Kohler Co. v. Moen Incorporated, F/k/a Stanadyne, Inc.

COFFEY, stating Before CUDAHY and ted declaration Circuit that Moen’s faucet ESCHBACH, Judges, design function, upon utility is not based Senior Circuit is Judge. manufacture, inexpensive and is many competitive one of designs in in-

COFFEY, Judge. Circuit dustry performing the same function. Moen began Moen, action This 1987 when also submitted a declaration from chair- (“Moen”) Incorporated applications filed two man of competitors, one its chief Price Pfister, in the United States Patent and Trademark that stated that Moen’s faucet (“PTO”) distinctive, register design Office design a faucet its single point indicates a and a faucet origin, handle as trademarks. is neither functional nor (“Kohler”) Company utilitarian, opposed ap- Kohler and that trademark plications configuration before the PTO’s Trademark competi- Trial would not hinder (“TTAB”) Appeal trade., Board ground plumbing tion in the Finally, a mar- product shapes registrable survey were not ket plumbers as research of 273 licensed trademarks. The TTAB dismissed six cities eighty-twp percent Kohler’s .that revealed oppositions. sought surveyed Kohler review of the those identified the as a faucet 1071(b) product, § TTAB’s decision under 15 eighty-three U.S.C. Moen percent parties the district court. The filed cross identified the handle product. as Moen summary judgment stipulated motions and (cid:127) TTAB, In proceedings before the rely first that would on the record be- court, court, district and in this Kohler has fore TTAB and further that no new forthrightly product shapes conceded that if evidence would be submitted. The district can receive trade- summary court judgment entered in favor of law, mark Moen registration is entitled to against Moen and Kohler. Kohler filed a its LEGEND faucet and faucet handle. timely appeal judg- from the district court’s Thus, the issue before the district court and ment. We affirm. legal § this court is in nature: does (cid:127) of “Trademark” in the Lanham definition I. BACKGROUND (“the Act”) Act, (1988),1 15 U.S.C. competitors Kohler and Moen are exclude trademark con- of manufacturing selling plumb- figurations? business ing products, including faucets and faucet (cid:127) II. STANDARD REVIEW OF sought handles. Moen and obtained trade- registration of its “LEGEND” kitchen review decided sum We issues on appearance faucet and the mary judgment of the handle used de novo and resolve all rea on the “LEGEND” and other Moen nonmoving faucets. sonable inferences favor of the support registration Delavan, party. Spraying Systems of its con- v. Co. trademarks, (7th Cir.1992). figurations Moen introduced Sum promotional mary voluminous evidence of judgment appropriate plead sales and “if the expenses respect design, ings, depositions, interrogatories, each answers to file, also pur- together submitted substantial evidence that admissions with the Act, 100-667, I, 1. The Lanham or Trademark Act of sion Act of Pub.L. No. tit. revisions, the federal trademark statute. See. 15 U.S.C. Stat. 3935. The did not take (1988). Congress §§ extensively re- 16, 1989, year effect until November one after (cid:127) vised the Lanham Act in the Trademark Law their enactment. Revision Act of 1988. See Trademark Law Revi- issue, reviewing specific spect genu- no affidavits, any, that there is show Congress autho inquire must whether court fact and that the material as to ine issue interpre legal make the agency rized judgment as a to a moving is entitled party issue. Id. tation at 56(c), Celotex of law.” Fed.R.Civ.P. matter Corp., 1 Sysco F.3d Condo 317, 322, Catrett, 106 S.Ct. 477 U.S. Corp. v. Shore, (7th Cir.1993); North Homemakers (1986). 2552, par- 2548, L.Ed.2d 265 91 408, Bowen, v. Inc. of material fact are no issues agree there ties Cir.1987). such Congress If did not intend summary judg- entry that would reviewing must inter delegation, “the court appeal on is wheth- The central issue ment. to the with little deference pret the statute correctly court determined er the district judiciary is interpretation, for the agency’s configurations are entitled to product that statutory authority on issues of final trademark, Act, § 43 of the protection under Condo, (citing 1 F.3d at 604 construction.” § 1125 15 U.S.C. 9, Chevron, n. 104 at 467 U.S. at 843 S.Ct. 9). If, however, delegated Congress n. doctrine, estab the Chevron Under authority interpret agency to the U.S.A., Inc. v. Natural in Chevron lished statute, court is wheth question “the for the Council, Inc., 467 U.S. Resources Defense permis on a agency’s answer is based er the (1984), 2778, 837, 81 L.Ed.2d 694 104 S.Ct. Chevron, statute.” construction of the sible an [administrative] a court reviews “when 843, 104 uphold at 2782. To at S.Ct. 467 U.S. which it agency’s construction of the statute interpretation, the court does agency’s administers, ques with two it is confronted agency’s interpreta to conclude the not have First, at 104 S.Ct. at 2781. tions.” Id. or the only possible construction tion was the Congress must determine whether the court court would have reached construction precise question at issue in the addressed reading Id. n. 11. of the statute. its own so, language. If “that is the plain statute’s only reas agency’s interpretation need be Court, matter; for the as well as of the end see Id. at 104 S.Ct. onable.2 — unambig agency, give effect to the must Mines, Bethenergy Pauly v. also -, 111 Congress.” Id. at uously expressed intent of -, 2524, 2535, 115 U.S. S.Ct. If, however, (1991) 842-43, 2781-82. (applying 104 S.Ct. at “reasonable L.Ed.2d 604 standard).3 ness” ambiguous silent or with re the statute is twenty years. has While the to the last misconstrues our deference 2. The dissent general agency charged matter ... the case for interpretation "[a]s noted that of the reasonable respect compelling judicial less with of the Lanham Act deference is the administration U.S.A., agency positions inconsistent with Inc. v. Natural Resources that are to previously Chevron Council, Inc., Defense views,” Bethenergy Pauly 467 U.S. 104 S.Ct. v. held (1984), -,-, Mines, Inc.,-U.S. of our with an abandonment L.Ed.2d 694 challenges obligation the constitutional to review the Court also has 115 L.Ed.2d 604 statutory by It is a basic canon of agency interpreta raised Kohler. interpretation emphasized "[a]n that initial Chevron, a court should defer to an that not ... carved in stone.” tion is not agency's interpretation that raises statute agency is 104 S.Ct. at 2792. An U.S. "there is constitutional concerns if anoth serious interpretation reason obliged its to insure that raising interpretation, not these serious consti er interpretations by referring "varying able concerns, fairly that be tutional ascribed continuing policy on a basis.” wisdom of its Corp. De Bartolo v. statute].” Edward I. [the 104 S.Ct. at 2792. The Patent Id. at Bldg. & Constr. Trades Coun Coast Florida obligation Gulf Office has fulfilled its Trademark S.Ct, 1392, 1398, cil, 568, 577, § interpretation reason that its 43 is ensure course, (1988). Of we defer to an able, configu and its determination statutory interpretation but after agency’s ipay Lanham Act under the rations instance that the we have determined in the first entitled to some deference. agency's interpretation serious -does not raise agency in Chevron involved a 3. While the action independent our concerns. As constitutional regulation, legislative the Chevron standards of reveals, agency's analysis determination that actions, applied agency to most deference are including protection is available for adjudications such as administrative configurations fails' to raise such con Davis, by TTAB. See K. Administrative those cerns. Treatise, (1992 Supp.); § see also Law 29:16-7 Office did not That the Patent Trademark American Oil EEOC Arabian initially registration of overall con- allow 1227, 1236, 113 L.Ed.2d preclude us figurations trademarks does not J., (“In (1991) (Scalia, concurring) an era when interpretation deferring agency's positions governed by statute, agency for the our treatment which has been consistent devices, III. ANALYSIS “trademark” “means” words, names, symbols or devices. Further- dismissing oppositions, Kohler’s more, language the court noted that the necessarily § the TTAB concluded that 45 of Act, § 2 § 15 U.S.C. which lists provides the Act exceptions registrability Act, under the product configurations. Section 45 of the supported ruling Congress its did not “include) any Act defines trademark ] § intend 45 to be an all-inclusive list. word, name, symbol, or device or combi Section states that “[n]o trademark adopted nation thereof and used a manu ... registration shall be refused prin- identify goods facturer or merchant his nature,” cipal register on account its un- distinguish them from those manufac less one or specified exceptions more of the tured or sold others.” 15 U.S.C. forth, to registrability apply. set the statute (1988). notes, § As Kohler 45 does not list added). § (emphasis 15 1052 U.S.C. Neither “product configuration” among examples its (the tags applicant trouser item sought Early of trademarks. decisions under the Kotzin) register product nor configura- strictly § language Act construed the of 45 tions fall exceptions within product shape and held that a or container registrability §in set forth 2. protection. was not entitled to trademark David, Application Mogen In 328 F.2d of McCarthy, McCarthy See 1 on Trademarks (C.C.P.A.1964), the C.C.P.A. held that 925 (3d ed.1992) § Competition, and 7.31 Unfair configuration of a container could be Trademarks]; McCarthy [hereinafter on Ex registered as a trademark for the Co., Mining Mfg. Parte Minnesota & 92 contains. Id. at 929-30. The C.C.P.A. (1952). U.S.P.Q. Subsequent 74 TTAB deci thereafter product configuration held that a reviewing rulings, sions and the TTAB courts registered itself could be aas trademark in however, interpreted § have 45 to allow Inc., Application Honeywell, 497 F.2d of product configura (C.C.P.A.), denied, 1080, 1844 cert. 419 U.S. tions. (1974). 95 S.Ct. 42 L.Ed.2d 674 The Kotzin, Application In 276 F.2d C.C.P.A, Circuit, Federal the TTAB of (C.C.P.A.1960), 414-15 the Court of Cus interpreted § have since 45 to allow trade 4 (“C.C.P.A.”) Appeals toms and Patent held mark qualifying product con (“word, name, § symbol 45 list or figurations. Teledyne, See In re 696 F.2d device”) did not other items from (Fed.Cir.1982); restrict 968 In re Morton-Norwich receiving they Prods., Inc., satis (C.C.P.A.1982); 671 F.2d 1332 requirements registration fied the Corp. Corp., v. .the Rolodex 204 Oxford Pendaflex Principal Register.5 (TTAB The court U.S.P.Q. 1973); Kotzin Superba 249 In re supported interpretation by Cravats, Inc., (TTAB 1965). its of the statute U.S.P.Q. 145 354 noting provision stated that Congress specify § trade did not 45 Because words, names, symbols marks “include” or configurations are entitled Chevron, 'legislative by merging rules vs. other action’ Circuit Court of Claims and the anachronism."); dichotomy ... Appeals. is an Chemical Court of Customs and Patent The Fed- Council, Ass’n v. jurisdiction Natural Resources eral Circuit now has exclusive of Mfrs. Defense 116, 125-26, 1102, 1107-08, provided S.Ct. § 105 TTABdecisions as in 15 U.S.C. 1071. (1985) (applying 1295(a)(4)(B). 84 L.Ed.2d 90 Corp § Chevron to Envi 28 See U.S.C. In South v. States, (Fed.Cir.1982), Agency’s case-by-case ronmental Protection vari United 690 F.2d 1368 regulations); adopted precedent ance determinations as well as 'its Federal Circuit as the deci- Eastman Kodak Co. v. Bell & Howell Document sions of the Court of Claims and the of Court Customs, Mgt. (Fed. Appeals. Prods. 994 F.2d and Patent 1993) (applying adjudica Cir. Chevron to TTAB tion); Bush, Corp. Registration Principal Register requires Bethlehem Steel 5. on the 1990) (applying (1) proof Cir. arbitrary Chevron to that the mark is either or distinctive, (2) Agency inherently Environmental Protection order). administrative or has become distinc- through acquisition secondary tive . of mean- ing, shape i.e. consumers associate the awith Pesos, Cabana, Improvement single The Federal Courts Act of source. Two Inc. v. Taco 127(a), 25, 38, -, --, § Pub.L. No. 97-164 96 Stat. -U.S. 2757-58, (1992). Appeals created a new Court of for the Federal L.Ed.2d however, § terpretation we of 45 Act. The Senate protection, must de- Report accompanying the amendments Congress authorized the whether

