mr friedman it please the court i'm frank friedman representing macare ladies been rotten born is with me at councils table this in peel involves trade dress protection and specifically the functionality of macare leads absorbent pads for purposes of today's discussion functionality means the product feature is essential to the use or purpose of the device or affects the cost or quality of the device put it another way it's functional if quote it's the reason the device works that's what the supreme court said in traffics and what this court reiterated describe the connection between trade dress protection and functionality ok a design or mark is merely ornamental or a spec it's appropriate for trade dress protection as a source identifier like the nike swoosh or the iconic coke  bottle if the contested feature actually makes the product perform better gives a competitive performance edge like the dual hand the dual springs in traffics then it's probably more appropriate for a p is frequently what's going to happen is you're claiming in fact that's what happened in traffic's is the advance that was made in in the patent there they said this is a performance enhancing advance the dual spring and so that was appropriate for patent that's also why they lost trade dress on the way back because they had admitted it was functional and utilitarian you can however get a trade dress as well as a patent the patent being for the process and the trade dress being for a mark that people identify still speak to trade dress with respect to functionality is that assume that it's nonfunctional want to trade it is assumes that is nonfunctional i'm sorry yes it is soon is that it does not make the product perform better it makes it a source identifier so we know who made it or what kind of product it is the patent advancement by macare ladies here with respect to its absorbent pads was a revolutionary process for binding fluff pole without using glue or binders and this is particularly good for an absorbent pad because glue and binders in the pad take up space but they don't absorb liquid so a glue this pad really is a major step forward and that process that clueless process is what was patented so make airlifts pads are bound by  the other side had to come up as we have a u s p t o patented trade dress and you know we had to prove to them that hey this is appropriate for a trade dress it's nonfunctional and we did that so the burden goes to the other side the only way that the shift comes back is if under traffics if the other side can prove strong evidence of functionality now it's got to be very strong in traffics it well it has to be very strong but then we do have if it shifted and we don't think it was obviously our our position is for summary judgment if everything is taken in best light to us that there's copious evidence they keep saying in their brief there's ample evidence that's not the standard the standard is there's no me you know there's no genuine issue of material fact in dispute here there's a lot in to spew but but the point is even under traffic we don't have i think it's called a heavy burden to come back but we have evidence so there is a big difference between this case and traffic's and our problems well i'll get to that now because i just want to make sure we if but it but at the very least that if you point being that there's an issue of fact at the very least correct exactly right and so let me talk about the facts first and then i would like to get to the traffic because this case is so different from traffics in a number of ways you're to synopsize you're arguing that functionality is generally as a question of fact correct and the tra is evidence of it yes so just to sort of clarify for a moment that the glue is binding process is patented here but the dart embossed pattern is ornamental it's a static and incidental and numerous witnesses including the other side's expert confirmed that myriad other designs are patterns would work just as well diamonds triangles puppy's that's j a fifteen fifty nine to sixty j sixteen sixty six so ultimately the question on appeal here is as to functionality is does the dot pattern not the glue is binding process but the dot pattern does it create a question of fact and it does let's look real briefly at just a sampling of the evidence because there is a lot of it first of all the designer of the pattern on dres schmidt said he picked the pattern quote because it look nice that's a j three one thousand to twenty the inventor of the patented bonding process alexander maximov testified that what comes out of the machine can can be modified so this is a quote so we can adjust the design it is not on the process j for seventeen as we already alluded to our expert and their expert confirmed that myriad other patterns could work just as well interchangeably triangles diamonds cartoon characters question that district court did not find it to be a part of a problem case if i'm remembering correctly correct well what you have in this case and i apologize i'll get right to i just want to give a brief set up for what you have is a number of people testifying that the dot design is not functional and that all these prototypes everything mr gall he said j two fifty two fifty three our experts said all the prototypes that are in appendix six they would work just as well as what you have basically the other side agree to you know we're asking for is is not that difficult if you have dots and you want to put cartoon characters on them if you want to put puppy dogs if you want to put ovals the key is and again you know this is a not common area of the