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Presenting a live 90-minute webinar with interactive Q&A

Functionality in Trade Dress Prosecution

and Litigation: Protecting the Look and

Feel of Products and Packaging

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

WEDNESDAY, DECEMBER 14, 2016

Theodore H. Davis, Jr., Partner, Kilpatrick Townsend & Stockton, Atlanta

Darius C. Gambino, Partner, DLA Piper LLP (US), Philadelphia

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Functionality in Trade Dress

Prosecution and Litigation: Protecting

the Look and Feel of Products and

Packaging

Theodore H. Davis Jr.

Kilpatrick Townsend & Stockton LLP

[email protected]

Trade Dress

Prosecution

This Court ... has explained that, “[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,” that is, if exclusive use of the feature would

put competitors at a significant non-reputation-

related disadvantage.

Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165

(1995) (quoting Inwood Labs. v. Ives Labs., 456 U.S. 844,

851 n.10 (1982)).

Functionality in the Prosecution Context

6

Trade Dress

Prosecution In re Morton-Norwich Prods., Inc., 671 F.2d 1332

(C.C.P.A. 1982)

7

Trade Dress

Prosecution

• it clarifies the relationship between utility and

functionality;

• it distinguishes between the related, but

different, concepts of de facto functionality and

de jure functionality; and

• it introduces the four Morton-Norwich factors.

Morton-Norwich is significant for three reasons:


8

Trade Dress

Prosecution

From the earliest cases, “functionality” has been

expressed in terms of “utility.” In 1930, this court

stated it to be “well settled that the configuration of

an article having utility is not the subject of trade-

mark protection.”

Morton-Norwich, 671 F.2d at 1338 (emphasis omitted)

(quoting In re Dennison Mfg. Co., 39 F.2d 720, 721

(C.C.P.A. 1930)).


9

Trade Dress

Prosecution In re Weber-Stephen Prods. Co., 184 U.S.P.Q. 509

(T.T.A.B. 1974)

10

Trade Dress

Prosecution

[T]he prime and salient consideration in this case [is]

whether the configuration in question is essentially

functional or utilitarian in character.... [I]f it is

essentially functional or utilitarian in character, it is

clear ... that a proprietary or legal right, which is a

basic requirement for registration, cannot attach

thereto.

Weber-Stephen Prods. Co., 184 U.S.P.Q. at 511.


11

Trade Dress

Prosecution In re Reddi-Wip, Inc., 150 U.S.P.Q. 213 (T.T.A.B. 1966)

12

Trade Dress

Prosecution

[E]verything that distinguishes one’s goods is not,

per se, a trademark. That is to say, there are certain

things, such as configurations and devices which are

in essence utilitarian and which may not function as

trademarks regardless of the fact that they may

distinguish one’s goods.

Reddi-Wip, 150 U.S.P.Q. at 214 (internal quotation marks

omitted).


13

Trade Dress

Prosecution In re Deister Concentrator Co., 289 F.2d 496 (C.C.P.A.

1961)

14

Trade Dress

Prosecution

A feature dictated solely by “functional” (utilitarian)

considerations may not be protected as a trademark;

but mere possession of a function (utility) is not

sufficient reason to deny protection.

Deister Concentrator Co., 289 F.2d at 502.


15

Trade Dress

Prosecution In re Oscar Mayer & Co., 189 U.S.P.Q. 295 (T.T.A.B.

1975)

16

Trade Dress

Prosecution

[T]he fact that a configuration may possess some

utility or function is not sufficient to deny protection if

it is otherwise entitled thereto.

Oscar Mayer & Co., 189 U.S.P.Q. at 296.


17

Trade Dress

Prosecution

[I]f the designation “functional” is to be utilized to

denote the legal consequence, we must speak in

terms of de facto functionality and de jure

functionality, the former being the use of “functional”

in the lay sense, indicating that although the design

... is directed to performance of a function, it may be

legally recognized as an indication of source. De

jure functionality, of course, would be used to

indicate the opposite-such a design may not be

protected as a trademark.

Morton-Norwich, 671 F.2d at 1337.


18

Trade Dress

Prosecution

Assuming [this court’s prior 1930 opinion in

Dennison Mfg.] intended [to invalidate the rights to

any] article whose configuration “has utility,” its

statement is ... too broad. Under that reasoning, the

design of a particular article would be protectable as

a trademark only where the design was useless, that

is, wholly unrelated to the function of the article.



19

Trade Dress

Prosecution

[F]unctionality is determined in light of utility, which is

determined in light of superiority of design, and rests

upon the foundation essential to effective

competition ....



20

Trade Dress

Prosecution

• the disclosure of a related utility patent;

The four Morton-Norwich factors:


21

Trade Dress

Prosecution TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23

(2001)

22

Trade Dress

Prosecution

Results of past litigation involving the TrafFix patents:

• closely spaced springs do not literally infringe the

patents; but

• closely spaced springs do infringe the patents

under the doctrine of equivalents.

