Intellectual Property – No trade dress protection for chicken feeder

Where the shape and color scheme of a chicken feeder served a functional purpose, the feeder was ineligible for trade dress protection.

Background

In this trade dress infringement case, CTB Inc. appeals rulings granting summary judgment in favor of Hog Slat Inc. on the grounds that plaintiff’s trade dress registrations, which cover the shape and color scheme of its chicken feeder products, are functional and thus only eligible for patent law’s protection of utilitarian inventions.

Analysis

Four factors assist our functionality inquiry. They are: (1) the existence of utility patents disclosing the utilitarian advantages of a design; (2) advertising focusing on the utilitarian advantages of a design; (3) the availability of functionally equivalent alternative designs which competitors may use and (4) facts indicating that a design results in a comparatively simple or cheap method of manufacturing the product.

Configuration trade dress claim

Regarding plaintiff’s configuration trade dress claim, Plaintiff argues the “generally octagonal shape” of its feeder “serves absolutely no function—i.e., it is purely arbitrary or incidental,” and thus qualifies for trade dress protection.

First, regarding the upper spoke section, we conclude that the L-shaped spokes of the grill design, which form the top half of the octagonal outline of the configuration trade dress, primarily serve the functional purpose of permitting birds that enter the pan to readily exit. The court’s analysis is decided by defendant’s presentation of substantial and uncontroverted evidence under the first two factors—plaintiff’s utility patent and advertisements—describing the functional benefits of the spoke shape.

In light of the above uncontroverted evidence offered by defendant, plaintiff does not dispute that functional considerations influence the spoke section profile. Instead, plaintiff, relying on the Supreme Court’s opinion in TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001), argues that the flattened profile of the upper spoke section is an arbitrary and incidental element not claimed in the ’274 patent or its advertising materials. Plaintiff’s argument misreads TrafFix. As such, defendant has carried its burden to neutralize the presumption of nonfunctionality, which thus drops from the case. In its absence, plaintiff has not presented any countervailing facts to send the functionality inquiry to the jury.

Turning to the third factor—the availability of functionally equivalent alternative designs which competitors may use—plaintiff urges this court to consider an alternative feeder disclosed in a competitor patent, in which the spokes consist of three angled sides, as evidence that the configuration trade dress’s octagonal profile is arbitrary and nonfunctional. Plaintiff also encourages this court to consider various competitor feeders in the record. Consideration of alternatives in this case is foreclosed by TrafFix.

The court considers plaintiff’s second claim: whether the bottom half of the configuration trade dress’s octagonal profile—formed by the feeder pan—is primarily dictated by functional considerations. The parties did not dispute below that the pan is functional. Instead, plaintiff argues that the pan’s profile is not dictated by the functional V shape of the pan bottom because the configuration trade dress did not claim that shape.

Of course, the relevant question before the court is whether the asserted trade dress is primarily dictated by functional considerations, not whether such trade dress displays every functional design element of a product. The record shows no dispute that each of these elements is generously influenced by engineering necessity. As such, the court finds no dispute that the bottom half of the configuration trade dress—the pan profile—is functional.

Finally, plaintiff offers no reason why the combination of two wholly-functional components—the pan and the spoke assembly—gains some nonfunctional character that qualifies the entire feeder for trade dress protection. Thus, the total feeder profile is functional and ineligible for trade dress protection. For that reason, plaintiff may not assert the configuration trade dress.

Color trade dress claim

The court considers whether the red pan and gray spokes of the color trade dress are dictated by functional considerations. Because the color trade dress was placed on the supplemental trademark register, rather than the principal register, it is presumed functional, and plaintiff bears the burden of proving non-functionality. Plaintiff cannot do so, because its own utility patents and witness testimony establish that the red pan and gray spokes serve the functional purpose of attracting chickens to feed.

Affirmed.

CTB Inc. v. Hog Slat Inc. (Lawyers Weekly No. 001-050-20, 36 pp.) (James A. Wynn Jr., J.) Case No. 18-2107. March 27, 2020. From E.D.N.C. (Louise Flanagan, J.) Cynthia M. Filipovich for Appellant, Robert Charles Van Arnam for Appellee.