Trade Dress can be very valuable – it protects product and packaging designs as a trademark. But, one limitation is that a design cannot be “functional.”
Designs that make the product work better are functional and hence cannot be protected by trade dress.
A recent Seventh Circuit case, Bodum USA Inc. v. A Top New Casting Inc. (7th Cir. 2019), provides important guidance in determining whether a claimed trade dress is functional. In assessing whether the design is functional, the Seventh Circuit held that the focus must be on more than just the inclusion of functional components in the design. Rather, the functionality analysis has to focus on whether the specific appearance of each design feature enhances the product’s function or is merely an incidental ornamental feature.
The Bodum decision favors trade dress protection, and represents greater opportunity for owners of well-established and distinctive designs to protect them under trade dress law.
“Trade dress” is a species of trademark law. It provides that the design of a product or its packaging can be protected as the owner’s trademark and others can be excluded from marketing similarly looking products.
Federal courts, including the Supreme Court, have long been concerned that trade dress rights (which potentially can last forever) would supplant patent and copyright law, which have more rigorous requirements, and would inhibit competition. So, several legal requirements have been added to any claim of trade dress.
One such requirement is that the design not be “functional.” The Lanham Act requires that the owner of an unregistered trade dress bear the burden of proving that the asserted trade dress is not functional. 15 U.S.C. 1125(a)(3). And, even where a registered trade dress becomes incontestable once it has been registered for more than five years, it can still be challenged, and the registration cancelled, on the basis that it is functional. 15 U.S.C. 1064(3).
A “functional” feature is one that either: (i) is essential to the use or purpose of the article or affects the article’s cost or quality; or (ii) in cases involving aesthetic features, the exclusive use of which would put competitors at a significant non-reputation related disadvantage. See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001).
While trade dress usually protects the “overall look” of a product, federal courts have required that a party claiming trade dress rights articulate the specific design elements that make up its trade dress and give it a distinctive look.
This is best understood by considering the facts of the case.
Bodum involved a design for a “French press coffeemaker,” which it call the “Chambord.”
In Bodum the manufacturer claimed that its trade dress included: “the metal band surrounding the carafe that forms support feet and the handle attachment, the domed lid, the rounded knob atop the plunger, and the C-shaped handle.”
A Top and its expert argued that the design features claimed as the trade dress were important to the function of the coffeemaker. But the Seventh Circuit rejected that approach. Rather, it emphasized that the court must review the specific appearance of each claimed design element and assess whether that appearance improved the product’s function.
For example, the trade dress claimed for the coffeemaker had a C-shaped handle. Having a handle was certainly important for the product functioning, but Bodum claimed a specific shape – the C-shape – as part of its trade dress. That specific shape was not needed for the coffeemaker to work well.
Similarly, while the use of a French press coffeemaker would certainly be enhanced by having a lid, feet, and knob, none of these needed to appear as they did in Bodum’s product to make it work. As the Seventh Circuit explained:
Bodum does not claim that any French press coffeemaker with a handle, a domed top, or metal around the carafe infringes on its trade dress. Rather, it is the overall appearance of [Defendant] A Top’s SterlingPro, which has the same shaped handle, the same domed lid, the same shaped feet, the same rounded knob, and the same shaped metal frame as the Chambord, that Bodum objects to. Thus, to establish it has a valid trade dress, Bodum did not have to prove that something like a handle does not serve any function. It merely needed to prove that preventing competitors from copying the Chambord's particular design would not significantly disadvantage them from producing a competitive and cost-efficient French press coffeemaker.
At trial, Bodum elicited testimony from the defendant’s own expert that confirmed that, under this focused standard, the specific appearance of these features did not give any particular advantage to the product.
Trade dress, if properly developed, can be a very valuable form of intellectual property. Bodum supplies important guidance to companies seeking to assert such rights. When formulating a claim of trade dress, one should focus on the the specific appearance of the design elements, as Bodum did, claiming a specific shape for the handle, lid, feet, and knobs.
And, it would be helpful to consider whether a different appearance (e.g., a different handle shape) would work as well. If one can argue, as was done in Bodum, that there are several alternative handle designs that work as well, then that would go a long way to convincing a court that the specific shape and appearance claimed as the trade dress is not functional.