## Facts

- Clarin (later acquired by Greenwich) manufactured x-frame folding chairs for decades and obtained a federal registration for the configuration of a particular folding-chair design.
- The registered configuration included an x-frame profile, rolled edges with flat channels, multiple cross bars, protruding feet, and an inward-slanting back support.
- Clarin previously held utility patents covering functional aspects of an earlier chair design; the registered configuration was an improved design that supported greater vertical loads.
- After Clarin’s acquisition, a former Clarin manager joined Specialized following a restrictive covenant period; Specialized sold a folding chair that generally tracked the registered configuration and appeared similar to Clarin’s chair to an untrained observer.
- The relevant market involved large purchasers (e.g., auditoriums and convention venues) for whom strength, weight, compact storage, and ease of folding were commercially important.
- The district court found the design elements served utilitarian purposes, including balancing strength with low weight, self-folding when knocked over, facilitating chair-to-chair linking, and improving structural strength via cross bars and the back design.

## Issues

1. Whether the registered folding-chair product configuration was functional and therefore ineligible for trade-dress protection under the Lanham Act.
2. Whether the registration was procured by fraud on the PTO due to failure to disclose earlier patents.

## Decision

- The Seventh Circuit affirmed judgment for Specialized.
- The court held the chair configuration was functional and thus not a valid or enforceable trademark/trade dress.
- The court ruled that incontestable status does not prevent a functionality challenge.
- Because functionality was dispositive, the court did not rely on the fraud ground to affirm.

## Legal Principles

- Product-configuration trade dress is unprotectable when the design is functional—i.e., essential to the product’s use or purpose, or affecting cost or quality.
- “Incontestable” registration primarily relieves a registrant from proving secondary meaning; it does not insulate a mark from invalidity defenses such as functionality.
- Utility patents (including expired patents) are strong evidence that claimed design features are functional; trademark law cannot be used to extend exclusivity over useful features beyond the patent term.
- Functionality analysis considers competitive effects: trademark protection cannot impose a non-reputational competitive disadvantage by restricting access to efficient utilitarian designs.
- Secondary meaning cannot save a functional product configuration from invalidation.

## Conclusion

The court held that a folding-chair configuration chosen for utilitarian performance could not receive trade-dress protection, and that incontestable registration status does not bar a functionality challenge; the registration was unenforceable and the infringement counterclaim failed.


Specialized Seating, Inc. v. Greenwich Indus., L.P., 616 F.3d 722 (7th Cir. 2010)