- Court: Intellectual Property Archives
- Area(s) of Law: Trademarks
- Date Filed: 02-07-2012
- Case #: 10-17007, 11-15066
- Judge(s)/Court Below: McKeown
- Full Text Opinion
Both Seacalt S.A.(“Seacalt”) and Wuxi Shenxi Constru. Mach. Co. (“WSCMC”) manufacture and sell commercial hoists, which are commonly used for window washing. Seacalt asserted the external design elements of its hoist qualified for trade dress protection and WSCMC’s hoist design infringed on their trademark. The district court held Seacalt’s claimed trade dress was functional and therefore did not qualify for protection under the Lanham Act. Seacalt appealed to the 9th Circuit Court of Appeals mainly on the finding of functionality. They argued that the design was meant to portray a “cubist” look and their engineering manager testified the design was supposed to be “modern” and “flashy”. The court stated that to be eligible for trade dress protection, the entire design must be nonfunctional and it is the plaintiff’s burden to establish non-functionality. Seacalt was unable to meet its burden as the court found that every part of the hoist was “de jure functional” and Seacalt provided no evidence of fanciful design or arbitrariness. Finally, to prove non-functionality, Seacalt pointed to a design patent. However, Seacalt failed to establish any legal connection to the proffered design patent. The court also found that the design patent and the purported trade dress did not match. The district court’s grant of summary judgment is AFFIRMED.