Case 8:15-cv-00246-DOC-DFM Document 217 Filed 09/15/16 Page 1 of 14 Page ID #:5785

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UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

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SOUTHERN DIVISION

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Case No.: SACV 15-0246-DOC (DFMx)

TOYO TIRE & RUBBER CO., LTD., ET

AL.,
Plaintiff,

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ORDER RE: MOTION FOR

SUMMARY JUDGMENT ON TRADE
DRESS CLAIM (FUNCTIONALITY
AND GENERICNESS) AND 17200
CLAIM [158]

vs.

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CIA WHEEL GROUP, ET AL.,

Defendant.

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Before the Court is Defendant CIA Wheel Groups (Defendant) Motion for Summary

Judgment on Trade Dress Claim (Functionality and Genericness) and 17200 Claim (Motion)

(Dkt. 158).1
Facts2

I.

This case arises from Defendants alleged infringement of Plaintiffs Toyo Tire & Rubber

Company, Ltd., and Toyo Tire U.S.A Corporations (Plaintiffs or Toyo) trade dress in the

pattern of Plaintiffs Open Country M/T (OPMT) tire tread. See generally First Ammended

Complaint (FAC) (Dkt. 75). Plaintiffs bring claims for (1) trade dress infringement under 15

U.S.C. 1125; (2) fraud; (3) breach of contract; (4) unfair competition in violation of

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California Business and Professions Code 17200 et seq.; (5) declaratory judgment of patent

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invalidity; and (6) declaratory judgment of patent unenforceability. As relevant here, Toyo

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alleges that Defendant used a tire tread pattern in Defendants AMP tire that violated Toyos

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protectable trade dress interest in the overall appearance of its OPMT tires. See generally id.
Plaintiffs claim the OPMT Trade Dress is characterized by an aggressive tread design

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with hook-shaped blocks and scalloped shoulder blocks. Id. 27. Toyo only seeks to claim the

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two-dimensional pattern created by the blocksnot the

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three dimensional structure created by the grooves between

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the blocks or the placement of thin shallow channels cut

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into the blocks known as sipes. Plaintiffs Response to

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Statement of Uncontroverted Facts (Plaintiffs RSOU)

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(Dkt. 188) No. 7. To the side, the claimed trade dress is

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highlighted in blue. Id. No. 6.3

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The Memorandum of Points and Authorities in support of the Motion was filed separately (Dkt. 160). Future references to
Motion or Mot. are to the Memorandum of Points and Authorities.
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Unless the Court indicates otherwise, to the extent any of these facts are disputed, the Court concludes they are not material
to the disposition of the Motion. Further, to the extent the Court relies on evidence to which the parties have objected, the
Court has considered and overruled those objections. As to any remaining objections, the Court finds it unnecessary to rule
on them because the Court did not rely on the disputed evidence.
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The Court notes there has been some confusion and dispute regarding the precise elements that make up the claimed trade
dress. Reply at 911. However, the Court will employ this definition, since it comes both from Plaintiffs complaint, and
their Opposition. Further, the Court notes that in oral argument and in its Reply, Defendant argued that Plaintiff cannot have
trade dress in the two-dimensional tread. Reply at 10. Defendant argued both that two-dimensional trade dress is improper in
a product configuration claim, and that it makes no sense to claim a two-dimensional trade dress as the tread exists only in
three dimensions. Id. The Court understands Plaintiffs, in this explanation of their trade dress, to disclaim any trade dress
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A.

Design and Utility of the OPMT Tire Tread

In the early 2000s Toyo designed the OPMT tire by looking to other tires in the

marketplace. Plaintiffs RSOU No. 4. Plaintiffs contend they set themselves apart from the field

by using curved lines in their tire tread. Id. Toyo does not have a registered trademark on the

OPMT tire treadnor have they sought to register it as a trademark. Id. Nos. 2, 19.

In designing the tire tread, Toyo claims they focused on the aesthetics of the tire and

decided that the ultimate tire tread pattern would be selected only by [its] distinctive

appearance but not by function. Declaration of Masaaki Ohara (Ohara Declaration) (Dkt.

