Schutte Bagclosures Inc. v. Kwik Lok Corp. (193 F. Supp. 3d 245, 2016)

Citations

193 F. Supp. 3d 245

Full opinion text

OPINION AND ORDER

JOHN G. KOELTL, District Judge

This case is about small plastic closures that are used to close bags of pastries, bread, and fruit. Kwik Lok Corporation (“Kwik Lok”), a manufacturer of bag closures, has had a long and successful history in the bag closure industry in the United States. Schutte Bagclosures, Inc. (“Schutte, Inc.”), an American subsidiary of Schutte Bagclosures B.V. (“Schutte B.V.”), a Dutch company that has sold similar plastic closures in Europe, is interested in entering the bag closure market in the United States and brought this action, seeking a declaration that its products, known as Clipps G, do not infringe Kwik Lok’s intellectual property in the Kwik Lok bag closures. In addition to a declaration of non-infringement, Schutte, Inc., seeks a declaration of non-dilution, a declaration of invalidity, and order of cancellation of Kwik Lok’s U.S. Trademark Registration ■ No. 1,972,043 (“’043 Registration”) pursuant to 15 U.S.C. § 1119.

In response, Kwik Lok filed counterclaims alleging that Schutte, Inc. and its corporate parent Schutte B.V. (referred to collectively as “Schutte”) infringed Kwik Lok’s exclusive trade dress rights which are protected under the ’043 Registration as well as unregistered trade dress rights. Kwik Lok brought claims under the Lan-ham Act for trade dress infringement, unfair competition, and trade dress dilution, see 15 U.S.C. §§ 1114(1), 1125(a), 1125(c)(1), as well as state law claims for common law unfair competition and injury to business reputation under New York General Business Law § 360-1. The parties asserted several other claims and defenses that they voluntarily withdrew before proceeding to trial. See generally Schutte Bagclosures Inc. v. Kwik Lok Corp., 48 F.Supp.3d 675 (S.D.N.Y.2014).

Based on the Findings of Fact and Conclusions of Law set forth below, judgment is entered in favor of Schutte B.V. and Schutte, Inc. The Kwik Lok ’043 Registration and related Product Configurations are functional because the features of the asserted trade dress configurations “affect[] the cost or quality of the article.” TrafFix Devices v. Mktg. Displays, 532 U.S. 23, 32, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001) (internal citation omitted). The products’ shape affects how the closures are produced, stored, and how the closures work in bag closing machines. The products’ configuration affects how efficiently the closure serves its purpose of closing bags for various' forms of merchandise. Permitting Kwik Lok to maintain property rights in the closure design would negatively impact the competition that the functionality doctrine aims to protect. See id. at 29, 121 S.Ct. 1255; Sweet St. Desserts, Inc. v. Chudleigh’s Ltd., 69 F.Supp.3d 530, 533 (E.D.Pa.2014), appeal filed, (3d Cir. Mar. 4, 2015).

I. BACKGROUND

The main legal issue in this case is whether Kwik Lok can assert trade dress protection in the design of certain bag closure products. Schutte argued at trial that the shape of Kwik Lok’s bag closure products that are covered by the ’043 Registration and similar designs are functional and is not entitled to trade dress protection. The scope of the ’043 Registration and whether the Registration covers Kwik Lok plastic bag closure products with similar or identical features, is a threshold issue that determines the burden of proof on Schutte’s functionality argument.

During a five-day bench trial, the parties presented the testimony of the following witnesses: Wout Abbenhuis, the chief executive of Schutte B.V.; Frank van Drunen, the technology and innovation manager for Schutte B.V.; Dr. Paul Koch, an expert in plastics engineering who explained the mechanical operation of the Kwik Lok bag-closing machine, how the forces of the machine affect a plastic closure, and his conclusions on the viability of alternative closure designs; the video testimony of Jerre- H. Paxton, the President of Kwik Lok who is now deceased; Hal Miller, a former employee of Kwik Lok who served as the Vice President of Sales and testified about Kwik Lok’s distribution channels and advertising practices; Roger Keith Hart, the chief engineer at Kwik Lok who testified about the development of. the Kwik Lok closures; Professor Barton Beebe who testified about the procedures at the Patent and Trademark Office related to Kwik Lok’s application for'a trademark in the 1990s;. Richard Miksanek, a retired distributor of Kwik Lok machinery and products who testified as an expert in the bag closure industry and who provided his views on the similarities between Kwik Lok’s and Schutte’s products and information about how Kwik Lok’s products are sold and distributed; Cooper Woodring, an industrial product designer who developed alternative closure designs and testified about the feasibility of production of these alternative designs. The parties also introduced numerous physical and documentary exhibits.

Having assessed the credibility of the witnesses and considered the evidentiary record, the Court makes the following Findings of Fact and reaches the following Conclusions of Law.

II. FINDINGS OF FACT

1. The most common bag closures used by the food industry are wire-tie, tape, and the reusable plastic closures that are at issue in this litigation, which are most commonly used by bakeries. Paxton Dep. Vol. I at 86.

2. For more than 50 years, Kwik Lok has been a leading manufacturer, distributor, and seller of bag closure products. KL3 at KL0008020-22.

3. Kwik Lok is the only company in the United States that produces and sells re-usable sheet plastic closures that run through an automatic closing machine. Trial Transcript (“Tr”) 28, 305. Most bag closure products are applied in automated and semi-automated fashion by closing machines that are able to bag up to 6,600 bags per hour. SB13; Tr. 32.

4. The best-selling bag closing machine is the 872XLS automatic bag closing machine (“872 machine”). SB4 at KL0001276; Paxton Dep. Vol. I. at 261. The 872 machine has a lok track that is designed to feed closures from a reel onto an assembly line of bags running on a conveyor belt. The 872 machine seals the bags, removes the closures from a large strip of closures, and attaches the closure to the mouth of bag. Tr. 415; KL227 at KL001413-18. Kwik Lok also manufactures other models of automatic bag closing machines that are compatible with different closures. See generally KL227.

5. The first bag closure product created by Floyd Paxton, the founder of Kwik Lok, was a hand-applied closure made in the early 1950s. Tr. 410.

6. In 1962, Kwik Lok introduced the first bag closure that was designed to work in an automatic bag closure machine, the J-series closure. The J-series was the first closure that was not hand, applied. Tr. 414; KL411.

7. Closures are made from an extruded sheet of plastic that is slit into a specified width. The strip of plastic is then coiled up and then uncoiled to run through a die cutting machine that stamps the desired closure shape. Tr. 410-411.

