By Cheryl Beise, J.D.
The federal district court in Los Angeles erred by deciding on summary judgment that a bright green color used by Moldex-Metric on disposable foam ear plugs served an essential functional purpose, and thus was not protectable trade dress, the U.S. Court of Appeals in San Francisco has held. There remained a dispute of material fact as to whether the bright green color was functional in view of evidence that alternative colors could be used to make ear plugs visible. This was the second time the appeals court reversed the district court’s grant of summary to the defendant on functionality grounds. On remand, the district court was directed to consider secondary meaning and the likelihood of confusion, and if necessary go to trial (Moldex-Metric, Inc. v. McKeon Products, Inc., June 5, 2018, Piersol, L.).
Since 1982, Moldex-Metric, Inc. ("Moldex") has used a bright green color, described as fluorescent green-yellow or fluorescent lime, (the "Green Color Mark") to "identify its earplugs and to distinguish its earplug products from those made and sold by others." Moldex does not have a registration for the Green Color Mark. After McKeon Products, Inc. ("McKeon") began selling ear plugs in a bright green color in 2009, Moldex filed suit, asserting claims for trademark infringement, dilution, and unfair competition.
The district court granted summary judgment to McKeon, concluding that Moldex failed to raise a triable issue "as to any of the functionality factors" set forth in Disc Golf Association, Inc. v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1998). In March 2016, the Ninth Circuit reversed that decision, finding that the district court erred by "rigidly applying" the Disc Golf factors and by not properly addressing the element of "essentiality" when it analyzed the functionality of the Green Color Mark. Expressing doubt that summary judgment on functionality grounds was appropriate, the appeals court remanded for the district court to assess functionality in the first instance in light of Qualitex Co. v. Jacobsen Products, Co., 514 U.S. 159 (1995). The Ninth Circuit did not fault the district court for overlooking Qualitex, "as Ninth Circuit precedent is less than clear in this area."
Following remand, the district court again granted summary judgment in favor of McKeon on functionality grounds. The court determined that the visibility of Moldex’s bright green color was "essential" to the use or purpose of the ear plugs—to increase visibility and facilitate safety compliance checks—and therefore was functional. Moldex appealed.
Trade dress functionality. An unregistered product design, including color, may be protected under the Lanham Act, provided that the claimed trade dress is not functional. The Lanham Act does not define "functionality," but the Supreme Court in its seminal case on functionality explained that "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, 850 n.10 (1982). In 1995, the Supreme Court expanded on Inwood, holdingthat color may be the subject of trademark protection because "sometimes color is not essential to a product’s use or purpose and does not affect cost or quality." Qualitex Co. v. Jacobsen Products, Co., 514 U.S. 159, 165 (1995). The Court added that a functional feature is one the "exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage." In 2001, the Supreme Court reaffirmed the Inwood formulation as the main test to determine functionality. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001).
Moldex’s Green Color mark. The district court found that Moldex’s green color was functional under Inwood-TrafFix because the color was essential to the operation of the product. The court did not consider evidence of alternative colors that could be used on ear plugs to perform the same function of visibility as Moldex’s bright green color.
Moldex argued that the district court erred in interpreting TrafFix to mean that the availability of alternative designs does not need not be considered in cases where the trade dress is functional under Inwood. The Ninth Circuit agreed. While there has been some question whether consideration of alternative designs is required after TrafFix, the Ninth Circuit has continued to consider the existence or nonexistence of alternative designs as probative evidence of functionality or nonfunctionality. Alternative designs are particularly probative of functionality in a case involving color, the court said. In Qualitex, the Supreme Court proposed that where an aesthetic feature like color serves a function, courts should examine whether the exclusive use of that feature would interfere with competition in order to determine whether it is eligible for trademark protection. Qualitex, 514 U.S. at 166.
"Under Qualitex, TrafFix, and our court’s own precedent, evidence of alternative colors should be considered in deciding functionality of the mark in this case," the court said. Moldex’s expert testified that numerous color shades were equally or more visible than its bright green color and would result in the same function of visibility during compliance checks. Because a reasonable jury could conclude that the utilitarian advantage of Moldex’s green color was outweighed by evidence of alternative colors and that trademark protection of the color would not impose a significant non-reputation-related competitive disadvantage, summary judgment on functionality was inappropriate.
The panel concluded that there remained a dispute of material fact as to whether Moldex’s bright green color was functional. The district court’s order granting summary judgment to McKeon was vacated and the case remand for consideration of McKeon’s other arguments that Moldex’s green color lacked secondary meaning and that there was no likelihood of confusion, and then if necessary go to trial.
The case is No. 16-55548.
Attorneys: Sanford I. Weisburst (Quinn Emanuel Urquhart & Sullivan LLP) for Moldex-Metric, Inc. Steven M. Weinberg (Holmes Weinberg PC) and Robert L. Meylan (Meylan Davitt Jain Arevian & Kim LLP) for McKeon Products, Inc.
Companies: Moldex-Metric, Inc.; McKeon Products, Inc.
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