192-1) 1516. However, the same employee indicated performance was among the

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characteristics considered in designing the tire tread. Peter Afrasiabis Declaration in Support

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of Application (Afrasiadi Decl.) (Dkt. 160), Exhibit J at 6970 (stating one of the

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specifications for the tire was that the tread would have good off-road traction).

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A Toyo employee stated in depositions that a proper tread design improves handling

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and traction. See Afrasiadi Decl., Exhibit B at 88: 114. Further, the same Toyo employee

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explained that tread pattern affects a tires tread life. Afrasiadi Decl., Exhibit I at 172:69. The

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size and shape of the blocks also affects the noise made by a tire. Plaintiffs RSOU No. 26.

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During the design process of the OPMT, Toyo designers discussed that the angle of the

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shoulder block would affect the mud-rock performance of the tire. Id. No. 89. In depositions

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one of Toyos tire engineers stated that [a]ny change to the tread designs going to potentially

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affect performance and the way the tire looks. Id. No. 63. The tread elements provide both a

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performance and they contribute to the look of the tire. Id. No. 28.

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However, Plaintiffs expert, Charles Patrick, stated that the two-dimensional shape of

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the blocks, which is the focus of the trade dress, provides little advantage by itself. Opposition

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to CIA Wheel Groups Motion for Summary Judgement (Opposition) (Dkt. 186), Declaration

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of Charles Patrick (Patrick Decl.) 39. Instead, it is the three-dimensional shape of the

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blocks, in combination with the polymers used to form the blocks, and the tire carcass upon

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which they are formed, that provide a utilitarian advantage to the tire. Id. Patrick also states that

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interest in the nature of the grooves cut in to the tire. Plaintiffs have conceded that the depth and internal shape of the grooves
is functional. See Charles Patrick 39. The Court does not find this description of the trade dress improper as a matter of law.
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if the tread design had not been driven by looks, Toyo would have designed a tire that performed

better. Id. 23.

B.

Toyo describes the tread as aggressive. Plaintiffs RSOU No. 20A. In doing so, Toyo

Advertising of the OPMT Tire Tread

states it seeks to project an image of capability. Id. In a press release, Toyo has claimed the

hook-shaped attack tread ensures a solid grip in sand and gravel and on steep rock. See

Afrasiadi Decl., Exhibit A-142. Defendant has also provided numerous instances where Toyo

described the performance benefits of the tires design on their websites. See Defendants

Statement of Undisputed Facts (Defendants SOU) Nos. 105107; 110; 113. For example, one

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website posting reads as follows:

Aggressive, Attack Tread Design with Hook [S]haped [B]locks
Delivers excellent off-road traction and great on-road performance.

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Open, Scalloped Shoulder Blocks

Bite into the ground and help to eject mud, snow, and rocks while

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maintaining off-road traction.

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Afrasiadi Decl., A-121.

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Toyos tire expert states that regardless of whether the Toyo advertising also touts the

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utilitarian advantages of the design, it . . . also features the tread which also communicates the

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style of the tread. Oppn, Declaration of Charles Patrick (Patrick Declaration) 33. Toyos

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expert states that CIA Wheel Group also advertises its tire tread in terms of looks rather than in

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terms of performance. Id. 35.

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C.

Method of Manufacture and Alternative Designs

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The OPMT tire tread pattern has no impact on the cost of manufacturing. Patrick

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Declaration 2526. There are thirty to forty tires that compete with the OPMT tire for market

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share. Plaintiffs RSOU No. 168. Toyo offers the testimony of a tire expert who explains that

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simply because a tire looks like the OPMT, does not mean the tire performs like the OPMT,

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because performance does not depend on looks. Patrick Declaration 30. Patrick further

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states that many other tires on the market can perform equal to or even better than the OPMT.
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Id. 23. Additionally Patrick states that Toyos exclusive use of the OPMT tread has

absolutely no effect on the competition. Id. 27.

