OPINION OF THE COURT KP PERMANENT MAKE-UP, INC. V. LASTINGIMPRESSION I, INC. 543 U. S. ____ (2004) SUPREME COURT OF THE UNITED STATES NO. 03-409 KP PERMANENT MAKE-UP, INC., PETITIONER v. LASTING IMPRESSION I, INC., et al.

															on writ of certiorari to the united states court of
appeals for the ninth circuit

															[December 8, 2004]

															   Justice Souter delivered the
opinion of the Court.*

															   The question here is whether a
party raising the statutory affirmative defense of fair use to a
claim of trademark infringement, 15 U. S. C. §1115(b)(4), has
a burden to negate any likelihood that the practice complained of
will confuse consumers about the origin of the goods or services
affected. We hold it does not.

															I

															   Each party to this case sells
permanent makeup, a mixture of pigment and liquid for injection
under the skin to camouflage injuries and modify nature’s
dispensations, and each has used some version of the term “micro
color” (as one word or two, singular or plural) in marketing and
selling its product. Petitioner KP Permanent Make-Up, Inc., claims
to have used the single-word version since 1990 or 1991 on
advertising flyers and since 1991 on pigment bottles. Respondents
Lasting Impression I, Inc., and its licensee, MCN International,
Inc. (Lasting, for simplicity), deny that KP began using the term
that early, but we accept KP’s allegation as true for present
purposes; the District and Appeals Courts took it to be so, and the
disputed facts do not matter to our resolution of the
issue.[ Footnote 1 ] In 1992,
Lasting applied to the United States Patent and Trademark Office
(PTO) under 15 U. S. C. § 1051 for registration of a
trademark consisting of the words “Micro Colors” in white letters
separated by a green bar within a black square.[ Footnote 2 ] The PTO registered the mark to
Lasting in 1993, and in 1999 the registration became incontestable.
§1065.

															   It was also in 1999 that KP
produced a 10-page advertising brochure using “microcolor” in a
large, stylized typeface, provoking Lasting to demand that KP stop
using the term. Instead, KP sued Lasting in the Central District of
California, seeking, on more than one ground, a declaratory
judgment that its language infringed no such exclusive right as
Lasting claimed.[ Footnote 3 ]
Lasting counterclaimed, alleging, among other things, that KP had
infringed Lasting’s “Micro Colors” trademark.

															   KP sought summary judgment on the infringement
counterclaim, based on the statutory affirmative defense of fair
use, 15 U. S. C. §1115(b)(4). After finding that Lasting had
conceded that KP used the term only to describe its goods and not
as a mark, the District Court held that KP was acting fairly and in
good faith because undisputed facts showed that KP had employed the
term “microcolor” continuously from a time before Lasting adopted
the two-word, plural variant as a mark. Without enquiring whether
the practice was likely to cause confusion, the court concluded
that KP had made out its affirmative defense under §1115(b)(4) and
entered summary judgment for KP on Lasting’s infringement claim.
See SA CV 00–276–GLT (EEx), (May 16, 2001), pp. 8–9, App. to
Cert. 29a–30a.

															   On appeal, 328 F. 3d 1061 (2003), the
Court of Appeals for the Ninth Circuit thought it was error for the
District Court to have addressed the fair use defense without
delving into the matter of possible confusion on the part of
consumers about the origin of KP’s goods. The reviewing court took
the view that no use could be recognized as fair where any consumer
confusion was probable, and although the court did not pointedly
address the burden of proof, it appears to have placed it on KP to
show absence of consumer confusion. Id., at 1072
(“Therefore, KP can only benefit from the fair use defense if there
is no likelihood of confusion between KP’s use of the term ‘micro
color’ and Lasting’s mark”). Since it found there were disputed
material facts relevant under the Circuit’s eight-factor test for
assessing the likelihood of confusion, it reversed the summary
judgment and remanded the case.

															   We granted KP’s petition for certiorari, 540 U. S. 1099 (2004), to address a disagreement among the Courts of Appeals on
the significance of likely confusion for a fair use defense to a
trademark infringement claim, and the obligation of a party
defending on that ground to show that its use is unlikely to cause
consumer confusion. Compare 328 F. 3d, at 1072 (likelihood of
confusion bars the fair use defense); PACCAR Inc. v. TeleScan Technologies, L. L. C. , 319 F. 3d
243, 256 (CA6 2003) (“[A] finding of a likelihood of confusion
forecloses a fair use defense”); and Zatarains, Inc. v. Oak Grove Smokehouse , 698 F. 2d 786, 796 (CA5 1983)
(alleged infringers were free to use words contained in a trademark
“in their ordinary, descriptive sense, so long as such use [did]
not tend to confuse customers as to the source of the goods”), with Cosmetically Sealed Industries, Inc. v. Chesebrough-Pond’s USA Co. , 125 F. 3d 28, 30–31 (CA2
1997) (the fair use defense may succeed even if there is likelihood
of confusion); Shakespeare Co. v. Silstar Corp. of
Am. , 110 F. 3d 234, 243 (CA4 1997) (“[A] determination of
likely confusion [does not] preclud[e] considering the fairness of
use”); Sunmark, Inc. v. Ocean Spray Cranberries,
Inc. , 64 F. 3d 1055, 1059 (CA7 1995) (finding that
likelihood of confusion did not preclude the fair use defense). We
now vacate the judgment of the Court of Appeals.

															II

															A

															   The Trademark Act of 1946, known
for its principal proponent as the Lanham Act, 60 Stat. 427, as
amended, 15 U. S. C. §1051 et seq. , provides the user
of a trade or service mark with the opportunity to register it with
the PTO, §§1051, 1053. If the registrant then satisfies further
conditions including continuous use for five consecutive years,
“the right … to use such registered mark in commerce” to designate
the origin of the goods specified in the registration “shall be
incontestable” outside certain listed exceptions. §1065.

															   The holder of a registered mark
(incontestable or not) has a civil action against anyone employing
an imitation of it in commerce when “such use is likely to cause
confusion, or to cause mistake, or to deceive.” §1114(1). Although
an incontestable registration is “conclusive evidence … of the
registrant’s exclusive right to use the … mark in commerce,”
§1115(b), the plaintiff’s success is still subject to “proof of
infringement as defined in section 1114,” §1115(b). And that, as
just noted, requires a showing that the defendant’s actual practice
is likely to produce confusion in the minds of consumers about the
origin of the goods or services in question. See Two Pesos,
Inc. v. Taco Cabana, Inc. , 505 U. S. 763 , 780
(1992) (Stevens, J., concurring); Lone Star Steakhouse and
Saloon, Inc. v. Alpha of Virginia, Inc. , 43
F. 3d 922, 935 (CA4 1995); Restatement (Third) of Unfair
Competition §21, Comment a (1995). This plaintiff’s burden
has to be kept in mind when reading the relevant portion of the
further provision for an affirmative defense of fair use, available
to a party whose

															“use of the name, term, or device charged to be an
infringement is a use, otherwise than as a mark, … of a term or
device which is descriptive of and used fairly and in good faith
only to describe the goods or services of such party, or their
geographic origin … .” §1115(b)(4).

															   Two points are evident. Section
1115(b) places a burden of proving likelihood of confusion (that
is, infringement) on the party charging infringement even when
relying on an incontestable registration. And Congress said nothing
about likelihood of confusion in setting out the elements of the
fair use defense in §1115(b)(4).

