Amicus Curiae Brief — Sulzer Mixpac AG, Petitioner v. A&N Trading Company, et al.

No. 21-417

In The

Supreme Court of the United States

_______________

SULZER MIXPAC AG,

v.

Petitioner,

A & N TRADING COMPANY, ET AL.,

Respondents.

_______________

On Petition for a Writ of Certiorari

to the United States Court of Appeals

for the Second Circuit

_______________

BRIEF OF AMICI CURIAE INTELLECTUAL

PROPERTY LAW PROFESSORS IN SUPPORT

OF PETITION FOR WRIT OF CERTIORARI

Theodore H. Davis Jr.*

Kilpatrick Townsend &

Stockton LLP

TDavis@TDavis@KilpatrickTownsend.com

1100 Peachtree Street

Suite 2800

Atlanta, GA 30309-4528

404-815-6534

*Counsel of Record

Attorney for Amici Curiae Intellectual Property Professors Suneal

Bedi, Jake Linford, and

Sandra L. Rierson

TABLE OF CONTENTS

Page

STATEMENT OF INTEREST ................................... 1

IDENTITY OF AMICI CURIAE ................................ 1

SUMMARY OF ARGUMENT.................................... 1

ARGUMENT .............................................................. 3

I.

There Is a Clear Split in the

Circuits on the Definition of

Trade Dress Functionality ................... 3

II.

The Methodology Employed by

the Court of Appeals Conflicts

with This Court’s Authority ................. 5

III.

A.

The Court of Appeals

Applied an Overly

Expansive Interpretation

of the Inwood Quality

Inquiry ........................................ 6

B.

Colors are Functional Only

When Their Protection

Creates a Significant NonReputation-Related

Disadvantage ........................... 12

The Court Should Grant

Certiorari to Restore Uniformity

to Federal Trademark Law ................ 14

CONCLUSION ......................................................... 16

i

TABLE OF AUTHORITIES

Cases:

Page(s)

Bauer Lamp Co. v. Shaffer,

941 F.2d 1165 (11th Cir. 1991)............................. 8

In re Becton, Dickinson & Co.,

675 F.3d 1368 (Fed. Cir. 2012) ............................. 9

Black & Decker Manufacturing v.

Ever-Ready Appliance Mfg. Co.,

518 F. Supp. 607 (E.D. Mo. 1981),

aff’d, 684 F.2d 546 (8th Cir. 1982) ..................... 14

Blumenthal Distrib., Inc. v.

Herman Miller, Inc.,

963 F.3d 859 (9th Cir. 2020),

cert. denied, 141 S. Ct. 1514 (2021) ...................... 8

Bodum USA, Inc. v.

A Top New Casting Inc.,

927 F.3d 486 (7th Cir.),

cert. denied, 140 S. Ct. 675 (2019) .................... 8, 9

Brunswick Corp. v. Spinit Reel Co.,

832 F.2d 513 (10th Cir. 1987)............................... 8

C5 Med. Werks, LLC v. CeramTec GmbH,

249 F. Supp. 3d 1210 (D. Colo. 2017),

rev’d on other grounds, 937 F.3d 1319

(10th Cir. 2019) ................................................... 12

Converse, Inc. v. Int’l Trade Comm’n,

909 F.3d 1110 (Fed. Cir. 2018) ............................. 9

In re Craigmyle,

224 U.S.P.Q. 791 (T.T.A.B. 1984) ......................... 9

Dall. Cowboys Cheerleaders, Inc. v.

Pussycat Cinema, Ltd.,

604 F.2d 200 (2d Cir. 1979) .................................. 8

ii

Dippin’ Dots, Inc. v.

Frosty Bites Distribution, LLC,

369 F.3d 1197 (11th Cir. 2004)........................... 11

ERBE Elektromedizin GmbH v.

Canady Technology LLC,

629 F.3d 1278 (Fed. Cir. 2010) ........................... 13

Ezaki Glico Kabushiki Kaisha v.

Lotte International America Corp.,

986 F.3d 250 (3d Cir. 2021),

petition for cert. docketed,

No. 20-1817 (U.S. June 29, 2021) ......................... 4

I.P. Lund Trading ApS v. Kohler Co.,

163 F.3d 27 (1st Cir. 1998) ................................... 8

Industria Arredamenti Fratelli Saporiti v.

