     Case: 11-10887     Document: 00512023249         Page: 1     Date Filed: 10/17/2012




            IN THE UNITED STATES COURT OF APPEALS
                     FOR THE FIFTH CIRCUIT  United States Court of Appeals
                                                     Fifth Circuit

                                                                            FILED
                                                                         October 17, 2012

                                       No. 11-10887                        Lyle W. Cayce
                                                                                Clerk

POLY-AMERICA, L.P.,

                                                  Plaintiff-Appellee
v.

STEGO INDUSTRIES, LLC,

                                                  Defendant-Appellant



                   Appeal from the United States District Court
                        for the Northern District of Texas
                             USDC No. 3:08-CV-2224


Before DAVIS, SMITH, and DENNIS, Circuit Judges.
PER CURIAM:*
        Poly-America, L.P. (“Poly-America”) filed suit against Stego Industries,
LLC (“Stego”), seeking declaratory judgment that: (1) Stego did not have a claim
for trademark infringement under the Lanham Act, 15 U.S.C. §§ 1051-1127; (2)
Stego’s yellow color mark for vapor barrier is not a registrable trademark in the
United States Patent and Trademark Office (“PTO”); (3) Stego had no common
law right to its trademark and could not assert trade dress protection under §
43 of the Lanham Act, 15 U.S.C. § 1125; and (4) Stego engaged in unfair

        *
         Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not
be published and is not precedent except under the limited circumstances set forth in 5TH CIR.
R. 47.5.4.
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                                  No. 11-10887

competition by making false or fraudulent declarations to the PTO. The district
court issued a declaratory judgment, holding that Stego’s trademark of the color
yellow in vapor barrier is not registrable under the Lanham Act and that Stego
has no common law trademark rights to yellow vapor barrier, and enjoined Stego
Industries from pursuing infringement litigation against Poly-America. The
district court also held that Poly-America failed to show that Stego fraudulently
procured PTO registration for its yellow color mark. Both parties now appeal.
      A product feature is de jure functional and therefore cannot be registered
or protected by trademark law “when it is essential to the use or purpose of the
device or when it affects the cost or quality of the device.” Traffix Devices, Inc.
v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001); see also Qualitex Co. v.
Jacobson Prods. Co., Inc., 514 U.S. 149, 165 (1995); Inwood Laboratories, Inc. v.
Ives Laboratories, Inc., 456 U.S. 844, 850 n.10 (1982). “[I]f a product feature is
‘the reason the device works,’ then the feature is functional.” Eppendorf-
Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 355 (5th Cir. 2002). The
district court determined that the yellow color mark in vapor barrier—which is
a plastic sheeting laid beneath concrete slab foundations—was de jure functional
because the color made it easier to spot and therefore fix holes and gaps in the
plastic sheeting that prevented moisture and vapor gas from migrating from the
ground into the concrete slab foundation of buildings; and because it decreased
heat absorption on worksites, which kept worksites cooler and prevented the
expansion of vapors beneath the vapor barrier. The district court then concluded
that Stego had no common law right to trade dress protection, because “trade
dress protection may not be claimed for product features that are functional.”
Traffix, 532 U.S. at 29; see also 15 U.S.C. § 1125(a)(3). The district court also
determined that Poly-America failed to prove that Stego fraudulently procured
its registration. Stego’s application contained Stego advertisements that



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                                No. 11-10887

discussed the yellow color mark’s utilitarian purposes and Poly-America did not
show that Stego otherwise attempted to deceive the PTO.
      After reviewing the record, studying the briefs, and listening to oral
arguments, we AFFIRM the judgment of the district court for essentially the
same reasons given by the district court in its Memorandum Opinion and Order
of July 27, 2011.
      AFFIRMED.




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