Hillside Plastics, Inc. v. Dominion & Grimm USA, Inc. et al. (17-cv-30037).

Hillside owns a trademark registration for the design of its “Sugarhill Jug” plastic maple syrup jugs, and accuses Dominion of violating that trade dress. Dominion moved for judgment on the pleadings, on the grounds that the trade dress was invalid as functional.

Sugarhill Jug

The trademark application had, in fact, initially been refused because of functionality concerns, but Hillside was able to overcome the refusal with evidence of the many alternative designs for syrup jugs. Dominion, once a Hillside distributor, began offering the accused jugs in 2016. Magistrate Judge Robertson recommended denial of Dominion’s motion. She noted that, as the trade dress is registered and incontestable, Dominion bears the burden of demonstrating functionality. Further, functionality is a question of fact, and Dominion was unable to demonstrate through the pleadings that the designs were factually functional. Judge Robertson did grant Dominion’s motion to stay discovery pending appeal of her recommendation to the District Court judge.

Upaid Systems, Ltd. V. BCL, Inc. d/b/a Superwash (18-cv-10718).

Upaid filed suit against Superwash in April, accusing Superwash of infringing Upaid’s 8,976,947 patent through Superwash’s cashless laundry system. Judge Stearns granted Superwash’s motion to stay the litigation pending the outcome of Upaid’s Illinois infringement suit against CCI, the manufacturer of Superwash’s payment systems. He found that staying served judicial economy because the cases involved substantially similar claims and because Superwash agreed to be bound by issues of fact and law finally resolved in the Illinois action.