Seyfarth Shaw IP Team Files Supreme Court Amici Brief In Trade Dress Case

• Published date: 03 November 2021
• Subject Matter: Intellectual Property, Patent, Trademark
• Law Firm: Seyfarth Shaw LLP
• Author: Ms Jamaica Szeliga, Joseph R. Lanser and Vincent Smolczynski

Seyfarth Synopsis: On October 18, 2021, Seyfarth's Jamaica Szeliga, Joe Lanser, and Vince Smolczynski submitted an amici brief to the United States Supreme Court to support certiorari in the trade dress matter of Sulzer Mixpac AG v. A&N Trading Co. et al, No. 21-417.

The brief was submitted on behalf of the International AntiCounterfeiting Coalition (IACC), a non-profit advocacy group dedicated to reducing counterfeiting and piracy, Industrial Designers Society of America (IDSA), a non-profit trade membership organization for industrial designers, and Swissmem, a trade association representing more than one thousand mechanical, electrical, and metal industries in Switzerland. In addition to the brief submitted for the IACC, IDSA, and Swissmem, the International Trademark Association (INTA) and intellectual property law professors also submitted briefs.

At issue is the Second Circuit's decision in Sulzer Mixpac, finding that any utility of a product necessarily affects the product's cost or quality and thus renders the product functional and not protectable by trade dress as a matter of law. The Second Circuit's decision deviates from the position held by seven other Circuit Courts and the United States Patent and Trademark Office, which apply a multi-factor analysis to determine whether a trade dress is invalid due to functionality. In the majority approach, product features that have...