termine ‘symbol or de specifically states “the words Patents Trademarks Commissioner of ” vice,’ in the retained Trademark Revi § were interpret 45 of the Act. and the TTAB to definition trademark “so sion Act’s revised (1988), Congress explicit- § In 35 U.S.C. colors, registration duty ly- granted the Commissioner shapes, configurations where sounds Act, including administering making. rule S.Rep. function as trademarks.” is a member of the also Commissioner in, Cong., reprinted 100th 2d Sess. adjudicative body the Patent and Trade- added). (emphasis at 5607 1988 U.S.C.C.A.N. Office, § TTAB. U.S.C. Congress specifically approved thus recognized the judicial interpretation of 45’s defini broad authority the TTAB Commissioner tion of con “trademark” include interpret in Graham v. John the Act figurations. light persua uniform Company, Deere judicial authority subsequent sive (1966): congressional judicial inter approval of those duty is the of the Commissioner of [i]t pretations Congress §of we conclude the courts adminis- Patents product configurations were intended that system give tration of effect § eligible for trademark status under 45 of by appropri- standard constitutional Therefore, now, as the Lanham we hold Act.. case, of application, ate in each the statuto- past, § in the that 45 of the Act we have Congress. ry scheme of configurations eligible allows to'be 6, The Commissioner 86 S.Ct. at 688. Bicycle status. See trademark Schwinn Act, and TTAB could not administer the Inc., (7th Bicycles, v. 870 F.2d 1176 Co. Ross arising in issues trademark could resolve Ideas, Cir.1989); Corp., v. Traex Service Inc. Act, interpret- applications without (7th Cir.1988); Rogers 846 F.2d 1118 W.T. ing product configu- § 45 to discern whether Keene, 334, F.2d Co. v. 778 337 Cir. eligible rations for trademark status. were 1985). Having that the TTAB’s determined course, subject Of the TTAB’s decisions are § permissible 45 is and is construction of review, (1988); § judicial 15 U.S.C. 1071 thereof, consistent our construction we Campaign FEC v. Democratic Senatorial challenges specific to the TTAB’s turn Committee, 32, 42, 38, 454 102 U.S. S.Ct. interpretation. (1981), the TTAB must 70 L.Ed.2d but brief, essentially In its Kohler restates two interpret § 45 first instance to deter- arguments Initially, Koh- various forms. product configurations qualify mine whether ler-argues granting protec- that trademark Condo, 1 trademarks. at 605. See F.3d configurations impermissibly to product tion inquiry third and final the Chevron the Patent Clause of the Unit- conflicts with analysis TTAB that is whether the conclusion implementing ed States Constitution configurations eligible for trade- equivalent it is law because permissible on a con- mark status based Second, alleges perpetual patent. Kohler persuasive- §of of the Act. The struction product configura- protection trademark Federal ness of the TTAB and the Circuit’s anticompetitive tions inhibits interpretation § 45 is reinforced development precludes it manufac- because accompanying legislative history the 1988 using product configurations turers from re- Act Lanham amendments. Trademark configurations. sembling trademarked Pub.L. Law Revision Act of Cong., S.Rep. § 2d 100th Sess. A. in, (1988), reprinted 1988 U.S.C.C.A.N. IS TRADEMARK PROTECTION Although amendments did not these EQUIVALENT ATO NOT 1989, approxi- take effect until November PERPETUAL PATENT mátely years two after TTAB’s decision case, prior granting that in this as a codification of case law Kohler asserts allowing registra in- preamendment validate uniform product configuration directly tion for a con An applicant for trademark need prove only flicts with the rationale the Constitution’s proposed that trademark is Act, distinctive; the- is, Patent Clause6 and Patent it arbitrary, is either §§ alleges U.S.C. Kohler suggestive, descriptive secondary. and has Supreme interpretation Court’s the meaning.7 Although patent rights are limit- Boats, Patent statute, Clause Bonito Inc. v. Thun ed in duration trademark rights Boats, Inc., 141, 146, der 489 U.S. 109 may long continue as as the'mark is used to Craft 971, 975, 103 (1989); S.Ct. L.Ed.2d Sears distinguish and identify. Significantly, while Co., Roebuck & Co. v. U.S. type creates a monopoly pricing Stiffel 784, 11 (1964), Compco S.Ct. L.Ed.2d 661 power by giving patentee the exclusive Corp. Day-Brite Lighting, right innovation, to make and sell the (1964), gives the owner indicates that the TTAB and courts’ preclude lower using others from the mark when interpretation of the Act to allow trademark likely such use. is to cause confusion or to product configurations contra 1 McCarthy deceive. See on Trademarks requirement 2.05[1). venes the Patent Clause’s ‘Writings the exclusive and Discov Quick In Aronson v. Point Pencil analyze eries” be for a Time[ ].” “limited To 59 L.Ed.2d 296 the soundness of Kohler’s claim that courts’ pol- Court described the interpretation of the Act runs afoul of the underlying icies the federal' law as law, implementing patent Patent Clause and follows: purpose a brief discussion of the of each is First, patent law seeks to foster and re- necessary. invention; second, promotes ward disclo- patent protection, applicant To obtain sure of inventions to stimulate in- further has to show that an'invention or is permit public novation and to prac- the to both novel and “not at obvious the time the patent tice the invention expires; once the person having invention was made to a ordi- third, stringent requirements pat- for nary skill in per- the art to which said art protection ent seek assure to that ideas in (1988). § tains.” 35 pro- U.S.C. 103 Patent public domain' remain there for the utility tection is limited in patents duration: public. free use of the years, § last for seventeen 35 U.S.C. 154 (citing 99 at 1099 S.Ct. Kewanee design patents extend for four- 470, 480-81, (1988).' Corp., Oil v. Bicron Co. years, § teen 35 U.S.C. 173 The 1879, 1885-86, 94 S.Ct. 40 passes .public innovation into the domain af- (1974)). As the Third Circuit noted in Mer patent expires. ter the Building chant & Evans v. Roosevelt Prod Compared patent protection, trademark (3d ucts, Cir.1992), key 963 F.2d 628 “[t]he protection relatively is pre- weak because it patent originality. stone of In law is ex competitors only using cludes from marks change making public for an innovation in likely that are to confuse or deceive the utility design, patent grant or laws public. protection dependent Trademark temporary monopoly, innovator after which a reaction to the in passes the innovation into the do marketplace solely rather than on the at main.” Id. 639. similarity of configurations. Jay Dratler, Trademark Protection Industri- policies identified (1988) Designs, al 1988 U.Ill.L.Rev. promoted by 896 Dratler, Designs]. Fly, Fly, [hereinafter Industrial Park ’N Inc. v. Dollar Park and Act, 6. The United States Constitution's Patent Clause Section which contains the statu- gives Congress power: "trademark,” tory definition of states promote Progress word, name, To useful of Science and the symbol device must be "to or used Arts, by securing for limited Times to identify distinguish” ... and the trademark own- Right Authors and Inventors the exclusive goods or ers' “from those manufactured sold respective Writings their and discoveries. (1988). § others." 