8. Kwik Lok is the owner of a U.S. trademark registration, the ’043 Registration, which is a graphic rendering of a bag closure for “plastic closures for bags” in International Class 20. Tr. 448. That graphic rendering is depicted below. SB2.

9.Kwik Lok has asserted the following features of the trade dress in the ’043 Registration: square or slightly rectangular three-dimensional configuration of the perimeter of the plastic closure that includes chamfers or beveled portions on each corner and a beveled triangular slot opening at the center of one side. Tr. 417, 448,530.

10. Kwik Lok filed the application for the ’043 Registration in May 1990. The application, Application No. 74/055742 (“’742 Application”), was accepted for registration by the Patent and Trademark Office (“PTO”) in 1996. Tr. 337.

11. The ’742 Application also included a specimen of use, known as the J-Series, an example of how the asserted trade dress was used in commerce. KL811. Kwik Lok submitted additional specimens, the W-Series and Y-Series closures, when it renewed its registration in 2001, and the J-series closure when it renewed its registration in 2006. KL808; KL821; KL 822; Tr. 353.

12. The ’043 Registration, as accepted by the PTO, included specimens of closures that were hand-applied as well as specimens of closures that were connected together in strips for automated bag application. Tr. 353:1-355:6; KL808; KL821; KL822.

13. Although Kwik Lok has distributed several slight variations of Kwik Lok’s bag closure products, these products are substantially the same shape as the closure in the ’043 Registration. Tr. 412, 414, 448-449.

14. Kwik Lok’s claimed trade dress in this litigation, which is referred to in the pleadings as “the Beveled and Notched Kwik Lok Product Configuration,” includes thirteen different series of closures, of which the “J-NRP” or Non-Residue Producing series of closures is by far the best selling. SB4; Paxton Dep. Yol. I at 122-28.

15.The J-NRP series of closures was developed in response to a problem with the webbing of other J-series closures. The J-NRP closure, illustrated below, was designed to minimize the production of residue. Tr. 420-26.

16. The J-NRP closure can be used in semi-automatic bag closing machines as well as in automatic bag closing machines. Tr. 427; KL5 at KL0008444; KL227 at KL0001395.

17. The most common machine on which the J-NRP closure is used is the 872 machine. The J-NRP closure remains Kwik Lok’s' best-selling closure, and Kwik Lok’s most common automatic bag closing machines are designed to work with the J-NRP closure. SB4; SB12.

18. The bag. closures that work in the automated bag closing machines are provided to customers in reels where the closures .are in strip form with thousands of closures in each reel. Tr. at 41445; KL406 at KL0008622. The minimum order quantity for the J-NRP closure is 60,000 closures—or 15 reels of 4000 closures. Tr. 307.

19. The reel is mounted on a bag closing machine and the strip is fed into the automated bag closing machine. Tr. at 414-415; KL406 at KL0008622.

20. The lok track is ■ the portion of the automatic bag closing machine in which the closures are inserted and applied to bags. KL406 at KL0008683-89; KL412 at KL0008912 at 1:29-3:37.

21. The shape of the plastic closure is determined by the specifications of the lok track. Tr. 35; Tr. 84-85.

22. It takes 15 to 30 minutes to replace a customer’s lok track. Tr. 513. A lok track for the 872 Machine would cost “a couple hundred dollars.” Paxton Dep. Vol. II at 64-65.

23. Lok tracks are not normally changed. When customers purchase a bag closing machine it comes with a certain type of lok track and normally customers do not replace or install any other lok track on that machine. Tr. 35-36, 80; Paxton Dep. Vol. II at 62-63.

24. The life span of an automatic bag closing machines is 20 years, if properly maintained. Tr. 306.

25. Selling bag closing machines is important to Kwik Lok because it “establishes the customer,” which means that it creates a customer for bag closures. Paxton Dep. Vol. II at 31.

26. In each of the last 10 years, Kwik Lok has .sold many billions of its bag closures in the United States. For the year ending March 31, 2013, Kwik Lok sold over 9 billion bag closures, the majority of which were bag closures attached to. each other in strips. SB4.

27. Kwik Lok employs slightly fewer than 31 salespeople in the United States. Tr. 305. These salespeople promote and sell Kwik Lok bag closure equipment and Kwik Lok bag closures. Tr. 305. The regional salespeople sell directly to consumers by calling customers and by promoting goods at trade shows. Tr. 298.

28. Kwik Lok’s bag closure products are also sold by distributors throughout the United States. Tr. 298. Kwik Lok currently has almost 200 independent, non-exclusive distributors in the United States. Tr. 299, 303. These independent distributors are responsible for about 80% of Kwik Lok’s sales. Tr. 298.

29. Kwik Lok has no formal agreements • with these independent distributors. Tr. 299, 384.

30. Kwik Lok’s distributors áre free to sell third-party bag closure products side by side with the Kwik Lok products. Tr. 299, 384.

31. In some cases, Kwik Lok does not have contacts with the customers because distributors place orders on behalf of customers. Tr. 300.

32. Kwik Lok does not sell any equipment or any bag closures for individual use. Paxton Dep. Vol. I at 111.

33. Kwik Lok bag closures are distributed in cartons, identifiable by the red Kwik Lok logo and the words “Kwik Lok” on the outside of the carton. SB136.

34. Kwik advertises and promotes its ’043 Product Configuration through the use of the Kwik Lok logo (pictured below) (“Kwik Lok Logo”, Trademark No. 1,084,804). Tr. 292-95; KL332, KL333, KL334, KL336 and KL359.

35. The Kwik Lok Logo is featured on almost all of Kwik Lok’s marketing materials (including Kwik Lok’s product packaging, website, catalogs, advertising and promotional materials, displays, and letterhead). Tr. 295; KL3, KL336, KL824, KL 232, KL5, and KL209.

36. Kwik Lok advertises its closures as “The Bag Closure of Choice When It Comes To Function, The Environment And Consumer Convenience!” SB101 at KL0009104, and as being “Easy to Open,” “Easy to Close,” and “Easy to Read.” SB101 at KL0009105. Those claims are accompanied with illustrations of a customer’s fingers gripping the flat outer edges of the J-NRP closure. Id.; Tr. 309-10.

37.Kwik Lok has also specifically advertised the role that the “uniquely simple” design of the J-NRP closure contributes to a “bag closing machine with few moving parts and simple mechanical motions.” SB164 at KL0002876. The bag closing machine referenced' in this advertisement is the 872 machine. Tr. 313. Kwik Lok advertises that the simple design of the J-NRP closure allows it to make a machine that requires less downtime, 'less maintenance, higher production speeds, and fewer repair bills. SB164 at KL0002876.

