Update on the Law and Tactics of
Product Design Trade Dress
Infringement
By Stephen D. Milbrath
September 14, 2015
Trade Dress Generally
Trade Dress involves the “total image of a
product and may include features such as
size, shape, color or color combinations,
texture, graphics, or even particular sales
techniques. AmBrit, Inc. v. Kraft, Inc., 812
F.2d 1531, 1535 (11th Cir. 1986).
Product Shape
It is easy to think of trade dress as
referring to packaging and labeling,
and possibly coloring of a product.
But it may also include the “design
features of the product itself.”
Restatement 3rd Unfair Competition,
§16, Comment. Thus shape and
design of the product can be
conceived of as protectable by trade
dress.
Can A Boat Sheer Line Design Be Protected By Trade Dress
Under Section 43 (a) of the Lanham Act?
“Yellowfin’s Unique Sheer Line . . . Comprises Yellowfin’s Trade
Dress Rights in its Boat Line.”
A Sheer Line is the Break in the Hull of a Boat. Is it thus a
functional feature?
Can An Exhaust Manifold for a Marine Engine Incorporate
Primarily Nonfunctional Features?
Can Such An Exhaust Manifold Incorporate Primarily
Nonfunctional Attributes Capable of Protection?
The Benefits to Registration Under Section 2(f)
McAirlaids, Inc v. Kimberly –Clark Corp., 756 F.3d 307, 311-312
(4th Cir. 2014): “The presumption of validity that accompanies
registered trade dress ‘has a burden-shifting effect, requiring
the party challenging the registered mark to produce
sufficient evidence’ to show that the trade dress is invalid by a
preponderance of the evidence… Therefore, Kimberly-Clark –
the party challenging a registered mark– has the burden of
showing functionality by a preponderance of the evidence in
this case, whereas in TrafFix, MDI– the party seeking
protection of an unregistered mark – had the burden of
proving nonfunctionality.
Even if Design, Like Color is Not Inherently Distinctive,
It Might Be Protected By Registration In Some Cases
• Lanham Act Section 2(f): “The Commissioner may accept as
prima facie evidence that the mark has become distinctive, as
used on or in connection with the applicant’s goods in
commerce, proof of substantially exclusive and continuous
use thereof as a mark by the applicant in commerce for the
five years before the date on which the claim of
distinctiveness is made.”
• This requires direct or circumstantial evidence that the
relevant buying class associates the mark with the applicant
plus proof of 5 years’ use
• The PTO can accept evidence of ownership of one or more
prior registrations of the same mark for the same or closely
related goods
The Danger of Patent-Like Protection For
Unpatented Features
Recent Supreme Court cases have been
cautious in considering this concept. In
Wal-Mart Stores, Inc. v. Samara Bros., 529
U.S. 205, for example, The Court stated:
Trade Dress is “a category that originally
included only the packaging or ‘dressing’
of a product, but in recent years has been
expanded by many courts of appeal to
encompass the design of a product.”
An Over Expansive Resort to Trade Dress?
McCarthy on Trademarks has
observed that in the 1990s, there
was a wave of “over expansive and
inflated claims of trade dress and
product shapes and features.”
McCarthy on Trademarks, §8:5 at
8-30.
McCarthy further observes:
Many of these courts were
concerned because the policy of
free competition dictates that trade
dress law does not create “backdoor patents”, substituting for the
strict requirements of utility patent
law.
McCarthy, §8.5 at 8-31.
The Supreme Court has picked up on this
concern:
• Product shape is not likely to be perceived
as an indicium of origin. TrafFix Devices,
Inc. v. Marketing Displays, Inc., 532 U.S.
23, 121 S. Ct. 1255, 1260 (2001).
• Cautioning against misuse or overextension of trade dress. Wal-Mart Stores,
Inc. v. Samara Bros., 529 U.S. 205 (2000)
• “Product Design almost invariably serves
purposes other than source identification.”
