The U.S. Court of Appeals for the Seventh Circuit confirmed that the construction of a folding chair that was designed to optimize the chair’s strength-to-weight ratio, rather than create a distinctive appearance that would help consumers distinguish it from other folding chairs, was not a valid trademark. Specialized Seating, Inc. v. Greenwich Industries, LP, Case Nos. 07-1435 and 10-2670 (7th Cir., Aug. 11, 2010) (Easterbrook, J.)
Greenwich had a trademark registration for a folding chair configured in an X-frame profile. Specialized Seating competes in Greenwich market and also make folding chairs for venues that typically deploy many seats. Specialized Seating makes and sells a chair that appears very similar to Greenwich’s registered trademark.
Following a bench trial, the district court found Greenwich’s X-frame construction to be functional because it was designed to be an optimal tradeoff between a chair’s weight (and thus its cost, since lighter chairs use less steel) and its strength. The district court also found functionality in that an X-frame chair folds itself naturally when knocked over, as well as in that the flat channel at the seat’s edge, where the attachment to the frame slides so that the chair can fold, was designed for strength and for attaching hooks to link a chair with its nearest neighbor. Finally, the court found that the front and back crossbars contribute strength. Based upon these determinations, the district court concluded that Greenwich’s X-frame construction was functional and unprotectable and ordered Greenwich’s trademark registration canceled.
The district court also found that Greenwich had defrauded the U.S. Patent and Trademark Office (USPTO) by telling the examiner that the patent it held on an X-frame chair did not include all of the features in the mark’s design. However, Greenwich did not tell the examiner that it held three additional patents on X-frame designs, which covered every feature of the design submitted for a trademark. Greenwich appealed.
The Seventh Circuit agreed with the district court, holding that the trademark design was functional and that every important aspect of it was independently functional. The Court said that the chair “looks the way it does in order to be a better chair, not in order to be a better way of identifying who made it (the function of a trademark).” The mere availability of alternate designs is not enough to defeat a functionality claim, as one of the rationales of the functionality doctrine is to prevent firms from appropriating basic forms that go into many designs. Another goal of the functionality doctrine is to separate the spheres of patent and trademark law, as well as to ensure that the term of a patent is not extended beyond the period authorized by the legislature.
The Seventh Circuit also held that because the district court did not commit clear error in finding Greenwich’s design to be functional, it was not necessary to decide whether Greenwich committed fraud on the USPTO.