M.D. Florida Finds Dog Bone-Shaped Dock Connector Functional, Grants Judgment on the Pleadings Denying Trade Dress Claim
Plaintiff E-Z Dock's expired utility patent [pdf here] sunk its claims of trade dress infringement and unfair competition based on alleged trademark rights in a dog bone-shaped floating dock connector. Finding the product configuration to be de jure functional, the U.S. District Court for the Middle District of Florida granted Defendant Snap Dock's motion for judgment on the pleadings under FRCP 12(c). E-Z Dock, Inc. v. Snap Dock, LLC, Civil Action No. 2:21-cv-450-SPC-NPM (M.D. Florida, September 9, 2022).
On a motion for judgment on the pleadings, courts generally accept as true all material facts alleged by the nonmoving party. However, in some circumstances, exhibits "can overcome the presumption that the nonmoving party's allegations are true." Snap Deck attached to its answer/counterclaim a copy of E-Z Dock's expired utility patent no. 5,281,055, entitled "Floating Dock," which discloses E-Z Dock's modular floating dock system, "including the coupler at issue."
The court observed that "a utility patent is critical to the non-functionality element of a trade dress claim based on the patented product." See TrafFix ("A utility patent is strong evidence that the features claimed therein are functional" (emphasis added)). [Note: the '055 patent did not claim the dog-bone shape, it merely disclosed it - ed.]
The invention disclosed in the ‘055 Patent is a floating dock “comprised of uniform floating docking sections coupled together with rubber male-type anchors which fit into female-type receiving sockets on the docking sections.” ***The idea of floating docking modules was not novel, as evidenced by the prior art mentioned in the ‘055 Patent. ***. The central advance of the ‘055 Patent was the coupling system—that is, the anchors (or couplers) and corresponding sockets that turned floating docking modules into a novel product.
The patent "explain[ed] the functionality of the shape": to ensure that the anchors will remain secure and the docking sections will not separate. EZ-Dock pointed to the statement in the patent that the socket shape "can vary appropriately," but the court was not moved: "the dog bone shape of the couplers is the reason EZ-Dock's inventions works." The court noted that TrafFix teaches that the existence of an alternative design does not render a functional design non-functional. [Note, however, that in TrafFix, the design at issue was claimed in the expired patent - ed.]
The court concluded that E-Z Dock could not satisfy the non-functionality element of its trade dress claim. "EZ-Dock cannot enjoy the protection of a full patent term, then use the Lanham Act to extend its monopoly on the patented design." [Actually, the patent didn't "cover" a dog-bone shaped connector - ed.].
And so, the court entered judgment in favor of Snap Dock.
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TTABlogger comment: There's a big difference between what is disclosed in a patent and what is claimed. There is also a big differences between what is de facto functional (i.e., it has a function), and what is de jure functional for trademark purposes. The court ignored those differences. By the way, can you think of alternative shapes that would work just as well? Maybe a "T" shape?
Text Copyright John L. Welch 2022.
posted by John L. Welch @ 9/14/2022
10 comments
10 Comments:
Interesting that this was done via a 12(c) motion. (I would guess that E-Z Dock’s ads, once produced in discovery, likely would have confirmed the shape’s functionality.) And, yes, there is a big difference between what is disclosed in a patent and what is claimed in a patent . . . for patent infringement purposes. But for trade dress protection purposes, not so much. If the patent spec discloses that the feature at issue works well due to its configuration, that is evidence of functionality that is “equally strong” as if the feature in that configuration were in a claim, per the CAFC in Becton, Dickinson.
No need to post - but you may want to fix references to “the Board” to “the court.”
The design of the connector is indeed claimed. Here's Claim 1 of the '055 patent:
1. A floating dock, comprising:
at least two docking members having top and bottom surfaces, each docking member containing a plurality of female-type receiving sockets spaced along the perimeter of the top and bottom surfaces of the docking member; and,
a generally symmetrical male-type anchor with a pair of flanges, each flange being positionable within a receiving socket of one of the docking members for securing the docking members together in a flexible manner.
The claim is not limited to this specific design, but the claim absolutely covers it.
As noted by Anonymous:
Indeed, TrafFix teaches that statements in a patent's specification illuminating the purpose served by a design may constitute equally strong evidence of functionality. See TrafFix,532 U.S. at 32–33, 34–35, 121 S.Ct. 1255. The Board correctly read the '446 patent to indicate that at least two of the important elements of the proposed mark were functional.
In re Becton, Dickinson & Co. (Fed. Cir. 2012) 675 F.3d 1368, 1375.
The claim does not recite a "dog-bone" shaped connector. It recites a connector with flanges. The claim language may "cover" a dog-bone shaped connector," but it doesn't specifically recite it. If the claim was "a stool comprising a seat member and at three legs members," does that preclude trade dress protection for every stool no matter how shaped?
A penguin-shaped cocktail shaker has a function. Does that make it de jure functional for trademark purposes. No. My point is that just becuase something has a function (i.e., de facto functionality) doesn't mean it is de jure functional and ineligible for trademark protection.
That's not how patent claims work, they don't "recite" every variation of what's claimed. Nevertheless, the patent claims "a generally symmetrical male-type anchor with a pair of flanges." This is "a generally symmetrical male-type anchor with a pair of flanges." So it's recited and it's covered. The claim doesn't need to recite "dog-bone," because the design is generally symmetrical. You said that doesn't cover the alleged trademark. It does indeed. If you want to argue that shouldn't preclude registration as a trademark, that's a different discussion. But that discussion should include the scope of what would be considered a "similar" mark, and how that scope would differ from the patent claim's scope.
As to your patented three-legged chair example, if it were possible to patent "a three legged chair," then--once that patent expired--how many variations of three-legged chairs would you allow me to register trademarks for?
"A penguin-shaped cocktail shaker has a function."
The penguin-shape does not have a function.
How many three-legged chairs? As many as obtain acquired distinctiveness. I don't disagree that the claim reads on the proposed design. However, a patent may be "strong evidence" that the proposed mark is de jure functional, but it is not conclusive.
PS: the TTAB's decisions finding that a product configuration has acquired distinctiveness can be counted on one hand.
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