FRYER* Institute Newsletter No. 4, October 16, 2000 [updated Nov. 20, 2000, adding pictures of Samara dresss and applique in Wal-Mart v. Samara).


Prepared by William T. Fryer, III

Introduction. This newsletter reports on several major events that have occurred recently on protection of industrial designs. In addition, there is a report on significant developments likely to happen soon in this field. In the next month an attempt will be made to provide detailed reports on topics covered in sufficient detail in this newsletter..


Table of Contents

I. The U. S. PTO Conference on Design Patents, October 18, 2000 (Part of Technology Center 1600 all day conference) -- Report will follow meeting.

II. New Act of the Hague Agreement Ratification by the U. S. - Update and announcing Power Point Presentation on this Web site - Need for Ratification Support.

III. Major Developments on U. S. Trade Dress Protection

A. Wal-Mart case (United States Supreme Court) -- Changed U. S. law on product configuration trade dress protection, may be.

B. Midwest Case (Federal Circuit) - Held that all interface appeals will be decided by this Court.

C. Lanham Act Change - Trade Dress infringement - Shifted burden of proof on unregistered trade dress owner in infringement action.

D. Marketing Display Case (U. S. Supreme Court) - Oral argument scheduled for November 29, 2000 - Trade dress and patent interface.

E. AIPPI Survey on trade dress and design patent (registrations) interface.

F. ABA, Section of IP Law Conference, Summer 1999 - Program on trade dress - helpful papers.

IV. Vessel Hull Design Protection Act Amended and Status Report - It is used.

V. European Union Community Design System is on its way to operation soon.

VI. Coming - Major Design Patent Cases 1999 and 2000 - A review.


I. The U. S. PTO Conference on Design Patents, October 18, 2000 (Part of Technology Center 1600 all day conference).

The annual U. S. Patent and Trademark Office Conference by Technology Center 1600 (Biotechnology and Design Patents) will be held on October 18, 2000. A part of this event will be devoted to design patents, with presentations by attorneys and PTO staff, and informal discussions with Design Group 2900 Supervisory Primary Examiners on design patent practice.

There will be a summary of the design patent portion of this conference in the next update of this web site. For conference registration information, see the PTO web site .


II. New Act of the Hague Agreement Ratification by U. S. - Update and Announcing Power Point Presentation on this Web site - Need for Ratification Support.

The New Act of the Hague Agreement Concerning the International Registration of Industrial Designs was completed in July 1999, and the U. S. signed the treaty. This step by the U. S. showed a strong interest in utilizing the treaty.

The good work of the experts who developed the New Act and many PTO staff must be followed by a strong and prompt effort for U. S. ratification. Many other countries are waiting until the U. S. ratifies, before giving serious consideration to adhering to the treaty. The U. S. can be a leader in international design protection by its prompt ratification.

The next step is for the PTO to prepare implementing legislation, to interface with current patent laws and procedure. Only relatively minor changes are needed, as the U. S. government negotiating team saw to it that all major interfaces with U. S. law and practice were manageable.

Firms and companies should contact the U. S. Commissioner of Patents and Trademarks to show support for the ratification process and offer help.


III. Major Developments on U. S. Trade Dress Protection

Introduction. There have been several major events on trade dress protection and more can be expected. In summary, the U. S. Supreme Court has changed the law on product configuration trademark protection in the Wal-Mart case. This court may make another major change when it decides the pending Marketing Display case. The Federal Circuit, Court of Appeals, has become more involved in deciding the relation of patents to other forms on intellectual property (IP). An international organization has studied the relation of trade dress protection and design patents (registrations). The American Bar Association, Section of IP Law, held a program on trade dress protection at its summer Boston meeting. All these events are ingredients for a very exciting year for trade dress protection. A brief review of these events will be given below.

A. Wal-Mart case (United States Supreme Court) - May Change U. S. Law on Product Configuration Trade Dress Protection, Wal-mart Stores, Inc. v. Samara Bros. Inc., 529 U. S. 205, 54 U.S.P.Q. 2d (BNA) 1065 U.S.S.C. 2000).

