In confirming that the unregistered trade dress of the Chambord French press coffeemaker was nonfunctional, the US Court of Appeals for the Seventh Circuit affirmed the district court’s determination that plaintiff’s unregistered trade dress was protectable. Bodum USA, Inc. v. A Top New Casting Inc., Case No. 18-3020 (7th Cir. June 12, 2019) (Flaum, J).

Bodum produces and sells the iconic Chambord French press coffeemaker. Bodum sued A Top New Casting for infringing its unregistered trade dress in the Chambord. A Top never denied that it copied Bodum’s trade dress, but claimed that Bodum’s trade dress was functional and therefore not protectable. While trade dress is a valuable form of intellectual property because it allows the owner to protect product and packaging designs, in order to be protectable, the designs cannot be functional.

A jury found that Bodum’s trade dress in the Chambord was not functional and therefore was protectable, and that A Top had willfully infringed Bodum’s trade dress. The jury awarded Bodum $2 million in damages. A Top filed a post-trial motion for judgment as a matter of law, arguing that Bodum had failed to prove that the Chambord design was nonfunctional. The motion was denied. A Top also moved for a new trial based on a claim that the court excluded relevant evidence of various patents for French press coffeemakers; the district court denied that motion as well. A Top appealed.

Similar to trademarks, trade dress is granted protection under the Lanham Act. Protection is granted for a product’s trade dress, which generally includes product designs that are distinctive and identify the product’s source. Trade dress protection is not subject to any statutory expiration and can potentially provide a perpetual exclusive right to a useful product feature, as long as the feature(s) to be protected are not functional (i.e., necessary for the use of a product, or affecting the cost or quality of the product).

In deciding whether a trade dress feature is functional, courts consider several factors:

• The existence of a utility patent, expired or unexpired, that involves or describes the functionality of an item’s design element
• The utilitarian properties of the item’s unpatented design elements
• Advertising of the item that touts the utilitarian advantages of the item’s design elements
• The dearth of, or difficulty in creating, alternative designs for the item’s purpose
• The effect of the design feature on an item’s quality or cost

No one factor is dispositive for deciding whether a trade dress element is functional and thus cannot serve as a trade dress.

The design elements of the Chambord that Bodum claimed were protectable as trade dress were the metal band that formed support feet and handle attachment, domed lid, rounded knob on top of its plunger, and C-shaped handle. Bodum’s evidence demonstrated that the design elements of the Chambord were not utilitarian and did not necessarily make it work better for its intended purpose. Bodum also submitted evidence that there were alternative and less expensive options available for the overall design and these specific design elements. The Seventh Circuit found that Bodum presented sufficient evidence to support the jury finding that its overall look and design elements were nonfunctional, and affirmed the district court’s denial of A Top’s motion for judgment as a matter of law.

The Seventh Circuit rejected A Top’s attempt to show that Bodum’s allegedly protectable design elements were functional based on drawings from utility patents covering third-party French press coffeemakers—patents that illustrated similar design elements. However, on reviewing the third-party patents in their entirety, including the drawing descriptions, the Court found there was no mention of the specific design elements and that the introduction of such evidence would have been misleading and likely to create jury confusion. Thus, the Court affirmed the district court’s denial of A Top’s motion for a new trial.