TrafFix, 121 S. Ct. at 1260, emphasis
added.
The Tension Between Patent Law and Trade
Dress Protection Law
• Many courts have noted that there is a tension between patent law and
trademark law in the area of trade dress protection. See, e.g., Dorr-Oliver,
Inc. v. Fluid-Quip, Inc., 94 F.3d 376 (7th Cir. 1996).
• McCarthy’s recommendation: “One way to balance trade dress in parent law
is to presume that no likelihood of confusion is created as to look-alike highprice goods bought only by professional buyers when the Defendant clearly
displays its name on the product.” McCarthy on Trademark §8:5 at 8-32,
emphasis added.
• The Second Circuit has also observed that “granting trade dress protection to
an ordinary product shape would create a monopoly in the goods
themselves.” Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373
(2d Cir. 1997).
• See also Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir. 2001)
(dismissing a trade dress claim alleged to reside in a line of jewelry because
of a lack of specificity in pleading the specific elements of the claim dress).
The 11th Circuit Case Law
In the 11th Circuit, the design of a product
may constitute protectable trade dress
under Section 43(a) of the Lanham Act.
Epic Metals Corp. v. Souliere, 99 F.3d
1034, 1038 (11th Cir. 1996).
The usual elements of a product design trade dress
infringement claim in the 11th Circuit are:
1. The product design of the Defendant’s product
must be confusingly similar to the product design
of the Plaintiff’s product;
2. The Features of the product design in question
must be primarily non-functional; and
3. The product design must be inherently distinctive
or must have acquired secondary meaning.
Dippin’ Dots, Inc. v. Frosty Bites Distrib., LLC, 369 F.3d,
1197, 1202 (11th Cir. 2004).
The Gale Group Case
A representative early 11th Circuit case is Herb
Allen’s Gale Group, Inc. v. King City Industrial Co.,
23 U.S.P.Q.2d 1208 (M.D. Fla. 1992).
The Allen, Dyer firm represented Plaintiff Gale,
an Orlando company which developed shade
structures using a knitted fabric cover and sold
under the trademarks PORTASHADE® and
GAZEBO®. Gale sued two other companies
offering similar shade structures that emulated
the designs of the Gale products.
Mr. Allen defined the product design trade
dress to include:
• Triangular leg configuration
• Unique roof configurations for the PORTASHADE
or GAZEBO
• The district court held that Plaintiff had proven
that the triangular leg configurations either alone
or together with the unique roof configurations
were distinctive and had acquired secondary
meaning. The court also concluded that the
Defendant shade structures were confusingly
similar to those of Gale and that actual confusion
had also been established and enjoined the
Defendants from selling or distributing their
similar shade products.
A Series of Important
Supreme Court Cases
A series of important Supreme Court cases
have severely restricted the scope of
product design trade dress protection.
Qualitex Company v. Jacobson Prods. Co.
514 U.S. 159 (1995)
• While color can be protected as a trademark,
colors as a category of marks must be shown to
be inherently distinctive. Hence a plaintiff must
show secondary meaning when attempting to
prove a product design trade dress built on color,
such as a single color. This is because color does
not automatically tell the customer that it refers
to a brand and does not immediately signify that
brand or a product source even though over
time customers may come to treat a particular
color on a product or packaging as signifying a
particular brand.
Wal-Mart Stores, Inc. v. Samara Bros.,
529 U.S. 205 (2000)
Here the Court held that design like color is
not inherently distinctive. Instead:
The attribution of inherent distinctiveness to certain
categories of word marks and product packaging arise from
the fact that the very purpose of attaching a particular word
to a product, or encasing it in distinctive packaging, is most
often to identify the source or product … In the case of
product design, as in the case of color, we think consumer
predisposition to equate the feature with the source does
not exist. Consumers are aware of the reality that, almost
invariably, even the most unusual product designs – such as
cocktail shaker shaped like a penguin – is intended not to
identify the source, but to render the product itself more
useful or more appealing.
