## Facts

- Marketing Displays, Inc. (MDI) sold temporary road and outdoor sign stands using a visible “dual-spring” mechanism near the base to resist wind.
- MDI held two utility patents covering the dual-spring mechanism; the patents later expired.
- After expiration, TrafFix Devices, Inc. copied the dual-spring configuration and sold similar sign stands, allegedly after reverse engineering an MDI product.
- MDI marketed its product as “WindMaster,” while TrafFix used the name “WindBuster.”
- MDI sued under the Lanham Act alleging trademark infringement (product names), trade dress infringement (dual-spring configuration), and unfair competition; TrafFix asserted an antitrust counterclaim.
- The district court ruled for MDI on the name-based trademark claim and against TrafFix on antitrust, but granted TrafFix summary judgment on trade dress, concluding the dual-spring design lacked secondary meaning and was functional.
- The Sixth Circuit reversed on trade dress, reasoning that functionality required showing competitors would suffer a significant non-reputation-related disadvantage without access to the feature.
- The Supreme Court granted certiorari limited to the trade dress issue.

## Issues

1. Whether a product configuration claimed in an expired utility patent may be protected as trade dress under Lanham Act § 43(a) when the configuration is functional.
2. What evidentiary weight an expired utility patent carries in determining functionality for trade dress purposes.
3. Whether courts must assess alternative designs or “competitive necessity” when the feature is functional under the traditional functionality test.

## Decision

- The Supreme Court reversed the Sixth Circuit and held MDI’s trade dress claim barred by functionality.
- The Court concluded the dual-spring design was functional because it was essential to the sign stand’s operation in resisting wind and keeping the sign upright.
- The Court held the expired utility patents were strong evidence that the claimed dual-spring features were functional.
- The Court rejected the Sixth Circuit’s approach treating “significant non-reputation-related disadvantage” as a required showing in all cases.
- The Court indicated that, where a feature is functional under the traditional test and is claimed in an expired utility patent, courts need not speculate about alternative designs or competitive necessity.
- The case was remanded for further proceedings consistent with the Court’s functionality ruling (other claims were not before the Court).

## Legal Principles

- Trade dress protection for product design under Lanham Act § 43(a) requires the claimant to prove the feature is not functional.
- A product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.
- An expired utility patent is strong evidence that the features claimed in the patent are functional.
- When the expired utility patent claims the feature asserted as trade dress, the party seeking trade dress protection bears a heavy burden to show the feature is not functional (e.g., merely ornamental, incidental, or arbitrary).
- The “significant non-reputation-related disadvantage” formulation is a supplementary way to establish functionality, not an across-the-board prerequisite, especially where the feature is plainly functional under the traditional test.
- Once functionality is found, trade dress protection is unavailable regardless of any showing of secondary meaning.

## Conclusion

The Court held that the dual-spring configuration, claimed in expired utility patents and serving a utilitarian purpose, was functional and therefore ineligible for trade dress protection, preventing trademark law from extending patent-like exclusivity over useful product features.


TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001)