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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
Willajeanne F McLean*
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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