Traffix Devices v. Mktg. Displays
Supreme Court of the United States
November 29, 2000, Argued ; March 20, 2001, Decided
[**1258] [***171] [*25] JUSTICE KENNEDY delivered the opinion of the Court.
Temporary road signs with warnings like "Road Work Ahead" or "Left Shoulder Closed" must withstand strong gusts of wind. An inventor named Robert Sarkisian obtained two utility patents for a mechanism built upon two springs (the dual-spring design) to keep these and other outdoor signs upright despite adverse wind conditions. The holder of the now-expired Sarkisian patents, respondent Marketing Displays, Inc. (MDI), established a successful business in the manufacture and sale of sign stands incorporating the patented feature. MDI's stands for road signs were recognizable to buyers and users (it says) because the dual-spring design was visible near the base of the sign.
[*26] This litigation followed after the patents expired and a competitor, TrafFix Devices, Inc., sold sign stands with a visible spring mechanism that looked like MDI's. MDI and TrafFix products looked alike because they were. When TrafFix started in business, it sent an MDI product abroad to have it reverse engineered, that is to say copied. Complicating matters, TrafFix marketed its sign [****7] stands under a name similar to MDI's. MDI used the name "WindMaster," while TrafFix, its new competitor, used "WindBuster."
MDI brought suit under the Trademark Act of 1964 (Lanham Act), 60 Stat. 427, as amended, 15 U.S.C. § 1051 et seq., against TrafFix for trademark infringement (based on the similar names), trade dress infringement (based on the copied dual-spring design) and unfair competition. TrafFix counterclaimed on antitrust theories. After the United States District Court for the Eastern District of Michigan considered cross-motions for summary  judgment, MDI prevailed on its trademark claim for the confusing similarity of names and was held not liable on the antitrust counterclaim; and those two rulings, affirmed by the Court of Appeals, are not before us.
We are concerned with the trade dress question. The District Court ruled against MDI on its trade dress claim. 971 F. Supp. 262 (ED Mich. 1997). After determining that the one element of MDI's trade dress at issue was the dual-spring design, id. at 265, it held that "no reasonable trier of fact could determine that MDI has established secondary meaning" in [****8] its alleged trade dress, id. at 269.In other words, consumers did not associate the look of the dual-spring design with MDI. As a second, independent reason to grant summary judgment in favor of TrafFix, the District Court determined the dual-spring design was functional. On this rationale secondary meaning is irrelevant because there can be no trade dress protection in any event. In ruling on the functional aspect of the design, the District Court [*27] noted that Sixth Circuit precedent indicated that the burden was on MDI to prove that its trade dress was nonfunctional, and not on TrafFix to show that it was functional (a rule since adopted by Congress, see 15 U.S.C. § 1125(a)(3) (1994 ed., Supp. V)), and then went on to consider MDI's arguments that the dual-spring design was subject to trade dress protection. Finding [***172] none of MDI's contentions persuasive, the District Court concluded MDI had not "proffered sufficient evidence which would enable a reasonable trier of fact to find that MDI's vertical dual-spring design is non-functional." Id. at 276. Summary judgment was entered against MDI on its trade dress claims.Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.
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532 U.S. 23 *; 121 S. Ct. 1255 **; 149 L. Ed. 2d 164 ***; 2001 U.S. LEXIS 2457 ****; 58 U.S.P.Q.2D (BNA) 1001; 69 U.S.L.W. 4172; 2001 Cal. Daily Op. Service 2223; 2001 Daily Journal DAR 2796; 2001 Colo. J. C.A.R. 1496; 14 Fla. L. Weekly Fed. S 135
TRAFFIX DEVICES, INC., PETITIONER v. MARKETING DISPLAYS, INC.
Subsequent History: On remand at Mktg. Displays, Inc. v. Traffix Devices, Inc., 11 Fed. Appx. 547, 2001 U.S. App. LEXIS 11895 (6th Cir. Mich., 2001)
Prior History: [****1] ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SIXTH CIRCUIT.
Marketing Displays, Inc. v. TrafFix Devices, Inc., 200 F.3d 929, 1999 U.S. App. LEXIS 33997 (6th Cir. Mich., 1999)
Disposition: 200 F.3d 929, reversed and remanded.
trade dress, patents, dual-spring, springs, functionality, features, expired, infringement, competitors, utility patent, stands, manufacturer, copying, serves, wind, secondary meaning, Lanham Act, products, terms
Business & Corporate Compliance, Entertainment Industry Falsity & Performance Misattribution, Trade Dress Protection, Causes of Action, Trademark Law, Eligibility for Trademark Protection, Distinctiveness, General Overview, Infringement Actions, Subject Matter of Trademarks, Terms Requiring Secondary Meaning, Federal Unfair Competition Law, False Advertising, False Designation of Origin, Elements of False Designation of Origin, Lanham Act, Burdens of Proof, Registration Procedures, Federal Registration, Principal Register, Evidence, Presumptions, Exceptions, Statutory Presumptions