United States Court of Appeals for the Seventh Circuit · 2019-06-12
Case and law context
Role: applied; posture: 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; claim:
Instances and excluded annotation blocks
| Case | Element | Holding and scope | Variant | Exact source quotations |
|---|---|---|---|---|
| /f3d/927/0486-01 — United States Court of Appeals for the Seventh Circuit · 2019 | Claimant proves nonfunctionality | satisfied Counted merits instance applied / merits basis: proved; theory: Overall appearance, excluding functional carafe and plunger; subject: theory=Overall appearance, excluding functional carafe and plunger The reviewed verdict concerns nonfunctionality of the particular overall design, not whether coffeemakers or handles perform functions. Other liability elements were outside the appellate challenge. | product-design/ornamental-coffee-press | 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").Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [8044:9018] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.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.Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [10677:10834] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.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."Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [12516:12757] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.More importantly, Bodum introduced evidence that both it and A Top sell French presses with alternative designs and made of different materials.Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [15800:15944] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.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."Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [14330:14558] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.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.Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [18513:18838] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057. |
| /f3d/927/0486-01 — United States Court of Appeals for the Seventh Circuit · 2019 | Claimant proves nonfunctionality | not_reached Excluded from merits counts applied / procedural theory: Rule 403 exclusion of patent illustrations; subject: theory=Rule 403 exclusion of patent illustrations Separate evidentiary ruling supporting denial of new trial; excluded patents are not substantive proof of nonfunctionality. | evidence/utility-patent-exclusion | The patents A Top sought to introduce do not claim any of the features that comprise the claimed Chambord trade dress.Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [25503:25621] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.A district court may exclude relevant evidence where its probative value is substantially outweighed by, for example, a risk of unfair prejudice or confusing the issues.Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [19090:19259] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.The district court did not abuse its discretion in excluding this evidence.Source: docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [25427:25502] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057. |
Court interpretations recorded from this case
interpretation
At trial, Bodum was required to prove a number of elements for the jury to find trade dress infringement-that it owns a valid trade dress in the Chambord design, that the trade dress is not functional, and that A Top's SterlingPro was likely to cause consumer confusion as to its source. See id.
/f3d/927/0486-01 — United States Court of Appeals for the Seventh Circuit · 2019
At trial, Bodum was required to prove a number of elements for the jury to find trade dress infringement-that it owns a valid trade dress in the Chambord design, that the trade dress is not functional, and that A Top's SterlingPro was likely to cause consumer confusion as to its source. See id.Source:
docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [7169:7464] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.Nonfunctionality prevents permanent trademark monopoly on useful features. Bodum’s full functionality paragraph includes utilitarian and competitive-necessity tests; do not confuse usefulness of the underlying product with necessity of the particular claimed design.
interpretation
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").
/f3d/927/0486-01 — United States Court of Appeals for the Seventh Circuit · 2019
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").Source:
docroot/ir/caselaw/f3d_927.jsonl#/f3d/927/0486-01; Unicode character offsets [8044:9018] (end exclusive); SHA-256 e23fafe7ee24e3c66caa49a3c6e59a0c36783b38b82fdfe6271a8620628e1057.Nonfunctionality prevents permanent trademark monopoly on useful features. Bodum’s full functionality paragraph includes utilitarian and competitive-necessity tests; do not confuse usefulness of the underlying product with necessity of the particular claimed design.