By John W. Scanlan, J.D.
The district court should have applied the Louboutin test for functionality when considering whether a dental adhesive mixing system’s color scheme was entitled to trade dress protection.
The use of colors on mixing tips manufactured by a company that makes a system for mixing adhesives for dental applications was functional because it aided users in matching the tips to the appropriate cartridges, the U.S. Court of Appeals for the Second Circuit has held in reversing and remanding a district court’s decision finding that the manufacturer’s color scheme was entitled to trade dress protection. As a result, it was not necessary to consider the competitor’s appeals of the lower court’s rulings on the counterfeiting and infringement claims (Sulzer Mixpac AG v. A&N Trading Co., February 18, 2021, Pooler, R.).
Sulzer Mixpac is a manufacturer of systems that mix adhesives for dental applications consisting of a caulking gun, a cartridge, and a mixing tip. These systems are generally sold to dental material manufacturers that fill the cartridges with their adhesive materials and then sell them to distributors. From 2010 to 2017, Mixpac obtained 12 United States trademark registrations for certain colors for mixing tips and helixes, some on the principal register and others on the supplemental register for yellow, teal, blue, pink, purple, and brown (referred to as the "Candy Colors"). A&N Trading Company is a competitor to Mixpac; in 2009, Mixpac obtained a default judgment for trademark and trade dress infringement as well as a permanent injunction against A&N. In 2016, A&N introduced its own mixing tips with clear caps and colored helixes with colors that were identical or nearly so to Mixpac’s mixing tips.
Mixpac then brought claims under the Lanham Act for trademark infringement, trademark counterfeiting, and false designation of origin, as well as state law claims for unfair competition and infringement of common law marks; it also asked the court to hold A&N in contempt for violation of the earlier injunction. A&N filed counterclaims alleging that Mixpac’s use of the Candy Colors for its mixing tips was functional and, therefore, asked for its trademark registrations to be canceled. Evidence presented at trial indicated that Mixpac manufactured the tips in different colors for different-sized tips so that they could be easily matched with cartridges in the same colors, and that materials manufacturers relied upon the color-coding system for their product instructions.
The district court determined that the Candy Colors were non-functional because their use added to the cost of manufacturing the tips and other companies in the industry used different colors or no colors for their mixing tips and other products. While the court did not address the contempt claim, it found in favor of Mixpac on all other claims, found that A&N had not proven its counterclaims, and issued a permanent injunction against A&N. A&N appealed.
Functionality. The Second Circuit concluded that the district court had erred because it had not applied the Second Circuit’s test for determining whether a trade dress is functional from Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206, 219 3 (2d Cir. 2012). Under the Louboutin test, a court examines whether the design feature at issue is essential to the use or purpose of the product or affects its cost or quality; if the product is not found functional under these prongs, the court then examines whether the feature has a significant effect on competition. The district court’s findings that Mixpac’s use of colors added to its costs and that some competitors used different or no colors were not clearly erroneous, but its analysis was incomplete because it did not consider whether the colors affected the tips’ quality. The evidence showed that each color was associated with a different-sized tip and aided users in matching the tip to the appropriate cartridge, which improved their functionality. Although the Second Circuit found that the evidence did not support A&N’s argument that the color coding was essential to their use, it also found that Mixpac did not refute A&N’s argument that the color coding affected the quality of the tips because it aided users. As a result, the Second Circuit found that the colors were functional and the trade dress was not protectable.
Because the appellate court determined that Mixpac’s color system was functional, it was unnecessary to address A&N’s arguments regarding the district court’s rulings on the counterfeiting and infringement claims. It also declined to consider the contempt claim because the district court had not considered it. The lower court was directed to address contempt on remand.
This case is No. 19-2951.
Attorneys: Michael T. Murphy (Global IP Counselors, LLP) for Sulzer Mixpac AG. Jack A. Gordon (Kent, Beatty & Gordon, LLP) for A&N Trading Co. and A&N Trading Co., Ltd.
Companies: Sulzer Mixpac AG; A&N Trading Co.; A&N Trading Co., Ltd.
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