Plaintiff Bern Unlimited, Inc. (“Bern”) brought this action against Burton, Easton-Bell, Smith, Amer, and Vans (the “Defendants”) alleging trade dress infringement and trade dress dilution under 15 U.S.C. §1125. The Defendants filed a motion for summary judgment on the grounds that Bern could not prove the non-functionality of its asserted trade dress. The Court (Saylor, D.J.) denied that motion, finding that disputed issues of material fact exist.

Bern and each of the Defendants manufacture and sell helmets for biking, skating, snow sports, and water sports. Bern makes a number of commercially successful helmet lines, which were said in the complaint to include two distinctly identifiable design elements: a rounded profile shape of the helmet and a distinctive visor. The Court discussed the legal standards for trade-dress claims, noting that Bern must prove that the asserted trade dress is, among other things, non-functional. Defendants introduced Bern’s marketing materials as evidence that the asserted trade dress was functional and thus not entitled to protection. In particular, Defendants noted that Bern’s website advertised the rounded profile shape of the helmet as providing an ergonomic fit and added protection. It also described the visor as providing a shield from sun and rain.

The Court found that, while these advertisements suggested a functional purpose, there was insufficient evidence to find as a matter of law that the claimed features of Bern’s helmets were functional. In reaching this conclusion, the Court referred to the often-cited “Morton-Norwich” factors for assessing functionality, which include: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product. Bern’s advertising provided evidence of only one of the four factors, and there was no undisputed evidence before the Court that would suggest the other factors might weigh in favor of Defendants. In addition, the Court found that Bern had raised a question of fact as to whether the visor could have been initially designed to be functional but later retained, despite a lack of functionality, for its aesthetic value.

Ultimately, the Court held that a triable issue of fact existed as to the functionality of Bern’s claimed trade dress, and therefore Defendants’ motion for summary judgment was denied. Using the same rationale, the Court also denied Defendants’ summary judgment motions on various related state law claims.