897 F.3d 1008
9th Cir.2018Background
- OTR Wheel sells an industrial tire called the "Outrigger," holds a registered word mark and a registered trade dress for the tread design, and contracted with Solideal and Superhawk to manufacture 355-size Outriggers in China.
- West (defendant) sought tires from Superhawk for testing with OTR’s customer (Genie), requested that identifying markings be removed ("buff off the Solideal name"), and asked Superhawk to produce tires in advance of a Solideal order so he could use some as his own development samples.
- Superhawk produced 355-size tires; emails from Superhawk confirmed the tires were Solideal‑branded Outriggers, and show West requested removal of identifying information.
- Jury found West liable for reverse passing off under the Lanham Act, and for various state claims; the jury also found OTR’s trade dress registration was procured by fraud and that the trade dress was invalid.
- District court set aside the jury finding of fraud on the PTO (holding West failed to prove fraud by clear and convincing evidence) but sustained the jury’s invalidity finding and entered judgment for OTR on reverse passing off; this appeal concerns Lanham Act issues.
Issues
| Issue | Plaintiff's Argument (OTR) | Defendant's Argument (West) | Held |
|---|---|---|---|
| Whether Dastar precludes reverse passing off claim | OTR: West passed off genuine OTR tires as his own, not merely copied design | West: Dastar bars reverse passing off claims that merely seek to prevent copying of IP | Court: Affirmed liability — evidence showed West took genuine OTR tires produced for Solideal and presented them as his own, so Dastar did not bar claim |
| Whether substantial evidence shows removal of identifying information | OTR: Emails and expert testimony show spring plates/blank plates were used to omit sidewall markings | West: No direct mold produced; expert said blank plate would leave deeper marks; structural differences show not genuine OTR tire | Court: Substantial evidence supported jury’s finding that identifying information was removed and molds/spring plates were used |
| Whether OTR committed fraud on the PTO in obtaining trade dress registration | OTR: Declarations/emails were not fraudulent or materially omitted facts; examiner relied on later acquired‑distinctiveness evidence | West: PTO submissions omitted material functional admissions and included false statements | Held: District court correctly set aside jury fraud finding — West failed to prove fraud by clear and convincing evidence |
| Whether OTR adequately pleaded an unregistered trade dress claim | OTR: Section 43 allegation encompassed an unregistered trade dress claim broader than the registration | West: Complaint emphasized registrations and did not put parties on notice of a broader unregistered claim | Court: Affirmed — complaint did not sufficiently plead an unregistered claim asserting "something more," so trial court properly refused the instruction |
Key Cases Cited
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) ("origin" in § 43(a) refers to producer of tangible goods; reverse passing off cannot be used to police copying of IP)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (plaintiff must show likelihood of consumer confusion for trade dress claim)
- Wal‑Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000) (design trade dress requires secondary meaning to be protectable)
- TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001) (functionality doctrine bars trade dress protection for functional product features)
- Kehoe Component Sales, Inc. v. Best Lighting Prods., Inc., 796 F.3d 576 (6th Cir. 2015) (example where continued manufacture from same molds was characterized as copying under Dastar)
- Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778 (9th Cir. 2002) (burden shifts to defendant to prove a registered mark is not distinctive or is functional)
- Hokto Kinoko Co. v. Concord Farms, Inc., 738 F.3d 1085 (9th Cir. 2013) (trademark cancellation for fraud on the PTO is available; elements of fraud identified)