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Functionality in Trade Dress Protection – ‘So what? It doesn’t matter.’ 

by Lisa Parker Gates

Published: June, 2019

Submission: June, 2019

 



While appealing a $4 million verdict on the basis of willful trade dress infringement, a manufacturer admitted to copying the design of a French coffee press. When asked by an appellate judge to confirm that admission, the manufacturer’s attorney confirmed the copying, adding, “So what? It doesn’t matter.”


Bodum USA has accused A Top New Casting of infringing its rights in the design of its Chambord coffee press. A jury in the U.S. District Court for the Northern District of Illinois agreed, awarding Bodum $2 million—a verdict which was eventually doubled by the trial judge. On appeal to the U.S. Circuit Court of Appeals for the Seventh Circuit, A Top argued because the coffee press is functional, it is not protected under trade dress law and A Top could freely copy the design. To be considered “functional,” a feature must be either essential to the use or purpose of the product or provide a cost advantage. A Top claims the core elements of the design, such as its handle and plunger, are essential and cost-advantageous to the Chambord press. A Top’s attorney went as far as to say A Top had a right to copy the press design “right down to the last bolt.”


Bodum claims trade dress protection in the overall design of its press, not in the individual parts. Bodum also claims there is no cost advantage to its design because the design adds manufacturing costs. Bodum told the court it chooses to spend the extra money on its “iconic design” because it believes its consumers prefer the classic, high-end look of the Chambord versus cheaper models.


Whether Bodum will be able to claim trade dress protection for its almost 30-year old Chambord design, or A Top will be able to continue producing exact replicas, will turn on the court’s finding of functionality. The case is Bodum USA Inc. v. A Top New Casting Inc.


 



*Jessica Goedel is a Summer Associate and not licensed to practice.


 



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