law so i mention there's three but in response in response to requests what i'm getting at is the fact that the supreme court seemed to suggest that the availability irrefutable if you have something like you had in traffics which was these people had already got a patent for it they then said in patent cases this is a function this is an improvement this thing is in fact functional and then they decide to come in and say oh it really a trade dress they're out of luck then you don't look at other other alternative designs but otherwise you do and again here we said all the prototypes in an appendix six mr gauley said that now mr ghali has thirty years experience in the field and he's the president of a company and what what kimberly clark succeeded in doing was convincing the district court that it's just say so if the corporate executives of a company say something and that's what the judge said i'm dismissing the say so well there are some cases where there's conclusory say so but in this case notably kimberly clark didn't move to strike decker declaration they didn't challenge his knowledge and the reason why i probably is that their expert mr mango says ajay sixteen fifty seven and j sixteen sixty three sixty two that view that summary judgment will be appropriate in the context of a trade dress infringement action which seems to necessitate expert testimony can you imagine a situation that you would think would be appropriate for determination and summary judgment well you know some of the context and i do want to clarify where i started to go before i just want to clarify this is functionality which is step one and it was bifurcated at the request of camberley clarke there's also secondary meaning and likelihood of confusion so those still have to go and those could frequently be the subject of a summary don't functionality  occasionally i'm not saying it can't happen there's a case called bowman where there was yellow cable and for digging underground the court and the experts at people agreed you know what yellow cable is a lot better than dark cable you can't see when you're digging in the ground it's possible but it's rare and that's the thing about traffics traffics was a rare case because the other side had not gotten here's well before i do that i just want to i just wan through in case you know their argument is don't believe all the say so and we think you have to believe the say so because their expert admitted our people knew what they were talking about you also have the us p t o s findings you have our patent language which says that the advance is the process not the dots not not anything else in fact it says there are a variety of other designs there could be then you have their patent application for goodnights and that's you know j three ninety eight is one of the best pages in here that's their application for the for the dots and they say things like the point bonds can have various sizes and shape their gin generally circular in one suitable embodiment but it's understood the bond points can have any suitable size or shape and then they add it's understood that the point bonds can be arranged in any suitable pattern so there's there's a ton of evidence right there now i would like to briefly explain why this case is different from traffics because in traffics it was foreclosed even though this is an expert case and traffic's really wasn't because it was foreclosed just because of the the circumstance that they already had a patent for the same idea in  traffics the dual lock was the reason that the pad worked better here the dot pattern is not the reason and we cite all kinds of people who say the dot pattern is not the reason it works better mr gall he said that our experts said that more importantly it was not claimed to be the reason the pad worked better in the traffic's patent they claim that's why it worked here we didn't claim that we claim the process the glue this is what makes it work better you could have a puppy dogs or hearts or shamrocks or whatever you want on the pads it would be the same there's nothing special about a dot you have in traffics there wasn't a us p t o registration we have one going to the burden shifting and in traffics there was no rebuttal evidence so they were foreclosed because they had argued it was an improvement we have tons of evidence to suggest rebuttal even if they were to prevail which which they can't but most perhaps importantly here there's no evidence that the pattern works better and they tried i would be remiss if i didn't bring up the fact that and it's at the back of our opening brief at pages sixty three and seven sixty three of the appendix they argued at the beginning of the case that the dots were stronger and they did that based on a one day testing b thousand year old in turn who was left unsupervised and then they actually tried to run with that so as far as credibility goes for purposes of summary judgment on testing that's another fact that is you know devastating for them i think so we think that the circuit that the district court just failed to consider the evidence in best light to us we think there's abundant evidence and we should have at least gotten to a jury on functionality we still have to go on the remaining two issues of secondary meaning and likelihood of confusion thank you very much evidence that you've just heard rehearsed to you and what it primarily consists of is the argument the assertion that because some of the care leads executives and the care leads expert testified that th is not functional that therefore summary judgment should not have been granted as it is but if