Seattle Trademark Lawyer

Trade dress infringement? Plaintiff’s and defendants’ jewelry designs

In Cosmos Jewelry, Ltd. v. Po Sun Hon Co., the Ninth Circuit considered a rare trade dress trial involving competing jewelry designs. In colorful language, the court affirmed the district court’s findings that plaintiff’s trade dress was distinctive and non-functional and, therefore, defendant was liable for infringement. The decision came down March 24.

“Unlike many copyright and trade dress cases, this one went to trial. We therefore review the findings of fact only to determine whether they are clearly erroneous, and do not review de novo as we would for summary judgment. In the hyperbolic language we first used in a trademark case,  ‘[t]o be clearly erroneous, a decision must … strike us as wrong with the force of a five-week old, unrefrigerated dead fish.”

“Regarding trade dress, Hon appeals the adverse determination, and we again affirm, again because the case went to trial and our standard of review limits us to considering whether the findings were clearly erroneous. Though it is a stretch to compare identifying characteristics of jewelry to the green cover on an ironing board, Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159 (1995), the jewelry characteristics are not like the springs on a traffic sign, TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001). The district court found Cosmos’s trade dress, ‘plumeria flowers in yellow gold in a specific size and shape with a sandblasted matte finish on the petals and high-polished shiny edges,’ to be distinctive. Our precedents allow for the findings the district court made.

“The district court’s finding of non-functionality is not clearly erroneous. Cosmos’s distinctive use of common techniques, such as shiny edges and sandblasting, were not functional in the sense of providing a means for hanging the earrings securely on the ear or attaching other jewelry, which might be analogous to the springs in TrafFix, but merely for creating the distinctive aesthetic appearance of [plaintiff’s Denny] Wong jewelry. Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062, 1072 (9th Cir. 2006), does not help Hon, because Hon can avoid ‘a significant non-reputation-related competitive disadvantage’ by making and selling plumeria jewelry that does not look like Cosmos’s. There is evidence in the record supporting the district court’s finding that the Cosmos flowers were identified with the source, Wong’s design, and not merely with plumeria flowers, so had acquired secondary meaning. Hon does not challenge the finding of likelihood of confusion.”

In affirming the district court’s finding, the court upheld a $2.3 million judgment and award of attorney’s fees.

Press coverage of the case here and here.

The case cite is Cosmos Jewelry, Ltd. v. Po Sun Hon Co., Nos. 06-56338, 06-56240, 07-55333, 2009 WL 766517 (9th Cir.) (March 24, 2009) (unpublished).