Functional Signs and Decanters of Wine: How Trade Dress Protection Unconstitutionally Extends Expired Design Patents

INTRODUCTION I. THE OVERLAP BETWEEN DESIGN PATENT AND TRADE DRESS A. Design Patent Protection B. Trade Dress Protection II. THE RIGHT TO COPY SAGA A. The Supreme Court Creates A New Hope For The Right To COPY B. The CCPA Strikes Back At The Right To Copy C. The return of the right to copy? III. TRAFFIX DID NOT DO ENOUGH TO SAVE RIGHT TO COPY, BUT THERE IS HOPE IV. TRADE DRESS UNCONSTITUTIONALLY EXTENDS DESIGN PATENTS CONCLUSION INTRODUCTION The ability to protect a design with trade dress that either is also protected by a design patent or was previously protected by a now expired design patent unconstitutionally extends the protection of new, original, and ornamental designs. Even further, the ability to receive indefinite trade dress protection for an unpatented, but patentable, design unconstitutionally allows indefinite protection of patentable subject matter. The right to copy an invention claimed by an expired utility or design patent stems from the language and intent of the Intellectual Property ("IP") Clause, and there is substantial Supreme Court and other precedent that supports the right to copy doctrine. For the past forty years, however, the right to copy doctrine has all but disappeared from the supreme Court's language. In fact, the Federal Circuit has explicitly abandoned the right to copy doctrine. (1) Instead, in the TrafFix decision, the Supreme Court has resorted to the functionality doctrine to prevent the term extension of a utility patent through trade dress protection. (2) The lower courts, before and after TrafFix, have made the same determination that the functionality doctrine prevents any conflict between trade dress and patent protection. (3) The functionality doctrine, however, does not address the conflict between design patent and trade dress protection. In fact, the functionality doctrine has inflated the problem since TrafFix. TrafFix stands for the proposition that a utility patent is presumptive evidence of functionality for a trade dress analysis. (4) Courts have since interpreted this to mean the converse for a design patent; namely, that a design patent is presumptive, but not dispositive, evidence of non-functionality for a trade dress analysis. (5) This is because a design patent would also be invalid if the design was functional and not ornamental. (6) Therefore, it is more likely that a design will receive trade dress protection if that same design is or has been the subject of a design patent. This Comment will argue that the ability to receive trade dress protection on a design that has been or could be the subject of a design patent is unconstitutional. The first section of this Comment will discuss the overlap between design patent and trade dress protection and how it leads to products receiving protection in both areas. The second section will discuss the right to copy doctrine, its root in the Constitution, and its development through Supreme Court and Federal Circuit precedent. The third section will discuss the TrafFix decision and the role it has played in preventing the extension of utility patent terms, but bolstered the extension of design patent terms, through trade dress protection. The fourth section will argue that this unconstitutionally allows for indefinite protection of designs covered by expired or unexpired design patents and products that are unpatented but patentable under design patents. Finally, this Comment will argue that the only solution is to not allow trade dress protection for designs that are patentable as design patents. Some argue that merely forcing a choice between trade dress and design patent protection is sufficient; (7) however, if the subject matter of design patents is properly within the scope of patent protection, then allowing such designs to bypass the constitutional limitations of patent protection by calling them trade dress is still an unconstitutional term for a monopoly on a design. …