you look at the press registration isn't that considered nonfunctional evidence of non function under the law with the trade dress registration  does it creates a presumption of illiteracy that then under this circuit's precedent in retail services shifts the burden of production of evidence to us kimberly clark and once we present strong evidence of functionality then the burden of production falls back upon macare lids and the ultimate burden of proof were remains with macare lades and that's as any presumption would work under federal rule of evidence three zero one as this court said in retail services certain weighing of the evidence weight of conflict evidence to get to the conclusion that no it did not what it had to do as it did here is to look at the whole record and determine says there was not a genuine issue of material fact but there was not and that's were i'm going to address for example the assertion that mcnair leads executives and macare leads expert testified that the ro design was not functional if you look at the actual testimony itself there's no there there there just conclusory assertions there's no data there's no testing there's no comparative evaluations it's simply their conclusion assertions it is not enough to a stand summary judgment to simply create conclusion the assertions any more than a party could simply stand on its denials in an pattern could be used to the same performance level as the embossing pattern of the dots what he said is that you could use any embossing pattern to actually fuse the binding together use puppy dogs to actually pattern can't be in the same dimensions so i could you make it just a little space i'm a little further put it in a different place actually no your honor that's what to care later expert testified that and if you if there's a few areas where he says that you mean that the good because it wouldn't be functional or you couldn't because the registration doesn't allow you to do it you couldn't because it would change the performance of the product if you changed the design if you use something other than the rounded circular rows of dots the product would not be as absorbent it wouldn't be as strong or weak or correct that's exactly correct and that's the testimony of  expert he testified in fact that you needed a rounded shape in order for the product to work well that if you designed if you used the design other than something with a rounded shape something with a sharp corner to it such as  hexagon or a rectangle that the sharpness of that shape would cause the pope fibers that are used to manufacture macare leaves product to be damaged thereby causing the product to weaken and lose its integrity and in fact here's a direct quote from the rx per he said you quote pretty much need to round the corners it's kind of circular to me you pretty much need to round the corners on whatever shape bond you do to keep from damaging the fibers that's a joint appendix fourteen fifty two and i want to go back to a very critical point but i think you raised judge childs about what's really the purpose of the functionality doctrine and it goes to the issue of patent law it's patents that are supposed to provide limited protection for a limited period of time if one can use a trademark to protect a functional device which is supposed to be protected by patent law one could obtain a perpetual monopoly or what is a functional device when the patent laws say you're only supposed to get a limited protection that's what the supreme court said in quality x when it said if a product's functional features could be used as trademarks a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended for ever that's exactly the problem we face here we have a functional trademark that one is trying to use the trademarks to extend and attain a perpetual monopoly over and the macare lades contends today that its row of dots design was purely decorative for ornamental the record evidence overwhelmingly demonstrates that it was a functional device for example when macare leads promoted its device its row of dots designed it t as being the product of german engineering that whose by the way unique bonding pattern that's a quote unique bonding pattern provides increased surface area for excellent acquisition and those can be found joined appendix to await joint appendix one eighty four what they're saying there is that the rows of dots design makes their product more absorbent or rather critical feature for a product absorbent pads that it believes to be the utilitarian functional features of the device one of its claim is specifically for a dot shaped embossed mint area and that can be found at joint appendix it stretches more essentially and what macare leads admitted in an interactive tory response which can be found a joint appendix three sixty is that a product with greater a long geisha is important because one with less stretch has a greater tendency to rip which requires more care more time more cost when loading it onto a converting machine one has to then go back to is the very test of traffic's which says that a trade dress for a trademark is functional if it is either essential to the use or purpose of the article or if it affects the cost or quality of that article i heard my colleague say that the test is whether the device works that's not what the supreme court said in traffics it said it's whether it's essential to the use or purpose or if it affects the cost or quality and in fact in traffics the supreme court was clear that the sixth circuit when it had denied summary judgment there it had reversed the grant of summary judgment that