## Facts

- Talking Rain sold flavored and unflavored water in a plastic bottle covered by U.S. Trademark Registration No. 2,181,774 for the bottle’s shape (product-configuration trade dress).
- SoBe sold beverages in a clear plastic bottle that Talking Rain claimed was confusingly similar to its registered bottle design.
- Both bottles resembled a common “bike bottle,” including smooth sides and a recessed grip area positioned roughly two-thirds up from the bottom.
- SoBe asserted its bottle was modeled on a traditional bicycle bottle shape designed to fit standard bike bottle cages.
- Talking Rain marketed its design as a “Grip Bottle” and used the slogan “Get a Grip!,” emphasizing handling characteristics.
- Talking Rain sued for Lanham Act infringement and false designation of origin, and for violations of the Washington Consumer Protection Act.
- SoBe counterclaimed that the configuration was functional and sought cancellation of the federal registration; the district court granted summary judgment to SoBe, dismissed Talking Rain’s claims, and ordered cancellation of the registration.

## Issues

1. Whether the registered bottle configuration was functional and therefore not protectable trade dress under the Lanham Act.
2. Whether a finding of functionality entitled SoBe to cancellation of Talking Rain’s federal trademark registration.

## Decision

- The Ninth Circuit reviewed summary judgment de novo and affirmed.
- The court held the bottle configuration was functional as a matter of law and thus ineligible for trade dress protection.
- The court affirmed summary judgment for SoBe on its counterclaim and upheld the order cancelling the federal registration.

## Legal Principles

- A product feature is functional if it is essential to the use or purpose of the article or affects the cost or quality of the article.
- A feature is also functional if exclusive rights would place competitors at a significant non-reputation-related disadvantage.
- Trade dress law does not protect functional product designs; protection for useful product features is the province of patent law.
- Marketing that touts utilitarian benefits of a design is strong evidence of functionality.
- The availability of alternative designs does not make an otherwise utilitarian feature nonfunctional when the challenged configuration reflects functional choices.
- Although federal registration carries a presumption of validity, that presumption can be rebutted with evidence establishing functionality, permitting cancellation.

## Conclusion

Because the bottle’s bike-bottle profile and recessed grip conferred utilitarian advantages reflected in Talking Rain’s own marketing, the configuration was functional and could not serve as protectable trade dress; the judgment for SoBe and cancellation of the registration were affirmed.


Talking Rain Beverage Co. v. S. Beach Beverage Co., 349 F.3d 601 (9th Cir. 2003)