Seyfarth Synopsis: On October 18, 2021, Seyfarth's Jamaica Szeliga, Joe Lanser, and Vince Smolczynski submitted an amici brief to the United States Supreme Court to support certiorari in the trade dress matter of Sulzer Mixpac AG v. A&N Trading Co. et al, No. 21-417.
The brief was submitted on behalf of the International AntiCounterfeiting Coalition (IACC), a non-profit advocacy group dedicated to reducing counterfeiting and piracy, Industrial Designers Society of America (IDSA), a non-profit trade membership organization for industrial designers, and Swissmem, a trade association representing more than one thousand mechanical, electrical, and metal industries in Switzerland. In addition to the brief submitted for the IACC, IDSA, and Swissmem, the International Trademark Association (INTA) and intellectual property law professors also submitted briefs.
At issue is the Second Circuit's decision in Sulzer Mixpac, finding that any utility of a product necessarily affects the product's cost or quality and thus renders the product functional and not protectable by trade dress as a matter of law. The Second Circuit's decision deviates from the position held by seven other Circuit Courts and the United States Patent and Trademark Office, which apply a multi-factor analysis to determine whether a trade dress is invalid due to functionality. In the majority approach, product features that have some underlying utility or usefulness may still be eligible for trade dress protection because utility is only the start of the functionality analysis. The courts consider additional evidence relating to, inter alia, whether the utility of product features are advertised, whether there are utility patents covering the trade dress feature, the existence of alternative designs that similarly perform the utility feature, and whether the trade dress results from a simpler, cheaper, or superior method of manufacture, among other factors, to determine whether functionality exists. See, e.g., In re Morton-Norwich Products, Inc., 671 F.3d 1332, 1340 (C.C.P.A. 1982). The Seyfarth brief, along with the other amici brief submitted, asks the US Supreme Court to grant the pending petition for certiorari to resolve the Circuit split to create a uniform approach to evaluating functionality in trade dress matters.
A copy of Seyfarth's amici brief for the IACC, IDSA, and Swissmem can be found here.
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