EDVA Rejects Argument That a Common Law Trade Dress Infringement Claim Is Subsumed by a Trademark Infringement Claim

EDVA Rejects Argument That a Common Law Trade Dress Infringement Claim Is Subsumed by a Trademark Infringement Claim

 by Julia Bishop

Judge Liam O’Grady upheld a unanimous jury verdict in favor of Reynolds Consumer Products, Inc. in the U.S. District Court for Eastern District of Virginia. The jury found that Handi-Foil Corporation willfully infringed on Reynolds’ trade dress rights. See Reynolds Consumer Products, Inc. v. Handi-Foil Corporation, No. 1:13-cv-214, 2014 U.S. Dist. LEXIS 98059 (E.D. Va. July 18, 2014) [an enhanced version of this opinion is available to lexis.com subscribers].

Both parties manufacture aluminum roll foil. Reynolds Wrap has been the leading brand for decades. Reynolds sued Handi-Foil in 2012 when it launched its version of the product claiming that the company’s packaging violated its trade dress. The jury found in favor of Reynolds on that count. By post-trial motion, Handi-Foil requested that the court set aside the verdict. Handi-Foil filed a renewed motion for judgment as a matter of law and, in the alternative, moved for a new trial. In its argument for a new trial, Handi-Foil posited that the jury’s decision was inconsistent.

At trial, the jury found that Handi-Foil willfully infringed upon Reynolds’ trade dress but at the same time found in Handi-Foil’s favor with respect to Reynolds’ eight other counts, which included claims of federal and state trademark infringement. Handi-Foil’s argument was that Reynolds’ federally registered trademarks for the Reynolds Wrap packaging design provide broader rights than the Reynolds Wrap common law trade dress, therefore the trade dress claim must be subsumed within the trademark claim. It would be impossible, then, for the jury to find trade dress infringement but not trademark infringement. The court disagreed.

Citing the Lanham Act, Judge O’Grady noted that a trademark is a word, name, symbol or design that is used to identify and distinguish the goods or services of one party from those of another to indicate source. Trade dress of a product, on the other hand, is the total overall appearance of the product. The Lanham Act protects both registered trademarks and common law trade dress. Trademark infringement claims focus on one aspect of a product’s image—the trademark. Trade dress infringement claims focus instead on the total image of the product.

In regard to the trademark infringement claims, the jury was told that Reynolds had received two registrations for trademarks depicting certain elements of the Reynolds Wrap package design—these are the color scheme and the words Reynolds Wrap. In regard to the common law trade dress claim, the jury was told that Reynolds’ trade dress refers to the total image and overall appearance of the product. Thus, the jury had two questions to keep in mind in comparing the aluminum foil packaging: (1) For purposes of trademark infringement, are the Handi-Foil boxes likely to cause confusion with the certain elements that make up Reynolds’ registered marks? (2) For the purposes of trade tress infringement, are the Handi-Foil boxes likely to cause confusion with the total image and overall appearance of the Reynolds Wrap boxes? The jury answered no to (1) and yes to (2).

Judge O’Grady opted to depart from a purely theoretical legal argument and instead to point to the boxes at issue themselves:

Op. at 16. Given that the “certain elements” of the packaging cited in the trademark registrations were the name REYNOLDS WRAP and the color scheme, the jury could easily have determined that HANDI-FOIL would not infringe on the REYNOLDS WRAP element and, similarly, that lack of curved silver lines separating the blue from the pink or yellow areas of the Handi-Foil boxes would not infringe on the color scheme element of Reynolds’ trademarks. Yet, when considering the overall appearance of the boxes, the similarity is striking. Judge O’Grady called “the reasonableness of the jury’s trade dress verdict . . . obvious,” and noted that “any other finding may well have been unreasonable.” Op. at 17.

 Read more at Virginia IP Law by Troutman Sanders LLP.

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