coffee cup lid trade dress survives functionality challenge

If I have the right image of the defendant’s coffee cup lid, this is a good example of the difficulties separating scope from validity: the challenged design is noticeably different from the registered design, and it seems to me that the case that the overall concept is functional is stronger than the case that the specific implementation is functional.  I guess we’ll see.

Solo Cup Operating Corp. v. Lollicup USA, Inc., 2017 WL
2152424, No. 16 C 8041 (N.D. Ill. May 17, 2017)
Solo Cup has a registered product configuration mark for its
“Traveler” coffee-cup lid:

The lid was also the subject of design and utility patents that
expired in 2001 and 2003, and which were disclosed to the PTO during the registration
process.  Solo alleged that Lollicup’s
Karat lids infringed its mark.

Lollicup asserted a bunch of defenses, some of which the
court rejects here, including fraud on the PTO. 
Fraud occurs when the applicant “withhold[s] from the Patent and
Trademark Office … material information or fact which, if disclosed to the
Office, would have resulted in the disallowance of the registration sought or
to be maintained,” or makes “a deliberate attempt to mislead the PTO into
registering [the] mark by presenting materially false and misleading
information to the PTO when … seeking the trademark registration.” Lollicup
argued that Solo’s statements made during the application process about
non-functionality constituted fraud.
Under Traffix, the
existence of a utility patent that encompasses the product configuration
claimed “is strong evidence that the features therein claimed are functional,”
but not completely dispositive. 
Functionality isn’t a fact that can be withheld from the PTO but a
determination for the examiner. Thus, for fraud to relate to functionality, a
party must either withhold from the examiner information or facts that are
material to the determination of whether the mark is functional or present
false or misleading information that is material to the functionality
determination.  Lollicup argued that
Solo’s representations that certain features of its lid were ornamental were inconsistent
with representations made to the patent examiner about those features’
functionality. “But as any practitioner before the PTO would likely concede,
applications advocate for a result by highlighting facts that are favorable.
Where, as here, the trademark examiner was in a position to agree or disagree
with the characterizations contained in the application by studying the patent
itself, such an argument made by a trademark applicant does not give rise to a
reasonable inference of fraudulent intent.”
Similarly, Solo’s director of product development submitted
a declaration to the PTO stating that (a) the lid had the same basic functional
characteristics of competing lids and (b) the configuration didn’t affect the cost
of manufacturing the lid to the disadvantage of others in the marketplace.
These were potentially false and misleading but they characterized the
configuration in “broad terms that are not demonstrably false nor directly contrary
to the patent disclosure,” which claimed that the configuration assisted in
manufacturing.
The court similarly dismissed false advertising claims based
on Solo’s allegedly false use of the registration symbol on its lid.  The trademark was registered and the court
dismissed the fraud claims.  “[U]se of
the ® symbol on its registered lids cannot be a false statement of fact prior
to cancellation or abandonment of that mark.” Even if the trademark is
ultimately cancelled, it will still have been registered and thus there was no
false claim in prior use of the symbol.
A similar fate awaited Lollicup’s claims of
unconstitutionality of the registration and preemption under federal patent
law.  The right to copy a design upon
expiration of a patent is “far from absolute.” Thomas & Betts Corp. v.
Panduit Corp., 138 F.3d 277, 287 (7th Cir. 1998). 

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