15 U.S.C. I, § U.S. art. cl. 8. Const, in- has an trademark owner L.Ed.2d 105 S.Ct. U.S. true, protection, it is but of (1985): definite term prove sec- infringement must also suit protec- provides national Act The Lanham meaning of confu- ondary and likelihood order to secure of trademarks tion sion, of a the owner goodwill of his of the mark the owner do; no neces- there is therefore need not ability of con- protect the and to business modes inconsistency between the two sary competing among distinguish- sumers protection. of trade- National producers. , concluded, desirable, Congress marks Id. at 337.8 competition and foster trademarks because sum, consistently courts have held securing quality maintenance protect qualities can be product’s different good reputa- the benefits producer simultaneously, successively, by more ed tion. statutory protec means than one of see also 15 105 S.Ct. Id. See, e.g., property. Boni tion of intellectual (listing purposes Lanham § 1127 U.S.C. Boats, 154, 109 at 979 Act). laws, (federal not states do forthrightly concedes that enacting regulations protect Kohler busi Keene, trademarks, labels, 778 F.2d 334 Rogers Co. or trade W.T. use of ness’s (7th Cir.1985), confusion); and re court considered Ke prevent consumer dress granting jected Corp., the claim that v. Bicron wanee Oil Co. configurations con 1883-84, 40 L.Ed.2d patent law. (1974) the Patent Clause to ele (patent protection flicts with extends Rogers: Judge by copy Posner noted W.T. adequately protected As ments Mogen Application David Wine functionality right); provided that a defense (C.C.P.A.1964) Corp., F.2d is no conflict with federal recognized, there (Trademark rights happen to continue law, possibly with 35 U.S.C. save beyond expiration date 14-year patent to be which allows grant, extend the same do not ornamental de granted for a nonfunctional “exist the two forms But the courts that because sign design patent. —a concluded, ... different law and independently considered the issue have have reasons.”); Yardley, In re view, for different that this section does rightly in our (C.C.P.A.1974) (because 1389, F.2d 1394 of a common prevent the enforcement not provided not that an author- “Congress has in feature. See trademark a law securing copy- a Chisum, must elect between inventor 1.04[6] in 1 Patents discussion secondary meaning acquired Rogers has reasoning the trademark questions the in W.T. 8. Kohler mark, distinctive, identifying and that only or is a by noting of confusion relates that likelihood likely by the simi- are to be confused infringement, consumers been an to whether there has Bicycle larity appearance. Co. v. Schwinn configuration is entitled to product whether Inc., 1176, (7th Bicycles, 870 F.2d 1182 Ross place. protection Of in the first trademark Cir.1989). of confusion is measured Likelihood course, require- of confusion” the "likelihood factors; similarity by considering numerous infringement Rogers for to in W.T. ment referred appearance one of those factors. id. emphasizes is not that a trademark actions Lomb, 1185; Wesley-Jessen,Div. v. Bausch & design patent patent right. A equivalent to a 862, (7th Cir.1983). Inc., F.2d monopoly virtually gives patentee a absolute competi- contrast, design, a trademark allows infringement design patent in the while By long protected as such designs a so by proof tive uses of look alike to that the established confusion. We ordinary create consumer eye uses do not See Gorham of the observer. White, 511, 528, disagree that the test for with Kohler’s claim 20 L.Ed. 731 v. 81 U.S. Co. design patent infringed, infringement case is "essen- in a a to be "For look, however, infringement a tially test for two items the same” as the no matter how similar novelty appropriate maintains infringement case. Kohler device must ‘the accused distinguishes from purported equivalency patented two tests device that in the that this ” Systems, Whirlpool prior Inc. v. design patent plaintiffs must estab- art.’ Litton indicates that 1423, (Fed.Cir.1984) (quot- among recognition Corp., degree product 728 F.2d lish "some Talge, ing Co. v. 140 F.2d oversimplifies. test Sears Roebuck & purchasers.” The' Kohler Cir.1944)). (8th requires proof infringement securing design patent,” the court all three cases that Kohler upon, relies stand); forms, protection allowed both Supreme compe Court examined state unfair AnnTay v. see also Coach Leatherware Co. tition laws to evaluate whether Inc., (2d Cir.1991) lor, 933 F.2d preempted application. law their The Court (Winter, C.J., concurring part and dissent in each case held that a state’s unfair compe (there ing part) important are “fine but patent-like tition laws pro could'not extend legal protections distinctions between the of unprotected tection to otherwise designs be by design patents, copyrights fered protection cause such conflicted with the fed trademarks”); generally Dratler, see Indus policy expressed 'eral clause and Designs, 922-24, trial 1988 U.Ill.L.Rev. generally unpat- laws free trade in 936-37. desigh ented and utilitarian concepts. See disagrees Kohler with our view that Boats, Bonito 109 S.Ct. and trademark law are distinct areas of law. (discussing Campeo Sears and deci Instead, light Kohler maintains that in of the sions). disagree We sweeping with Kohler’s Boats, Supreme holdings Court’s in Bonito conclusion Supreme holdings Court’s Boats, Inc., v. Thunder Inc. 489 U.S. Sears, Craft Compeo, and Bonito Boats (1989); 109 S.Ct. 103 L.Ed.2d 118 configurat Compco Corp. Day-Brite Lighting, ions.9 376 U.S. decisions, In the (1964), Sears/Compco the Su- and Sears Roebuck & Co. v. Stiffel preme Court reviewed two decisions L.Ed.2d from Moen’s faucet this court which held that and faucet handle Illinois unfair com- petition prohibited are not the Act copying because unauthorized unpatented goods may freely copied. unpatentable lighting In designs. fixture contentions, agreeing infringement with Kohler’s the dis- was claim a loser because he fundamentally departs interpreta- (and not) sent from our allege did not could that the defendants applied tion of Lanham Act as falsely origin published had identified the configurations by viewing judicially accepted works. There was minimal risk that the application conferring patent-like of the Act as would be confused as to the source because the protection. Only accepts if one the dissent’s clearly defendants author; identified Mark Twain as the characterization of federal trademark simply publisher Twain resented that the "patent-like’’ snippets as can the of dicta drawn profit copy would due to his failure to obtain Supreme involving Court cases state laws right protection. expressly The court stated that conferring perpetual patent-like protection be alleged Twain that the defendants had. .used his support posi- viewed as indirect for the dissent’s pass name to off another writer’s tion. We believe that our discussion rele- writings “perhaps Twain’s he would have made supports holding vant Court cases our entitling relief.", case him to some and refutes Kohler's that the Court claim has Corp., see also Chamberlain v. Columbia Pictures product configurations hinted dicta that (Mark Cir.1951) Twain's not entitled to the limited available claiming "corny heirs sued that film of a love under the Lanham Act. story" loosely Jumping based on “The Celebrated The dissent's characterization of Clemens Frog County” of Calaveras and billed as "Mark (The case), Belford, Clark & Co. "Mark Twain" 14 Story” Twain’s violated the Lanham Favorite to, (C.C.Ill.1883), "analogous pres F. 728 the Act. No trademark violation was found because problem" rejection ent and as a of Mark Twain's confusion.); there was no likelihood of Geisel v. acquire copyright "effort to what amounted to Prods., Inc., Poynter F.Supp. 295 351-55 protection in the name of a trademark” miscon (S.D.N.Y.1968) (Use plaintiff's “Dr. name holding. interpretation strues court's This regarding promotion Suess” and sale of dolls so of Clemens demonstrates the contortions the case impression plaintiff as to create the false that the undergo law must to reach the dissent’s conclu manufactured, designed, or authorized the dolls sion that Lanham Act Subsequent violated the Lanham Act. truthful configurations equivalent perpetual is the of a promotional statements the dolls were patent. Contrary reading to the dissent’s of Cle plaintiff's drawings mens, "based on” the were not pro the court did not rule out trademark violations.). sum, In none of the pen tection to the author's use of his Rather, name. by cases cited the dissent have treated trademark simply the court held that because Twain (or works, protection under the Lanham Act under state copyright had not obtained a in his his writings protective unfair laws no more than had been dedicated to the and Act) anyone publish perpetual properly could the Lanham as a them if iden of a extension writings copyright patent. tified the as Twain’s. Twain’s trade- or a

