Monday, May 04, 2015

Eco-friendliness is functional; so is rustic look of burlap

Farmgirl Flowers, Inc. v. Bloom That, Inc., No. 14-CV-05657, 2015 WL 1939424 (N.D. Cal. Apr. 28, 2015)

Farmgirl, a San Francisco-based florist selling locally farmed arrangements, sought a preliminary injunction against competitor Bloom That prohibiting it from using burlap sack material, or anything confusingly similar in appearance, in connection with the sale of flowers. The court denied the motion on utilitarian and aesthetic functionality grounds. 
In 2010, Farmgirl began using a wrapping made out of recycled burlap sacks that were once used to hold coffee beans. Farmgirl argued that this wrapping had no utilitarian advantage t over traditional kraft paper or cellophane wrapping; in fact, there’s a paper underlayer because, Farmgirl argued, burlap “does not function as well as traditional cellophane or kraft paper wrapping.” Farmgirl’s revenues grew rapidly after it introduced the burlap wrap, and revenues for 2015 were expected to reach $2 million. Farmgirl claimed that customers and others in the industry associated it with its Coffee Sack Burlap Wrap, and that it received national media coverage featuring its trade dress.
Farmgirl Flowers
Bloom That is an online flower delivery service that delivers bouquets of flowers in 90 minutes or less. Bloom That launched in San Francisco and set up shop within one mile of Farmgirl’s headquarters and in Farmgirl’s primary sales territory. It initially sold bouquets that had been wrapped in recycled burlap donated by local coffee roasters, then began wrapping its bouquets in new, rather than recycled, burlap. Bloom That also claims to source locally-grown flowers for use in its bouquets and delivers its bouquets via bicycle courier. It first wraps the flowers with a material designed to hydrate the flowers during delivery, than an outer layer of burlap plus its own branding of an orange and white striped ribbon and a paper “luggage” tag fastened with a wooden clothes pin. Bloom that claimed to use burlap because the “hydration pack” was neither aesthetically pleasing nor was it sufficient to hold the flowers together.  
Bloom That flowers
Bloom contended that (1) burlap holds up to repeated wet and dry cycles without losing its shape, durability, or function; (2) burlap is less expensive (at $.50—$.65 per unit) than similarly durable fabrics such as canvas (at $5 per unit); (3) burlap is more environmentally friendly than petroleum-based products and burlap can also be reused; and (4) it provides the “curated look” that Bloom That’s customers find popular. The functional properties of burlap allegedly made it an ideal wrapping for bouquets delivered using a bicycle courier because of its moisture absorption and water-resilient capabilities. According to Bloom That, it now uses new burlap because the recycled burlap was inconsistent in appearance and texture and sometimes smelled of coffee or mildew.
In September 2013, Farmgirl applied to register “three-dimensional product packaging composed of a burlap material.”  It was approved for publication, and Bloom That has opposed. (And given B&B, presumably it would be bound by a PTO nonfunctionality finding if fully litigated at the PTO, absent this case.  The PTO issued a conditional functionality refusal based on the initial inclusion of the shape of the wrapper in the applied-for mark, but withdrew it once the drawing included dotted lines for the shape.)
Farmgirl burlap mark as applied for
Because the registration hadn’t issued, Farmgirl had the burden of showing nonfunctionality. Along with the arguments above, Bloom That identified a utility patent claiming wrapping flower bouquets with burlap, and argued that, while burlap may be comparable in costs to paper or cellophane wraps, a material of similar strength and durability (canvas) would cost up to ten times more per unit.
The court agreed that on the present record burlap appeared functional, considering particularly its utilitarian advantages and cost.  Farmgirl’s application was broad, claiming simply a burlap wrap for live flower arrangements.  Using a specific material in product packaging may be protectable trade dress, but Bloom That showed many examples of the utilitarian use of burlam in transporting agricultural products and Farmgirl’s alleged trade dress wasn’t restricted by color, size, or shape. The evidence showed that “burlap has been in use for more than 150 years, and is known for its strength, water resilience, and versatility.” These properties, combined with its low cost, led to its use as packaging for many commodities, such as coffee, and for the transportation of live plants. That suggested a utilitarian advantage for wrapping live floral arrangements. Similarly, Bloom That contended that burlap was superior for bicycle delivery, which may expose bouquets to water from exterior sources such as rain. An alternative fabric with similar water-resilient properties, such as canvas or hemp, would be more expensive. Farmgirl did not show that burlap didn’t yield utilitarian benefits when used to wrap bouquets for delivery.
Bloom That additionally argued that burlap’s environmental benefits over plastic supported a functionality finding.  Eco-friendliness may independently support a finding of functionality, especially where—as here—there was evidence that this feature was important to consumers—eco-friendliness was a benefit that consumers wished to purchase, which is one definition of a functional feature. Other materials may also be eco-friendly, but if burlap provides eco-friendliness than it is functional.  (Cf. Traffix—if it’s the reason the product works, no other alternatives need by tried.)
As for the burlap-wrapping patent, it was strong evidence of functionality.  Farmgirl didn’t meet its heavy burden of overcoming that evidence.  Though the patent listed materials other than burlap as being suitable for wrapping bouquets using its method, two dependent claims specifically limited the claimed invention to burlap. Plus, the suitability of other materials was relevant to whether alternative designs were available, not to whether burlap had utilitarian advantages. 
Independently, Farmgirl failed to carry its burden to show “that a burlap bouquet wrap likely does not result from a comparatively simple or inexpensive method of manufacture.”  Farmgirl’s use of burlap decreased its costs because it got its burlap free from local coffee roasters. Bloom That also showed that burlap was less expensive than fabrics of similar durability.  Effect on cost was strong evidence of functionality.
As for other factors in the functionality determination—advertising touting utilitarian advantages, and availability of alternative designs—these were neutral. The lack of ads touting burlap as functional was not relevant, and, since Farmgirl failed to show that the trade dress likely provided no utilitarian advantages, there was no need to speculate about other design possibilities.
Separately, Farmgirl failed to carry its burden of showing that its trade dress wasn’t aesthetically functional. According to Bloom That’s CEO, “[b]urlap is popular among Bloom That’s customers,” “[t]he appearance of a bouquet is one of the most important factors in its sale,” and burlap “provides a curated look.” Bloom That provided evidence that burlap began appearing as a trendy material in 2009 and was “commonly used to infuse a ‘rustic’ look in otherwise ordinary d├ęcor,” including examples of brides using burlap to wrap wedding bouquets.
While Farmgirl argued that using burlap served a source-identifying function for Farmgirl, Farmgirl failed to meet its burden of so showing.  (Compare to the PTO’s process, which allowed the application to proceed to publication on a 2(f) basis.)  “[T]he scope of trade dress protection sought by Farmgirl would foreclose any other florist from using burlap as a wrapping for a bouquet, even if the bouquet or burlap clearly identified the source of the bouquet by the use of the florist’s brand name or logo.”  Its alleged trade dress wasn’t limited in color, shape, or size, even though its recycled burlap still bore the mark of the original coffee roaster.  “Farmgirl has failed to carry its burden to establish that the consumer would associate any use of burlap as a wrapping material for a bouquet of flowers with a single florist, rather than improving the appeal of the bouquet.”  Bloom That showed that “one of the essential selling features of a flower bouquet, if indeed not the primary feature, is its aesthetic appearance,” and that a burlap wrap for floral arrangements was aesthetically pleasing.

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