Bodum USA, Inc. v. A Top New Casting, Inc., No. 16 C 2916, Slip Op. (N.D. Ill. Dec. 28, 2017) (Kennelly, J.).
Judge Kennelly denied defendant A Top’s motions for summary judgment and to exclude the testimony and survey evidence of plaintiff Bodum’s survey experts in this Lanham Act trade dress case involving French-press coffee makers.
Motion to Exclude
The Court allowed Bodum’s expert testimony as to whether elements of Bodum’s alleged trade dress was functional. The expert considered what he thought the trade dress was, rather than what Bodum defined its trade dress to be. But the Court held that the “relatively minor differences” between the two definitions did not warrant exclusion. Additionally, it was “less than clear” whether the expert excluded functional elements of the trade dress before performing his analysis. Finally, the expert’s consideration of alternative French press designs was not improper. The existence of alternatives was relevant to the analysis. The Court left a determination of the expert’s credibility and the issues with his report to the jury.
The shortcomings in Bodum’s survey results went to its weight, not admissibility. For example, the expert’s decision not to include product information similar to that which a consumer would see alongside the product on Amazon — where both products were sold — could cut either way and was a factor for the jury’s consideration. A Top also argued that the survey was over broad in various ways and too narrow in others. Those issues were also for the jury to weigh.
- Functionality of Bodum’s Trade Dress
The fact that Bodum’s patent described the functionality of several of its alleged trade dress elements weighed in favor of finding functionality. Some of Bodum’s advertising also touted functional benefits of certain trade dress elements. On the other hand, Bodum presented several alternative French press designs, and showed several non-functional features of the trade dress. Drawing all inferences in Bodum’s favor, the Court denied summary judgment of functionality.
- Likelihood of Confusion
Beyond stating that the products are “relatively low-priced household goods that sell for under fifty dollars,” Bodum had no offer to support the contention that purchasers are unlikely to use a high degree of care in choosing a French press. And Bodum produced no evidence of actual confusion. Similarly, Bodum offered no evidence of passing off. But a visual comparison of the parties’ French presses weighed in favor of likelihood of confusion. The survey also suggested there might be a likelihood of confusion. In light of the competing evidence and drawing all inferences in Bodum’s favor, the Court denied summary judgment of no likelihood of confusion.
- Secondary Meaning
While Bodum had not presented direct evidence of secondary meaning, there was considerable circumstantial evidence, including Bodum’s thirty years selling its French press in the United States, its prominent place in the market, and Bodum’s advertising. Additionally, the survey evidence, although it was not intended to investigate secondary meaning, suggested secondary meaning. The Court, therefore, denied summary judgment.