Charles Craig, Ltd.,

725 F.2d 18 (2d Cir. 1984) .................................... 8

Inwood Laboratories v. Ives Laboratories,

456 U.S. 844 (1982) ..................................... passim

KP Permanent Make-Up, Inc. v.

Lasting Impression I, Inc.,

543 U.S. 111 (2004) ............................................. 16

L.D. Kichler Co. v. Davoil, Inc.,

192 F.3d 1349 (Fed. Cir. 1999) ..................... 10, 13

Mastercrafters Clock & Radio Co. v.

Vacheron & Constantin-Le

Coultre Watches, Inc.,

221 F.2d 464 (2d Cir. 1955) .................................. 8

McAirlaids, Inc. v. Kimberly-Clark Corp.,

756 F.3d 307 (4th Cir. 2014)........................ 7-8, 10

Moldex-Metric, Inc. v. McKeon Prods., Inc.,

891 F.3d 878 (9th Cir. 2018)............................... 13

iii

In re Morton-Norwich Prods., Inc.,

671 F.2d 1332 (C.C.P.A. 1982) ....................... 9, 10

Moseley v. V Secret Catalogue, Inc.,

537 U.S. 418 (2003) ............................................. 16

Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc.,

469 U.S. 189 (1985) ............................................. 15

Qualitex Co. v. Jacobson Products Co.,

514 U.S. 159 (1995) ..................................... passim

S.C. Johnson & Son, Inc. v. Johnson,

175 F.2d 176 (2d Cir. 1949) ................................ 15

SafeRack, LLC v. Bullard Co.,

350 F. Supp. 3d 438 (D.S.C. 2018),

report and recommendation adopted,

No. 2:17-cv-1613-RMG, 2019 WL 460699

(D.S.C. Feb. 5, 2019) ........................................... 13

TrafFix Devices, Inc. v. Mktg. Displays, Inc.,

532 U.S. 23 (2001)....................................... passim

Two Pesos, Inc. v. Taco Cabana, Inc.,

505 U.S. 763 (1992) ......................................... 3, 15

Valu Eng’g, Inc. v. Rexnord Corp.,

278 F.3d 1268 (Fed. Cir. 2002) ........................... 10

Warner Bros. v. Gay Toys, Inc.,

724 F.2d 327 (2d Cir. 1983) .................................. 9

Statutes:

15 U.S.C. § 1051 et seq. ........................................ 2, 15

15 U.S.C. § 1127 ......................................................... 3

iv

Other Authorities:

1 J. Thomas McCarthy, McCarthy

on Trademarks and Unfair Competition

§ 7:69.50 (5th ed. 2020) ....................................... 10

Federal Trademark Dilution Act,

Pub. L. No. 109–312, 120 Stat. 1730 (1996) ...... 16

Justin Hughes, Cognitive and Aesthetic

Functionality in Trademark Law,

36 CARDOZO L. REV. 1227 (2015) ........................ 11

S. Rep. No. 79-1333 (1946),

as reprinted in 1946 U.S.C.C.A.N. 1274 ...... 14, 15

Rules:

Sup. Ct. R. 37.2(a) ...................................................... 1

v

STATEMENT OF INTEREST

Amici, who file this brief with the consent of

parties,1 are professors who teach and have written

extensively about trademark law and other intellectual property law subjects. Their interest in this case

lie in the development and application of trademark

law in a way serving the interest of the public and

trademark owners alike.

IDENTITY OF AMICI CURIAE2

Suneal Bedi

Indiana University

Kelly School of Business

Jake Linford

Florida State University College of Law

Sandra L. Rierson

California Western School of Law

SUMMARY OF ARGUMENT

Amici submit this Brief to urge the Court to resolve an increasing split among the circuit courts of

appeals on an important question of federal law,

1. Pursuant to Rule 37.2(a), counsel of record for all parties

received timely notice of amici curiae’s intent to file this brief.

Counsel of record for all parties consented in writing to its filing.

No counsel of record for any party authored this brief in whole

or in part, and no person or entity other than amici curiae made

a monetary contribution to the preparation or submission of this

brief.