640 (2d Cinema, Ltd., 200, 204 604 F.2d Pussycat that feder both eases

Supreme Court held Inc., Cir.1979); F.2d Honeywell, the preempted law In re and copyright al (C.C.P.A.1974); prohibited Royce Mo- competition law which Rolls unfair state product. Inc., nonpatented copying tors, Fiberglass, A & A Ltd. v. 231-32, Sears, 84 S.Ct. at (N.D.Ga.1977). at 376 U.S. F.Supp. 237-38, at at 84 S.Ct. 782. Compco, U.S. Boats, unan- Supreme In Bonito com state unfair argues that because Kohler granting imously that a Florida held statute serve federal petition and protection to a boat hull perpetual patent-like con purpose, federal same law.also already market conflicted with design Kohler trademark law.10 federal flicts with was therefore invalid law and federal First, Act issue was mistaken.. no Lanham arriving at Supremacy Clause. under the Compco; the deci or raised in either Sears propo- holding, the Court reaffirmed this Suprema based on the in each case was sion Compco “pub- sition stated Sears Second, Compco the Court cy Clause. utilitarian ideas which licly known may Qopyat will noted that a defendant occupied much by patent unprotected were design patent to a or entitled design is “not subject matter of an position as the the same statutory protection....” other federal unprotected. expired patent” they were — 238, 84 S.Ct. at 782. Of Compco, U.S. at Boats, Bonito ru course, Act falls under the Lanham upon language as a Kohler seizes this statutory protection,” “other federal bric of prin- preemption proclamation broad expressly held that Sears have and courts Compco stand ciples set forth Sears preclude federal trade Compco do argues that Bonito Boats unaltered. Kohler See, designs. e.g., Eserci protection of mark Cir.1991), Compco and that reaffirmed the Sears Roberts, 944 F.2d zio v. — principles set forth those preemption denied, U.S.-, 112 S.Ct. rt. ce preclude federal should be read to (1992); eases Teledyne 3028, 120 In re (Fed.Cir. product configura- protection for Indus., 971 n. 4 Cheerleaders, tions. 1982); Cowboys Inc. v. Dallas Conversely, although corporate com- relationship between ful. exaggeration of the