such a standard of competitive t or a sense yell it was not necessary to show functionality because the point is that anything that affects cost or quality makes it functional and therefore it falls within the scope of patent law not trademark law that's what makes the test whether it effects cost or quality and let me talk if i may a little bit about  lead to set forth in a black quote an excerpt from dr murray's testimony it's edited and it the sentence is pad performance in pad performance has been bracketed indicating that it a substitute and it is a language pad performance is not dependent on the binding pattern being a round circular point but if you go back and look at the testimony of what dr murray said and examined what that bracketed language replaced here's what he really said i want to be clear and i'm quoting i want to be clear subject to those conditions of fiber length matching the spacing  spacing of the elements and sufficient area to capture some of the fibers and sufficient pressure to form the fusion bonds it's not dependent on a being around circular point what  out what it replaced with its own bracketed language is precisely the condition that makes the row of dots design functional what dr murray is saying here is that the sh leads product is dictated by certain engineering considerations including spacing shaping and size it's those considerations everything is subject to those considerations and those conditions it's what makes macare leads row of dots designed functional and if i may turn to the alternative designs issues in this case leads design is not functional but other than that conclusion assertion macare leads provides no data to show that those other alternative designs would in fact work as well one cannot create a genuine issue of material fact one cannot survive summary judgment by merely putting forth supposition speculation and that's what this is speculation does not create a genuine issue of material fact but even more fundamentally than that we're guarded less of whether there may be and i emphasize patterns could be what could what the patent says is that other design shapes could be used to fused the the fibers together but it doesn't say is that other designs would work equally as well in terms of absorbency strength and manufacturing capability you could use those to fuse it together but that doesn't mean that everything is going to work as well as going to be as absorbent or strong or anything else doesn't say that and even if it did the point is that even if there were maybe more than one solution to an engineering problem that does not take away from the fact that the row of dots design here is also an engineering functional solution to that same problem what this means is that all of the designs are functional not that none of them is and that's why the supreme court in the traffic's decision once it determined that the row that they designed it issue there was functional determined if there was no need to engage in any further assessment of alternative designs because the fact is that once one finds something is functional it's no excuse to say that there are other alternative designs out there and here the evidence is overwhelming that the role of doubts design that is in fact functional we have the promotional activities of macare late we have their own pads we have their own testing data we have the testimony of their own experts that all of this is functional what this case comes down to and what it really means is this and is this record i think properly recognized leads product looks the way it does because it makes it a better absorbent pad not in order to identify who made that's what trademark is supposed to do it's supposed to tell you who oath so it's evidence and we've got to look at that evidence in the light most favorable to the sun and ultimately what happens even if we decide ok well there's some evidence their testimony is evidence the question is does that testimony create a genuine issue of material fact when viewed in the light most favorable to them does it create an issue that's correct and i turn to the cell attacks and the liberty law pretty decisions which says that a party opposing a motion for summary judgment must come forth with specific facts to demonstrate that there is a genuine issue of material fact a done many other things to try to show that it was functional times available are alternative designs not that we're aware of your honor because there's been no data to show that alternative designs actually work the only evidence they essentially have is the assertions of their executives and their experts and i turned to the six circuits recently dissent recent decision in grown felt where they say on this precise issue about whether putting an axe putting a witness on the stand saying it's not  survive summary judgment there wasn't a summary judgment case but it was a case in which the court of appeals reversed a trial court allowing it to go to a trial saying it should have never gotten that far and what would work equally as well in terms of absorbency strength in manufacturing capabilities you could i mean it's limitless what number of shapes you could use to actually cause something to be fused it's not limitless and that's why the engineering considerations come into play here as to which shape actually causes the absorbency the strength and the manufacturing capabilities of the product to work and to get back to the point about the the assertions of executives constituting or potentially creating a genuine issue of material fact we think that what to make of the fact that there seems to