Ninth Circuit Acknowledges That Its Precedent on Functionality Is “Less Than Clear”

Plaintiff Moldex-Metric had used a bright green color to identify its earplugs since 1982. After defendant McKeon Products started selling earplugs in a bright green color, plaintiff sued for trademark infringement. The parties filed cross-motions for summary judgment on the issue of functionality.

To determine whether the color green was functional for earplugs, the district court relied on the four-factor test set forth by the Ninth Circuit in Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998). That test considers (1) whether advertising touts the utilitarian advantages of the color, (2) whether the particular color results from a comparatively simple or inexpensive method of manufacture, (3) whether the color yields a utilitarian advantage, and (4) whether alternative colors are available.

Applying this test, the district court found that the color green was functional and granted the defendant’s motion for summary judgment. Among other things, the court found that the plaintiff had touted certain benefits of the color in advertising, that the color provided some utilitarian advantage by making the earplugs more visible than certain other colors, and that only a limited number of colors provided such advantage.

The Ninth Circuit reversed. Citing the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the court noted that the key inquiry in evaluating the functionality of a color is whether the color “is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Rather than address this core requirement, the district court erred by focusing entirely on the Disc Golf factors. As to how the Disc Golf factors exactly relate to Qualitex’s essentiality requirement, the Ninth Circuit acknowledged that its precedent was “less than clear in this area.”

Although the decision is non-precedential, parties litigating functionality issues in the Ninth Circuit should be careful to avoid relying exclusively on Disc Golf. While the Disc Golf factors are “legitimate considerations” that the Ninth Circuit typically considers, they do not replace Qualitex’s core essentiality requirement.