Giving trade dress infringement claim a shot

September 03, 2018
Patterson Thuente IP

The hurdle for proving trade dress infringement is high. This is partly because, as the Sixth Circuit Court of Appeals recently explained, a plaintiff must produce evidence of nonfunctionality — a unique challenge since a plaintiff must prove evidence of an absence and product design often serves purposes beyond mere identification of the product’s source. In the case in question, though, the court determined that the plaintiff had succeeded.

Paper target in the bullet holes.

District court shoots down claim

Leapers, Inc., makes adjustable rifle scopes that are textured with “knurling.” Knurling allows users to grip the products more easily and make fine-tuned adjustments. Leapers claims that it uses a unique knurling pattern that lets consumers recognize the company as the source of its products.

Leapers had an exclusive manufacturing contract with a factory in China, under which the factory agreed not to disclose any information related to Leapers’ products. After the company ended the relationship, the manufacturer’s factory manager formed a company that manufactured scopes for SMTS, LLC.

Leapers sued SMTS for trade dress infringement of its knurling design. The district court dismissed the case before trial, and Leapers appealed.

Appellate court takes another look

Trade dress generally refers to the overall appearance of a product. To succeed on a claim of trade dress infringement based on a product’s design, a plaintiff must show that its design:

  • Is nonfunctional,
  • Has acquired a secondary meaning, and
  • Is confusingly similar to the allegedly infringing design.

The trial court found that Leapers’ design couldn’t satisfy the nonfunctional requirement.

To establish nonfunctionality, a plaintiff must prove that its design feature isn’t essential to the use or purpose of the product and that it doesn’t affect the product’s cost or quality. Evidence that a design is purely ornamental, incidental or arbitrary can constitute evidence of an absence of functionality.

The appellate court agreed with the trial court that knurling is “inalterably functional” because it allows a rifle scope user to “grasp or grip a thing more securely.” But, it said, Leapers didn’t argue that its trade dress consisted of knurling — it alleged that its trade dress consisted of a unique design printed into knurling. The Sixth Circuit concluded that a jury could reasonably find Leapers’ design was ornamental and nonfunctional and therefore reversed the trial court’s dismissal.

The next round

The Court of Appeals declined to consider the other two requirements for trade dress infringement, sending the case back to the trial court for further consideration. So, while the company prevailed on the nonfunctionality element, the question remains as to whether it will succeed in proving infringement. •

Leapers, Inc. v. SMTS, LLC, No. 17-1007, Jan. 10, 2018, 6th Cir.

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