10. An com- competi- trade unfair mercial names Act and state law of the Lanham view, law, dissent, federally registrable. erroneously they are not in our mon tion leads Trademarks, (footnotes merely McCarthy § 7.33[2] federalizes on the Lanham Act conclude that omitted). and unfair com- the common law of trademarks applied Act at 646-647. The Lanham written and is not petition. Dissent The Lanham Act as ‘‘exactly state trade- at issue in in reaction draconian as the state laws was drafted same” Thus, Sears, legislation to interfere with Compco, threatened Boats. and Bonito Rogers, every "The Lanham holding, commerce. See circuit to con- interstate court’s and that of Trademarks,” issue, Social Function Act & the sider the does not create conflict (1949); laws, Contemp.Probs. Constitution, patent, Law & the. 5.04, Trademarks, p. McCarthy 5-10. The up conjuring Court decisions. The dissent's indepen- law are and state common Lanham Act specter design patents perpetual “made other, although the standards of dent of inapposite each trademarking design” to our terminology registrability similar to First, use holding and the facts this case. there is standards. See state common law trademark quali- or could no indication that Moen ever had Dist., Utility Second, Gas NLRB v. Natural products. fy on its 29 L.Ed.2d protection does not federal trademark transform (1971) (absent contrary, plain indication monopoly durationally limited application Congress not intend to make noted, does right. perpetual we into a As have law). dependent upon state That its statutes product’s for a con- federal trademark extraordinarily pro- Supreme that Court has held monopoly figuration the use does not create a in law runs afoul of the tective state trademark shape. product’s Moen is not "free from Act does not threaten Patent Patent Clause and popular competition in the market for effective constitutionality as courts of the Lanham Act simply Moen of faucet.” Dissent at 650. brand many applied Lanham Act differs in it. The have copying from its has the others respects law standards. As the common from purpose for the of confus- trademarked has noted: one commentator ing is free to as to its source. Kohler marks, copy long Moen’s so as it insures Things collective such as service marks, thereby confused into federally registrable, is not deceived or are certification believing faucet. that its is a Moen though status is doubt- even their common law Sears, however, unpatented subject in the Bonito Boats ble As but matter is not recognized power that states have the ipso pre-empted by pat- the federal facto give competition unfair and trademark ent laws. rejecting to trade dress.11 In Boats, Bonito 489 U.S. at 109 S.Ct. at preemptive argument pre- broad that would holding 979. The Court’s in Bonito Boats is (an protecting from dress clude states trade inapplicable also to federal trademark law argument applies Kohler to federal .contends granted because the Florida statute boat product configura- patent-like rights manufacturers far. exceed tion); the Court stated: ing any right available under the Lanham extrapolation That the of such a broad Act.12 The Court described the Florida stat place some conditions on the use of trade which such limited Thus, prevent consumer confusion as to source. terms, plain propriate is clear from the balance struck W.T. in bels, ing nesses clearly pre-emptive principle chasers as to the source of the ... Trade dress goods Sears subject (CA7 1985). such or distinctive dress in the Rogers while Sears its conclusion that the States indicates regulations so itself. The markings, the States as to matter of designs Co. v. use of their prevent Yet our is, on the circumstances Keene, speaks Sears Court made it the States design patents. from “may protect course, used others, decision Sears misleading pur- trademarks, Sears 778 F.2d in absolutist potentially may place packaging order to goods.” imitat- inap- busi- See la- than are available under federal ute as rights law: ed public’s ability have reserved to field of is otherwise secret, specter of The Florida law host of useful confusion, or offers der the law of unfair [T]he Florida statute at issue here ... endowing ^[*] patent protection protection beyond without regulation state general state-created :]e unobtainable. breach boat statute shapes any showing substantially Congress. ^[*] circulation, which the manufacturers exploit competition with much has been denied or that available un- trust ^[*] monopolies It processes thus enters a of consumer restricts the raising the unpatented ^[*] or trade secrecy. protect greater laws in a ^[*] implicit recognition dress indicates an S.Ct. at 986. As described regulation potentially patenta- all opinion, state earlier in underlying policies Supreme We have defined "trade dress" as "the total Florida Court struck down that state’s image product, including prohibiting molding such features as statute the use of a direct ‘size, combinations, texture, shape, process duplicate color or color unpatented boat hulls. The graphics, particular techniques.’" or even sales Florida court held that the Florida law conflicted Roulo v. Russ Berrie & 886 F.2d Congress's balance in the federal (7th Cir.1989) (quoting John H. Harland Co. v. encouragement between the statute invention Checks, Inc., Clarke unpatented and free ideas. See Cir.1983)), denied, Boats, rt. Boats, Inc., ce Bonito Inc. v. Thunder Craft (1990). 107 L.Ed.2d 1030 This broad defi (1987). Appeals 515 So.2d 220 The Court of applied by nition of trade dress as the courts previously upheld the Federal Circuit had a simi configurations. McCarthy includes Italia, Interpart Corp. lar California law. See § 7.23[2]. on Trademarks distinction F.2d 678 Circuit The Federal con generally courts make between trade dress prohibiting cluded that the California law the use product configuration particular cases in is to molding process duplicate unpat- of the direct require plaintiffs asserting infringe a claim for policies ented articles did not conflict with the product configuration ment of trade dress in behind the federal laws. .The 43(a) prove of the Lanham Act to sec "reasoning Court found the Federal [to Circuit’s ondary meaning product’s shape because a be) Boats, respects." defective in several Bonito inherently (collecting never distinctive. Id. 109 S.Ct. at 984. Nonethe cases). This distinction is irrelevant in this case less, errors, recounting after the Federal Circuit's dispute because Kohler does not that Moen's re-emphasized "[a]s the Cotut Sears itself products acquired secondary meaning. have clear, may place regulations makes States limited unpatented designs on the use of in order Supreme granted prevent 12. Court certiorari in Boni- consumer' confusion as to source." Id. to Boats to resolve a conflict created when the at 109 S.Ct. at 985. confusion, law, of and of tection such as likelihood func- the nature of trademark federal afforded, tionality, approximate do not and distinctiveness: the protection patent-like perpetual state sweeping, the Suggestions that under the Fifth Cir- Supreme found im the Court statutes that law, any shape initial user of cuit’s the Sears, Compco, and Bonito permissible in competition design cut off would Boats. design shape products of like are not nonfunctional, persuasive. Only distinctive Pesos, Cabana, Inc., Inc. v. Taco In Two 43(a). § protected trade is under dress — U.S.-, 120 L.Ed.2d S.Ct. that a The Fifth Circuit holds Court that if a Supreme the held functional, unprotectable, legally and thus inherently distinc restaurant’s trade dress equally if it is a limited number of one of 43(a) Act, § tive of the 15 U.S.C. under competitors options available to efficient 1125(a), requirement § no there is competition unduly and free would be hin- secondary meaning to prove also business by according the dered trademark the Act. To protection obtain under Lanham to protection.... This serves assure that however, issue, the Court first had reach this stifled will not be the ex- protectable dress is a accept to that trade of haustion of a limited number trade at-, at 2759. Id. S.Ct. trademark. dresses. line criticized the Second Circuit’s (citation' -, at 2760-61 S.Ct. refusing decisions omitted). inherently “unregistered but distinctive kinds, mark all whether claimed marks of Kohler’s contention that even a re symbols used words or or distinc distinctive potential mote for conflict between trade at-, Id. designs.” tive 112 S.Ct. requires law mark added). In holding that (emphasis at 2759 precedent of this circuit’s settled reversal trade inherently distinctive dress was enti rejection holdings of the uniform of ev Act, tled under the Court issue, ery ignores court to consider noted: Court’s Two Pesos observation application principles of the sensitive dress, no of trade less than Protection governing recognition can avert trademarks, purpose serves Act’s perpetual “monop the threat owner of mark the “secure to the Dratler, oly.” Design, See Industrial also goodwill protect of his business (“Because 1988 U.Ill.L.Rev. trade among ability distinguish of consumers principles potential reveal their competing producers. National goals only applied conflict with when desirable, Congress con- trademarks facts, specific attempt should courts cluded, compe- trademarks because foster harmony by analyzing achieve that the con quality by maintenance tition and the short, specific flict facts. context securing producer the benefits of any perceived conflict should be not resolved good reputation.” law, on the face but law as S.Ct., -, (quoting Id. at 2760 , Furthermore, applied.”). a fundamental rule Fly Park ’N statutory requires that construction stat 663). construed, possible, are to utes be har directly mony appli with the and other The Court was confronted Constitution Ferber, Two the issue of whether cable statutes. New York Pesos with configurations were trade dress U.S. 769 & n. 3361 & (1982) Nonetheless, (collecting Act. n. 43 of the L.Ed.2d cases). ap- Indisputably, of the Fifth some of concerns Court’s discussion Circuit’s Sears, proach protection suggested expressed Compeo, to trade dress Bonito regarding laws Boats law conflicts with the conflicts between state respect Lanham Act should be resolved laws are also valid with legislation. argued It could application careful of traditional bases for conceivably legislation determining pro- Congress enact propriety of trademark could conferring perpetual patent-like monopolies very cation large, is . indeed for practical all infinite, purposes competition that would conflict with the clause’s impaired is not requirement rights by giving that exclusive to authors each perpetual manufacturer a ‘mo- only mark;' nopoly1 identifying and inventors be “for limited Times.” of his such marks Const, I, apparent, It input art. cl. 8. are not a production scarce into the of however, perpetual goods.” protec- Rogers, trademark W.T. 778 F.2d at 339. product tion the Lanham Act for a configuration Kohler admits the of Moen’s configuration design equivalent functional; faucet and faucet handle is not impermissible perpetual patent protection! i.e. the trademarked feature would not be Kohler has conceded that under the facts “found in all or most brands of the ease, require- Moen satisfied all producer even no had desire to have protection ments for trademark for his brand mistaken for that of pro- another configurations. hold- Court’s .... ducer functional [A] feature is one Sears, ings Compeo, and dicta in Bonito competitors spend would have to mon- Boats, and Two no Pesos offer reason for this ey design not to but to around.” W.T. every court to hold that court that has al- Rogers, 778 F.2d at see also Schwinn protection prod- lowed federal trademark for Bicycle, 1188-89; Ideas, 870 F.2d at Service configurations uct was mistaken. Corp., Inc. v. Traex

Cir.1988). challenged Kohler has not Moen’s B. configuration claim that the of its faucet and designed solely faucet handle is to differenti- TRADEMARK PROTECTION IS ate the particular products source of these NOT ANTICOMPETITIVE from those other manufacturers. We de- accept cline to alleges allowing Kohler also Kohler’s invitation trade- to overrule holding our protection product configurations functionality decisions is a valid anticompetitive evaluating propriety criterion for product develop- and inhibits protection. trademark extending ment. Rather than trademark protection product configurations, Kohler protection Kohler’s claim that trademark argues, protection courts should such refuse product configurations prod- undermines require and manufacturers to label then- development unpersuasive uct is both and products prevent consumer confusion. Fi- earlier, unsupported. As discussed such a nally, any change Kohler maintains that possible only underlying conclusion is if the- protection the extent of trademark accorded policies protections and of federal trademark product configurations should come ignored. law are Patents encour- Congress. from age type of innovation that advances the granting Arts,”

Kohler progress contends that of “Science and the useful product configurations imposes high conflicts law standard for public policy favoring patentable and limits disfavoring earlier, grants pro- As we noted to a fixed term. Trademark monopolies. monopolies. trademarks are not producer’s right identify- Others can tects a select produce designs ing symbol similar to the trademark so name or for his brand and ex- long Moreover, using “[j]ust there is no likelihood of consumer clude others from it. Furthermore, confusion. Kohler pro- conceded as the economic rewards of trademark invention, the district granting encourage discovery court that tection so to Moen will not pro- others do the economic rewards of trademark making encourage faucets or faucet handles. tection effort We creative in market- recognized Keene, Dratler, Rogers ing.” Designs, W.T. Co. v. Industrial granting protec- F.2d at prod- U.Ill.L.Rev. 927-28. Innovation in nongeneric prod- marketing tion to a uct purpose nonfunctional for the competition. uct enhancing producer identity does not stifle We reduces that, supply noted informing “[s]ince the of distinctive costs to themselves consumers symbols names and usable brand identifi- about the source so that can 05 products configuration or of products from that the the purchasing either continue subject may of federal be the themselves products or avoid the producers particular protection, the Federal Circuit trademark altogether. See W.T. producers from'those followed it seem and the courts that have Note, see also Pro- F.2d at Rogers, 778 emphasis placed on lightly taken have Functionality Doc- and the motional Goods by Supreme decisions of the Trademarks, Model An Economic trine: of recently stretching but back Court not (1984). 639,,656-62 63 Tex.L.Rev. Boats, century. Inc. v. for a See Bonito Congress must contention Kohler’s Boats, Inc., 141, 109 489 U.S. Thunder Craft rectify law to amend federal Sears, (1989); 971, 103 L.Ed.2d 118 S.Ct. expansive interpre- “novel and lower courts’ 225, Stiffel, 84 v. 376 U.S. Roebuck & Co. laws” was under- of the trademark tation (1964); 784, Compco 11 L.Ed.2d 661 S.Ct. Supreme Court Bonito by the mined Inc., Corp. Day-Brite Lighting, 376 U.S. v. noted that Con- There the Court