529 U.S. at 214, emphasis added.
“Consumers should not be deprived of the
benefits of competition with regard to the
utilitarian and esthetic purposes a product
design ordinarily serves by a rule of law that
facilitates plausible threats of suit against
new entrants based upon alleged inherent
distinctiveness.” Id.
• The court drew a clear distinction between
trade dress for product packaging, which
can be protected on grounds of inherent
distinctiveness, and product design trade
dress, which cannot be so protected.
• “We hold that in an action for infringement
of unregistered trade dress under section
43(a) of the Lanham Act, products designed
as distinctive, and therefore protectable,
only upon a showing of secondary
meaning” 529 U.S. at 216.
Implications of Qualitex and Wal-Mart
Secondary meaning is now required to achieve the status
of a protectable trade dress for at least a single color and
for the design of the product or its configuration. As a
result of this precedent, there will often be a dispute in
product design cases on whether the claimed dress is in
fact a product design or mere packaging. Secondary
meaning is required for the design, but not for the
packaging, at least if the packaging is inherently
distinctive.
The issue of whether the claimed trade dress is a product
or a package design is a question of fact. In re Slokevage,
441 F.3d 957 (Fed. Cir. 2006).
Wal-Mart
In close cases, the court must err on the
side of caution and classify the claimed
trade dress, if ambiguous, as one of
product design, and therefore requiring
secondary meaning. Wal-Mart, 120 S.Ct. at
1346.
TrafFix Devices, Inc. v. Marketing Displays, Inc. (2001)
• MDI sued for trade dress infringement after its two utility
patents had expired on its chief product: a dual-spring road
sign. Defendant admitted it made a look-alike and claimed the
right to do so. Because the defendant’s signs were covered by
the expired patents, the Court held that they were
unprotectable as trade dress even if source-identifying in
nature. Two seemingly categorical rules:
– If features claimed to be part of a trade dress are covered
by expired utility patents, the plaintiff has a heavy burden
of showing that the features are merely ornamental,
incidental or an arbitrary aspect of the claimed invention
– If they are not merely ornamental, it does not matter if
the features are source identifying if the feature is
essential or affects the costs or quality of the product
The Restaurant Exception
In Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768
(1992), the Supreme Court held that a particular Tex Mex
restaurant appearance and décor was inherently
distinctive in the category of restaurant services. In WalMart, the Supreme Court distinguished Two Pesos, and
held that the décor of a restaurant is not product design,
but essentially product packaging, and thus that no proof
of secondary meaning is necessary for a building design
and décor that is inherently distinctive.
The upshot is that a building decor may be so unusual as
to qualify as one that is inherently distinctive, but a
product design may not.
An Eleventh Circuit Example
An illustrative case involving the interior design and
décor of a restaurant is Miller’s Ale House, Inc. v.
Boynton Carolina Ale House, LLC, 702 F.3d 1312 (11th
Cir. 2012). In that case, Miller’s Ale House claimed
that its competitor had adopted a trade dress that
was confusingly similar to Miller Ale House’s
unregistered trade dress
In considering whether summary judgment had
properly been granted against Miller’s Ale House, the
court applied the so-called Seabrook Test in
determining whether the décor and restaurant
design qualified as being inherently distinctive such
that the plaintiff need not prove secondary meaning.
The Seabrook Test:
1. Is the product packaging and design of
common basic shape or design, or is it unique
or unusual in a particular field?
2. Is the design a mere refinement of a
commonly-adopted and well-known form of
ornamentation for a particular class of goods
viewed by the public as a dress or
ornamentation for such goods.
Why Miller’s Ale House Failed
The court concluded in applying this test that
the design, shape and combination of
elements claimed by the plaintiff was not so
unique, unusual or unexpected that it could
be perceived automatically as an indicator of
origin and thus a trademark. It affirmed
summary judgment on that ground.