See Sarkisian v. Winn-Proof Corp., 203 U.S.P.Q. 60 (D.

Or. 1978), aff’d, 697 F.2d 1313 (9th Cir. 1983).


23

Trade Dress

Prosecution TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23

(2001)

24

Trade Dress

Prosecution

The Court … held that if the trade dress was the

subject of an expired utility patent and disclosed in

the patent claims, there is a strong evidentiary

presumption that the trade dress falls ... is therefore

functional.

Robert G. Bone, Enforcement Costs and Trademark

Puzzles, 90 Va. L. Rev. 2099, 2164 n.190 (2004).


25

Trade Dress

Prosecution

[L]argely because of concerns about the potential for

trade dress protection to extend the patent period,

the Court held that expired utility patents give rise to

a strong presumption of functionality.

Mark P. McKenna, The Rehnquist Court and the

Groundwork for Greater First Amendment Scrutiny of

Intellectual Property, 21 Wash. J. L & Policy 11, 16 (2006).


26

Trade Dress

Prosecution

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 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.

TrafFix Devices, 532 U.S. at 29-30.


27

Trade Dress

Prosecution

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.

Section 43(a)(3) of the Lanham Act, 15 U.S.C.

§ 1125(a)(3) (2012).


28

Trade Dress

Prosecution

[E]ven 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.

TrafFix Devices, 532 U.S. at 31 (emphasis added).


29

Trade Dress

Prosecution

• it may be strong factual evidence of functionality,

but it does not create a presumption of

functionality, see TrafFix Devices, 532 U.S. at 29-

30;

• its entire disclosure, and not just its claims, can

weigh in favor of functionality, see, e.g., In re

Dietrich, 91 U.S.P.Q.2d 1622, 1627 (T.T.A.B.

2009);

• it need not be owned by the claimant to be

relevant, see, e.g., In re Virshup, 42 U.S.P.Q.2d

1403, 1405 (T.T.A.B. 1997); and

The significance of a related utility patent:


30

Trade Dress

Prosecution

• it need not actually have issued for the

disclosure of the application to be evidence of

functionality, see, e.g., Valu Eng’g, Inc. v.

Rexnord Corp., 278 F.3d 1268, 1279 (Fed. Cir.

2002); but

• the patent’s disclosure nevertheless can be

distinguished. See, e.g., In re Weber-Stephen

Prods. Co., 3 U.S.P.Q.2d 1659, 1664 (T.T.A.B.

1987).

The significance of a related utility patent:


31

Trade Dress

Prosecution In re Weber-Stephen Prods. Co., 3 U.S.P.Q.2d 1659

(T.T.A.B. 1987)

32

Trade Dress

Prosecution

While the drawings in the patent show a cooking grill

with a round bowl, supported on a tripod leg

arrangement, nothing in the patent discloses any

utilitarian advantages of this particular design.

Weber-Stephen Prods. Co., 3 U.S.P.Q.2d at 1664.


33

Trade Dress

Prosecution

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.

TrafFix Devices, 532 U.S. at 34.


34

Trade Dress

Prosecution


• advertising materials in which the claimant touts

the design’s utilitarian advantages;



35

Trade Dress

Prosecution

• a claimant whose advertising historically has

stressed the functional advantages of its design

is likely to face an uphill battle in establishing

nonfunctionality, see, e.g., In re Becton,

Dickinson & Co., 675 F.3d 1368, 1375-76 (Fed.

Cir. 2012); but

The significance of a claimant’s advertising:


36

Trade Dress

Prosecution In re Becton, Dickinson & Co., 675 F.3d 1368 (Fed. Cir.

2012)

37

Trade Dress


2012)

38

Trade Dress

Prosecution

• a claimant whose advertising historically has

stressed the functional advantages of its design

is likely to face an uphill battle in establishing

nonfunctionality, see, e.g., In re Becton,

Dickinson & Co., 675 F.3d 1368, 1375-76 (Fed.

Cir. 2012); but

• such a claimant’s advertising may not

necessarily carry the day, particularly at the

summary judgment stage, see. e.g., In re

Ovation Instruments, Inc., 201 U.S.P.Q. 116,

123 (T.T.A.B. 1978);



39

Trade Dress

Prosecution

• the absence of claims of functional advantage

for a particular design may be evidence of

nonfunctionality, see, e.g., In re Zippo Mfg. Co.,

50 U.S.P.Q.2d 1852, 1854 (T.T.A.B. 1999); and

• even if functional claims are made for a design

as a whole, they may receive less weight if they

do not relate to the particular characteristics

claimed as trade dress. See, e.g., In re Weber-

Stephens Prods. Co., 3 U.S.P.Q.2d 1659, 1664-

65 (T.T.A.B. 1987).



40

Trade Dress

Prosecution




• the availability of alternative designs; and



41

Trade Dress

Prosecution

• in TrafFix, the Supreme Court suggested that if

a feature is functional in the utilitarian sense,

there is no need to examine whether alternative

configurations are available to the defendant,

see 532 U.S. at 33;

• the Federal Circuit has largely ignored this

aspect of TrafFix, see Valu Eng’g, Inc. v.

