By Cheryl Beise, J.D.
Trade dress registrations covering the shape and color scheme of chicken feeder products were primarily functional and not protectable.
The federal district court in New Bern, North Carolina, correctly concluded as a matter of law that two registered product configuration marks covering the three-dimensional design and color scheme for a poultry feeder owned by CTB, Inc., were functional and incapable of trade dress protection, the U.S. Court of Appeals in Richmond has ruled. The design of the octagonal feeder—consisting of an L-shaped spokes on the top half and a feeder pan on the bottom half—primarily served the functional purpose of permitting birds to readily enter and exit the feeder. The color red used on the feeder pan and the shiny gray color used on the spokes also served the functional purpose of attracting chickens to the feeder. The district court’s grant of summary judgment in favor of CTB competitor Hog Slat, Inc., was affirmed (CTB, Inc. v. Hog Slat, Inc., March 27, 2020, Wynn, J.).
CTB, Inc., and Hog Slat, Inc., manufacture and sell pan feeders for use on chicken farms.
CTB’s poultry feeder product. In 1990, CTB obtained U.S. Patent No. 5,092,274, titled "Poultry Feeder" (the ’274 Patent). That patent claimed a novel structure consisting of three portions: a bottom pan, from which chickens eat; a top grill, containing spokes that separate feeding birds; and a center cone, which may be adjusted to regulate the amount of feed distributed from a central feed line to the pan.
After the ’274 Patent expired in 2010, CTB applied to register a three-dimensional product configuration mark for the octagonal shape of its feeders ("the Configuration Trade Dress"). CTB also sought trade dress protection for the shape of the Configuration Trade Dress in combination with the color scheme used on CTB’s feeders: a red pan with gray spokes ("the Color Trade Dress"). The USPTO initially rejected the Configuration Trade Dress and the Color Trade Dress applications as claiming functional matter, but ultimately approved the registrations for publication on the Principal Register and the Supplemental Register, respectively.
In 2003, CTB also obtained U.S. Patent No. 6,571,732, titled "Reflective Particle Feeder" (the ’732 Patent), which discloses "a plastic non-reflective feeder that is integrally formed with a plurality of reflective particles that attract the attention of the animals … enabling them to find and eat the food in the feeder.
It was undisputed that in 2009, Hog Slat began copying CTB’s C2 Plus feeder. CTB filed suit against Hog Slat in 2014, asserting claims for trademark infringement under the Lanham Act and North Carolina law and related state law claims. The district court granted summary judgment to Hog Slat on the trademark infringement claims, finding that both the octagonal profile of the Configuration Trade Dress and the red-and-gray coloring of the Color Trade Dress were dictated by functional considerations of product design, and thus unprotectable under federal or common law. CTB appealed.
Product design trade dress. Unlike patents, which grant a time-limited monopoly, trade dress protection cannot extend to product features that are functional because trade dress protection is intended to promote competition, the appeals court said. In order to be protectable, trade dress must be primarily non-functional.
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." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32 (2001). Four factors inform a functionality assessment: (1) the existence of utility patents disclosing the utilitarian advantages of a design; (2) advertising focusing on the utilitarian advantages of a design; (3) the availability of functionally equivalent alternative designs which competitors may use; and (4) facts indicating that a design results in a comparatively simple or cheap method of manufacturing the product. In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-41 (C.C.P.A. 1982).
Configuration Trade Dress claim. Regarding its Configuration Trade Dress, CTB argued the "generally octagonal shape" of its feeder "serves absolutely no function—i.e., it is purely arbitrary or incidental," and thus qualified for trade dress protection. Because the Configuration Trade Dress was included on the principal trademark register, it was presumed to be non-functional.
