954 F.3d 647
4th Cir.2020Background:
- CTB and Hog Slat both manufacture pan-style poultry feeders; CTB previously owned U.S. Pat. No. 5,092,274 (’274 Patent) claiming L-shaped spokes and a V-shaped pan and U.S. Pat. No. 6,571,732 (’732 Patent) claiming use of red and reflective particles to attract birds.
- After the ’274 patent expired, CTB obtained a principal-register trademark for the feeder’s three-dimensional "generally octagonal" configuration and a supplemental-register registration for the red-pan/gray-spoke color combination.
- Hog Slat began selling a very similar feeder; CTB sued for trade dress infringement under the Lanham Act and North Carolina common law.
- District court granted summary judgment for Hog Slat, holding both the Configuration Trade Dress (shape) and the Color Trade Dress (red pan/gray spokes) primarily functional based on CTB’s patents, advertising, and testimony; spoliation sanction recommended by a magistrate became moot after summary judgment.
- CTB appealed, arguing genuine factual disputes on functionality; the Fourth Circuit affirmed, finding uncontroverted evidence that the shape and colors serve utilitarian functions (bird egress, feed presentation, and attraction).
Issues:
| Issue | CTB's Argument | Hog Slat's Argument | Held |
|---|---|---|---|
| Whether CTB’s Configuration Trade Dress (flattened octagonal profile) is functional | The octagonal outline is arbitrary/ornamental and not claimed in the ’274 patent | The upper L-shaped spokes and lower V-shaped pan are functional (facilitate egress, contain feed); combination is an assemblage of functional parts | Held functional; summary judgment for Hog Slat (trade dress invalid) |
| Whether CTB’s Color Trade Dress (red pan + gray spokes) is functional | The red/gray combination is arbitrary; expert testimony disputes functionality | CTB’s own ’732 patent, marketing, and testimony show red and reflective/shiny gray elements attract birds (functional) | Held functional; summary judgment for Hog Slat (trade dress invalid) |
| Whether the spoliation sanction is reviewable | CTB opposed the sanction recommendation | Hog Slat supported sanction for failure to preserve advertisements and surveys | Moot because trade dress claims resolved on summary judgment |
Key Cases Cited
- TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001) (patent disclosure is strong evidence of functionality; trade dress cannot protect functional features)
- Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995) (trade dress cannot extend to functional product features)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (definition of trade dress and distinctiveness principles)
- McAirlaids, Inc. v. Kimberly-Clark Corp., 756 F.3d 307 (4th Cir. 2014) (application of Morton‑Norwich factors and burden-shifting for registered trade dress)
- Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982) (functionality test: essential to use or affects cost/quality)
- Tools USA & Equip. Co. v. Champ Frame Straightening Equip. Inc., 87 F.3d 654 (4th Cir. 1996) (three-element trade dress infringement framework)
- Disc Golf Ass’n, Inc. v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1998) (patent-based estoppel: cannot assert non-functionality after claiming functionality in a patent)