Rexnord Corp., 278 F.3d 1268, 1276 (Fed. Cir.

2002); which means

The significance of alternative designs:


42

Trade Dress

Prosecution

[T]he [Supreme] Court merely noted once a product

feature is found functional based on other

considerations there is no need to con-sider the

availability of alternative designs, because the

feature cannot be given trade dress protection

merely because there are alternative designs

available. But that does not mean that the availability

of alternative designs cannot be a legitimate source

of evidence of evidence of whether a feature is

functional in the first place.

Valu Eng’g, 278 F.3d at 1276.


43

Trade Dress

Prosecution

• the availability of alternative designs can still

weigh in favor of nonfunctionality in the

registration context, see, e.g., In re Zippo Mfg.

Co., 50 U.S.P.Q.2d 1852 (T.T.A.B. 1999); but

• a claimant’s proffered alternative designs must

indeed be alternative, i.e., distinguishable from

the original, see, e.g., Greenhouse Sys., Inc. v.

Carson, 37 U.S.P.Q.2d 1748, 1754 (T.T.A.B.

1995); and



44

Trade Dress

Prosecution

• the alternative designs must work as well, and

at an equivalent cost, as that of the claimant to

support a finding of nonfunctionality. See, e.g.,

Kistner Concrete Prods. Inc. v. Contech Arch

Techs. Inc., 97 U.S.P.Q.2d 1912, 1929 (T.T.A.B.

2011).



45

Trade Dress

Prosecution




• the availability of alternative designs; and

• facts indicating that the design results in a

comparatively simple or cheap method for

manufacturing the product.



46

Trade Dress

Prosecution

• If a plaintiff’s claimed trade dress is a direct

result of an efficient manufacturing process, this

factor will weigh in favor of a finding of

functionality, see, e.g., In re Peters, 6

U.S.P.Q.2d 1390, 1392 (T.T.A.B. 1988); but

• evidence that alternative configurations are

cheaper to produce than the plaintiff’s claimed

trade dress weighs in favor of a finding of

nonfunctionality. See, e.g., In re Honeywell Inc.,

8 U.S.P.Q.2d 1600, 1604 (T.T.A.B. 1988).

The significance of manufacturing efficiencies:


47

Trade Dress

Prosecution

• the existence of a related design patent; and

Two additional factors coming into play in the registration

context are:


48

Trade Dress

Prosecution

• it is not evidence of functionality, see, e.g., In re

World’s Finest Chocolate, Inc., 474 F.2d 1012,

1015 (C.C.P.A. 1973); and, indeed,

• it can be evidence of nonfunctionality, see, e.g.,

In re Honeywell Inc., 8 U.S.P.Q.2d 1600, 1603

(T.T.A.B. 1988); but

The significance of a design patent:


49

Trade Dress

Prosecution

It is interesting to note that appellant ... owns [a]

design patent ...for the design in issue, which, at

least presumptively, indicates that the design is not

de jure functional.

In re Morton-Norwich Prods. Inc., 671 F.2d 1332, 1342 n.3

(C.C.P.A. 1982).


50

Trade Dress

Prosecution

• it is not evidence of functionality, see, e.g., In re

World’s Finest Chocolate, Inc., 474 F.2d 1012,

1015 (C.C.P.A. 1973); and, indeed,

• it can be evidence of nonfunctionality, see, e.g.,

In re Honeywell Inc., 8 U.S.P.Q.2d 1600, 1603

(T.T.A.B. 1988); but

• it is “not alone sufficient evidence,” In re Am.

Nat’l Can Co., 41 U.S.P.Q.2d 1842, 1843

(T.T.A.B. 1997); and



51

Trade Dress

Prosecution

• the drawing of the design patent must match up

to the claimant’s design in the marketplace to

have any evidentiary significance. See, e.g., In

re Becton, Dickinson & Co., 675 F.3d 1368,

1375 (Fed. Cir. 2012).



52

Trade Dress


2012)

53

Trade Dress

Prosecution

• the existence of a related design patent; and

• the claimant’s intent.

Two additional factors coming into play in the registration

context:


54

Trade Dress

Prosecution

• the adoption of a design with an intent that it

serve as a protectable trade dress can be

probative evidence of nonfunctionality, see, e.g.,

In re Jockey Int’l, Inc., 192 U.S.P.Q. 579, 582

(T.T.A.B. 1976); but

The significance of the claimant’s intent:


55

Trade Dress

Prosecution In re Jockey Int’l, Inc., 192 U.S.P.Q. 579 (T.T.A.B. 1976)

56

Trade Dress

Prosecution In re Mars Inc., 105 U.S.P.Q.2d 1859 (T.T.A.B. 2013)

