Judge Talwani partially granted in part SoClean’s motion for a preliminary injunction, based on accusations of trade dress infringement by Sunset. SoClean asserted that Sunset infringed SoClean’s registered trade dress in its replacement filters for its automated CPAP disinfecting devices. Judge Talwani determined that SoClean had demonstrated a likelihood of success on the merits. Sunset had acknowledged copying the SoClean design, but asserted that the trade dress was invalid as functional and as not distinctive. Juge Tawlani first determined that Sunset bore the burden of overcoming the presumption of validity that came with the registration of the mark. Sunset had argued that the presumption should not be applied because Sunset had a likelihood of success in demonstrating SoClean committed fraud on the trademark office by overstating the length of time the filter had been placed in commerce. SoClean had changed the design of its filter by altering the arrangement of holes on the head of the filter, but these holes were disclaimed in the trade dress registration and the remainder of the prior iteration matched the registered mark.
Judge Talwani also rejected Sunset’s argument that the PTO failed to properly analyze the distinctiveness of the trade dress. Trade dress in a product design can never be inherently distinctive, and the distinctiveness – so-called “secondary meaning” must be established by the applicant. The examiner apparently accepted the assertion of five years of continuous use to establish distinctiveness, but for product design trade dress, the Trademark Manual of Examining Procedure provides that five years of continuous use is not sufficient to establish secondary meaning, and actual evidence must be presented. Judge Talwani agreed that this appeared to have been done in error, but found that there was no statutory basis to shift the burden of proof back to SoClean on the basis of this error.
With the burdens properly established, Judge Tawlani determined that Sunset had not introduced any evidence to establish a lack of secondary meaning. No survey evidence or direct testimony was presented to this effect. Effectively, Sunset’s lack of distinctiveness argument hinged almost entirely of pointing to SoClean’s alleged failure to demonstrate secondary meaning, but with the burden shifted by the presumption of validity, SoClean was not required to make such a showing.
Judge Talwani next determined that the trade dress was at least partially non-functional. Under the Lanham Act, trade dress is deemed functional and unprotectable when allowing exclusivity would put competitors at a significant disadvantage, where the trade dress is essential to the use or purpose of the product, or where the trade dress affects the quality or cost of the product. This standard is broader than the functionality standard for a design patent, and encompasses designs even where there are feasible alternatives. Here, while there were elements of the design, such as the body shape, that were dictated by the shape of the receptacle for the filter cartridge on the cleaning device, there were elements of the design that were not so dictated and thus were non-functional. This existence of non-functional elements, along with the presumption of validity enjoyed by the registration, led to a determination that SoClean would likely prevail on Sunset’s invalidity challenge.
Regarding likelihood of confusion, the filters are identical. This does not, however, end the analysis. Replcaement cartridges sold in brick and mortar stores are displayed by SoClean and Sunset in packaging the clearly delineates the sources of the respective goods, with each business’ name clearly and prominently displayed on the packaging. This eliminates the risk of customer confusion for in-store sales. On-line sales, in contrast, involves mere photographs of the respective cartridges themselves, with references as to the source located in small plain text in the margins of the respective web pages, creating a strong likelihood of confusion for on-line sales. Judge Talwani found that this, combined with the First Circuit’s presumption of likelihood of confusion where the defendant intentionally copies a mark, created a likelihood of success on the merits for SoClean as to Sunset’s on-line sales only. She entered an injunction prohibiting Sunset from marketing their filter using images of the filter alone, without a prominent display of the Sunset brand name in a manner that leaves no reasonable confusion as the source of the goods.
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