38. Schutte B.V. is a Netherlands corporation that produces, distributes and sells worldwide a wide range of bag closures and binding materials, including Clip-band, twist ties, and Schutloks. Tr. 25, 28, 100; KL830 ¶3; KL19 at KL0001070, KL0001073, KL0001075, KL0001063.

39. Schutte and Kwik Lok were involved in litigation in the Netherlands over the alleged trademark infringement of Kwik Lok’s bag closure by the Schut-lok closure product, an all plastic closure that Schutte had developed and sold in Europe. Tr. 28. Judgment was ultimately entered in Schutte’s favor. Tr, 30. The Judgment was finalized in 2012.

40. Schutte redesigned its re-usable sheet plastic closures, and specifically its Schutlok type G closure, so that the design of its closures would be as different as possible from any Kwik Lok closures and still perform at'the same or higher level. Tr. 45, 78.

41. Schutte became interested in entering the United States market, and conducted some research into customer preferences within its prospective target consumer base: bakeries. Tr. 47. Schutte concluded that bakeries were concerned with whether the closures would run on their automatic machines. Tr. 32-33.

42. Schutte B.V. incorporated- Schutte, Inc., a wholly owned subsidiary of Schutte B.V., in New York with the intention of entering the United States market.

43. Schutte B.V. manufactured the Clipps G Series bag closure products in the Netherlands, a product that Kwik Lok claims infringes the trade dress in its ’043 Registration and the J-NRP Product Configuration. KL830 ¶ 2.

44.The new Schutte closure, the Clipps G, has corners that are rounded, not beveled, the bottom is flat with a concave middle, and the webbing is at the top and bottom of the flat vertical ends. Tr. 45, 81-82; KL428.

45. Schutte tested the Clipps G closure on all machines available to it in the Netherlands, including the Kwik Lok 872 machine. Tr. 78-79.

46. Below are side by side photographs of Schutte’s Clipps G Series (on the left) and Kwik Lok’s J-NRP Series closure (on the right).

47. “Schutte Inc. has not designed, manufactured, offered for sale, and/or sold any products in the United States.” KL830 ¶ 1. However, in June of 2012, Schutte B.V. shipped over 100,000 samples of the Clipps G Series bag closure products and various marketing and other promotional materials to Schutte, Inc. and TABS, Inc. in New York, which were then sent to potential customers in New York. Schutte Bagclosures Inc., 48 F.Supp.3d at 682, 685; Sec. Am. Compl. ¶ 126; KL830 ¶¶10 11, 7.

48. Schutte, Inc.’s bag closures are sold in boxes with the Clipps logo and trademark imprinted all over the box. Tr. 48-49. Both Kwik Lok and Schutte, Inc. clearly mark all their promotional material, website, and packaging material, such as cartons, with their respective trade names and logos, which are materially different in size, text, and color. Tr. 43-44, 48-49.

49. Schutte, Inc.’s targeted customers are large wholesale and industrial bakeries in the United States. Tr. 47. Schutte, Inc. targets those potential customers by finding potential distributors who specialize in supplying bakeries. Tr. 47. Schutte, Inc. would not select a distributor that also sells Kwik Lok products. Tr. 47-48.

III. CONCLUSIONS OF LAW

Schutte, Inc,’s first claim for relief is for a declaration of non-infringement under the Lanham Act and New York law. Kwik Lok’s first counterclaim for trade dress infringement under the Lanham Act overlaps with Schutte, Inc.’s first claim. Schutte, Inc.’s second claim for relief is for a declaration of non-dilution under the Lanham Act and New York law. This claim overlaps with Kwik Lok’s third claim for federal trade dress dilution and fifth claim for dilution and injury to business reputation under New York General Business Law § 360-1. Schutte, Inc.’s third claim for relief is for a declaration of invalidity and order of cancellation of Kwik Lok’s ’043 Registration pursuant to 15 U.S.C. § 1119. The issues in this case are twofold (1) whether Kwik Lok can assert trade dress protection in the ’043 Registration and the J-NRP Product Configuration, (2) and if so, whether Schutte infringed Kwik Lok’s trademark and/or trade dress by designing and producing Clipps G closures.

1. The Lanham Act’s regime of protection for trademarks and trade dress protects manufacturers from the kind of imitation that “capital-iz[es] on a consumer’s inability quickly to evaluate the quality of an item offered for sale.” Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 164, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995).

2. “[Tirade dress encompasses the design and appearance of the product together with all the elements making up the overall image that serves to identify the product presented to the consumer.” Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2d Cir.1997) (internal quotation marks omitted). The Lanham Act protects both registered and unregistered trade dress. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992).

3. Courts “exercise particular caution when extending protection to product designs.” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 114 (2d Cir.2001) (internal quotation marks and citation omitted). Indeed, “product design almost invariably serves pur: poses other than source identification.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 213, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000) (noting that “even the most unusual of product designs—such as a cocktail shaker shaped like a penguin—is intended not to identify the source, but to render the product itself more useful or more appealing”).

4. “[T]rade dress claims raise a potent risk that relief will impermissibly afford a level of protection that would hamper efforts to market competitive goods.” Yurman, 262 F.3d at 115 (internal quotation marks and citation omitted). Overextension of trade dress protection “can undermine restrictions in copyright and patent law that are designed to avoid monopolization of products and ideas. Patent and copyright law bestow limited periods of protection, but trademark rights can be forever.” Id. (internal quotation marks and citation omitted).

5. To prevail on a claim for trade dress infringement under § 43(a) of the Lanham Act, a plaintiff must prove “(1) that the mark is distinctive as to the source of the good, and (2) that there is a likelihood of confusion between its good and the defendant’s.” Yurman, 262 F.3d at 115. The plaintiff must prove distinctiveness by showing secondary meaning, namely “that in the minds of the public, the primary significance of the mark is to identify the source of the product rather than the product itself.” Id. (internal quotation marks omitted).

6. Under the Lanham Act, registration of a trademark constitutes pri-ma facie evidence of the trademark’s ' validity, and the registrant’s ownership and exclusive right to use the mark. See 15 U.S.C. § 1115(a); 15 U.S.C.S. § 1057(b). Use of a registered mark for five consecutive years renders the mark incontestable. Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 476 (2d Cir.1996). An incontestable registration constitutes “conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.” See 15 U.S.C. § 1115(b). However, an incontestable mark may be challenged on the grounds that it is functional. See id.