This decision changed U. S. trademark law for product configuration protection in a major way, if give full impact. It is so extensive that the type of change is usually made by legislative reform. How this case will be interpreted and the public reaction may start legislative reform to reverse its effect.

Wal-Mart copied Samara's dress design (see picture)  and appliques (see picture). The appliques were registered by the Copyright Office and stood up to the test of originality in the litigation. The trade dress protection of the dress design, the arrangement of the appliques on the collars and pockets, under the Lanham Act, 15 U. S. C. sec. 1125(a), was based on inherent distinctiveness. There was insufficient secondary meaning proof. The Circuit Court held there was trade dress protection and infringement. The U. S. Supreme Court reversed, holding there was no trade dress protection for this design. It established new law, that product configuration must have secondary meaning for protection as trade dress. The Two Pesos case, [include cite], where trade dress protection was upheld by this Court with inherent distinctiveness, was distinguished. The Wal-mart decision put the restaurant design type found in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 U.S.P.Q. 2d (BNA) 1081 (U.S.S.C. 1992), in a different group that had more than product configuration. It affirmed in dicta that product packaging can be protected with only inherent distinctiveness. Product configuration must meet the higher standard of having secondary meaning.

The Court recognized it might take the wisdom of Solomon in some cases to decide what trade dress designs fall in the group protected with inherent distinctiveness. The effort to have a company's products in this group will be formidable. The key new principle seems to be that product configuration is essentially the shape of functional parts of a product. These features in all products require secondary meaning for distinctiveness to be protected by trademark law.

As a comment, if one looks at the dress design in the Wal-Mart case, the court did not need to go so far in redeveloping trade dress law to come up with the same result. The design had a strong aesthetic image. It should have require secondary meaning for trade dress protection. The Court did not choose to use the existing case law that set a high level for distinctiveness on product configuration related to functionality. The existing law had a high standard to achieve trademark distinctiveness, since it considered both utilitarian functionality and aesthetic functionality. The Court opinion did not reflect a thorough consideration of these existing laws.

The Court did not accept as adequate Congress' tightening of the statutory law on trade dress protection in two areas. In 1999 Congress shifted the burden for unregistered trade dress owners to prove distinctiveness in litigation (see section II(C) below). Earlier, Congress clarified that an incontestable registration was subject to the defense of being primarily functional, 15 U. S.C. §1064(3). Congress had extensive hearings recently on trade dress protection with several proposals rejected for now in the process of making these changes. The Supreme Court decided to adopt a new solution to a perceived abuse of trade dress protection for product configuration.

The new U. S. law under Wal-Mart on trade dress protection makes the U. S. in conflict with the laws, in principle, in most other countries, creating a difficult situation for trademark harmonization. A recent survey of trade dress laws conducted by the AIPPI (see section II(E)), suggests that most countries follow a high standard of distinctiveness to sort out what is protected by trade dress. In these systems there is the possibility on a product configuration having inherent distinctiveness.

Where the Wal-Mart decision leaves U. S. industrial design protection is an important question. The need for market entry protection is significant for many products. A large number of companies rely heavily on trade dress protection and prefer it over design patents, since there is a longer protection term and other factors. The Wal-Mart decision recognized that its new approach may leave some products unprotected by trademark law, and the Court suggests that design patent and copyright protection could be used instead, without going into the many issues involved in these choices. For example, can trade dress protection on a design that was protected by a design patent or copyright continue after the patent or copyright protection ends. Another question is what can be protected by both patent and trade dress or copyright and trade dress? A case pending in the U. S. Supreme Court, Marketing Displays, will likely address the relation of trade dress to patents, as discussed below in section II(B).

In perspective, the Wal-Mart case may be no more than the U. S. Supreme Court overreaction to courts finding trade dress without secondary meaning, in some situations.. The realistic view of this case is to treat the limits imposed by the Court to cases where there are merely functional design features, the law now. The burden to show distinctiveness then shifts to the product owner in these cases, to show that trademark status has been obtained. In this context, the Wal-Mart case is not a great change. One can only hope that lower courts see this perspective and do not remove from consideration products entitled to have the inherent distinctive status for product configurations and the attendant market entry protection.

