Trademarks That Incorporated Functional Aspects of Expired Patents Were Properly Cancelled as Unprotectable

Case: Fuji Kogyo Co., Ltd. v. Pac. Bay Int'l, Inc. (08/23/06 - No. 05-5854)

The One Sentence Summary: Registered trademarks for fishing pole line guides that incorporated functional features of expired patents were cancelled as unprotectable.



What They Were Fighting About: After a trial, the district court had cancelled three of plaintiff's trademark registrations for fishing line guides, finding that they were functional and unprotectable. The line guides were the subject of expired patents, and also of design patents.

Sixth Circuit Holdings:

• The monopoly right granted by a patent is given only for a limited term, and after that term, the public is free to copy and practice the invention. The defendant was entitled to build the fishing line guides that had been described in the expired patents, and trademark could not interfere with the public's right to practice the invention.
• The evidentiary presumptions that the trademark and design patents were properly issued and covered non-functional aspects of the design were in conflict with the presumption that aspects shown in the patents were functional. The trial court properly resolved these factual disputes as to functionality of the design at trial.
• Copying a competitor's design is not always discouraged or disfavored, and can keep downward pressure on prices and encourage innovation. Copying the functional aspects of the expired patents was allowed.
• The patent was proper evidence of functionality of the designs, and the district court did not need to do claim construction on the patents to determine the issue of the trademarks' validity.