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Bodum USA, Inc. v. A Top New Casting Inc.

United States District Court, N.D. Illinois, Eastern Division

December 28, 2017

BODUM USA, INC., Plaintiff,
v.
A TOP NEW CASTING, INC., Defendant.

          MEMORANDUM OPINION AND ORDER

          MATTHEW F. KENNELLY, District Judge

         Bodum USA, Inc. (Bodum) has sued A Top New Casting, Inc. (A Top) for trade dress infringement. Bodum alleges that A Top infringed its CHAMBORD® trade dress by promoting and selling a French press coffeemaker that is confusingly similar to Bodum's own CHAMBORD® coffeemaker. A Top has moved to exclude the testimony and survey evidence of Bodum's experts and for summary judgment on three separate grounds: (1) Bodum's claimed trade dress is functional, (2) there is no likelihood of confusion, and (3) Bodum's claimed trade dress has no secondary meaning. For the reasons stated below, the Court denies A Top's motions.

         Background

         A French press, or coffee press, is a non-electric, manually-operated coffeemaker. To brew coffee in a French press, the user places ground coffee into the container and adds boiling or near-boiling water. After a few minutes, the user presses the coffee grounds to the bottom of the container with a piston or "plunger, " thereby separating the grounds from the liquid coffee.

         Bodum's claimed CHAMBORD® trade dress is the "overall design" of the Chambord French press coffeemaker. Compl. ¶ 11. Features of the CHAMBORD® trade dress claimed by Bodum include the frame, feet, handle, lid, safety lid, and the carafe and plunger. Bodum alleges that A Top's Chrome SterlingPro coffeemaker is confusingly similar to the CHAMBORD® coffeemaker[1] in overall appearance. Both products are sold nationwide for under fifty dollars on Amazon.com.

         The CHAMBORD® was the first French press-style coffeemaker model of its kind to be sold in Europe and the United States. Bodum's predecessor began selling the CHAMBORD® French press in the United States in 1968. In 1983, Bodum became the exclusive distributor of CHAMBORD® coffeemakers in the United States, and it has continued to promote, advertise, and sell CHAMBORD® coffeemakers in the United States since that time. Bodum acquired the rights to the CHAMBORD® design in 1991. Bodum has promoted the CHAMBORD® French press and other products through catalogs, television and radio advertising, advertisements in trade and general circulation newspapers and magazines, internet marketing, exhibitions at housewares shows, and use of its sales force.

         The CHAMBORD® coffeemaker has consistently been one of Bodum's best-selling products. Between January 1, 1990 and June 30, 1997, Bodum sold over 350, 000 CHAMBORD® coffeemakers, accounting for millions of dollars in sales. Annual sales approximately tripled from 1996 to 2005, and from January 2005 through December 2016, Bodum sold over five million CHAMBORD® coffeemakers in the United States. In addition to its Amazon.com sales, Bodum has sold the CHAMBORD® French press to a number of major retailers, including Starbucks, Target, Walmart, Crate & Barrel, and Macy's.

         Over the years, a number of competitors have promoted and offered for sale coffeemakers that closely resemble Bodum's CHAMBORD® French press. Since 1995, Bodum has sent over 50 cease-and-desist letters regarding the CHAMBORD® trade dress, and it has filed 14 lawsuits, including this one.

         Industrial designer Robert Anders prepared an expert report for Bodum regarding its product design based on his examination of a number of coffee press products, including Bodum's CHAMBORD® "The Original French Press Bodum" and two similar versions of A Top's SterlingPro.[2] Anders evaluated the CHAMBORD® product design first by categorizing the features as either functional or non-functional and then by identifying the non-functional features as dominant, sub dominant, and subordinate design elements. He concluded that the overall appearance or design of Bodum's CHAMBORD® coffeemaker is "not based on 'de jure' functionality [sic] features, and is therefore entitled to trade dress protection." Pasternak Decl., Sept. 22, 2017, Ex. 3 (Anders Report) ¶ 24. He also concluded that there is a "significant opportunity for a likelihood of confusion" between both versions of the SterlingPro and "The Original French Press Bodum" trade dress based on the products' overall appearance. Id. ¶ 61.

