Why a kit bag doesn’t qualify for trade dress protection

September 15, 2017
Patterson Thuente IP

Some product features are ornamental and others are functional. One manufacturer recently learned that the hard way when the Seventh Circuit Court of Appeals found that its bag’s design and shape were functional — and therefore not protected as trade dress.

Case shapes up

Arlington Specialties, Inc., sells “Minimergency Kits,” which come in small fabric bags designed to look like men’s Dopp kits (toiletry bags). Urban Aid, Inc., created a custom kit for a shoe distributor to use as part of a sale promotion. The distributor wanted the kits to come in a bag similar to Arlington’s bag and gave Urban Aid a photo of that bag to work from.

Arlington subsequently sued Urban Aid, claiming that the shape and design of its bag were protected trade dress. After the trial court dismissed the case before trial, Arlington appealed.

Functional features fail

Trade dress — a product’s design or packaging that’s so distinctive it identifies the manufacturer or source — is protected as a form of trademark. Federal trademark law prohibits the use of trade dress in a way likely to create confusion about a product’s origin. However, the doctrine of functionality limits trade dress rights. Product features that are functional, rather than merely ornamental, are subject to patent law. Trademark protection is sometimes preferable because it doesn’t expire as long as the mark or dress is used in commerce, whereas patent protection is subject to time limits.

The U.S. Supreme Court has held that a feature is functional if it’s essential to the product’s use or affects the product’s cost or quality. But, according to the Seventh Circuit, a design isn’t necessarily the only way to make a functional item — it’s enough to be one of many alternative solutions to a problem.

Arlington identified five elements in its trade dress, all of which determined the bag’s shape, degree of rigidity and ease of access to contents. And the court found that they were all functional features of the bag. Arlington itself said that customers care about those features for reasons other than source identification, asserting that they affect the bag’s quality. “That,” the court said, “is the very definition of a functional feature.” As such, it didn’t even need to consider the availability of alternative designs for competitors.

The takeaway

In the end, the appeals court emphasized that the proper question isn’t whether the claimed trade dress has less utility than alternatives, as Arlington argued. The right question is whether the design feature affects product quality or cost. 

Arlington Specialties, Inc. v. Urban Aid, Inc., No. 14-3416, Jan. 27, 2017 (7th Cir.)

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