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February 2019: Moldex-Metric Ninth Circuit Victory

February 2019

The firm secured a significant victory for Moldex-Metric, Inc. in a published Ninth Circuit opinion that reaffirms protection for color trademarks. Since 1982, Moldex-Metric has manufactured earplugs in a specific color shade of green. There are a multitude of other shades of green, yellow, and orange (as well as patterns) that can be used to color earplugs—any of these colors is highly visible for the benefit of the user or, in an industrial setting, a supervisor checking that workers have earplugs inserted.

The longstanding “functionality” doctrine makes functional product features ineligible for trademark protection, instead leaving any available protections to patent law. Color in particular is a product feature that has reached the Supreme Court a few times, in the context of colored medical pills (held functional and thus ineligible for trademark) and dry-cleaning press pads (held non-functional and thus eligible). Among the lower court decisions in this area is the Second Circuit’s holding the red soles of Louboutin shoes to be eligible for trademark protection, at least where the top part of the shoe is not red. The animating policy is that if the color mainly identifies the product with the manufacturer (a red-soled shoe is associated with Louboutin, a particular green colored earplug with Moldex), it can be trademarked. But, on the other hand, if the color serves not just to identify the product but also serves a non-identification function (such as ensuring that a patient is taking the right medicine) and if protecting that color would leave an insufficient number of alternatively good colors available to achieve that function, the color is functional and not eligible for trademark protection.

Moldex’s dispute arose because a competitor named McKeon Products (which typically sells its plugs under the name “Mack’s”) copied Moldex’s green shade. Moldex sued for trademark infringement, and McKeon claimed that the color is ineligible for protection because it makes earplugs more visible in certain situations. Moldex responded that this particular shade is closely identified by users as a Moldex product, and that allowing trademark protection won’t hinder competition because McKeon can choose any of hundreds of available color shades or patterns that are just as visible.

Despite a factual record demonstrating the availabilty of numerous alternative visible colors, the district court granted summary judgment to McKeon on functionality grounds. In essence, the court held that, if Moldex’s green color served any function, the existence of alternative colors that could serve that function equally well was legally irrelevant. We appealed and, in 2015, won a narrow 2-1 victory in a decision that vacated and remanded the district court’s summary judgment ruling because the district court had given short shrift to Qualitex Co. v. Jacobsen Products, Co., 514 U.S. 159 (1995) (the Supreme Court’s dry-cleaning press pads case). On remand, the district court attempted to distinguish Qualitex and essentially clung to its original ruling, granting summary judgment against us again. Back to the Ninth Circuit.

After briefing and oral argument, Quinn Emanuel again obtained a vacatur and remand, this time in a unanimous, more lengthy, and published decision by an entirely different panel. The decision definitively holds that functionality cannot be decided on summary judgment in the context of our case and that the jury must consider the availability of alternative colors and designs in determining whether Moldex’s green color is eligible for trademark protection. The Court’s central holding will unquestionably redound to the benefit of other color trademark holders as well.