2. All amici curiae speak only on their own behalf. Institutional affiliations are listed for identification purposes only.

1

namely, whether mere utility renders a claimed trade

dress functional and therefore ineligible for protection

under the Lanham Act, 15 U.S.C. § 1051 et. seq. Amici

additionally urge the Court to resolve that split by

holding that, although utility properly should be one

of many considerations informing the functionality

inquiry, any small degree of utility does not, and

should not, trigger an inflexible bright-line prohibition against trade dress protection.

Congress enacted the Lanham Act in 1946 to

provide uniform, nationwide rights for owners of

trademarks, service marks, collective marks, and certification marks, even when those marks take the

form of nonverbal trade dress.3 That purpose is frustrated by the current, fractured state of the law regarding whether claimed trade dress is nonfunctional, in which case it might qualify for protection, or

functional, in which case it cannot. The resulting split

in the circuits incentivizes forum shopping among potential plaintiffs and defendants alike.

Beyond the description of it by the court of appeals, Amici are unfamiliar with the record on which

the district court and the court of appeals relied. They

therefore do not take a position on the ultimate factual question of whether the court of appeals properly

reversed the district court’s finding of nonfunctionality for clear error. Instead, Amici file this brief to explain how the test for functionality applied by the

court of appeals in this case both diverges from that

applied by other federal appellate courts and inappro-

3. Consistent with the convention adopted by the Lanham

Act, this brief refers to these designations collectively as “trademarks” or “marks.”

2

priately narrows trade dress protection. Amici therefore urge the Court to accept the question presented

for review.

ARGUMENT

I.

There Is a Clear Split in the Circuits on

the Definition of Trade Dress Functionality

The Court should grant the petition because

the court of appeals in this case has entered a decision

in conflict with those of other United States courts of

appeals. That conflict involves an important question

of federal law.

The question at issue is the definition of utilitarian functionality under trade dress law. Under the

Lanham Act, a “trademark” may be “any word, name,

symbol, or device” used by an owner “to identify and

distinguish [its] goods.” 15 U.S.C. § 1127. This definition includes trade dress—that is, “the total image of

a product” or its packaging, including “features such

as size, shape, color or color combinations,” among

others. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.

763, 764 n.1 (1992). Thus, in Qualitex Co. v. Jacobson

Products Co., 514 U.S. 159 (1995), this Court recognized the potential protectability of individual colors

such as the ones at issue in this case for protection.

Id. at 167-74. This Court’s observation in Two Pesos

that “[p]rotection of trade dress, no less than of trademarks, serves the Act’s purpose to secure to the owner

of the mark the goodwill of his business and to protect

the ability of consumers to distinguish among competing producers” therefore applies with equal force in

the context of nonverbal marks. See 505 U.S. at 774.

3

It is, of course, well settled that “trade dress

protection may not be claimed for product features

that are functional,” TrafFix Devices, Inc. v. Mktg.

Displays, Inc., 532 U.S. 23, 29 (2001), but that does

not mean all product features are thereby disqualified; rather, the inquiry into trade dress protectability

requires distinguishing between functional and nonfunctional elements of a claimed trade dress. As discussed at length in the petition, however, several

splits exist among the circuit courts of appeal on the

significance of utility, or usefulness, to the functionality inquiry. Petitioner has accurately explained that

split:

1.

A majority of the circuit courts of appeal,

comprising the First, Fourth, Sixth, Seventh, Eighth,

Ninth, Eleventh, and Federal Circuits, treats the usefulness, or utility, of a claimed trade dress as a consideration in the utilitarian functionality inquiry, but

not a dispositive one.

2.

In contrast, both the court of appeals in

this case and the Third Circuit in Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp.,

986 F.3d 250, 255 (3d Cir. 2021), petition for cert.

docketed, No. 20-1817 (U.S. June 29, 2021), have

adopted an inflexible bright-line rule holding that any

amount of utility automatically makes a claimed

trade dress functional and thus disqualifies it from

protection.

This split requires resolution by this Court. In

fact, this case presents an opportunity for this Court

to address and provide much needed clarification of

the nature of the functionality inquiry for the first

time since its opinion in TrafFix Devices over two decades ago.

4

II.

