Arlington Specialties, Inc. v. Urban Aid, Inc.
847 F.3d 415
7th Cir.2017Background
- Pinch Provisions (Arlington Specialties, Inc.) sells small personal-care "Minimergency" kits in fabric bags modeled on Dopp Kits; the bags have a cuboidal shape, soft construction, a top zipper, folded/tucked corners, and a mid-side seam.
- Urban Aid, Inc. made a custom kit for a shoe distributor using a bag modeled from a photo of Pinch Provisions’ bag; the two bags were visually similar.
- Pinch Provisions sued in the Northern District of Illinois under the Lanham Act and Illinois consumer-deception statutes, claiming trade dress protection for the bag’s shape/design and alleging misappropriation and tortious interference.
- Urban Aid moved for summary judgment arguing the claimed trade dress was generic, functional, lacked secondary meaning, and caused no likelihood of confusion.
- The district court granted summary judgment for Urban Aid, holding the claimed trade dress was functional as a matter of law; the Seventh Circuit reviewed de novo and affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the bag's shape/design is functional (thus unprotectable trade dress) | Bag features chosen for aesthetic/source-identifying reasons; not functional | Features affect use, access, cost, durability—thus functional | Functional; trade dress not protectable (summary judgment affirmed) |
| Whether competitive necessity must be shown to prove functionality | Competitors "must" be able to use the design to compete; necessity required | TrafFix requires broader test: affects cost/quality or competitive necessity | Court applied broader TrafFix test; necessity alone not required; functionality shown |
| Whether availability of alternative designs defeats functionality | Alternatives (metal tins, other shapes) show bag is less utilitarian and thus protectable | Availability of alternatives does not negate that the claimed features serve functional purposes | Alternatives irrelevant once functionality (effect on quality/cost) is established |
| Secondary meaning & likelihood of confusion | Plaintiff argued trade dress had acquired distinctiveness and caused confusion | Defendant argued even if distinctiveness existed, features are unprotectable; no infringement | Court did not reach merits because functionality precludes protection; related claims failed |
Key Cases Cited
- TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001) (establishes dual functionality tests: essential to use/purpose or affects cost/quality; also addresses competitive necessity)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (trade dress can be protected as source-identifying design)
- Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995) (limitations on trademark protection for functional product features; trademark cannot grant perpetual monopoly over useful features)
- Specialized Seating, Inc. v. Greenwich Indus., LP, 616 F.3d 722 (7th Cir. 2010) (design need not be optimal to be functional; alternative designs do not preclude finding functionality)
- Georgia-Pacific Consumer Prods. LP v. Kimberly-Clark Corp., 647 F.3d 723 (7th Cir. 2011) (applies Specialized Seating reasoning; availability of alternatives is one of several factors but does not prevent finding functionality)