Boats. 779, (1964); 234, 11 L.Ed.2d 84 S.Ct. 43(a) Lanham of the gress’s adoption of Co., 305 U.S. Kellogg Co. v. National Biscuit of the longstanding coexistence Act and the (1938); Singer 59 S.Ct. 83 L.Ed. competition law unfair patent statute with Co., Mfg. Mfg. 163 U.S. Co. June unfair com- indications” that are “affirmative (1896). I 41 L.Ed. 118 While S.Ct. [policy] is “consistent with petition law greatest respect for the Federal have the by patent laws.” Bonito struck balance Circuit, us. I think its decisions do bind Boats, at 985. As 109 S.Ct. 489 U.S. when those decisions should not be followed earlier, perceive , no unavoidable noted we so much in conflict seem patent law and federal conflict authority. between es "Supreme Court The relevant configu- applied product law as us is whether to follow sential issue before lack rations. lower court cases that the endorsement Supreme Court and that defeat the of the copy unpatented articles important CONCLUSION IV. by recently proclaimed yet again the Su judgment is Affikmed. district court’s The Boats, preme Bonito also at 977-79. See Pe S.Ct. CUDAHY, Judge, dissenting. Circuit Protection, at 18-23. This gram, Trademark crucially important issue for the mainte is a admirably lucid majority opinion is The economy. competitive nance of a free and by point adopted of view presentation of the go not hesitate to back funda We should Appeals for the Federal Circuit the Court of analysis problem. of the mentals of predecessor, the Court Customs and its during majority correctly the last the two Appeals, about states basic and Patent denying arguments presented, by Kohler for Unfortunately, twenty years. this view noto registration product riously support lacks the and endorsement configurations. Kohler contends that Supreme Application Court. See of the practice is an unconstitutional violation (C.C.P.A.), Honeywell, 497 F.2d 1344 and is Patent Clause of the Constitution denied, 669, 42 cert. 419 U.S. fundamen- anticompetitive. These are both (1974); Teledyne, In re 696 F.2d majority has been un- questions tal and the (Fed.Cir.1982).1 Pegram, also John See level. to answer them at a fundamental able Protection Product and Con Trademark Rep. Configurations, 81 Trademark tainer Court has made clear Jr., (1991); Dratler, Jay Trademark patent monopoly which be secured Designs, by obtaining 1988 U.Ill. on a Protection Industrial indefinitely through the ,In position may not be extended adopting the L.Rev. shape majority subject a wine bottle—a container. 1. While Moen and the Mogen Corp., Application David Wine product configuration the rela- trademarks trace (Smith J., (C.C.P.A.1967) concurring) tively departure of the Federal Circuit recent (later Mogen proceeding). not there Mogen Corp., David did Application David Wine here, (C.C.P.A.1964), directly al confront the issue raised case involved not fore F.2d 925 (wine) groundwork. though lays some of the configuration itself but expiration use of a federal trademark on the It is self-evident Thus, configuration. Paper monopoly Scott Co. v. created it ceases Mfg. exist, Marcalus right- and the thing to make the 90 L.Ed. the Court summa- formerly covered becomes rized the rationale for this rule: public property. upon It is this condition patent granted. follows, It as a public by has invested in such free use course, matter that on the termination grant monopoly patentee the of a to the of patent passes public the there the any attempted a limited time. Hence res- of right to make the machine in the in patentee ervation or continuation in the or form during which it was pat- constructed the claiming patent those under him of the therefore, may, ent. We dismiss without

monopoly, patent expires, after the what- further complaint comment the as to the legal employed, ever the device runs coun- form in which the defendant made his ma policy purpose patent ter to the of the laws_ chines.

By of the laws not 185, the.force Id. (emphasis sup- 16 S.Ct. at 1008 the invention of a dedicated to the plied). public upon expiration, public its but the Co., Kellogg In Co. v. National Biscuit thereby becomes to share in entitled 111, 109, (1938) U.S. 83 L.Ed. 73 good patentee up will which the has built subject shredded wheat biscuit was the patented product through or article by held National Biscuit cover enjoyment patent monopoly. of his ing pillow-shaped Upon expi form. patentee may Hence we have held that the patent, ration of the the Court allowed Kel public participating not exclude the logg to manufacture the same biscuit under secure, extent, good in that will or to the name “shredded wheat.” The Court held monopoly by a continuation his resort- “upon expiration patents of the the form ing registering to the trademark law and public.” ... was to dedicated 305 U.S. at any particular as a trademark descriptive 119-20, 59 S.Ct. at 114. appearing .specifications, matter in the Certainly, if gives tie Patent Clause drawings expired patent, claims right copy an article which was once cov whether or not such matter describes es- by patent, public ered must also retain sential elements the invention or fight copy an article which has never claims. temporarily been even removed from the 256, (emphasis Id. at 66 S.Ct. at 104-05 public by being patented. domain reason of (citations omitted). supplied) Thus, Sears, Co., Roebuck & Co. v. Stiffel Singer Mfg. Mfg. In v.Co. June U.S. (1896), 16.S.Ct. 41 L.Ed. 118 copied price Sears and sold at a lower Singer patented sewing made machines- for pole lamp by marketed Stiffel. Id. at years having several a distinctive form and upholding 84 S.Ct. at 786. The1 Court appearance. 16 S.Ct. at Sears said: expiration principal 1004. After the of the article, unpatentable An like an article on patents, Manufacturing Company June be expired, which the has gan making sewing machines with the same domain and be made and sold appearance. Singer complained Id. by whoever chooses to do so. What Sears June, purpose inducing “for the the belief copy did was to Stiffel’s and to sell sewing machines manufactured sold lamps almost identical to sold those by [Singer], were made [June] was every right Stiffel. This it to do under had making selling machines exact the federal law. size, ornamentation, shape, general ap (emphasis sup- Id. at 84 S.Ct. at 789 pearance Singer’s as” machines. Id. at plied). 16 S.Ct. at 1002. The Court refused en

join copying Singer’s product configu Corp. Compco Day-Brite Lighting, upholding Compco’sright ration and held: to market a fixture, right “copy and to use.” Sears Day-Brite light the-Court aof potentially poli- Compco extended that rule the constitutional emphatically restated fully exposed patentable ideas which competition: cy in.favor of free public. copying would interfere with the To forbid n I, (emphasis in Art. cl. 109 S.Ct. at 984-85 policy, found federal implementing supplied). in the the Constitution statutes, allowing access to federal clearly free affirmed the federal Bonito Boats n copywhatever the copy- patent and copy. policy furthering domain. laws leave recognized did not as well that Sears Day-Brite’s fixture has been held not Here enacting pre preclude states from laws to a or mechanical to be entitled through unfair consumer confusion com vent patent it patent. the federal laws Under 154, 157-58, 109 at petition laws. Id. at therefore, is, public and can domain However, majority opinion the every by pleas- copied in detail whoever be careful here seems to read into Bonito Boats’ that the trial court found es. It is true permissible state laws an ex discussion Day-Brite’s configuration of fix- dealing emption any state or federal law Day-Brite to the be- identified trade ture or dress. But the with trademarks trade had, arrangement ribbing of the cause the only acknowledged Court that states could trademark, “secondary acquired a like a competition unfair laws so continue to enact design meaning” by particular which that as, that, they long and to the extent did not Day-Brite. associated with But the was policy conflict with the federal embodied design patent to a or is not entitled Sears/Compco: statutory protection, then it other federal ‘[Sjtates regulate are free to the use of copied at will.2 can be any property such intellectual manner 237-38, (emphasis at 84 S.Ct. at 782 At not inconsistent with-federal law.’ the time, supplied). consistently same we have reiterated teaching Compco that Sears and very clearly, Finally in Bonito Boats placed ideas once without before prohib- held that Florida statute Court patent subject a valid are molding iting unpatented boat the direct appropriation significant without re- policy conflicted with the hulls straint. designs are unless dedicated (citations at 980 omit- by patent. a valid ted). 157-60, at 109 S.Ct. at 981-82. The U.S. explained:

