Plaintiff Bern Unlimited, Inc. (“Bern”) sued five competitors for infringement of the trade dress of its protective sports helmet trade dress consisting of a “rounded profile of the helmet” and “distinctive visor.” While Bern’s original suit sought relief for design-patent infringement against Burton Corporation alone, it subsequently amended its complaint to include all five defendants and include claims of trade-dress infringement, dilution, and unfair competition.

Defendants, who also make helmets for biking, skiing, snow, and water sporting, moved for summary judgment on all claims, alleging that plaintiff’s trade dress was functional and therefore unprotectable. Defendants’ functionality argument relied on evidence of advertisements by plaintiff touting the functional benefits of certain helmet attributes. Examples include describing the visor as “giv[ing] skaters a much needed brim in sunny locales and com[ing] in handy during rainy day sessions as well,” and the helmet shape as “ergonomically fit[ting] around your head instead of on top of it providing full protection.”


The district court relied on the analysis set forth in In re Morton-Norwich Products, Inc. (“Morton-Norwich Factors”) 671 F.2d 1332 (CCPA 1982), in evaluating the alleged functionality of the helmet trade dress, including: (1) the existence of a utility patent disclosing the utilitarian aspects of the design; (2) advertisements in which the designer promotes the functional aspects of the design; (3) the availability of functionally equivalent alternative designs, and 4) evidence that this design was chosen for its cost-saving manufacturing process.

Defendants argued in favor of a finding of functionality based on plaintiff’s advertisements touting the beneficial and functional aspects of its helmet designs. While acknowledging that defendants’ showing on the second Morton-Norwich Factor supported a finding of functionality, the court ultimately denied defendants’ motion on the ground that defendants had failed to present evidence on any of the remaining three factors of the test. Additionally, the court found plaintiff had met its rebuttal burden with evidence that, while the visor was intended to be a functional feature, ultimately it served only an aesthetic purpose and was therefore protectable.


This case is noteworthy because it suggests that even in the face of significant evidence of advertising emphasizing a product’s functional features, such a showing is insufficient, standing alone, to support a finding of functionality at the summary judgment stage.

Eleanor Atkins

*Eleanor Atkins is a Summer Associate at Finnegan.