Is this Conflict Really Necessary? Resolving an Ostensible Conflict between Patent Law and Federal Trademark Law

Courts and commentators have recently begun to confront the issue of whether a product configuration that has been disclosed in a utility patent can serve as protectable trade dress under section 43(a) of the Lanham Act. In the view of some, such configurations necessarily enter the public domain upon expiration of the patent, regardless of whether they would otherwise qualify for trademark protection, because there is a federal right to copy that accrues upon patent expiration. In the view of others, there is no reason to deny trade dress protection as long as the trade dress at issue is sufficiently distinctive and nonfunctional. In this paper, I argue that much of the case law and commentary addressing this issue is based upon the erroneous equation of patents with monopolies, a view that has been long discredited in the economic literature. If the arguments in favor of trade dress protection generally are sound, there is no good reason to create an exception for trade dress that has been disclosed in a utility patent. As long as the trade dress is nonfunctional, in the sense that competitors do not need access to it in order to compete, the prospect of creating perpetual monopolies is nonexistent