Author(s): Timothy J. Jordan, Robert D. Goldstein

COMMFAX is a newsletter devoted to commercial law issues published by Garan Lucow Miller, P.C.
This issue examines a recent case addressing trademark infringement. This particular COMMFAX coincides with the establishment by Garan Lucow Miller of an Intellectual Property Practice Group which handles trademark infringement, trade dress infringement, copyright infringement and unfair competition cases.


In Waddington North America Business Trust v EMI Plastics, Inc, 2002 WL 2031372 (United States District Court for the Eastern District of New York), the plaintiff was seeking a preliminary injunction based on its claims against defendant EMI Plastics for federal trade dress infringement under the Lanham Act 15 USC § 1125(a). (The “trade dress” of a product consists of its overall appearance in the marketplace, including container shape, labeling, colors, printing styles and the like. Not only do conventional packaged consumer goods have a “trade dress”, but entire commercial enterprises can have a “trade dress” that includes architectural features, color schemes and decor.)

In 1994 Waddington developed a line of disposable plastic serving trays named “CaterLine”. These plastic trays included designs of a spoked pattern on certain round trays and bowls, and a “S-shape lip” on all of Waddington’s oval, square and rectangular trays. Waddington registered a trademark for its CaterLine trade name but not for the trade dress of the CaterLine product. (Trademarks and trade dress can be registered with the Principal Register of the United States Patent and Trademark Office.)

Defendant EMI recently marketed a competing line of disposable plasticware which it named “Party Tray” line. Both Waddington and EMI sold their lines at wholesale to distributors throughout the United States.
In seeking the injunctive relief, Waddington claimed that EMI’s Party Tray line incorporates CaterLine’s spoke design and “S-shape lip” on trays of identical shapes and dimensions, making the two lines “indistinguishable”.
The District Court denied the preliminary injunction based on a rarely discussed ground of “functionality”.
When trade dress is unregistered, as it was in the Waddington case, the Lanham Act provides that a plaintiff “who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional”. 15 USC § 1125(a)(1)(A). Generally speaking, a product feature is “functional” and cannot be protected as trade dress if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. The stated purpose of the functionality doctrine is to prevent advances in functional design from being monopolized by the owner of the design’s trade dress in order to encourage competition in the broadest dissemination of useful design features.

The District Court in Waddington held that the functionality test to establish trade dress infringement would not be met by Waddington for the following reasons:

* * * “[W]here an ornamental feature is claimed as a trademark and [trade dress] protection would significantly hinder competition by limiting the range of adequate alternative designs, the aesthetic functionality doctrine denies such protection.” Wallace Int’l Silversmiths v. Godinger Silver Art Co., Inc., 916 F.2d 76, 81 (2d Cir.1990); see also Nora, 269 F.3d at 120 n. 4 (“A product’s functionality may encompass aesthetic features which confer benefits that cannot practically be duplicated by the use of alternative designs”)

*4 Waddington claims that the primary purpose of the spoke and S-shape lip designs “is to identify the product as plaintiff’s product. . . .” Waddington Mem. of Law at 7. The Court has examined the spoke-design trays, samples of which have been provided by EMI, and photos of the S-shape lip design trays submitted by Waddington. See Miesels Decl., Ex. G. & H. (circular spokedesign trays of EMI and Waddington, respectively); Maultasch Aff., Ex. G (photos of S- shape lip design trays). As for the “S-shape lip” on Waddington’s trays, it appears to be clearly functional. The shape of the lip allows covers of the trays to lock into place, prevents spillage, and allows the trays to nest when stacked. See Maultasch Aff., Ex. G, (photos of S-shape lip trays with lids, stacked).
In addition, the S-shape lip design appears to fall under the rubric of aesthetic functionality, as does the spoke design.

*** The simple, basic, and entirely unoriginal spoke and S-shaped lip designs on Waddington’s trays do not serve to identify or distinguish the trays as CaterLine trays. They serve to enhance the aesthetic appeal of the trays, rather than to identify the source of the trays. Consumers would likely purchase CaterLine trays “principally because they find [their] combination of design features aesthetically pleasing,” not because the designs “serve to identify or distinguish the goods as genuine [CaterLine] products.” LeSportsac, 754 F.2d at 78.
See Waddington at pp 3-4.

The Court also noted that some CaterLine trays had no spoke or S-shape lip design and no CaterLine tray features both designs. As for the spoke design the Court noted, some CaterLine circular trays feature a compartmental design instead of the spoke design, and non- circular CaterLine trays and bowls have no spoke design. Thus, the Court concluded “this lack of general and uniform use of the designs undercuts Waddington’s claim that the designs are distinguishing marks of CaterLine products.” In sum, the Court concluded “Waddington has failed to demonstrate a likelihood of success that its claimed trade dress designs are nonfunctional.”

The Court also noted that there were other elements needed to establish trade dress infringement which were unmet, including secondary meaning and likelihood of confusion in the marketplace.

As stated in the introductory paragraph, Garan Lucow Miller has formed an Intellectual Property Practice Group headed by Robert Goldstein of Garan Lucow Miller’s Grand Blanc office and Timothy Jordan of Garan Lucow Miller’s Detroit office. You may contact either of them for further discussion of the Waddington case. In addition, other members of the Intellectual Property Practice Group include Aaron Wiseley and Michael Wade of Garan Lucow Miller’s Grand Rapids office, John Sharp of Garan Lucow Miller’s Traverse City office and Steven Matta of Garan Lucow Miller’s Troy office. Please feel free to contact any of the attorneys in the Group with your intellectual property questions.

Dear Commercial Law Reader:
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