UnIP While I Pee

On August 15, 2012, in Trademarks, by Brian A. Hall

UnIP (UnIntellectual Property): Trademark and Trade Dress for Washroom Accessory Design

The Plaintiff sued the Defendant, both manufacturers of washroom accessories, for trademark infringement involving its registered trademark for the design of a particular line of washroom accessories products in the shape of a convex arc (“Convex Arc Design”) and unregistered trade dress. Following a trial in the United States District Court for the Central District of California, the Defendant prevailed. The Plaintiff’s Convex Arc Design and unregistered trade dress were deemed to be merely functional, and thus not entitled to trademark protection.

The Court set forth the functionality standard and detailed its analysis in the opinion. It reminded us that a trademark is functional “when it is essential to the use or purpose of the device or when it affects the cost or quality of the device.” The Court considered the four Ninth Circuit factors in its functionality analysis: (1) whether the design yields a utilitarian advantage; (2) whether alternative designs are available; (3) whether advertising touts the utilitarian advantages of the design; and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture. Since the Convex Arc Design was registered with the USPTO, the Defendant had the burden of proving functionality.

First, the design possessed a utilitarian advantage, namely in being strong, stiff, and more durable. Thus, it failed to be nonfunctional because one must demonstrate that the product feature serves no purpose other than identification. Second, noting that the minimal number of available alternative designs favored a finding of functionality, the Court found that Plaintiff’s identification of only three alternative designs, albeit ones without the same strength and durability, was insufficient. Third, recognizing the Plaintiff’s own advertising’s focus on the strength and impact-resistance of the product, despite Defendant’s advertising noting the aesthetic appeal of its competing product, the Court found that the utilitarian advantages were stressed more than the aesthetic appeal. Fourth, and finally, the Court found that the increased expense to manufacture favored nonfunctionality. Nevertheless, the Court held that the Convex Arc Design was functional.

The Court then made quick work of the unregistered trade dress claim, holding: “there is nothing in Plaintiff’s claimed design that is fanciful or arbitrary. Instead, “the whole [i.e., Plaintiff’s claimed Unregistered Trade Dress] is nothing other than the assemblage of functional parts[.]” The “rounded edges” claimed by Plaintiff are functional for the reasons discussed above in connection with the Convex Arc. The “flanges” function to hide the opening in the wall into which the products are installed. The stainless steel finish, which is pervasive in the industry, is both easy to maintain and durable.” The Court just as quickly analyzed the secondary meaning issue, finding that none existed while highlighting that Plaintiff did not procure a survey on the issue. Despite the fact that Defendant admitted to copying the Plaintiff’s design, the Court stressed that this was permissible because the copying was done for the perceived aesthetic value in the eyes of consumers rather than in an attempt to deceive consumers as to the source of the goods. As such, not only was Plaintiff without a valid trademark any longer, its hopes of protecting a trade dress also ended (absent successful appeal of course).

We have all seen and used these types of washroom accessories in public bathrooms in sports arenas, airports, and restaurants. I, for one, am all about function over fashion, especially when it comes to the bathroom. While I appreciate efforts to secure IP regardless of the product or service, I am not surprised that this trademark and trade dress were deemed to be UnIP. Regardless, I will likely look at these types of washroom accessories differently the next time I pee (or IP, to stick with the blog theme).

Bobrick Washroom Equip., Inc. v. Am. Specialties, Inc., CV 10-6938 SVW PLA, 2012 WL 3217858 (C.D. Cal. Aug. 8, 2012).


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