"Incontestable" Trade Dress Not Immune From Challenge Based on Functionality

Trade dress that has achieved "incontestable" status under the Lanham Act is not immune from challenge based on functionality, even if it achieved such status prior to enactment of the functionality exception to incontestability. Eco Mfg. LLC v. Honeywell Int’l Inc., No. 03-2704, 2003 U.S. App. LEXIS 26430 (7th Cir. Dec. 31, 2003).

Honeywell’s round thermostat formerly was protected by a utility patent and a design patent. After expiration of those patents, Honeywell obtained a federal trademark registration for the trade dress embodied in its thermostat design, which became "incontestable" in 1996 under 15 U.S.C. § 1065.

Eco sought a declaratory judgment that its product did not infringe Honeywell’s trade dress in its round thermostat. Honeywell counterclaimed, seeking preliminary injunctive relief. The district court denied the preliminary injunction, concluding that Honeywell could not demonstrate a likelihood of success on the merits because its round thermostat is functional,