(7th Cir. 1999). Trade dress includes product design. Wal-Mart Stores, Inc. v. Samara Bros. Inc.,
529 U.S. 205, 209-10 (2000). However, “[t]rade dress protection only extends to the role of such
features as signifier of source; when competitors are barred from duplicating features whose value
to consumers is intrinsic and not exclusively as a signifier of source, competition is unduly
hindered.” T&B J, 65 F.3d at 657. In short, a court considering a trade dress infringement action
based on product configuration must consider “whether a product feature’s primary significance to
consumers is as an identifier of source or as an element which contributes to the inherent appeal of
the product.” Jd, at 658.

To establish trade dress infringement, Clarin must prove: (1) its trade dress is primarily non-
functional; (2) its trade dress has acquired secondary meaning; and (3) Specialized Seating’s trade
dress is confusingly similar, engendering a likelihood of confusion in the marketplace. Thomas &
Betts Corp. v. Panduit Corp., 138 F.3d 277, 291 (7th Cir. 1998) (“T&B II"); 15 U.S.C. §
1125(a)(3)(“person who asserts trade dress protection has the burden of proving the matter sought
to be protected is not functional”). Defendants claim Clarin cannot prove the elements of trade dress
infringement. The parties agree that Clarin’s state law claims hinge on the success of its federal law
claim. Pl. Motion at 2; Def. Motion at 14.

A. Functionality

Defendants argue Clarin cannot establish the product features of the B-back chair are non-
functional because they were included in Clarin’s expired patents. Clarin responds that functionality
may not be shown from evidence that a product configuration was disclosed, but not claimed, in an
expired patent. Clarin’s argument lacks merit.

The Supreme Court recently addressed the effect of an expired patent on a claim of trade
dress infringement:

A prior patent, we conclude, has vital significance in resolving the trade dress claim.

A utility patent is strong evidence that the features therein claimed are functional.

If trade dress protection is sought for those features the strong evidence of
functionality based on the previous patent adds great weight to the statutory



It is true that unspecified statements by unknown declarants are inadmissible hearsay. See,
e.g., Smith Fiberglass Products, Inc. v. Ameron, Inc., 7 F.3d 1327, 1330-31 (7th Cir. 1993)(actual
confusion evidence which lacks “an exact quote or even the identity of the person making the
statement” is inadmissible hearsay). However, Clarin provides quotes from three known declarants
showing actual confusion. Clarin’s employee may testify to the declarants’ statements under the
state of mind exception to the hearsay rule, subject to an appropriate limiting instruction. Fed. R.
Evid. 803(3). Defendant may counter Clarin’s evidence by showing that they have not received any
complaints of customer confusion. Whether three instances of confusion over a five month period
is sufficient to demonstrate a likelihood of confusion is an issue of fact for trial.
4, Remaining Factors

The evidence is split between the parties on the remaining factors. Specifically, Clarin
concedes the degree of care used by its consumers weighs in favor of defendants by failing to address
the matter in any of its briefs, but Clarin raises a genuine issue of fact as to area and manner of
concurrent use and the strength of its trade dress. The parties primarily sell their X-frame folding
chairs in the auditorium, arena and convention center market. Indeed, defendants have sold their
chairs to former Clarin customers. The strength of Clarin’s trade dress is demonstrated by its
prolonged continuous use and heavy promotion of its B-back chair and its predecessor, the A-back
chair. See AM General Corp. v. DaimlerCrysler Corp., 311 F.3d 796, 828 (7th Cir. 2002). Based
on this record, summary judgment must be denied.

CONCLUSION
Genuine issue of material facts preclude summary judgment on Clarin’s trade dress

infringement claims. This case must proceed to trial.

April 8, 2003 ENTER:

Wrpurre B Qonben

SuzanneB. Conion
United States District Judge



identify the source of the product rather than the product itself.” Qualitex Co. v. Jacobson Products
Co., 514 U.S. 159, 163 (1995). In determining whether secondary meaning has been established,
the court may consider “direct consumer testimony, consumer surveys, length and manner of use,
amount and manner of advertising, volume of sales, place in the market and proof of intentional
copying.” Spraying Systems Co. v. Delavan, Inc., 975 F.2d 387, 393 (7th Cir. 1992).

Clarin’s first claims its advertising establishes secondary meaning. “[A]dvertising which
encourages consumers to identify the claimed trade dress with the particular producer is some
evidence of secondary meaning.” T&B I, 138 F.3d.at 292, citing T&B I, 65 F.3d at 662. Since
1994, Clarin has spent in excess of $1 million in advertising and marketing expenses in promoting
its entire chair line, including the B-back chair. Clarin offers evidence that it uses an illustration of
the B-back chair in advertising, shipping labels, hangtags, business cards, company invoices,
purchase orders, letterhead and signage. Pl. Facts at § 26. As defendants point out, Clarin’s
advertising does not necessarily indicate that consumers identify the B-back chair with Clarin. See
Spraying Systems, 975 F.2d at 393 (“evidence of sales, advertising and use is entirely circumstantial,
and courts have noted that this type of evidence alone is often insufficient to establish secondary
meaning”). Even so, the issue of whether Clarin’s advertising convinced consumers is a question
of fact that cannot be resolved on summary judgment. T&B, 138 F.3d at 292.

