Seventh Circuit Holds Dopp Kit Design is Functional, Not Protectable Trade Dress

Seventh Circuit Holds Dopp Kit Design is Functional, Not Protectable Trade Dress

February 3, 2017

by Jerry Glover

The U.S. Court of Appeals for the Seventh Circuit (which sits in Chicago) has determined that the design of a small bag, similar to a man’s Dopp Kit, is functional and not protected by trade dress law. Arlington Specialties, Inc. V. Urban Arid, Inc., 2017 WL 382330 (7th Cir. January 27, 2017). The plaintiff, Arlington Specialties, sold personal care kits in the bag. But that bag was copied by defendant, Urban Aid. The trial record showed the Urban Aid even had a picture of the plaintiff’s bag to work from in creating its bag. So the plaintiff sued for trade dress infringement under the federal trademark act (the Lanham Act). Even though the defendant copied the bag, the trial court found for defendant claiming the design and shape of the bag were functional. See the picture below comparing the two bags.

Plaintiff’s bag (left); Urban Aid’s bag (right)

On appeal, the appeals court noted that the federal trademark act extends protection to trade dress of a product (the design or packaging) since the act states that a cause of action is available against any person who uses any ‘word, term, name, symbol or devise which is likely to cause confusion as to the goods or services’ source.” 15 U,.S.C. Sec. 11125(a)(1)(A). This federal protection, however, extends only to designs/packaging which is so distinctive as to identify the manufacturer or source” of the product. If a particular product’s design or packaging meets this standard then others cannot use it in a manner likely to cause confusion as to its origin. If a product meets this standard its design/packaging protection can, theoretically, last forever.

But not all production designs/packaging will meet this standard. Many fall into the category of “functional” products and cannot claim trade dress protection. The doctrine of functionality stands to limit trade dress protection by failing to reward manufacturers for their innovation in creating a device—that is the province of patent law which limits how long it can be protected from copying by others. Here, the plaintiff had the burden of showing that its bag design was not functional.

What did the plaintiff have to do to prove that? The plaintiff was required to use a two-part functionality test endorsed by the U.S. Supreme Court in TrafFix Devices Inc. v. Marketing Displays, Inc., 532 U.S. 23 (20010. The first part of the test notes that a production design is functional if it is essential to the use or purpose of the article or it affects the cost or quality of the article. Even if the product design does not meet this part of the test, it can still be functional if its exclusive use by the plaintiff would put competitors, like the defendant, at a significant non-reputation-related disadvantage (i.e., competitive necessity).

The plaintiff in this case argued that the second test applies only if competitors “must” be able to use the trade dress to compete. But the Seventh Circuit disagreed noting that the U.S. Supreme Court had explained that competitive necessity was not the test. Rather the second part of the functionality test is whether the production feature/design affects the cost or quality of the device. The appeals court noted that in past cases it had also rejected a requirement that a product design must be the only way to do things holding that the designed needed only to represent one of several solutions to a problem.

Here are the parts of the bag design the plaintiff claimed were protected by trade dress: (1) the bag’s cuboidal shape; (2) the bag’s softness; (3) the zipper’s location on the bag; (4) the folded and tucked corners; and (5) the seam halfway up the bag’s sides. But the court held that all of these elements determine the bag’s shape, its degree of rigidity and how hard or easy it is to access its contents—functional aspects of the product not protected by trade dress.

Finally, the plaintiff argued that alternative designs that existed in the marketplace for this type of bag were better than the plaintiff’s and therefore more functional than the plaintiff’s design. The Seventh Circuit rejected this argument noting that the right question is whether the design feature affects production quality or cost or is merely ornamental. Since the court believed the plaintiff’s design elements affected the product’s quality, it need not consider the availability of alternative designs used by others.

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