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Secondary Meaning

Toyo has offered expert testimony that the OPMT tread has acquired distinctiveness.

The expert based this conclusion off of consumer testimony, length of the use of the trade dress,

marketing of the tire, and the sales of the OPMT tire. Oppn, Declaration of Larry Chiagouris

(Chiagouris Decl.) 15. In depositions, Toyo employees stated that off-road tire enthusiast

know the Toyo OPMT. Plaintiffs RSOU No. 172. However, in depositions when asked to

describe the message the tire tread conveyed to consumers, Toyos advertising employees

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described the tire as conveying ruggedness and general capability, but did not describe the

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tread as a source identifier. Defendants SOU Nos. 172173. Further in depositions, some of

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Plaintiffs marketing employees struggled to identify pictures of tire treads as belonging to

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particular companies. Plaintiffs RSOU No. 171.

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II.

Procedural History

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Toyo filed their complaint on February 2, 2015. (Dkt. 1). Toyo filed their First Amended

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Complaint, the operative complaint, on February 4, 2016. (Dkt. 75). CIA Wheel Group filed its

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Motion for Summary Judgment on August 8, 2016 (Dkt. 158). On August 16, 2016, Defendant

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Doublestar Dong Feng Tyre joined in CIA Wheel Groups Motion for Summary Judgment

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(Dkt. 168). Plaintiffs opposed on August 22, 2016 (Dkt. 186), and Defendant replied on August

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29, 2016 (Dkt. 195).

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III.

Legal Standard

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Summary judgment is proper if the movant shows that there is no genuine dispute as to

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any material fact and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P.

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56(a). Summary judgment is to be granted cautiously, with due respect for a partys right to

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have its factually grounded claims and defenses tried to a jury. Celotex Corp. v. Catrett, 477

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U.S. 317, 327 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). A court must

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view the facts and draw inferences in the manner most favorable to the non-moving party.

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United States v. Diebold, Inc., 369 U.S. 654, 655 (1992); Chevron Corp. v. Pennzoil Co., 974
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F.2d 1156, 1161 (9th Cir. 1992). The moving party bears the initial burden of demonstrating the

absence of a genuine issue of material fact for trial, but it need not disprove the other partys

case. Celotex, 477 U.S. at 323. When the non-moving party bears the burden of proving the

claim or defense, the moving party can meet its burden by pointing out that the non-moving

party has failed to present any genuine issue of material fact as to an essential element of its

case. See Musick v. Burke, 913 F.2d 1390, 1394 (9th Cir. 1990).
Once the moving party meets its burden, the burden shifts to the opposing party to set

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out specific material facts showing a genuine issue for trial. See Liberty Lobby, 477 U.S. at 248-

49. A material fact is one which might affect the outcome of the suit under the governing

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law . . . . Id. at 248. A party cannot create a genuine issue of material fact simply by making

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assertions in its legal papers. S.A. Empresa de Viacao Aerea Rio Grandense v. Walter Kidde &

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Co., Inc., 690 F.2d 1235, 1238 (9th Cir. 1982). Rather, there must be specific, admissible,

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evidence identifying the basis for the dispute. Id. The court need not comb the record looking

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for other evidence; it is only required to consider evidence set forth in the moving and opposing

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papers and the portions of the record cited therein. Fed. R. Civ. P. 56(c)(3); Carmen v. S.F.

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Unified Sch. Dist., 237 F.3d 1026, 1029 (9th Cir. 2001). The Supreme Court has held that [t]he

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mere existence of a scintilla of evidence . . . will be insufficient; there must be evidence on

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which the jury could reasonably find for [the opposing party]. Liberty Lobby, 477 U.S. at 252.
Because of the intensely factual nature of trademark disputes, summary judgment is

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generally disfavored in the trademark arena. Entrepreneur Media, Inc. v. Smith, 279 F.3d

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1135, 1140 (9th Cir. 2002).

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IV.

Analysis

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Defendant seeks summary judgment on the grounds that (1) the tire tread is functional,

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and therefore cannot be protected under the Lanham Act; and (2) the OPMT tread is generic.

