In the

United States Court of Appeals

For the Seventh Circuit

Nos. 07-1435 & 10-2670

SPECIALIZED SEATING, INC.,

Plaintiff/Counterclaim Defendant-Appellee,

v.

GREENWICH INDUSTRIES, L.P., doing business as Clarin,

Defendant/Counterclaim Plaintiff-Appellant.

Appeals from the United States District Court

for the Northern District of Illinois, Eastern Division.

No. 05 C 1197—James F. Holderman, Chief Judge.

ARGUED MAY 24, 2010—DECIDED AUGUST 11, 2010

Before EASTERBROOK, Chief Judge, and POSNER and

EVANS, Circuit Judges.

EASTERBROOK, Chief Judge. For more than 80 years, Clarin

has been making x-frame folding chairs. In 1999 it applied

for registration of one particular x-frame design as a

trademark. The Patent and Trademark Office issued

Registration No. 2,803,875 in January 2004. This is the

registered mark:
2 Nos. 07-1435 & 10-2670

The principal register describes it thus: “a configuration

of a folding chair containing an X-frame profile, a flat

channel flanked on each side by rolled edges around the

perimeter of the chair, two cross bars with a flat channel

and rolled edges at the back bottom of the chair, one cross

bar with a flat channel and rolled edges on the front

bottom, protruding feet, and a back support, the outer

sides of which slant inward.”

Clarin was acquired by Greenwich Industries in 1993.

We refer to Greenwich Industries as Clarin, the name

under which it does business. Harvey Hergott, Clarin’s

general manager at the time of the acquisition, left

later that year and, after honoring a five-year restrictive

covenant, joined Specialized Seating, Inc., in 2001, two

years after his son Alfred had founded that business.

Specialized competes in Clarin’s principal market: the
Nos. 07-1435 & 10-2670 3

sale of folding chairs to auditoriums, sports stadiums,

convention centers, and other places that need to

deploy lots of seats, which owners want to be as light

and compact as possible for storage when not in use.

Specialized sells a folding chair that to an untrained eye

looks like Clarin’s trademark chair. There are differences

in construction and detail; the chair is not a slavish

knockoff, but the basic design tracks the registered

mark. That similarity had led to this litigation in

which Specialized sought a declaratory judgment that

its design does not violate Clarin’s rights under the

Lanham Act, 15 U.S.C. §§ 1051–1129, and Clarin counterclaimed for an injunction.

Clarin has been using the mark long enough for its

registration to be “incontestable” under 15 U.S.C. §1065.

The word “incontestable” is misleading, however, because an incontestable mark may be contested, and defeated, on many grounds. The principal effect of incontestable status is to relieve the trademark proprietor of

any need to show “secondary meaning”—in other words,

whether consumers associate a mark with a particular

producer is not relevant when the mark is incontestable.

Clarin’s customers buy in bulk and are sophisticated; it

is exceedingly unlikely that any of them is confused

about who makes which chair. Because the mark is

incontestable, however, the absence of confusion does not

matter. Still, nine defenses are available to a person

charged with infringing an incontestable mark. 15 U.S.C.

§1115(b). Specialized Seating asserted two of these defenses: that “the registration . . . was obtained fraudu-
4 Nos. 07-1435 & 10-2670

lently” (§1115(b)(1)) and that “the mark is functional”

(§1115(b)(8)).

The district court held a bench trial and ruled in

Specialized’s favor on both of these issues. 472 F. Supp. 2d

999 (N.D. Ill. 2007). The judge found that the x-frame construction is functional because it was designed to be an

optimal tradeoff between a chair’s weight (and thus its

cost, since lighter chairs use less steel) and its strength;

an x-frame chair also folds itself naturally when knocked

over (an important consideration for large auditoriums,

where it is vital that chairs not impede exit if a fire or

panic breaks out); the flat channel at the seat’s edge,

where the attachment to the frame slides so that the

chair can fold, was designed for strength and attaching

hooks to link a chair with its nearest neighbor; the

front and back cross bars contribute strength (and allow

thinner tubing to be used in the rest of the frame); and

the inward-sloping frame of the back support allows

the chair to support greater vertical loads than Clarin’s

older “a-back” design, which the “b-back” design, depicted in the trademark registration, succeeded. The aback design is on the left and the b-back on the right:

 
Nos. 07-1435 & 10-2670 5

Clarin chairs with a-back designs failed when the

audience at rock concerts, seeking a better view, sat on

top of the chairs’ backs and put their feet on the seats.

The tubing buckled at the bend in the frame. The b-back

design is less likely to buckle when someone sits on it,

and it also produces a somewhat wider back, which

concert promoters see as a benefit. (Patrons sometimes

try to get closer to the stage by stepping through rows

of chairs. The gap between b-back chairs is smaller, so

they are more effective at keeping crowds in place.)

Having concluded not only that the overall design of

Clarin’s chair is functional, but also that each feature is

functional, the district judge added that Clarin had defrauded the Patent and Trademark Office by giving

misleadingly incomplete answers to the trademark examiner’s questions. The examiner initially turned down

Clarin’s proposal to register the design as a trademark,

observing that the design appeared to be functional.