be relatively little testing the way this there's really very little testing as to whether or not the dots could be replaced with a puppy dog or whatever without affecting  no no other feature i see my five seconds i'd like to take time over that to answer your question if i may and then perhaps turn back to judge when for one final comment which is there was a lack of testing in this case however there is an abundance of evidence that the row of dots design did provide functional characteristics to make your lead straight dress designed the promotional activities the pattern some cells there was testing data for the row of dots designed showing that it provided greater along a stretch ability and their own expert testified that if you change the shape if you made it less than rounded that would make it damage the fibers of the product and cause the product not to perform but there wasn't testing data on this and what you care leads refused to provide was that somehow or another the other designs that they hypothesize like diamonds were pumping dogs or whatever else you might hypothesize that those would actually work they never provided that data they simply say they'd work just as well it's speculation and that's why the speculation doesn't create a genuine issue of material fact and if i if i may one just one minute i do want to talk to you judge when about that point about putting witnesses because i do think the six circuit had it right when they said seven thirty and third at five o seven the bare act of putting a manager on the stand to claim that none functionality to claim that an article is nonfunctional is not sufficient to create a triable issue fact if that were the law and the plaintiff could get to a jury trial by simply mouthing the legal conclusion that its product design is nonfunctional and that's the issue that was faced here by the district court that's what he got right you have a few minutes for brought up come back with testimony that talks about the role that the pattern planes the space the spacing of the dots correct and at some and what they say yes having responded you then had to you then had to meet their with something other than assertion so what what specifically are you testing from us there was no testing from then except for credibly botched non credible function testing from one thousand year old so that cuts against them we did have testing with another the harsher the lines and our experts said that that was you know it was within the margin of error it was no different we have no interest that was there is a big discount what i guess i would tell the court is at pages eight to twelve we were not trying to hide the ball if you don't have any bonding if you don't have any bonding at all let's go to the questions of source sure it's true for in the harsher case which was the t one twenty six i think it's it's not do that let's stay with the facts of this case this is it is this case it is it is the other we had two different prototypes at first and then we got rid of one because people the other that one there was testing and it was within they were the same within reasonable areas you know it was within one percent as to what as to a tensile strength absorption  close ok and they also say they're all the prototypes and there's a case called thomas and betts that says you can have hypothetical prototypes we don't have to come forward with all kinds of prototypes what i want to make clear at pages eight to twelve of our brief and reply we weren't trying to hide the ball it's obvious that if you don't have any bonding it's not going to work and if you do have bonding i'm not what i'm trying to get to assuming for purposes of my question there evidence has been put forward to show that the row of dots affects how the product how well the product  do you point to as needing what becomes your responsibility at that point to come up with something that meets a contradicts that there are a lot of them ok doesn't need to be round  it well they're saying that the dots do it it's not the dots and what does what i'm asking is not argument but what facts did you put forward what testing ok absorption and it was not it was different with the long but we have experts i mean if you read the gali declaration and others the point is they have got us hung up on testing which isn't even our burden there they're trying to get us to say you're not i'm sorry for my benefit in understanding let me let me say this in the context of summary judgment so just for purposes a request for purposes of your question we came forward with evidence from gawley from schmidt from our expert that these dots weren't any different from any other design within the parameters of course it's within the parameters if you had no dots it would work around matters of what and the parameters are on pages eight to twelve are replied with spacing on shape on point size and there are a lot of sites i could you can place one to accomplish the pads work the pads not not falling apart and the pads  you know the they have to not fall apart and they have to be able to absorb stuff but that's in general as far as once you meet those requirements and those requirements are set out between pages eight and twelve of our of our brief any pattern will work and that's that's what all of our people said and that's what the prototype said and i'd like to point out in our patent they're not dots the hexagonal i realize could i just say one other thing their expert mango talked about triangles and squares being perfectly fine it sixteen sixty eight to six it's a matter of chamfering it doesn't have to be round