988 F.3d 174
2d Cir.2021Background
- Mixpac manufactures dental mixing systems (cartridge + mixing tip) and registered "Candy Colors" (yellow, teal, blue, pink, purple, brown, white) for mixing-tip components on the principal and supplemental registers.
- A&N (and manufacturer Seil Global) displayed mixing tips with substantially identical colors at the 2016 Greater New York Dental Meeting; Mixpac sued for trade dress and trademark infringement, counterfeiting, unfair competition, and false designation of origin.
- At a one-day bench trial the district court found Mixpac’s color trade dress nonfunctional, entered judgment and a permanent injunction for Mixpac, and awarded statutory damages. The district court credited testimony that coloring adds manufacturing cost and that some competitors use different or no colors.
- Trial evidence (Mixpac declarations, employee testimony, catalogs, and industry practice) showed the colors operate as a color-coding scheme that correspond to mixing-tip diameters and help users match tips to cartridges.
- The Second Circuit held the colors are functional because they affect product quality/operation (identify diameter and aid matching), reversed the district court’s judgment for Mixpac, and remanded for entry of judgment for A&N on Mixpac’s Lanham Act claims; the appellate court declined to decide Mixpac’s contempt claim.
Issues
| Issue | Mixpac's Argument | A&N's Argument | Held |
|---|---|---|---|
| Whether Mixpac's use of Candy Colors on mixing tips is functional | Colors are nonfunctional trade dress (adds cost; competitors use different or no colors) | Colors are a functional color-coding system that signify tip diameter and aid cartridge-tip matching | Colors are functional; trade dress not protectable |
| Whether functionality doctrine defeats Mixpac's Lanham Act claims (infringement, counterfeiting, false designation) | Registered marks support infringement/counterfeiting relief | If colors are functional, Lanham Act protection is barred regardless of secondary meaning | Functionality bars trade dress protection; district court judgment reversed and remanded for judgment for A&N |
| Whether appellate court should decide Mixpac's civil-contempt claim based on prior injunctions against Seil Global | Mixpac preserved contempt claim; sought enforcement against A&N/Seil Global conduct | A&N argued underlying defaults/judgments invalid or injunction vague; sought dismissal | Appellate court declined to reach contempt (district court to consider in first instance on remand) |
Key Cases Cited
- TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001) (functionality bars trade dress protection; courts should not extend trademark law to useful product features)
- Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (product design usually serves purposes other than source identification; limits on trade dress protection)
- Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995) (trademark law cannot protect functional features even if they acquire secondary meaning)
- Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982) (Inwood test: feature is functional if essential to use or affects cost/quality)
- Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206 (2d Cir. 2012) (Second Circuit articulation of Inwood two-prong test and the competition/aesthetic functionality inquiry)
- Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993 (2d Cir. 1997) (functionality is a fact question reviewed for clear error)
- Fabrication Enters., Inc. v. Hygenic Corp., 64 F.3d 53 (2d Cir. 1995) (functionality standard referenced by district court)
- Dippin' Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197 (11th Cir. 2004) (color indicating flavor found functional)
- Warner Bros., Inc. v. Gay Toys, Inc., 724 F.2d 327 (2d Cir. 1983) (utility/functionality requires more than accommodating a useful function)