An in-depth review of these issues will be written and may be published on this web site. They deserve a full debate. Perhaps Congress will take another look at trade dress protection in light of the Wal-Mart decision., along with the new law of the Wal-Mart case.

B. Midwest Case (Federal Circuit) - Holds that All Interface Appeals will be decided by this Court, Midwest Industries, Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 50 U.S.P.Q. 2d (BNA) 1672 (Fed. Cir. 1999), cert. Denied, 145 L. Ed. 2d 409 (U.S.S.C. 1999).

Midwest, an en banc decision of the Federal Circuit, Court of Appeals, involved a boat trailer that was protected by a utility patent. The trailer owner argued that there was trade dress protection for the appearance of a functional trailer feature. The utility patent described this feature and in a dependent claim the trade dress feature was claimed. The patentability of that claim, apparently, was not dependent on the trade dress feature. There was no charge of patent infringement.

The Federal Circuit in this opinion stated, in general terms, that trade dress protection could exist under certain circumstances, even though there was a utility patent on the product. The summary judgment for the defendant was reversed. The Court also held that the Federal Circuit would decide all cases involving questions of patent law and the relation to other intellectual property. Up to that time, these interface questions on trade dress were decided by the Circuit Court where the action was brought. There were some differences in the approaches applied in these courts to determine if there could be trade dress and patent protection on the same product. Since the Federal Circuit had stated its view that patent protection did not preclude trade dress protection in some situations, the stage was set for review of specific issues on this topic by the Federal Circuit.

The U. S. Supreme Court may have revised the trade dress law in the Wal-Mart case. It is up to the Circuit courts to decide how to apply the new law. The Federal Circuit will be one of these courts on general trademark law. On the patent interface issues the Federal Circuit will have exclusive jurisdiction. The Marketing Display case now pending before U. S. Supreme Court will likely provide important instruction on how the Federal Circuit should apply this newly acquired exclusive jurisdiction (see section II(E)).


C. Lanham Act Change - Trade Dress infringement - Burden of Proof on Trademark owner.

Recently Congress debated the trade dress protection for products with considerable intensity. The end result was addition to the Lanham Act, 15 U. S. C. section 1125(a). The addition stated:

"(3) In a civil action for trade dress infringement under this Act for trade dress not registered on the principle register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional."

Earlier Congress enacted a change to 15 U.S. C. §1064 (3) that clarified functionality of trade dress remains a defense even though the registration is incontestable. These legislative changes were in response to a concern by some that trade dress protection for product configuration was too extensive and could be used to provoke litigation that favored larger companies.

The U. S. Supreme Court, in the Wal-Mart case, by it own statement, responded to the same concerns as Congress did, and the Court did not consider the Congressional actions sufficient to meet the problem. The Court took a step that Congress chose not to take. One can ask if the Court was overreaching its role in making such a change.


D. Marketing Displays Case (U. S. Supreme Court) - Oral Argument Scheduled for November 29, 2000 - Trade Dress and Patent Interface, Marketing Displays, Inc. v. Traffix Devices, Inc., 200 F.3d 929, 53 U.S.P.Q. 2d (BNA) 1335 (6th Cir. 1999), cert. granted, 147 L. Ed. 2d 981 (U.S.S.C. 2000).

The Marketing Displays is a major design protection case recently taken for decision by the U. S. Supreme Court. The oral argument for this case will be on November 29, 2000. The outcome of this case will be to clarify the effect of having a utility patent describe and/or claim a product that also has trade dress protection. The product was an outdoor sign support. A report on the hearing will be published on this web site.


E. AIPPI Survey on Trade Dress and Design Patent (Registrations) Interface.

A very useful Internet resource on trade dress protection was found on the AIPPI web site: , go to the Meetings page, and then go to the Executive Committee Meeting page, April 8-15, 2000, Sorrento, Italy, Question 148 and its Summary Reports). This survey of [insert number of countries] included reports on national design protection by trade dress and design patent (often called registration in some countries).

