Can’t replead TM as false advertising when functionality precludes TM

Honeywell International Inc. v. ICM Controls Corp., 2014 WL 5438395, No. 11–569 (D. Minn. Oct. 24, 2014)
This litigation involves claims for patent infringement, copyright infringement, violations of the Lanham Act, and violations of the Uniform Deceptive Trade Practices Act based on ICM’s alleged copying of combustion control devices. A few months ago, the court kicked out Honeywell’s trade dress claim on functionality grounds and its false advertising claim based on ICM’s “Made in the USA” representations.  While at the time it questioned the validity of false advertising claims based on trade dress similarity, it now administered the coup de grace.
Honeywell maintained that it wasn’t just challenging ICM’s copying of trade dress, but also ICM’s promotion of its products as “the same as” Honeywell products.  ICM allegedly copied the appearance of Honeywell’s products “because that appearance gives contractors the impression that ICM’s products are ‘highly interchangeable’ with the range of Honeywell products they are intended to replace.”  However, ICM’s products were allegedly not the same and not always highly interchangeable with Honeywell products, making ICM’s marketing false or misleading.  Honeywell also argued that its history of making these products as “private label” products for third-party competitors contributed to the confusion.
The court was unconvinced.  Functionality protects competition and consumers.  The allegations didn’t show any false statement. Instead, ICM allegedly marketed products similar to Honeywell’s, which created a false impression of affiliation/sponsorship.  “But Honeywell International has no protectable interest in its claimed trade dress. Trade dress infringement does not arise out of ICM Controls’ products; the marketing of those same products does not constitute false advertising.”
Comment: I would state the doctrinal result as one that an implicit performance message, if any, conveyed by copying functional features must be allowed, even if that causes some confusion, to police the boundaries of trademark and patent law.  This is an unusual example of channeling from false advertising to trademark; more common is the other way around, where we usually require complaints about comparative advertising to be made under the head of false advertising with its stricter falsity, materiality, standing, and “advertising or promotion” requirements.
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