Bodum USA, Inc. manufacturers the Chambord French press, a nonelectric coffeemaker (Full disclosure: the author once owned a Bodum French press. It produced objectively delicious coffee). A French press is a cylindrical carafe and a plunger with a filter screen attached to one end. The user pours coffee grounds and boiling water into the carafe. The coffee steeps to taste. The user then plunges the filter screen through the slurry, trapping the grounds at the bottom.
Bodum began distributing the Chambord in 1983. The Chambord design is based on the towers of the Chambord Chateau, a castle in France’s Loire Valley. The coffeemaker carafe is glass surrounded by metal bands, metal pillars that end in four curved feet, and a C-shaped handle. The plunger begins with a spherical knob and extends through a domed top to reach the filter screen. The knob and dome are reminiscent of the château’s towers. Bodum claims trade dress protection in the overall appearance of the Chambord and the specific elements of the metal bands, support feet, C-shaped handle attachment, domed lid, and rounded knob atop the plunger. Over the years it has enforced its rights through cease-and-desist letters and lawsuits.
In 2014, 467 years after the château’s completion, A Top New Casting, Inc. began selling a competing French press called the SterlingPro. The SterlingPro has a similar appearance to the Bodum press, including metal bands, pillars that end in curved feet, C-shaped handle, spherical knob, and domed top. Bodum sued A Top, alleging infringement of Bodum’s unregistered trade dress under the Lanham Act, among other claims. The case went to trial in federal court in Illinois, and Bodum won over $4 million and a permanent injunction against the sale of the SterlingPro. A Top appealed, and in a June 12, 2019 decision, the U.S. Court of Appeals for the Seventh Circuit affirmed. The court’s decision includes photos of the competing presses.
As the court explained, the Lanham Act protects a product’s trade dress, including a design so distinctive that it identifies the product’s source. The Act does not protect features essential to the use or purpose of a product, those that affect the product’s cost or quality, or features that are a “competitive necessity.” Such features are functional and thus not eligible for trade dress protection. Trade dress protection can be perpetual (so long as the trade dress remains in commercial use), and its inapplicability to functional features prevents the trade dress owner from avoiding the time limits on patent protection. Courts focus on several questions to determine if a trade dress is impermissibly functional, including the utilitarian properties of the product’s design, whether any utility patents describe the functionality of the design elements, whether advertising touts the design as functional, whether the trade dress facilitates manufacturing cost efficiencies and the ability to create alternative designs that achieve the same purpose.
At trial, Bodum’s expert testified that only the plunger and cylindrical shape of the carafe were necessary to make French press coffee. The other features confer no particular utility; rather, they form a distinctive design and look. Bodum presented evidence that French presses are often designed without these distinctive features, including handles, plungers, and knobs with different shapes; missing feet; and different external structures surrounding the carafe. The evidence at trial included other French presses Bodum and A Top sell with different appearances.
Despite this showing, A Top argued that Bodum had not established that the design features were not essential to use of the French press and that they did not affect the product’s cost or quality. The court disagreed and explained that A Top was confusing the everyday meaning of “function” with “functional” as a term of art in trade dress law. Bodum was not required to show that the Chambord’s handle, lid, feet, and other features had no utilitarian purpose. Bodum merely had to convince the jury that competitors would not face a significant competitive disadvantage if they were unable to manufacture a French press with the Chambord’s particular design. Thus, it was “the overall appearance of A Top’s SterlingPro, which has the same shaped handle, the same domed lid, the same shaped feet, the same rounded knob, and the same shaped metal frame as the Chambord” that ran afoul of Bodum’s trade dress protection.
At least before the Seventh Circuit, A Top did not dispute that it had copied the Chambord’s design. Instead, A Top argued it had “had a right to copy” the Chambord “right down to the last bolt” because Bodum’s product did not have a protectable trade dress. The multimillion dollar verdict is a strong reminder of the consequences for copying when a court finds design elements are not “functional” under trade dress law.
