Hastings Communications and Entertainment Law Journal


Kevin E. Mohr


Patent law seeks to advance technological innovation by encouraging invention with a limited-duration monopoly. In return, the inventor discloses his invention, and it becomes free for the public to use upon the patent's expiration. Trademark law seeks to avoid consumer confusion by granting to the trademark owner for an indefinite period a monopoly in the use of the mark in connection with its goods. Where a product is protected by a utility patent and the product owner also seeks to protect the product's shape or design by relying on trademark law, these policies can collide. This can result in the Constitutionally-mandated patent bargain being transformed into a grant of a perpetual patent monopoly to the inventor. The author discusses how such a conflict can arise where the shape to be protected by trademark law has been disclosed in a utility patent. After discussing general principles of patent and trademark law, the author explains why the doctrine of functionality fails to reconcile these utility patent-trademark conflicts. The author examines and criticizes the approaches several recent lower federal courts have taken in addressing the issue. The author concludes that a strict rule, by which any product design disclosed in a utility patent is automatically precluded from trademark protection, best effectuates the conflicting goals of patent and trademark law, satisfies the expectations of the parties and the public, and promotes judicial economy.