Bodum USA, Inc. v. A Top New Casting Inc. - 927 F.3d 486 (7th Cir. 2019)

Rule:

The Lanham Act permits a civil action against any person who uses any word, term, name, symbol, or device in connection with any goods or services in a manner which is likely to cause confusion as to the source of those goods or services. 15 U.S.C.S. § 1125(a)(1)(A). The Act's protection extends to a product's trade dress, which includes a product design that is so distinctive it identifies the product's source. As with any other trademark, infringement of a product's trade dress is actionable under the Act.

Facts:

Plaintiff-appellee Bodum has been selling French press coffeemakers since the 1970s. Plaintiff began distributing the Chambord, its flagship French press, in 1983. The Chambord's design originated in France in the 1930s and was based on the towers of the Chambord Chateau. Plaintiff acquired exclusive rights to distribute the Chambord in 1991 and has spent millions of dollars promoting it in print and television advertisements and at trade shows worldwide. In 2014, defendant-appellant A Top New Casting, Inc. ("A Top") began selling a competing French press coffeemaker that was similar in appearance to the Chambord. Consequently, plaintiff filed a complaint against defendant, alleging that the latter intentionally adopted the overall appearance of the Chambord, thereby infringing on its unregistered trade dress. After a five-day trial, a jury returned a verdict in favor of plaintiff, finding that defendant had willfully infringed on plaintiff’s trade dress in the Chambord and awarding plaintiff $2 million in damages. Defendant moved for judgment as a matter of law under Federal Rule of Civil Procedure 50 and for a new trial under Rule 59, claiming that it was entitled to judgment as a matter of law because plaintiff had failed to prove its Chambord trade dress elements were nonfunctional. Alternatively, defendant argued that it was at least entitled to a new trial because the district court erred in excluding evidence of various utility patents covering French press coffeemakers. The district court denied both motions. Defendant appealed.

Issue:

1. Did plaintiff fail to prove that its Chambord trade dress elements were functional, thereby entitling defendant to judgment as a matter of law?
2. Did the district court err in excluding evidence of various utility patents covering French press coffeemakers, thereby entitling defendant to a new trial?

Answer:

1) No. 2) No.

Conclusion:

The court held that the plaintiff presented sufficient evidence for a reasonable jury to conclude that the overall look of its French press coffee maker was nonfunctional where its expert testified about the nonfunctionality of the design elements, like the dome-shaped lid and handle, its advertising focused on the classic look of the design, and the design conferred no cost or quality advantage that made it functional. Moreover, the court affirmed the decision to exclude evidence of various utility patents pursuant to Fed. R. Evid. 403, since the defendant was unable to point to a single patent that claimed the design elements the plaintiff claimed as its trade dress. Furthermore, contrary to the defendant’s argument, the court held that the district court did not decide the functionality question; it determined that the patent evidence, while relevant to the question of functionality, posed too significant a risk of jury confusion.