. A clear and significant limitation of the Patent

Clause is that any monopoly granted must be limited in time. Product design

trade dress protection, like all trademark protection, potentially can last

forever. Given that product design trade dress protection provides design

patent-like protection, it essentially can be used to perpetuate a monopoly

unrestrained by the “for limited times” limitation of the Patent Clause,

thereby rendering that limitation (if not the entire Patent Clause)

meaningless.

with product design trade dress, the mark is the product and the product is the mark. Protecting the mark

means preventing others from using the same product design, therefore effectively removing the design

of the product from the public domain for as long as the mark remains viable. As noted by one

commentator:

When a court is presented with a trade dress infringement for an existing or expired design

patent, it faces a perplexing obstacle. If the court grants an injunction for that which was

claimed in a design patent, i.e. the design, it would effectively be extending the term of the

patent beyond its statutory life…

Bonder, supra note 40, at 26. Mr. Bonder goes on to explain that such an extension of the patent is “a

result that should not occur.” Id. at 26-27.

390. See Bonito Boats, 489 U.S. at 156; Kewanee Oil, 416 U.S. at 481; Scott Paper, 326 U.S. at 256.

391. See Perzanowski, supra note 330, at 1123-24.

392. Cf. generally Dastar Corp., 539 U.S. at 23.

154 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

However, years ago the Supreme Court resolved a somewhat similar

overlap that existed between patent and trade secret law in a federal v. state

context. The resolution was simple: inventors of a novel technology may

choose between utility patent protection that provides them with exclusive

rights for a limited term in return for disclosing the technology, and trade

secret protection that provides potentially perpetual rights—as long as the

technology remains secret. In 1974, in Kewanee Oil, the Supreme Court held

that state trade secret protection was not in conflict with, and therefore not

pre-empted by, federal patent protection.

393

In reaching this conclusion, the

Court considered whether state trade secret protection conflicted with any of

three identified policies of federal patent law, looking particularly at whether

the state law clashed with the objectives of the federal law.

394

The Court

concluded that the patent law policy of encouraging innovation is not

disturbed by the existence of trade secret protection, which also encourages

innovation.

395

The Court also concluded, following a considered analysis,

that trade secret law does not conflict with the patent policy of disclosure.

396

In addition, the Court concluded that the policy of ensuring that matter in the

public domain remains free for all to use is not disturbed because trade

secrets, by their very nature, must be kept confidential and therefore have

never been placed in the public domain.

397

The Court’s analysis in Kewanee Oil is a purposive analysis.

398

It looks

to the purpose that each law is intended to serve and considers whether the

implementation of the purpose of the state law conflicts with the purpose

underlying the federal law. Ultimately, the Court found that the purposes are

not in conflict, but are complementary in that each encourages innovation.

As further support for its finding that the two purposes are in accord, the

Court noted that the protections afforded by trade secret law serve to

393. 416 U.S. 470 (1974).

394. See id. at 480. As this case involved the interplay between federal and state law, the Court’s

conflict analysis was conducted in line with its Supremacy Clause jurisprudence. See id. at 479.

395. See id. at 484.

396. See id. at 491. In conducting this analysis, the Court considered the potential for conflict

between the two protection schemes with respect to three different categories of trade secrets: those

believed by the owner to constitute a validly patentable invention; those known to their owners to be

ineligible for patent protection, and those whose valid patentability is considered dubious. See id. at 484.

After considering each of these types of trade secrets from a pragmatic point of view, the Court concluded

that the potential for trade secret protection to clash genuinely with the disclosure policy of patent

protection was, at best, remote, and that denying trade secret protection would have deleterious effects

on society. See id. at 485-91.

397. See id. at 484.

398. A purposive analysis dictates that a court interpreting a statute should attribute a purpose to the

statute, and then interpret the language to carry out the established purpose. See Michael Livingston,

Practical Reason, “Purposivism,” and the Interpretation of Tax Statutes, 51 Tax L. Rev. 677, 680-81

(1996).

2022 THE CONSTITUTION COMMANDETH 155

encourage innovation largely in areas that would not otherwise be amenable

to patent protection, or for which patent protection is questionable.

399

However, that purposive analysis is conducted with a pragmatic

mindset. In finding that no significant conflict exists between the purposes

of patent law and trade secret law, the Court was plainly mindful of the

comparatively weaker protection afforded by trade secret law.

400

Trade

secret protection, as the Court noted, is vulnerable to invalidation through

third party independent creation or discovery or through reverse engineering,

as well as through theft or misappropriation in a manner not easily

susceptible of proof.