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See generally Mot.4 The Court will address these arguments in turn.

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The caption for the Motion also mentions the Unfair Competition Claim under 17200. However, in the Motion, the
Defendant does not mention the 17200 claim. Thereforeas Defendant has provided no basis for the Court to grant
summary judgment for the Defendant as to the unfair competition claimthe Court will not address it.
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A. Functionality
The Lanham Act prohibits any person from using anothers trade dress in commerce in

connection with any goods or services. 15 U.S.C. 1125(a). Trade dress is the total image,

design, and appearance of a product and may include features such as size, shape, color, color

combinations, texture or graphics. Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252,

1258 (9th Cir. 2001) (citing Intl Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th

Cir. 1993)). Trade dress is the composite tapestry of visual effect, and in trade dress cases

the mark must be examined as a whole, not by its individual constituent parts. Clicks

Billiards, Inc. v. Sixshooters, Inc., 251 F.3d at 1259 (citation omitted) (emphasis added).

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Although there can be trade dress protection for product designs and product shapes,

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protection is not available for product features that are functional. Alphaville Design, Inc. v.

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Knoll, Inc., 627 F. Supp. 2d 1121, 1132 (N.D. Cal. 2009) (citing Qualitex Co. v. Jacobson

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Prods. Co., 514 U.S. 159, 165 (1995)). [F]unctionality doctrine prevents trademark law, which

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seeks to promote competition by protecting a firm's reputation, from instead inhibiting

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legitimate competition by allowing a producer to control a useful product feature. Qualitex Co,

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514 U.S. at 164.

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The Ninth Circuit typically considers four factors in the functionality analysis: (1)

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whether the design yields a utilitarian advantage, (2) whether the particular design results from

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a comparatively simple or inexpensive method of manufacture, (3) whether advertising touts

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the utilitarian advantages of the design, and (4) whether alternative designs are available.

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Talking Rain Beverage Co. Inc. v. South Beach Beverage Co., 349 F.3d 601, 603 (9th Cir.

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2003) (citing Disc Golf, 158 F.3d 1002, 1006 (9th Cir. 1998)). Collectively, these are known as

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the Disc Golf factors.

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After the Supreme Courts decision in TrafFix, the Ninth Circuit somewhat modified

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how courts approach the Disc Golf factors. Now, as part of the Disc Golf factors, courts assess

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whether the trade dress is essential to the use or purpose of the article [or] affects [its] cost or

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quality. Millennium Labs., Inc. v. Ameritox, Ltd., 817 F.3d 1123, 1129 (9th Cir. 2016)

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(alteration in original) (quoting TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32
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33 (2001)). Once functionality is established, [t]here is no need . . . to engage . . . in

speculation about other design possibilities . . . . TrafFix, 532 U.S. at 33. Therefore, the

existence of alternative designs themselves cannot negate a trademarks functionality under the

traditional rule. See Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 (1982). But the

existence of alternative designs may indicate whether the trademark itself embodies functional

or merely ornamental aspects of the product. TrafFix, 532 U.S. at 34.

Additionally, post-TrafFix, courts also consider whether protection of a feature as trade

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dress would impose a significant non-reputation-related competitive disadvantage.

Millennium Labs., 817 F.3d at 1129 (citing TrafFix, 532 U.S. at 33).
It falls to the party asserting trade dress protections to disprove functionality. Secalt S.A.

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v. Wuxi Shenxi Const. Mach. Co., 668 F.3d 677, 683 (9th Cir. 2012) (15 U.S.C. 1125(a)(3)).

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Further, some cases suggest that in order to establish nonfunctionality the party with the

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burden must demonstrate that the product feature serves no purpose other than identification.

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Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, 1531 (9th Cir. 1992), as amended (Jan.

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6, 1993) (citing Keene Corp. v. Paraflex Indus., Inc., 653 F.2d 822, 826 (3d Cir. 1981).

