Clark Tile Co v. Red Devil and Mendard v. Ronald Clark - Trade Dress Cases of Interest >  IP >  Patent

Clark Tile Co v. Red Devil and Mendard v. Ronald Clark

TO: Professor Risch
FROM: Alvin Hathaway Jr.
DATE: December 13, 2007

Clark Tile Co., Inc. (Plaintiff) v. Red Devil, Inc. and Mendard, Inc. (Defendants) v. Ronald M. Clark (Third-party defendant)

Decided December 7, 2007

Facts: The plaintiff is a manufacturer and distributor of plastic products. The defendant is a manufacturer and distributor of hand tools, including plastic adhesive spreaders. Red Devil was buying Clark Tile’s plastic adhesive spreaders from 1987 – 2002. Red Devil would resell the spreaders to retailers. At some point, Red Devil and Clark Tile’s relationship went bad and Red Devil started purchasing from a new manufacturer, Branchcomb. Clark Tile contends that the spreaders Red Devil purchased from Branchcomb and sold to retailers infringe on its protectible trade dress.

Procedural History: Defendants, Red Devil and Menard filed a motion for summary judgment on all counts of the plaintiff complaint.

Rule of Law:
“Trade dress refers to the ‘appearance of a product when that appearance is used to identify the producer.’” Incredible Techs., Inc. v. Virtual Techs, Inc. Trade dress refers to the total image of a product, including features such as “size, shape, color or color combinations, texture, graphics, or even particular sales techniques.” Roulo v. Russ Berrie & Co.

Trade Dress infringement claim, the plaintiff must demonstrate that: (1) its trade dress is inherently distinctive or has acquired secondary meaning, (2) its trade dress is primarily non-functional, and (3) the defendant’s trade dress is confusingly similar, engendering a likelihood of confusion in the marketplace. Roulo

Issue: Whether the plaintiff’s spreaders have functional or nonfunctional features? Whether the plaintiff has raised a genuine issue of material fact that its trade dress is nonfunctional, so that the defendant’s motion for summary judgment can be denied?

Holding: Yes. Motion for summary judgment is denied.

Case Analysis:
The court first looked at the traditional rule of functionality, as defined in the TrafFix case, 532 U.S. at 32, defining a feature as functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device.

The defendants argue that the shape of Clark Tile’s spreaders are expressed and claimed in functional terms in the Clark Title’s expired patent. Defendants contend that the spreaders shape consists of the following: (1) a trapezoidal shaped blade, (2) notches, (3) color-coding, (4) an arcuate handle, (5) reinforcing ridges, and (6) an insert plate.

The court then proceeds to evaluate the three main areas of the defendants’ allegation, which are (1) the triangular notches, (2) the insert plate, and (3) the overall look.

The Triangle Notches – the court said that while notches in general likely constitute a functional feature of adhesive spreaders but in this case the defendants failed to present any facts demonstrating that other types of notches would not have been appropriate for the spreaders at issue. Based off of this, the court found that there is a question of fact on this issue.

The Insert Plate – the court relied on the expired Clark Tile patent which states that use of the insert plate is not essential. The court then concluded that there are additional questions of fact fro the jury to resolve.

The Overall Look – the court determined that both the insert p late and the triangular notches affect the overall look of plaintiff’s spreaders. The court says there are still questions of with respect to whether the insert plate and the triangular notches are functional features, so summary judgment is not warranted.

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