The court first considered whether the top half of the octagonal profile, which was formed by the feeder’s spokes, was functional. Based on CTB’s expired utility patent and its advertisements describing the functional benefits of the spoke shape, the court concluded that the L-shaped spokes of the grill design primarily serve the functional purpose of permitting birds that enter the pan to readily exit. The specification and claims of the ’274 Patent teach the functional advantages of the L-shaped spokes, "making it easier for birds and animals to climb out of the feeder than to climb in." CTB’s marketing materials touted its feeders’ "[c]hick-friendly 14-spoke grill design [that] lets birds exit pans easily."
CTB nevertheless argued that the flattened profile of the upper spoke section was an arbitrary and incidental element not claimed in the ’274 Patent or its advertising materials. The court disagreed. "[T]he profile created by Plaintiff’s L-shaped spokes, whether a flattened octagon, a square, a rectangle, or another shape, is still dictated by a key functional consideration: creating a greater volume within the spokes to allow chickens that enter the pan to readily exit," the court said. CTB conceded that the profile of the feeder in the ’274 Patent is "virtually identical" to that of the Configuration Trade Dress.
CTB also urged the court to consider various competitor feeders in the record. However, consideration of alternatives in this case was foreclosed by the Supreme Court’s admonishment in TrafFix not to speculate about other design possibilities. The existence of alternative designs did not render CTB’s engineering-driven L-shaped spoke design arbitrary or non-functional, the court said.
The court next considered the bottom half of the octagonal profile, which was formed by the feeder pan. John Cole, CTB’s corporate primary feeder designer and inventor of the ’274 patent, testified that the vertical portion of the pan wall discourages birds from bodily entering the feeder assembly while also not being so high that young chicks cannot access feed. He also testified that the rounded pan bottom assists in containing and presenting feed and is essential to the feeder’s operation. There was no dispute that the bottom half of the Configuration Trade Dress—the pan profile—was functional, according to the court.
Finally, CTB offered no reason why the combination of the functional upper spoke design and the feeder pan design rendered the design as a whole nonfunctional. "The overall feeder profile thus results from a simple and utility-driven amalgamation of its two functional halves," the court said.
Color Trade Dress claim. The court next evaluated whether the red pan and gray spokes of the Color Trade Dress were dictated by functional considerations. Because the Color Trade Dress was registered on supplemental trademark register, it was presumed functional, and CTB bore the burden of proving non-functionality.
CTB’s utility patents and witness testimony established that the red pan and gray spokes served the functional purpose of attracting chickens to feed. The ’732 Patent stated, "it is relatively well known within the agricultural industry that adult turkeys and chickens are attracted to the color red and, therefore, many adult turkey and chicken feeding trays are now colored red in order to entice the adult turkeys and chickens to move toward the red feeding tray. " Cole also testified: "Red will attract birds" and "I use red because it’s a good color and it attracts birds." CTB cited later testimony of its primary expert witness as proof that a material factual dispute existed regarding whether chickens are primarily attracted to red and gray materials. However, CTB could not "now pivot and claim red does not perform that function in order to assert its trade dress," the court said. The court concluded that color red served a functional purpose.
The court lastly found that the color gray used the spokes of the feeder also served a functional purpose. The ’732 patent and CTB’s own expert testified that poultry are attracted to reflective particles and metallic items in their environment. The district court correctly observed that trademark rights flow from prior use and that CTB’s "claim of trade dress infringement must rest on the actual color configuration of its feeders in the market." While CTB’s trade dress registration only covered the color "gray," CTB did not assert that the gray color of its feeders did not contain any shiny elements capable of attracting poultry. The appeals court concluded that the coloring of the spokes served the functional purpose of attracting chickens to the feeder. CTB provided no evidence to show that the combination of red and gray coloring provided an arbitrary, non-functional, or ornamental element not present in the individual halves of the feeder color scheme. Accordingly, there was no factual dispute that the combination of the red pan and gray spokes was primarily functional and not protectable as a trademark.
This case is No. 18-2107.
Attorneys: Cynthia M. Filipovich (Clark Hill PLC) for CTB, Inc. Robert Charles Van Arnam (Williams Mullen) for Hog Slat, Inc.
Companies: CTB, Inc.; Hog Slat, Inc.
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