CTB, Inc. v. Hog Slat, Inc.

• Decision Date: 27 March 2020
• Docket Number: No. 18-2107,18-2107
• Citation: 954 F.3d 647
• Parties: CTB, INC., Plaintiff - Appellant, v. HOG SLAT, INC., Defendant - Appellee.
• Court: U.S. Court of Appeals — Fourth Circuit

954 F.3d 647

CTB, INC., Plaintiff - Appellant,

v.HOG SLAT, INC., Defendant - Appellee.

No. 18-2107

United States Court of Appeals, Fourth Circuit.

Argued: January 29, 2020

Decided: March 27, 2020

ARGUED: Cynthia M. Filipovich, CLARK HILL PLC, Detroit, Michigan, for Appellant. Robert Charles Van Arnam, WILLIAMS MULLEN, Raleigh, North Carolina, for Appellee. ON BRIEF: Andrew R. Shores, WILLIAMS MULLEN, Raleigh, North Carolina, for Appellee.

Before KEENAN, WYNN, and RUSHING, Circuit Judges.

Affirmed by published opinion. Judge Wynn wrote the opinion, in which Judge Keenan and Judge Rushing joined.

WYNN, Circuit Judge:

In this trade dress infringement case, Plaintiff-Appellant CTB, Inc. ("Plaintiff") appeals rulings of the U.S. District Court for the Eastern District of North Carolina granting summary judgment in favor of Defendant-Appellee Hog Slat, Inc. ("Defendant") on the grounds that Plaintiff’s trade dress registrations, which cover the shape and color scheme of its chicken feeder products, are functional and thus only eligible for patent law’s protection of utilitarian inventions. Plaintiff also appeals a district court order recommending a trial sanction for spoliation of evidence. For the reasons set forth below, we conclude the district court did not err in granting summary judgment and that the sanction is moot. Accordingly, we affirm.

I.

A.

Plaintiff and Defendant manufacture, market, and sell pan feeders for chicken farms. Pan feeders, which have become the industry standard, are placed throughout poultry barns and generally consist of three portions: a bottom pan, from which chickens eat; a top grill, containing spokes that separate feeding birds; and a center cone, which may be adjusted to regulate the amount of feed distributed from a central feed line to the pan. Pan feeders permit efficient and plentiful feeding of broiler chickens¹ through their lifespans.

In 1990, Plaintiff obtained United States Patent No. 5,092,274, titled "Poultry Feeder" (" ’274 Patent"). That patent claimed a novel structure for the spokes and pan that improved upon several issues observed with prior art pan feeders. As relevant to this appeal, the ’274 Patent noted that "the shape and configuration" of the spokes in the top grill portion of prior art feeders could cause "birds which force their way into the feeder apparatus [to] become trapped inside," resulting in injury or death. ’274 Patent col. 1 ll. 36-38. An example of one such prior art feeder is below.

U.S. Patent No. 3,230,933 fig. 5.

To solve this problem, the ’274 Patent used L-shaped spokes to increase the area within the feeder, thus giving birds that enter the feeder more room to maneuver out. An image of such a feeder is shown below.

’274 Patent fig. 2.

Specifically, the ’274 Patent disclosed spokes arranged in an "inverted L-shaped profile," id. at claims 3, 18, that "radially project outward [from the feeder center] at spaced intervals in a substantially horizontal direction, until turning downward to extend in a substantially vertical direction ...," id. at col. 5 ll. 9-12. Those spokes "define an annular area 50 within the feeder 10 of significantly greater dimension in both height and depth than existed in comparable prior art feeders," id. at col. 5 ll. 16-18, ensuring that "birds and animals that do find their way inside have sufficient room to maneuver past and get out of the grill means 36 easier than it was for them to get in, without suffering injury and/or damaging the feeder," id. at col. 5 ll. 27-31.

The ’274 Patent also disclosed a more efficient shape for the feeding pan. The pan contains a raised "conical central bottom portion," creating a "V" shaped circular trough denoted by the arrows in the below image. Id. at col. 7 l. 29.

Id. at fig. 16. That trough makes feed accessible to chickens. It also minimizes feed waste by ensuring that chickens cannot easily rake feed out of the pan. The pan as a whole "contain[s] and present[s] feed" to the chickens. Id. at claim 1, col. 2 ll. 39-40.

The ’274 Patent expired in 2010. Shortly after its expiration, Plaintiff sought trade dress protection for the octagonal profile shape of its feeders. The United States Patent and Trademark Office ("USPTO") rejected Plaintiff’s initial application as functional and therefore only eligible for patent protection, rather than trade dress. The USPTO asked Plaintiff to provide supplemental items relevant to its trade dress inquiry, including advertising and promotional materials for the feeders, a written explanation of alternative designs, and a written explanation of any similar designs used by Plaintiff’s competitors. Although the parties dispute whether all such materials were submitted, the USPTO eventually granted U.S. Trademark Registration Number 4,116,988 ("Configuration Trade Dress"), pictured below, which was published on the principal trademark register.

