Seattle Trademark Lawyer

Plaintiff Great Neck Saw Manufacturers, Inc., sued competitor Star Asia U.S.A., LLC, in the Western District for patent and trade dress infringement over the parties’ folding knives.

Here’s the claimed trade dress: “the shape, appearance, and location of (a) the blade holder, (b) the upper curve of the handle, (c) the bottom curve of the handle, (d) the upper notch in the handle, (e) the top rivets and pivot pins on the side wall of the handle, (f) the large pivot on the side wall of the handle, (g) the curved front and rear ends of the handle, (h) the handle as viewed from the rear, (i) the handle as viewed from the top, and (j) the handle as viewed from the bottom, as well as (k) the shape, appearance and relative thickness of the layers in the handle as viewed from the top and bottom.”

Defendant Star Asia moved for summary judgment based on the trade dress’ functionality, lack of distinctiveness, and insufficient evidence of likely consumer confusion.

On July 23, Judge Thomas Zilly granted the motion on each of these grounds.

Here’s a summary of the discussion on functionality: 

“Because Great Neck has an existing utility patent for the device at issue, Great Neck bears a ‘heavy burden of establishing that the elements of its alleged trade dress are merely ‘ornamental, incidental, or arbitrary.’ The Court HOLDS that, as a mater of law, Great Neck has not met and cannot carry this burden. The features of Great Neck’s utility knife that it asserts constitute trade dress, when viewed as a whole, simply offer ‘the actual benefit that the consumers wishes to purchase,’ namely a folding knife with an easily replaceable blade. Competitors have broad rights to copy successful product designs when those  designs are not protected by (utility or design) patents. It is not unfair competition for someone to trade off the good will of a product; it is only unfair to deceive consumers as to the origin of one’s goods and thereby trade off the good will of a prior producer.’ Under the four-factor test outlined in Clamp Mfg. [Co. v. Enco Mfg. Co., 870 F.2d 512, 516 (9th Cir. 1989)], Great Neck’s trade dress is de jure functional and therefore not entitled to trade dress protection.” 

The case cite is Great Neck Saw Manufacturers, Inc. v. Star Asia U.S.A., LLC, 2010 WL 2949296, No. 06-647 (W.D. Wash. July 23, 2010) (Zilly, J.).