57

Trade Dress

Prosecution

• the adoption of a design with an intent that it

serve as a protectable trade dress can be

probative evidence of nonfunctionality, see, e.g.,

In re Jockey Int’l, Inc., 192 U.S.P.Q. 579, 582

(T.T.A.B. 1976); but

• the Board has more recently held that “whether

[an] applicant’s ‘primary’ purpose or intent in

settling upon [its] design was source

identification is beside the point.” In re Mars Inc.,

105 U.S.P.Q.2d 1859, 1865 (T.T.A.B. 2013).

The significance of the claimant’s intent:


58

Trade Dress

Prosecution

Thank You

Ted Davis

Kilpatrick Townsend & Stockton LLP

[email protected]

59

December 14, 2016 Copyright 2016 © Darius C. Gambino All Rights Reserved. 60

Functionality In Trade Dress

Prosecution & Litigation

Protecting The Look And Feel Of Products

And Packaging

Strafford Publications Webinar

Wednesday, December 14th, 2016, 1:00-2:30PM

Darius C. Gambino

[email protected] Copyright 2016 © Darius C. Gambino All Rights Reserved.

Why Protect Trade Dress?

The past six (6) years have seen a significant increase in

complaints that include trade dress counts.

The publicity garnered by the Apple v. Samsung litigation and

various other cases involving design patents and trade dress will

likely increase the use of trade dress as a means of resolving

disputes.

Trade dress litigation has strong appeal over utility patent litigation

due to lower overall cost to trial.

Pro: No claim construction hearing; no infringement or invalidity

contention proceedings; no significant technical issues requiring

expert testimony.

Con: Need to show confusion, secondary meaning, non-

functionality.


Types of Functionality

Trade dress is functional where it: (1) is ‘essential to the use or

purpose of the product or if it affects the cost or quality of the

device,’ or (2) provides a ‘significant non-reputational-related

advantage.’

Utilitarian Functionality: Use/Purpose or Cost/Quality

9th Circuit Disc Golf test:

(1) whether the design yields a utilitarian advantage;

(2) whether alternative designs are available;

(3) whether advertising touts the utilitarian advantages of the

design, and

(4) whether the particular design results from a comparatively

simple or inexpensive method of manufacture.


Types of Functionality

Aesthetic Functionality: Significant Non-Reputational Advantage

Louboutin: “a mark is aesthetically functional, and therefore

ineligible for protection under the Lanham Act, where protection of

the mark significantly undermines competitors’ ability to compete in

the relevant market.” Christian Louboutin S.A. v. Yves Saint Laurent

America Holding, Inc., 696 F.3d 206 (2d Cir. 2012).

The 2nd, 7th and 10th Circuits have all applied the AF doctrine in

recent years, and the position of the 1st, 4th, 8th, and D.C. Circuits on

the doctrine is unclear. The 3rd, 5th, 6th, 9th, 11th, and Federal

Circuits have all, for the most part, rejected the doctrine’s

application in trade dress cases.

So let’s take a look at how litigants have fared in trade dress cases

by Circuit.


1st

Circuit (Maine, N. Hampshire,

Rhode Island, Mass. & Puerto Rico)

Bern Unlimited v. Burton et al. (Dist. Massachusetts 2011)


Bern “Baker” helmet Burton “Red Mutiny” helmet

Bern Unlimited v. Burton et al.

(D.Mass 2011)

Bern filed a Complaint alleging design patent infringement related

to its “Baker” snowboard helmets naming defendants including

Burton, Vans, Smith Optics and Easton-Bell (Bell).

A few months into the case, Bern dropped the design patent claim

in favor of a trade dress infringement claim.

The defendants all filed motions for summary judgment that the

“Baker” trade dress was functional, but the court denied the

motions.

The defendant then file motions for summary judgment of

invalidity, and the court found the claimed trade dress lacked

secondary meaning.

Verdict: Utilitarian functionality is a viable defense in the 1st

Circuit, but courts will likely let close questions go to trial.


1st

Circuit (Maine, N. Hampshire,

Rhode Island, Mass. & Puerto Rico)

Recent case: Keds LLC v. Vans Inc. (Dist. Mass. 2014) – Keds

filed a complaint alleging trade dress infringement in a blue

square as applied to the heel of sneakers. Vans counterclaimed

alleging the ‘blue square’ trade dress was functional.

Parties stipulated to dismiss in Jan. 2015, presumably with Vans

halting use of the blue square.


2nd

Circuit (New York, Connecticut,

Vermont)

Kwik Lok Corp. v. Schutte Bagclosures, Inc. (SDNY 2012)

KL held registration for bag closure (U.S. Reg. 1,972,043)[left]; KL

also claimed that a slightly different design called the “J-NRP”

[middle] was also covered by the ‘043 Registration; SBI copied the

design of the J-NRP with its ‘Clipps G Series’. [right]

SBI argued that the KL registered trade dress was functional.

The Court agreed (after a 5-day bench trial).


2nd


Vermont)

The USPTO addressed functionality during prosecution of the

‘043 Registration, but prior to the 2001 Supreme Court decision

in TrafFix Devices.

Court: “the shape of Kwik Lok’s asserted trade dress is the

strongest available shape and clearly affects the quality of the

closure.”