The description of the Configuration Trade Dress reads:

The mark consists of a three-dimensional configuration of a unique mechanized poultry feeder which includes a pan structure and a grill structure. When viewed from any side, the perimeter of the feeder has a generally octagonal shape as it has two generally vertical sides, defined by portions of both the pan structure and the grill structure, two generally horizontal sides, one defined at the bottom of the pan structure and the other defined at the top of the grill structure, and four generally diagonal sides which interconnect the vertical sides to the horizontal sides. Internal angles between the diagonal sides and the vertical sides are generally smaller than the internal angles between the diagonal sides and the horizontal sides.

Plaintiff also sought trade dress protection for the shape of the Configuration Trade Dress in combination with the color scheme used in Plaintiff’s feeders: a red pan with gray spokes. The USPTO initially rejected this application, finding the shape functional. Plaintiff then dropped its shape claims and sought only protection for the red and gray color combination. The USPTO repeatedly rejected that combination as insufficiently distinctive to differentiate Plaintiff’s feeders from competitor products. Plaintiff eventually amended its application to seek publication on the supplemental trademark register. The USPTO then granted U.S. Trademark Registration Number 4,290,371 ("Color Trade Dress"), pictured below with color annotations added. The Color Trade Dress was published on the supplemental register.

The description of the Color Trade Dress reads:

The mark consists of the colors red and gray as it appears on the surface of the poultry feeder. The color red is provided on the surfaces of the pan and the color gray is provided on the surfaces of the grill of the poultry feeder. The overall shape of the poultry feeder is no[t] claimed as a feature of the mark.

In 2003, Plaintiff also obtained United States Patent No. 6,571,732, titled "Reflective Particle Feeder" (" ’732 Patent"). That patent noted that "it is desirable for agricultural animals to eat plentifully so that they may stay healthy for their ultimate purpose," but that some animals "are not capable of detecting where their food is being set out." ’732 Patent col. 1 ll. 10-19. The ’732 Patent stated that one way to attract animals to feeders is via color, and that "it is relatively well known within the agricultural industry that adult turkeys and chickens are attracted to the color red and, therefore, many adult turkey and chicken feeding trays are now colored red in order to entice the adult turkeys and chickens to move towards the red feeding tray" to eat. Id. at col. 1 ll. 26-32.

The ’732 Patent, observing that animals are "drawn or attracted" to reflective objects, also disclosed "a plastic non-reflective feeder that is integrally formed with a plurality of reflective particles that attract the attention of the animals ... enabling them to find and eat the food in the feeder." Id. at col. 3 ll. 45-46, col. 2 ll. 6-11. The ’732 Patent further stated that such reflective particles "are preferably metallic flecks or flakes, such as titanium or aluminum." Id. at col. 3 ll. 49-50.

The parties do not dispute that in 2009, shortly before expiration of the ’274 Patent, Defendant began efforts to copy Plaintiff’s C2 Plus feeder. See J.A. 3734 (Defendant’s CEO stating in an email that he wished to "clone [the C2 Plus feeder] ASAP").² Defendant ultimately began selling feeders very similar to Plaintiff’s. The image below shows Plaintiff’s C2 Plus feeder on the right and Defendant’s GrowerSelect feeder on the left.

In 2013, Defendant’s national sales manager stated in an internal email, "As I always say when selling [the GrowerSelect] pan to our customers .... [, w]e copied it identically, the good and the bad." J.A. 2480.

B.

In 2014, Plaintiff filed suit, alleging that Defendant, by copying the C2 Plus and selling it as the GrowerSelect, committed trademark infringement of the Configuration Trade Dress and Color Trade Dress under the Lanham Act, as well as North Carolina common-law trademark infringement.³ Defendant answered and counterclaimed, arguing the asserted items of trade dress were invalid due to Plaintiff’s deliberate failure to provide relevant information during their prosecution at the USPTO. Defendant also raised various defenses including, as relevant to this appeal, that Plaintiff’s trade dress is dictated by utilitarian considerations of product function and thus may not be asserted.

In 2015, Defendant moved for sanctions against Plaintiff for alleged spoliation of evidence. The motion was referred to a magistrate judge, who recommended that Plaintiff be sanctioned for failing to preserve certain competitor advertisements requested by the USPTO during the trade dress application process. The magistrate found that Plaintiff could reasonably have expected those advertisements to be relevant to litigation, given that in 2011 Plaintiff requested that the USPTO expedite...