															   Starting from these textual fixed points, it
takes a long stretch to claim that a defense of fair use entails
any burden to negate confusion. It is just not plausible that
Congress would have used the descriptive phrase “likely to cause
confusion, or to cause mistake, or to deceive” in §1114 to describe
the requirement that a markholder show likelihood of consumer
confusion, but would have relied on the phrase “used fairly” in
§1115(b)(4) in a fit of terse drafting meant to place a defendant
under a burden to negate confusion. “ ‘[W]here Congress
includes particular language in one section of a statute but omits
it in another section of the same Act, it is generally presumed
that Congress acts intentionally and purposely in the disparate
inclusion or exclusion.’ ” Russello v. United
States , 464 U.
S. 16 , 23 (1983) (quoting United States v. Wong
Kim Bo , 472 F. 2d 720, 722 (CA5 1972)) (alteration in
original).[ Footnote 4 ]

															   Nor do we find much force in Lasting’s
suggestion that “used fairly” in §1115(b)(4) is an oblique
incorporation of a likelihood-of-confusion test developed in the
common law of unfair competition. Lasting is certainly correct that
some unfair competition cases would stress that use of a term by
another in conducting its trade went too far in sowing confusion,
and would either enjoin the use or order the defendant to include a
disclaimer. See, e.g. , Baglin v. Cusenier
Co. , 221 U. S.
580 , 602 (1911) (“[W]e are unable to escape the conclusion that
such use, in the manner shown, was to serve the purpose of
simulation …”); Herring-Hall-Marvin Safe Co. v. Hall’s
Safe Co. , 208
U. S. 554 , 559 (1908) (“[T]he rights of the two parties have
been reconciled by allowing the use, provided that an explanation
is attached”). But the common law of unfair competition also
tolerated some degree of confusion from a descriptive use of words
contained in another person’s trademark. See, e.g. , William R. Warner & Co. v. Eli Lilly &
Co. , 265 U. S.
526 , 528 (1924) (as to plaintiff’s trademark claim, “[t]he use
of a similar name by another to truthfully describe his own product
does not constitute a legal or moral wrong, even if its effect be
to cause the public to mistake the origin or ownership of the
product”); Canal Co. v. Clark , 13 Wall. 311, 327
(1872) (“Purchasers may be mistaken, but they are not deceived by
false representations, and equity will not enjoin against telling
the truth”); see also 3 L. Altman, Callmann on Unfair Competition,
Trademarks and Monopolies §18:2, pp. 18–8 to 18–9, n. 1 (4th
ed. 2004) (citing cases). While these cases are consistent with
taking account of the likelihood of consumer confusion as one
consideration in deciding whether a use is fair, see Part II–B, infra , they do not stand for the proposition that an
assessment of confusion alone may be dispositive.
Certainly one cannot get out of them any defense burden to negate
it entirely. Finally, a look at the typical
course of litigation in an infringement action points up the
incoherence of placing a burden to show nonconfusion on a
defendant. If a plaintiff succeeds in making out a prima facie case
of trademark infringement, including the element of likelihood of
consumer confusion, the defendant may offer rebutting evidence to
undercut the force of the plaintiff’s evidence on this (or any)
element, or raise an affirmative defense to bar relief even if the
prima facie case is sound, or do both. But it would make no sense
to give the defendant a defense of showing affirmatively that the
plaintiff cannot succeed in proving some element (like confusion);
all the defendant needs to do is to leave the factfinder
unpersuaded that the plaintiff has carried its own burden on that
point. A defendant has no need of a court’s true belief when
agnosticism will do. Put another way, it is only when a plaintiff
has shown likely confusion by a preponderance of the evidence that
a defendant could have any need of an affirmative defense, but
under Lasting’s theory the defense would be foreclosed in such a
case. “[I]t defies logic to argue that a defense may not be
asserted in the only situation where it even becomes relevant.” Shakespeare Co. v. Silstar Corp. , 110 F. 3d,
at 243. Nor would it make sense to provide an affirmative defense
of no confusion plus good faith, when merely rebutting the
plaintiff’s case on confusion would entitle the defendant to
judgment, good faith or not. Lasting tries to extenuate the
anomaly of this conception of the affirmative defense by arguing
that the oddity reflects the “vestigial” character of the fair use
defense as a historical matter. Tr. of Oral Arg. 39. Lasting argues
that, because it was only in 1988 that Congress added the express
provision that an incontestable markholder’s right to exclude is
“subject to proof of infringement,” Trademark Law Revision Act of
1988, §128(b)(1), 102 Stat. 3944, there was no requirement prior to
1988 that a markholder prove likelihood of confusion. Before 1988,
the argument goes, it was sensible to get at the issue of likely
confusion by requiring a defendant to prove its absence when
defending on the ground of fair use. When the 1988 Act saddled the
markholder with the obligation to prove confusion likely, §1115(b),
the revision simply failed to relieve the fair use defendant of the
suddenly strange burden to prove absence of the very confusion that
a plaintiff had a new burden to show in the first place. But the explanation does not work.
It is not merely that it would be highly suspect in leaving the
claimed element of §1115(b)(4) redundant and pointless. Hibbs v. Winn , 542 U. S. ___, ___, (2004) (slip
op., at 10) (noting “rule against superfluities” in statutory
construction). The main problem of the argument is its false
premise: Lasting’s assumption that holders of incontestable marks
had no need to prove likelihood of confusion prior to 1988 is
wrong. See, e.g. , Beer Nuts, Inc. v. Clover
Club Foods Co. , 805 F. 2d 920, 924–925 (CA10 1986)
(requiring proof of likelihood of confusion in action by holder of
incontestable mark); United States Jaycees v. Philadelphia Jaycees , 639 F. 2d 134, 137, n. 3
(CA3 1981) (“[I]ncontestability [does not] mak[e] unnecessary a
showing of likelihood of confusion …”); 5 J. McCarthy, Trademarks
and Unfair Competition §32:154, p. 32–247 (4th ed. 2004) (“Before
the 1988 Trademark Law Revision Act, the majority of courts held
that while incontestability grants a conclusive presumption of the
‘exclusive right to use’ the registered mark, this did not relieve
the registrant of proving likelihood of confusion”). B Since the burden of
proving likelihood of confusion rests with the plaintiff, and the
fair use defendant has no free-standing need to show confusion
unlikely, it follows (contrary to the Court of Appeals’s view) that
some possibility of consumer confusion must be compatible with fair
use, and so it is. The common law’s tolerance of a certain degree
of confusion on the part of consumers followed from the very fact
that in cases like this one an originally descriptive term was
selected to be used as a mark, not to mention the undesirability of
allowing anyone to obtain a complete monopoly on use of a
descriptive term simply by grabbing it first. Canal Co. v. Clark , supra , at 323–324, 327. The Lanham Act
adopts a similar leniency, there being no indication that the
statute was meant to deprive commercial speakers of the ordinary
utility of descriptive words. “If any confusion results, that is a
risk the plaintiff accepted when it decided to identify its product
with a mark that uses a well known descriptive phrase.” Cosmetically Sealed Industries, Inc. v. Chesebrough-Pond’s USA Co. , 125 F. 3d, at 30. See
also Park ’N Fly, Inc. v. Dollar Park & Fly,
Inc. , 469 U. S.
189 , 201 (1985) (noting safeguards in Lanham Act to prevent
commercial monopolization of language); Car-Freshner Corp. v. S. C. Johnson & Son, Inc. , 70 F. 3d 267,
269 (CA2 1995) (noting importance of “protect[ing] the right of
society at large to use words or images in their primary
descriptive sense”).[ Footnote
5 ] This right to describe is the reason that descriptive terms
qualify for registration as trademarks only after taking on
secondary meaning as “distinctive of the applicant’s goods,” 15 U.
S. C. § 1052(f), with the registrant getting an exclusive
right not in the original, descriptive sense, but only in the
secondary one associated with the markholder’s goods, 2 McCarthy, supra , § 11:45 (“The only aspect of the mark which is
given legal protection is that penumbra or fringe of secondary
meaning which surrounds the old descriptive word”). While we thus
recognize that mere risk of confusion will not rule out fair use,
we think it would be improvident to go further in this case, for
deciding anything more would take us beyond the Ninth Circuit’s
consideration of the subject. It suffices to realize that our
holding that fair use can occur along with some degree of confusion
does not foreclose the relevance of the extent of any likely
consumer confusion in assessing whether a defendant’s use is
objectively fair. Two Courts of Appeals have found it relevant to
consider such scope, and commentators and amici here have
urged us to say that the degree of likely consumer confusion bears
not only on the fairness of using a term, but even on the further
question whether an originally descriptive term has become so
identified as a mark that a defendant’s use of it cannot
realistically be called descriptive. See Shakespeare Co. v. Silstar Corp. , supra , at 243 (“[T]o the degree
that confusion is likely, a use is less likely to be found
fair …” (emphasis omitted)); Sunmark, Inc. v. Ocean Spray Cranberries, Inc. , 64 F. 3d, at 1059;
Restatement (Third) of Unfair Competition, §28; Brief for American
Intellectual Property Law Association as Amicus Curiae 13–18; Brief for Private Label Manufacturers Association as Amicus Curiae 16–17; Brief for Society of Permanent
Cosmetic Professionals et al. as Amici Curiae 8–11. Since we do not rule out the
pertinence of the degree of consumer confusion under the fair use
defense, we likewise do not pass upon the position of the United
States, as amicus , that the “used fairly” requirement in
§ 1115(b)(4) demands only that the descriptive term describe
the goods accurately. Tr. of Oral Arg. 17. Accuracy of course has
to be a consideration in assessing fair use, but the proceedings in
this case so far raise no occasion to evaluate some other concerns
that courts might pick as relevant, quite apart from attention to
confusion. The Restatement raises possibilities like commercial
justification and the strength of the plaintiff’s mark. Restatement
§28. As to them, it is enough to say here that the door is not
closed. III In sum, a plaintiff
claiming infringement of an incontestable mark must show likelihood
of consumer confusion as part of the prima facie case, 15 U.
S. C. §1115(b), while the defendant has no independent burden
to negate the likelihood of any confusion in raising the
affirmative defense that a term is used descriptively, not as a
mark, fairly, and in good faith, §1115(b)(4). Because we read the
Court of Appeals as requiring KP to shoulder a burden on the issue
of confusion, we vacate the judgment and remand the case for
further proceedings consistent with this opinion.[ Footnote 6 ] It is so ordered. * Justice Scalia joins all but
footnotes 4 and 5 of this opinion. Justice Breyer joins all but
footnote 6. Footnote 1 We note that in its brief to the
Court of Appeals, Lasting appears to have conceded KP’s use of
“microcolor” in the early 1990’s. Appellants’ Opening Brief in No.
01–56055 (CA9), p. 8. Footnote 2 A trademark may be “any word,
name, symbol, or device, or any combination thereof … used by a
person … to identify and distinguish his or her goods … from those
manufactured and sold by others and to indicate the source of the
goods, even if that source is unknown.” 15 U. S. C.
§1127. Footnote 3 We summarize the proceedings in
this litigation only as they are relevant to the question before
us. The District Court’s findings as to the generic or descriptive
nature of the term “micro color” and any secondary meaning that
term has acquired by any of the parties, see SA CV 00–276–GLT (EEx)
(CD Cal. May 16, 2001), pp. 3–5, 5–8, are not before us. Nor
are the Court of Appeals’s holdings on these issues. See 328
F. 3d 1061, 1068–1071 (CA9 2003). Nor do we address the Court
of Appeals’s discussion of “nominative fair use.” Id. , at
1071–1072. Footnote 4 Not only that, but the failure to
say anything about a defendant’s burden on this point was almost
certainly not an oversight, not after the House Subcommittee on
Trademarks declined to forward a proposal to provide expressly as
an element of the defense that a descriptive use be
“ ‘[un]likely to deceive the public.’ ” Hearings on
H. R. 102 et al . before the Subcommittee on
Trade-Marks of the House Committee on Patents, 77th Cong., 1st
Sess., 167–168 (1941) (hereinafter Hearings) (testimony of Prof.
Milton Handler). Footnote 5 See also Hearings 72 (testimony
of Wallace Martin, Chairman, American Bar Association Committee on
Trade-Mark Legislation) (“Everybody has got a right to the use of
the English language and has got a right to assume that nobody is
going to take that English language away from him”). Footnote 6 The record indicates that on
remand the courts should direct their attention in particular to
certain factual issues bearing on the fair use defense, properly
applied. The District Court said that Lasting’s motion for summary
adjudication conceded that KP used “microcolor” descriptively and
not as a mark. SA CV 00–276–GLT (EEx) at 8, App. to Pet. for Cert.
29a. We think it is arguable that Lasting made those concessions
only as to KP’s use of “microcolor” on bottles and flyers in the
early 1990s, not as to the stylized version of “microcolor” that
appeared in KP’s 1999 brochure. See Opposition to Motion for
Summary Judgment in SA CV 00–276–GLT (EEx) (CD Cal.),
pp. 18–19; Appellants’ Opening Brief in No. 01–56055 (CA9),
pp. 31–2. We also note that the fair use analysis of KP’s
employment of the stylized version of “microcolor” on its brochure
may differ from that of its use of the term on the bottles and
flyers.

