Eco-friendliness is functional; so is rustic look of burlap

Farmgirl Flowers, Inc. v. Bloom That, Inc., No. 14-CV-05657,
2015 WL 1939424 (N.D. Cal. Apr. 28, 2015)

Farmgirl, a San Francisco-based florist selling locally farmed arrangements,
sought a preliminary injunction against competitor Bloom That prohibiting it
from using burlap sack material, or anything confusingly similar in appearance,
in connection with the sale of flowers. The court denied the motion on
utilitarian and aesthetic functionality grounds. 
In 2010, Farmgirl began using a wrapping made out of
recycled burlap sacks that were once used to hold coffee beans. Farmgirl argued
that this wrapping had no utilitarian advantage t over traditional kraft paper
or cellophane wrapping; in fact, there’s a paper underlayer because, Farmgirl argued,
burlap “does not function as well as traditional cellophane or kraft paper
wrapping.” Farmgirl’s revenues grew rapidly after it introduced the burlap wrap,
and revenues for 2015 were expected to reach $2 million. Farmgirl claimed that
customers and others in the industry associated it with its Coffee Sack Burlap
Wrap, and that it received national media coverage featuring its trade dress.

Farmgirl Flowers
Bloom That is an online flower delivery service that
delivers bouquets of flowers in 90 minutes or less. Bloom That launched in San
Francisco and set up shop within one mile of Farmgirl’s headquarters and in
Farmgirl’s primary sales territory. It initially sold bouquets that had been
wrapped in recycled burlap donated by local coffee roasters, then began wrapping
its bouquets in new, rather than recycled, burlap. Bloom That also claims to
source locally-grown flowers for use in its bouquets and delivers its bouquets
via bicycle courier. It first wraps the flowers with a material designed to
hydrate the flowers during delivery, than an outer layer of burlap plus its own
branding of an orange and white striped ribbon and a paper “luggage” tag
fastened with a wooden clothes pin. Bloom that claimed to use burlap because
the “hydration pack” was neither aesthetically pleasing nor was it sufficient
to hold the flowers together.  

Bloom That flowers
Bloom contended that (1) burlap holds up to repeated wet and
dry cycles without losing its shape, durability, or function; (2) burlap is
less expensive (at $.50—$.65 per unit) than similarly durable fabrics such as
canvas (at $5 per unit); (3) burlap is more environmentally friendly than
petroleum-based products and burlap can also be reused; and (4) it provides the
“curated look” that Bloom That’s customers find popular. The functional properties
of burlap allegedly made it an ideal wrapping for bouquets delivered using a
bicycle courier because of its moisture absorption and water-resilient
capabilities. According to Bloom That, it now uses new burlap because the
recycled burlap was inconsistent in appearance and texture and sometimes
smelled of coffee or mildew.
In September 2013, Farmgirl applied to register
“three-dimensional product packaging composed of a burlap material.”  It was approved for publication, and Bloom
That has opposed. (And given B&B,
presumably it would be bound by a PTO nonfunctionality finding if fully
litigated at the PTO, absent this case. 
The PTO issued a conditional functionality refusal based on the initial
inclusion of the shape of the wrapper in the applied-for mark, but withdrew it
once the drawing included dotted lines for the shape.)