7. When a trademark owner sues for ' infringement of a registered and incontestable mark, the infringer bears the burden to rebut the presumption of the mark’s protectability by a preponderance of the evidence. See Lane Capital Mgmt. v. Lane Capital Mgmt., 192 F.3d 337, 345 (2d Cir.1999); Vox Amplification Ltd v. Meussdorffer, 50 F.Supp.3d 355, 372 (E.D.N.Y.2014) (“In order to rebut the presumption of validity, the allegedly infringing party must show, by a preponderance of the evidence, that the mark is ineligible for protection.” (internal citation omitted)).

8. The only defense that is asserted against the validity of the trade dress in this case is that it is “functional.” Because the mark is registered and incontestable, the burden is on Schutte to prove that the registered mark is functional.

9. The burden is reversed for marks that are not registered. 15 U.S.C. § 1125(a)(3)(“In a civil action for trade dress infringement under this chapter for trade dress not registered on the . principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not function- . al”).

10. Kwik Lok’s asserted trade dress sufficiently identifies the elements of the trade dress: a square to slightly rectangular outer perimeter having beveled corners and a triangularly-shaped slot opening. See Landscape Forms v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir.1997) (“Without such a precise explanation of the character and scope of the claimed trade dress, litigation will be difficult [.] ”).

11. Schutte’s Clipps G closure most closely resembles the J-NRP Product Configuration, although Kwik Lok contends that the Clipps G also infringes its ’043 Registration.

12., A ■ threshold issue is whether the J-NRP Product Configuration is an unregistered mark that is potentially subject to common law, trade dress protection or whether it is part of the trade dress embodied in the ’043 Registration.

13. Schutte argued at trial that the J-NRP Product Configuration was an unregistered trade dress. Kwik Lok argued that the PTO’s acceptance of the W-Series, Y-Series, and J-Series specimens as part of the ’043 Registration should receive deference. Kwik Lok also argued that the differences between the J-Series closure and the J-NRP Product Configuration are mini- , mal and therefore, the J-NRP Product Configuration should also be considered part of the ’043 Registration.

14. Courts in this Circuit give great deference to the PTO’s decision to register a particular mark. E.g., The Murphy Door Bed Co., Inc. v. Interior Sleep Sys. Inc., 874 F.2d 95, 101 (2d Cir.1989); M & G Elecs. Sales Corp. v. Sony Kabushiki Kaisha, 250 F.Supp.2d 91, 98 (E.D.N.Y.2003) (collecting cases).

15. The PTO accepted Kwik Lok’s specimens of use as part of the ’043 Registration and did not find that the specimens were a “material alteration” of the ’043 Registration. Tr. at 353-54; KL808; KL821; KL822.

16. The ’043 Registration can be reasonably construed to cover the Kwik Lok product lines submitted to the PTO because the PTO accepted the various specimens submitted by Kwik Lok— the W-Series, the Y-Series, and J-Series. By accepting these specimens in connection with the maintenance of the ’043 Registration, the PTO found that those specimens (i.e. W-Series, Y-Series and the J-Series) were covered within the scope of the ’043 Registration. See KL820, KL811 at KL0000969; KL821; KL822 at KL0000423; KL808.

17. The differences between the original specimen of the ’043 Registration and the later specimens of use do not represent a material alteration of the registered mark. See Ex Parte Petersen & Pegau Baking Co. by Change of Name, P. F. Petersen Baking Co., 100 U.S.P.Q. 20 Com’r Pat. & Trademarks (Oct. 9, 1953).

18. Kwik Lok’s ’043 Registration is incontestable based on the registration approved by the PTO in May 1996. KL820, Moreover, based on the specimens of use submitted to and accepted by the PTO, the ’043 Registration covers multiple Kwik Lok plastic bag closure products having the same trade dress features; a square to slightly rectangular outer perimeter having beveled corners and a .triangularly- . shaped slot opening. KL808; KL811, KL821; KL822,

19. Therefore, the incontestable ’043 Registration covers' the W-Series, the Y-Series, and J-Series closures, including the J-NRP closure. Therefore, it is un- ■ necessary to determine whether the J-NRP closure is entitled to common law trade dress protection." ■

(2)

20. In its post-trial submissions, Kwik Lok exhaustively outlined the history of the ’742 Application and ultimate approval of the ’043 Registration, underscoring the fact that the PTO considered Whether the ’043 Registration was functional and eventually concluded that it was not.

21. At trial, Dr. Beebe explained the long and inconsistent history of the ’043 registration, including the ultimate decision by the PTO in the final office action. Tr. 346-51. It bears noting that in 1994, the PTO determined that the shape of the closure was functional because “its shape serves to provide a cleaner separation between each closure ... the notched corners of the bag closures appe[a]r to be specifically designed for use with packaging machinery, providing an efficient manner to restrain each closure while the one before it is being 'affix[e]d to the container or package.” ■ KL817 at KL0000459. However, after Kwik Lok filed a request for reconsideration and appealed to the Trademark Trial and ' Appeal Board, the PTO approved the publication of the mark, and the PTO found no other deficiencies as of January 16,1996. Tr. 351. In- contrast to the preceding office actions, the PTO did not issue an explanation or decision. See infra note 3.

22. The PTO’s office actions from 1991 to 1996 deserve little- weight. As evidenced by the extensive history of the ’742 Application and ’043 Registration, the PTO struggled mightily to arrive at a final determination as to the closure’s functionality. More importantly, the PTO made its final determination in 1996, before TrafFix clarified the functionality standard and its intersection with patent law.

23. As mentioned earlier in the context of the scope of the ’043 Registration, a decision of the PTO generally receives great deference. Murphy Door, 874 F.2d at 101; M & G Elecs. Sales, 250 F.Supp.2d at 98. But, “in the end, the Court is not bound by such an initial determination, and is obligated to ultimately render its own decision on the merits.” Real News Project Inc. v. Indep. World Television Inc., No. 06-cv-4322, 2008 WL 2229830, at *10 n. 14 (S.D.N.Y. May 27, 2008) (internal quotation marks and citation omitted).

24.In this case, although the earlier PTO actions explained why the Kwik Lok closure was functional or otherwise ineligible for registration, the final action that led to the approval of the ’043 Registration did not include any explanation. Compare KL812, KL813, KL817 with KL819. Given the conflicting history of the ’742 Application and the relatively sparse information on the final decision to register Kwik Lok’s trademark, the registration decision carries little weight on the specific issue of functionality. A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 221 (3d Cir.2000) (declining to give much weight to the PTO decision because “the PTO attorney’s decision was conclusory, not searching or analytical”); Cf. Int’l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC, 14-3456-cv, 823 F.3d 153, 167-68, n. 5, 2016 WL 2893172, at *12 n. 5 (2d Cir. May 18, 2016).

