Specialized Seating, Inc. v. Greenwich Indus., L.P. - 616 F.3d 722 (7th Cir. 2010)

Rule:

Findings of fact made after a bench trial must stand unless clearly erroneous. Fed. R. Civ. P. 52(a)(6). Although "functionality" is the ultimate issue in a trademark case, an "ultimate" issue remains one of fact under this standard, because it is generated by applying legal principles to factual conclusions. "Functionality" certainly isn't an issue of law; it represents a fact-specific conclusion about whether aspects of a design are essential to the use or purpose of the article or if it affects the cost or quality of the article. Many decisions apply Rule 52's standard to a finding that a mark is functional.

Facts:

Defendant, Greenwich Industries, L.P., doing business as Clarin, applied for registration of one particular x-frame design as a trademark. Plaintiff competitor, Specialized Seating, Inc., sought a judgment that its design of a folding chair did not violate the defendant’s rights under the Lanham Act, 15 U.S.C.S. § 1051 et seq. According to the plaintiff competitor, defendant’s mark was functional. After a bench trial, the district court entered judgment in favor of the plaintiff competitor. Defendant appealed. 

Issue:

Was the defendant owner’s mark functional, thereby warranting the grant of declaratory judgment in favor of the plaintiff competitor? 

Answer:

Yes.

Conclusion:

On review, the court affirmed, agreeing with the district court that the trademark design was functional as a unit and that every important aspect of it was independently functional. None of the features was added to produce a distinctive appearance that would help consumers identify the product source.