Farmgirl burlap mark as applied for

Because the registration hadn’t issued, Farmgirl had the
burden of showing nonfunctionality. Along with the arguments above, Bloom That
identified a utility patent claiming wrapping flower bouquets with burlap, and
argued that, while burlap may be comparable in costs to paper or cellophane
wraps, a material of similar strength and durability (canvas) would cost up to
ten times more per unit.
The court agreed that on the present record burlap appeared
functional, considering particularly its utilitarian advantages and cost.  Farmgirl’s application was broad, claiming
simply a burlap wrap for live flower arrangements.  Using a specific material in product
packaging may be protectable trade dress, but Bloom That showed many examples
of the utilitarian use of burlam in transporting agricultural products and
Farmgirl’s alleged trade dress wasn’t restricted by color, size, or shape. The
evidence showed that “burlap has been in use for more than 150 years, and is
known for its strength, water resilience, and versatility.” These properties,
combined with its low cost, led to its use as packaging for many commodities,
such as coffee, and for the transportation of live plants. That suggested a
utilitarian advantage for wrapping live floral arrangements. Similarly, Bloom
That contended that burlap was superior for bicycle delivery, which may expose
bouquets to water from exterior sources such as rain. An alternative fabric
with similar water-resilient properties, such as canvas or hemp, would be more
expensive. Farmgirl did not show that burlap didn’t yield utilitarian benefits
when used to wrap bouquets for delivery.
Bloom That additionally argued that burlap’s environmental
benefits over plastic supported a functionality finding.  Eco-friendliness may independently support a
finding of functionality, especially where—as here—there was evidence that this
feature was important to consumers—eco-friendliness was a benefit that
consumers wished to purchase, which is one definition of a functional feature. Other
materials may also be eco-friendly, but if burlap provides eco-friendliness
than it is functional.  (Cf. Traffix—if it’s the reason the product
works, no other alternatives need by tried.)
As for the burlap-wrapping patent, it was strong evidence of
functionality.  Farmgirl didn’t meet its
heavy burden of overcoming that evidence. 
Though the patent listed materials other than burlap as being suitable
for wrapping bouquets using its method, two dependent claims specifically
limited the claimed invention to burlap. Plus, the suitability of other
materials was relevant to whether alternative designs were available, not to
whether burlap had utilitarian advantages. 
Independently, Farmgirl failed to carry its burden to show “that
a burlap bouquet wrap likely does not result from a comparatively simple or
inexpensive method of manufacture.” 
Farmgirl’s use of burlap decreased its costs because it got its burlap
free from local coffee roasters. Bloom That also showed that burlap was less
expensive than fabrics of similar durability. 
Effect on cost was strong evidence of functionality.
As for other factors in the functionality
determination—advertising touting utilitarian advantages, and availability of
alternative designs—these were neutral. The lack of ads touting burlap as
functional was not relevant, and, since Farmgirl failed to show that the trade
dress likely provided no utilitarian advantages, there was no need to speculate
about other design possibilities.
Separately, Farmgirl failed to carry its burden of showing
that its trade dress wasn’t aesthetically functional. According to Bloom That’s
CEO, “[b]urlap is popular among Bloom That’s customers,” “[t]he appearance of a
bouquet is one of the most important factors in its sale,” and burlap “provides
a curated look.” Bloom That provided evidence that burlap began appearing as a
trendy material in 2009 and was “commonly used to infuse a ‘rustic’ look in
otherwise ordinary décor,” including examples of brides using burlap to wrap
wedding bouquets.
While Farmgirl argued that using burlap served a
source-identifying function for Farmgirl, Farmgirl failed to meet its burden of
so showing.  (Compare to the PTO’s
process, which allowed the application to proceed to publication on a 2(f)
basis.)  “[T]he scope of trade dress
protection sought by Farmgirl would foreclose any other florist from using
burlap as a wrapping for a bouquet, even if the bouquet or burlap clearly
identified the source of the bouquet by the use of the florist’s brand name or
logo.”  Its alleged trade dress wasn’t
limited in color, shape, or size, even though its recycled burlap still bore the
mark of the original coffee roaster.  “Farmgirl
has failed to carry its burden to establish that the consumer would associate
any use of burlap as a wrapping material for a bouquet of flowers with a single
florist, rather than improving the appeal of the bouquet.”  Bloom That showed that “one of the essential
selling features of a flower bouquet, if indeed not the primary feature, is its
aesthetic appearance,” and that a burlap wrap for floral arrangements was
aesthetically pleasing.

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