No Protection for Wholly Functional Trade Dress

Posted on December 21, 2009 by R. David Donoghue

Minemyer v. B-Roc Reps., Inc., No. 07 C 1763, Slip Op. (N.D. Ill. Oct. 27, 2009), (Cole, Mag. J.). 

Judge Cole granted defendants' motion for summary judgment regarding plaintiff's Lanham Act trade dress and related state law claims. Plaintiff alleged that defendants infringed his trade dress in certain plastic pipe couplers. The trade dress consisted of the coupler's length, diameter, internal lead-in taper, flutes, arrows, the solid reinforced area between the flutes and end taper, and the base coloring of the material. But the Court held that plaintiff admitted that each element of his alleged trade dress was functional. Of particular note, the coupler's color was dictated by the parties' customers. And the flutes were the subject of a utility patent held by plaintiff. The fact that the flutes could have been designed using another shape did not matter. The Court held that once an element is functional, you need not consider whether there are other ways to obtain the function. 

Although the case was resolved on functionality grounds, the Court also considered plaintiff's secondary meaning arguments. But plaintiff provided no direct evidence of secondary meaning. Instead of survey evidence or consumer testimony, plaintiff relied upon direct copying. But event assuming defendants copied plaintiff's coupler, that alone did not create secondary meaning. Plaintiff also needed to show that defendants intended to steal plaintiff's goodwill. No such evidence was offered.

The Court also held that there was not a likelihood of confusion. Defendants printed their names on their products. And the parties' customers were very sophisticated purchasers and were unlikely to be confused. The customers competitively bid its purchases of the couplers, so purchasing decisions were made directly with the parties, not by looking at the products in bins side-by-side at a hardware store.

Finally, the Court held that plaintiff's state law Consumer Fraud and Deceptive Trade Practices Act claim were coterminous with the Lanham Act claim. The Court, therefore also granted summary judgment as to the state law claims.

* Click here fore more on this case in the Blog's archives.

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Likelihood of Confusion Same for Deceptive Trade Practices & Trademarks

Posted on September 28, 2009 by R. David Donoghue

Lorillard Tobacco Co. v. Elston Self Serv. Wholesale Grocs., Inc., No. 03 C 4753, Slip Op. (N.D. Ill. Jun. 9, 2009) (Gottschall, J.).

Judge Gottschall granted in part and denied in part defendants’ motion for summary judgment regarding plaintiff’s Deceptive Trade Practices Act and fraud* claims regarding sales of recirculated Newport cigarettes. Plaintiff claimed that defendants purchased cigarettes from retailers to take advantage of plaintiff’s discount program and resold those recirculated cigarettes to other entities, sometimes recurring a second relate for those purchases. Plaintiff further alleged that some of the recirculated cigarettes were old and stale. But the Court held that the accrued recirculation and sale of record that cigarettes could not make a Deceptive Practices Act claim because of the likelihood of confusion requirement. Like in the trademark law, likelihood of confusion as to origin. But plaintiff did not allege that there was any common confusion regarding that plaintiff was the source of the cigarettes. Confusion as to whether the cigarettes were first or second hand was irrelevant.

* This post does not address the fraud claims.

 

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