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Ultimately, to qualify as trade dress, the entire design must be arbitrary or non de jure

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functional. Leatherman, 199 F.3d at 1012 (Textron, Inc. v. U.S. Int'l Trade Commn, 753 F.2d

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at 1025).
It is more difficult to assert a trade dress interest in a product configuration than in

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packagingconfiguration is both less likely to signify source than packaging, and more likely

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to be functional. See Leatherman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1013

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(9th Cir. 1999). Further, while trade dress must be evaluated as a whole,
where the whole is nothing other than the assemblage of functional parts, and
where even the arrangement and combination of the parts is designed to result in
superior performance, it is semantic trickery to say that there is still some sort of
separate overall appearance which is non-functional.

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Id.
With this in mind, the Court will consider each of the Disc Golf factors in turn and then
evaluate the aesthetic functionality as required under TrafFix.
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Utilitarian Advantage

Under Disc Golf, [a] product feature need only have some utilitarian advantage to be

considered functional, but a product feature need not provide superior utilitarian advantages

to be considered functional. Id. at 1007 (citing Sega, 977 F.2d at 1531); see also Apple Inc. v.

Samsung Elecs. Co., 786 F.3d 983, 992 (Fed. Cir. 2015), cert. granted in part, 136 S. Ct. 1453

(2016). This rule does not require, however, that no element of the claimed trade dress has a

utilitarian function. The proper inquiry is not whether individual features of a product are

functional or nondistinctive but whether the whole collection of features taken together are

functional or nondistinctive. Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d

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1042, 1050 (9th Cir. 1998).

There is also a distinction between an object which is de jure functional and de facto

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functional. Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 785 (9th Cir. 2002). A product is de

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jure functional if the product is in its particular shape because it works better in this shape. Id.

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The Ninth Circuit has explained that even though a bottle is a de facto functional holder of

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liquid, the bottles configuration may still qualify for trademark protection if its physical details

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are nonfunctional and have acquired secondary meaning. Id. However, once the features of

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bottle are designed to be functional, the bottle can no longer be protected as trade dress. See

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Talking Rain Beverage, 349 F.3d at 603 (finding there was no protectable trade dress in a bottle

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where the bottle had been designed with a grip feature that made the bottle easier to hold,

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allowed the bottle to fit easily into a bicycle bottle holder, and helped the bottle maintain its

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shape for reuse.).

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A utility patent covering the trade dress is weighty evidence of functionality, although

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that fact alone is not dispositive. Disc Golf, 158 F.3d at 1006. Defendant contends that because

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many individual aspects of the tread design are covered by utility patents, the overall design is

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functional. Mot. at 15. However, [c]ourts have repeatedly cautioned that, in trademark-and

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especially trade dress-cases, the mark must be examined as a whole, not by its individual

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constituent parts. Clicks Billiards, 251 F.3d at 1259; see also Stephen W. Boney, Inc. v. Boney

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Servs., Inc., 127 F.3d 821, 828 (9th Cir. 1997) (Trade dress is the totality of elements in which
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a product or service is packaged or presented.). Toyo is not arguing Defendant, in its tire

design, cannot adopt any of the individual features outlined in the patents or used in the OPMT

tread. Toyo objects only to Defendant adopting the same, or a confusingly similar, overall

design. The overall design is not the subject of a utility patenttherefore the existence of the

individual utility patents does not weigh in favor of summary judgment.

Further, the Ninth Circuit has suggested that a tire pattern can be considered trade dress.

The Ninth Circuit found that a plaintiff had shown it had a fair chance of proving non-

functionality where, although all alternating-tread tires serve a self-cleaning purpose, the

specific angle and spacing of the lug bars on the tire produced a tread pattern [that] . . . was

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purely aesthetic. OTR Wheel Engg, Inc. v. W. Worldwide Servs., Inc., 602 F. Appx 669, 671

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(9th Cir. 2015).

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Here, Toyo argues that the practical benefits of the tread design are incidental to its

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aesthetic benefits and contends the design process was undertaken with aesthetics as the only

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goal. See Ohara Declaration 1516. Defendant has cited evidence concerning the fact that the

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individual elements of the tread design are functional. See Plaintiffs RSOU Nos. 26, 89.

