## Facts

- Leapers, Inc. manufactured rifle scopes featuring a particular textured metal “knurling” pattern on components such as adjustment knobs and rings.
- Knurling generally improves grip and appears on many common products; Leapers claimed its specific knurling configuration was ornamental and served as a source-identifying trade dress.
- Leapers alleged it began using the claimed knurling design on scopes around 2002 and marketed the design such that consumers associated it with Leapers.
- Leapers entered an exclusive manufacturing relationship with managers of a Chinese factory; related agreements required confidentiality and, upon termination, cessation of use and destruction of Leapers’ specifications and designs.
- Leapers alleged that a factory manager later formed a company and supplied scopes to others, including Sun Optics USA, incorporating a knurling design substantially similar to Leapers’ claimed trade dress.
- Leapers sued under the Lanham Act, asserting trade dress infringement based on the knurling design.
- Leapers offered evidence that the design choice was aesthetic/branding-driven, that many alternative knurling patterns provided comparable grip, and that consumers recognized the design as associated with Leapers.
- Sun Optics contended the design was functional (including aesthetically functional) and that Leapers lacked evidence of secondary meaning.

## Issues

1. Whether the record created a genuine dispute of material fact as to whether Leapers’ specific knurling design was nonfunctional and therefore potentially protectable trade dress under the Lanham Act.
2. Whether the district court erred by granting summary judgment on functionality without adequately addressing record evidence and without proceeding to secondary meaning, including in light of outstanding discovery relevant to secondary meaning.

## Decision

- The Sixth Circuit vacated the grant of summary judgment for Sun Optics and remanded.
- The court held that the district court improperly treated knurling as per se functional instead of evaluating the functionality of the specific design claimed as trade dress.
- Viewing the evidence in Leapers’ favor, a reasonable jury could find the particular knurling configuration nonfunctional, including rejecting an aesthetic-functionality defense.
- The court directed further proceedings, including consideration of secondary meaning on a more complete record.

## Legal Principles

- Trade dress functionality focuses on the specific configuration claimed, not the general category of a feature that may have utilitarian aspects.
- A design is functional (and thus not protectable as trade dress) if it is essential to the use or purpose of the article, affects cost or quality, or is necessary to effective competition (including via aesthetic functionality).
- Evidence of numerous feasible alternative designs can support a finding that a claimed design is not functionally necessary and can undercut both utilitarian and aesthetic functionality defenses.
- Because functionality often turns on fact-intensive disputes, summary judgment is inappropriate where competing evidence could permit a reasonable jury to find nonfunctionality.
- When functionality is not resolved as a matter of law, the court must address other trade dress elements, including secondary meaning where required, with appropriate discovery and record development.

## Conclusion

The Sixth Circuit vacated summary judgment because the relevant inquiry was the functionality of Leapers’ particular knurling design, and the evidence permitted a jury to find the design nonfunctional; the case was remanded for further proceedings, including consideration of secondary meaning.


Leapers, Inc. v. SMTS, LLC, 879 F.3d 731 (6th Cir. 2018)