Clarin replied that the design was chosen for aesthetic

rather than functional reasons. (This was not a complete

answer, as attractiveness is a kind of function. See Jay

Franco & Sons, Inc. v. Franek, No. 09-2155 (7th Cir. Aug. 11,

2010), slip op. 10–12. But we need not pursue that subject.) Clarin observed that a patent it held on an x-frame

chair, No. 1,943,058, issued in 1934, did not include

all of the features in the mark’s design. What Clarin

did not tell the examiner is that it held three other

patents on x-frame designs: No. 1,600,248, issued in 1926;

No. 2,137,803, issued in 1938; and No. 3,127,218, issued

in 1964. The district judge concluded that the four
6 Nos. 07-1435 & 10-2670

patents collectively cover every feature of the design

submitted for a trademark except the b-back, and that as

the b-back is a functional improvement over the a-back

Clarin should have disclosed all of these utility patents.

Had it done so, the judge thought, the examiner would

have refused to register the proposed mark.

Clarin’s appeal was delayed by settlement negotiations. Briefing and argument were deferred until after

they broke down. It was further delayed by the district

court’s failure to enter a proper judgment, a common

problem in the Northern District of Illinois. See, e.g.,

Rush University Medical Center v. Leavitt, 535 F.3d 735

(7th Cir. 2008). The judge stated that Specialized is

entitled to a declaratory judgment that the registration

is invalid because of both fraud and functionality.

A declaratory judgment must be set out on a separate

document containing its terms. Fed. R. Civ. P. 58(a). The

judgment in this case does not do that. The parties, and

perhaps the district judge, seem to have assumed that,

if the judge’s opinion names the winner, no one need

bother with the step of producing a concise declaration

in a separate document. But “[i]f courts are to require

that others follow regular procedures, courts must do so

as well.” Hollingsworth v. Perry, 130 S. Ct. 705, 715 (2010).

Clarin complicated matters by omitting the defective

judgment from the appendix to its brief, despite the

requirement in Circuit Rule 30(a) that it be included—

and despite counsel’s representation to the court, see

Circuit Rule 30(d), that Rule 30(a) had been followed. The

court discovered the problem on its own, and at oral

argument we questioned whether appellate jurisdiction

exists given the absence of any relief. See, e.g., Horn v.
Nos. 07-1435 & 10-2670 7

Transcon Lines, Inc., 898 F.2d 589 (7th Cir. 1990); Azeez v.

Fairman, 795 F.2d 1296 (7th Cir. 1986). We invited the

parties to return to the district court and ask the judge to

issue a proper declaratory judgment. They did, the judge

did, and Clarin’s new appeal (No. 10-2670) has been

consolidated with the original one (No. 07-1435). The case

is at last ready for decision.

Findings of fact made after a bench trial must stand

unless clearly erroneous. Fed. R. Civ. P. 52(a)(6); Anderson

v. Bessemer City, 470 U.S. 564 (1985). Although “functionality” is the “ultimate issue” in a case such as this, an

“ultimate” issue (such as whether the defendant was

negligent or engaged in racial discrimination) remains

one of “fact” under this standard, because it is generated by applying legal principles to factual conclusions.

See, e.g., Icicle Seafoods, Inc. v. Worthington, 475 U.S. 709

(1986); Pullman-Standard v. Swint, 456 U.S. 273 (1982).

“Functionality” certainly isn’t an issue of law; it represents a fact-specific conclusion about whether aspects of a

design are “essential to the use or purpose of the article

or if it affects the cost or quality of the article”. Inwood

Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850

n.10 (1982); see also TrafFix Devices, Inc. v. Marketing

Displays, Inc., 532 U.S. 23, 32–33 (2001). Many decisions

apply Rule 52’s standard to a finding that a mark is

functional. See, e.g., Service Ideas, Inc. v. Traex Corp., 846

F.2d 1118, 1123 (7th Cir. 1988); Pebble Beach Co. v. Tour 18 I

Ltd., 155 F.3d 526, 537 (5th Cir. 1998); Fuji Kogyo Co. v.

Pacific Bay International, Inc., 461 F.3d 675, 681 (6th Cir.

2006); Clamp Manufacturing Co. v. Enco Manufacturing
8 Nos. 07-1435 & 10-2670

Co., 870 F.2d 512, 514 (9th Cir. 1989); Epic Metals Corp. v.

Souliere, 99 F.3d 1034, 1037 (11th Cir. 1996).

Clarin tries to evade this standard of review by contending that the district judge’s findings were influenced by legal errors. We don’t see any. The district

judge started from the proposition, which the Supreme

Court articulated in TrafFix, that claims in an expired

utility patent presumptively are functional. Since utility

patents are supposed to be restricted to inventions that

have utility, and thus are functional, that’s a sensible

starting point—and since inventions covered by utility

patents pass into the public domain when the patent

expires, it is inappropriate to use trademark law to

afford extended protection to a patented invention. See

also Jay Franco, slip op. 5–8. Clarin itself obtained four

utility patents for aspects of the x-frame folding chair.