         Bodum also retained Rhonda Harper LLC (Harper), a marketing and consumer research professional, to create and analyze a survey to gauge the likelihood of confusion regarding the sources of the SterlingPro and the CHAMBORD® coffeemakers. Harper limited the universe of survey participants to those who responded "Yes" to the question "Have you ever purchased, or would you ever consider purchasing, a French Press Coffee Maker?" Pasternak Decl., Sept. 25, 2017, Ex. 3 (Harper Report), at 39. The survey, administered via SurveyMonkey, presented participants with a photo array of five different French press coffeemakers. The photo array consisted of both the SterlingPro and CHAMBORD® products and three additional French press coffeemakers that included some, but not all of the features claimed as part of the CHAMBORD® trade dress. The order in which the five coffeemakers were presented was randomized to prevent bias. The photo array did not include product name, brand name, or any other information about the coffeemakers. After giving participants an opportunity to review the photo array, the survey asked the following question:

Do you think that each of these French Press Coffee Makers is from a separate company, or do you think that two or more are from the same company, or are affiliated or connected [in any way]? If you don't know, please feel free to say so.

Id. at 41. Participants were provided with four possible responses:

o Each is put out by a separate company
o Two or more are from the same company
o Two or more are put out by companies that are affiliated or associated with each other
o Don't Know, Other, or None of the Above

Id. The first three responses were presented in random order to guard against bias. If a participant answered that two or more were from the same company or by affiliated or associated companies, she was shown the photo array again and was asked to identify which of the products she believed to be from the same or affiliated/associated companies. The survey then asked the participant the following open-ended question: "Why do you say that? Please be as specific as possible." Id. ¶ 24.

         The Harper Report indicates that, of the 488 participants who completed the survey, 215 participants (44.05 percent) said that they believed that two or more of the five coffeemakers depicted in the photo array were from the same company or affiliated or associated companies. Id. ¶¶ 34, 36. Another 191 participants (39.15 percent) believed the SterlingPro and the CHAMBORD® coffeemakers were from the same company or by associated or affiliated companies. Id. ¶¶ 35, 40. More specifically, 159 participants (32.59 percent) identified only the SterlingPro and the CHAMBORD® products as being from the same or associated/affiliated companies, id. ¶¶ 35, 37; an additional 32 participants (6.56 percent) identified the SterlingPro and the CHAMBORD® and one or more of the other three coffeemakers as being from the same company or associated/affiliated companies. Id. ¶¶ 35, 38.[3] The Harper Report concludes that these survey results show a "strong likelihood of confusion among consumers" with respect to the source of the SterlingPro and the CHAMBORD® coffeemakers. Id. ¶ 45.

         Bodum brought this action against A Top in March 2016. The complaint includes three claims: trade dress infringement in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), common law unfair competition, and violation of the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/2.

         Discussion

         To prevail on a trade dress infringement claim where the trade dress is unregistered, a plaintiff must establish that (1) the claimed trade dress is non-functional, (2) the claimed trade dress has acquired secondary meaning, and (3) a likelihood of confusion exists between the trade dress of the plaintiff and that of the defendant. See 15 U.S.C. § 1125(a)(3); Incredible Techs., Inc. v. Virtual Techs., Inc., 400 F.3d 1007, 1015 (7th Cir. 2005).

         A Top has moved for summary judgment on all of Bodum's claims. A Top contends that no reasonable factfinder could find that Bodum's claimed trade dress is not functional, that there is a likelihood of confusion as to the source of A Top's SterlingPro, or that Bodum's claimed trade dress has acquired secondary meaning. A Top also argues as part of its motions for summary judgment that the Court should exclude the testimony of Bodum's expert witnesses, Robert Anders and Rhonda Harper, and the Harper survey pursuant to Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). The Court will address the admissibility of Bodum's expert witness testimony before turning to A Top's summary judgment arguments.

         A. Motions to exclude expert testimony

         1. Legal standard

         Federal Rule of Evidence 702, which governs the admissibility of expert testimony, states as follows:

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if:
(a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence ...

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