The Methodology Employed by the Court

of Appeals Conflicts with This Court’s Authority

The court of appeals acknowledged this Court’s

holding in Inwood Laboratories v. Ives Laboratories,

456 U.S. 844 (1982), that “[i]n general terms, a product feature is functional [in the utilitarian sense] if it

is essential to the use or purpose of the article or if it

affects the cost or quality of the article.” Id. at 850

n.10. It similarly referenced this Court’s observation

in TrafFix that an aesthetically functional feature “is

one the ‘exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage.’” TrafFix, 532 U.S. at 32 (quoting Qualitex,

514 U.S. at 165).

The court of appeals did not employ an aesthetic functionality analysis, and, in reaching a finding of utilitarian functionality as a matter of law, it

expressly eschewed reliance on the first prong of the

Inwood standard: whether petitioner’s registered

color marks are essential to the use or purpose of the

goods associated with the marks. See Pet. App. 15a

(“The evidence elicited at the bench trial does not support [Respondent’s] argument that use of colors on

mixing tips is essential to use of the product. . . . The

district court did not make a factual finding that colors are essential to the use or purpose of mixing tips,

and we decline to do so on this record.”). Likewise,

with respect to the second Inwood prong, it affirmed

the district court’s factual finding that the addition of

the disputed colors to Petitioner’s goods increased Petitioner’s manufacturing costs. Pet. App. 14a. Rather,

the court of appeals’ decision in this case focuses on

whether the color of Petitioner’s goods enhanced their

“quality.” Pet. App. 17a.

5

A.

The Court of Appeals Applied an

Overly Expansive Interpretation of

the Inwood Quality Inquiry

The court of appeals’ invalidation of Petitioner’s

marks as functional in the utilitarian sense rests only

on a determination, under the second Inwood prong,

that the marks affect the quality of the associated

goods. The court reasoned that the quality of the product was enhanced (and hence the trade dress was

functional), because the purchaser could match tips

and cartridges of the same size by color. Pet. App. 17a.

The court of appeals’ expansive interpretation of

the second prong of the Inwood test for utilitarian

functionality conflicts with this Court’s decision in

Qualitex. In that case, this Court recognized that a

color could serve a utilitarian function and yet remain

a nonfunctional, protectable form of trade dress. The

Court in Qualitex noted that, in the dry cleaning industry, “it is important to use some color on press pads

to avoid noticeable stains . . . .” 514 U.S. at 166. Thus,

the green-gold color of the dry-cleaning pad served a

purpose: hiding stains. Under the reasoning of the

court of appeals in this case, the green-gold color

would therefore enhance the “quality” of the drycleaning pad, rendering it functional and hence unprotectable as a form of trade dress. But this Court

did not, of course, make such a determination in Qualitex. Rather, the Court recognized that the color of the

dry cleaning pad served a purpose (hiding stains), but

nevertheless found the trade dress to be nonfunctional because other colors served the same purpose

equally well. In other words, the court focused on the

availability of alternative designs. See TrafFix, 532

U.S. at 33 (noting that, in Qualitex, there was “no indication that the green-gold color of the laundry press

6

pad had any bearing on the use or purpose of the product or its cost or quality”). The Qualitex Court thus

held that the green-gold color at issue was nonfunctional, even though it had some utility, in light of the

district court’s finding that the press pad industry

had “no competitive need . . . for the green-gold color,

since other colors are equally usable.” 514 U.S. at 166.

The Court explained, “[w]hen a color serves as a

mark, normally alternative colors will likely be available for similar use by others.” Id. at 168. The analysis employed by the court of appeals herein is thus

fundamentally inconsistent with Qualitex.

Indeed, not all products having a “utility” (in patent terms) have “functional” product features (in

trade dress terms). Courts often describe this distinction as the difference between de facto and de jure

functionality, and it is essential to a proper evaluation

of functionality under Inwood, Qualitex, and TrafFix.

The court of appeals ignored that distinction here.

The methodology of assessing competitive need by

considering elements including alternative designs is

consistent with cases holding that mere utility or usefulness is not dispositive of functionality. Indeed, as

the Court noted in TrafFix, a finding of functionality

may be appropriate if competitors must use one or two

“best” designs to compete effectively. See TrafFix, 532

U.S. at 32 (“[I]t was acknowledged that the device

‘could use three springs but this would unnecessarily

increase the cost of the device.’”). But if any modicum

of utility were dispositive of functionality, the Court

would likely have concluded that the existence of a

relative utility patent is dispositive of functionality,

rather than merely strong evidence of it. Id., at 29-30.