25. Kwik Lok notes that the PTO reviewed eighteen of the patents that Schutte submitted in this case as evidence that features of the trade dress has been previously disclosed in utility patents. But the PTO’s review took place before the Supreme Court’s decision in 2001 in TrafFix that underscored the importance of utility patents to the functionality inquiry. 532 U.S. at 29, 121 S.Ct. 1255 (noting that a “utility patent is strong evidence that the features therein claimed are functional”).

26. Accordingly, the measure of deference given to the final PTO determination accepting the ’043 Registration is limited and the Court must undertake an independent analysis of the asserted trade dress to determine whether it is functional under the governing standards of TrafFix.

(3)

27. The exclusive right to use an incontestable trademark is subject to a defense that the mark is functional. 15 U.S.C. § 1115(b). Similarly, Section 14 of the Lanham Act lists the grounds under which an action to cancel a trademark may be filed. See 15 U.S.C. § 1064. The grounds for cancellation include that the trademark is functional. Id. § 1064(3).

28. In this case, Schutte contends that the ’043 Registration and the J-NRP Product Configuration are functional and seeks cancellation of the ’043 Registration and a declaration of non-infringement.

29. Because the ’043 Registration is an incontestable registration and covers the J-NRP Product Configuration, the burden is on Schutte to prove the functionality of the ’043 Registration and the J-NRP Product Configuration. See e.g., McAirlaids, Inc. v. Kimberly-Clark Corp., 756 F.3d 307, 311 (4th Cir.2014) (“The party challenging a registered mark-has the burden of showing functionality by a preponderance of the evidence.”); Vox Amplification, 50 F.Supp.3d at 373 (“because [the Defendants] registered the [Phantom Body Shape mark], the burden falls to [the Plaintiffs] to prove functionality” (internal quotation marks and citations omitted)).

30. The purpose behind the functionality defense is to “prevent[ ] trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature.” Qualitex, 514 U.S. at 164, 115 S.Ct. 1300.

31. The legal principle that “the non-functionality requirement protects competition even at the cost of potential consumer confusion,” is “even more critical” in a product configuration case rather than a packaging case “because a monopoly right in the design of the product itself is more likely to preclude competition.” Yurman, 262 F.3d at 116. (internal quotation marks and citations omitted). Consequently, “‘[r]igorous application’of the requirement of non-functionality is necessary ‘to avoid undermining the carefully circumscribed statutory regimes for the protection of useful and ornamental designs under federal patent and copyright law.’” Id. (quoting Restatement (Third) of Unfair Competition, § 16 cmt. b at 158).

32. There are two ways in which the evidence can show that a design is functional and therefore not sufficiently distinctive to warrant protection under the Lan-ham Act. First, the evidence may demonstrate that a product’s design feature, is “ ‘essential to the use or purpose of the article.’ ” Alternatively, the evidence may reveal that the design feature itself “ ‘affects the cost or quality of the article.’ ” TrafFix, 532 U.S. at 32, 121 S.Ct. 1255 (quoting Qualitex, 514 U.S. at 165, 115 S.Ct. 1300); see also Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n. 10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982). To be considered functional, the product configuration need not be a competitive necessity. TrafFix, 532 U.S. at 32-33, 121 S.Ct. 1255. “[A] functional feature is one the ‘exclusive use of [which] would put competitors at a significant non-reputation-related disadvantage.’” Id. (quoting Qualitex, 514 U.S. at 165, 115 S.Ct. 1300). A product configuration that is merely ornamental, incidental, or arbitrary is not functional. Id. at 30, 121 S.Ct. 1255.

33. Kwik Lok argues that the J-NRP Product Configuration, comprised of a square or slightly -rectangular three dimensional- configuration of the perimeter of a plastic closure that includes chamfers or beveled portions on each corner and a beveled triangu- ■ lar slot opening at the top of the closure, . is an arbitrary and unique design that is not essential to the use or purpose of the closure.

34. Kwik Lok’s claimed trade dress in the ’043 Registration and the J-NRP Product Configuration is not ornamental or arbitrary. It is basically a square that fits comfortably in a lok track to be used to close bags of merchandise. The shape of the closure is essentially a square. SB2; SB8. To the extent that Kwik Lok’s claimed trade dress configurations deviate from a simple square shape, they do so in minuscule ways. For example, the corners of Kwik Lok’s square bag closures are beveled' rather than right angles like the corners of a square. SB2; SB8. This deviation from the basic square shape is not ornamental, however, considering the amount of material removed from each of the corners is no more than a few millimeters and therefore barely changes the generally square shape communicated by the closure. The only other deviation from the square shape of the closure is the V-shaped opening through- which the bag is inserted. SB2; 8B8. But the opening is a functional feature of the closure to allow the bag to enter the closure. The design of Kwik Lok’s claimed trade dress configurations is inherently basic and plainly not ornamental or designed to be a source identifier. See, e.g., TrafFix, 532 U.S. at 30, 121 S.Ct. 1255; Antioch Co. v. W. Trimming Corp., 347 F.3d 150, 158 (6th Cir.2003) (“In other words, where individual functional components are combined in a nonarbitrary manner to perform an overall function, the producer cannot claim that the overall trade dress is nonfunctional,’’).

35.While the configuration of the closures may not necessarily be essential to the use or purpose of the article, it does affect the cost or quality of the bag closure.

36. An asserted trade dress “affects the cost or quality of the article where it permits the article to be manufactured at a lower cost or constitutes an improvement in the operation of the goods.” Christian Louboutin S.A. v. Yves Saint Laurent, 696 F.3d 206, 219 (2d Cir.2012)(internal quotation marks omitted). A finding that the product feature is functional under this utilitarian test renders the feature ineligible for trademark (or trade dress) protection. See id. The trial evidence established that the simple shape of the closures at issue facilitates the efficient use of the articles in automatic machines and reduces possible costs to the manufacturers of the closures and the purchasers of the closures.

37. The trade dress should be analyzed in the context of how it is actually used in the market. The most common way in which the closures are applied is by machines and the most commonly used machine in the United States is Kwik Lok’s 872 machine. Kwik Lok’s 872 machine can apply bag closures at a rapid pace in excess of one per second. SB25 at KL0001413 (at speeds up to 110 closures per minute); Paxton Dep. Vol. I at 261. The 872 machine employs a lok track through which a strip of connected J-NRP closures passes before the individual closures are applied to the bags.

38. Although they may look like simple pieces of plastic, bag closures- are products of considerable engineering designed to ensure that the closures .perform several important • functions. Only Kwik Lok currently sells bag closures that work in the 872 machine and the vast majority of the bag closures that are used in the 872 machine are the J-NRP model closure that embodies the trade dress claimed by Kwik Lok.