Moreover, Clarin offers survey and affidavit evidence showing that consumers associate the
B-back chair with Clarin. In response, defendants contend:

[i]t is not enough that the consumers associate the form of the product with a

particular producer. Such an association is inevitable when the first comer is the

exclusive producer under a patent. Consumers must also care that the product comes

from a particular producer (though they need not be able to identify him) and must

desire the product with the particular feature because it signifies that producer.

T&B I, 65 F.3d at 658-59. However, the Seventh Circuit later clarified:

when a trade dress sought to be protected was formerly contained in a patent,

evidence establishing secondary meaning must also show that any connection

between the trade dress of the product and its producer does not primarily stem from
the expired patent. This ensures that there is a true connection between the producer



presumption that features are deemed functional until proved otherwise by the party

seeking trade dress protection. Where the expired patent claimed the features in

question, one who seeks to establish trade dress protection must carry the heavy

burden of showing that the feature is not functional, for instance by showing that it

is merely an ornamental, incidental, or arbitrary aspect of the device.
TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29-30 (2001). In deciding
functionality, the Supreme Court specifically considered the patent’s history, including applications,
specifications and statements made during the course of prosecution. Jd. at 31-32. Indeed, the
Supreme Court previously has found:

By the force of the patent laws not only is the invention of a patent dedicated to the

public upon its expiration, but the public thereby becomes entitled to share in the

good will which the patentee has built up in the patented article or product through

the enjoyment of his patent monopoly. Hence we have held that the patentee may not

exclude the public from participating in that good will or secure, to any extent, a

continuation of his monopoly by resorting to the trademark law and registering as a

trademark any particular descriptive matter appearing in the specifications, drawings

or claims of the expired patent, whether or not such matter describes essential

elements of the invention or claims.
Scott Paper Co. v. Marcalus Co., 326 U.S. 249, 256 (1945)(emphasis added). Clarin does not
contend that the B-back chair configuration is undisclosed in the specifications or drawings of the
expired patents. Therefore, the expired patents provide strong evidence that the features contained
in the patents are functional.

Nevertheless, Clarin may counter this presumption with evidence of non-functionality.
Clarin presents proposed expert testimony that the B-back chair configuration is not functional.
Whether Clarin’s proposed expert testimony can overcome the strong presumption of functionality
established by the expired patents is an issue of fact to be resolved at trial. See T&B I, 138 F.3d at
300 (“the finder of fact should decide, in light of the other evidence presented, how much weight the
... patent should receive”).
B. Secondary Meaning

Defendants next argue that Clarin cannot establish secondary meaning. A product acquires

secondary meaning when “in the minds of the public, the primary significance of [the dress] is to



the trade dresses; (2) area and manner of concurrent use; (3) the degree of care likely to be used by
consumers; (4) the strength of plaintiff's trade dress; (5) actual confusion; and (6) intent of the
defendant to pass off its product as that of the plaintiff. T&B IJ, 138 F.3d at 295. No single factor
is dispositive and the court may assign varying weights to each of the factors depending on the facts
presented. CAE Inc. v. Clean Air Engineering, Inc., 267 F.3d 660, 678 (7th Cir. 2001). In many
cases, the similarity of dress, the defendant’s intent and evidence of actual confusion are of particular
importance. Jd. Likelihood of confusion is a question of fact unless the evidence is “so one-sided
that there can be no doubt about how the question should be answered.” Packman v. Chicago
Tribune Co., 267 F.3d 628, 643 (7th Cir. 2001), quoting Door Sys., Inc. v. Pro-Line Door Sys., Inc.,
83 F.3d 169, 171 (7th Cir. 1996). Depending on the weight given each factor, a reasonable factfinder
could decide in favor of either party on this issue.
1. Similarity of Dress

Defendants concede its X-frame chair is substantially similar to Clarin’s B-back chair.
Accordingly, this factor weighs in favor of likelihood of confusion.
2. Defendant’s Intent

Clarin fails to offer any evidence that defendants intend to pass off its products as Clarin’s.
To the contrary, defendants’ X-frame chairs are clearly labeled as Specialized Seating products.
Defendants’ advertising identifies Specialized Seating as the manufacturer. This factor weighs
against likelihood of confusion.
3. Actual Confusion

One instance of actual confusion has been deemed sufficient to weigh in favor of finding a
likelihood of confusion. CAE, 267 F.3d at 686, citing Wesley-Jessen Div. of Schering Corp. v.
Bausch & Lomb, Inc., 698 F.2d 862, 867 (7th Cir. 1983). To demonstrate actual confusion, Clarin
relies on customers’ statements to one of its employees. In response, defendants argue that the

customers’ statements are inadmissible hearsay.