Court majority argue Moen —and the here — Sears, patentability, Compco standards for and Bonito Boats are con- [T]he federal minimum, congressional express at a cerned with the interface between federal patent-like protection patent compe- law of unfair determination that the state merely of intel- tition. The cases therefore involve unwarranted as to certain classes simply application Supremacy property. The States are Clause and fed- lectual regard equivalent preemption Superficially, law. not free this to offer eral of state may appeal protections Congress argument has this have some but it to ideas (com- belong ignores to all. For al- the fact that the Lanham Act determined should been, years prising it has well established law of trademarks and most 100 federal expired patent, competition) essentially federalizes the that in the case unfair patent do create a common law of trademarks and unfair com- laws federal federal congressional statutory protection” possibility phrase nizes the of further ac 2. The "other federal tion, application does not conflicts between such has been taken as a short cut to Notably, product configurations. when the Act to See statutes and the constitution. Lanham Protection, Supreme Sears/Compco Pegram, Court re-affirmed the Trademark 19. The Boats, however, phrase, exception does not create an doctrine in Bonito 154 — policy consistently pronounced any S.Ct. at it omitted such blanket the constitutional exception. Pegram, Compco, Sears and the cases we have dis- reference to federal - Protection, Although phrase recog cussed. use of the Trademark at 19-20. 166, 109 provides Lanham Act a 489 petition. And the S.Ct. at 985. Mindful of policies underlying federal trademark law register general- to which federal trademark succinctly here, majority described ly recognized principles of notice we must determine whether Therefore, applied. the conflict that by recognizing prod interests served entire found between state law and federal sufficiently weighty ucts as trademarks are prerequisite preemption law as a policies defeat the crucial served Sears, Compco exactly and Bonito Boats is patent laws. develop the same conflict as would between is at right copy What stake here is the federal law and federal trademark law is, thing copy configura- itself —that its perpetual if a could be made design. configuration tion or by trademarking design. As a matter of generic is as as the name of the therefore, reality, the relation of commercial product. As the Court cases dem- law to state unfair law is onstrate, the constitutional af- exactly the same as its relation to federal patent expires ter a inor the absence of a trademark law.3 reciprocal is the of the constitutional prohibit copying for a limited term conflict, then, directly between a ignore under the Patent Clause. To statutory scheme rooted in the Con- principle permit perpetual monopolies is to. stitution and a federal codification of the product particular product on ideas de- common law.4 As the Court noted Bonito signs product development. and to inhibit Boats, the Lanham federalization of the Act’s provided examples Kohler has some horrible competition law unfair common of reflects a allowing registration of federal trademark to congressional policies affirmation of that grant design patent. substitute for the of a must be made conformable with the constitu- appears One consists of what to be a example tionally patent rooted laws: simple white disc. This is a round Congress recogni- given has thus federal towel, granted regis- beach which has been many to tion the concerns underlie Principal Reg- tration as a trademark on the competition, tort the state of unfair and registrant presumably ister. The has a mo- Compco application of Sears and to nopoly production of beach towels that aspects nonfunctional of a which (and registrations monopo- are round. Other identify lies) has been to sources must towels, .shown may triangular follow for beach competing policies take account of trapezoidal beach towels or whatever. As a us, regard. in this result of the ease now before Moen majority argues although functionality 3. The that differences between indicated that a defense stringent could avert a conflict between trademark and state unfair laws and the law, utility patent might be a require distinguish there still clash Lanham Act us to the entire design patent pointed to law. Id. He authority articulating line of a proving different standards for policy favoring copy. constitutional a to trademark I design patent infringement to harmonize the two agree years policy do not that one hundred But, protection. respectfully, this is modes ignored merely can be because the Lanham Act adequate anticompetitive not an answer to the may differ somewhat the state laws consid- features of trademark for con- posed by ered the Court. The these conflict figurations. Judge Posner’s conclusion that state laws and the Lanham Act remains the “necessary inconsistency” there is no between same: whether trademark can be used as a back not, patent major- as the law does protection properly acquired by design to a door states, ity possible tell there inconsisten- us is no patent. indeed, when, cy. inconsistency And this arises here, company to as a resorts to trademark law majority opinion part para- 4. cites of one ‘ protect very product itself. graph opinion Rogers of this court's in W.T. Co. v. Keene, (7th Cir.1985), prop- 778 F.2d 334 for the Moreover, persuaded passing I am not already osition that we have decided that there is designs references to trademarks for in Two Pe sos, Cabana, Inc., - U.S. -, no conflict between law and trademark Inc. v. Taco product configurations. See id. at 120 L.Ed.2d 615 which does here, agree disposed Rogers indirectly 337. I do not that W.T. not even address the issues sheds Rogers, Judge any light this issue. In W.T. Posner tra- on the conflict between law rocky "functionality.” product configurations. He trademarks for versed terrain of design patents utility patents applies to supply replacement to legally entitled will relating provisions have this title faucets. Moen will well: “The for Moen handles patents perpetual apply shall equivalent patents for inventions viola- provided.” faucet handles —in designs, except its faucets and as otherwise for tion of the Constitution. 35 U.S.C. attempted to reconcile have Courts argument distinguishing between conflict between subjects utility patents is functionality. The by invoking rubric of that, copy functional although freedom protect seeks to functionality defense competition, may be features essential system by utility patent ex- integrity of the not aesthetic features is freedom those configuration trademarks cepting from Rogers, 778 F.2d at 339 essential. W.T. products (trademark “ornamental, shapes fanciful monopoly incon- perpetual in a would result competition). patterns” does not hinder Vaughn utility patent laws. sistent with the circuit, simply not “functional means Inc., 814 F.2d Mfg. v. Brikam Int’l Co. function, that the feature serves but Cir.1987) (“The defense exists be- necessary competi the feature is to afford rights to functional granting exclusive cause effectively.... compete tor the means to A patent, products is the domain of features of functional,if costly that is it is one feature trademark, law.”); Rogers, 778 F.2d W.T. without, rather than around or do that functional questions one at 338. No Bicycle costly one have.” Schwinn utility pat- a valid features not Bicycles, Co. Ross ent, expired, has or for which the (7th Cir.1989). .of The Court Cus everyone to Trademarks open to copy. Appeals in even toms and Patent described copy. acquired to defeat the not be ... stronger public policy terms “the as not the courts on which relies Yet Moen and slavishly copy articles which are to here) (and that this majority claim should copyright, protected by patent not or but the respect to nonfunc- not also be the case articles, need to those which is more design patents are not when tional features compete properly termed the effec Honeywell, protect them. See available to Products, tively.” In re Morton-Norwich 497 F.2d at 1347-49.5 (C,C.P.A.1982). F.2d treating is no basis for the sub- Yet there Brown, Design Ralph also Protection: utility

ject design patents dif- matter of Overview, An 34 U.C.L.A.L.Rev. 1359- protected ferently: if functional matter not (discussion (1987) functionality in vari by utility patent copy, available for all to a is circuits). ous or then it follows that ornamental aesthetic struggled with the Courts have obvious by design patents are designs protected not design fact that features can be as essential everyone copy. Design and also free utilitarian law, utility patents created the same —“functional”—as developed the doctrine features. Some have nothing §§ There is 35 U.S.C. functionality” this of “aesthetic to reconcile itself that would allow a law Brown, Ralph Design Protec- conflict. See design and distinction to be made between tion, Although at 1367-68. this circuit has extending utility patents purposes view, rejected Rogers, apparently that W.T. protection to one but not to the recognized that contrary, applicable 778 F.2d at we have other. To the rights perhaps When were unfortunate distinction between F.2d at 1348. 5. This sought design non-functional seems to the functional and the for non-functional elements Honeywell. however, The Court of have taken root in pursue patent, the court did not recognized Appeals Customs and Patent Rather, policy. "de the court said it had same rights function are not available for protection cided that confusion, mistake, interest — "in utilitarian or dictated al—defined as essence pur deception engineering efficiency” subject reasons of — prevail goods over chase of and services—must utility patent a such matter disclosed in because design patent rights any alleged extension of public policy fa would conflict with is non-functional.” Id. when a trademark copy.” voring coinpetition “right and the (Rich, J., design may point concurring). come a where the 497 F.2d at 1351 “there . important so to the value of the feature is line between nonfunctional and functional is product to consumers continued trade- difficult to draw and an source of obvious deprive would them of com- litigation. petitive Rogers, 778 F.2d alternatives.” W.T. say It is also incorrect or irrelevant Schwinn, at F.2d 1191. More configuration there is no conflict between succinctly, “beauty is func- we have found law, trademarks- and the be- Rogers, At tion.” W.T. plaintiff cause in a trademark ease a must time, designs same not all that enhance a secondary prove meaning also and likelihood product’s appeal have been found to be only of confusion. Likelihood of confusion Schwinn, “functional.” 870 F.2d at 1191. relates to whether in- there has been an significant We are therefore left with a “un- fringement, product configura- not whether a applying middle” in distributed doctrine tion place. is entitled to in the first Brown, Ralph Design to aesthetic features. fact, Campeo explicitly rejected likelihood Protection, at 1366-67. Secondary meaning of confusion and as suffi- dichotomy This functional/nonfunctional grant monopoly: cient reasons to a purely judge-made and is not based on the Nor, matter, power impose A State of course has law. for that is it based who, liability upon knowing on the trademark law. Patent law does those require relying upon that an invention —whether original an manufac- by utility patent by design patent a or a reputation quality integrity, turer’s —be something competition. that is essential for public by palming deceive the off their utility patents, For the invention need copies original. as the That an article useful, (1984). Competi- § be 35 U.S.C. copiedfrom, unpatented article could be utility patent. tors often around a way, made in some other that the hand, Design patents, protect on the other and not essential to the “nonfunctional” designs ornamental of an article of manufac- article, configuration use either ture, 35 U.S.C. whether or not copied may the article have “second- competition. If are essential for we are ary meaning” which the maker identifies law, rely we know that that trade, or that there “confu- protected by. utility patent which is not among purchasers sion” arti- as to which utility patent expired that on which a has is maker, cle is which or as to who is the everyone copy, regardless free'for wheth- applying may be relevant evidence in a er the matter in is to com- question needed requiring precautions such as State’s pete or not. The same should be true however, labeling; regardless and unprotected by features which a are motives, copier’s neither these nor facts matter, design patent. It does not that the any impos- can a others basis furnish for may necessary competition. not be ing liability prohibiting or actual And, event, attempt categorize in copying selling-. acts and product features as “essential” “non-es- or (emphasis 84 S.Ct. at 782 perplexing sential” for and product configura- supplied). Even where a ultimately vain. significance tion has achieved as an identifier “functionality” proved The doctrine has goods, remedy is not of the source extremely fuzzy an be at best border be- monopoly configuration. to create a design patent and tween trademark law. Biscuit, Kellogg v. National the Court utility patents usually and While trademarks observed, matter, encompass subject Judge unrelated long period plain- in accurately “functionality, [D]ue or- Rich noted predecessor tiff its was the manu- appearance, good namental de- industrial product, many people have sign closely of the are matters which are intermin- facturer gled. very product, and as a product design long best has come to associate the Honeywell, by prod- design.” consequence been called functional the name which the known, plaintiffs represented by par- generally with the either of the uct is factory Niagara at Falls. ties the action.... competition. is the blood of [limitation life at 113. unimpeded availability It is the of substan- And the concluded: tially equivalent permits units that the nor- be manufactured