Seabrook Will Work For Product Design
Infringement
Miller’s Ale House also recognized, based on the
language in Wal-Mart, that the Seabrook test
may not be suitable for evaluating product
design cases in which secondary meaning must
always be established in order to establish
protection. Miller’s Ale House, 702 F.3d 1323,
citing Wal-Mart at 529 U.S. 213-14.
Proving The Necessary Secondary Meaning
• In a product design case, the first question is whether the design
qualifies as packaging or as a product. If the design qualifies as a
product, secondary meaning must be established.
• An illustrative case is Fedders Corp. v. Elite Classics, 268 F. Supp. 2d 1051
(S.D. Ill. 2003).
In that case the plaintiff, an air conditioning
manufacturer, claimed the defendant’s competing product was a virtual
copy of the plaintiff’s air conditioner and claimed trade dress in the
curved design on the decorative front of the air conditioner, described
sometimes as an undulating curve. The court held that the undulating
curve would not qualify as packaging, but rather product design.
• The court went on to note that the curve or undulating design was not
functional in the typical utilitarian sense, but it did serve the purpose of
making the air conditioner more aesthetically appealing. Because it was
designed for aesthetics, it qualified as nonfunctional under TrafFix. (The
Court noted that functionality is not the test since the component, if
functional, would not be protectable at all because there is no protection
for a functional component.)
• Is this protecting against confusion or merely hurting an innovator?
More On Proving Secondary Meaning
• To qualify as protectable trade dress in this
context, the plaintiff was required to show that in
the minds of the consuming product the primary
significance of the undulating curve on the line of
air conditioners in question “is to identify Fedders
as the maker.” 268 F. Supp. 2d at 1062. In order to
meet this burden, plaintiff had to establish through
direct consumer testimony, or consumer surveys,
or proof of length and manner of use, length and
manner of advertising and sales and other factors
such as intentional copying. Id.
In re Joanne Slokevage
441 F.3d 957 (Fed. Cir. 2006)
In this case, a trade mark applicant was refused registration of a product
configuration consisting of a foldable fold of the area of the rear pockets
on a pair of pants. The Trademark Trial and Appeals Board determined
the trade dress was product design, and thus did not qualify as inherently
distinctive under Wal-Mart.
• “Just as the product design in Wal-Mart consisted of certain design
features featured on clothing, Slokevage’s trade dress similarly
consisted of design features, holes and flaps, featured in clothing,
revealing the similarity between the two types of design.”
• As in Wal-Mart the product design serves the purpose of making the
product itself more appealing and is thus aesthetic in its basic function.
Thus consumers may purchase the clothing for its utilitarian purpose or
because they find the appearance of the garment desirable. And
consistent with the opinion of Wal-Mart, in such cases where the
purchase implicates a utilitarian or aesthetic purpose, rather than a
source identifying function, it is appropriate to require proof of
acquired distinctiveness. 441 F.3d at 962.
The Role of Functionality In Trade Dress Infringement
• “The person who asserts trade dress protection has the
burden of proving that the matter sought to be protected is
not functional.” (Section 42(a)(3).
• Non-functionality is the logical threshold factor.
• Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC., 369 F.3d
1197, 1202 (11th Cir. 2004) (remarking that because plaintiff
had not “met its burden of establishing the non-functionality
of its product design, we decline to address the other two
elements of the claim.”)
• The court further concluded that the defendant’s “usurpation
of DDI’s business may have been immoral or unethical” but it
was “not illegal.” (The company went bankrupt).
Functionality/Nonfunctionality Question
It is essential to a claim of trade dress infringement that
the plaintiff establish that the trade dress is primarily
nonfunctional. Epic Metals Corp. v. Souliere, 99 F.3d 1034
(11th Cir. 1996). The issue of functionality is a question of
fact.
In general, if a design “enables a product to operate or
improves on a substitute design in some way (such as by
making the product cheaper, faster, lighter or stronger),
then the design cannot be trademarked.” Jay Franco &
Sons, Inc. v. Franek, 615 F.3d 855, 857 (7th Cir. 2010)
(Judge Easterbrook).