Minute Onder Form (06/97)

United States District Court, Northern District of Illinois

Nese | SweameB. Conlon | "ne
CASE NUMBER 02 C 5000 DATE 4/8/2003
CASE GREENWICH INDUSTRIES, d/b/a CLARIN vs. SPECIALIZED SEATING, et al.
TITLE
[In the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented.)
DOCKET ENTRY:
(1) QO Filed motion of [ use listing in “Motion” box above.]
(2) Oo Brief in support of motion due__.
@) o Answer brief to motion due. . Reply to answer briefdue__.
(4) a Ruling/Hearingon set fora
(5) Oo Status hearing[held/continued to] [set for/re-set for] on setfor at
(©) Oo Pretrial conference{held/continued to] [set for/re-set for]on__setfor_ sat.
(7) oO Trial[set for/re-set for]on___at
(8) a [Bench/Jury trial] [Hearing] held/continuedto__at
(9) Oo This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to}

COFRCP4(m) CLocal Rule 41.1 CFRCP41(a\(1) (FRCP41(a\(2).

ao) [Other docket entry] The parties’ motions for summary judgment [27-1][29-1] are denied. The
joint final pretrial order and agreed pattern jury instructions shall be presented on April 30, 2003 at 9:00
a.m. Plaintiff's draft shall be submitted to defendants by April 22, 2003. Trial is set on May 19, 2003
at 9:00 am. ENTER MEMORANDUM OPINION AND ORDER.
A, Crile

(1) [For further detail see order attached to the original minute order.]
No notices required, advised in open court.

No notices required. or

o | Notices mailed by judge’s staff.
Notified counsel by telephone. APR 0, 03

Docketing to mail notices.

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Copy to judge/magistrate judge.
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courtroom 60:4 bd 8- Udy eu ars sled potion
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and the product in the minds of consumers, and avoids any problem regarding

whether secondary meaning can develop during a period when competition is stifled

by some other type of protection.

T&B II, 138 F.3d at 294. In T&B I, the plaintiff raised an issue of fact as to the existence of
secondary meaning independent of the expired patents by presenting evidence that it manufactured
its product for over ten years after its patent expired and before any other manufacturer began
producing a similar product. Jd.

Clarin raises an issue of fact by presenting evidence that it manufactured its product for a
significant period of time without competition. Although the record does not reveal the exact date
Clarin’s original patent expired, it is safe to say Clarin manufactured its folding chairs for more than
ten years after its last patent expired without competition. Clarin manufactured its B-back chair for
at least seven years before Hergott’s former company, AOH International, entered the X-frame
folding chair market. “Under the Lanham Act, five years’ use weighs strongly in favor of secondary
meaning.” T&B If, 138 F.3d at 295.

Defendants’ primary reliance on Sinko y. Snow-Craggs Corp., 105 F.2d 450, 453 (7th Cir.
1939), is misplaced. The Seventh Circuit in T&B II specifically distinguished Sinko based on the
timing of the defendant’s entry into the market. In Sinko, the defendant entered the market less than
one year after the plaintiff began manufacturing the product at issue. T&B IT, 138 F.3d at 293, citing
Sinko, 105 F.2d at 453. In contrast, the defendant in T&B I entered the market 30 years after the
product at issue was first introduced and ten years after the patent on the product expired. Id. Like
the defendants in 7&B IJ, defendants entered the market over 75 years after Clarin introduced its A-
back chair and at least 15 years after Clarin introduced its B-back chair. Asa result, Clarin raises
a genuine issue of material fact as to secondary meaning.

Cc Likelihood of Confusion
Finally, defendants claim Clarin cannot establish a likelihood of confusion, In determining

the likelihood of confusion, the court may consider a number of factors, including: (1) similarity of


surveys, 55.9% indicated that they primarily associate the chair shown in the pictures with one
manufacturer and, of those, 79.6% named Clarin as the manufacturer. Out of the 285 recipients who
were able to name a single manufacturer, 266 named Clarin while only one named Specialized
Seating.

In addition, Clarin retained the president of Livingston Products, Inc., Troy W. Livingston,
to consider whether the configuration of Clarin’s B-back chair is dictated by functional
considerations. In Livingston’s opinion, the configuration of Clarin’s B-back chair is not dictated
by functional considerations.

