177 F.3d 1204 (11th Cir. 1999), 98-8097, Wilhelm Pudenz, GmbH v. Littlefuse, Inc.

Docket Nº:98-8097.
Citation:177 F.3d 1204
Party Name:WILHELM PUDENZ, GmbH, Plaintiff-Counterclaimant Defendant-Appellee, v. LITTLEFUSE, INC., Defendant-Counterclaimant Plaintiff-Appellant.
Case Date:June 07, 1999
Court:United States Courts of Appeals, Court of Appeals for the Eleventh Circuit
 
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Page 1204

177 F.3d 1204 (11th Cir. 1999)

WILHELM PUDENZ, GmbH, Plaintiff-Counterclaimant Defendant-Appellee,

v.

LITTLEFUSE, INC., Defendant-Counterclaimant Plaintiff-Appellant.

No. 98-8097.

United States Court of Appeals, Eleventh Circuit

June 7, 1999

Daniel N. Christus, Robert E. Wagner, Jeffrey R. Gargano, Wallenstein & Wagner, Ltd., Chicago, IL, for Littlefuse, Inc.

Geoffrey H. Cederholm, Atlanta, GA, Roger M. Golden, Fenwick & West, LLP, Washington, DC, for Wilhelm Pudenz, GmbH.

Appeal from the United States District Court for the Northern District of Georgia.

Before COX, Circuit Judge, FAY, Senior Circuit Judge, and NANGLE [*], Senior District Judge.

FAY, Senior Circuit Judge:

Defendant-Appellant Littlefuse, Inc. ("Littlefuse") appeals the district court's order granting declaratory relief to Plaintiff-Appellee Wilhelm Pudenz GmbH ("Pudenz"), invalidating two of Littlefuse's federally registered trademarks, and denying Littlefuse's counterclaims against Pudenz based on those marks for unfair competition and unlawful importation of goods. On appeal, this case raises the following issue: whether a federally registered trademark that has achieved incontestable status may nonetheless be declared invalid based on the functionality doctrine. We hold that registered trademarks that have become incontestable under 15 U.S.C. § 1065 may still be declared invalid if they are found to protect the functional features of a product, and therefore AFFIRM.

I. BACKGROUND

Littlefuse and Pudenz are both companies that manufacture and market, among other electronic devices, plug-in blade fuses for automobiles. Littlefuse and its licensees sell nearly 100% of the automotive blade fuses sold in the United States. Pudenz, a German company, has a significant share of the European market for automotive blade fuses and has started to enter the American market. Both companies market their fuses primarily to automobile and automobile parts manufacturers, but also sell fuses to aftermarket purchasers such as car owners.

As part of its product line, Littlefuse produces and markets an automotive fuse called the ATO blade fuse. At issue in this case are two of Littlefuse's registered trademarks associated with the marketing of this fuse. The first is the subject of U.S. Trademark Registration Number 1,513,357 (the " '357 registration"), which covers the two-dimensional outline of the ATO fuse. The second is the subject of U.S. Trademark Registration Number 1,553,579 (the " '579 registration"), which covers the three-dimensional configuration of the ATO fuse housing. As the registrations show and Littlefuse's counterclaims make clear, both registrations seek to protect the configuration of the ATO fuse as trade dress. Both registrations have also achieved "incontestable" status pursuant to 15 U.S.C. § 1065. 1

In 1995, Littlefuse sent Pudenz a cease and desist letter, alleging that the configuration of Pudenz's FKS and FK2 automotive blade fuses (the "FK fuses") infringed the registered trade dress of the Littlefuse ATO fuses as set forth in their trademark registrations. The letter demanded that Pudenz refrain from importing the FK fuses into the United States. In response, Pudenz initiated this lawsuit by filing a Complaint for a declaratory judgement that the FK fuses did not infringe any of Littlefuse's trademark rights. In its Answer, Littlefuse filed counterclaims against Pudenz and Pudenz's United States distributor, Wickmann USA, Inc. ("Wickmann"), for infringement of the ATO fuse trade dress as set forth in the '357 and '579 registrations, for federal unfair competition, and for unlawful importation under 15 U.S.C. § 1124 and 19 U.S.C. § 1526.

Littlefuse moved for summary judgment on its counterclaims. The district court denied the motion, holding (1) that functionality may be raised as a defense in actions based on incontestable trademark registrations; (2) that Pudenz established a genuine factual dispute as to the functionality of the ATO trade dress; and alternatively (3) that there was a genuine factual dispute as to the likelihood of confusion created by the configuration of the FK fuses. The case then proceeded to trial before the district court. On January 7, 1998, the court issued a Judgement and Order granting declaratory relief to Pudenz and denying Littlefuse's claims. After finding that both the individual features of the ATO fuse housing and the overall configuration of those features in the housing itself were functional, the court held and declared that this functionality rendered the '357 and '579 registrations invalid and unenforceable. In the alternative, the court held that even if the registrations were valid, the FK fuses did not infringe the trade dress of the ATO fuses. 2 Littlefuse filed timely notice of appeal, and we have jurisdiction pursuant to 28 U.S.C. § 1291.

II. STANDARD OF REVIEW

The applicability of the functionality doctrine to a trademark that is the subject of an incontestable registration is a question of law. As such, we review the district court's determination de novo. See McBride v. Sharpe, 25 F.3d 962, 968 (11th Cir.1994).

III. DISCUSSION

  1. The Functionality Doctrine

    The functionality doctrine is a judicially created rule that predates the Lanham Act. Under this rule, no trademark rights may be claimed in a product's functional shapes or features. 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 7:63 (4th ed.1997); See Epic Metals Corp. v. Souliere, 99 F.3d 1034, 1038 (11th Cir.1996)("A products features are protectible as trade dress if they are primarily non-functional."). This proscription serves two purposes. First, by ensuring that competitors remain free to copy useful product features, it prevents the trademark law from undermining its own pro-competitive objectives. Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164, 115 S.Ct. 1300, 1304, 131 L.Ed.2d 248 (1995). Second, the...

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