Summary:
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. (2004):

The Supreme Court held that a party raising the affirmative defense of fair use in a trademark infringement case does not have the burden to prove that their use of the mark is unlikely to confuse consumers about the origin of the goods or services. The Court determined that the likelihood of confusion is not an element of the fair use defense but rather a factor to be considered in the analysis. The case was remanded for further consideration of the fair use defense, with specific attention to the factual issues bearing on KP's use of the term "microcolor" in its advertising and packaging.


NOTICE: This opinion is subject to
formal revision before publication in the preliminary print of the
United States Reports. Readers are requested to notify the Reporter
of Decisions, Supreme Court of the United States, Washington,
D. C. 20543, of any typographical or other formal errors, in
order that corrections may be made before the preliminary print
goes to press.

															SUPREME COURT OF THE UNITED STATES

															_________________

															No. 18–1233

															_________________

															ROMAG FASTENERS, INC., PETITIONER v. FOSSIL, INC., et al.

															on writ of certiorari to the united states
court of appeals for the federal circuit

															[April 23, 2020]

															Justice Gorsuch delivered the opinion of the
Court.

															When it comes to remedies for trademark
infringement, the Lanham Act authorizes many. A district court may
award a winning plaintiff injunctive relief, damages, or the
defendant’s ill-gotten profits. Without question, a defendant’s
state of mind may have a bearing on what relief a plaintiff should
receive. An innocent trademark violator often stands in very
different shoes than an intentional one. But some circuits have
gone further. These courts hold a plaintiff can win a profits
remedy, in particular, only after showing the defendant willfully infringed its trademark. The question before us is
whether that categorical rule can be reconciled with the statute’s
plain language.

															The question comes to us in a case involving
handbag fasteners. Romag sells magnetic snap fasteners for use in
leather goods. Fossil designs, markets, and distributes a wide
range of fashion accessories. Years ago, the pair signed an
agreement allowing Fossil to use Romag’s fasteners in Fossil’s
handbags and other products. Initially, both sides seemed content
with the arrangement. But in time Romag discovered that the
factories Fossil hired in China to make its products were using
counterfeit Romag fasteners—and that Fossil was doing little to
guard against the practice. Unable to resolve its concerns
amicably, Romag sued. The company alleged that Fossil had infringed
its trademark and falsely represented that its fasteners came from
Romag. After trial, a jury agreed with Romag, and found that Fossil
had acted “in callous disregard” of Romag’s rights. At the same
time, however, the jury rejected Romag’s accusation that Fossil had
acted willfully, as that term was defined by the district
court.

															For our purposes, the last finding is the
important one. By way of relief for Fossil’s trademark violation,
Romag sought (among other things) an order requiring Fossil to hand
over the profits it had earned thanks to its trademark violation.
But the district court refused this request. The court pointed out
that controlling Second Circuit precedent requires a plaintiff
seeking a profits award to prove that the defendant’s violation was
willful. Not all circuits, however, agree with the Second Circuit’s
rule. We took this case to resolve that dispute over the law’s
demands. 588 U. S. ___ (2019).

