Trademark Protection For Products Covered By Utility Patents
Trademark Protection For Products Covered By Utility Patents
More than 20 years ago, the US Supreme Court held that a utility patent is strong proof that the features claimed within are functional, and hence, not protectable trade dress.
While intellectual property rights are protected by patents and trademarks, ‘new and useful’ inventions are protected by utility patents which generally concern how a product functions. By comparison, trademarks serve ‘to identify and distinguish (one’s) goods, from those sold or manufactured by others and to indicate the goods’ source. A trademark holder must positively show its trade dress is not functional, unless registered.
The intent behind the proscription of functional trademarks is to prevent the trademark holder from unfairly smothering legitimate competition by excluding its competitors from using functional aspects of that product in their own, competing products. More than 20 years ago, the US Supreme Court held that a utility patent is strong proof that the features claimed within are functional, and hence, not protectable trade dress. However, trademark owners can still protect functional aspects of products also covered by a utility patent, at least for the time being.
Trademark protection for products includes brand names and logos whereas ‘trade dress’ is the product’s ‘total image and overall appearance including features such as size, shape, colour/colour combinations, texture, graphics or even sales techniques.
When the alleged trade dress or aspects thereof have been disclosed in a utility patent, the tension between patents and trade dress protection is most obvious. For instance in Abbott Labs versus Revitalyte, plaintiff Abbott was able to assert a believable claim for trade dress protection for the packaging of its well-known product, Pedialyte, which includes a rectangularly shaped plastic bottle with rounded corners and two ridges that run around the circumference of the bottle above and below its label. Defendant Revitalyte argued that the prior utility patent ruined the Pedialyte trade dress at the pleading stage. But the district court denied dismissal. The parties disputed the significance of the utility patent disclosure: The Pedialyte bottle was shown in an embodiment, but not a preferred one. Abbott further asserted that the favored embodiment ‘looked nothing like the Pedialyte bottle’. Despite the apparent high standard for trade dress protection in a product associated with a utility patent, Abbott Labs versus Revitalyte shows that trademark owners will continue to pursue trade dress protection for products concomitantly protected by patents till conclusively excluded from doing so by obligatory precedent.
