# Opposition Brief — Eppendorf-Netheler-Hinz GmbH v. Ritter GmbH > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386015_0310%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Opposition Brief - **Published:** January 1, 2002 - **Citation:** 537 U.S. 1071 ## Text No. 02-300 3 NOV 6 20° IN THE CLER Oe | Supreme Court of the United States EPPENDORF-NETHELER-HINZ GMBH, Petitioner, V. RITTER GMBH AND RK MANUFACTURING, INC. Respondents. On Petition for a Writ of Certiorari to the United States Court of Appeals for the Fifth Circuit BRIEF FOR RESPONDENTS IN OPPOSITION WILLIAM J. UTERMOHLEN OLIFF & BERRIDGE, PLC 277 South Washington Street Suite 500 Alexandria, Virginia 22314 (703) 836-6400 Counsel for Respondents RULE 29.6 STATEMENT Neither Ritter GmbH nor RK Manufacturing, Inc. have parent companies or publicly traded subsidiaries. TABLE OF CONTENTS Page OPINION BELOW 5 ....wci This ornamental, incidental, or arbitrary terminology harks back, of course, to the seminal definition of trademarks provided in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10- 11 (2d Cir. 1976), which treated "arbitrary," "fanciful" or "suggestive" word marks as inherently distinctive. "Ornamental" was a term applied to product packaging in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977). See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 210-14 (2000). 11 Where the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature. 532 U.S. at 33. Again, this clarification was expressly made applicable regardless of the presence or absence of a utility patent: Whether a utility patent has expired or there has been no utility patent at all, a product design which has a particular appearance may be functional because it is "essential to the use or purpose of the article" or "affects the cost or quality of the article." Id. at 35. The Fifth Circuit was, thus, correct to reject application to this case of its "utilitarian" test, which it characterized as "virtually identical to the ‘competitive necessity’ test discussed in TrafFix." 289 F.3d at 356 (Pet. App. 7a). The Fifth Circuit concluded that "[e]ach of the eight design elements identified by Eppendorf is essential to the use or purpose of the Combitips, and are not arbitrary or ornamental features."* That conclusion was based on the test re-emphasized in TrafFix and the factors considered germane by TrafFix. Petitioner's assertion that the Fifth Circuit departed from this Court's opinion in 7rafFix is without merit. 2. Petitioner's remaining arguments are an attack on the principles enunciated in 7rafFix as allegedly sounding * So in original and in the version published at 62 USPQ2d 1534, 1538. The version published in F.3d and repeated in the petitioner's appendix (11a) substitutes "is not arbitrary" for "are not arbitrary." 12 the death knell of product design trade dress protection. However, that attack is both based on a myopic view of the role of product design trade dress and fails to identify any actual problems that have arisen to date on account of the Court's analysis-in TrafFix. In particular, petitioner's second proposed question for certiorari merely seeks an advisory opinion about the future effect of the TrafFix decision without demonstrating either that the present case turns on the answer to the question posed or that future cases are likely to turn on such an !ssue. Petitioner's argument treats any contraction of the scope of trade dress protection as ipso facto contrary to public policy, see, e.g., Pet. 20 n.12, through disregarding the considerations that caused this Court in 7rafFix to "caution against misuse or over-extension of trade dress" in that "product design almost invariably serves purposes other than source identification." 532 U.S. at 29 (quoting Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 213 (2000)). Petitioner's recitation of facts emphasizes the alleged secondary meaning of its syringes, asserted to have been "backed by extensive advertising and promotion that focused on their appearance," as well as the three years said to have been invested in the "design and development" of its syringes. Pet. 5-7. Such considerations misconceive the role of trade dress. As this Court indicated in 7rafFix, in a passage echoed by the Fifth Circuit: Trade dress protection must subsist with the recognition that in many instances there is no prohibition against copying goods and products. In general, unless an intellectual property mght such as a patent or copyright protects an item, it will be subject to copying. 13 Id.; see 289 F.3d at 355 (Pet. App. 5a). This Court further explained that considerations like those emphasized by petitioner cannot form the basis of trade dress protection: The Lanham Act does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity. The Lanham Act, furthermore, does not protect trade dress in a functional design simply because an investment has been made to encourage the public to associate a particular functional feature with a single manufacturer or seller. 532 US. at 34-35. Petitioner also does not mention that there are alternative means to advance the interests served by trade dress protection. Traditional trademarks generally are more effective than product shapes in identifying the source of products to consumers, particularly given the ordinary assumption of consumers that a product shape has a purpose other than source-signification. See Wal-Mart, 529 US. at 213. In addition, design patent or copyright protection may be sought. /d., at214. Moreover, when too broadly defined, trade dress becomes an opportunity for a large, well-financed competitor to strong arm its competition. See Wal-Mart, 529 US. at 213-24. Eppendorf fails to demonstrate that this Court needs to revisit trade dress issues for the third time in three years in order to expound on the parameters of functionality set forth in TrafFix. That decision did much to clanfy the law of functionality, as did Congress's 1998 decision to place the explicit burden of proof as to that issue on the proponent of trade dress. See 15 U.S.C. § 1125(a)(3). There has not yet been adequate opportunity for the implications of the TrafFix os and Wal-Mart decisions to be absorbed, applied and refined by the lower courts. Petitioner has not raised issues that suggest this case should serve as a vehicle to again address the functionality doctrine. Eppendorf alleges that the Fifth Circwit did not give adequate attention to its claimed trade dress considered as a whole, Pet. 17-18, 19 n.11, but the Fifth Circuit found that Eppendorf failed to demonstrate the non-functionality of each of the eight trade dress elements it sought to prove at trial. 289 F.3d at 357-58 (Pet. App. 11a) ("all eight design elements identified by Eppendorf are essential to the operation of the Combitips"). A trade dress wholly made up of functional elements could be eligible for trade dress protection only in the unlikely event that there was something arbitrary and non- functional about the arrangement of those elements. There was no evidence of that in this case. The flange on Eppendorf's syringes was located where it was located because it had to fit into the dispenser at that location. Likewise, the fins under the flange had to be under the flange in order to give the flange support. The same is true for the other elements. If there were any merit to Eppendorf's argument that the whole of its trade dress is greater than the sum of its elements, the Fifth Circuit could have ruled for Eppendorf based on existing law. See, e.g., Sunbeam Prods., Inc. v. Westbend Co., 123 F.3d 246, 256-57 (5" Cir. 1997). Nothing in T7rafFix suggests that such issues cannot be considered by courts and nothing in the Fifth Circuit's decision suggests that it so construed T7rafFix. Instead, Eppendorf's product was a plastic syringe of uncomplicated, geometric design that simply did not lend itself to trade dress protection, considered element by element or as a whole. 15 There is no need for this Court to clarify the law as to such issues or to revisit that essentially factual question. CONCLUSION The petition for a writ of certiorari should be denied. November 6, 2002 Respectfully submitted, WILLIAM J. UTERMOHLEN OLIFF & BERRIDGE, PLC 277 South Washington Street Suite 500 Alexandria, VA 22314 (703) 836-6400 Counsel for Respondents 16 --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386015_0310%3A2. Public record. Not legal advice.