Court: “the utilitarian advantages of Kwik Lok’s claimed trade

dress configurations are disclosed in the utility patents that Kwik

Lok has obtained over the past five decades…”

Court: “[A]pplying the TrafFix analysis, the [KL] design…is

functional because it affects the cost and quality of the product…”

KL has appealed to 2nd Circuit (Aug. 9, 2016)


2nd


Vermont)

Also note that ‘aesthetic functionality’ is a viable defense in the

2nd Circuit. See Christian Louboutin S.A. v. Yves Saint Laurent

America Holding, Inc., 696 F.3d 206 (2d Cir. 2012).

“… a mark is aesthetically functional, and therefore ineligible for

protection under the Lanham Act, where protection of the mark

significantly undermines competitors' ability to compete in the

relevant market.”

But what is significant?

The Louboutin court found that the red sole was not aesthetically

functional.

Verdict: Functionality (both utilitarian and aesthetic) should be a

concern for plaintiffs in the 2nd Circuit; but see Vox Amplification

(granting injunction for guitar body trade dress).


3rd

Circuit (Pennsylvania, N. Jersey,

Delaware, Virgin Islands)

Adams Mfg. Corp. v. Rea (WDPA 2012)

AMC sought registration of suction cup with

concentric rings as trade dress; the USPTO

denied registration; AMC brought a District Court

action for further review of the USPTO decision.

“the light diffusing two-ring suction cup is

functional and not eligible for registration as a

trademark…”

AMC had an expired utility patent covering the

same design [strong evidence), had touted

functional benefits in advertising, had chosen the

design for a specific functional purpose (to

diffuse light).


3rd



Sweet Street Desserts, Inc. v. Chudleigh’s

(E.D. Pennsylvania 2012) – incontestable

trade dress registration for the shape of an

apple turnover found functional, and

summary judgment granted to alleged

infringer.

Court found that apple turnover shape met

both the test for utilitarian functionality

and aesthetic functionality.

3rd Circuit affirmed the functionality findings

on appeal.


3rd



The District Court quickly dismissed an analogy by plaintiff to the

Coke bottle shape, by noting a “lower standard of protectability”

for product packaging (Coke bottle) vs. product configuration

(turnover shape)

This was error – the only difference is when secondary meaning

must be affirmatively proven, and the plaintiff’s registration was

incontestable on secondary meaning; not addressed by 3rd

Circuit.

Verdict: Functionality has not fared well for plaintiffs in the 3rd

Circuit.

Compare: AstraZeneca AB v. Dr. Reddy’s Labs (D. Del 2015) –

Motion for Temporary Restraining Order granted to prevent

defendant from selling a purple-colored pill.


4th

Circuit (Maryland, Virginia, W.

Virginia, N. Carolina, S. Carolina)

McAirlaids v. Kimberly-Clark (W.D. Virginia 2012)


McAirlaids Registration K-C “GoodNites” Pads

4th



McAirlaids filed a complaint alleging infringement of registered

trade dress in incontinence pads in November 2012.

In July 2013, summary judgment was granted to Kimberly-Clark,

and the trade dress registration at issue canceled based on

evidence of advertising touting functionality and utility patents

on the same product.

In June 2014, the Fourth Circuit vacated the lower court’s

summary judgment ruling and remanded, finding that disputed

issues of fact should have precluded a finding that the trade

dress was functional.

In March 2015, the parties settled on undisclosed terms.


4th



Gildan USA Inc. v. Dillard's, Inc. (WDNC 2014)

Gildan claimed common law trade dress rights

in the packaging for its GOLDTOE socks.

“(1) a colored band with contrasting white or

gold lettering…(2) a rectangle of contrasting

color in the upper-right…(3) side panels which

incorporate the color gold.”

Preliminary Injunction denied due to finding

that claimed trade dress would likely be found

functional at trial.

Verdict: It may be difficult for a defendant to

obtain summary judgment based on utilitarian

functionality in the 4th Circuit, but preliminary

injunctions should also be rare.


5th

Circuit (Texas, Louisiana,

Mississippi)

T-Mobile v. Aio Wireless (S.D. Texas 2013)


T-Mobile Aio Wireless

5th


Mississippi)

T-Mobile filed a complaint alleging infringement of its ‘magenta’

trade dress (registered on the Supplemental Register)

U.S. Trademark Reg. No. 3,263,625: “The color(s) magenta

is/are claimed as a feature of the mark. The mark consists of the

color magenta alone, which is the approximate equivalent of

Pantone Matching System, Rhodamine Red U, used on the

background of product displays and advertisements found in a

store…”

Aio was using a color called “Pantone 676C” in connection with

wireless telecommunication services.

In January 2014, the court issued an injunction barring Aio from

using the color, or any similar color. T-Mobile was required to

post a $500,000.00 bond for the injunction.


5th


Mississippi)

The color magenta is not functional.

A few months after the injunction was entered, Aio changed their

name to Cricket Wireless, and began using a green and black

color scheme.

