The United States Court of Appeals for the Tenth Circuit, in Vornado Air Circulation Systems Inc. v. Duracraft Corp., held in the negative the issue of "whether a product configuration is entitled to trade dress protection when it is or has been a significant inventive component of an invention covered by a utility patent." The court viewed the case involved as an issue of the "intersection of the Patent Act and the Lanham Trade-Mark Act," and reasoned that "patent policy dictates" that the Patent Act should prevail in these situations. The United States Supreme Court denied certiorari upon appeal by Vornado. The Internet and the development of increasingly sophisticated information-related technology will generate a plethora of intellectual property conflicts in the next century. Although the Supreme Court denied certiorari in Vornado, the Court will eventually have to rule on a Vornado-related issue. The clear disagreement among the federal circuits concerning this issue further necessitates a resolution by the Supreme Court. Analysis of the Supreme Court precedents on patent, trademark and unfair competition dispute cases illustrates that those precedents are strongly consistent with the Tenth Circuit's holding in Vornado. Therefore, the Supreme Court would likely agree with both the result and reasoning of the Tenth Circuit in Vornado. This would preclude all federal trade dress protection for any product configurations, which are or have been significant inventive components of inventions covered by utility patents.
Manotti L. Jenkins, A Request to the High Court: Don't Let the Patent Laws be Distracted by a Flashy Trade Dress, 15 J. Marshall J. Computer & Info. L. 323 (1997)