In 2001, the Supreme Court in TrafFix Devices, Inc. v. Marketing Displays, Inc. refined its test for determining whether a product design is functional—and thus ineligible for trade dress protection. 532 U.S. 23, 58 U.S.P.Q.2d 1001 (2001). In doing so, the Court addressed one factor commonly considered by lower courts analyzing functionality: the availability of alternative designs. Id. at 33-34. Generally, evidence that a product feature can be designed in different ways supports the argument that each of those designs is not functional. However, the Court in TrafFix seemed to downplay the significance of such evidence, stating that in light of other indicia of functionality—in that case, the existence of an expired utility patent—there was no need ‘‘to engage . . . in speculation about other design possibilities.’’ 523 U.S. at 33-34.

Originally published in Bloomberg BNA’s Patent, Trademark & Copyright Journal® - July 28, 2017.