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Further, some testimony suggests Toyo was not wholly oblivious to function when they

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designed the OPMT. Afrasiadi Decl., Exhibit J at 69-70. Additionally, [a]ny change to the

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tread designs going to potentially affect performance and the way the tire looks. Plaintiffs

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RSOU No. 63. However, just because elements of the tire tread are functional does not mean

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that the overall design cannot be protected by trade dress. See Kendall-Jackson Winery, 150

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F.3d at 1050; OTR Wheel Engg, Inc., 602 F. Appx at 671.

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Plaintiffs offer expert testimony that the two-dimensional shape of the blocks, which is

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the focus of the trade dress, provides little advantage by itself. Patrick 39. Further, Toyos

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expert has stated that the tire performs worse than other tires in the field because it was

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designed for looks rather than its performance. Id. 23. Patricks testimony suggests that, while

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the tire tread performs the de facto function of contacting the road, the tread, as an overall

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design, has no de jure functionality. See Tie Tech, 296 F.3d at 785.

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Also relevant, Defendant has a design patent on their AMP tire tread pattern. Design

Patent No. D691, 943. Design patents are available exclusively for ornamental designs, 35

U.S.C.A. 171, whereas patterns that are functional are the proper province of utility patents.

Defendant points out that they did not personally obtain the design Patent, Design Patent

Application (Dkt 195-2), nor is a design patent dispositive of a trade dress claim. Secalt, 668

F.3d at 685. Nonetheless, that a design patent covers a tire tread that Plaintiffs contend is

highly similar to the OPMT casts doubt on Defendants argument that the tread is functional.

See McCarthy on Trademarks and Unfair Competition, 7:93 (4th ed. 2010).

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Based on this evidence, this Court finds there are material disputes of fact as to whether
the OPMT tread design yields a utilitarian advantage.
2.

Advertising Touting Utilitarian Elements

If a seller advertises the utilitarian advantages of a particular feature, this constitutes

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strong evidence of functionality. Disc Golf, 158 F.3d at 1009. An inference of a product

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features utility in a plaintiffs advertisement is enough to weigh in favor of functionality of a

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trade dress encompassing that feature. Id.

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Toyo argues their advertising focuses on the aesthetic features of the tire tread, touting

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the aggressive look of the tread. Patrick Declaration 33. Toyo also points to CIA Wheel

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Groups marketing of the AMP tire specifically sells the look of the tires over the function. Id

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35. However, Defendant has provided evidence that on their websites Toyo highlights the

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functional advantages of their tire tread. Defendants SOU Nos. 105107, 110, 113. On the

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website, Toyo has stated that the tread design delivers excellent off-road traction and great on-

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road performance. Mot., Exhibit A-121. Toyo attempts to discount these statements, by

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arguing they do not sell directly to consumers, and such statements are meant to educate and

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therefore are not advertising. See Plaintiffs RSOU No 107. The Court is unpersuaded by this

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argument. On their website, Toyo is touting the performance of their tire tread to the general

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public to attract attention and salesthat is an advertisement regardless of whether Toyo sells

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the tires on the website.

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These facts weigh against Plaintiffs claim of non-functionality. However, the Court

does not find this factor to be dispositive. Toyo has offered evidence that it is the three-

dimensional aspects of the tirethe depth of the groves and their internal shapethat impacts

traction, not the two dimensional tire tread pattern. Charles Patrick 39. A jury could find

Toyos advertisements refer to the impact three-dimensional factors have on performance,

rather than the impact of the two dimensional trade dress. Also, to the extent the advertisements

do promote the two-dimensional tread design, a jury could find these statements were mere

puffery and did not actually reflect that the design yielded a true utilitarian advantage. In spite

of advertising that states the tire performs well, Toyo might still have a protectable trade dress

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interest in the tread.

3.

Method of Manufacture

Courts also considers whether the design offers economies in manufacture or use, such

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as being relatively simple or inexpensive to manufacture. Disc Golf, 158 F.3d at 1009. Toyo

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has offered undisputed expert testimony that the OPMT tire tread pattern has no impact on the

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cost of manufacturing. Patrick 2526.