Instead, the disclosure of a related utility patent does

not always mandate a finding of trade dress functionality. See, e.g., McAirlaids, Inc. v. Kimberly-Clark

7

Corp., 756 F.3d 307, 313 (4th Cir. 2014) (distinguishing claims of related patent).

As the court of appeals itself has recognized, most

products perform some utilitarian function, yet their

particular configurations are clearly nonfunctional in

the trade dress sense. “In the context of . . . the Lanham Act, ‘functional’ is not synonymous with ‘utilitarian,’ nor is it the antonym of ‘ornamental.’” Industria

Arredamenti Fratelli Saporiti v. Charles Craig, Ltd.,

725 F.2d 18, 19 (2d Cir. 1984). For instance, the fact

that an office chair supports a user’s weight does not

mean it is functional as a matter of law. See Blumenthal Distrib., Inc. v. Herman Miller, Inc., 963 F.3d

859, 866-68 (9th Cir. 2020), cert. denied, 141 S. Ct.

1514 (2021). The support feet of a French press coffee

maker allow the press the stand, but the design of the

feet may not be functional as a matter of law. Bodum

USA, Inc. v. A Top New Casting Inc., 927 F.3d 486,

492-93 (7th Cir.) (affirming finding of nonfunctionality and recognizing “the distinction between a product’s ‘function’ in the everyday meaning of the term

and ‘functional’ as a term of art used in trade dress

law”), cert. denied, 140 S. Ct. 675 (2019).4

4. Likewise, a clock may communicate the time to its owner,

but that usefulness does not disqualify its features from trade

dress protection. See Mastercrafters Clock & Radio Co. v.

Vacheron & Constantin-Le Coultre Watches, Inc., 221 F.2d 464

(2d Cir. 1955). So, too, is the configuration of a lamp not rendered

functional by the illumination it provides. See Bauer Lamp Co.

v. Shaffer, 941 F.2d 1165 (11th Cir. 1991) (per curiam). The list

could go on and on. See, e.g., I.P. Lund Trading ApS v. Kohler

Co., 163 F.3d 27, 37 (1st Cir. 1998) (“The fact that a [water faucet] contains some functional elements does not . . . preclude

Lanham Act protection.”); Brunswick Corp. v. Spinit Reel Co.,

832 F.2d 513, 519-520 (10th Cir. 1987) (affirming finding of nonfunctionality for shape of fishing reel cover despite evidence that

cover “[held] the fishing line guide out in the front and provide[d]

a thumbstop in the back”); Dall. Cowboys Cheerleaders, Inc. v.

Pussycat Cinema, Ltd., 604 F.2d 200, 203 (2d Cir. 1979) (“[W]e

8

The Federal Circuit has explained that:

De facto functionality simply means that

a design has a function . . . . Such functionality is irrelevant to the question of

whether a mark as a whole is functional

so as to be ineligible for trademark protection. De jure functionality means that

the product is in its particular shape because it works better in this shape.

In re Becton, Dickinson & Co., 675 F.3d 1368, 1373-74

(Fed. Cir. 2012).

In other words, “[t]hat a feature has utility . . . does not render the entire configuration de

jure functional.” In re Craigmyle, 224 U.S.P.Q. 791,

793 (T.T.A.B. 1984); see also Converse, Inc. v. Int’l

Trade Comm’n, 909 F.3d 1110, 1124 (Fed. Cir. 2018)

(“Any functional benefit is derived from the presence

of toe caps and bumpers [on sneakers] generally, not

the particular design of [those elements], and there

are numerous commercial alternatives to that design.”); Warner Bros. v. Gay Toys, Inc., 724 F.2d 327,

331 (2d Cir. 1983) (holding finding of functionality appropriate “only if the feature is dictated by the functions to be performed; a feature that merely accommodates a useful function is not enough.”); In re MortonNorwich Prods., Inc., 671 F.2d 1332, 1341 (C.C.P.A.

