Configuration Trade Dress Claims Can Be Costly

Two recent federal court rulings rejecting the protectability of alleged trade dress in product configurations should make plaintiffs think twice before pursuing such claims. In both cases, the plaintiffs lost at summary judgment and now face the prospect of paying defense counsel fees and the costs incurred in defending against the claims.

The first case involves the alleged trade dress in the "cubist" appearance of a mechanical hoist used in commercial construction and maintenance, such as window washing. On February 7, the Ninth Circuit Court of Appeals affirmed the lower court decision in the case, which rejected the trade dress claim on the basis that the product configuration was functional and, in turn, granted a substantial award of attorneys' fees and costs to the defendant. See Tractel, Inc. v. Wuxi Shenxi Construction Machinery Co., Ltd., Case No. 10-17007 (9th Cir. Feb. 7, 2012).