Tie Tech, Inc. v. Kinedyne Corp.

• Decision Date: 11 July 2002
• Docket Number: No. 00-35815.,00-35815.
• Citation: 296 F.3d 778
• Parties: TIE TECH, INC., Plaintiff-Appellant, v. KINEDYNE CORPORATION, a New Jersey corporation, Defendant-Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

296 F.3d 778

TIE TECH, INC., Plaintiff-Appellant, v. KINEDYNE CORPORATION, a New Jersey corporation, Defendant-Appellee.

No. 00-35815.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted May 6, 2002.

Filed July 11, 2002.

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Bruce A. Kaser, Miller Nash LLP, Seattle, WA, for the appellant.

Thomas N. Young, Young & Basile, P.C., Troy, MI, for the appellee.

Appeal from the United States District Court for the Western District of Washington; Franklin D. Burgess, District Judge, Presiding. D.C. No. CV-99-05299-FDB.

Before RYMER, McKEOWN, and GOULD, Circuit Judges.

OPINION

McKEOWN, Circuit Judge.

This case concerns the validity of a product configuration trademark for the SAFECUT® "web-cutter" device. The issue presented is whether summary judgment was appropriate on grounds that the design is functional and therefore not protectible as a trademark. Underlying this question is the evidentiary role of a trademark registration in such a proceeding. We affirm the district court's grant of summary judgment against the trademark holder because the product design is not fanciful, but instead wholly functional, and consequently cannot have trademark significance.

BACKGROUND

Tie Tech makes and markets "wheelchair securement systems" for private and public vehicles. One of its products, the SAFECUT "web-cutter," is used in emergencies to facilitate the quick release of individuals from their securement systems. Tie Tech, which designed and marketed this cutter beginning in the 1980's, describes its product as "a hand-held, well-balanced webbing cutter" that is "made of durable polycarbonate." An advertising image portrays the SAFECUT device in action: a hand is gripping the device with four fingers fitted through an enclosed oval opening; an elongated prong of plastic guides the webbing towards a recessed cutting blade. Tie Tech offered the following depiction of the device:

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In 1998, the Patent and Trademark Office (PTO) registered "the entire configuration and arbitrary embellishment" of the SAFECUT device as a trademark on its primary register.¹ Specifically excepted from this trademark were the scalloped "finger indentations" on the handle which the examiner had previously concluded to be functional, thus precluding registration of those aspects of the design. Tie Tech achieved this result not without considerable struggle. The examiner originally rejected the application because, among other grounds, he concluded that the entire configuration was functional in design. After an appeal to the Trademark Trial and Appeal Board (TTAB), however, the application was remanded for further reconsideration, and the examiner without explanation limited his conclusions about functionality to the finger indentations on the handle and the shape of the partially concealed blade.

Kinedyne is a competitor of Tie Tech in the web-cutter market. As late as June 1999, Kinedyne was selling its own distinctive web-cutter. After some of Kinedyne's customers expressed dissatisfaction with Kinedyne's original cutter, one of its sales representatives requested a cutter similar to the SAFECUT design. According to Kinedyne's regional director, he understood that the representative wanted a SAFECUT — styled design because Kinedyne's then-current design "did not meet [unspecified] states' satisfaction."

In response to the special request, Kinedyne redesigned its web-cutter. The resulting Kinedyne cutter is virtually indistinguishable from the SAFECUT — save the color, the manufacturer's name embossed in the polycarbonate frame, and the absence of the scalloped finger indentations in the handle, the most noticeable difference.

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Upon discovery of Kinedyne's new cutter, Tie Tech sued Kinedyne for trademark infringement under the Lanham Act, 15 U.S.C. § 1114, as well as for unfair competition and consumer protection claims under Washington state law. Kinedyne moved for summary judgment, arguing that, as a consequence of its functionality, the design mark was invalid pursuant to 15 U.S.C. § 1115(b)(8). The district court agreed and granted summary judgment for Kinedyne.