1982) (“The question is whether appellant’s plastic

spray bottle is de jure functional; is it the best or one

of a few superior designs available?”); Bodum USA,

927 F.3d at 493 (affirming finding of nonfunctionality

because claimed features “are not necessary to make

do not agree that . . . because an item is in part incidentally functional, it is necessarily precluded from being designated as a

trademark.”).

9

the [plaintiff’s coffee maker] work better as a French

press coffeemaker”).5 As a leading commentator explains, “[a] jury instruction that more effectively demystifies the puzzle of functionality in layman’s

words is the ‘works better’ test: a design feature is

functional if the article works better because it is in

this particular shape.” 1 J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition

§ 7:69.50 (5th ed. 2020). Only if the article works better in that shape do competitors have a “necessity to

copy” it. See Morton-Norwich, 671 F.2d at 1342; see

also L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349,

1353 (Fed. Cir. 1999) (“Mere taste or preference cannot render a [claimed mark]—unless it is the best, or

at least one, of a few superior designs—de jure functional.”).

Because its test measures functionality “in the lay

sense,” not de jure functionality, see Morton-Norwich,

671 F.2d at 1337, the court of appeals erred by filing

to assign proper significance to the district court’s

finding that “other companies use different or no colors.” Pet. App. 17a. This type of outlying analysis

threatens the trade dress protection of every nonverbal mark potentially said to perform some utilitarian

function, regardless of whether it is “essential to the

use or purpose of the article” or “affects the [article’s]

cost or quality” under Inwood, see 456 U.S. at 850-51

n.10, and regardless of whether granting trade dress

protection would disadvantage competitors in a “significant non-reputation-related” way. See Qualitex,

514 U.S. at 165.

5. Other factors relevant in the analysis are “(1) the existence of utility patents, (2) advertising focusing on the utilitarian

advantages of a design, (3) the availability of ‘functionally equivalent designs,’ and (4) the effect of the design on manufacturing.”

McAirlaids, Inc., 756 F.3d at 313 (quoting Valu Eng’g, Inc. v.

Rexnord Corp., 278 F.3d 1268, 1274 (Fed. Cir. 2002)).

10

Moreover, the court of appeals’ determination

that the colors of Petitioner’s product enhanced its

quality did not arise from record evidence showing a

natural link between the underlying product and Petitioner’s colors. The court did not find that Petitioner’s colors communicate an inherent characteristic of Petitioner’s goods to purchasers, nor did it determine that purchasers have a preexisting association of the color with that characteristic. The court of

appeals’ reliance on Dippin’ Dots, Inc. v. Frosty Bites

Distribution, LLC, 369 F.3d 1197 (11th Cir. 2004), as

precedent in this case is therefore misplaced. In Dippin’ Dots, the court found that “[t]he color [of ice

cream] is functional because it indicates the flavor of

the ice cream, for example, pink signifies strawberry,

white signifies vanilla, brown signifies chocolate, etc.”

Id. at 1203-04.6 The Dippin’ Dots court thus found

that trade dress protection of these particular colors

would place competitors at a disadvantage, because

purchasers understood these colors as indicating a

certain type of good (e.g., pink for strawberry ice

cream). A competitor required to use a different color

for the same good (e.g., purple for strawberry ice

cream) would be disadvantaged, because consumers

expect all strawberry ice cream to be pink, the color of

strawberry juice (red) mixed with milk (white). See

Justin Hughes, Cognitive and Aesthetic Functionality

in Trademark Law, 36 CARDOZO L. REV. 1227, 12531255 (2015).

Relatedly, the court of appeals also did not find

that Petitioner’s colors were a natural byproduct of

6. The association of particular colors with ice cream flavors

at issue in that case was so undisputed that the district court in

Dippin’ Dots properly took judicial notice of it; likewise, the

plaintiff’s counsel conceded the point in oral argument before the

district court. 369 F.3d at 1204-05.

11

the goods’ ingredients. See, e.g., C5 Med. Werks, LLC

v. CeramTec GmbH, 249 F. Supp. 3d 1210, 1221 (D.