Supreme Court Test for Functionality
“In general terms, a product feature is functional if it is
essential to the use or purpose of the article or if it affects
the cost or quality of the article.” Inwood Laboratories, Inc. v.
Ives Laboratories, Inc., 456 U.S. 844, n. 10 (1982). This has
become known as the “traditional test.”
In the Qualitex decision, however, the Supreme Court also
stated that a feature is functional if “exclusive use of the
feature would put competitors at a significant
nonreputational-related disadvantage. Qualitex, 514 U.S. 159
(1995). This is sometimes called the “competitive necessity
test.”
If the design in question is functional under the traditional
test, “there is no need to proceed further to consider if there
is a competitive necessity for the feature.” Qualitext, 514 U.S.
at 165.
The customary traditional test factors:
1. The existence of a utility patent, which
discloses the utilitarian advantages of the
design.
2. Advertising or promoting the utilitarian
advantages of the design
3. The existence of alternative designs which
perform the utility function as well.
4. Whether or not the design results from cheap
or a superior method of manufacturing the
article (In re Morton-Norwich Products, Inc.,
671 F.2d 1332 (C.C.P.A. 1982)).
Other Rules for Determining Functional vs.
Nonfunctional Features
Lanham Act Section 2(e), 15 U.S.C. §1091(c),
forbids registration of any matter that is as a
whole functional.
This statute requires a
consideration of the functionality of a
combination of parts as opposed to any
particular part in the claim combination.
A design patent may actually support the
existence of nonfunctional trade dress attributes
in the product design, since the design patent is
granted only for nonfunctional designs.
Illustrative Cases in the 11th Circuit
• Epic Metals: In this case the plaintiff claimed
a trade dress in a nonpatented sheet steel
deck profile involving a dovetail configuration
claimed to be primarily nonfunctional. The
court noted the following factors were
important in determining whether the
dovetail configuration qualified as primarily
nonfunctional:
Epic Metals
A. Does the dovetail configuration affect plaintiff’s cost
or quality?
B. Would free competition be hindered from protection
of the dovetail configuration, because there are only
a limited number of other options available?
The Court concluded that the claimed trade dress was
functional and had been admitted as such by the plaintiff.
Particularly compelling were advertisements the plaintiff
used to promote the functional aspects of its deck profile
and geometric configurations.
Dynamic Designs Distrib. v. Nalin Mfg., LLC
2014 U.S. Dist. LEXIS 54217 (M.D. Fla. April 18, 2014)
Plaintiff claimed a trade dress in an after market
speaker adapter made of steel having rounded
corners and featuring holes for mounting, including
hardware for installation.
The court cited Qualitex: the functionality doctrine
prevents trademark law which seeks to promote
competition by protecting a firm’s reputation, from
instead inhibiting legitimate competition by
allowing a producer to control a useful product
feature. Id. at *10, quoting from Qualitex at 514
U.S. 164.
Pride Family Brands, Inc. v. Carl’s Patio West, Inc.,
2014 U.S. Dist. LEXIS 11799
(S.D. Fla. Jan. 29, 2014)
Finding as functional the claimed
elements of patio furniture in
rejecting any emphasis on the
copying of those elements by the
Defendant.
Competitive Necessity and Aesthetic Functionality
•
Qualitex:
– Recognized aesthetic functionality and quoted from the Restatement
(Third) of Unfair Competition: a design is functional when its aesthetic
value confers a “ a significant benefit that cannot be duplicated by
the use of alternative designs.” 514 U.S.170
– The Court also notes that “lower courts have permitted competitors to
copy the green color of farm machinery (because customers wanted
their farm equipment to match) and have barred the use of black as a
trademark on outboard boat motors (because black has the special
functional attributes of decreasing the apparent size of the motor and
ensuring compatibility with many different boat colors).” Id.