DISCUSSION
I Standard of Review

On cross-motions for summary judgment, each movant must individually satisfy the
requirements of Rule 56. Equal Employment Opportunity Commission v. Admiral Maintenance
Service, L.P., No. 97 C 2034, 1998 WL 102748, at * 6 (N.D. Ill. Feb. 26, 1998). Summary judgment
is appropriate when the moving papers and affidavits show there is no genuine issue of material fact
and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56 (c); Celotex Corp. v.
Catrett, 477 U.S. 317, 322 (1986). Once a moving party has met its burden, the non-moving party
must go beyond the pleadings and set forth specific facts showing there is a genuine issue for trial.
Fed. R. Civ. P. 56 (e); Silk v. City of Chicago, 194 F.3d 788, 798 (7th Cir. 1999). The court
considers the record as a whole and draws all reasonable inferences in the light most favorable to the
party opposing the motion. Bay v. Cassens Transport Co., 212 F.3d 969, 972 (7th Cir. 2000). A
genuine issue of material fact exists when “the evidence is such that a reasonable jury could retum
a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

Il. Trade Dress

Trade dress is “the total image of a product,” including size, shape, color, textures, graphics

and particular sales techniques. Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 633, 636



Clarin’s current product line includes an “A-back” metal folding chair that has a scalloped
or curved back and a “B-back” metal folding chair that has a tapered back. Both chairs have an X-
frame design with the front and back legs crossed just below the seat. Clarin began selling its A-
back chair in approximately 1925 and its B-back chair in approximately 1987. Since 1993, Clarin’s
B-back chair has generated revenues in excess of $14 million. Sales of the B-back chair account for
approximately 20% of Clarin’s total sales over the last ten years. Since 1994, Clarin has spent in
excess of $1 million in advertising and marketing expenses in promoting its entire chair line,
including the B-back chair. Clarin has filed an application for federal trademark registration of the
B-back chair.

Specialized Seating sells seating products. Hergott is the president, owner and sole corporate
officer of Specialized Seating. Hergott is responsible for making all decisions for Specialized
Seating. Sanderfur works for Specialized Seating as a sales representative.

In 2002, Specialized Seating began selling its X-frame chair. Hergott admits that the
appearance of Specialized Seating’s X-frame chair is substantially similar to Clarin’s B-back chair.
Specialized Seating generally offers its X-frame chair at a lower price than Clarin prices its B-back
chair. Specialized Seating sells its X-frame chair to customers who previously bought Clarin folding
chairs.

As part of this litigation, Clarin commissioned the chairman of the marketing department of
Southern Methodist University, Daniel Howard, Ph.D., to survey the primary market in which Clarin
and Specialized Seating sell their competing chairs. Dr. Howard surveyed 1,950 U.S. members of
the trade association for the parties’ primary market by sending them a cover letter, a one page
survey containing six questions and three pictures, showing front, side and angle views of Clarin’s
B-back chair, After screening out recipients who were unfamiliar with the parties’ products, the
survey asked recipients whether they primarily associate the design of the chair shown in the pictures

with: (1) no manufacturer; (2) one manufacturer; or (3) more than one manufacturer. In the returned


IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
GREENWICH INDUSTRIES, L.P. d/b/a )
CLARIN, )
} No. 02 € 5000
Plaintiff, )
) Suzanne B. Conlon, Judge
v. )
)
SPECIALIZED SEATING, INC., ALFRED )
HERGOTT and DON SANDERFUR, ) Ea —
) OE fa Pm,
Defendants. } APR 9g a)
9 003
MEMO UM OPINION ORDER

Greenwich Industries, L.P. d/b/a Clarin (“Clarin”) sues Specialized Seating, Inc.
(“Specialized Seating”), Alfred Hergott (“Hergott”) and Don Sanderfur (“Sanderfur”) (collectively,
“defendants”) for trade dress infringement in violation of the Lanham Act, 15 U.S.C. § 1125(a)
(Count }), Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505/2 (Count
IH) and Uniform Deceptive Trade Practices Act, 815 ILCS 510/2 (Count IV) as well as common law
unfair competition (Count II). The parties move for summary judgment pursuant to Fed. R. Civ. P.
56.

BACKGROUND

All facts are undisputed unless otherwise noted. Clarin manufactures and sells seating
systems and products, including metal folding chairs. In 1926, Clarin was issued U.S. Patent No.
1,600,248 for a folding chair.’ In 1934, Clarin was issued U.S. Patent No. 1,943,058 for a folding
chair that collapsed automatically. In 1964, Clarin was issued U.S. Patent No. 3,127,218 for folding
chairs fastened together in groups. The patents have expired.

! Clarin’s objections to the admissibility of its patents are unfounded. See Thomas & Betts Corp. v. Panduit
Corp., 65 F.3d 654, 664 n. 12 (7th Cir. 1995) (“7&BI")(court may take judicial notice of patent in a trade dress
infringement case).