The matter of design feature for trade dress

Plaintiff Arlington Specialties, Inc. does business as Pinch Provisions. It sells personal care kits: small bags containing small portable toiletries like hairspray, stain remover, and deodorant. Plaintiff’s products include a line of kits called “Minimergency Kits,” which come in small fabric bags designed to look like men’s Dopp Kits.

Defendant Urban Aid, Inc. also sells personal care kits. It agreed to create a custom kit for a shoe distributor that wanted to use the kits as part of a sales promotion. The shoe distributor wanted the kits to come in a bag similar to plaintiff’s bag, and it gave Urban Aid a picture of plaintiff’s bag to work from.

After the shoe distributor began its sales promotion, plaintiff filed suit. It claimed that the shape and design of its bag were protected trade dress and that Urban Aid’s bag tortuously interfered with plaintiff’s prospective business relations. Urban Aid moved for summary judgment on four grounds: that plaintiff’s trade dress was generic, that it was functional, that it lacked secondary meaning, and that Urban Aid’s design caused no likelihood of confusion.

The district court found that plaintiff’s claimed trade dress was functional as a matter of law. Because all of plaintiff’s claims depend on whether the claimed trade dress is protectable, the court granted summary judgment for the defendant on the federal Lanham Act claim and the related state-law claims. Plaintiff has appealed.

The doctrine of functionality imposes a critical limit on trade dress rights because “product design almost invariably serves purposes other than source identification.” Because trademark protection for trade dress has no time limit, giving one competitor a perpetual and exclusive right to a useful product feature would result in a perpetual competitive advantage. When the trade dress is unregistered (as plaintiff’s was), the party seeking protection has the burden to show it is not functional.

A product feature is functional, “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Even if a product feature does not satisfy that definition, 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.”

Plaintiff argued that summary judgment can be affirmed only if its competitors “must” be able to use its claimed trade dress to compete. The Court explained (a) that competitive necessity is “incorrect as a comprehensive definition” of functionality and (b) that a feature is functional when it “affects the cost or quality of the device.” A design need not be “the only way to do things” to be functional; it need only “represent one of many solutions to a problem.”

Plaintiff identifies five elements in its claimed trade dress: (1) the bag’s cuboidal shape; (2) the bag’s softness; (3) the zipper’s location on the bag; (4) the “folded and tucked” corners; and (5) the seam halfway up the bag’s sides. Those elements determine the bag’s shape, its degree of rigidity, and how hard or easy it is to access its contents — all, the undisputed evidence shows, functional aspects of the product.

The question is not, as plaintiff would have it, whether the claimed trade dress has “less utility” than alternatives. The right question is whether the design feature affects product quality or cost or is “merely ornamental.” In this case, the undisputed evidence has shown that the claimed design features affect product quality, so the court did not need to consider the availability of alternative designs for competitors. The district court’s judgment has been affirmed.