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From A Case to Put "trade dress" in Perspective

Plaintiff-Appellant: LEAPERS, INC

Defendants: SMTS, LLC

Defendant- Appellee: SUN OPTICS USA


      Plaintiff Leapers, Inc. appeals the district court’s entry of summary judgment for Defendant Sun Optics USA in Plaintiff’s case alleging trade dress infringement. For the reasons set forth below,


      Plaintiff Leapers, Inc. makes adjustable rifle scopes. Several portions of Plaintiff’s products are textured with so-called “knurling,” which allows users to grip the products more easily and to make fine-tuned adjustments. Knurling can be found on a wide variety of everyday items such as door handles, coin edges, and bottle lids. Plaintiff asserts that it uses a unique knurling pattern that is distinctly “ornamental” and by which consumers recognize Plaintiff as the source of the product.

      Plaintiff began manufacturing rifle scopes bearing this particular knurling design in 2002.

      Plaintiff later entered into an exclusive manufacturing contract with Chuanwen Shi and Donghui Yang of the Nantong WuYang Sporting Goods factory in China. As part of this contract, the factory managers agreed to “never disclose any information related to Plaintiff’s products.”

      On November 17, 2011, Plaintiff ended its relationship with the Nantong WuYang factory, and factory representatives agreed to “cease using any and all technical specifications, product design documents, and packaging design documents related to any of Plaintiff’s products” and to “destroy any and all parts, accessories, attachments, and the like, related to any of Plaintiff’s products previously produced to fulfill Plaintiff’s orders.” 

      However, factory manager Shi apparently never followed through on this agreement. Instead, he formed a company called Trarms, Inc., through which he began selling rifle scopes himself. He also began manufacturing rifle scopes for other sellers of rifle scopes, including Defendant and another company, SMTS, LLC.

     On June 10, 2014, Plaintiff filed suit against Defendant1 seeking for trade dress infringement of Plaintiff’s rifle scope knurling design. The case progressed to discovery, and factory manager Shi refused to testify, asserting his Fifth Amendment privilege to nearly every question asked. When Trarms, Inc. refused to provide an alternate witness, Plaintiff moved to compel discovery.

     Defendant filed for summary judgment on the basis that Plaintiff would not be able to prove two essential elements of its trade dress claim, namely nonfunctionality and secondary meaning. As further discussed below, the combination of these two elements ensures that a product feature receives trade dress protection only if it does not contribute to the product’s utility (i.e., is nonfunctional) and confers distinctiveness akin to a brand (i.e., has a secondary meaning). 

      The district court granted Defendant’s motion for summary judgment, concluding that Plaintiff’s knurling design could not satisfy the nonfunctionality requirement. The court’s holding did not reach the question of secondary meaning.

      The district court denied Plaintiff’s motion for reconsideration and entered final judgment on December 2, 2016. Plaintiff then filed this timely appeal.


A.Standard of Review

        We review a district court’s grant of summary judgment in a trade dress claim case.

B. Analysis

    “Trade dress” refers to the image and overall appearance of a product. It embodies that arrangement of identifying characteristics or decorations connected with a product, whether by packaging or otherwise, that makes the source of the product distinguishable from another and promotes its sales. Trade dress involves the total image of a product and may include features such as size, shape, color, or color combinations, texture, graphics, or even particular sales techniques.

      In order to prevail on a claim for trade dress infringement based on a product’s design, a plaintiff must show that its design is (1) nonfunctional, (2) has acquired a secondary meaning, and (3) is confusingly similar to the allegedly infringing design. Summary judgment will be granted if the plaintiff “fails to present sufficient evidence for a reasonable jury to find in its favor on any one of the three elements.” 

     Plaintiff alleges that four design elements collectively make the source of the product distinguishable from another.” These design elements are (1) “wave-like scalloping” with soft, round edges; (2) straight, parallel, unbroken lines; (3) consistent use of wavelike scalloping at all relevant points on the rifle scopes, including at the ocular and objective ends as well as on the adjustment knobs; and (4) wide banding, with rough proportionality between the raised and lowered portions of the scalloping.

1. Nonfunctionality

     The nonfunctionality requirement “channel[s] the legal protection of useful designs from the realm of trademark to that of patent.” In order to prove nonfunctionality, then, a plaintiff must prove that its design does not meet either prong of the Inwood functionality test, the plaintiff must show that its design feature is not “essential to the use or purpose of the article” and that it does not “affect the cost or quality of the article.” 

     In this case, Plaintiff admits that knurling is a functional component of a rifle scope. Plaintiff argues, however, that it applies a purely ornamental design to the knurling on its rifle scopes and that this design—not knurling generally—constitutes its trade dress. A knurling pattern can be purely ornamental. As long as the pattern is not “essential to the use or purpose” of a rifle scope and does not “affect the cost or quality” of a rifle scope, the knurling design confers no incidental functionality. And as long as the knurling design does not have an aesthetic function, and the design also lacks aesthetic function and can be protected as trade dress.

       Plaintiff also provided evidence negating incidental functionality. Plaintiff showed that its competitors apply knurling to their rifle scopes’ adjustment knobs in a wide variety of patterns, many of which are more effective than Plaintiff’s design at making the knobs’ adjustment surfaces graspable. In other words, Plaintiff adorns its products with a knurling pattern that is not particularly effective at achieving knurling’s primary purpose.  

       Finally, Plaintiff introduced evidence that its design lacks aesthetic functionality. The record indicates that competition in the rifle scope industry is not based on the visual appeal.  

2. Secondary Meaning

       Secondary meaning “serves to identify the product with its manufacturer or source.” “To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.” “This Court applies a seven-factor test to determine whether secondary meaning exists in a trade dress: (1) direct consumer testimony, (2) consumer surveys, (3) exclusivity, length, and manner of use, (4) amount and manner of advertising, (5) amount of sales and number of customers, (6) established place in the market, and (7) proof of intentional copying.” “No single factor is determinative and every one need not be proven.”   

      The district court did not resolve the issue of secondary meaning below. The district court examined only two of the seven factors relating to secondary meaning, concluded that several of the other factors were “irrelevant,” and ultimately declined to rule on the matter as a whole. 

     Nevertheless, we decline to conduct a more thorough secondary meaning inquiry on this record because of the possibility that more discovery may be conducted on remand due to Plaintiff’s pending discovery request. 


      In conclusion, a jury could reasonably find that Plaintiff’s design is nonfunctional because Plaintiff’s design is purely ornamental. We therefore hold that the district court erred by granting summary judgment for Defendant based on the nonfunctionality element of Plaintiff’s trade dress claim. Additionally, the district court declined to resolve the issue of secondary meaning. Because proper resolution of this issue requires further consideration of Plaintiff’s request for additional discovery, we decline to reach it.

Sun Optics Product Comparison Overview.pdf

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