Trademark Protection for Non-Functional Features of Patented Products Gains Traction in U.S. Courts

The intersection of utility patents and trademark trade dress protection remains a nuanced area of intellectual property law. Utility patents protect new and useful inventions, focusing primarily on functional aspects of products under 35 U.S.C. § 101. Trademarks, by contrast, serve to identify and distinguish goods and indicate their source, as codified in 15 U.S.C. § 1127 and affirmed by the Supreme Court in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995). Crucially, trademark law prohibits protection of functional product features to prevent unfairly restricting competition, as established in TrafFix Devices, Inc. v. Marketing Displays, Inc., 523 U.S. 23 (2001).

The Supreme Court in TrafFix held that features claimed in a utility patent are strong evidence of functionality, rendering them ineligible for trade dress protection. In that case, the Court found the “dual-spring” sign stand’s design functional because it was claimed in an expired patent. However, the Court also left open the possibility that non-functional, ornamental elements of a product—even if disclosed in a utility patent—could qualify for trade dress protection.

This tension was recently illustrated in the district court decision Abbott Labs. v. Revitalyte LLC, 744 F. Supp. 3d 894 (D. Minn. 2024). Abbott sought trade dress protection for the packaging of its Pedialyte product, characterized by a rectangular clear plastic bottle with rounded corners and distinctive ridges above and below the label. Revitalyte argued that a prior utility patent covering the bottle design precluded trade dress protection. The court denied Revitalyte’s motion to dismiss, finding genuine disputes over whether the patent’s preferred embodiment resembled the Pedialyte bottle and whether Abbott’s trade dress extended beyond the patent claims.

Significantly, the court emphasized Abbott’s allegations that manufacturing improvements since 1993 eliminated the need for the specialized packaging designs disclosed in the patent. Citing Seventh Circuit dicta, the court noted that functional features may become ornamental over time, diminishing the patent’s relevance to functionality. This “passage of time” argument allowed Abbott’s trade dress claim to survive at the pleading stage, though its ultimate viability remains uncertain.

Other courts have reached contrasting conclusions when trade dress claims closely mirror patented designs. For example, Schutte Bagclosures, Inc. v. Kwik Lok Corp., 193 F. Supp. 3d 245 (S.D.N.Y. 2016), affirmed on appeal, found the bag closure design functional due to its striking similarity to a utility patent embodiment. Similarly, ASICS Corp. v. Target Corp., 282 F. Supp. 2d 1020 (D. Minn. 2003), denied a preliminary injunction for trade dress infringement where the shoe design appeared in a patent. The Eighth Circuit in Pocket Plus, LLC v. Pike Brands, LLC, 53 F.4th 425 (8th Cir. 2022), held a vertically oriented pouch design functional because it was essential to the product’s use and quality.

The Fourth Circuit in CTB, Inc. v. Hog Slat, Inc., 954 F.3d 647 (4th Cir. 2020), and the Sixth Circuit in Groeneveld Transport Efficiency, Inc. v. Lubecore International, Inc., 730 F.3d 494 (6th Cir. 2013), similarly found product designs functional based on utility patents, emphasizing that alternative designs do not negate functionality. The Ninth Circuit in Talking Rain Beverage Co. v. South Beach Beverage Co., 349 F.3d 601 (9th Cir. 2003), reinforced that the existence of alternative designs does not render a product non-functional under TrafFix.

In TrafFix, Justice Kennedy’s dicta suggested that manufacturers might prove certain arbitrary or ornamental aspects of a patented product do not serve a functional purpose, potentially qualifying for trade dress protection. However, commentators like J. Thomas McCarthy have criticized this view, arguing that non-functional elements should not appear in patent claims. Some courts, including in ASICS Corp., have adopted this stricter interpretation.

Despite the high bar for trade dress protection when a utility patent exists, Abbott Labs. v. Revitalyte demonstrates that trademark owners continue to assert trade dress claims for products with overlapping patent protection. These claims persist until binding precedent definitively resolves the issue.

The article also raises questions about design patents, which explicitly protect ornamental product designs. Unlike utility patents, design patents do not focus on functionality but on appearance, and their expiration dedicates the design to the public. Whether this dedication precludes subsequent trademark protection for the same decorative appearance remains an open question, especially if the trademark application occurs after the design patent’s expiration.

As courts continue to grapple with these issues, trademark owners and practitioners should carefully assess the functional versus ornamental nature of product features disclosed in patents when pursuing trade dress protection.

Disclaimer: The views expressed herein are those of the author and do not constitute legal advice or establish an attorney-client relationship.