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\u2019s products include a line of kits called \u201cMinimergency Kits,\u201d which come in small fabric bags designed to look like men\u2019s Dopp Kits.<\/p>\n
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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\u2019s bag, and it gave Urban Aid a picture of plaintiff\u2019s bag to work from.<\/p>\n
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\u2019s bag tortuously interfered with plaintiff\u2019s prospective business relations. Urban Aid moved for summary judgment on four grounds: that plaintiff\u2019s trade dress was generic, that it was functional, that it lacked secondary meaning, and that Urban Aid\u2019s design caused no likelihood of confusion.<\/p>\n
The district court found that plaintiff\u2019s claimed trade dress was functional as a matter of law. Because all of plaintiff\u2019s 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.<\/p>\n
The doctrine of functionality imposes a critical limit on trade dress rights because \u201cproduct design almost invariably serves purposes other than source identification.\u201d 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\u2019s was), the party seeking protection has the burden to show it is not functional.<\/p>\n
A product feature is functional, \u201cif it is essential to the use or purpose of the article or if it affects the cost or quality of the article.\u201d Even if a product feature does not satisfy that definition, it can still be functional if it is a \u201ccompetitive necessity,\u201d that is, if its exclusive use \u201cwould put competitors at a significant non-reputation-related disadvantage.\u201d<\/p>\n
Plaintiff argued that summary judgment can be affirmed only if its competitors \u201cmust\u201d be able to use its claimed trade dress to compete. The Court explained (a) that competitive necessity is \u201cincorrect as a comprehensive definition\u201d of functionality and (b) that a feature is functional when it \u201caffects the cost or quality of the device.\u201d A design need not be \u201cthe only way to do things\u201d to be functional; it need only \u201crepresent one of many solutions to a problem.\u201d<\/p>\n
Plaintiff identifies five elements in its claimed trade dress: (1) the bag\u2019s cuboidal shape; (2) the bag\u2019s softness; (3) the zipper\u2019s location on the bag; (4) the \u201cfolded and tucked\u201d corners; and (5) the seam halfway up the bag\u2019s sides. Those elements determine the bag\u2019s shape, its degree of rigidity, and how hard or easy it is to access its contents \u2014 all, the undisputed evidence shows, functional aspects of the product.<\/p>\n
The question is not, as plaintiff would have it, whether the claimed trade dress has \u201cless utility\u201d than alternatives. The right question is whether the design feature affects product quality or cost or is \u201cmerely ornamental.\u201d 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\u2019s judgment has been affirmed<\/a>.<\/p>\n","protected":false},"excerpt":{"rendered":" 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\u2019s products include a line of kits called \u201cMinimergency Kits,\u201d which come in small<\/p>\n