The Case Against Product Configuration Trade Dress

Abstract

In this chapter, written for an edited collection called Trademark Law & Theory: Reform of Trademark Law, we argue that the inclusion of product configuration trade dress as trademark subject matter was a mistake. We do not deny that product configuration can, under some circumstances, indicate source. But we reject the idea that everything that indicates source must be considered a trademark. There is little to be gained in terms of trademark values from treating product configuration as a species of trademark. At the same time, allowing trademark protection for configuration risks significant harm – to competitors, who may be excluded from competitively important features; to consumers, who often value product design features for non-trademark reasons; and to the overall intellectual property system, which can be imbalanced when protection for product configuration undermines policy choices reflected in the rules of other IP regimes. Courts have, of course, recognized the potential costs of overprotection of trade dress, and as a result, they have developed elaborate doctrines that are intended to zero in on the source-related benefits of protection and limit the costs. Specifically, courts have required evidence of secondary meaning for all product designs and declared functional features ineligible for protection. But those rearguard limitations often don’t work very well, and the complex legal doctrine they produce is almost certainly not worth the enforcement costs. We would be better off returning to a system in which product configuration was excluded as trademark subject matter, with claims involving product configuration considered under the law of unfair competition. Specifically, product configuration would never be protected as such, meaning that claimants would, by definition, never be entitled to an injunction against copying of the design features (or to monetary damages for that copying). Unfair competition remedies would be limited to labeling and packaging requirements, and they would be justified only for the limited purpose of preventing passing off—not all of the broader, amorphous forms of confusion recognized by modern law. That treatment would de-emphasize questions of validity in product configuration cases, taking significant pressure off of courts to identify the features of the claimed trade dress and to determine its scope. It would also spare us the complexity and expense of the secondary meaning and functionality doctrines.