IP Law Daily, TRADEMARK—6th Cir.: Semi-truck conversion kit trade dress lawsuit revived, (May 12, 2023)

By Donielle Tigay Stutland, J.D.

On appeal, the Sixth Circuit reverses a summary judgment determination that a semi truck conversion kit was functional and not entitled to trade dress protection.

The Sixth Circuit reversed a summary judgment determination by a Tennessee district court that had found that the design of a semi truck conversion kit was functional and therefore did not deserve trade dress protection. On appeal, the Sixth Circuit concluded there was evidence that could be construed to show that the design of the conversion kits made by DayCab Company Inc. (DayCab) were “ornamental, incidental, or arbitrary,” and thus non-functional. The Sixth Circuit was also not persuaded by the alleged infringers’, Prairie Technology, LLC and Big Truck Parts, LLC, arguments that there was not likely to be consumer confusion and that the conversion kits had not acquired secondary meaning. The Sixth Circuit determined there was still a genuine dispute as to the facts on these issues and reversed the summary judgment determination (Daycab Co., Inc. v. Prairie Technology, LLC, May 11, 2023, Clay, E.).

Background. DayCab designs, manufactures, and sells conversion kits for tractor-trailer cabs that convert a sleeper tractor—which has a compartment designed for long-haul driving, with a sleeping unit for the driver—into a tractor that does not have a sleeper unit (a “daycab”). Marc Wagers was the founder of DayCab and he started his first conversion kit business in 1997. He continues to be involved in the design of DayCab’s conversion kits.

William Osman is an owner of both Big Truck Parts and Prairie Technology and he began making conversion kits in 1998. Osman obtained a utility patent for a panel used to convert a sleeper truck cab into a day cab. Prairie Technology designs and manufactures conversion kits, and Big Truck Parts sells them.

DayCab sued Prairie Technology and Big Truck Parts, asserting claims under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and under the Tennessee Consumer Protection Act, Tenn. Code Ann. § 47-18-104, for trade dress infringement. Prairie Technology and Big Truck Parts counterclaimed for a declaratory judgment that DayCab’s trade dress is functional, and as such and they did not infringe on DayCab’s trade dress or trademark. The district court held that the undisputed evidence showed that DayCab’s asserted trade dress for its conversion kits was functional and therefore not protectable. DayCab has appealed.

Trade dress. DayCab asserts that the overall design of its conversion kit panel, including the panel’s angles, lines, tapers, curves, and profile, is protectable trade dress. The court noted that DayCab must show that its allegedly infringed product design is: “(1) nonfunctional, (2) has acquired secondary meaning, and (3) is confusingly similar to the allegedly infringing product design.”

Nonfunctional design. The Sixth Circuit first analyzed whether the district court erred in its determination of functionality. The district court determined that no reasonable juror could find that DayCab’s product design was nonfunctional, and granted summary judgment to the alleged infringers. The alleged infringers argued that the function of the conversion kit panel is to cover the opening created by removing the sleeper berth and to create more room in the truck cab. The alleged infringers presented an expert witness, who had opined that the “panel’s depth, top body radius, lower body angle, flange/body radius” and color were functional features.

The court indicated that “Evidence that a product design is purely ‘ornamental, incidental, or arbitrary’ can be evidence of an absence of functionality.” The designer of DayCabs’ conversion kit had testified that the “angles, depth, and radii arose” from his “finetuning of the panel’s appearance.” The Sixth Circuit indicated this was evidence to show the designer’s aesthetic intent in designing and configuring the panel, such that it could be “ornamental, incidental, or arbitrary.”

The court pointed out that DayCab presented evidence to conflict the expert’s testimony, in the form of testimony from the company’s founder and the designer of the conversion kits. The court believed that there was conflicting evidence regarding the functionality of DayCab’s conversion kit panel and as such, the district court should not have granted summary judgment on this issue.

Secondary meaning. The Sixth Circuit also determined that based on the evidence DayCab presented at summary judgment, there is a genuine dispute of material fact on the element of secondary meaning. DayCab offered evidence from third parties and competitors who testified they could not tell the two products apart and that pieces from the DayCab design could fit into the alleged infringer’s design to argue that Osman had intentionally copied Wagers’ design. The court concluded that there was dispute of fact on whether the design was intentionally copied, which supports a determination that there is a genuine issue of material fact about secondary meaning.

Likelihood of confusion. Finally, the court turned to whether there was a likelihood of customer confusion. Again, the court found that there was a genuine dispute as to the facts as it weighed the likelihood of confusion factors.

DayCab presented evidence of actual confusion between the products, such as, “numerous inquiries” from customers interested in purchasing a “Fat Boy” even though DayCab sells only a product by the name “Fat Albert,” and that the inquiries began in 2010 or 2011 after William Osman began marketing his conversion kit as the “Fat Boy.” Further, DayCab argued that the similarity of the panels alone demonstrates the likelihood of confusion.

The Sixth Circuit found that DayCab had presented sufficient evidence to weighs in its favor on two of the factors relevant to the likelihood of confusion analysis. However, the Sixth Circuit ultimately, weighing DayCab’s evidence against the alleged infringers; evidence, as well as balancing the factors to determine whether the products present a sufficient likelihood of confusion, would be a question for a jury, and it reversed the finding of summary judgment.

Doctrine of laches. The alleged infringers’ also argued that the trade dress claim under the Lanham Act was barred by the doctrine of laches. The Six Circuit remanded this issue, having determined, “we acknowledge that factual disputes remain that bear on this analysis, including the growing presence of Defendants’ allegedly infringing products in the market, the effect of that growth on the likelihood of confusion between the products, and when the infringement was of such significance as to ripen DayCab’s claim into one “sufficiently colorable to justify litigation.”

The Case is No. 22-5625.

Attorneys: Donald Kelly Vowell (Law Office) for Daycab Co., Inc. James R. Mckoon (McKoon, Williams, Atchley & Stulce, PLLC) for Prairie Technology, LLC, Big Truck Parts, LLC.

Companies: Daycab Co., Inc.; Prairie Technology, LLC; Big Truck Parts, LLC

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