Informational functionality is a thing now

Sulzer Mixpac AG v. A&N Trading Co., No. 19-2951 (2d
Cir. Feb. 18, 2021)

The parties compete in the U.S. market for mixing tips used
by dentists to create impressions of teeth for dental procedures, such as
crowns. Reversing the district court, the court of appeals held that Mixpac’s
alleged trade dress—its use of yellow, teal, blue, pink, purple, brown, and
white on different mixing tips—was functional. The colors signify diameter and
enable users to match a cartridge to the appropriate mixing tip.

The full system consists of a dispenser-like caulking gun, a
cartridge containing two cylinders, and a mixing tip. Mixpac makes all three
parts of the system and is a leading supplier of mixing tips. A mixing tip
blends components as they pass through the tip from the cartridge. “To
accommodate different types of dental procedures, mixing tips vary in their
diameter, the length of the helixes that mix component materials, and cap

Mixpac owned twelve U.S. trademark registrations for
particular colors on mixing tips. It also had previously secured a default
judgment against one of the key defendants for trade dress infringement of a
different trade dress; the district court awarded $41,250 in damages and
imposed a $20,000 fine, which remain unpaid.

Mixpac’s Director of Technology and Innovation testified
that applying the colors to the mixing tips adds significant time and cost to
the production. He agreed with Mixpac’s Director of Market Segment Healthcare
that all mixing tips of a given color had the same diameter, and Mixpac’s
catalog uses color to identify the diameter. A general practice dentist
testified as an expert for Mixpac that he does “not use, or select, a
replacement mixing tip based on [c]olor alone because each of the two-component
materials used is unique.”

In connection with previous litigation, a Mixpac employee
declared that, “[t]o assist in identifying Mixpac’s product and to enable users
to quickly select a mixing tip that matches the proper cartridge, [Mixpac]
chose a unique and arbitrary color coding system.” He further declared that the
“colors of the cartridge cap are matched to the mixing tip to indicate the
proper size and mixing ratio for the dental materials.” Another employee
declared that “Mixpac uses a color code with its mixers to enable an end user
to quickly identify the appropriate [t]ip that is matched with the same colored
cartridge cap.” Mixpac’s advertising materials assert that “[i]n order to
simplify handling MIXPAC is using color-coded mixers and outlet caps. The color
of the outlet cap used for a certain dental product identifies the mixer best
suited for th[e] product.” Third-party websites advertise mixing tips based
primarily on their colors under Mixpac’s system, and materials manufacturers
rely on Mixpac’s color-coding in their product use instructions—Mixpac sells to
a lot of different manufacturers who fill its cartridges with their own

The district court found nonfunctionality because of the
added production cost of the tips and the fact that “[o]ther companies in the
industry use different colors or no colors for their dental products including
dental mixing tips.” “Most important of all with respect to functionality is
the fact that alternative designs are obviously and clearly available without
impairing the utility of the product.” It acknowledged that “a small minority”
of dentists “have [probably] asked for a yellow tip or a blue tip.”

Although there are colorless tips, A&N argued that color
coding helps users identify useful product characteristics, such as diameter,
thus affecting their quality. The evidence didn’t show that use of color was
“essential” to the product. However, the evidence “firmly establishes that the colors
signify diameter, which in turn assists users with selecting the proper
cartridge for their needs.” This ability to speed up matching tips with
cartridges “improve[d] the operation of the goods.” The colors served roughly
the same communicative function as the colors of flash-frozen ice cream in
Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197 (11th Cir.
2004), or the colors of pills in Inwood v. Ives. The district court
erred by not asking, per Louboutin, whether the colors affected the
quality of the tips.

Though A&N’s expert witness testified that choosing a
mixing tip based on color alone would be “stupid,” “the functionality doctrine
does not require that a product’s functional feature be the only reason why
relevant consumers purchase it.” Functionality made secondary meaning

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