The Court of Appeals for the Federal Circuit ruled on November 9, 2022, in SoClean, Inc. v. Sunset Healthcare Solutions, Inc.,[1] in a decision involving trade dress, a sub-category of trademark law.
SoClean owned a registration for the trade dress of the sanitization devices under U.S. Trademark Reg. No. 6,080,195 (“’195 registration”). SoClean sued Sunset for patent infringement, and later amended its complaint to include trademark infringement of the ‘195 registration.
The Fed Circuit panel, comprising Judges Newman, Lourie, and Prost, with Judge Prost writing for a unanimous panel, affirmed the district court’s ruling that SoClean’s trade dress in the sanitization devices because SoClean’s ‘195 registration gave it prima facie evidence of validity of the mark, thereby shifting the burden of proof to Sunset to rebut SoClean’s exclusive use of the sanitization devices. The panel was unpersuaded by Sunset’s argument of lack of secondary meaning because Sunset failed produce any evidence to the contrary.
Trade dress is the design and shape of a product’s packaging. It is protected under the Lanham Act under 15 U.S.C. §1125(a), if the trade dress serves the same source identifier as the corresponding trademark. Trade dress may be protected through a federally registered trademark, but also may remain unregistered and still be protected under the Lanham Act. In order to be protectible trade dress, the packaging must not be functional. “A product feature is functional, and thus cannot perform as a trademark, if it is essential to the use or purpose of the article or if it affects the costs or quality of the article.”[2] Functionality is deemed an essential component to the product’s purpose. As such, U.S. trademark law protects trade dress but only upon showing of secondary meaning.[3] Where there are several components of a product that are functional, that by itself will not preclude trade dress protection; the non-functional aspects of that product would be protected as trade dress.[4]
As to the trade dress issue, the district court had considered the question of whether alternative designs were relevant as evidence of the sanitization device’s nonfunctionality. The district court determined SoClean’s alternative designs for its filter heads contained arbitrary evidence of nonfunctionality, and coupled with its ‘195 registration, found that SoClean would be successful in defeating Sunset’s functionality argument. Sunset argued this was erroneous. Judge Prost disagreed because many circuit courts consider alternative designs as part of the functionality analysis.[5]
The takeaway from this case is that a trade dress registration will still receive presumption of validity in spite of evidence of functionality in the product design, as long as there is evidence of some nonfunctionality.
[1] ___F.4th___ (Fed. Cir. 2022), aff’g 554 F. Supp. 3d 284 (D. Mass. 2021).
[2] Traffix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32 (2001).
[3] See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216 (2000).
[4] See I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 37 (1st Cir. 1998).
[5] See Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 1276 (Fed. Cir. 2002).