															Where does Fossil’s proposed willfulness rule
come from? The relevant section of the Lanham Act governing
remedies for trademark violations, §35, 60Stat. 439–440, as
amended, 15 U. S. C. §1117(a), says this:

															“When a violation of any right of the
registrant of a mark registered in the Patent and Trademark Office,
a violation under section 1125(a) or (d) of this title, or a
willful violation under section 1125(c) of this title, shall have
been established . . . , the plaintiff shall be entitled,
subject to the provisions of sections 1111 and 1114 of this title,
and subject to the principles of equity, to recover (1) defendant’s
profits, (2) any damages sustained by the plaintiff, and (3) the
costs of the action.”

															Immediately, this language spells trouble for
Fossil and the circuit precedent on which it relies. The statute
does make a showing of willfulness a precondition to a profits
award when the plaintiff proceeds under §1125(c). That section,
added to the Lanham Act some years after its initial adoption,
creates a cause of action for trademark dilution—conduct that
lessens the association consumers have with a trademark. But Romag
alleged and proved a violation of §1125(a), a provision
establishing a cause of action for the false or misleading use of
trademarks. And in cases like that, the statutory language has never required a showing of willfulness to win a defendant’s
profits. Yes, the law tells us that a profits award is subject to
limitations found in §§1111 and 1114. But no one suggests those
cross-referenced sections contain the rule Fossil seeks. Nor does
this Court usually read into statutes words that aren’t there. It’s
a temptation we are doubly careful to avoid when Congress has (as
here) included the term in question elsewhere in the very same
statutory provision.

															A wider look at the statute’s structure gives us
even more reason for pause. The Lanham Act speaks often and
expressly about mental states. Section 1117(b) requires courts to
treble profits or damages and award attorney’s fees when a
defendant engages in certain acts intentionally and with
specified knowledge . Section 1117(c) increases the cap on
statutory damages from $200,000 to $2,000,000 for certain willful violations. Section 1118 permits courts to order the
infringing items be destroyed if a plaintiff proves any violation
of §1125(a) or a willful violation of §1125(c). Section 1114
makes certain innocent infringers subject only to
injunctions. Elsewhere, the statute specifies certain mens
rea standards needed to establish liability, before even
getting to the question of remedies. See, e.g., §§1125(d)(1)(A)(i), (B)(i) (prohibiting certain conduct only if
undertaken with “bad faith intent” and listing nine factors
relevant to ascertaining bad faith intent). Without doubt, the
Lanham Act exhibits considerable care with mens rea standards. The absence of any such standard in the provision before
us, thus, seems all the more telling.

															So how exactly does Fossil seek to conjure a
willfulness requirement out of §1117(a)? Lacking any more obvious
statutory hook, the company points to the language indicating that
a violation under §1125(a) can trigger an award of the defendant’s
profits “subject to the principles of equity.” In Fossil’s telling,
equity courts historically required a showing of willfulness before
authorizing a profits remedy in trademark disputes. Admittedly,
equity courts didn’t require so much in patent infringement cases
and other arguably analogous suits. See, e.g., Dowagiac Mfg.
Co. v. Minnesota Moline Plow Co. , 235 U.S.
641 , 644, 650–651 (1915). But, Fossil says, trademark is
different. There alone, a willfulness requirement was so long and
universally recognized that today it rises to the level of a
“principle of equity” the Lanham Act carries forward.

															It’s a curious suggestion. Fossil’s contention
that the term “principles of equity” includes a willfulness
requirement would not directly contradict the statute’s other,
express mens rea provisions or render them wholly
superfluous. But it would require us to assume that Congress
intended to incorporate a willfulness requirement here obliquely
while it prescribed mens rea conditions expressly elsewhere
throughout the Lanham Act. That might be possible, but on first
blush it isn’t exactly an obvious construction of the statute.

															Nor do matters improve with a second look. The
phrase “principles of equity” doesn’t readily bring to mind a
substantive rule about mens rea from a discrete domain like
trademark law. In the context of this statute, it more naturally
suggests fundamental rules that apply more systematically across
claims and practice areas. A principle is a “fundamental truth or
doctrine, as of law; a comprehensive rule or doctrine which
furnishes a basis or origin for others.” Black’s Law Dictionary
1417 (3d ed. 1933); Black’s Law Dictionary 1357 (4th ed. 1951). And
treatises and handbooks on the “principles of equity” generally
contain transsubstantive guidance on broad and fundamental
questions about matters like parties, modes of proof, defenses, and
remedies. See, e.g. , E. Merwin, Principles of Equity and
Equity Pleading (1895); J. Indermaur & C. Thwaites, Manual of
the Principles of Equity (7th ed. 1913); H. Smith, Practical
Exposition of the Principles of Equity (5th ed. 1914); R. Megarry,
Snell’s Principles of Equity (23d ed. 1947). Our precedent, too,
has used the term “principles of equity” to refer to just such
transsubstantive topics. See, e.g., eBay Inc. v. MercExchange, L. L. C. , 547 U.S.
388 , 391, 393 (2006); Holmberg v. Armbrecht , 327 U.S.
392 , 395 (1946). Congress itself has elsewhere used “equitable
principles” in just this way: An amendment to a different section
of the Lanham Act lists “laches, estoppel, and acquiescence” as
examples of “equitable principles.” 15 U. S. C. §1069.
Given all this, it seems a little unlikely Congress meant
“principles of equity” to direct us to a narrow rule about a
profits remedy within trademark law.

															But even if we were to spot Fossil that first
essential premise of its argument, the next has problems too. From
the record the parties have put before us, it’s far from clear
whether trademark law historically required a showing of
willfulness before allowing a profits remedy. The Trademark Act of
1905—the Lanham Act’s statutory predecessor which many earlier
cases interpreted and applied—did not mention such a requirement.
It’s true, as Fossil notes, that some courts proceeding before the
1905 Act, and even some later cases following that Act, did treat
willfulness or something like it as a prerequisite for a profits
award and rarely authorized profits for purely good-faith
infringement. See, e.g., Horlick’s Malted Milk Corp. v. Horluck’s, Inc. , 51 F.2d 357, 359 (WD Wash. 1931)
(explaining that the plaintiff “cannot recover defendant’s profits
unless it has been shown beyond a reasonable doubt that defendant
was guilty of willful fraud in the use of the enjoined
trade-name”); see also Saxlehner v. Siegel-Cooper
Co. , 179 U.S.
42 , 42–43 (1900) (holding that one defendant “should not be
required to account for gains and profits” when it “appear[ed] to
have acted in good faith”). But Romag cites other cases that
expressly rejected any such rule. See, e.g., Oakes v. Tonsmierre , 49 F. 447, 453 (CC SD Ala. 1883); see also Stonebraker v. Stonebraker , 33 Md. 252, 268 (1870); Lawrence-Williams Co. v. Societe Enfants Gombault et
Cie , 52 F.2d 774, 778 (CA6 1931).

															The confusion doesn’t end there. Other
authorities advanced still different understandings about the
relationship between mens rea and profits awards in
trademark cases. See, e.g., H. Nims, Law of Unfair
Competition and Trade-Marks §424 (2d ed. 1917) (“An accounting will
not be ordered where the infringing party acted innocently and in
ignorance of the plaintiff’s rights”); N. Hesseltine, Digest of the
Law of Trade-Marks and Unfair Trade 305 (1906) (contrasting a case
holding “[n]o account as to profits allowed except as to user after knowledge of plaintiff’s right to trademark” and one
permitting profits “although defendant did not know of
infringement” (emphasis added)). And the vast majority of the cases
both Romag and Fossil cite simply failed to speak clearly to the
issue one way or another. See, e.g., Hostetter v. Vowinkle , 12 F. Cas. 546, 547 (No. 6,714) (CC Neb. 1871); Graham v. Plate , 40 Cal. 593, 597–599 (1871); Hemmeter Cigar Co. v. Congress Cigar Co ., 118 F.2d
64, 71–72 (CA6 1941).

