Specialized Seating, Inc. v. Greenwich Indus., L.P.- The Protection of Trade Dress.
In general, trademark law provides a system of law by which parties may protect those attributes and markings of its products that identify the source of the goods or services. Probably the best known method of achieving this is by a mark such as the name of a brand of a business or a pictorial logo of the brand or business. Another way of identifying the source of goods or services is through trade dress. Trade dress is the design, assembly of features, or presentation of a good or service that distinctly identifies the source of that good or service.
The protection of trade dress, however, is difficult to obtain because an applicant must prove that the design has a secondary meaning to consumers. It is further limited by what is known as the functionality doctrine. One purpose of the functionality doctrine is to prevent an organization or individual from obtaining the unlimited term-length of trademark protection for a functional design that normally would be protected by the limited-term patent system. For this reason and others, functional designs do not receive trade dress protection. The line between functional design and trade dress is difficult to draw, but the Seventh Circuit addressed the interaction of patent and trademark protection in Specialized Seating, Inc. v. Greenwich Indus., L.P. 616 F.3d 722 (7th Cir. 2010)
In that case, Specialized Seating, Inc. (“Specialized”) sought declaratory judgment that its design does not violate Greenwich Industries, L.P.’s (“Greenwich”) rights under the Lanham Act. Greenwich, in turn, counterclaimed for an injunction.
Specialized and Greenwich are in the business of supplying folding chairs to auditoriums, stadiums, and other venues that require a large number of seats. Clarin is a company that has participated in this industry for over 80 years. Clarin was subsequently purchased by Greenwich in 1993. Specialized, on the other hand, is a relatively new entrant to the folding chair industry, and it was founded in 1999 by the son of the former general manager of Clarin. Specialized became a competitor in Greenwich’s principal folding chair market. After the filing of the declaratory action by Specialized, the Northern District of Illinois held a bench trial and ruled that Greenwich’s mark is functional and was obtained fraudulently, thus ruling in Specialized’s favor. Specialized Seating, Inc., v. Greenwich Indus., L.P., 472 F. Supp. 2d 999 (N.D. Ill. 2007). Greenwich then appealed to the Court of Appeals for the Seventh Circuit.
The interaction between patent protection and trademark or trade dress protection is apparent from the background of the case. Clarin applied for a trademark for its x-frame chair design. The U.S. Patent and Trademark Office issued Registration No. 2,803,875. The mark is reproduced below, and the registration describes the mark as “a configuration of a folding chair containing an x-frame profile, a flat channel flanked on each side by rolled edges around the perimeter of the chair, two cross bars with a flat channel and rolled edges at the back bottom of the chair, one cross bar with a flat channel and rolled edges on the front bottom, protruding feet, and a back support, the outer sides of which slant inward.” U.S. Trademark Reg. No. 2,803,875 (registered Jan. 13, 2004).
Clarin had also previously applied for and was issued patents on its folding chair designs. U.S. Patent No. 1,943,058 was issued in 1934, No. 1,600,248 was issued in 1926, No. 2,137,803 was issued in 1938, and No. 3,127,218 was issued in 1964. The ’058 patent was disclosed during the trademark prosecution, but Clarin did not tell the examiner of the other three patents.
The Seventh Circuit agreed with the finding of the District Court that the design described in the trademark application was functional and was disclosed by the four Clarin patents, except for one feature that was deemed functional as well. Specialized Seating, Inc., v. Greenwich Indus., L.P., 616 F.3d 722, 726 (7th Cir. 2010). In affirming the District Court’s decision, the Seventh Circuit did agree with Clarin that a product whose overall appearance is distinctive may be protected under trademark laws even though most of the product’s elements serve some function. Id. at 727. The Court recognized some instances where the design of a functional product can be protected but the examples cited by the Court included at least some non-functional element that was distinctive. Id. The Court went on to clarify and stated that, in order to be protectable under trademark law, all the elements of a product cannot be functional and the distinctive feature of the design or product must be non-functional. Id. at 727-28.
While trade dress protection of elements of a product design is possible, the applicant must demonstrate that the element is distinctive and non-functional. Further, with the consultation of IP professionals at early stages of development, owners may maximize the protection of inventions and designs through all means available without conflict.