The US Court of Appeals for the Ninth Circuit reversed a grant of summary judgment, finding a genuine issue of material fact as to whether the green color of the plaintiff’s earplugs was functional. Moldex-Metric, Inc. v. McKeon Products, Inc., Case No. 16-55548 (9th Cir., June 5, 2018) (Piersol, J).

Moldex produces foam earplugs with a specific bright green color. After McKeon began using a similar color for its earplugs, Moldex sued for trademark infringement. In response, McKeon claimed the green color mark was functional and thus not protectable as trade dress because the green color increased the visibility of the earplugs during safety compliance checks. The district court agreed and granted summary judgment in favor of McKeon. Moldex appealed.

On appeal, Moldex argued that the district court erred by failing to consider in its functionality analysis whether alternative colors were available. The Ninth Circuit first surveyed the functionality tests in its precedents, finding the existence or nonexistence of alternative designs as probative evidence of a mark’s functionality. The Court also examined the traditional functionality tests set forth in Supreme Court of the United States cases TrafFix Devices (IP Update, Vol. 4, No. 4), Qualitex and Inwood Laboratories, which assess whether a feature is essential to the use or purpose of a product or whether exclusive use of a feature would interfere with competition. The Ninth Circuit explained that analyzing the availability of alternative designs becomes more important when traditional functionality tests are difficult to apply.

The Ninth Circuit found that the district court failed to properly consider the importance of alternative colors in evaluating the functionality of Moldex’s color mark. Because a reasonable jury could conclude that Moldex’s evidence of alternative colors outweighs McKeon’s evidence of the green color’s utilitarian benefit, the Court found that a dispute of material fact remained and thus summary judgment on functionality was not appropriate.

The US Court of Appeals for the Ninth Circuit reversed a grant of summary judgment, finding a genuine issue of material fact as to whether the green color of the plaintiff’s earplugs was functional. Moldex-Metric, Inc. v. McKeon Products, Inc., Case No. 16-55548 (9th Cir., June 5, 2018) (Piersol, J).

Moldex produces foam earplugs with a specific bright green color. After McKeon began using a similar color for its earplugs, Moldex sued for trademark infringement. In response, McKeon claimed the green color mark was functional and thus not protectable as trade dress because the green color increased the visibility of the earplugs during safety compliance checks. The district court agreed and granted summary judgment in favor of McKeon. Moldex appealed.

On appeal, Moldex argued that the district court erred by failing to consider in its functionality analysis whether alternative colors were available. The Ninth Circuit first surveyed the functionality tests in its precedents, finding the existence or nonexistence of alternative designs as probative evidence of a mark’s functionality. The Court also examined the traditional functionality tests set forth in Supreme Court of the United States cases TrafFix Devices (IP Update, Vol. 4, No. 4), Qualitex and Inwood Laboratories, which assess whether a feature is essential to the use or purpose of a product or whether exclusive use of a feature would interfere with competition. The Ninth Circuit explained that analyzing the availability of alternative designs becomes more important when traditional functionality tests are difficult to apply.

The Ninth Circuit found that the district court failed to properly consider the importance of alternative colors in evaluating the functionality of Moldex’s color mark. Because a reasonable jury could conclude that Moldex’s evidence of alternative colors outweighs McKeon’s evidence of the green color’s utilitarian benefit, the Court found that a dispute of material fact remained and thus summary judgment on functionality was not appropriate.