Leapers manufactures adjustable rifle scopes. A terminated manufacturing partner continued to make scopes similar in appearance to those of Leapers. Leapers sued, alleging infringement of its trade dress in the knurling (or texturing) of the knobs in its scopes. The exhibit to its complaint showing many side-by-sides is reproduced below. This is one of its scopes:
This is one of defendant’s scopes:
Leapers has filed for a federal trademark registration. This is the drawing of the applied-for mark:
The description of the mark in the application is:
The mark consists of a three-dimensional design configuration that is applied to all relevant cylindrical adjustment surfaces (i.e. the knobs and bells) of an archery or rifle scope or sight. The design is marked by scalloped knurling that is: (1) uniform and proportional in the width of the elevations and depressions on the cylindrical adjustments; and (2) straight, unbroken and running parallel to the cylindrical adjustment surfaces. Only the scalloped design on the cylindrical adjustment surfaces, depicted in solid lines, constitutes the mark; the rest of the product design depicted in broken lines is not part of the mark and serves only to show the position of the mark on the scope or sight.
The application is suspended during the pendency of this suit.
The District Court dismissed at summary judgment, holding that plaintiff would not be able to show that the knurling design was non-functional.
The Sixth Circuit has reversed. A jury could reasonably conclude that the knurling is purely ornamental because plaintiff had introduced testimonies that plaintiff was unaware of any functional benefit to this particular knurling design, and had chosen this pattern for ornamental reasons.
Plaintiff had also shown that its competitors apply knurling that was more effective at making the knobs’ adjustment surfaces more graspable (page 9).
The Sixth Circuit held that the District Court’s discussion of knurling was over-broad, and had erroneously held that any pattern of knurling that provides graspability, must be functional. Pages 11-12
Discovery is resumed, and Plaintiff will now have to show non-functionality, secondary meaning, and the likelihood of confusion.