IP Law Daily, TRADEMARK—N.D. Ill.: Chambord French press configuration entitled to continued trade dress protection, (Oct 21, 2020)

By WK Editorial Staff

Jury finding that Bodum USA, Inc.’s French press configuration had secondary meaning is upheld in latest court decision over distinctive Chambord coffee press product.

Two of three declaratory judgment claims brought by manufacturing company Shenzhen Buxiang Network Technology Co., Ltd. (doing business as Veken), seeking a declaration of noninfringement of the trade dress of the Chambord French press coffee maker produced by Bodum USA, Inc., have been dismissed by the federal district court in Chicago, based on previous verdicts involving the product configuration at issue. The claims—which sought, respectively, a declaration that the Chambord configuration lacks secondary meaning a declaration that the configuration was functional and unprotectable—were both dismissed as having been decided satisfactorily in Bodum’s favor by a jury and the Seventh Circuit (Shenzhen Buxiang Network Technology Co. v. Bodum USA, Inc., October 20, 2020, Aspen, M.).

Bodum and Veken manufacture and sell coffee and tea presses, with Bodum having sold its’ recognizable press, the "Chambord," since 1983. The name "Chambord" is descriptive of the configuration and features a metal cage with a band around the top of the carafe, metal pillars ending in four curved feet, a C-shaped handle, and a domed lid topped with a spherical knob. Veken makes a similar French press and sells it exclusively through Amazon.com. The only discernible difference between the two French presses is that each is labeled with the company’s respective name. On December 3, 2019, Bodum requested that Amazon deactivate Veken’s French press listing and demanded that Veken cease selling their French press or risk a trade dress infringement lawsuit under the Lanham Act.

While Bodum has registered the "Bodum" and "Chambord" names as trademarks, it has not done so with the distinctive configuration of the unit. Bodum has previously litigated the issue of trade dress infringement against a different defendant and received a jury verdict, which was later affirmed by the Seventh Circuit. The court determined that the Chambord French press configuration should be protected as a trade dress with secondary meaning and was also non-functional.

Suit for injunctive relief. Veken’s lawsuit was composed of three counts. Count I requested a declaration of noninfringement based on no likelihood of confusion. (Bodum did not seek dismissal of this count.) Count II sought a declaration that the Chambord configuration lacked secondary meaning, and Count III sought a declaration that the configuration was functional and thus not protected under trade dress law. Bodum moved to dismiss Counts II and III of the Complaint, relying on the ruling of the Seventh Circuit affirming the jury verdict in its favor.

Count II—secondary meaning. Bodum had to show that the trade dress acquired secondary meaning and the design of the product was so distinctive that it is identifies the source of the product. In other words, it had to demonstrate that the primary significance of the trade dress, in the public’s mind, was to identify the source of the product rather than the product itself.

In the Complaint, Veken maintained that the Seventh Circuit did not satisfactorily address the issue of secondary meaning. Contrary to this assertion, the court determined that the jury was presented with this question of fact and had to conclude the existence of a secondary meaning to arrive at the conclusion that the Chambord configuration should be protected as a trade dress. This conclusion of the jury, that the same Bodum Chambord French press configuration conveyed a secondary meaning, was allowed to stand and would not be tampered with in this court. With no changes in the French press marketplace that would affect the recent verdict, the court held that Veken’s Count II failed to state a claim upon which relief may be granted.

Count III—nonfunctionality. Courts examine five factors in making a determination on functionality of trade dress: (1) The existence of a utility patent that involves or describes the functionality of an item's design element; (2) the useful properties of the item's unpatented design elements; (3) advertising of the item that describes the useful advantages of the item's design elements; (4) the lack of alternative designs for the item's purpose; and (5) the effect of the design feature on an item's quality or cost.

Bodum contended that all five factors weighed in favor of the finding that its French press configuration was nonfunctional. In response, Veken asserted that Count III should survive in order for the court to address the fresh question of "aesthetic functionality," which examines the issue of whether the exclusive use of a feature would place competitors at a significant disadvantage. However, the previous court, without explicitly using the term "aesthetic functionality," did address the issue and still decided to confer trade dress protection to the Chambord. Bodum’s motion to dismiss Count III was granted on the basis that the exact Chambord French press configuration had already been deemed nonfunctional as a matter of law.

This case is No. 1:20-cv-01726.

Attorneys: Richard Martin Labarge (Marshall, Gerstein & Borun LLP) for Shenzhen Buxiang Network Technology Co., Ltd. Nicole Joy Wing (Vedder Price PC) for Bodum USA, Inc.

Companies: Shenzhen Buxiang Network Technology Co., Ltd.; Bodum USA, Inc.

Cases: Trademark GCNNews IllinoisNews