Where article operation supply mal and demand to all, particular manufacturer can no more a yield society price pay the fair must for a rights in a form in which assert exclusive given commodity. [Citations omitted.] public has become accustomed to see duplication permitted, Unless such com- which, in the minds of the the article petition may unduly curtailed with the public, primarily associated with the ar- possible development resultant of undesir- particular producer, than a ticle rather monopolistic able conditions. in than it can the case of name with Id. at 271-72. public mind. similar connections Kellogg Company pil- was free to use the Judge Chief Charles E. Clark dissent in form, low-shaped subject only to the obli- Safety put American Table it even more gation identify its lest it be strongly: plaintiff. mistaken for that only recently unequivocally We have reaf at 114. principles firmed these in Modern Aids Co., Cir., Macy R.H. & 2d Inc. Thus, Kellogg shape of National 93, 94, court where the stated Per Curiam: Biscuit’s “shredded wheat” was held to be plaintiff patent, except “The had no unprotectable generic and as a trademark proviso one imi the defendant was free to though even it was associated chose, closely tate its as it machine no particular producer. shape mind with a competition might matter how much the appro- was like its name. The plaintiffs proviso lessen the sales. That priate identifying pro- method of it with its that, buying was had come to to mark it ducer was with the distinctive every believe machine made after the mark or name of its manufacturer —not to plaintiffs plaintiffs product, model was the grant monopoly shape. Adequate on its any degree upon had relied labeling appropriate is sufficient and is the machine, per source of the rather than its way to avoid source confusion. formance, plaintiff might have some Granting then, however, relief. Even the relief configurations directly impor conflicts go require would no than to further tantly public policy favoring compe with the plain buyers to make defendant disfavoring monopolies monop tition and plaintiff was not the source the ma practices. Safety olistic In American Table chines sold it." Schreiber, (2d Cir.), Inc. v. 269 F.2d 255 (emphasis supplied). Id. at 281-82 denied, cert. 361 U.S. the Second Circuit de argument It is also no answer to Kohler’s clared: registration that trademark con- In approaching question figurations anticompetitive say the of whether that such Goldberg’s copying only relatively Schreiber & a trademark creates a weak actionable, or, contends, monopoly, majority Amco machine is it must be as the equi- “monopoly” remembered that the it interests and creates no at all. A restraint only litigants competition ties of the at bar are not on need not be absolute to be Indeed, unpat- ones which must be considered. effective. .Kohler cannot Moen’s underlying principles competi- of our ented faucet and handle unless knows economy desirability pass- prove tive and the Moen will be unable to a likelihood of ing day, on to the American the advances confusion. At the end of the Moen has progress only patent, yet of technical are entitled no remains free from effective consideration, they competition popular in fact dominate the market for a picture although the interests of the brand of faucet. (C.C.Ill. Case, Twain” 14 F. majority’s “Mark belief I share Nor do - 1883). rejected properly court this ef consequence The great principles are of Chevron copyright acquire what amounted to fort to the issue is

here, apply. When even a Id. trademark, protection in the name of trademark.6 validity registered analogous The “Mark Twain” case is determi- Trademark Office’s Patent and Moen, Clemens, problem. present to the like case of validi- prima a facie nation establishes refuge in law for 1115(a). But, seeks (Supp.1993). ty. 15 U.S.C. only through the properly available that is here, is, constitu- as one of the issue when too copyright Here laws. clearly matter one policy, the tional a decline to allow the use of trade we should (and, particular, the Su- the courts to, effect, design patent pro mark extend Court), agency, can opposed as preme indefinite term. tection for all event, Pat- authority. In speak with historically re- and Trademark Office ent a conflict between If the issue before us is product configu- registration (the overall fused statutory scheme a well-defined Parte Mars laws) See Ex rations as trademarks. specific and .patent enacted under a (BNA) (the U.S.P.Q. Signal-Light Patent constitutional directive limited (Comm.Patents 1950); Clause) In re Duro-Test judicial (protection of and a doctrine 1962). (BNA) (TTAB trademarks) U.S.P.Q. configurations Corp., as' general statutory Patent remotely incident to a Only when the Court Customs (the Act), Honey- specific, con- step Lanham misguided scheme Appeals took its stitutionally-mandated provisions should con- and Trademark in 1974 did the Patent well Mancari, Morton v. Further, trol. See com- change. it is practice Office 2474, 2482-83, L.Ed.2d persistence of knowledge that mon property practitioners skilled intellectual registration purport- may eventually win view, my law has been whatever new is, say registrability marks whose ed courts to authorize developed in the lower least, vigilant marginal. The courts must be product configuration trademarks the use of and to limitations to sustain constitutional design patents is without as a substitute weight to basic economic give appropriate from the Court. sanction competition. need for considerations like the repeatedly to disfavor the spoken has avoid the unfair law to use of 1988 amendments respect With provision of the Patent times” “limited Act, list of trademarkable Lanham emphasized im- has Clause. The Court changed.- Both sides categories was not . aspect of copy as an portance of the of Con- this indicates an intent claim that copy is the Patent Clause. gress favor or disfavor trademarks to either absolutely constitutionally protected and to me configurations. It seems opera- long-term to the successful essential or inaction congressional action -that economy. I competitive tion of a free very way or the other. little one shows respectfully dissent. therefore registrability of to establish The effort is a bit product configurations as trademarks register attempt to his

like Clemens’ Samuel Twain,” plume, “Mark trade-

nom de pirating of his novels. The prevent are the espouses poli- own name. Trade-marks clearly uses his case 6. The “Mark Twain’’ of vendible by copyright which manufacturers cy means that materials not designate to the cannot be or state to the merchandise available goods, quality author and the fact that noted that an such trademark. The court injunction publisher if a attrib- them ... but obtain an manufacturers of could are the cannot, plume, by adoption written. de him a work that he had never of a nom uted to áuthor However, flatly re- the court rules 14 F. at 730-31. to defeat the be allowed well-settled any jected policy country, inter- matter of as a in .force in this the common law sought literary "Mark to assert in the name without 'publication est Clemens work public, after copyright Twain.” is a dedication n Theinvention republish one it.’ plume gives of a nom de at 731-32. who .Id. over another writer no increase of

Case Details

Case Name: Kohler Co. v. Moen Incorporated, F/k/a Stanadyne, Inc.

Court Name: Court of Appeals for the Seventh Circuit

Date Published: Dec 14, 1993

Citation: 12 F.3d 632

Docket Number: 92-2350

Court Abbreviation: 7th Cir.