## Facts

- Zippo Manufacturing Co., a Pennsylvania corporation, manufactured pocket cigarette lighters, including a well-known standard model and a narrower “slim” model.
- Rogers Imports, Inc., a New York corporation, imported and sold pocket lighters that closely resembled Zippo’s lighters in external shape and overall appearance.
- Zippo claimed Rogers’ lighter design and marketing caused consumers to believe Rogers lighters were Zippo lighters, diverting Zippo’s goodwill.
- Zippo maintained a free-repair program and frequently received Rogers lighters sent in by consumers who believed they were Zippo products.
- Zippo brought claims for trademark infringement and unfair competition seeking injunctive relief, an accounting, and damages; Rogers counterclaimed for declaratory and injunctive relief based on alleged unfair competition by Zippo.
- Zippo also asserted rights in “Slim-lighter”/“Slimlighter,” registered on the Supplemental Register.
- The case was tried to the court.

## Issues

1. Whether the external shape and appearance of Zippo’s lighters constituted protectable trade dress through secondary meaning in nonfunctional features.
2. Whether the features Rogers copied were functional and therefore free to copy despite Zippo’s product recognition.
3. Whether Rogers’ design and point-of-sale marketing created a likelihood of confusion, and what remedy was appropriate if confusion existed.
4. Whether Zippo could enforce “Slim-lighter”/“Slimlighter” as a protectable mark against Rogers.
5. Whether Zippo’s consumer surveys were admissible to prove confusion despite hearsay objections and methodological criticisms.
6. Whether Rogers proved its counterclaims that Zippo engaged in unfair competition (including expired patent marking and disparagement).

## Decision

- The court denied Zippo broad relief barring Rogers from selling similarly shaped lighters, finding Zippo failed to prove protectable nonfunctional design elements with secondary meaning as against the features copied.
- The court found substantial likelihood of consumer confusion and evidence of actual confusion, including misdirected repair submissions and survey results.
- The court granted limited injunctive relief requiring Rogers to take additional steps to differentiate its products at the point of sale, including making the “Rogers” name more prominent on display materials.
- The court admitted Zippo’s consumer surveys, holding methodological objections generally went to weight rather than admissibility.
- The court dismissed Zippo’s “Slim-lighter” trademark infringement claim for lack of enforceable secondary meaning and because Rogers had discontinued similar terminology.
- The court dismissed Rogers’ counterclaims for insufficient proof warranting affirmative relief.

## Legal Principles

- Product-design features that are essential to an article’s use or purpose, or that affect cost or quality, are functional and not protectable under trademark or unfair competition law as trade dress.
- Even when competitors may copy functional product features, they may not market the product in a manner likely to confuse consumers as to source; courts may order targeted measures to reduce confusion without granting a design monopoly.
- Consumer surveys offered to show consumer perception or confusion may be admissible notwithstanding hearsay objections when offered to show the respondents’ state of mind or the fact of confusion; criticisms of survey conditions and methodology typically affect weight, not admissibility.
- Descriptive terms registered on the Supplemental Register require proof of secondary meaning to be enforceable against competitors.

## Conclusion

The court refused to treat Zippo’s lighter configuration as protectable trade dress because the copied features were functional and Zippo did not prove protectable nonfunctional secondary meaning, but it imposed limited point-of-sale identification requirements to reduce demonstrated consumer confusion, admitted survey evidence, rejected the “Slim-lighter” claim, and dismissed Rogers’ counterclaims.


Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F. Supp. 670 (S.D.N.Y. 1963)