United States: Ninth Circuit Court Finds Trademark Registration Alone Not Sufficient to Raise Material Issue to Defeat Summary Judgment on Issue of Functionality

In Tie Tech, Inc. v. Kinedyne Corp., 2002 U.S. App. LEXIS 13911 (9th Cir. July 11, 2002), the U.S. Court of Appeals for the Ninth Circuit Court affirmed that product configurations that are wholly functional are not entitled to trademark protection. The registration of a trademark, by itself, is not sufficient to create a factual issue to survive summary judgment.

Tie Tech manufactures a product that is designed for emergency use in cutting through wheelchair webbing systems used in vehicles. The U.S. Patent and Trademark Office (PTO) registered the entire configuration and arbitrary embellishment of the product as a trademark. Kinedyne, a competitor of Tie Tech, redesigned its own "web-cutter" so that the resulting product is virtually indistinguishable from Tie Tech’s product. Tie Tech sued Kinedyne for trademark infringement.

The district court entered summary judgment in favor of Kinedyne, holding that Tie Tech’s product configuration is functional and, thus, not protected by trademark. On appeal, Tie Tech argued, first, that the mere fact of trademark registration alone should have been sufficient to create a material issue of fact to defeat summary judgment; and, second, that it presented sufficient evidence of non-functionality beyond the registration to warrant reversal. The Ninth Circuit rejected both of Tie Tech’s contentions.

An essential element in an infringement action is the validity of the mark. Although the registration of the mark gave Tie Tech a presumptive advantage on the issue of validity, when Kinedyne rebutted the presumption of validity through undisputed facts proving functionality, the registration lost its evidentiary significance. Likewise, Tie Tech failed to point to any evidence of distinctiveness of its design other than those elements essential to its effective use. The Ninth Circuit likewise rejected Tie Tech’s argument that, while the individual parts making up the product are functional, the overall appearance of the product was non-functional and deserving of protection.

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