Bodum USA, Incorporated v. A Top New Casting Incorporated

927 F.3d 486 (2019) United States Court of Appeals for the Seventh Circuit 2019-06-12

Appeal from denial of Rule 50 judgment and Rule 59 new trial after trade-dress jury verdict; only nonfunctionality and patent-evidence exclusion reviewed. (result: claimant-won)

Facts

  1. 5 Claimant proves nonfunctionality satisfied proved
    The Supreme Court has explained that " 'a product feature is functional,' and cannot serve as a trademark, 'if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.' " Qualitex , 514 U.S. at 165, 115 S.Ct. 1300 (quoting Inwood Labs., Inc. v. Ives Labs., Inc. , 456 U.S. 844, 850 n.10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982) ). Even if a claimed trade dress does not satisfy this first test, "it can still be functional if it is a 'competitive necessity,' that is, if its exclusive use 'would put competitors at a significant non-reputation-related disadvantage.' " Arlington Specialties , 847 F.3d at 419 (quoting TrafFix Devices , 532 U.S. at 32-33, 121 S.Ct. 1255 ); see also Specialized Seating, Inc. v. Greenwich Indus., LP , 616 F.3d 722, 727 (7th Cir. 2010) (a design is functional where a product "looks the way it does in order to be a better [product], not in order to be a better way of identifying who made it").
  2. 5 Claimant proves nonfunctionality satisfied proved
    Bodum does not claim a trade dress in the cylindrical carafe or the plunger, as it acknowledges those elements are functional for a French press coffeemaker.
  3. 5 Claimant proves nonfunctionality satisfied proved
    In contrast, Mr. Anders did not believe the particular C-shape of the Chambord's handle worked better than an alternatively shaped handle and, in fact, testified that he thought the C-shape was "not as ergonomically designed as it could be."
  4. 5 Claimant proves nonfunctionality satisfied proved
    Indeed, Joergen Bodum, CEO of Bodum's parent company, testified regarding Chambord advertisements describing the product as "functional" and about an interview he gave in which he described Bodum's products as "function-driven."
  5. 5 Claimant proves nonfunctionality satisfied proved
    More importantly, Bodum introduced evidence that both it and A Top sell French presses with alternative designs and made of different materials.
  6. 5 Claimant proves nonfunctionality satisfied proved
    Overall, looking at the evidence in the light most favorable to the verdict, Bodum presented sufficient evidence for the jury to have found Bodum's claimed trade dress was nonfunctional. We cannot say the jury was irrational to reach this conclusion, so we affirm the denial of A Top's motion for judgment as a matter of law.