In CTB Inc. v. Hog Slat, Inc., the U.S. Court of Appeals, Fourth Circuit, found that a chicken feeder design was not eligible for trade dress protection because it improved the way the feeders worked. It was therefore eligible only for patent protection because it was functional and not ornamental.1
CTB made and sold pan feeders for chicken farms, and received U.S. Patent No. 5,092,274, covering a novel structure for spokes and a pan that improved on several issues with prior art pan feeders. The invention used L-shaped spokes to give birds more room to maneuver in and out of the feeder, improving on earlier feeders that could cause “birds which force their way into the feeder apparatus [to] become trapped inside,” resulting in injury or death.2
CTB also obtained U.S. Patent No. 6,571,732 for a “Reflective Particle Feeder,” which explained that feeders could attract animals by 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.”3 The invention also included reflective “metallic flecks or flakes, such as titanium or aluminum,” to attract chickens.4
After the ’274 patent expired, CTB received trade dress protection from the U.S. Patent and Trademark Office for the feeders’ octagonal shape (Configuration Trade Dress), both alone and in combination with a color scheme for a red pan and shiny gray metallic spokes (Color Trade Dress).
CTB sued another pan feeder maker, Hog Slat Inc., for infringing its trade dress by copying its trade dress design. Hog Slat argued CTB’s trade dress was invalid because it was “dictated by utilitarian considerations,” and therefore eligible only for patent protection.5
The district court agreed with Hog Slat, and the Fourth Circuit affirmed.6 The court initially noted:
In general, trade dress serves the same function as trademarks: promoting competition by protecting features that identify a product’s manufacturer or source. . . . Rather than consisting of a brand name or logo, trade dress is the “total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques. . . .”
Because trade dress is intended to promote competition, it cannot extend to product features that are functional, and thus covered by patent law’s time-limited monopoly on utilitarian inventions.7
The court explained the requirements for trade dress enforcement:
[T]hree factors must be met for a party to bring a claim for trade dress infringement: (1) the trade dress is primarily non-functional; (2) the trade dress is inherently distinctive or has acquired a secondary meaning to customers; and (3) the alleged infringement creates a likelihood of confusion among customers as to a product’s source. . . . [A] product feature is functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” . . . Put simply, a feature is functional if “it is the reason the device works. . . .”
Four factors . . . assist our functionality inquiry. They are: (1) the existence of utility patents disclosing the utilitarian advantages of a design; (2) advertising focusing on the utilitarian advantages of a design; (3) the availability of functionally equivalent alternative designs which competitors may use; and (4) facts indicating that a design results in a comparatively simple or cheap method of manufacturing the product.8
On appeal, CTB argued the Configuration Trade Dress “serves absolutely no function” and was eligible for trade dress protection.9 But the court rejected this argument and indicated neither the feeder’s top half nor bottom half alone, or a combination of the two, constituted protectable trade dress. The court observed that the octagonal shape of the feeder’s top half was not eligible for trade dress protection because it was a “direct consequence” of the functional L-shaped spokes, and primarily served the same function.10 “The profile created by Plaintiff’s L-shaped spokes, whether a flattened octagon, a square, a rectangle, or another shape, is still dictated by a key functional consideration: creating a greater volume within the spokes to allow chickens that enter the pan to readily exit,”11 the court said. “As such, the L-shaped spoke design, regardless of specific configuration, ‘is not an arbitrary flourish in the configuration of [Plaintiff’s] product; it is the reason the device works.’”12
The pan of the feeder’s bottom half was designed for “containing and presenting feed,”13 and was also primarily functional. The court said the record showed that every element of the pan was “generously influenced by engineering necessity.”14 In addition, CTB also gave “no reason why the combination of two wholly functional components—the pan and the spoke assembly—gains some non-functional character that qualifies the entire feeder for trade dress protection,” the Fourth Circuit said.15 The Color Trade Dress also was not eligible for trade dress protection because CTB’s “own utility patents and witness testimony establish that the red pan and gray spokes serve the functional purpose of attracting chickens to feed.”16
Takeaways:
The Fourth Circuit clarified the limits of trade dress protection/infringement. Specifically, the trade dress must be primarily nonfunctional and either be inherently distinctive or have acquired secondary meaning. In addition, the infringement must produce a likelihood of confusion as to a product’s source.
Further, the shape of a product will not be eligible for trade dress protection if it is a direct consequence of the function and primarily serves the same function. The specific configuration will not be considered arbitrary if the configuration is the reason why the device works. The court also referenced the utility patent as additional proof of functionality. Thus, patent filers should be careful how an invention is described and, to the extent possible, provide alternative configurations that are capable of achieving similar functionality to minimize the risk of a trade dress configuration being considered functional.
1 CTB, Inc. v. Hog Slat, Inc., 954 F.3d 647, 2020 USPQ2d 10262 (4th Cir. 2020).
2 Id., 954 F.3d at 651 (quoting U.S. Patent No. 5,092,274, col. 1 ll. 36–38).
3 Id., 954 F.3d at 654–55 (quoting U.S. Patent No. 6,571,732, col. 1 ll. 26–32).
4 Id., 954 F.3d at 655 (quoting U.S. Patent No. 6,571,732, col. 3 ll. 49–50).
5 Id., 954 F.3d at 655.
6 Id., 954 F.3d at 651.
7 Id., 954 F.3d at 656 (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992)) (quotations and citations omitted).
8 Id., 954 F.3d at 657–58 (quoting TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. at 32–34).
9 Id., 954 F.3d at 659.
10 Id., 954 F.3d at 662.
11 Id., 954 F.3d at 661.
12 Id., 954 F.3d at 661 (quoting TrafFix 532 U.S. 23, 34, 58 USPQ2d 1001, 1007 (2001)) (emphasis added by court).
13 Id., 954 F.3d at 664.
14 Id., 954 F.3d at 664.
15 Id., 954 F.3d at 665.
16 Id., 954 F.3d at 666.
Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.