Toyo Tire Corporation sued Atturo Tire Corporation in 2014, alleging that an Atturo tire designs infringed Toyo's trade dress in its "Open Country Mountain" tire—specifically, "the overall visual appearance and impression conveyed by the" tire's "tread design." This month, the US District Court for the Northern District of Illinois granted Atturo's motion for summary judgment on Toyo's infringement claim, finding that the asserted trade dress in Toyo's tread design is functional. Toyo Tire Corp. v. Atturo Tire Corp., No. 14-CV-00206, 2021 WL 463254 (N.D. Ill. Feb. 9, 2021).

No company may claim trade dress protection in a functional feature of its product's design because such features serve a utilitarian purpose other than to identify the product's manufacturer or source. Generally, courts consider a product element to be functional if it is essential to its use or purpose; affects its cost or quality; or is a competitive necessity. The functionality determination is a factual one, but the Seventh Circuit has ruled that the "bar for functionality is so low that it can often be decided as a matter of law." 

The parties did not dispute that Toyo's asserted trade dress comprised the "three-dimensional shoulder blocks, center block, grooves, stone ejectors, and sipes" of its tire's tread design. Toyo argued these design elements were non-functional because they "are not necessary for the tire" because a competitor could choose an alternative tread design. 

The court rejected Toyo's "necessity" theory, explaining that it is enough to demonstrate functionality to prove that the design element produces any non-source identifying benefit—even if alternative designs exist. And in light of Toyo's own witness' testimony that the design elements affected traction, driving characteristics, and wear-and-tear—among other evidence pointing in the same direction—the court ruled that the asserted trade dress was functional. 

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.