                           NOT FOR PUBLICATION

                    UNITED STATES COURT OF APPEALS                            FILED
                            FOR THE NINTH CIRCUIT                             MAR 06 2015

                                                                          MOLLY C. DWYER, CLERK
                                                                            U.S. COURT OF APPEALS

MOLDEX-METRIC, INC., a California                No. 13-55446
corporation,
                                                 D.C. No. 2:11-cv-01742-GHK-
              Plaintiff - Appellant,             AGR

  v.
                                                 MEMORANDUM*
MCKEON PRODUCTS, INC., a Michigan
Corporation,

              Defendant - Appellee.


                   Appeal from the United States District Court
                       for the Central District of California
                  George H. King, Chief District Judge, Presiding

                     Argued and Submitted February 11, 2015
                              Pasadena, California

Before: CALLAHAN, WATFORD, and OWENS, Circuit Judges.

       Moldex-Metric, Inc. appeals the district court’s grant of summary judgment

in its trademark infringement action against McKeon Products, Inc. We review

grants of summary judgment de novo. Surfvivor Media, Inc. v. Survivor Prods.,



        *
             This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
406 F.3d 625, 630 (9th Cir. 2005). Having jurisdiction under 28 U.S.C. § 1291, we

reverse and remand.

       In Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the

Supreme Court addressed when a color could receive trademark protection (in that

case, the green-gold color on dry cleaning press pads). The Court held that even if

a color rendered some functionality for the product, the color could still receive

trademark protection. Id. at 166. A key inquiry under Qualitex is whether the

color “is essential to the use or purpose of the article or if it affects the cost or

quality of the article, that is, if exclusive use of the feature would put competitors

at a significant non-reputation-related disadvantage.” Id. at 165 (internal quotation

marks omitted). The Court held that the green-gold color on the dry cleaning press

pads could receive trademark protection despite some functionality, as other colors

achieved the same goal of hiding stains. Id. at 166.

       By not addressing essentiality when analyzing the functionality of the ear

plugs’ green color, the district court erred. The district court relied on the non-

exclusive factors described in Disc Golf Ass’n, Inc. v. Champion Discs, Inc., 158

F.3d 1002, 1006 (9th Cir. 1998), understanding those factors to be dispositive.

While the Disc Golf factors are “legitimate considerations,” Au-Tomotive Gold,

Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1072 n.8 (9th Cir. 2006), that “this


                                             2                                     13-55446
circuit typically considers,” Talking Rain Beverage Co. v. S. Beach Beverage Co.,

349 F.3d 601, 603 (9th Cir. 2003), a court cannot rigidly apply these factors and

ignore Qualitex’s focus on essentiality. We do not fault the district court for

overlooking Qualitex, as our precedent is less than clear in this area.

      Although we doubt summary judgment on functionality grounds would be

appropriate in this case, we leave it to the district court to assess functionality in

light of Qualitex in the first instance. See Entrepreneur Media, Inc. v. Smith, 279

F.3d 1135, 1140 (9th Cir. 2002) (“Because of the intensely factual nature of

trademark disputes, summary judgment is generally disfavored in the trademark

arena.”) (internal quotation marks omitted). Each party shall bear its own costs on

appeal.

      VACATED, REVERSED, and REMANDED.




                                            3                                     13-55446
                                                                                  FILED
Moldex-Metric, Inc. v. McKeon Products, Inc., No. 13-55446                        MAR 06 2015

                                                                               MOLLY C. DWYER, CLERK
WATFORD, Circuit Judge, dissenting:                                             U.S. COURT OF APPEALS



       The majority faults the district court for not adhering to the functionality

doctrine established by Qualitex Co. v. Jacobson Products Co., 514 U.S. 159

(1995). But as the district court recognized, Qualitex is not the last word on

functionality: Our circuit has placed its own gloss on Qualitex, which the district

court was required to follow. See Au-Tomotive Gold, Inc. v. Volkswagen of

America, Inc., 457 F.3d 1062, 1072 & n.8 (9th Cir. 2006). The district court

applied our precedent correctly, so I would affirm.

       The district court started by quoting our decision in Disc Golf Association v.

Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1998), which explains that a

“product feature is functional ‘if it is essential to the use or purpose of the article.’”

Id. at 1006 (quoting Qualitex, 514 U.S. at 165). That is the very standard the

majority suggests the district court “overlooked.” The district court then correctly

recognized that our precedent renders a product feature “essential” only if an

examination of four factors so designates it. See Au-Tomotive Gold, 457 F.3d at

1072 & n.8; Talking Rain Beverage Co. v. South Beach Beverage, 349 F.3d 601,

603 (9th Cir. 2003); Disc Golf, 158 F.3d at 1006. The district court applied that

four-factor test and, in my view, the record supports the district court’s

conclusions. The majority asserts that the district court applied the four factors too
                                                                            Page 2 of 2
rigidly, but the district court merely weighed the factors as we have instructed.

See, e.g., Talking Rain, 349 F.3d at 603 (noting that the existence of alternative

designs can’t trump the other three factors); Disc Golf, 158 F.3d at 1009 (noting

that advertising is “strong evidence of functionality” (internal quotation marks

omitted)). If the test is rigid, we have made it so.

      The district court applied the test for functionality that our circuit’s law

requires. The majority may not like that test, and I can understand why: It does

appear as though our circuit’s law has strayed from Qualitex’s core principles. But

we can’t in fairness fault the district court for refusing to revamp the test for

functionality, something that only an en banc court or the Supreme Court can do.
