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66 U. Cin. L. Rev. 119 (1997-1998)
Opening Another Can of Worms: Protecting Product Configuration as Trade Dress

handle is hein.journals/ucinlr66 and id is 129 raw text is: OPENING ANOTHER CAN OF WORMS: PROTECTING PRODUCT CONFIGURATION AS TRADE DRESS Willajeanne F McLean* I. INTRODUCTION Trade dress protection in the configuration of the product itself opens up another can of worms.' Implicit in this particularly vivid assessment of the consequences of extending trade dress protection to product configuration is the understanding that such an extension of the law is fraught with problems.2 For example, courts' and legal commentators4 have been grappling with the conundrum of how to successfully protect product configuration as a trademark without eviscerating other intellectual property concepts-in particular, patent laws. These problems are not Copyright 1997 Willajeanne F. McLean, Professor of Law, University of Connecticut Law School. Many thanks to Russ Versteeg for his insightful comments on a previous draft. I would also like to thank Karen Duncan, my former research assistant, for her able assistance. 1. Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 657 (7th Cir. 1995), cert. denied, 116 S. Ct. 1044 (1996). 2. ChiefJudgeJon Newman recognized this problem when he wrote that courts should proceed with caution in assessing claims to unregistered trade dress protection. Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir. 1995). 3. Se, eg., Vomado Air Circulation Sys., Inc. v. Duracraft Corp., 58 F.3d 1498 (10th Cir. 1995), cert. denied 116 S. Ct. 753 (1996); Thomas &Betts Corp., 65 F.3d at 654; Winning Ways Inc. v. Holloway Sportswear Inc., 37 U.S.P.Q.2d 1462 (D. Kan. 1995) (discussing conflict between patent and trade dress law); Hubbell Inc. v. Pass & Seymour Inc., 35 U.S.P.Q.2d 1760 (S.D.N.Y. 1995); Kohler Co. v. Moen Inc., 12 F.3d 632, 644 (7th Cir. 1993) (finding protection of product configuration does not conflict with Patent Clause); Zip Dee, Inc. v. Dometic Corp., 931 F. Supp. 602 (N.D. Ill. 1996). 4. See, e.g., Bradley K. Groff, Bare-fsted Competition or Pabning Off. Prtection of Prdut Desgn as Trade Dres Under the LanhamAct, 23 AIPLA QJ. 65 (1995) (arguing that product design is best protected under the patent laws, if at all); Michael S. Perez, Rencing the PatentAd and die Lanham A.: ShouldidctConfigurations Be Enhted to Trade Dress Protection After the Expiration of a Utility or Design Patent, 4 TEX. INTELL. PROP. Lj. 383, 384 (1996) (arguing that the Lanham Act and the Patent Act can be reconciled to provide limited trade dress protection); see Anthony E. Dowell, Note, Trade Dress Ptection ofProdut Di :ns Stfling the Progress of Science and the UsefulArtsfor an Unlimited T7rne, 70 NOTRE DAME L REV. 137 (1994) (arguing that trade dress protection of product designs is antithetical to intellectual property rights); Ralph S. Brown, Design Protection: An Ovew, 34 UCLA L REV. 1341 (1987) (presaging the problems of protecting product configuration); ChristopherJ. Kellner, Comment, Rehkin the Procedura Treatment ofFwtnahty: Confroning the Inseparabiity of Usefi4 Aestlheically Pas*g and Sosr-Ide Features of Prduct Designs, 46 EMORY Lj. 913, 926-27 (1997) (discussing, in part, the problems created by the overlap of patent and trademark protection for product configuration).

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