Color coded system for dental adhesive can’t be trademarked because it is functional. SULZER MIXPAC v. AN TRADING

A trademark is traditionally thought of as a word, phrase or symbol that a manufacturer places on their products. However, just about anything that signals to consumers the identity of the company that produced a product can be granted trademark protection.

Trade dress constitutes a “symbol” or “device” within the meaning of §2 of the Trademark Act, 15 U.S.C. §1052. Trade dress originally included only the packaging or “dressing” of a product, but in recent years has been expanded to encompass the design of a product. It is usually defined as the “total image and overall appearance” of a product, or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, graphics.”

In Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 the United States Supreme Court advised against over extension of trade dress, noting that product design almost invariably serves purposes other than source identification. The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. The Lanham Act does not protect trade dress in a functional design simply because an investment has been made to encourage the public to associate a particular functional feature with a single manufacturer or seller.

A product design is considered to be ‘functional’ in a utilitarian sense if it is (1) ‘essential to the use or purpose of the article,’ or if it (2) ‘affects the cost or quality of the article.’ A feature can still be functional even if it is not essential to a product’s use or purpose and does not affect a product’s cost or operation. This is referred to as aesthetic functionality, where the aesthetic design of a product is itself the mark for which protection is sought. When aesthetic functionality is claimed a court will consider whether giving the trademark owner the exclusive right use the trademark would put competitors at a significant disadvantage.

SULZER MIXPAC AG, v. A&N TRADING CO., 19-2951 (2nd Cir. 2021) is an example of a case where a color coding system was found to be aesthetically functional.

Plaintiff in this case manufactures a system to mix adhesives for dental applications. The system consists of a dispenser-like caulking gun, a cartridge containing two cylinders, and a mixing tip. The mixing tips are color coded based on the diameter of adhesive which is dispensed. Plaintiff has registered trademarks for its mixing tips in several different colors.

Defendant distributes a competing product line of mixing tips for dental adhesives. At the Greater New York Dental Meeting in 2016 Defendant offered for sale mixing tips with almost identical colors as Plaintiff’s products.

In 2016 Plaintiff filed suit against Defendant for trademark infringement. In 2019 a one day trial was held. At trial witnesses for Plaintiff testified that adding color to the mixing tips adds to the cost of the product. Plaintiff’s witnesses also confirmed that all yellow mixing tips are 4.2 millimeters in diameter, all teal mixing tips are 6.5 millimeters in diameter, and all blue mixing tips are 3.2 millimeters in diameter. The purpose of Plaintiff’s color coding system was to allows users to quickly identify the proper mixing tip. The trial court entered judgement in favor of the Plaintiff and awarded $2 Million in damages. In its decision the trial court noted that some competitors use different color coding systems or no color at all, therefore Plaintiff’s color system was not functional. Defendant then appealed to the Court of Appeals for the Second Circuit.

The Second Circuit found that evidence at trial firmly established that the colors signify diameter, which in turn assists users with selecting the proper cartridge for their needs. The trial court erred because it only considered whether the mix tip colors adds to manufacturing costs and that other companies use different or no colors. The trial court did not consider the effect on competition. The Second Circuit concluded that the colors are functional, therefore Plaintiff’s trade dress is unprotectible. The trial court’s decision was reversed and remanded for further proceedings.

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