401

Because of these vulnerabilities, trade secret law was

viewed more as a supplement to, and not a replacement for, patent protection,

serving to provide protection and encourage innovation in those instances

where patent protection would not be available. The language of the Court

strongly suggests that were the situation otherwise—that is, were trade secret

protection to be structured in such a way as to become an attractive

alternative to patent protection—the conflict analysis would have come out

differently:

If a State, through a system of protection, were to cause a substantial risk

that holders of patentable inventions would not seek patents, but rather

would rely on the state [trade secret] protection, we would be compelled

to hold that such a system could not constitutionally continue to exist.

402

Although not expressly stated as such by the Court, the decision in

Kewanee Oil forces inventors to make a choice regarding the type of

protection they wish for their inventions. They can elect to pursue patent

protection, or they can opt for trade secret protection. By the very nature of

these types of protection, however, they cannot have both.

403

Patents are

predicated on disclosure of the invention to public knowledge, whereas trade

secrets must be kept out of public knowledge or they cease to exist as secrets.

Hence, an inventor must make a clear choice early in the life of an invention

which type of protection will best protect his interests. Some commentators

have indicated that forcing a similar choice between design patent protection

and product design trade dress protection could avoid any conflict between

the Patent Clause and trade dress law.

404

399. See Kewanee Oil, 416 U.S. at 493 (explaining that “[t]rade secret law encourages the

development and exploitation of those items of lesser or different invention than might be accorded

protection under the patent laws”.).

400. See id. at 489-90.

401. See id. at 490.

402. Id. at 489.

403. See. e.g., Bone supra note 13, at 265 n.105 (identifying the two types of protection as mutually

exclusive).

404. See, e.g., Horlander, 97 Trademark Rep. at 757 (“Inventors should be required to elect between

(1) the time-limited statutory monopoly of a patent, or (2) the rigors of the marketplace race to obtain

acquired distinctiveness (secondary meaning) in a product configuration trade dress and the ultimate

reward of a potentially limitless time period of product configuration trade dress protection.”); see also

Browning, supra note 208, at 1064 (suggesting that a trade dress claim involving a product design that

was the subject of an expired design patent would fail “because upon the expiration of the producer’s

156 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

The choice between protection by design patent or protection by trade

dress may be analogous to the choice between protection by utility patent or

trade secret. In this regard, the relationship between design patent and trade

dress is similar to the relationship between utility patent and trade secret. For

example, once the developer of a product design chooses trade dress to

protect its design, it cannot seek design patent protection because the product

design is necessarily used in public.

405

However, because trade dress law

cannot protect product design before acquiring secondary meaning, per Wal-

Mart, there is a risk that competitors will copy the design early on.

Alternatively, the developer of a product design could choose patent

protection before publicly disclosing the design. The scope of protection

offered through design patent is generally broader than that of trade dress.

406

Comparatively speaking, because utility patent and trade secret are

alternative means to protect technologies, so too should design patent and

trade dress be alternative means to protect product design. In this manner,

the creator of a product design should be limited to only one means of

protection. Accordingly, applying the same principles in the relationship

between utility patent and trade secret, the creators of product designs could

not invoke trade dress protection once they choose design patent protection,

or vice versa. Thus, by analogy to the Kewanee Kompromise, the

constitutional conflict is defused. A recent article reached the same

conclusion:

Thus, an analysis of the laws involving design patents and trademarks

establish[es] that the holder of a design must be an adult and make a

choice. The owner cannot have both a design patent and a trademark for

the same design. It is constitutionally prohibited by the Patent/Copyright

Clause. The owner of the design must decide whether an exclusive

monopoly over the design for fourteen years with the design belonging to

the public after the expiration of the monopoly would be better than using

the design as a trademark and possessing the design forever, possibly

developing the trademark into the owner’s most valuable commodity. The

one thing the owner may never have is both a design patent and a

trademark for the same design.

407

Another author also took on the issue frontally, concluding, after careful

analysis, that design patents and trade dress on the same design cannot

constitutionally coexist.

408

So said he:

design patent, which the producer elected to secure, the federal patent laws gave rise to a federal right to

‘copy and to use’ the claimed ornamental features of the device.”(emphasis in original)).

405. The primary law controlling statutory bars is 35 U.S.C. § 102(b), stating “[a] person shall be

entitled to a patent unless (b) the invention was patented or described in a printed publication in this or a

foreign country or in public use or on sale in this country, more than one year prior to the date of the

application for patent in the United States.”

