Plaintiff E-Z Dock's expired utility patent [pdf here] sunk its claims of trade dress infringement and unfair competition based on alleged trademark rights in a dog bone-shaped floating dock connector. Finding the product configuration to be de jure functional, the U.S. District Court for the Middle District of Florida granted Defendant Snap Dock's motion for judgment on the pleadings under FRCP 12(c). E-Z Dock, Inc. v. Snap Dock, LLC, Civil Action No. 2:21-cv-450-SPC-NPM (M.D. Florida, September 9, 2022).
On a motion for judgment on the pleadings, courts generally accept as true all material facts alleged by the nonmoving party. However, in some circumstances, exhibits "can overcome the presumption that the nonmoving party's allegations are true." Snap Deck attached to its answer/counterclaim a copy of E-Z Dock's expired utility patent no. 5,281,055, entitled "Floating Dock,' which discloses E-Z Dock's modular floating dock system, "including the coupler at issue."
The Board observed that "a utility patent is critical to the non-functionality element of a trade dress claim based on the patented product." See TrafFix ("A utility patent is strong evidence that the features claimed therein are functional" (emphasis added)). [Note: the '055 patent did not claim the dog-bone shape, it merely disclosed it - ed.]
The patent "explain[ed] the functionality of the shape":
to ensure that the anchors will remain secure and the docking
sections will not separate. EZ-Dock pointed to the statement in the
patent that the socket shape "can vary appropriately,"
but the court was not moved: "the dog bone shape of the
couplers is the reason EZ-Dock's inventions works." The
court noted that TrafFix teaches that the existence of an
alternative design does not render a functional design
non-functional. [Note, however, that in TrafFix, the
design at issue was claimed in the expired patent -
ed.]
The court concluded that E-Z Dock could not satisfy the non-functionality element of its trade dress claim. "EZ-Dock cannot enjoy the protection of a full patent term, then use the Lanham Act to extend its monopoly on the patented design." [Actually, the patent didn't "cover" a dog-bone shaped connector - ed.].
And so, the Board entered judgment in favor of Snap Dock.
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TTABlogger comment: There's a big difference between what is disclosed in a patent and what is claimed. There is also a big differences between what is de facto functional (i.e., it has a function), and what is de jure functional for trademark purposes. The court ignored those differences. By the way, can you think of alternative shapes that would work just as well? Maybe a "T" shape?
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