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From Intellectual Property Law Daily, April 05, 2018

Jury awards French press maker Bodum $2M for rival’s trade dress infringement

By Cheryl Beise, J.D.

Following a five-day trial, an Illinois jury has determined that the unregistered design of Bodum USA’s Chambord manual French press coffeemaker constituted protectable trade dress that was willfully infringed by rival A Top New Casting. The jury awarded Bodum $2 million in damages, representing the profits A Top earned from sales of its infringing Chrome SterlingPro coffeemaker. The court entered judgment on the verdict and set the schedule for post-trial motions (Bodum USA, Inc. v. A Top New Casting, Inc., April 3, 2018, Kennelly, M.).

Bodum USA, Inc., filed suit against A Top New Casting, Inc,, ("A Top"), asserting that its Chrome SterlingPro French press coffeemaker was confusingly similar to Bodum’s Chambord coffeemaker in overall appearance. Bodum claimed trade dress protection in the overall design of its Chambord coffeemaker, including the handle, cylindrical carafe, plunger, metallic stand, dome-shaped lid, and bands that affixed the product’s handle to its carafe.

In May 2017, the court rejected A Top’s motion for summary judgment based on allegations that Bodum had relinquished its trademark rights by granting a "naked" license to a third party to use the trade dress the Chambord design. A Top failed to show as a matter of law that Bodum was unjustified in relying on the reputation and expertise of its licensee to maintain the quality of its products.

In December 2017, the court declined to find as a matter of law that the Chambord design was either functional or without acquired distinctiveness or that the parties’ coffeemakers were not likely to cause consumer confusion. Bodum presented sufficient evidence that the overall appearance of the Chambord product had acquired distinctiveness through long use and sales success. Although Bodum held a utility patent covering several features of the design—the lid, the safety lid, the cylindrical carafe, and the plunger—the court explained that the "overall design" of the Chambord product could constitute protectable trade dress, even if the individual elements were functional.

The jury rejected A Top’s abandonment defense, resolved all elements of trade dress infringement in favor of Bodum, and further found that A Top’s infringement was willful.

The case is No. 1:16-cv-02916.

Attorneys: Hannah Arenstam (Vedder Price P.C.) for Bodum USA, Inc. James D. Benak (Tetzlaff Law Offices, LLC) for A Top New Casting Inc.

Companies: Bodum USA, Inc.; A Top New Casting Inc.

MainStory: TopStory Trademark IllinoisNews

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