927 F.3d 486
7th Cir.2019Background
- Bodum USA sells the Chambord French press, an iconic metal-and-glass design distributed since 1983 and widely promoted and recognized as a classic design.
- A Top New Casting sold a competing French press (SterlingPro) with very similar overall appearance (metal cage, C-shaped handle, domed lid, rounded knob, curved feet).
- Bodum sued A Top for trade dress infringement (Lanham Act and related state claims); a jury found willful infringement and awarded $2 million, later doubled to $4 million with enhanced damages and a permanent injunction.
- A Top moved for JMOL and a new trial arguing Bodum failed to prove the claimed trade dress was nonfunctional and that the court wrongly excluded utility-patent evidence.
- The district court denied JMOL and the new-trial motion; the Seventh Circuit affirmed, finding sufficient evidence of nonfunctionality and that excluding patents under Rule 403 was not an abuse of discretion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Bodum proved the Chambord trade dress is nonfunctional | Chambord’s overall look (band/frame, domed lid, knob, C-handle, feet) is ornamental; competitors can make functional French presses without those specific features; advertising didn’t tout utilitarian advantages | Features are functional or confer manufacturing/cost/quality advantages; patent disclosures show functionality; therefore trade dress is invalid | Affirmed: Jury had sufficient evidence to find nonfunctionality; Bodum met its burden |
| Whether district court erred by excluding utility-patent evidence under Rule 403 | Patent evidence was probative of functionality and should go to the jury’s weighing | Patents did not claim the specific Chambord features; pictures alone are misleading; admission risked juror confusion | Affirmed: Exclusion was within trial court’s discretion because patents did not claim the asserted features and posed substantial risk of confusion |
Key Cases Cited
- TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001) (utility patents are strong evidence that claimed features are functional)
- Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995) (trade dress cannot protect features that are functional)
- Ga.-Pac. Consumer Prods. LP v. Kimberly–Clark Corp., 647 F.3d 723 (7th Cir. 2011) (multi-factor test for trade dress functionality)
- Arlington Specialties, Inc. v. Urban Aid, Inc., 847 F.3d 415 (7th Cir. 2017) (trade dress infringement elements and functionality discussion)
- Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir. 1998) (role of patents in functionality analysis and when jury should weigh patent evidence)