Urine Test Results Layout Not Necessarily Functional

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By Anandashankar Mazumdar

April 4 — A dispute over the formatting of test results between two companies that help health care providers monitor whether patients are taking their pain medications will continue, after an April 4 ruling by the U.S. Court of Appeals for the 9th Circuit.

This is the first time that the 9th Circuit has addressed the question of whether a layout or publication format is necessarily functional for a trade dress infringement claim.

The court kicked the case back down to the trial level after ruling that the precise layout of urine test results might not be functional for the purposes of a trade dress infringement claim.

Even if comparing test results is a functional matter, the court said, that kind of information “could be presented in many ways” and it is up to a jury to decide whether the layout in this particular case is functional and not protectable as trade dress.

Protected Trade Dress Can't Be Functional

A trade dress infringement claim is similar to a trademark infringement claim in that it is asserting that a competitor is creating a likelihood of confusion.

But in a trade dress case, what is being fought over is not a trademark—such as a brand name or a logo—but rather a product's design or packaging.

Under Section 43(a)(3) of the Lanham Trademark Act of 1946, 15 U.S.C. §1125(a)(3), in order for a company to claim that a certain configuration is distinctive trade dress, it has to show that the configuration is nonfunctional.

If the configuration has a practical purpose then competitors can't be stopped from using it.

Jury Can Decide That Layout Is Nonfunctional

In this case, Millennium Laboratories Inc. of San Diego offers pain medication monitoring products. It claimed that in June 2011, it redesigned its R.A.D.A.R. reports “to include a specific combination of graphs and charts.”

Millennium said that in March 2012, Ameritox Ltd. of Baltimore began using “confusingly similar reports that copy Millennium's trade dress” for its RX Guardian reports.

Judge Michael M. Anello of the U.S. District Court for the Southern District of California granted summary judgment in favor of Ameritox after deciding that the layout of the report was functional.

However, the appeals court said that in this case, summary judgment was not appropriate because there were genuine outstanding issues of material fact.

Specifically, the court said that a jury could legitimately conclude that some of the features of the R.A.D.A.R. reports might not be functional, particularly given that “many alternative designs were available.”

A jury would also be able to look at whether Millennium itself had advertised the layout as a whole as having functional benefits, the court said.

Judge Ronald M. Gould issued the court's ruling, which was joined by Judges Susan P. Graber and Wiley Y. Daniel.

Jones Day represented Millennium. Perkins Coie LLP represented Ameritox.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

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Text is available at: http://src.bna.com/dQX.

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