891 F.3d 878
9th Cir.2018Background
- Moldex-Metric, Inc. has sold bright fluorescent green foam earplugs since 1982 and claims that color as an unregistered trade dress; it sold over 1.6 billion pairs through 2011.
- McKeon Products began selling earplugs in a similar bright green color; Moldex sued for trademark (trade dress) infringement in 2011.
- The district court granted summary judgment for McKeon, finding Moldex’s claimed green color functional and therefore unprotectable; it did not decide McKeon’s alternative arguments (no secondary meaning, no likelihood of confusion).
- On initial appeal the Ninth Circuit vacated and remanded for reconsideration under Qualitex; on remand the district court again found the color functional and granted summary judgment for McKeon.
- The Ninth Circuit panel reverses and remands, holding that evidence about alternative colors is probative of functionality and that genuine factual disputes remain so summary judgment was inappropriate.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is Moldex’s green color functional (and thus unprotectable as trade dress)? | Moldex: color is not functional because many other colors can achieve visibility; therefore color can be protected. | McKeon: the green color is essential to earplug visibility for safety checks, so it is functional. | Reversed summary judgment — disputed facts (including alternative colors) preclude finding functionality on summary judgment. |
| Must courts consider availability of alternative designs/colors when assessing functionality? | Moldex: Yes — Qualitex requires inquiry into competitive necessity and alternative colors. | McKeon: TrafFix and some precedents allow deeming a feature functional under Inwood without examining alternatives if it contributes to product operation. | Court: Yes — alternative designs/colors are probative and must be considered; TrafFix does not eliminate that inquiry. |
| Did the district court comply with the Ninth Circuit’s remand mandate? | Moldex: District court failed to follow mandate by not considering alternative colors. | McKeon: District court complied and properly applied Qualitex/TrafFix. | Court: No mandate violation; remand did not dictate a specific outcome, but district court erred as a matter of law by giving insufficient weight to alternative-color evidence. |
| Is summary judgment appropriate on functionality given the record? | Moldex: No — material factual disputes (visibility tests, number of alternative visible colors, expert disagreement) require a jury. | McKeon: Yes — evidence that green is necessary for visibility and limited color space supports functionality. | Court: No — genuine disputes of material fact remain; vacated and remanded for further proceedings on functionality and, if necessary, on secondary meaning and likelihood of confusion. |
Key Cases Cited
- Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995) (color can be trademark subject to nonfunctionality/competitive-necessity inquiry)
- TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001) (reaffirmed Inwood test; utility patents are strong evidence of functionality)
- Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982) (functional feature: essential to use/purpose or affects cost/quality)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (Lanham Act protects trade dress)
- Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (trade dress includes product design; scope of protection principles)
- Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1998) (four-factor functionality test used in Ninth Circuit)
- Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062 (9th Cir. 2006) (two-step test incorporating Inwood and aesthetic-function/competitive-disadvantage inquiry)
- Millennium Labs., Inc. v. Ameritox, Ltd., 817 F.3d 1123 (9th Cir. 2016) (applied Disc Golf/Au-Tomotive framework; existence of alternatives can create factual disputes)
- Talking Rain Beverage Co. v. S. Beach Beverage Co., 349 F.3d 601 (9th Cir. 2003) (alternative designs may indicate nonfunctionality)
- Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252 (9th Cir. 2001) (considered alternative designs in functionality analysis)