The Lanham Act is a federal statute that protects businesses from various types of unfair competition, including trade dress infringement. The term “trade dress” is defined as “the total image of a product . . . [that] may include features such as size, shape, color or color combinations, textures, graphics, or even particular sales techniques.” Epic Metals Corp. v. Souliere, 99 F.3d 1034 (11th Cir. 1996). Trade dress infringement claims often arise in business litigation between businesses that produce, design, or use similar products. Businesses can sue for trade dress infringement under the Lanham Trademark Act when the relevant features of the business’ product are non-functional. Peter Mavrick is a Fort Lauderdale business litigation attorney, and represents clients in Miami, Boca Raton, and Palm Beach. The Mavrick Law Firm represents clients in breach of contract litigation, non-compete agreement litigation, trade secret litigation, trademark infringement litigation, employment litigation, and other legal disputes in federal and state courts and in arbitration.
The term trade dress refers to “the appearance of a product when that appearance is used to identify the producer.” Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197 (11th Cir. 2004). “‘Trade [d]ress’ involves the total image of a product and may include features such as size, shape, color . . . , texture, graphics, or even particular sales techniques.” AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th Cir. 1986). To prevail on a claim for trade dress infringement, a party must prove that: “(1) the product design of the two products is confusingly similar; (2) the features of the product design are primarily non-functional; and (3) the product design is inherently distinctive or has acquired secondary meaning.” Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197 (11th Cir. 2004).
Business litigation under the Lanham Act focuses on protecting trade dress for a product’s non-functional features. Epic Metals Corp. v. Souliere, 99 F.3d 1034 (11th Cir. 1996). Indeed, “trade dress protection may not be claimed for product features that are functional.” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001). “There is no bright line test for functionality.” Dollar Only Wholesale, LLC v. Transnational Foods, Inc., 2014 WL 11944275 (S.D. Fla. Apr. 23, 2014). “[T]he person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.” 15 U.S.C. § 1125(a)(3). The issue of functionality is treated as a question of fact. Epic Metals Corp. v. Souliere, 99 F.3d 1034 (11th Cir. 1996).
To determine whether a product’s features are functional, federal courts review each element of the trade dress as a whole. The Eleventh Circuit Court of Appeals noted that the line between functionality and non-functionality is not brightly drawn. Vital Pharm., Inc. v. Am. Body Bldg. Products, LLC, 511 F. Supp. 2d 1303 (S.D. Fla. 2007). “Functional features are by definition those likely to be shared by different producers of the same product and therefore are unlikely to identify a particular producer.” Vital Pharm., Inc. v. Am. Body Bldg. Products, LLC, 511 F. Supp. 2d 1303 (S.D. Fla. 2007). Moreover, the “features cannot be appropriated; otherwise, competitors would be prevented from duplicating the new product even to the extent permitted by the branches of the law of intellectual property that protect innovation rather than designations of source.” Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197 (11th Cir. 2004).
The Eleventh Circuit Court of Appeals applies two tests to determine a product’s functionality. The first test is commonly referred to as the “traditional test.” Under the traditional test, “‘a product feature is functional . . . if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.’” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001). Under the second test, or the “competitive necessity test,” a “functional feature is one the ‘exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage.’” Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995). If a product’s design is functional under the traditional test, then the Court does not need to further analyze whether there is a competitive necessity for the feature. That said, the Supreme Court of the United States has stated that “a design is legally functional, and thus unprotectable, if it is one of a limited number of equally efficient options available to competitors and free competition would be unduly hindered by according the design trademark protection.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
Peter Mavrick is a Fort Lauderdale business litigation lawyer, and represents businesses in Miami, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.