The US Court of Appeals for the Seventh Circuit affirmed a district court finding that a trade dress for a conveyor belt fastener was invalid as functional because its utilitarian advantages were disclosed in patents, advertising materials and internal corporate documents. Flexible Steel Lacing Co. v. Conveyor Accessories, Inc., Case No. 19-2035 (7th Cir. Apr. 7, 2020) (Ripple, J.).
Flexco manufactures and sells accessories for conveyor belts. Many conveyors belts are an “endless belt” made up of several pieces of rubber spliced or held together with belt fasteners or clips. Flexco sued Conveyor Accessories (CAI) for infringement of its trademark registration covering “a three-dimensional configuration of the curved beveled scalloped upper edge of a metal fastener,” which is shown in solid lines in the drawing below.
Flexco’s belt fastener was also disclosed in an expired utility and design patent. A figure in the utility patent shows a leading edge (46) of a lower fastener plate, which is scallop shaped and includes two convex portions (88) and a concave portion (90), which is the same as the concave beveled scallop shown in the trademark drawing.
CAI filed a motion for summary judgment asserting that the trade dress was invalid because the concave beveled scallop was a utilitarian feature of the fastener described in Flexco’s utility patent. The district court agreed, finding that Flexco’s patents, along with advertising materials, internal communications and declarations submitted to the US Patent and Trademark Office (PTO) disclosed the utilitarian advantages of the concave beveled scallop. The district court further found that the existence of alternatives to Flexco’s concave beveled scallop did not create any material issues of fact because the shape was clearly functional. Flexco appealed.
The Seventh Circuit affirmed, explaining that a product feature or trade dress is considered functional and unprotectable “if it is essential to the use or purpose of the article or it if affects the cost of quality of the article.” The Court noted that utility patents can provide strong evidence of functionality. Flexco argued that the utility patent only disclosed the functional features of the two convex portions of the belt fastener (88) and not the concave beveled scallop (90). The Court rejected this argument, finding that the utility patent disclosed that the leading edge of the fastener, which includes both the convex (88) and concave (90) portions of the scalloped edge, provides improved fastener bite and profile.
The Seventh Circuit also dismissed Flexco’s argument that the utilitarian advantages disclosed in the utility patent covered only two-rivet fasteners. In particular, the Court noted that the drawing in the trademark registration did not limit the trade dress to a fastener with a particular number of rivets. Flexco also argued that the sole reason for the concave beveled scallop was to accommodate the two-rivet fastener’s installation tool; however, the Court found that the utility patent clearly disclosed the concave beveled scallop (90) and its functional features, which included improved fastener bite and reduced profile of the leading edge (46) of the fastener.
The Seventh Circuit also found that Flexco’s own advertising documents touted the utilitarian advantages of the concave beveled scallop, stating it (1) allowed the fastener to “interface seamlessly with belt cleaners, pulley lagging and other conveyor components;” (2) “reduced hang-ups on cleaners, pulleys, etc.” and (3) “contributed to improved fastener profile resulting in increased compatibility with belt cleaners, and improved cleaner-tip wear.” Although Flexco asserted that these statements applied only to the convex (88) portions of the scalloped edge, the Court concluded that Flexco’s internal communications demonstrated otherwise. The Court cited an email sent by Flexco’s engineering manager that stated that “the main purpose of the scalloped edge will be to prevent fasteners from getting scraped off by the cleaner” and a confidential memo from Flexco’s vice president of engineering that stated that the scalloped edge fastener “should perform equal or better than the standard [straight-edge fastener].” The Court noted that none of these statements distinguished between the two convex portions of the fasteners (88) and the concave beveled scallop (90), but instead referred to the scalloped edge as a whole. The Court also cited Flexco’s statements made during the prosecution of its trademark application, describing the utilitarian features of the concave beveled scallop.
Despite evidence that the concave beveled scallop was functional, Flexco asserted that summary judgment was improper because CAI failed to provide any evidence that the utilitarian advantages could not be provided by other designs. The Seventh Circuit rejected this argument, finding that once CAI provided evidence that Flexco’s trade dress was functional, the burden of proof shifted to Flexco to show that “it was an ornamental, incidental or arbitrary aspect” of the fastener, which it could not do. Flexco also argued that there was a question of fact as to whether CAI’s fastener, which had a flat-bottomed trapezoid-shaped notch, worked as well as Flexco’s concave beveled scallop. The Court, however, found that once functionality was established, there is no further need to consider evidence of alternative designs.