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No Trade Dress Protection for Functional Shape and Color Scheme

Addressing the scope of trade dress protection, the US Court of Appeals for the Fourth Circuit found that the shape and color scheme of a product was functional and therefore only eligible for patent law’s protection of utilitarian inventions. CTB, Inc. v. Hog Slat, Inc., Case No. 18-2107 (4th Cir. Mar. 27, 2020) (Wynn, J.) (Keenan, J. concurring) (Rushing, J. concurring).

CTB owns a trade dress registration covering the octagonal shape and red and gray color scheme of its chicken feeder products. CTB sued Hog Slat for infringement of the trade dress. The district court granted Hog Slat’s motion for summary judgment, finding that the shape and color scheme of the feeder products is functional, and trade dress protection is therefore not available. CTB appealed.

The Fourth Circuit affirmed the district court’s grant of summary judgment. Addressing trade dress infringement under the Lanham Act and North Carolina common law, the Court held that a feature is functional if “it is the reason the device works” and used the Morton-Norwich factors to assist in its functionality inquiry. These factors 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.

Turning to the case at hand, the Fourth Circuit found that the shape and color of CTB’s chicken feeder profile is functional and ineligible for trade dress protection. As to the shape, the Court found that the octagonal outline of the pan feeders, as a whole, was functional because CTB’s utility patent and advertisements described the functional benefits of the shape. As to color, the Court found that because the color trade dress was placed on the supplemental trademark register, rather than the principal register, it is presumed functional, and CTB bears the burden of proving non-functionality. The Court found that CTB did not overcome this presumption and that the combination of red pan and gray spokes in the feeders served the functional purpose of attracting chickens to feed. Since the shape and the color scheme were both functional, the Court found that these aspects were ineligible for trade dress protection.

© 2020 McDermott Will & EmeryNational Law Review, Volume X, Number 100



About this Author

Amol Parikh, McDermott Will Emery, Chicago, patent lawyer, Intellectual Property Litigation Attorney

Amol Parikh is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm's Chicago office.  He focuses his practice on IP litigation, counseling and prosecution. Amol has been recognized as a 2011 Illinois Rising Star in Intellectual Property by Law & Politics.  Rising Stars are lawyers under the age of 40 that have been in practice for 10 years or less.  No more than 2.5 percent of the lawyers in Illinois are named as Rising Stars.

Amol has...

Paul Devinsky, Intellectual Property Attorney

Paul Devinsky is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, D.C., office.  He focuses his practice on patent, trademark and copyright litigation and counseling, as well as on trade secret litigation and counseling, and on licensing and transactional matters and post-issuance PTO proceedings such as reissues, reexaminations and interferences.