Colo. 2017) (invalidating claimed pink color mark for

hip implants because “pink . . . is the natural byproduct of the chromium that is used in the production of

[the implants]”), rev’d on other grounds, 937 F.3d

1319 (10th Cir. 2019). Instead, the court of appeals

reasoned that “because the colors on the tip correspond to the tip sizes, the color affects the quality of

the product.” Pet. App. 17a. The court did not consider

whether other colors could serve the same function,

because it held that Petitioner’s color-based trade

dress was unprotectable under the definition of utilitarian functionality. Under this analysis, colors are

functional unless they serve no purpose other than as

a source identifier, which, as explained above, is inconsistent with this Court’s analysis in Qualitex. A

rule equating any evidence of utility with an increase

in “quality,” hence rendering the claimed trade dress

invalid under the test of utilitarian functionality, is

incorrect as a matter of law.

B.

Colors are Functional Only When

Their Protection Creates a Significant Non-Reputation-Related Disadvantage

Colors do not typically make a product work

better, in a utilitarian sense. Hence, even though the

green-gold color of the dry-cleaning pad in Qualitex

made it more stain-resistant, it did not make it “work

better” as a press pad. Therefore, the proper analysis

to apply in such cases should focus on the definition

of aesthetic functionality, as this Court held in

TrafFix: “It is proper to inquire into a ‘significant nonreputation-related disadvantage’ in cases of esthetic

functionality, the question involved in Qualitex.” 532

U.S. at 33.

12

Analysis of “significant non-reputation-related

disadvantage” requires a court to consider the availability (or lack thereof) of alternative designs. When

color functions as trade dress, the court should focus

on whether the particular color acting as a source

identifier also confers some competitive advantage,

or, alternately, whether other colors could be substituted with no competitive harm. Therefore, the general rule that a claimed color mark is functional only

if it is “one of a few colors that are uniquely superior.”

L.D. Kichler Co., 192 F.3d at 1353; see also MoldexMetric, Inc. v. McKeon Prods., Inc., 891 F.3d 878, 887

(9th Cir. 2018) (reversing grant of defense motion for

summary judgment and observing that “[the plaintiff’s] evidence that numerous color shades are

equally or more visible than its bright green color and

would result in the same function of visibility . . . weighs against a finding of functionality, and

a reasonable jury could conclude that [the] green color

is not functional”); SafeRack, LLC v. Bullard Co., 350

F. Supp. 3d 438, 452 (D.S.C. 2018) (“Even

where some color would be required on a product, a

color mark can still be protected by trademark [law]

unless there is a competitive need for the specific color

scheme.”), report and recommendation adopted, No.

2:17-cv-1613-RMG, 2019 WL 460699 (D.S.C. Feb. 5,

2019).

The court of appeals did not reach that question in this case. This case is therefore distinguishable

from ERBE Elektromedizin GmbH v. Canady Technology LLC, 629 F.3d 1278 (Fed. Cir. 2010), in which

the Federal Circuit, applying Third Circuit law, invalidated the plaintiffs’ claimed rights to the color blue

in connection with endoscopic probes because of undisputed evidence that blue probes were more visible

than competing alternatives. See id. at 1289 (“[The

13

lead plaintiff] fails to present a genuine issue of material fact that the color blue does not make the

probe[s] more visible through an endoscopic camera

or that such a color mark would not lead to anti-competitive effects.”). It is similarly distinguishable from

Black & Decker Manufacturing v. Ever-Ready Appliance Mfg. Co., 518 F. Supp. 607 (E.D. Mo. 1981), aff’d,

684 F.2d 546 (8th Cir. 1982), in which the color black

was functional when applied to the treads of a stepladder because “[b]lack doesn’t show dirt . . . .” Id. at

617. In failing to consider alternative designs—the

proper test in cases of aesthetic functionality—the

court of appeals erred in a manner that distorts the

functionality doctrine.

III.

The Court Should Grant Certiorari to Restore Uniformity to Federal Trademark

Law

The current split in authority runs counter to

Congress’ purpose of providing uniform, nationwide

rights to trademark owners when it passed the Lanham Act in 1946. Congress designed the Lanham Act

to provide a robust and consistent, national scheme of

protection for trademarks, to “secur[e] to the [trademark] owner the good will of his business and protect[] the public against spurious and falsely marked

goods.” S. Rep. No. 79-1333 (1946), as reprinted in

1946 U.S.C.C.A.N. 1274, 1274-75. As it became clear

in the post-World War II era that “trade [in the

United States] is no longer local, but is national,” protection of trademarks could no longer be provided “by

the inconsistent amalgam of state law protections.”