															At the end of it all, the most we can say with
certainty is this. Mens rea figured as an important
consideration in awarding profits in pre-Lanham Act cases. This
reflects the ordinary, transsubstantive principle that a
defendant’s mental state is relevant to assigning an appropriate
remedy. That principle arises not only in equity, but across many
legal contexts. See, e.g., Smith v. Wade , 461 U.S.
30 , 38–51 (1983) ( 42 U. S. C. §1983); Morissette v. United States , 342
U.S. 246 , 250–263 (1952) (criminal law); Wooden-Ware Co. v. United States , 106 U.S.
432 , 434–435 (1882) (common law trespass). It’s a principle
reflected in the Lanham Act’s text, too, which permits greater
statutory damages for certain willful violations than for other
violations. 15 U. S. C. §1117(c). And it is a principle
long reflected in equity practice where district courts have often
considered a defendant’s mental state, among other factors, when
exercising their discretion in choosing a fitting remedy. See, e.g., L. P. Larson, Jr., Co. v. Wm. Wrigley, Jr.,
Co. , 277 U.S.
97 , 99–100 (1928); Lander v. Lujan , 888 F.2d 153,
155–156 (CADC 1989); United States v. Klimek , 952 F. Supp. 1100 , 1117 (ED Pa. 1997). Given these traditional
principles, we do not doubt that a trademark defendant’s mental
state is a highly important consideration in determining whether an
award of profits is appropriate. But acknowledging that much is a
far cry from insisting on the inflexible precondition to recovery
Fossil advances.

															With little to work with in the statute’s
language, structure, and history, Fossil ultimately rests on an
appeal to policy. The company tells us that stouter restraints on
profits awards are needed to deter “baseless” trademark suits.
Meanwhile, Romag insists that its reading of the statute will
promote greater respect for trademarks in the “modern global
economy.” As these things go, amici amplify both sides’
policy arguments. Maybe, too, each side has a point. But the place
for reconciling competing and incommensurable policy goals like
these is before policymakers. This Court’s limited role is to read
and apply the law those policymakers have ordained, and here our
task is clear. The judgment of the court of appeals is vacated, and
the case is remanded for further proceedings consistent with this
opinion.

															It is so ordered. SUPREME COURT OF THE UNITED STATES

															_________________

															No. 18–1233

															_________________

															ROMAG FASTENERS, INC., PETITIONER v. FOSSIL, INC., et al.

															on writ of certiorari to the united states
court of appeals for the federal circuit

															[April 23, 2020]

															Justice Alito, with whom Justice Breyer and
Justice Kagan join, concurring.

															We took this case to decide whether willful
infringement is a prerequisite to an award of profits under 15
U. S. C. §1117(a). The decision below held that
willfulness is such a prerequisite. App. to Pet. for Cert. 32a.
That is incorrect. The relevant authorities, particularly
pre-Lanham Act case law, show that willfulness is a highly
important consideration in awarding profits under §1117(a), but not
an absolute precondition. I would so hold and concur on that
ground. SUPREME COURT OF THE UNITED STATES

															_________________

															No. 18–1233

															_________________

															ROMAG FASTENERS, INC., PETITIONER v. FOSSIL, INC., et al.

															on writ of certiorari to the united states
court of appeals for the federal circuit

															[April 23, 2020]

															Justice Sotomayor, concurring in the
judgment.

															I agree that 15 U. S. C. §1117(a) does
not impose a “willfulness” prerequisite for awarding profits in
trademark infringement actions. Courts of equity, however, defined
“willfulness” to encompass a range of culpable mental
states—including the equivalent of recklessness, but excluding
“good faith” or negligence. See 5 McCarthy on Trademarks and Unfair
Competition §30:62 (5th ed. 2019) (explaining that “willfulness”
ranged from fraudulent and knowing to reckless and indifferent
behavior); see also, e.g., Lawrence-Williams Co. v. Societe Enfants Gombault et Cie , 52 F.2d 774, 778 (CA6
1931); Regis v. Jaynes , 191 Mass. 245, 248–249, 77
N.E. 774, 776 (1906).

															The majority suggests that courts of equity were
just as likely to award profits for such “willful” infringement as
they were for “innocent” infringement. Ante , at 5–6. But
that does not reflect the weight of authority, which indicates that
profits were hardly, if ever, awarded for innocent infringement.
See, e.g., Wood v. Peffer , 55 Cal. App. 2d 116 , 125 (1942) (explaining that “equity
constantly refuses, for want of fraudulent intent, the prayer for
an accounting of profits”); Globe-Wernicke Co. v. Safe-Cabinet Co. , 110 Ohio St. 609, 617, 144 N.E. 711, 713
(1924) (“By the great weight of authority, particularly where the
infringement . . . was deliberate and willful, it is held
that the wrongdoer is required to account for all profits realized
by him as a result of his wrongful acts”); Dickey v. Mutual Film Corp. , 186 App. Div. 701, 702, 174 N.Y.S. 784
(1919) (declining to award profits because there was “no proof of
any fraudulent intent upon the part of the defendant”); Standard
Cigar Co. v. Goldsmith , 58 Pa. Super. 33, 37 (1914)
(reasoning that a defendant “should be compelled to account for
. . . profits” where “the infringement complained of was
not the result of mistake or ignorance of the plaintiff ’s
right”). Nor would doing so seem to be consistent with longstanding
equitable principles which, after all, seek to deprive only
wrongdoers of their gains from misconduct. Cf. Duplate Corp. v. Triplex Safety Glass Co. , 298 U.S.
448 , 456–457 (1936). Thus, a district court’s award of profits
for innocent or good-faith trademark infringement would not be
consonant with the “principles of equity” referenced in §1117(a)
and reflected in the cases the majority cites. Ante at
6–7.

															Because the majority is agnostic about awarding
profits for both “willful” and innocent infringement as those terms
have been understood, I concur in the judgment only.

Summary: The Supreme Court ruled that a plaintiff in a trademark infringement case does not need to prove that the defendant willfully infringed on their trademark to be awarded profits as a remedy. However, Justice Sotomayor emphasized that courts of equity would rarely, if ever, award profits for innocent or good-faith trademark infringement, and that a defendant's state of mind should still be considered when determining the appropriate relief.


OCTOBER TERM, 2000

															Syllabus

															TRAFFIX DEVICES, INC. v. MARKETING DISPLAYS, INC.

															CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SIXTH
CIRCUIT

															No.99-1571. Argued November 29, 2000-Decided March 20, 2001

															Respondent, Marketing Displays, Inc. (MDI), holds now-expired
utility patents for a "dual-spring design" mechanism that keeps
temporary road and other outdoor signs upright in adverse wind
conditions. MDI claims that its sign stands were recognizable to
buyers and users because the patented design was visible near the
sign stand's base. After the patents expired and petitioner TrafFix
Devices, Inc., began marketing sign stands with a dual-spring
mechanism copied from MDI's design, MDI brought suit under the
Trademark Act of 1946 for, inter alia, trade dress
infringement. The District Court granted TrafFix's motion for
summary judgment, holding that no reasonable trier of fact could
determine that MDI had established secondary meaning in its alleged
trade dress, i. e., consumers did not associate the
dual-spring design's look with MDI; and, as an independent reason,
that there could be no trade dress protection for the design
because it was functional. The Sixth Circuit reversed. Among other
things, it suggested that the District Court committed legal error
by looking only to the dual-spring design when evaluating MDI's
trade dress because a competitor had to find some way to hide the
design or otherwise set it apart from MDI's; explained, relying on Qualitex Co. v. Jacobson Products Co., 514 U. S. 159 , 165, that
exclusive use of a feature must put competitors at a significant
non-reputation-related disadvantage before trade dress protection
is denied on functionality grounds; and noted a split among the
Circuits on the issue whether an expired utility patent forecloses
the possibility of trade dress protection in the product's
design. Held: Because MDI's dual-spring design is a functional
feature for which there is no trade dress protection, MDI's claim
is barred. Pp. 28-35.

