September 15, 2016
from the United States District Court for the Northern
District of Illinois, Eastern Division. No. l:13-cv-04180 -
Sharon Johnson Coleman, Judge.
Flaum, Manion, and Hamilton, Circuit Judges.
Hamilton, Circuit Judge.
Lanham Act case turns on whether the shape and design of a
small bag, modeled after a men's Dopp Kit and used in
personal care kits, are functional and therefore not
protected as trade dress. Plaintiff sells personal care kits
in such a bag. When another personal care kit seller copied
plaintiff's bag, plaintiff sued, claiming the bag was
protected trade dress. The district court granted summary
judgment in defendant's favor, finding that the bag's
design and shape were functional. We agree, so we affirm the
district court's decision.
Factual and Procedural Background
Arlington Specialties, Inc. does business as Pinch
Provisions. It sells personal care kits: small bags
containing small portable toiletries like hairspray, stain
remover, and deodorant. Plaintiff's products include a
line of kits called "Minimergency Kits, " which
come in small fabric bags designed to look like men's
Dopp Kits (ironically enough, a now-cancelled trademark for
travel kits, originally for men's shaving gear, used
widely by the military in World War II). A picture of
plaintiff's bag is Appendix A to this opinion.
Urban Aid, Inc. also sells personal care kits. It agreed to
create a custom kit for a shoe distributor that wanted to use
the kits as part of a sales promotion. The shoe distributor
wanted the kits to come in a bag similar to plaintiff's
bag, and it gave Urban Aid a picture of plaintiff's bag
to work from. Urban Aid obliged; side-by-side images of the
two parties' bags are Appendix B to this opinion.
the shoe distributor began its sales promotion, plaintiff
filed suit in the Northern District of Illinois. It claimed
that the shape and design of its bag were protected trade
dress, that Urban Aid's bag violated the Lanham Act, the
Illinois Uniform Deceptive Trade Practices Act, and the
Illinois Consumer Fraud and Deceptive Business Practices Act,
and that Urban Aid's bag tortiously interfered with
plaintiff's prospective business relations.
Aid moved for summary judgment on four grounds: that
plaintiff's trade dress was generic, that it was
functional, that it lacked secondary meaning, and that Urban
Aid's design caused no likelihood of confusion. The
district court found that plaintiff's claimed trade dress
was functional as a matter of law. Arlington Specialties,
Inc. v. Urban Aid, Inc., No. 13 CV 4180, 2014 WL
4913531, at *3 (N.D. 111. Sept. 30, 2014). Because all of
plaintiff's claims depend on whether the claimed trade
dress is protectable, the court granted summary judgment for
the defendant on the federal Lanham Act claim and the related
state-law claims. Id. at ""4. Plaintiff
review de novo a district court's grant of
summary judgment; we view the evidence in the light
reasonably most favorable to the non-moving party and must
affirm if no reasonable trier of fact could find in favor of
the non-moving party. White v. City of Chicago, 829
F.3d 837, 841 (7th Cir. 2016). We agree with the district
court that the undisputed facts show here that
plaintiff's claimed trade dress is functional and
therefore not protected by the Lanham Act.
Trade Dress and Functionality
Lanham Act establishes a cause of action against any
"person who ... in connection with any goods or
services" uses "any word, term, name, symbol, or
device" which "is likely to cause confusion"
as to the good or service's source. 15 U.S.C. §
1125(a)(1)(A). That protection can extend to "trade
dress, " such as the design or packaging of a product
that is so distinctive as to identify the manufacturer or
source. TrafFix Devices, Inc. v. Marketing Displays,
Inc.,532 U.S. 23, 28 (2001); Two Pesos, Inc. v.
Taco Cabana, Inc.,505 U.S. 763, 768 (1992); Blau