Federal Courts of Appeal Cases on Trade Dress Infringement

DayCab Co. v Prairie Tech LLC, 67 F.4th 837 (6th Cir. 2023). The court reversed summary judgment for defendant. Both parties sold kits to convert truck cabs. The district court held the design was functional. The appellate court held, “A product design 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 Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982). “Evidence that a product design is purely ‘ornamental, incidental, or arbitrary’ can be evidence of an absence of functionality.” See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 30 The court also dealt with alternative designs. Citing Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 416 (6th Cir. 2006), defendant argued once “a trade dress is found to be functional, the mere fact that there are other non-infringing designs which would serve the same functional purpose is no defense to functionality.” But plaintiff argued the design serves no functional purpose at all. The court held alternative designs are relevant to functionality because they support plaintiff’s contention that the kit was designed with aesthetic intent so “its resulting features are ornamental rather than functional.” The court held there we too many issues of fact and reversed summary judgment.

Pocket Plus, LLC v. Pike Brands, LLC, 53 F.4th 425 (8th Cir. 2022). The court reviewed summary judgment for the defendant that the trade dress was functional. The product is a rectangular portable pouch, which is taller than it is wide. Plaintiff’s definition of its trade dress included information how the product is worn or used, but the court held it is not part of the “tangible features of that product.” The pouch’s purpose is to carry objects, including beverage bottles and cellphones. The court reasoned the product was functional because “A pouch’s shape (vertical or horizontal), the ability to open the pouch (pull-tab size and positioning), and how the pouch is worn (around the waist or attached to clothing) all combine to affect its suitability for carrying objects. None of these features are “arbitrary flourish[es].” The court also awarded defendant its exceptional-case attorney fees, but it decreased the amount by about 75% because plaintiff only redefined its trade dress near the end of the case, and defendant’s conduct in threatening to move for sanctions was unreasonable.

SoClean, Inc. v. Sunset Healthcare Solutions, Inc., 52 F.4th 1363 (Fed. Cir. 2022). This is a review of the grant of a preliminary injunction in a combined patent–trade dress case. Plaintiff registered the trade dress of the product, a filter for a CPAP machine. Because of the registration, defendant had to prove functionality. Although parts of the product may have been functional, the court held the overall design was not functional. The preliminary injunction was limited, however, ordering “Sunset to clearly associate its online marketing and sales … with the Sunset brand.” The court of appeals approved.

P & P Imports LLC v. Johnson Enterp., LLC, 46 F.4th 953 (9th Cir. 2022). P&P sold a giant “Connect 4” game. It did not originate the game, which had been sold for years in a normal size.

Defendant copied the giant game. The district court granted summary judgment holding plaintiff had insufficient sales to have secondary meaning, and the public did not know P&P was the seller. The Ninth Circuit reversed. The source of the goods to the public can be anonymous. See Bentley v. Sunset House Distrib. Corp., 359 F.2d 140, 147 (9th Cir. 1966) (“To show that some secondary meaning existed, it was necessary for Bentley to establish that the public … regard[s] its product as emanating … from a single, though anonymous maker.”). The court also found secondary meaning because of defendant’s copying. “‘[P]roof of copying strongly supports an inference of secondary meaning. That is because competitors generally copy ‘to realize upon a secondary meaning that is in existence.’” 46 F.4th at 961 (citations omitted).

Beatriz Ball, L.L.C. v. Barbagallo Company, L.L.C., 40 F.4th 308 (5th Cir. 2022). Plaintiff’s product was tableware. The district court held for defendant after a bench trial after finding lack of secondary meaning for the trade dress, but the Fifth Circuit reversed. It applied these factors to determine secondary meaning.

(1) length and manner of use of the mark or trade dress, (2) volume of sales, (3) amount and manner of advertising, (4) nature of use of the mark or trade dress in newspapers and magazines, (5) consumer survey evidence, (6) direct consumer testimony, and (7) the defendant’s intent in copying the trade dress.

The remand requires the district court to reconsider these factors based on the appellate court’s discussion of them.