Moldex-Metric

dissenting:

The majority faults the district court for not adhering to the functionality doctrine established by Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 , 115 S.Ct. 1300 , 131 L.Ed.2d 248 (1995). But as the district court recognized, Qualitex is not the last word on functionality: Our circuit has placed its own gloss on Qualitex, which the district court was required to follow. See Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062 , 1072 & n. 8 (9th Cir.2006). The district court applied our precedent correctly, so I would affirm.

The district court started by quoting our decision in Disc Golf Association v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir.1998), which explains that a “product feature is functional ‘if it is essential to the use or purpose of the article.’ ” Id. at 1006 (quoting Qualitex, 514 U.S. at 165 , 115 S.Ct.1300). That is the very standard the majority suggests the district court “overlooked.” The district court then correctly recognized that our precedent renders a product feature “essential” only if an examination of four factors so designates it. See Aur-Tomotive Gold, 457 F.3d at 1072 & n. 8; Talking Rain Beverage Co. v.…

MEMORANDUM *

Moldex-Metric, Inc. appeals the district court’s grant of summary judgment in its trademark infringement action against McKeon Products, Inc. We review grants of summary judgment de novo. Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 630 (9th Cir.2005). Having jurisdiction under 28 U.S.C. § 1291 , we reverse and remand.

In Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 , 115 S.Ct. 1300 , 131 L.Ed.2d 248 (1995), the Supreme Court addressed when a color could receive trademark protection (in that case, the green-gold color on dry cleaning press pads). The Court held that even if a color rendered some functionality for the product, the color could still receive trademark protection. Id. at 166 , 115 S.Ct. 1300 . A key inquiry under Qualitex 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, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.” Id. at 165 , 115 S.Ct. 1300 (internal quotation marks omitted). The Court held that the green-gold color on the dry cleaning press pads could receive trademark protection despite…

NOT FOR PUBLICATION

UNITED STATES COURT OF APPEALS FILED

FOR THE NINTH CIRCUIT MAR 06 2015

MOLLY C. DWYER, CLERK

U.S. COURT OF APPEALS

MOLDEX-METRIC, INC., a California No. 13-55446 corporation, D.C. No. 2:11-cv-01742-GHK- Plaintiff - Appellant, AGR

v.

MEMORANDUM*

MCKEON PRODUCTS, INC., a Michigan Corporation,

Defendant - Appellee.

Appeal from the United States District Court for the Central District of California George H. King, Chief District Judge, Presiding

Argued and Submitted February 11, 2015 Pasadena, California

Before: CALLAHAN, WATFORD, and OWENS, Circuit Judges.

Moldex-Metric, Inc. appeals the district court’s grant of summary judgment

in its trademark infringement action against McKeon Products, Inc. We review

grants of summary judgment de novo. Surfvivor Media, Inc. v. Survivor Prods.,

* This disposition is not appropriate for publication and is not precedent except as provided by 9th Cir. R. 36-3. 406 F.3d 625, 630 (9th Cir. 2005). Having jurisdiction under 28 U.S.C. § 1291, we

reverse and remand.

In Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995),…