W.T. Rogers Co., Inc. v. Keene

• Decision Date: 26 November 1985
• Docket Number: No. 85-1208,85-1208
• Citation: 778 F.2d 334,228 USPQ 145
• Parties: , 228 U.S.P.Q. 145 W.T. ROGERS COMPANY, INC., Plaintiff-Appellant, v. Wendell R. KEENE and Keene Manufacturing, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 334

778 F.2d 334

54 USLW 2344, 228 U.S.P.Q. 145

W.T. ROGERS COMPANY, INC., Plaintiff-Appellant, v. Wendell R. KEENE and Keene Manufacturing, Inc., Defendants-Appellees.

No. 85-1208.

United States Court of Appeals, Seventh Circuit.

Argued Oct. 21, 1985.

Decided Nov. 26, 1985.

Nicholas J. Seay, Isaksen, Lathrop, Esch, Hart & Clark, Madison, Wis., for plaintiff-appellant.

Kent I. Carnell, Walsh, Walsh, Sweeney & Whitney, S.C., Madison, Wis., for defendants-appellees.

Before POSNER, FLAUM and EASTERBROOK, Circuit Judges.

POSNER, Circuit Judge.

A brand's shape, color, pattern, or other design characteristic cannot obtain the protection of trademark law if it is "functional"; and we are required in this case to decide what the standard of functionality shall be in this circuit.

The plaintiff, Rogers, and the corporate defendant, Keene, are competing manufacturers of office supplies; Wendell Keene, the individual defendant, is the founder and president of the corporation. Both companies are located in Wisconsin. In 1969 Rogers began to manufacture a molded plastic stacking office tray for letters and other documents. As shown in the photograph at the end of this opinion, the sides of the tray are hexagonal, and have little holes on the top and "feet" on the bottom so that the tray can be clamped together with other trays to form a stack. The Rogers tray was for long the only tray with hexagonal end panels; competing trays had rectangular panels. Whether because the hexagonal design was pleasing to customers or for other reasons, the Rogers tray was a big success and today Rogers sells about one million of the trays each year.

Mr. Keene was an officer, and later a sales representative, of Rogers before he founded his own company in 1983. When he went to a plastics firm to get a mold made for the plastic stacking office tray that he wanted to manufacture, he gave the molder a Rogers tray, and asked him to make a mold for a similar tray. In fact the tray that the molder produced and that the Keene corporation sells as its "Model 1001" is virtually identical to the Rogers tray. Before Keene set up in competition with Rogers, Rogers hadn't worried much about affixing a trade name to its tray, but afterward it stamped "Stak-Ette" on the tray.

Rogers never tried to get a design patent for the hexagonal end panels that are the most distinctive feature of its tray; nor did it ever try to register the feature as a trademark. It claims nevertheless to have a common law trademark in the feature, which it contends identifies plastic stacking office trays made by Rogers. It brought this suit under section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a), which creates a federal remedy for making "a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same...." Since the purpose of a trademark, whether federally registered or unregistered, is to designate the origin of goods, the infringement of such a trademark is actionable under section 43(a), provided the other requirements of the section are met. See, e.g., Bose Corp. v. Linear Design Labs, Inc., 467 F.2d 304, 309-10 (2d Cir.1972); 1 Gilson, Trademark Protection and Practice Sec. 2.13 (1984); 2 McCarthy, Trademarks and Unfair Competition Sec. 27:3 (2d ed. 1984). And provided that a defense of functionality is recognized, there is no conflict with federal patent law, save possibly with 35 U.S.C. Sec. 171, which allows a 14-year patent to be granted for a nonfunctional ornamental design--a design patent. But the courts that have considered the issue have concluded, rightly in our view, that this section does not prevent the enforcement of a common law trademark in a design feature. See discussion in 1 Chisum, Patents Sec. 1.04 (1985). The trademark owner has an indefinite term of protection, it is true, but in an infringement suit must also prove secondary meaning and likelihood of confusion, which the owner of a design patent need not do; there is therefore no necessary inconsistency between the two modes of protection. Cf. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 489-91, 94 S.Ct. 1879, 18889-91, 40 L.Ed.2d 315 (1974); Aronson v. Quick Point Pencil Co., 440 U.S. 257, 99 S.Ct. 1096, 59 L.Ed.2d 296 (1979).