– Under this approach a design is aesthetically functional where legal
protection of the design would significantly hinder competitors from
competing in the relevant product market or submarket because of
its aesthetic value
Dippin’ Dots and Aesthetic Functionality in the 11th Cir.
•
The Court held that the color, shape, and size of Dippin’ dots
were aesthetic functions “that easily satisfy the competitive
necessity test because precluding competitors . . .from
copying any of these aspects of Dippin’ dots would eliminate
all competitors in the flash-frozen ice cream market, which
would be the ultimate non-reputation-related disadvantage.
See TrafFix, 532 U.S. at 32-33.” Dippin Dots, 369 F.3d 1204 n.
7.
• The Court held that the relevant market was the plaintiff’s
particular market as well: the defendants “wants to compete
in the flash-frozen ice cream business, which is in a different
market from more traditional forms of ice cream.” Id.
What Are the Limits to The Aesthetic Functionality Defense?
•
In Dippin’ Dots, there is an assumption that the innovator in a
new product “market” may be required to accommodate
direct competition in that market, if there is no patent
protection for its design and if the product incorporates
elements that confer on the innovator a non-reputationrelated advantage, such as using colors associated with flavors
or sizes or shapes which are naturally more pleasing to the
consumer or have superior characteristics.
• There are, however, limits to this argument:
– “If the feature or combination of features in the copied design merely
enable the “second-comer” to “market his product more effectively, it
is entitled to protection.” But not so if the feature must be slavishly
copied in order for competition to be possible at all. OraLabs, Inc. v.
The Kind Grp., LLC, 2015 U.S. Dist. LEXIS 98246 (D. Colo. July 28, 2015).
Limits to Aesthetic Functionality Continued
• Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding,
Inc., 696 F.3d 206, 222(2d Cir. 2012): If the trade dress
incorporates distinctive and arbitrary arrangements of
predominantly ornamental features that do not hinder
potential competitors from entering the same market with
differently dressed versions of the product, then they are nonfunctional and eligible for protection.
• Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 519 (10th Cir.
1987): Determining whether a design is aesthetically
functional rests on “whether alternative appealing designs or
presentations of the product can be developed.” (Also noting
the need to protect from monopolizing designs while also
“protecting a producer who takes the initiative” to innovate).
An Evolving Split in the Circuits On Aesthetic Functionality
• TrafFix can be interpreted as eliminating the existence of alternatives in
the functionality determination. Compare Jay Franco & Sons, Inc. v.
Franek, 615 F.3d 855, 857 (7th Cir. 2010) (trade dress is functional even if
there are alternative designs if the consumer “would pay to have it rather
than be indifferent toward or pay to avoid it”) with Valu Eng’g, Inc. v.
Rexnord Corp., 278 F.3d 1268, 1276 (Fed. Cir. 2002) and McAirlaids, Inc. v.
Kimberly-Clark Corp., 756 F.3d 307, 312 (4th Cir. 2014) availability of
alternative designs remains a legitimate source of evidence for
determining if a feature is functional).
• It is unclear where the Eleventh Circuit stands on this issue after Dippin’
Dots. See Dippin Dots, 369 F.3d 1203-04; R. Bone, Trademark Functionality
Reexamined, 7 J. of Legal Analysis 183, 218 (Spring 2015) (lumping Dippin’
into the line of cases rejecting the continued viability of evidence of
acceptable alternative designs).
Some Illustrative Examples From Zamperla v. Being Jiuhua
Amusement Rides, et al
• Most of the designs in question are covered by expired or
issued utility patents or in some cases design patents
• On motion for default, the Court treated the matters as
involving knock off or look alike designs
• The merits of the claim were never reached since the defaults
were upheld even though the judgment for damages was
vacated
From U.S. Patent 5,791,998
From U.S. Patent 6,022,276
Title
From Vekoma’s U.S. Patent Number
8,057,317
Whirlwind Cavalier (BJARM)
Title