39. Kwik Lok acknowledges that it designs the relevant parts of these industry-leading machines to work with J-NRP closures. Tr. 477. To that end, the industry-leading 872 machine is initially sold together with the J-NRP closures. Tr. 306.

40. Dr. Paul Koch, who received a doctorate in Plastics Engineering- and has considerable expertise in working with and testing plastic products, is a Professor Emeritus at Penn State University in the Plastics Engineering Technology Department, where he has taught for 26 years and is recognized as one of the leading experts in plastic products in the world. Tr. 129-32. Dr. Koch has studied Kwik Lok’s claimed trade dress configurations and the forces exerted on a bag closure during its application by the 872 machine and by the consumer of a bag of bread. Tr. 132-33. Dr. Koch testified credibly that the features that are common to both Kwik Lok’s registered and unregistered trade dress greatly affect the quality of those bag closures’ performance. Tr. 173.

41. According to Dr. Koch, the essentially square shape of those bag closures improves the quality of the product because the flat bearing areas on the top, - bottom, and sides of the device are important for withstanding the forces exerted on the. closure as it is moved through the machine, separated, and applied to the bag. Tr. 164. As the bag closure passes through the lok track of the 872 machine, each side of the bag closure is subjected at different times to forces either holding the closure in place or disconnecting the closure from the strip of closures. Tr. 134-40. If the side of the closure is not even, the pressure applied can be uncertain or unpredictable which can lead to malfunctioning and costly inventory backups. Tr. 139-40. According to Dr. Koch, the essentially square shape is also the most economically efficient use of the plastic sheet from which the closures are stamped.

42. Furthermore, Dr. Koch testified that the closure should not have hollowed out or punched out' areas, which would significantly weaken the overall strength of the closure and make mass production more expensive. Tr. 172. The overall strength of the closure is of particular importance because the forces mentioned above can cause an insufficiently strong closure to malfunction or, if a weak closure breaks during use by the end purchaser, it can cause customer dissatisfaction. Tr. 172. As Dr. Koch credibly explained, the absence of hollowed-out areas allows a closure to contain the most material permitted and be as strong as possible within the general size prescribed by the 872 machine and lok , track. Tr. 165-66.

43. At trial, the parties presented videos of . how the 872 machine operates, and the speed by which the closures pass through the lok track. The lok pick engages the slot between closures to advance the next closure into the closing position. KL412. Additional hollowed out or punched out parts could cause the lok pick to catch these other parts and destroy the closure. Tr. 184, 186.

44. As several witnesses testified, the height, width, and thickness of closures that can work in the 872 machine and the lok track must fit in an extremely narrow range or else they will not work. Tr. 84-85, 164-65, 442-48, 585. Within those narrow ranges, the shape that can fit the most material permitted, and therefore have the most strength and the least cost, is by definition the essentially square shape that is claimed by Kwik Lok. Tr. 86, 165-66.

45. The fundamentally square shape is also dictated by where the webbing between the closures must be located. The bag closures are disconnected using a radial action. Tr. 168-69. If the webbing was located closer to the center of the closure, there is a likelihood that the bag closure would not break off cleanly because the radial force would be insufficient to snap the webbing. Tr. 168-69.

46. Not only must the closure have an essentially square shape, each of the sides of the closure must be largely composed of flat edges. For example, the sides of the closure that are connected with webbing to other closures must be able to accept the pawl on the lok track that keeps the strip of closures in place as the bag is being inserted into a closure and that closure is broken off. Tr. 170. If the sides of the closure are not flat, the strip of closures could move and that could affect the position of the closure opening at the time the bag is inserted. Tr. 170.

47. Similarly, the bottom edge of the closure must also have flat areas on either side of that edge because it is resting on a flat cross-sectional area to help the closure resist the forces applied when the bag is inserted and when the adjacent closure is disconnected. Tr. 170. Those flat areas allow the closure to best spread the forces over the greatest area and reduce the amount of localized pressure. Tr. 89, 171.

48. Furthermore, the straight funnel shape of the opening on the top edge of the Kwik Lok’s bag closure designs allows a uniform expansion of the energy required to insert the bag. Tr. 167. The top edge of the closure on either side of the opening must also be flat because that is the area that is acted on by the disconnection bar of the lok track. As a result, it is important for that part of the closure to have a rigid corresponding area so it will not deform when struck by that bar. Tr. 171.

49. The straight lines of the opening allow the energy required in inserting the bag to be spread out over a consistent or uniform area, thereby preventing it from being bunched up or snagging and minimizing the amount of energy required to insert the bag. Tr. 168.

50. Therefore, the shape of Kwik Lok’s asserted trade dress is the strongest available shape and clearly affects the quality of the closure. See TrafFix, 532 U.S. at 32, 121 S.Ct. 1255; Christian Louboutin, 696 F.3d at 219. It also works efficiently with bag closing machines thereby allowing increased operating speeds, and decreased downtime, maintenance costs, and damaged packages. See Conclusions of Law ¶¶ 81-83.

51. Kwik Lok points out that it is “improper for defendants to break the trade dress down into specific elements and call them functional” citing Cartier Inc. v. Sardell Jewelry, Inc., 294 Fed.Appx. 615, 620-21 (2d Cir.2008). “Even if individual elements of a trade dress are functional, their arrangement or combination may be arbitrary, fanciful, or suggestive and thus deserve trade dress protection.” Coach, Inc. v. We Care Trading Co., 67 Fed.Appx. 626, 629 (2d Cir.2002) (internal quotation marks and citations omitted). However, not only is each feature of the trade dress independently functional, but as a whole the shape of the closure affects the cost and quality of the closure. A closure with a basically square or slightly rectangular shape, flat edges, beveled corners, and a funnel shape at the top of closure works efficiently as a result of the shape in closing the bag and in sustaining the force of the 872 machine when a closure is disconnected and placed on a bag.

52. Moreover, disclosure of design features in the claims of an expired utility patents constitutes “strong evidence” that those features are functional. See, e.g., TrafFix, 532 U.S. at 29, 121 S.Ct. 1255; New Colt Holding Corp. v. RJG Holdings of Fla., Inc., 312 F.Supp.2d 195, 212 (D.Conn.2004). “When the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.” TrafFix, 532 U.S. at 30, 121 S.Ct. 1255. In this case, the utilitarian advantages of Kwik Lok’s claimed trade dress configurations are disclosed in the utility patents that Kwik Lok has obtained over the past five decades in connection with the bag closing system that uses its claimed trade dress.