															(a) Trade dress can be protected under federal law, but the
person asserting such protection in an infringement action must
prove that the matter sought to be protected is not functional, 15
U. S. C. § 1125(a)(3). Trade dress protection must subsist with the
recognition that in many instances there is no prohibition against
copying goods and products. An expired utility patent has vital
significance in resolving a trade dress claim, for a utility patent
is strong evidence that the features therein claimed are
functional. The central advance claimed in the expired util- 24 24 TRAFFIX DEVICES, INC. v. MARKETING DISPLAYS, INC.

															Syllabus

															ity patents here is the dual-spring design, which is an
essential feature of the trade dress MDI now seeks to protect.
However, MDI did not, and cannot, carry the burden of overcoming
the strong evidentiary inference of functionality based on the
disclosure of the dual-spring design in the claims of the expired
patents. The springs are necessary to the device's operation, and
they would have been covered by the claims of the expired patents
even though they look different from the embodiment revealed in
those patents, see Sarkisian v. Winn-Proof Corp., 697 F. 2d 1313. The rationale for the rule that the disclosure of a
feature in a utility patent's claims constitutes strong evidence of
functionality is well illustrated in this case. The design serves
the important purpose of keeping the sign upright in heavy wind
conditions, and statements in the expired patent applications
indicate that it does so in a unique and useful manner and at a
cost advantage over alternative designs. Pp.28-32.

															(b) In reversing the summary judgment against MDI, the Sixth
Circuit gave insufficient weight to the importance of the expired
utility patents, and their evidentiary significance, in
establishing the device's functionality. The error was likely
caused by its misinterpretation of trade dress principles in other
respects. "'In general terms a product feature is functional,' and
cannot serve as a trademark, 'if it is essential to the use or
purpose of the article or if it affects the cost or quality of the
article.''' Qualitex, supra, at 165 (quoting Inwood
Laboratories, Inc. v. Ives Laboratories, Inc., 456 U. S. 844 , 850, n.
10). This Court has expanded on that meaning, observing that a
functional feature is one "the exclusive use of [which] would put
competitors at a significant non-reputation-related disadvantage," Qualitex, supra, at 165, but that language does not mean
that competitive necessity is a necessary test for functionality.
Where the design is functional under the Inwood formulation
there is no need to proceed further to consider competitive
necessity. This Court has allowed trade dress protection to
inherently distinctive product features on the assumption that they
were not functional. Two Pesos, Inc. v. Taco Cabana,
Inc., 505 U. S.
763 , 774. Here, however, beyond serving the purpose of
informing consumers that the sign stands are made by MDI, the
design provides a unique and useful mechanism to resist the wind's
force. Functionality having been established, whether the design
has acquired secondary meaning need not be considered. Nor is it
necessary to speculate about other design possibilities. Finally,
this Court need not resolve here the question whether the Patent
Clause of the Constitution, of its own force, prohibits the holder
of an expired utility patent from claiming trade dress protection.
Pp. 32-35. 200 F.3d
929 , reversed and remanded. 25 KENNEDY, J., delivered the opinion for a unanimous Court. John G. Roberts, Jr., argued the cause for
petitioner.

															With him on the briefs were Gregory G. Garre and JeanneMarie
Marshall.

															Deputy Solicitor General Wallace argued the cause for the United
States as amicus curiae urging reversal. With him on the brief were
Solicitor General Waxman, Assistant Attorney General Ogden, Jeffrey
A. Lamken, Anthony J. Steinmeyer, and Mark S. Davies. John A. Artz argued the cause for respondent. With him on
the brief were John S. Artz, Robert P. Renke, and Lisa A. Sarkisian. *

															JUSTICE KENNEDY delivered the opinion of the Court. Temporary
road signs with warnings like "Road Work Ahead" or "Left Shoulder
Closed" must withstand strong gusts of wind. An inventor named
Robert Sarkisian obtained two utility patents for a mechanism built
upon two springs (the dual-spring design) to keep these and other
outdoor signs upright despite adverse wind conditions. The holder
of the now-expired Sarkisian patents, respondent Marketing
Displays, Inc. (MDI), established a successful business in the
manufacture and sale of sign stands incorporating the patented
feature. MDI's stands for road signs were recognizable to buyers
and users (it says) because the dual-spring design was visible near
the base of the sign.

															*Briefs of amici curiae urging reversal were filed for the
Holmes Group, Inc., by James W Dabney; for Panduit Corp. by Roy E.
Hofer, Jerome Gilson, Cynthia A. Homan, and Philip A. Jones; and
for Malla Pollack, pro se.

															Briefs of amici curiae urging affirmance were filed for
the American Intellectual Property Association by Louis T.
Pirkey; and for Thomas & Betts Corp. by Sidney David and Roy H. Wepner. Theodore H. Davis, Jr., Marie V. Driscoll, and Helen Hill
Minsker filed a brief for the International Trademark Association
as amicus curiae. 26 26 TRAFFIX DEVICES, INC. v. MARKETING DISPLAYS, INC.

															This litigation followed after the patents expired and a
competitor, TrafFix Devices, Inc., sold sign stands with a visible
spring mechanism that looked like MDI's. MDI and TrafFix products
looked alike because they were. When TrafFix started in business,
it sent an MDI product abroad to have it reverse engineered, that
is to say copied. Complicating matters, TrafFix marketed its sign
stands under a name similar to MDI's. MDI used the name
"WindMaster," while TrafFix, its new competitor, used
"WindBuster."

															MDI brought suit under the Trademark Act of 1946 (Lanham Act),
60 Stat. 427, as amended, 15 U. S. C. § 1051 et seq., against TrafFix for trademark infringement (based on the similar
names), trade dress infringement (based on the copied dual-spring
design), and unfair competition. TrafFix counterclaimed on
antitrust theories. After the United States District Court for the
Eastern District of Michigan considered cross-motions for summary
judgment, MDI prevailed on its trademark claim for the confusing
similarity of names and was held not liable on the antitrust
counterclaim; and those two rulings, affirmed by the Court of
Appeals, are not before us.

															I

															We are concerned with the trade dress question. The District
Court ruled against MDI on its trade dress claim. 971 F. Supp. 262
(ED Mich. 1997). After determining that the one element of MDI's
trade dress at issue was the dualspring design, id., at 265, it
held that "no reasonable trier of fact could determine that MDI has
established secondary meaning" in its alleged trade dress, id., at
269. In other words, consumers did not associate the look of the
dualspring design with MDI. As a second, independent reason to
grant summary judgment in favor of TrafFix, the District Court
determined the dual-spring design was functional. On this rationale
secondary meaning is irrelevant because there can be no trade dress
protection in any event. In ruling on the functional aspect of the
design, the District Court 27 noted that Sixth Circuit precedent indicated that the burden was
on MDI to prove that its trade dress was nonfunctional, and not on
TrafFix to show that it was functional (a rule since adopted by
Congress, see 15 U. S. C. § 1125(a)(3) (1994 ed., Supp. V)), and
then went on to consider MDI's arguments that the dual-spring
design was subject to trade dress protection. Finding none of MDI's
contentions persuasive, the District Court concluded MDI had not
"proffered sufficient evidence which would enable a reasonable
trier of fact to find that MDI's vertical dual-spring design is
nonfunctional." 971 F. Supp., at 276. Summary judgment was entered
against MDI on its trade dress claims.

