IP Law Daily, TRADEMARK—M.D. Fla.: Dock manufacturer’s expired patent foils trade dress infringement claim against competitor, (Sep 13, 2022)

By Deirdre Kennedy, J.D.

The court determined that the patent conclusively proved functionality of bone-shaped dock couplers.

EZ Dock’s trade dress infringement claim involving competitor Snap Dock’s use of a dog bone-shaped couplers for attaching floating dock components was dismissed because its own utility patent demonstrated the functionality of the coupler, thereby negating the required “non-functional” element of a trade dress claim, the federal district court in Tampa has held (E-Z Dock, Inc. v. Snap Dock, LLC, September 9, 2022, Chappell, S.).

EZ Dock develops, manufactures, and sells floating docks, ports, launches, and walkways. EZ Dock claimed ownership of a trade dress in the “dog bone” shape of the couplers used to connect its dock sections and accessories, and alleged that Snap Dock infringed its trade dress by selling similarly shaped couplers as part of Snap Dock’s modular docking products. Snap Dock moved for a judgment on the pleadings, arguing that EZ Dock cannot prevail because the pleadings and exhibits conclusively establish that the dog bone shape is not protectable trade dress.

Trade dress is defined as “the total image of a product,’ which ‘may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.” A claim for trade dress infringement under the Lanham Act must plausibly plead three elements:“(1) its trade dress is inherently distinctive or has acquired secondary meaning; (2) its trade dress is primarily non-functional; and (3) the defendant’s trade dress is so similar to the plaintiff’s that it is likely to cause confusion.

Here, Snap Dock argued that the pleadings and exhibits demonstrated that EZ Dock could not satisfy the element of non-functionality. A product feature is functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article” or if the feature’s exclusive use “would put competitors at a significant non-reputation-related disadvantage.”

EZ Dock pleaded that the dog bone shape of its coupler products was “primarily non-functional,” “primarily aesthetic,” “a stylistic design choice…to achieve consumer recognition,” “arbitrary, incidental, and ornamental,” “not the central advance in any existing or expired utility patent,” “not essential to the use, purpose, cost, or quality of floating dock products,” and “not a competitive necessity.” While the court had previously found EZ Dock’s claim of non-functionality plausible, denying Snap Dock’s argument in a 12(b)(6) motion, Snap Dock requested that the court reconsider the issue in light of exhibits it attached to its answer/counterclaim.

Utility patent. The court considered just one of the exhibits entered by Snap Dock, which was an expired utility patent—U.S. Patent No. 5,281,055 (the ’055 patent)—disclosing EZ Dock’s modular floating dock system, including the coupler at issue. The court chose to consider the exhibit despite EZ Dock’s objections, noting that a utility patent is critical to the non-functionality element of a trade dress claim based on the patented product.

Here, the patent described the dog bone shape of the anchors and sockets as the preferred embodiment of the invention. It also explained the functionality of the shape: “the shape of the anchors and receiving sockets helps to ensure that the anchors will remain secure and the docking sections will not separate during use.” While EZ Dock argued that the dog bone shape was not functional because the ‘055 patent states the socket shape “can vary appropriately,” other courts have rejected the idea that the existence of alternative designs renders a functional feature non-functional. In other words, the possibility that Snap Dock could have used a different shape does not affect the functionality of the dog bone shape.

EZ Dock’s attempt to get around the functionality of the coupler’s shape by limiting its trade dress claim to the top surface portion of the dock coupler rather than the entire dock coupler also failed. The court noted that the top surface was simply a two-dimensional slice of the coupler with no flourish or adornment. Additionally, the ‘055 patent explained that the simple and unembellished surface design was functional, not arbitrary.

Accordingly, the court found that EZ Dock did not satisfy the non-functionality element of its trade dress claim. The ‘055 patent established the functionality of the dog bone shape. Proving non-functionality would necessarily involve contradicting the patent. The court concluded that EZ Dock may not enjoy the protection of a full patent term, then use the Lanham Act to extend its monopoly on the patented design.

The Case is No. 2:21-cv-00450-SPC-NPM.

Attorneys: Brian C. Bianco (Akerman LLP) for E-Z Dock, Inc. Ury Fischer (Lott & Fischer, PL) for Snap Dock, LLC.

Companies: E-Z Dock, Inc.; Snap Dock, LLC

Cases: Patent Trademark FloridaNews GCNNews