## Facts

- Eppendorf-Netheler-Hinz GmbH manufactured disposable pipette tips (“Combitips”) and compatible dispenser syringes used to dispense precise liquid aliquots.
- Ritter GmbH and its U.S. distributor RK Manufacturing, Inc. sold competing tips (“Ritips”) and a syringe (“Ripette”) designed to be compatible with Eppendorf’s system and marketed as a “direct replacement.”
- Eppendorf asserted trade dress rights under Lanham Act § 43(a) in a combination of eight design elements of its tips and related syringe components, including features such as a flange configuration, fins, plunger/plunger-head design, and color coding by volume.
- Ritter and RK did not meaningfully dispute similarity; they contended the claimed design elements were functional and therefore not protectable trade dress.
- A jury found willful trade dress infringement and awarded $1,000,000 in actual damages plus $750,000 in enhanced damages; the district court entered a permanent injunction barring sales of confusingly similar syringes in the United States.
- The district court denied Eppendorf’s requests for attorneys’ fees and prejudgment interest, prompting a cross-appeal.

## Issues

1. Whether Eppendorf carried its burden to prove the asserted product-design trade dress was nonfunctional as required for protection under Lanham Act § 43(a).
2. Whether the existence of alternative designs can, by itself, establish nonfunctionality where the challenged features provide utilitarian advantages.
3. If nonfunctionality was not proven, whether the damages award and permanent injunction could stand.

## Decision

- The Fifth Circuit reversed the judgment for Eppendorf on trade dress infringement.
- The court held Eppendorf failed to prove nonfunctionality of the claimed trade dress features.
- Because the trade dress claim failed, the monetary awards and permanent injunction were set aside.
- Eppendorf’s cross-appeal on attorneys’ fees and prejudgment interest did not provide a basis for relief after reversal on liability.

## Legal Principles

- Trade dress protection under Lanham Act § 43(a) is unavailable for product features that are functional.
- A feature is functional if it is essential to the use or purpose of the article or affects the cost or quality of the article.
- The plaintiff bears the burden of proving nonfunctionality in a trade dress case involving product design.
- Evidence that alternative designs may exist is, at most, secondary; it does not overcome a showing that the challenged features themselves confer utilitarian advantages.
- Courts reject trade dress claims that would confer a perpetual competitive advantage by restricting competitors’ access to useful product-design features.

## Conclusion

The Fifth Circuit held that the asserted design elements of Eppendorf’s pipette-tip and dispenser system served utilitarian purposes affecting use, performance, or quality, and therefore were functional; lacking proof of nonfunctionality, Eppendorf’s trade dress claim failed and the damages and injunction were reversed.


Eppendorf-Netheler-Hinz GmbH v. Ritter GmbH, 289 F.3d 351 (5th Cir. 2002)