Informational functionality is a thing now

Sulzer Mixpac AG v. A&N Trading Co., No. 19-2951 (2d Cir. Feb. 18, 2021)

The parties compete in the U.S. market for mixing tips used by dentists to create impressions of teeth for dental procedures, such as crowns. Reversing the district court, the court of appeals held that Mixpac’s alleged trade dress—its use of yellow, teal, blue, pink, purple, brown, and white on different mixing tips—was functional. The colors signify diameter and enable users to match a cartridge to the appropriate mixing tip.

The full system consists of a dispenser-like caulking gun, a cartridge containing two cylinders, and a mixing tip. Mixpac makes all three parts of the system and is a leading supplier of mixing tips. A mixing tip blends components as they pass through the tip from the cartridge. “To accommodate different types of dental procedures, mixing tips vary in their diameter, the length of the helixes that mix component materials, and cap sizes.”

Mixpac owned twelve U.S. trademark registrations for particular colors on mixing tips. It also had previously secured a default judgment against one of the key defendants for trade dress infringement of a different trade dress; the district court awarded $41,250 in damages and imposed a $20,000 fine, which remain unpaid.

Mixpac’s Director of Technology and Innovation testified that applying the colors to the mixing tips adds significant time and cost to the production. He agreed with Mixpac’s Director of Market Segment Healthcare that all mixing tips of a given color had the same diameter, and Mixpac’s catalog uses color to identify the diameter. A general practice dentist testified as an expert for Mixpac that he does “not use, or select, a replacement mixing tip based on [c]olor alone because each of the two-component materials used is unique.”

In connection with previous litigation, a Mixpac employee declared that, “[t]o assist in identifying Mixpac’s product and to enable users to quickly select a mixing tip that matches the proper cartridge, [Mixpac] chose a unique and arbitrary color coding system.” He further declared that the “colors of the cartridge cap are matched to the mixing tip to indicate the proper size and mixing ratio for the dental materials.” Another employee declared that “Mixpac uses a color code with its mixers to enable an end user to quickly identify the appropriate [t]ip that is matched with the same colored cartridge cap.” Mixpac’s advertising materials assert that “[i]n order to simplify handling MIXPAC is using color-coded mixers and outlet caps. The color of the outlet cap used for a certain dental product identifies the mixer best suited for th[e] product.” Third-party websites advertise mixing tips based primarily on their colors under Mixpac’s system, and materials manufacturers rely on Mixpac’s color-coding in their product use instructions—Mixpac sells to a lot of different manufacturers who fill its cartridges with their own materials.

The district court found nonfunctionality because of the added production cost of the tips and the fact that “[o]ther companies in the industry use different colors or no colors for their dental products including dental mixing tips.” “Most important of all with respect to functionality is the fact that alternative designs are obviously and clearly available without impairing the utility of the product.” It acknowledged that “a small minority” of dentists “have [probably] asked for a yellow tip or a blue tip.”

Although there are colorless tips, A&N argued that color coding helps users identify useful product characteristics, such as diameter, thus affecting their quality. The evidence didn’t show that use of color was “essential” to the product. However, the evidence “firmly establishes that the colors signify diameter, which in turn assists users with selecting the proper cartridge for their needs.” This ability to speed up matching tips with cartridges “improve[d] the operation of the goods.” The colors served roughly the same communicative function as the colors of flash-frozen ice cream in Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC, 369 F.3d 1197 (11th Cir. 2004), or the colors of pills in Inwood v. Ives. The district court erred by not asking, per Louboutin, whether the colors affected the quality of the tips.

Though A&N’s expert witness testified that choosing a mixing tip based on color alone would be “stupid,” “the functionality doctrine does not require that a product’s functional feature be the only reason why relevant consumers purchase it.” Functionality made secondary meaning irrelevant.