															The Court of Appeals for the Sixth Circuit reversed the trade
dress ruling. 200 F.3d
929 (1999). The Court of Appeals held the District Court had
erred in ruling MDI failed to show a genuine issue of material fact
regarding whether it had secondary meaning in its alleged trade
dress, id., at 938, and had erred further in determining that MDI
could not prevail in any event because the alleged trade dress was
in fact a functional product configuration, id., at 940. The Court
of Appeals suggested the District Court committed legal error by
looking only to the dual-spring design when evaluating MDI's trade
dress. Basic to its reasoning was the Court of Appeals' observation
that it took "little imagination to conceive of a hidden
dual-spring mechanism or a tri or quad-spring mechanism that might
avoid infringing [MDI's] trade dress." Ibid. The Court of
Appeals explained that "[i]f TrafFix or another competitor chooses
to use [MDI's] dual-spring design, then it will have to find some other way to set its sign apart to avoid infringing
[MDI's] trade dress." Ibid. It was not sufficient, according
to the Court of Appeals, that allowing exclusive use of a
particular feature such as the dual-spring design in the guise of
trade dress would "hinde[r] competition somewhat." Rather,
"[e]xclusive use of a feature must 'put competitors at a sig nificant non-reputation-related disadvantage' before
trade 28 28 TRAFFIX DEVICES, INC. v. MARKETING DISPLAYS, INC.

															dress protection is denied on functionality grounds." Ibid. (quoting Qualitex Co. v. Jacobson Products
Co., 514 U. S.
159 , 165 (1995)). In its criticism of the District Court's
ruling on the trade dress question, the Court of Appeals took note
of a split among Courts of Appeals in various other Circuits on the
issue whether the existence of an expired utility patent forecloses
the possibility of the patentee's claiming trade dress protection
in the product's design. 200 F. 3d, at 939. Compare Sunbeam
Products, Inc. v. West Bend Co., 123
F.3d 246 (CA5 1997) (holding that trade dress protection is not
foreclosed), Thomas & Betts Corp. v. Panduit
Corp., 138 F. 3d 277 (CA7 1998) (same), and Midwest
Industries, Inc. v. Karavan Trailers, Inc., 175 F.3d
1356 (CA Fed 1999) (same), with Vornado Air
Circulation Systems, Inc. v. Duracraft Corp., 58 F.3d
1498 , 1500 (CAlO 1995) ("Where a product configuration is a
significant inventive component of an invention covered by a
utility patent ... it cannot receive trade dress protection"). To
resolve the conflict, we granted certiorari. 530 U. S. 1260
(2000).

															II

															It is well established that trade dress can be protected under
federal law. The design or packaging of a product may acquire a
distinctiveness which serves to identify the product with its
manufacturer or source; and a design or package which acquires this
secondary meaning, assuming other requisites are met, is a trade
dress which may not be used in a manner likely to cause confusion
as to the origin, sponsorship, or approval of the goods. In these
respects protection for trade dress exists to promote competition.
As we explained just last Term, see Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U. S. 205 (2000),
various Courts of Appeals have allowed claims of trade dress
infringement relying on the general provision of the Lanham Act
which provides a cause of action to one who is injured when a
person uses "any word, term name, symbol, or device, or any 29 combination thereof ... which is likely to cause confusion ...
as to the origin, sponsorship, or approval of his or her goods." 15
U. s. C. § 1125(a)(1)(A). Congress confirmed this statutory
protection for trade dress by amending the Lanham Act to recognize
the concept. Title 15 U. s. C. § 1125(a)(3) (1994 ed., Supp. V)
provides: "In a civil action for trade dress infringement under
this chapter for trade dress not registered on the principal
register, the person who asserts trade dress protection has the
burden of proving that the matter sought to be protected is not
functional." This burden of proof gives force to the
well-established rule that trade dress protection may not be
claimed for product features that are functional. Qualitex,
supra, at 164-165; Two Pesos, Inc. v. Taco Cabana,
Inc., 505 U. S.
763 , 775 (1992). And in Wal-Mart, supra, we were careful
to caution against misuse or overextension of trade dress. We noted
that "product design almost invariably serves purposes other than
source identification." Id., at 213.

															Trade dress protection must subsist with the recognition that in
many instances there is no prohibition against copying goods and
products. In general, unless an intellectual property right such as
a patent or copyright protects an item, it will be subject to
copying. As the Court has explained, copying is not always
discouraged or disfavored by the laws which preserve our
competitive economy. Bonito Boats, Inc. v. Thunder Craft
Boats, Inc., 489
U. S. 141 , 160 (1989). Allowing competitors to copy will have
salutary effects in many instances. "Reverse engineering of
chemical and mechanical articles in the public domain often leads
to significant advances in technology." Ibid. The principal question in this case is the effect of an expired
patent on a claim of trade dress infringement. A prior patent, we
conclude, has vital significance in resolving the trade dress
claim. A utility patent is strong evidence that the features
therein claimed are functional. If trade dress protection is sought
for those features the strong evidence 30 30 TRAFFIX DEVICES, INC. v. MARKETING DISPLAYS, INC.

															of functionality based on the previous patent adds great weight
to the statutory presumption that features are deemed functional
until proved otherwise by the party seeking trade dress protection.
Where the expired patent claimed the features in question, one who
seeks to establish trade dress protection must carry the heavy
burden of showing that the feature is not functional, for instance
by showing that it is merely an ornamental, incidental, or
arbitrary aspect of the device.

															In the case before us, the central advance claimed in the
expired utility patents (the Sarkisian patents) is the dualspring
design; and the dual-spring design is the essential feature of the
trade dress MD I now seeks to establish and to protect. The rule we
have explained bars the trade dress claim, for MD I did not, and
cannot, carry the burden of overcoming the strong evidentiary
inference of functionality based on the disclosure of the
dual-spring design in the claims of the expired patents.

															The dual springs shown in the Sarkisian patents were well apart
(at either end of a frame for holding a rectangular sign when one
full side is the base) while the dual springs at issue here are
close together (in a frame designed to hold a sign by one of its
corners). As the District Court recognized, this makes little
difference. The point is that the springs are necessary to the
operation of the device. The fact that the springs in this very
different-looking device fall within the claims of the patents is
illustrated by MDI's own position in earlier litigation. In the
late 1970's, MDI engaged in a long-running intellectual property
battle with a company known as Winn-Proof. Although the precise
claims of the Sarkisian patents cover sign stands with springs
"spaced apart," U. S. Patent No. 3,646,696, col. 4; U. S. Patent
No. 3,662,482, col. 4, the Winn-Proof sign stands (with springs
much like the sign stands at issue here) were found to infringe the
patents by the United States District Court for the District of
Oregon, and the Court of Appeals for the 31 Ninth Circuit affirmed the judgment. Sarkisian v. WinnProof Corp., 697 F.2d
1313 (1983). Although the WinnProof traffic sign stand (with
dual springs close together) did not appear, then, to infringe the
literal terms of the patent claims (which called for "spaced apart"
springs), the WinnProof sign stand was found to infringe the
patents under the doctrine of equivalents, which allows a finding
of patent infringement even when the accused product does not fall
within the literal terms of the claims. Id., at 1321-1322;
see generally Warner-Jenkinson Co. v. Hilton Davis
Chemical Co., 520
U. S. 17 (1997). In light of this past ruling-a ruling procured
at MDI's own insistence-it must be concluded the products here at
issue would have been covered by the claims of the expired
patents.