We have said, and the plaintiff does not deny, that functionality is a defense to a suit under section 43(a); but perhaps a few words are in order about the source of the defense. Functionality is a traditional defense in the common law of unfair competition to a suit for trademark infringement. One view of section 43(a) is that the section merely provides a federal remedy for unfair competition (occurring in interstate commerce), and on that view we would look to the common law of Wisconsin for the contours of the functionality defense. Another view is that section 43(a) creates a federal substantive law of unfair competition in interstate commerce, or more precisely authorizes the federal courts to create such a law; in other words, that it is a grant of common law powers to these courts. On this view a suit such as this is a suit to enforce a federal common law trademark, and the court is not bound to follow the common law of a particular state. Perhaps therefore it would not be bound to recognize a defense of functionality; perhaps, indeed, the rule should be that functional features can be protected where necessary to prevent confusion unless competition is unduly hindered, see Note, The Problem of Functional Features: Trade Dress Infringement Under Section 43(a) of the Lanham Act, 82 Colum.L.Rev. 77, 81-93 (1982). This leaves out of account, however, the importance of recognizing a defense of functionality in order to head off a collision between section 43(a) and patent law. There is also the considerable practical objection, reminiscent of the objections to the general federal common law of the Swift v. Tyson era, that confusion, complexity, and forum-shopping would be the result of allowing firms to enforce simultaneously, in different courts, state and federal common law trademarks.

We shall not have to decide whether the common law trademark that section 43(a) protects is state or federal, and whether, if the former, still the defense of functionality is federal; the parties do not suggest that it would make any difference to the outcome of this case how the questions are answered. We mention them merely to make clear that they are questions that this opinion does not resolve, implicitly or otherwise.

The case was tried to a jury, which was given a special verdict to fill in that required it to answer (so far as relevant to this appeal) the following sequence of questions. The first was whether the hexagonal end panels on the Rogers tray are nonfunctional. If the jury answered "no," it was not to answer the following questions. They were whether the hexagonal end panel, if nonfunctional, either identified the Rogers tray or (what amounts to the same thing, but was confusingly stated as an alternative) had a "secondary meaning" (that is, whether it signified to consumers the Rogers tray), and if so whether Keene's duplicating the design for its own tray was likely to confuse consumers. The jury answered the first question "no" and therefore stopped; the district judge then entered judgment for Keene.

As should be apparent from the structure of the special verdict, the concept of functionality is intended to screen out from the protection of trademark law certain design features even if they have become so far identified with the manufacturer of a particular brand that consumers may be confused about the origin of the good if another producer is allowed to adopt the feature. The reason for this screen or filter becomes apparent once the purpose of trademark protection is understood. (For useful background see Note, Promotional Goods and the Functionality Doctrine: An Economic Model of Trademarks, 63 Tex.L.Rev. 639, 656-62 (1984).) The purpose is to reduce the cost of information to consumers by making it easy for them to identify the products or producers with which they have had either good experiences, so that they want to keep buying the product (or buying from the producer), or bad experiences, so that they want to avoid the product or the producer in the future. Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423, 1429-30 (7th Cir.1985). This purpose is achieved by The same principle applies if the trademark is part of the design of the product (its shape, pattern, etc.) rather than a word or logo affixed to the product. If the feature is ornamental, fanciful, decorative, like the patterns on a piece of china or of silverware, then the manufacturer can use it as his name, his symbol, his identifying mark. Ornamental, fanciful shapes and patterns are not in short supply, so appropriating one of them to serve as an identifying mark does not take away from any competitor something that he needs in order to make a competing brand. But if the feature is not ornamental or fanciful or whimsical or arbitrary, but is somehow intrinsic to the entire product consisting of this manufacturer's brand and his rivals' brands, trademark production will be denied. The name of this principle is "functionality," on which see, e.g., In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1338-41 (C.C.P.A.1982). Thus the first company to make an airplane cannot use the characteristic shape of an airplane as its trademark, thereby condemning its rivals to build airplanes that won't fly. Cf. Pope Automatic Merchandising Co. v. McCrum-Howell Co., 191 Fed. 979, 981-82 (7th Cir.1911). A firm that makes footballs could not use as its trademark the characteristic oval shape of the football, thereby forcing its rivals to find another shape for their footballs; since they wouldn't be able to sell any round or oblong or hexagonal footballs, that firm would have, not an...