Shortly thereafter, the parties entered into a Settlement

Agreement and dismissed the case with prejudice.


5th


Mississippi)

New York Pizzeria, Inc. v. Sydal (S.D. Texas 2013) – Plaintiff

claimed the taste of its pizza, as well as its methods for plating

entrees, were protectable as trade dress.

NYP claimed that its “specially sourced branded ingredients and

innovative preparation and preservation techniques contribute to

the distinctive flavor” of its products.

The court found the flavor functional.

The court also found that NYP had not described the plating

methods in enough detail – all trade dress claims dismissed.


5th


Mississippi)

Compare:

Clearline v. Cooper (S.D. Texas 2011) –

Injunction granted; jury awarded Plaintiff

approximately $5.86 million in damages.

Cointreau v. Pura Vida (N.D. Texas 2012)

– Injunction granted for Cointreau.

Verdict: Injunctions and large damage

awards are available in the 5th Circuit, and

functionality should not bar reasonable

claims.


6th

Circuit (Michigan, Ohio, Kentucky,

Tennessee)


Groeneveld Transport Efficiency Inc. v. Lubecore International

Inc. (6th Cir. 2013)

6th


Tennessee)


Groeneveld claimed trade dress protection for an automotive

grease pump; jury verdict of $1.2 million

The Sixth Circuit reversed, and instructed the district court to

enter judgment for the defendant Lubecore.

The Sixth Circuit found that the trade dress claimed in the grease

pump was both functional and not infringed by the ‘lookalike’

Lubecore pump.

Judge Helene N. White issued a strong dissent, arguing that the

plaintiff had presented sufficient evidence to support the jury

verdict, had been the “exclusive manufacturer of this style pump

for decades,” and that “the pump’s overall configuration was

designed to look distinctive in the industry rather than due to

functional concerns.”

6th


Tennessee)


The Sherwin-Williams Co. v.

Wooster Brush Co. (NDOH 2012)

S-W claimed protection in its Brush

Keeper and Color Code trade dress.

Color Code – colors on brush

packaging signify a specific type of

brush

Brush Keeper – golden yellow

background, small American flag,

etc.

Court found both trade dress to be

not functional (and rejected doctrine

of aesthetic functionality)

6th


Tennessee)


Sazerac Company, Inc. v. Intercontinental Packaging Company

(W.D. Kentucky 2014)

6th


Tennessee)


Distillers of Buffalo Trace bourbon alleged infringement of trade

dress in bottle and packaging (and name).

The defendant filed a motion to dismiss or transfer for improper

venue, which was denied. The parties settled.

See also: Jack Daniels v. Popcorn Sutton Whiskey (M.D.

Tennessee 2013) – Jack Daniels alleged trade dress

infringement based on Popcorn Sutton’s bottle shape and

packaging for its whiskey, which was similar to the “Old No. 7”

bottle, and used similar white lettering on a black background.

Popcorn Sutton agreed to change its bottle design, and the case

was dismissed by stipulation of the parties.

Verdict: Don’t mess with alcohol bottles in the 6th Circuit, but be

careful of Lubecore.

7th

Circuit (Illinois, Indiana,

Wisconsin)

Dwyer Instruments, Inc. v. Sensocon Inc. (N.D. Indiana 2009)

Dwyer had a trade dress registration (US 3,397,050) on a lens for

a gauge with a domed face, a plurality of horizontal lines and a

raised rectangular portion; Sensocon copied the design.


7th


Wisconsin)

At summary judgment, the court found that the lens design was not

functional, had acquired distinctiveness, and was infringed by the

Sensocon gauge.

Compare: Ogosport LLC v. Maranda Enterprises LLC (E.D.

Wisconsin 2010) – trade dress claimed in flying disc toy found to be

functional based on trade dress applications and a utility patent

application which were all rejected by the USPTO.


7th


Wisconsin)

Speare Toools, Inc. v. Klein

Tools, Inc. (E.D. Wisconsin

2013)

Speare claimed trade dress in

“[a] clear plastic disk nested

with a plastic circular outer disk,

wherein the inner circular disk

has a raised plastic portion…”

Court found trade dress

functional – packaging was

cheaper to produce, stronger,

more appealing to

customers/retailers


7th


Wisconsin)

Toyo Tire v. Atturo Tire et al. (N.D. Illinois

2014) - Toyo filed a design patent and trade

dress infringement action over tire tread

designs in January 2014. Atturo moved for

judgment on the pleadings, arguing that the

tire tread was functional.

Court found tread not functional (at

pleadings stage).

Did the presumption of validity and non-

functionality for the design patent sway the

court (as the trade dress registration did in

Dwyer)?

Verdict: Trade dress registrations are key;

deference will be given to USPTO decisions.