															The rationale for the rule that the disclosure of a feature in
the claims of a utility patent constitutes strong evidence of
functionality is well illustrated in this case. The dual-spring
design serves the important purpose of keeping the sign upright
even in heavy wind conditions; and, as confirmed by the statements
in the expired patents, it does so in a unique and useful manner.
As the specification of one of the patents recites, prior art
"devices, in practice, will topple under the force of a strong
wind." U. S. Patent No. 3,662,482, col. 1. The dual-spring design
allows sign stands to resist toppling in strong winds. U sing a
dual-spring design rather than a single spring achieves important
operational advantages. For example, the specifications of the
patents note that the "use of a pair of springs ... as opposed to
the use of a single spring to support the frame structure prevents
canting or twisting of the sign around a vertical axis," and that,
if not prevented, twisting "may cause damage to the spring
structure and may result in tipping of the device." U. S. Patent
No. 3,646,696, col. 3. In the course of patent prosecution, it was
said that "[t]he use of a pair of spring connections as opposed to
a single spring connection ... forms an important part of this
combination" because it 32 32 TRAFFIX DEVICES, INC. v. MARKETING DISPLAYS, INC.

															"forc[es] the sign frame to tip along the longitudinal axis of
the elongated ground-engaging members." App. 218. The dual-spring
design affects the cost of the device as well; it was acknowledged
that the device "could use three springs but this would
unnecessarily increase the cost of the device." Id., at 217.
These statements made in the patent applications and in the course
of procuring the patents demonstrate the functionality of the
design. MDI does not assert that any of these representations are
mistaken or inaccurate, and this is further strong evidence of the
functionality of the dual-spring design.

															III

															In finding for MDI on the trade dress issue the Court of Appeals
gave insufficient recognition to the importance of the expired
utility patents, and their evidentiary significance, in
establishing the functionality of the device. The error likely was
caused by its misinterpretation of trade dress principles in other
respects. As we have noted, even if there has been no previous
utility patent the party asserting trade dress has the burden to
establish the nonfunctionality of alleged trade dress features. MDI
could not meet this burden. Discussing trademarks, we have said"
'[i]n general terms, a product feature is functional,' and cannot
serve as a trademark, 'if it is essential to the use or purpose of
the article or if it affects the cost or quality of the article.''' Qualitex, 514 U. S., at 165 (quoting Inwood Laboratories,
Inc. v. Ives Laboratories, Inc., 456 U. S. 844 , 850, n. 10
(1982)). Expanding upon the meaning of this phrase, we have
observed that a functional feature is one the "exclusive use of
[which] would put competitors at a significant
nonreputation-related disadvantage." 514 U. S., at 165. The Court
of Appeals in the instant case seemed to interpret this language to
mean that a necessary test for functionality is "whether the
particular product configuration is a competitive necessity." 200
F. 3d, at 940. See also Vornado, 58 F. 3d, at 1507
("Functionality, by contrast, has been defined 33 both by our circuit, and more recently by the Supreme Court, in
terms of competitive need"). This was incorrect as a comprehensive
definition. As explained in Qualitex, supra, and Inwood,
supra, a feature is also functional when it is essential to the
use or purpose of the device or when it affects the cost or quality
of the device. The Qualitex decision did not purport to
displace this traditional rule. Instead, it quoted the rule as Inwood had set it forth. It is proper to inquire into a
"significant non-reputation-related disadvantage" in cases of
esthetic functionality, the question involved in Qualitex. Where the design is functional under the Inwood formulation
there is no need to proceed further to consider if there is a
competitive necessity for the feature. In Qualitex, by
contrast, esthetic functionality was the central question, there
having been no indication that the green-gold color of the laundry
press pad had any bearing on the use or purpose of the product or
its cost or quality.

															The Court has allowed trade dress protection to certain product
features that are inherently distinctive. Two Pesos, 505 U.
S., at 774. In Two Pesos, however, the Court at the outset
made the explicit analytic assumption that the trade dress features
in question (decorations and other features to evoke a Mexican
theme in a restaurant) were not functional. Id., at 767, n.
6. The trade dress in those cases did not bar competitors from
copying functional product design features. In the instant case,
beyond serving the purpose of informing consumers that the sign
stands are made by MDI (assuming it does so), the dual-spring
design provides a unique and useful mechanism to resist the force
of the wind. Functionality having been established, whether MDI's
dual-spring design has acquired secondary meaning need not be
considered.

															There is no need, furthermore, to engage, as did the Court of
Appeals, in speculation about other design possibilities, such as
using three or four springs which might serve the same purpose. 200
F. 3d, at 940. Here, the functionality of the spring design means
that competitors need not explore 34 34 TRAFFIX DEVICES, INC. v. MARKETING DISPLAYS, INC.

															whether other spring juxtapositions might be used. The
dual-spring design is not an arbitrary flourish in the
configuration of MDI's product; it is the reason the device works.
Other designs need not be attempted.

															Because the dual-spring design is functional, it is unnecessary
for competitors to explore designs to hide the springs, say, by
using a box or framework to cover them, as suggested by the Court
of Appeals. Ibid. The dual-spring design assures the user
the device will work. If buyers are assured the product serves its
purpose by seeing the operative mechanism that in itself serves an
important market need. It would be at cross-purposes to those
objectives, and something of a paradox, were we to require the
manufacturer to conceal the very item the user seeks.

															In a case where a manufacturer seeks to protect arbitrary,
incidental, or ornamental aspects of features of a product found in
the patent claims, such as arbitrary curves in the legs or an
ornamental pattern painted on the springs, a different result might
obtain. There the manufacturer could perhaps prove that those
aspects do not serve a purpose within the terms of the utility
patent. The inquiry into whether such features, asserted to be
trade dress, are functional by reason of their inclusion in the
claims of an expired utility patent could be aided by going beyond
the claims and examining the patent and its prosecution history to
see if the feature in question is shown as a useful part of the
invention. No such claim is made here, however. MDI in essence
seeks protection for the dual-spring design alone. The asserted
trade dress consists simply of the dual-spring design, four legs, a
base, an upright, and a sign. MDI has pointed to nothing arbitrary
about the components of its device or the way they are assembled.
The Lanham Act does not exist to reward manufacturers for their
innovation in creating a particular device; that is the purpose of
the patent law and its period of exclusivity. The Lanham Act,
furthermore, does not protect trade dress in a functional design
simply 35 because an investment has been made to encourage the public to
associate a particular functional feature with a single
manufacturer or seller. The Court of Appeals erred in viewing MDI
as possessing the right to exclude competitors from using a design
identical to MDI's and to require those competitors to adopt a
different design simply to avoid copying it. MDI cannot gain the
exclusive right to produce sign stands using the dual-spring design
by asserting that consumers associate it with the look of the
invention itself. Whether a utility patent has expired or there has
been no utility patent at all, a product design which has a
particular appearance may be functional because it is "essential to
the use or purpose of the article" or "affects the cost or quality
of the article." Inwood, 456 U. S., at 850, n. 10.

															TrafFix and some of its amici argue that the Patent
Clause of the Constitution, Art. I, § 8, cl. 8, of its own force,
prohibits the holder of an expired utility patent from claiming
trade dress protection. Brief for Petitioner 33-36; Brief for
Panduit Corp. as Amicus Curiae 3; Brief for MalIa Pollack as Amicus Curiae 2. We need not resolve this question. If,
despite the rule that functional features may not be the subject of
trade dress protection, a case arises in which trade dress becomes
the practical equivalent of an expired utility patent, that will be
time enough to consider the matter. The judgment of the Court of
Appeals is reversed, and the case is remanded for further
proceedings consistent with this opinion.

															It is so ordered.

Summary: The case of TrafFix Devices, Inc. v. Marketing Displays, Inc. concerned a legal dispute over trade dress infringement. Marketing Displays, Inc. (MDI) held expired utility patents for a "dual-spring design" mechanism used in temporary road signs, which they claimed was recognizable to buyers and users. TrafFix Devices, Inc. began selling a similar product with a dual-spring mechanism, leading MDI to sue for trade dress infringement. The court ruled in favor of TrafFix, stating that MDI's dual-spring design was functional and therefore could not be protected under trade dress law. The court also noted that MDI had not established secondary meaning in its alleged trade dress, meaning consumers did not associate the design with MDI. This case highlights the importance of distinguishing between functional and non-functional features when determining trademark or trade dress protection.