These patents disclose every aspect of the asserted trademark design except for the b-back. And the district

judge did not commit a clear error by concluding

that the b-back design is a functional improvement over

the a-back design. This means that the trademark design

is functional as a unit, and that every important aspect

of it is independently functional. It looks the way it does

in order to be a better chair, not in order to be a better

way of identifying who made it (the function of a trademark).

We do not doubt that there are many other available

functional designs. Sometimes the function of the functionality doctrine is to prevent firms from appropriating

basic forms (such as the circle) that go into many de-
Nos. 07-1435 & 10-2670 9

signs. Our contemporaneous opinion in Jay Franco discusses that aspect of the functionality doctrine. This does

not imply that preserving basic elements for the public

domain is the doctrine’s only role.

Another goal, as TrafFix stressed, is to separate the

spheres of patent and trademark law, and to ensure

that the term of a patent is not extended beyond the

period authorized by the legislature. A design such as

Clarin’s x-frame chair is functional not because it is the

only way to do things, but because it represents one

of many solutions to a problem. Clarin tells us that

other designs are stronger, or thinner, or less likely to

collapse when someone sits on the backrest, or lighter

and so easier to carry and set up. Granted. But as Clarin’s

‘248 patent states, the x-frame design achieves a favorable strength-to-weight ratio. Plastic chairs are lighter

but weaker. Y-frame chairs are stronger but use more

metal (and so are heavier and more expensive); some

alternative designs must be made with box-shaped metal

pieces to achieve strength, and this adds to weight and

the cost of fabrication. The list of alternative designs is

very long, and it is easy to see why hundreds of differentlooking folding chairs are on the market.

What this says to us is that all of the designs are functional, in the sense that they represent different compromises along the axes of weight, strength, kind of

material, ease of setup, ability to connect (“gang”) the

chairs together for maximum seating density, and so on.

A novel or distinctive selection of attributes on these

many dimensions can be protected for a time by a utility
10 Nos. 07-1435 & 10-2670

patent or a design patent, but it cannot be protected

forever as one producer’s trade dress. When the patent

expires, other firms are free to copy the design to the

last detail in order to increase competition and drive

down the price that consumers pay. See, e.g., Bonito

Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989);

Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964). Once

Harvey Hergott’s restrictive covenant expired, he was

free to do that too.

Clarin reminds us that a product whose overall appearance is distinctive can be protected under the trademark laws, even though most of the product’s constituent elements serve some function. See, e.g., Service

Ideas, 846 F.2d at 1123; W.T. Rogers Co. v. Keene, 778

F.2d 334, 339–40 (7th Cir. 1985). That’s true enough, but

what made the appearance “distinctive” in these and

similar decisions was a non-functional aspect of the

design. For example, Keene dealt with a letter tray that

had irregular hexagons as end caps; each hexagon had

an interior cutout. End caps serve the function of

making letter trays stable and separating the lower tray

from the upper tray, and cutouts make them lighter

while reducing the cost of materials, but neither the

irregular shape of the hexagon nor the shape of the

cutout served any function. They made the tray distinctive and enabled consumers to determine which firm

made it. If Clarin had placed a cutout in the backrest,

or given it a distinctive pattern, it could claim those

attributes as trade dress. But what Registration No.

2,803,875 claims is the x-frame profile with three cross
Nos. 07-1435 & 10-2670 11

bars and a slanted back support. All of the claimed

features are functional; none was added to produce a

distinctive appearance that would help consumers

identify the product’s source.

Because the district court did not commit clear error in

finding Clarin’s design to be functional, it is unnecessary

to decide whether Clarin committed fraud on the

Patent and Trademark Office. All a finding of fraud does

is knock out the mark’s “incontestable” status, and its

registration, under §1115(b)(1). It does not affect the

mark’s validity, because a trademark need not be registered to be enforceable. See Orient Express Trading Co. v.

Federated Department Stores, Inc., 842 F.2d 650, 653–54

(2d Cir. 1988) (a trademark can be enforced under 15

U.S.C. §1125(a) even after its federal registration is

cancelled for fraud); Far Out Productions, Inc. v. Oskar, 247

F.3d 986, 996 (9th Cir. 2001) (a trademark can be enforced

under state common law even after its federal registration

is cancelled for fraud); see also J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition §31:60

(2006 ed.). A finding of fraud therefore would not end

the case; a finding of functionality does.

Clarin contends that we should consider this topic

even though it does not affect Specialized’s right to sell a

copycat chair, because it might matter to attorneys’ fees,

but fees have not been awarded. A decision on legal

issues just because they might matter to some later

dispute would be advisory. Clarin also appears to be

concerned that the district judge’s finding of fraud might

affect future litigation against a different competitor, but
12 Nos. 07-1435 & 10-2670

issue preclusion (collateral estoppel) applies only to

issues actually and necessarily resolved in the first case.

Brown v. Felsen, 442 U.S. 127, 139 n.10 (1979); Restatement

(Second) of Judgments §27 (issue preclusion operates only

if the earlier resolution was “essential to the judgment”).

It was not necessary to address fraud on the PTO, so the

district judge’s opinion on this subject does not have

preclusive effect.

AFFIRMED

8-11-10