8th

Circuit (Minnesota, Missouri, Iowa,

Arkansas, N. Dakota, S. Dakota, Nebraska)

The Foreign Candy Company v. Promotion in Motion (N.D. Iowa

2012)

The Foreign Candy Company, manufacturers “Watermelon

Wedges” filed a complaint for declaratory judgment of non-

infringement related to Promotion in Motion’s allegations of trade

dress infringement in its watermelon candy with “unusual three-

dimensional trapezoid shape.”


8th

Circuit (Minnesota, Missouri, Iowa,

Arkansas, N. Dakota, S. Dakota, Nebraska)

In May 2014, the parties reached a settlement, and filed a joint

stipulation of dismissal.

Foreign Candy no longer appears to be offering the “Watermelon

Wedges”.

Verdict: There is not really a large enough sample to predict

trends in the 8th Circuit, but the lack of trade dress precedent

does not show a clear benefit to either plaintiffs and defendants.


9th

Circuit (California, Arizona, Nevada, Oregon,

Washington, Idaho, Montana, Alaska, Guam,

Hawaii, Mariana Islands)

By far, the 9th Circuit sees the most trade dress litigation of any

Circuit, with the California District Courts getting most of the

cases.

Notable Decisions:

Mixed Chicks v. Sally Beauty (C.D. California 2011) – $8.1 million

jury award (including $7.275 million in punitive damages under

California law) and injunction.


9th




Blumenthal Distributing Inc. dba Office

Star et al. v. Herman Miller Inc. (CDCA

2014)

Jury awarded Herman Miller $8.4 million

in damages after 9 day trial for

infringement of trade dress in “Eames”

office chairs (at right); Blumenthal

cleared on “Aeron” office chairs (below).


9th




October 27, 2016 Copyright 2016 © Darius C. Gambino All Rights Reserved. 94

Dogloo, Inc. v. Doskocil Mfg.

(C.D.Cal. 1995) - preliminary

injunction based on claimed

trade dress in igloo-shaped dog

house granted.

Court found dog house trade

dress not functional.

See U.S. Reg. 1,631,630 at left.

Evidence of Function: Utility

patent on same design, touted

function in advertising, superior

thermal qualities, easier to stack

and ship.

9th





Fiji Water v. Fiji Mineral Water

(C.D. Cal. 2010) – injunction for

infringement of trade dress in

bottle shape and appearance.

Court found bottle trade dress

not functional.

See U.S. Regs. 2,911,918 and

2,937,191 at left.

Evidence of Function: Square

shape made bottles easier to

package.

9th





Cybergun, S.A. v. JAG Precision

(D.Nev. 2012/9th Cri. 2013) –

preliminary injunction based on

claimed trade dress in firearms

granted; affirmed by 9th Circuit.

District Court found firearm

designs not functional.

Court distinguished Secalt

(traction hoist for large building

window washing) and Leatherman

(Swiss Army knife) as cases

where the products did not identify

“upon sight the [manufacturer] in

question…”.

9th




Apple Inc. v. Samsung Electronics

Co. (C.D. California 2011) – Apple

awarded $930 million, with about

$400 million of award was

attributable to trade dress and

design patent claims (but that award

is on appeal).

d.light Design v. Boxin Solar (N.D.

California 2013) – Temporary

Restraining Order (TRO) and

preliminary injunction granted

preventing Chinese defendants from

selling various solar lamps infringing

plaintiff's trade dress and design

patents.


9th




Moldex-Metric Inc. v. McKeon Products

Inc. (CDCA 2013/9th Cir. Mar. 2015)

9th Circuit reversed lower court finding

that green color was functional for

earplugs and remanded for further

consideration.

On March 31, 2016, Judge King granted

summary judgment to McKeon on the

issue of functionality – finding the green

color to be functional.

On April 14, 2016, Moldex filed an

Appeal to the 9th Circuit.

What will the 9th Circuit do?


Apple v. Samsung

Apple Inc. v. Samsung Electronics Co., Ltd., 786 F.3d 983

(Fed. Cir. May 18, 2015)

Panel: Prost (author), O’Malley, Chen

The CAFC reversed the jury’s finding that Apple’s trade dresses

were protectable, but affirmed the jury’s verdict on design patent

infringement.

Design Patents – Win

Trade Dress - Loss

The reversal on trade dress was based on functionality.

Notably, the CAFC applied 9th Circuit law to trade dress

functionality, and Federal Circuit law to design patent

functionality.


Functionality - Apple v. Samsung

Too Harsh on Trade Dress Functionality?

CAFC: “[T]he Supreme Court and the Ninth Circuit have

repeatedly found product configuration trade dresses functional

and therefore non-protectable. See [TrafFix, Secalt, Disc Golf].”

They have? There are several recent 9th Circuit cases where

product configuration trade dress was found non-functional (Fiji

Water, Mixed Chicks, d.light Design, Cybergun, Dogloo).

CAFC: A registration can’t save a functional trade dress. See

[Talking Rain (bottle design), Tie Tech (cutting tool), Leatherman

(Swiss Army knife)].

It can’t? Again, there are multiple recent 9th Circuit cases

upholding registered trade dress and putting the burden on the

alleged infringer to prove functionality (Fiji Water, Dogloo).


