Secalt S.A. v. Wuxi Shenxi Construction MacHinery Co.

Although “[protection of trade dress, no less than of trademarks, serves the [Lanham] Act’s purpose,” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774 , 112 S.Ct. 2753 , 120 L.Ed.2d 615 (1992), that protection does not extend to designs that are functional. We consider here whether a traction hoist manufactured by Secalt, S.A., and Tractel, Inc. (collectively “Tractel”) qualifies for trade dress protection. We agree with the district court that Tractel did not meet its burden to establish nonfunctionality and affirm the grant of summary judgment in favor of Jiangsu Shenxi Construction Machinery Co. (“Jiangsu”). We affirm the district court’s award of attorney’s fees to Jiangsu upon finding that this is an “exceptional” case meriting fees. While the line delineating “exceptional” cases under the Lanham Act may be murky, this action falls squarely within the realm of exceptional cases contemplated by the Act.

FACTUAL AND PROCEDURAL BACKGROUND

Tractel manufactures and sells the Tirak traction hoist, which is used typically for commercial building projects and external maintenance, like window washing. These devices are commonly affixed to suspended platforms to…