53. An example of a disclosure of Kwik Lok’s claimed trade dress configurations can be found in U.S. Patent No. 3,270,874 (’874 Patent). SB103. That patent was issued on September 6, 1966 and is for “Polystyrene Multi-Closure Strip Scored for Separation Into Individual Closures.” This patent claims a particular shape of polystyrene plastic bag closures whose sides are parallel “transverse axes” and symmetrically spaced from a “bag-neck-confining mouth and a narrow opening located in a longitudinal side” of the closure. As seen in the figure below, the patent’s claims disclose the flat-sided, almost square closure with a tapered opening on one side that Kwik Lok seeks to protect indefinitely using trademark law now that this patent has expired.

54. This patent’s disclosure of the utilitarian benefits of Kwik Lok’s claimed trade dress configurations is underscored further through examination of the preferred embodiment of that patent, The preferred embodiment references an illustration that portrays a bag closure that looks strikingly similar to Kwik Lok’s claimed trade dress, as demonstrated below. The text describing that preferred embodiment discloses a closure “7/8 inch in width” which has “bag-neck-confining mouth which is connected to one of the edges of the closure by 2 narrow opening[s] having widely flaring lips” and, in the corners, “[n]otches ... arranged symmetrically relative to transverse axes.” SB103.

55.Kwik Lok’s expired patent no. 3,164,-250 (“’250 Patent”) makes similar disclosures regarding the arrangements of the closures’ notches, opening, and sides (or “parallel walls,” as they are referred to in that patent, which “substantially improves the smoothness of the separation of the webs”). SB135. More specifically, the first claim of this patent requires that the webbing be “spaced far enough apart lengthwise” so that when “compressive forces applied in the plane of said strip from opposite directions respectively to said consecutive closures and through said closures to opposite ends of said web means without causing said closures to buckle.” The “compressive forces applied in opposite directions” in this claim refers to forces like those applied • by the lok track, as seen in the figure below. Because the webbing must be far enough apart, the closure is required to have a fundamentally square shape. The illustration referenced in the preferred embodiment of this patent also demonstrates the utility of the closures’ design to the claimed invention, as demonstrated below.

56, The drawings in the ’250 Patent depict Kwik Lok’s claimed trade dress and underscore the importance of using that trade dress in the efficacy of the claimed invention. SB 135. The patent demonstrates the utilitarian advantages that take place when the invention is used in connection with closures using the dimensions shown and makes clear that a bag closure that incorporates those dimensions is an inherent part of the benefit of that invention.

57. All of these elements disclosed in these patents combine to comprise Kwik Lok’s claimed trade dress configurations in this action—flat sides with an opening on one side and “notches” on the corners. The disclosure of Kwik Lok’s claimed trade dress as part of the preferred embodiment of this patent underscores the functionality of that design. See, e.g., Georgia-Pac. Consumer Prods. LP v. Kimberly-Clark Corp., 647 F.3d 723, 729 (7th Cir.2011); Berlin Packaging, LLC v. Stull Tech., Inc., 381 F.Supp.2d 792, 803 (N.D.Ill.2005); ASICS Corp. v. Target Corp., 282 F.Supp.2d 1020, 1026-28 (D.Minn.2003).

58. Kwik Lok argues that the patents do not claim the specific 90-degree V shaped opening that is part of the asserted trade dress in the mouth of the closure. But the patent claims heed not be so specific. In TrafFix, the dual springs of the traffic sign claimed in the patent were farther apart than the springs in the asserted trade dress. TrafFix, 532 U.S. at 30, 121 S.Ct. 1255. Kwik Lok’s ’250 Patent discloses the “bag confining mouth and a narrow opening located in a longitudinal side edge” SB 135, and the ’874 Patent similarly describes “a narrow opening located in a longitudinal side edge ... and communicating with said mouth for admitted a bag-neck therein, said mouth and openings being symmetrical with respect to [the] transverse axes across said strip.” SB103. Although Kwik Lok argues that there could be “nearly infinite” possibilities of a patent bearing symmetrical- sides with an opening, the opening in Kwik Lok’s -asserted trade dress falls within the • patent description.

59. Moreover, although Kwik Lok argues that the patent does not describe a functional benefit, the particular shape of the closure enables the closure to withstand the compressive forces that are applied to the closure in the 872 machine. This is plainly an important functional benefit of .the particular shape of the closure. See SB135.

60. The ’874 Patent also notes the utilitarian advantage of the bag closure having flat edges, as in Kwik Lok’s claimed trade dress: “It is also desirable that the individual closure have a cleanly formed appearance when separated from the strip [of closures], thereby to be a merchandising asset.” This invention specifically sought to have flat edges so the closure would not have “a ragged edge appearance to the individual closures [that] leaves protrusions thereon which can scratch a'person’s hands.” SB103. Kwik Lok’s expired utility patent no. 4,333,566 also cites the utility- of bag closures- having “a smooth edge with no protruding tabs.” SB37. These statements constitute clear evidence .of the utilitarian purpose of Kwik. Lok’s. claimed trade dress.

61. Therefore, because Kwik Lok’s trade dress affects the cost and quality of the closures, the asserted trade dress is- functional and cannot enjoy - trademark or trade dress protection. The disclosure in Kwik Lok’s expired patents of the features of the asserted trade dress is strong evidence - of the closure’s functionality. See TrafFix, 532 U.S. at 29-31, 121 S.Ct. 1255.

62. In their submissions, Kwik Lok and Schutte devote considerable attention to the functionality factors set out in In re Morton-Norwich, 671 F.2d 1332, 1340-41 (Fed.Cir.1982). Those factors were subsequently summarized by the Court of Appeals for the Federal Circuit:

(1) the existence of a utility patent that discloses the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design is a comparatively simple or cheap method of manufacturing the product.

Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274 (Fed.Cir.2002).

63. After TrafFix was decided in 2001, the majority of courts in this Circuit have not explicitly employed the Morton-Norwich factors but instead focused on the TrafFix test. See, e.g., Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d 114, 120 n. 4 (2d Cir.2001)(noting that the Supreme Court’s rulings in Qualitex and TrafFix “expand[ed] the functionality doctrine” and that designs that are “useful” are functional and ineligible for trademark protection); New Colt Holding Corp., 312 F.Supp.2d at 212-14; Spotless Enters., Inc. v. A&E Prods. Grp. L.P., 294 F.Supp.2d 322, 350 (E.D.N.Y.2003), aff'd, 111 Fed.Appx. 608 (Fed.Cir.2004); Malaco Leaf, AB v. Promotion In Motion, Inc., 287 F.Supp.2d 355, 365-66 (S.D.N.Y.2003); Yurman Design, Inc. v. Golden Treasure Imports, Inc., 275 F.Supp.2d 506, 511 (S.D.N.Y.2003); GTFM, Inc. v. Solid Clothing, Inc., 215 F.Supp.2d 273, 302 (S.D.N.Y.2002).