Functionality - Apple v. Samsung

CAFC: A product feature is non-functional only if “serves no

purpose other than identification” (citing Disc Golf)

Virtually impossible standard to meet as construed by the CAFC

– This is not the law of the 9th Circuit.

Every product feature has some function outside of source

identification (de jure vs. de facto functionality).

The shape of a Coke bottle makes it easier to hold, but that

doesn’t make its impression on the consumer as a source

identifier any less significant.

Verdict: Large damages awards and injunctions are possible in

the 9th Circuit, but examine your trade dress against precedents

carefully - don’t expect to predict the outcome with certainty – 9th

Circuit courts are all over the map when it comes to functionality.


10th

Circuit (Colorado, Utah, N.

Mexico, Wyoming, Kansas, Oklahoma)

Hersheys v. Tincturebelle (Dist. Colorado 2014)

Hersheys filed against seller of legal marijuana candy based on

the seller’s use of Hershey’s trade dress for candy bars.

An example of one product is “Ganja Joy,” which is modeled after

the candy bar “Almond Joy”.


10th



The parties settled on mostly undisclosed terms.

The public terms required TinctureBelle to destroy any remaining

packaging, and to refrain from making any false or disparaging

statements about Hershey or its products.

As part of the settlement, TinctureBelle was also barred from

using the term “Reefer” in connection with any candy or edible

products containing peanut butter, and agreed that Hershey will

be entitled to $25,000 per breach if TinctureBelle violates any of

the terms of the settlement.


10th



OraLabs Inc. v. The Kind Group LLC et

al. (D. Colo. 2013)

District Court ruled trade dress in

“EOS” lip balm container not

functional.

Container also covered by a design

patent, which was also held not

functional.

Verdict: The 10th Circuit seems

receptive to protecting trade dress, but

hasn’t really faced any hard

functionality issues yet.


11th

Circuit (Florida, Georgia,

Alabama)

Dynamic Designs Distribution Inc. v.

Nalin Manufacturing, LLC (M.D.

Florida 2013)

DDD filed a DJ complaint for non-

infringement and invalidity of the

trade dress claimed by Nalin in a

speaker adapter.

On DDD’s motion for summary

judgment, the court found the

claimed trade dress functional.

The court found Nalin’s previously

filed (and abandoned) design patent

application for the adapter highly

relevant to the functionality inquiry.


11th

Circuit (Florida, Georgia,

Alabama)

The court also noted Nalin’s attempt to register a copyright in the

adapter shape, and the Copyright Office’s rejection of such

application based on functionality, as another reason to find the

claimed trade dress functional.

DDD moved for recovery of its attorney’s fees in defending the

trade dress infringement claim (approximately $37,000), which

the court granted.

In finding the case “exceptional,” the court determined that Nalin

“knew, or should have known, that they were not entitled to trade

dress protection under the Lanham Act and [that] their claim for

trade dress protection was weak to the point of being malicious.”

Verdict: Registrations can be key, but examine your functionality

position carefully to avoid being hit for attorneys’ fees.


Supreme Court

The Supreme Court has not taken on a trade dress case since

Traffix Devices in 2001.

There are Circuit splits on various other issues, including: (1) the

‘aesthetic functionality’ doctrine, (2) the standard for obtaining

monetary damages, (3) the test to be applied in judging utilitarian

functionality, and (4) standard for proving that a case is

‘exceptional’ for purposes of attorneys’ fees.

Note: The Third Circuit recently adopted the relaxed Octane

Fitness attorneys fees standard (case ‘stands out from others’)

for all Lanham Act cases. See Fair Wind Sailing, Inc. v.

Dempster, 2014 WL 4358471 (3rd Cir. 2014).


Circuit Takeaways

The 2nd and 9th Circuits see the most trade dress activity, but that

does not necessarily lead to uniformity of decisions.

Preliminary injunctions for trade dress are rare but attainable it is

fairly clear that the defendant copied the products almost exactly,

and was looking to trade on the plaintiff’s goodwill.

Note: The 2nd, 3rd and 9th Circuits have all adopted eBay, and

require a showing of irreparable harm beyond a likelihood of

confusion or dilution.

The 5th Circuit seems most receptive to injunctions, granting relief

in at least three recent cases (Clearline, Cointreau, T-Mobile).

The 2nd Circuit is probably the most defense-friendly, but did

grant a recall and $11.7 million in damages in a recent case

(Audemars Piguet).


Circuit Takeaways

Plaintiffs:

Obtain registrations before going to court

Assert counterfeiting claims when possible

Do everything you can to get into the 5th Circuit (kidding but not

really)

Defendants:

Always raise functionality and no secondary meaning as defenses

Argue for application of eBay standard for injunctive relief

Play to the court’s prejudices against enforcing trade dress claims in

the presence of other IP (utility patents, design patents, copyrights)


Conclusions

Check out Trade Dress:

Evolution, Strategy and

Practice from

Lexis/Nexis.


Conclusions

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Documents

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