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Accordingly, this factor does not weigh in favor of a finding of functionality.

4.

Alternative Designs Available

The final factor to consider is the availability of alternative designs that offer exactly

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the same features. Leatherman, 199 F.3d at 101314 (emphasis orginal). A manufacturer

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does not have rights under trade dress law to compel its competitors to resort to alternative

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designs which have a different set of advantages and disadvantages. Id.

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Toyo argues that the presence of thirty to forty competitor tires demonstrates that there

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are numerous alternative designs for aggressive tires. Further, Toyo has offered expert

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testimony that the other tires on the market perform equal to or even better than the OPMT.

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Patrick 23. Toyo has therefore offered evidence that there alternative designs available. Thus,

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this factor does not weigh in favor of summary judgment against defendant.

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5.

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Aesthetic Functionality

Aesthetic functionality comes into play when trademark protection of a mark or design

would impose a significant non-reputation-related competitive disadvantage. Au-Tomotive

Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1072 (9th Cir. 2006) (citations omitted).

[A]esthetic functionality has been limited to product features that serve an aesthetic purpose

wholly independent of any source identifying function. Millennium Labs, 817 F.3d at 1131

(citing Au-Tomotive Gold., 457 F.3d at 1062). Here Toyo has argued that the OPMT tread

serves a source identifying function. Chiagouris Decl. 15, Therefore, Toyo has offered

enough evidence to require a jury to assess the question of aesthetic functionality.

6.

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Conclusion

Because the Court finds there are material disputes of fact as to whether the tire yields a

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utilitarian advantage and ultimately is functional, the Court finds that summary judgment is

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inappropriate on the issue of functionality.

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B.

Genericness

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[T]rade dress claims raise a potent risk that relief will impermissibly afford a level of

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protection that would hamper efforts to market competitive goods.Yurman Design, Inc. v. PAJ,

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Inc., 262 F.3d 101, 115 (2d Cir. 2001) (internal citations omitted). To assess genericness in the

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context of trade dress a court considers whether (1) the designs definition is overbroad or too

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generalized; (2) the design is the basic form of a type of product; or (3) the design is so

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common in the industry that it cannot be said to identify a particular source. Walker & Zanger,

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Inc. v. Paragon Indus., Inc., 549 F. Supp. 2d 1168, 1175 (N.D. Cal. 2007).

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As to the first factor, Toyo defines their trade dress as characterized by an aggressive

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tread design with hook-shaped blocks and scalloped shoulder blocks. FAC 27. Toyo has

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asserted that their tire design is distinct from the field. Plaintiffs RSOU No. 4. Defendant

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strongly disagrees, and offers evidence that there are some commonalities between Toyos

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tread and competitor treads. See id. Nos. 16970. The Court finds there are disputes of material

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fact regarding whether this definition is so generalized as to be generic.

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As to the second factor, Defendant has not alleged that the OPMT design is the basic
form of an aggressive tread, nor does the Court see any basis to conclude it is.
Finally, as to the third factor, the Court finds there are material disputes of fact regarding

whether the OPMT tread serves as a source iYesdentifier. Toyo has offered expert testimony

that the OPMT tire tread has acquired distinctiveness in the market. Chiagouris Decl. 15.

Further, in depositions Toyos advertising employee stated that the OPMT tread is well known

in the target market for the tire. Plaintiffs RSOU No. 172. Defendant disputes these

contentions and offers evidence that the tread is not a brand identifier. Defendants SOU Nos.

171173.

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There are material disputes of fact regarding whether the factors that courts use to

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evaluate the genericness of trade dress are met here. Therefore, the Court declines to grant

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summary judgment on the issue of genericness.

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V.

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For the foregoing reasons, the Court DENIES Defendants Motion for Summary

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Disposition

Judgment.

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DATED: September 15, 2016

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DAVID O. CARTER
UNITED STATES DISTRICT JUDGE

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