Id. at 1277. Consequently, “a sound public policy require[d] that trademarks should receive nationally

the greatest protection that can be given them.” Id.

The Senate Committee on Patents described this purpose as follows:

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The purpose of this bill is to place all

matters relating to trademarks in one

statute and to eliminate judicial obscurity, to simplify registration and to make

it stronger and more liberal, to dispense

with mere technical prohibitions and arbitrary provisions, to make procedure

simple, and relief against infringement

prompt and effective.

Id. at 1274 (emphasis added).

Courts have acknowledged that Congress’ purpose in federalizing trademark law in the Lanham Act

was to create uniform, nationwide rights for a national economy. Indeed, not long after the Lanham

Act’s passage, Judge Learned Hand recognized that it

“put federal trade-mark law upon a new footing . . . [and] created rights uniform throughout the

Union, in the interpretation of which we are not limited by local law.” S.C. Johnson & Son, Inc. v. Johnson, 175 F.2d 176, 178 (2d Cir. 1949).

This Court has similarly acknowledged Congress’s goals by noting that “[n]ational protection of

trademarks is desirable . . . because trademarks foster

competition and the maintenance of quality by securing to the producer the benefits of good reputation.”

Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S.

189, 198 (1985); see also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 781-82 (1992) (Stevens, J.,

concurring) (“‘The purpose of [the Lanham Act] is to

protect legitimate business and the consumers of the

country,’ [and] [o]ne way of accomplishing these dual

goals was by creating uniform legal rights and remedies that were appropriate for a national economy.”

(citation omitted)); Inwood, 456 U.S. at 861 n.2

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(White, J., concurring) (noting purpose of the Lanham

Act to “codify and unify” the common law of . . . trademark protection).

When conflicting interpretations of the Lanham Act among the circuit courts of appeal have matured in the past, this Court has granted certiorari to

restore uniformity to the law. For example, in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.,

543 U.S. 111 (2004), the Court noted it had granted

certiorari “to address a disagreement among the

Courts of Appeals on the significance of likely confusion for a fair use defense to a trademark infringement claim, and the obligation of a party defending on

that ground to show that its use is unlikely to cause

consumer confusion.” See id. at 116; see also Moseley

v. V Secret Catalogue, Inc., 537 U.S. 418, 428 (2003)

(granting certiorari “[b]ecause other Circuits have

also expressed differing views about the ‘actual harm’

issue” under the Federal Trademark Dilution Act,

Pub. L. No. 109–312, 120 Stat. 1730 (1996)); Qualitex,

514 U.S. at 161 (noting that the Court granted certiorari because “[t]he Courts of Appeals have differed as

to whether or not the law recognizes the use of color

alone as a trademark”).

Uniform rights are particularly important in a

marketplace increasingly characterized by brands

with national and global reach. The current fractured

state of the law frustrates Congress’s purpose, and

the Court should take the opportunity presented by

this case to resolve the split in the circuits and restore

uniformity to the law.

CONCLUSION

The touchstone of trade dress protection is the

communication and appreciation of a nonfunctional

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distinguishing, source-identifying message. If the relevant facts appropriately considered in the functionality inquiry disclose that a nonverbal color or design

is ineligible for protection, claims to its protection as

trade dress should be dismissed. Nevertheless, a

bright-line legal prohibition on the trade dress protection of useful colors and designs, without an inquiry

into whether they are functional, can actually undermine symbols on which consumers rely, limit consumers’ access to products of quality and variety, and

harm the competition such a rule might ostensibly be

intended to protect.

Respectfully submitted,

Theodore H. Davis Jr.*

Kilpatrick Townsend &

Stockton LLP

TDavis@KilpatrickTownsend.com

1100 Peachtree Street

Suite 2800

Atlanta, GA 30309-4528

404-815-6534

Attorney for Amici Curiae Intellectual Property Professors Suneal

Bedi, Jake Linford, and

Sandra L. Rierson

*Counsel of Record

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