The Statutory Presumption of Validity of a Federally Registered Trade Dress Applies Even Where the Trademark Examiner May Not Have Followed PTO Procedures

SOCLEAN, INC. v. SUNSET HEALTHCARE SOLUTIONS, INC.

Before Newman, Lourie, and Prost. Appeal from the United States District Court for the District of Massachusetts.

Summary: A trademark is entitled to a statutory presumption of validity even if the trademark examiner did not follow Patent and Trademark Office procedures during prosecution.

SoClean, Inc. (SoClean) sued Sunset Healthcare Solutions, Inc. (“Sunset”) for trade dress infringement, among other claims. The trade dress registration at issue is the configuration of replacement filters for Continuous Positive Airway Pressure (“CPAP”) sanitizing devices. The district court granted, in part, SoClean’s motion to preliminarily enjoin Sunset, enjoining Sunset from marketing its filters using an image alone. The district court ordered Sunset’s marketing to prominently display the Sunset brand. Sunset appealed the likelihood of success factor in the preliminary injunction analysis.

On appeal, the Federal Circuit affirmed the preliminary injunction. Sunset argued the district court abused its discretion by affording too much weight to the presumption of validity of the trademark because the examiner violated procedures when it did not require additional evidence of the product design acquiring secondary meaning. The Federal Circuit held that the “presumption of validity is not conditional.” The Federal Circuit concluded that the district court did not abuse its discretion by declining “to revisit the examiner’s actions and alter the statutory presumption of validity.” Sunset further argued the district court erred by considering the availability of alternative filter designs after finding SoClean’s trade dress is functional. But the district court never found the filter design was functional. Rather, the district court found SoClean was likely to defeat Sunset’s functionality challenge because the trade dress comprises both functional and non-functional features. The Federal Circuit held alternative designs are a relevant consideration in the functionality analysis and there was no error.

Editor: Paul Stewart