In summary, this report showed that most countries permit dual trade dress and design patent protection. These majority countries rely on the basic test of distinctiveness to determine whether a product needs secondary meeting for protection. A review of European Union Community Trademark registration denial appeals suggests that the standard for distinctiveness is pretty high for product configuration. This approach, using the basic distinctiveness test and setting a high level, offers some flexibility and does not discard arbitrarily the inherent distinctiveness for all product configurations, as the U. S. Supreme Court did.

The U. S. Supreme Court reaction to product design protection may be in the same direction as the majority of other countries, to achieve the same end result. The approach is different on a critical aspect. International harmonization will be difficult under these circumstances, unless the U. S. approach is clarified. If the U. S. approach is tied into the functionality aspect, limited to products with merely functional features, then the prospects for international harmonization would be brighter. This topic could be an appropriate one for discussion at the World Trade Organization. Most foreign countries have a reasonably balanced approach by taking a tough approach to distinctiveness and leaving the possibility of inherent distinctiveness.


F. ABA, Section of IP Law Conference, Summer 1999 - Program on Trade Dress - Helpful Papers.

The American Bar Association, Section of IP Law (IP Section) program at the Boston Summer Business and CLE meeting had a program on trade dress and reviewed current developments. The major cases in the Circuit Courts were reviewed by Ted Davis. The Wal-Mart case was discussed by Neil Smith. Bill Fryer presented two papers, one suggesting that design owners should consider boosting their possibility of trade dress protection by obtaining design patent protection on their trade dress design. The other paper related to international protection of trade dress and design patents, including a review of the AIPPI Survey discussed in section II(E). [insert links to papers if time permits] The program papers are available from the IP Section Office, by contacting the Staff Director, Betsi Roach (E-mail:


IV. Vessel Hull Design Protection Act Amended and Status Report - It Is Used.

The research material found on this web site for the Vessel Hull Design Protection Act (VHDP Act) needs to be updated, to include the 1999 amendment. Two major changes were made by Public Law 106-113, §5005, S.1948, incorporated in H.R. 3194 (106th Cong, 2d Sess.), enacted November 29, 1999 amending 17 U.S.C. §§1301-1322.

The first change was to remove the two year sunset provision. The VHDP Act is now part of the U. S. design protection law without a fear of immediate removal. The second major change clarified what type of boats can be protected. The amendment to 17 U. S. C. §1301(b)(1) was amended to read as follows:

"(3) A 'vessel' is a craft -

(A) that is designed and capable of independently steering a course on or through water through its own means of propulsion; and

(B) that is designed and capable of carrying and transporting one or more passengers."

This change narrowed the type of water floating devices covered. A towed target barge used in gunnery practice would fall outside this statement, unless there were other facts to support coverage. An oil well rig floated to a site is another example of a device that would fall outside the Act, unless there were other facts to support coverage. The creative mind will see ways to qualify a device under this revised law.

A status report on the use of the VHDP Act is easy to present. A visit to the Copyright Office web site , go to Vessel Hull for Interim regulations and forms and registration documents (At the bottom of the document located the file with the list of registrations and click on the registration number to bring up the filed documents). One can examine the documents filed, including the drawings and pictures, a tribute to the Copyright Office in administering this new law. It is a strong evidence that this approach to market entry design protection works and administration, with computer technology can make process the registration applications effectively. As of October 15, 2000, there are 27 registrations.


V. European Union Community Design System Is on Its Way to Operation Soon.

The BNA World Intellectual Property Report, 14 WIPR 262 (2000)

announced that the European Union Community Design System was close to starting up. The EU Design Directive was published to help harmonize the design patent (registration) systems in member countries (see review of EU Directive on this web site). The next step, that will occur soon, as evidenced by action by the EU Parliament, will be approval of the Community Design System Regulation. The Regulation is ready for publication, with a compromise in place for the controversial spare parts issue, as stated in the Directive. The Community Design System will be administrated by the EU Trademark and Design Office. Information on these developments will be available on its web site (

VI. Coming - Other Design Patent Cases 1999 and 2000 - A review.

A review of selected design patent cases for 1999 - 2000 will be published on this web site, if time permits, in the next major site update.


Comments on topics mentioned in this Newsletter are welcomed. All comments should be sent to the editor at the following E-mail address: fryer@fryer.comk


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This page was last updated on November 10, 2000.

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