DISCUSSION

The principal issue in this case is whether the district court properly concluded, as a matter of law, that Tie Tech's product configuration is functional and thus unprotectible. Tie Tech's appeal is two-fold. It first argues that the mere fact of trademark registration alone should have been sufficient to create a material issue of fact and defeat summary judgment. In the alternative, Tie Tech argues that it presented sufficient evidence beyond its registration of non-functionality to warrant reversal. We address each contention in turn,² recognizing that at the summary judgment stage our charge "is not [ourselves] to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

I. EVIDENTIARY VALUE OF REGISTRATION

The relationship between trademark protection and functionality is well established: "The physical details and design of a product may be protected under the trademark laws only if they are nonfunctional...." Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 515 (9th Cir.1989). The Lanham Act codifies this common law requirement by prohibiting registration of a mark for a product configuration that is functional. See 15 U.S.C. § 1052(e)(5) (no protection for a mark which "comprises any matter that, as a whole, is functional"). Consistent with this threshold registration requirement, Congress has allowed defendants in an infringement action to raise an affirmative defense of invalidity based on a mark's functionality. 15 U.S.C. § 1115(b)(8). This defense, however, is not raised on a clean slate. Rather, it provides the challenger of a mark the opportunity to rebut prima facie evidence of the mark's validity. 15 U.S.C. § 1115(a) ("registration ... shall not preclude another person from proving any legal or equitable defense ... set forth in subsection (b)"). Section 1115(a), entitled "Evidentiary value," provides that "[a]ny registration... shall be admissible in evidence and shall be prima facie evidence of the validity of the registered mark and ... of the registrant's exclusive right to use the registered mark...." (Emphasis added).

As "prima facie evidence of validity," the registration certificate is simply evidence that "in the judgment of the law, is sufficient to establish a given fact, or the group or chain of facts constituting the party's claim, and which if not rebutted or contradicted, will remain sufficient." BLACK'S LAW DICTIONARY 1190 (6th ed.1990) (emphasis added).

The cases often refer interchangeably to "prima facie evidence" of validity and "presumption of validity." See e.g., America Online, Inc. v. AT & T Corp., 243 F.3d 812, 818 (4th Cir.2001); Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 936 (7th Cir.1986). We note that from an evidentiary viewpoint, establishment of a prima facie case is often seen as creating a presumption. For example, in the Title VII context, "[e]stablishment of a prima facie case in effect creates a presumption that the employer unlawfully discriminated against the employee." 1 JACK B. WEINSTEIN & MARGARET A. BERGER, WEINSTEIN'S FEDERAL EVIDENCE § 301.29[1][a] (Joseph M. McLaughlin, ed., 2d ed.1997). Thus, while we prefer to use the statutory language because it more precisely conveys the evidentiary nature of the registration, we acknowledge the interchangeability of the terms in practice.

In trademark terms, the registration is not absolute but is subject to rebuttal. In essence, the registration discharges the plaintiff's original common law burden of proving validity in an infringement action. Vuitton et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769, 775 (9th Cir.1981); see also 15 U.S.C. § 1125(a)(3) (in absence of registered mark, plaintiff has burden of proving non-functionality).

Terminology with respect to the invalidity defense based on functionality is likewise not wholly consistent. The cases variously refer to the defendant as having the burden of proof or having assumed a shifting burden of production. This mixing and matching of terms has engendered some confusion in the analysis. For example, in Vuitton we held that the "registration... shifts the burden of proof from the plaintiff, who would have to establish his right to exclusive use in a common law infringement action, to the defendant, who must introduce sufficient evidence to rebut the presumption of plaintiff's right to such protected use." Id. at 775. In contrast, the Seventh Circuit concluded that "[t]he presumption really serves only to shift the burden of production to the defendant." Liquid Controls, 802 F.2d at 938.

Although the description of the burden shifting is different in these two cases, the result is the same. Overall, the plaintiff retains the ultimate burden of persuasion in a trademark infringement action, namely proof of infringement. A necessary concomitant to proving infringement is, of course, having a valid trademark; there can be no infringement of an invalid mark. See Yarmuth-Dion, Inc. v. D'ion Furs, Inc., 835 F.2d 990, 992 (2nd Cir.1987) (characterizing the plaintiff's burden in an infringement action as a "two-step test"); 4 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 27:14 (4th ed.2002).

Validity, then, is a threshold issue. On this point, the plaintiff in an infringement action with a registered mark is given the prima facie or presumptive advantage on the issue of validity, thus shifting the burden of production to the defendant to prove otherwise — in our case, to provide evidence of functionality. Or, to put it as we did in Vuitton, the...