406. Kohler Co., 12 F.3d at 637 (“Compared to patent protection, trademark protection is relatively

weak because it precludes competitors only from using marks that are likely to confuse or deceive the

public.”).

407. Kalkwarf, supra note 101, at 425-26 (emphasis added).

408. See Tyler Jackson, Functional Signs and Decanters of Wine: How Trade Dress Protection

Unconstitutionally Extends Expired Design Patents, 18 Marq. Intell. Prop. L. Rev. 431, 450-51 (2014).

2022 THE CONSTITUTION COMMANDETH 157

The extension of design patent protection though [sic] trade dress

protection unconstitutionally interferes with the right to copy guaranteed

by the Constitution… While the rule in Sears was based on the Supremacy

Clause of the Constitution, the logic still applies. … The Court reasoned

that “the patent system is one in which uniform federal standards are

carefully used to promote invention while at the same time preserving free

competition.” … While the Supremacy Clause cannot be used to

invalidate federal laws, the Constitution binds federal courts and

Congress. Therefore, the creation of trade dress law through legislation

and common law must comport with the Constitution, including the Patent

Clause.

409

Yet another commentator proposed amending design patent statutory law to

include a short period in which design patent owners are required to convert

to trade dress protection.

410

He further explained:

With regard to trade dress protection after a design patent expires when

the design patent owners did not switch the design patent to trade dress…

no one can invoke trade dress protection for the design disclosed in

expired patents. Because the design patent owners chose the protection by

design patent although they had a chance to choose the protection by trade

dress, they accepted the risk that their product design might not be

protected even if it acquired secondary meaning later. They should assume

the risk because they decided not to pursue trade dress protection initially.

In addition, exclusion of trade dress protection after design patents expire

may practically impose little problems on the industrial design world since

the life of industrial design may not be so long as the life of design

patents.

411

XV. CONCLUSION

The American pro-competition, anti-protectionist environment—as

evidenced by the general nature of “unfair competition” laws and also by

statutory enactments such as Sherman, Clayton, and the FTC Act—has been

confirmed many times and for many years by Supreme Court precedents

consistently taking “right to copy” positions that are intended to leave in the

409. Id. at 451. He took the preemption principle a significant step further, and beyond the scope of

the Kewanee Kompromise, stating, “[t]he right to use a design should also apply to designs that are

unpatented but otherwise patentable under 35 U.S.C. § 171 as a design patent.” Id. Thus, in his view,

design patent availability would preclude trade dress protection. The current authors do not subscribe to

this radical view.

410. Saito explained these proposed amendments to the design patent laws as follows:

Creators of novel product design may seek design patent protection regardless of actual use of

the design. If the requirements for design patent are met, the design patent is granted. Next,

within a limited time, i.e. a statutory period, the design patent owners may choose between

keeping design patent protection without change or switching subsequently to trade dress

protection… If they decide to switch to trade dress protection from design patent protection,

they would file a trade dress application with the United States Patent and Trademark Office

(USPTO) within the statutory period. When the application is registered, the design patent will

expire. If the USPTO finally rejects the application, the design patent remains valid.

Saito, supra note 204, at 690. Saito further explained how this would be a proper approach to protect

product design that is inherently distinctive or has acquired secondary meaning, without betraying public

expectation for practicing the subject matter in expiring design patents. Id.

411. Id. at 691.

158 CHI.-KENT J. INTELL. PROP. | PTAB BAR ASSOCIATION VOL 21:1

public domain everything that cannot justifiably be singled out for

protection, or where prior protections have expired.

In a few contexts other than the current one, the Constitution has been

construed so that its arguably inconsistent provisions can coexist

harmoniously. Principles of sound constitutional (and analogous statutory)

interpretation have been applied so as to provide preference and deference—

with regard to specific requirements and restrictions viewed in

contradistinction to amorphous general authorizations. Accordingly, the

specific has prevailed over the general, and nothing has been rendered

superfluous and void. In the current context, then, the Patent Clause, with

its specific, express requirements and restrictions, should prevail over

inconsistent applications of the Commerce Clause, with its judicially-

expanded, general and loose scope.

When the two Clauses overlap in such a way that one might “overrule”

the other, the specific must not be defeated by the general. In such a

situation, the authors of this article propose that the owner of the relevant

IP—specifically the owner of a design that is amenable to protection both

under Design Patent law and under Trademark/Trade Dress law—be legally

required to choose one of these modes, foregoing the other completely. This

is what the authors have dubbed the “Kewanee Kompromise.”