64. The only post-TrafFix case within the Second Circuit that has used the Morton-Norwich factors appears to be Telebrands Corp. v. Del Laboratories, Inc., 814 F.Supp.2d 286 (S.D.N.Y.2011). In that case, the Court appeared to apply those factors because both parties agreed that those factors should be applied. See id. at 294; cf. GTFM, Inc. v. Solid Clothing, Inc., No. 01-cv-2629, 2002 WL 31886612, at *5 (S.D.N.Y. Dec. 27, 2002) (stating that the Morton-N orwich “factors are not used in the Second Circuit”). However, in Valu Engineering, the Court of Appeals for the Federal Circuit stated that it “d[id] not understand the Supreme Court’s decision in TrafFix to have altered the Morton-Norwich analysis.” 278 F.3d at 1276.

65. As explained above, applying the TrafFix analysis, the design in the ’043 Registration and the J-NRP Product Configuration is functional because it affects the cost and quality of the product and the disclosure of functional features of the closures in expired utility patents is strong evidence that further supports a finding of functionality. For purposes of completeness, however, the Court will consider the parties’ arguments with respect to the Morton-Norwich factors which fürther support the conclusion, that the trade dress configurations in the ’043 Registration and the J-NRP Product Configuration are functional.

(1)

66. For the reasons set forth above in the discussion of Kwik Lok’s expired patents, the first Morton-N orwich factor cuts in favor of functionality. Kwik Lok obtained utility patents, now expired, which disclosed the utilitarian advantages of the designs.

(2)

67. The second Morton-Norwich factor considers alternative designs. See Valu Eng’g, Inc., 278 F.3d at 1274.

68. Kwik Lok introduced evidence and argued at trial that there are alternative bag closure designs that can perform the same function as Kwik Lok’s bag closures. As Schutte points out, Kwik Lok does not have a competitor selling bag closures that work on the 872 machine. Rather, for purposes of this litigation, Kwik Lok developed designs that it argued did not infringe on its asserted trade dress. Cooper Woodr-ing, an industrial designer, Tr. 518, developed alternative designs with the same width, thickness, and spacing as the Kwik Lok J-NRP Product Configuration to run on the 872 machine. Tr. 584-35. •

69.The designs, known as the “Circles” and “Squiggles” designs appear below. KL424-25; KL426-27. The alternative designs were made by printing the shapes on a 3-D printer, a method that Kwik Lok often employs when testing a prototype. Tr. 472.

70.The alternative designs were made from a plastic known as ABS, Acrylon-itrile-butadiene-styrene. Tr. 197. Kwik Lok’s closures are generally made from high-impact polystyrene, known as HIPS material. Tr. 198. ABS is more brittle than HIPS material, and HIPS material tends to have more tensile strength and is better able to absorb forces. Tr. 198.

71. To be probative of non-functionality, “alternative designs must be practical, feasible and effective.” McCarthy § 7:75. “The existence of actual or potential designs that work equally well strongly suggests that the particular design ... is not needed by competitors to effectively compete[.]” Valu Eng’g, 278 F.3d at 1276 (internal citation omitted). The relevance of any alternative designs is therefore contingent upon a demonstration that those designs can perform the. function of the J-NRP design equally well as that design. See, e.g., New Colt Holding, 312 F.Supp.2d at 214 (“Accordingly, for design alternatives to be probative, Plaintiffs must produce evidence that could demonstrate that the alternative design would be equally effective as a functional matter.”).

72. The evidence adduced by Kwik Lok with respect to the alternative designs does not support a factual finding that the Squiggles and Circles designs are feasible alternatives to the J-NRP closure. The alternative designs were created for the purpose of this litigation and as outlined below, are not comparable to the Kwik Lok J-NRP closure in several ways. Tr. 555. The alternative designs do not demonstrate that there are practical alternatives to the J-NRP Product Configuration and the design in the ’043 Registration; the alternatives only invite speculation about design possibilities. See Talking Rain Beverage Co. Inc. v. S. Beach Beverage Co., 349 F.3d 601, 603 (9th Cir.2003).

73. The Woodring designs were printed on a 3-D printer and were not manufactured out of the same plastic that would be used in the marketplace for the bag closures. Woodring acknowledged that the material used is “inferi- or” to the HIPS plastic used in production versions of the J-NRP and reasoned that the closures would “only run better in the proper material.” Tr. 552. An important inquiry in the functionality analysis is whether particular features of the asserted trade dress affect the cost or the quality of the article. In this case, there is no way of knowing whether the intricate designs of the Squiggle and Circles closures would increase the cost and dimmish the quality of mass-produced closures if the closures were produced by extruding HIPS plastic which is the material used for the mass-produced J-NRP closures.

74, Dr, Koch testified for example that the more complex a shape is the more complex the stamping die would be. Tr. 188. The complex stamping process would potentially make it harder and more expensive to produce the alternative designs. Tr. 189. The additional cutouts in the Squiggles and Circles designs would also create an opportunity for the lok track mechanism to malfunction. For example, the registration finger which holds the closure in place might catch on the additional cutout portions of the Circles design. Tr. 190. With respect to the Squiggles design, the irregular corners of the designs are susceptible to snagging and breaking in the lok track and at the time when a customer removes and reuses the closure. Tr, 191.

75. Moreover, the testing of the alternative designs revealed serious deficiencies with the designs. In one round of testing at Kwik Lok’s headquarters, some of the closures failed to attach to the bag. Some of the closures appear not to ■ have separated from the other closures as the closures passed through the lok track and were placed onto a bag. KL410. Some of the closures did not fully close the bag. Tr. 506. Other closures prematurely broke off before the bag was fully inserted. Tr. 508. The control group of J-NRP closures made of the same 3-D printed material did not experience any of these problems. Tr. 508-09.

76. Woodring also tested the closures by running a strip of the alternative closures through the 872 machine, and then running the strip through the lok track with actual bags of bread moving along a conveyer belt. Tr. 544. One of the tests ran three bags of bread right after the other to test whether the closures successfully closed each bag. Tr. 545. Woodring testified and videos shown at trial showed that these, tests were largely successful. The, alternative design closures successfully attached to the three bags of bread and closed the bags. KL413.

77. However, the tests run on the alternative designs are not indicative of how the closures would work on a mass scale. The 872 bag closur