Patent law trumps trademark law [Vornado electric fan

Abstract

What happens when the purposes of the patent laws conflict with the purposes of the trademark laws? Which law should prevail? That was the question before the U.S. Court of Appeals for the Tenth Circuit in the recent case of Vornado vs. Duracraft. The answer the court gave was that the patent laws should prevail and as a result, the court severely limited the trademark doctrine of protection. The law of trade dress deals with the design and shape of products and their packaging. Originally developed under the general law of unfair competition, both state and federal courts now protect from misappropriation product configurations that identify a manufacturer as the source of a product. Examples of configurations which have been found to be entitled to such protection include the Rolls-Royce radiator grille, and the Honeywell circular thermostat. When trade dress rights exist, a competitor can be stopped from making a look-alike product. Because trade dress rights, like other trademark rights, can potentially last forever, courts have put strict limits on the types of product configurations that are eligible for trade dress protection. Configurations that are functional cannot receive trade dress protection. The test for functionality is often whether other configurations exist that can perform the same function. The Vornado case added another limitation to the trade dress doctrine, namely, if a product configuration is a significant inventive component of the claims of a patent on the product, that configuration cannot receive trade dress protection even if it is not functional. The case involved a highly successful electric fan invented by the Vornado company. The fan had a sleek modern appearance with a distinctive spiral grille, which readily identified it as a Vornado fan. Vornado obtained a utility patent on its fan, all the claims of which included the spiral grille feature. Vornado, however, was not able to obtain a claim to the spiral grille by itself since such grilles, although no longer in use, were disclosed in old patents.