                                                                           FILED
                            NOT FOR PUBLICATION                             JAN 06 2011

                                                                        MOLLY C. DWYER, CLERK
                    UNITED STATES COURT OF APPEALS                       U .S. C O U R T OF APPE ALS




                            FOR THE NINTH CIRCUIT



ATLAS EQUIPMENT CO LLC, a                        No. 09-36151
Washington limited liability company,
                                                 D.C. No. 2:07-cv-01358-TSZ
              Plaintiff - Appellee,

    and                                          MEMORANDUM *

ATLAS EQUIPMENT
MANUFACTURING LTD., aka Hebei
Atlas Equipment Manufacturing, Ltd.; et
al.,

              Third-party-defendants -
Appellees,

  v.

WEIR MINERALS AUSTRALIA LTD,
an Australian public company; et al.,

              Defendants-third-party-
plaintiffs-cross-claimants - Appellants.



ATLAS EQUIPMENT CO LLC, a                        No. 10-35051
Washington limited liability company,
                                                 D.C. No. 2:07-cv-01358-TSZ
              Plaintiff - Appellant,

          *
             This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Cir. R. 36-3.
       and

ATLAS EQUIPMENT
MANUFACTURING LTD., aka Hebei
Atlas Equipment Manufacturing, Ltd.; et
al.,

               Third-party-defendants -
Appellants,

  v.

WEIR SLURRY GROUP INC, a
Wisconsin corporation; et al.,

              Defendants-third-party-
plaintiffs-cross-claimants - Appellees.



                    Appeal from the United States District Court
                      for the Western District of Washington
                  Thomas S. Zilly, Senior District Judge, Presiding

                      Argued and Submitted December 6, 2010
                               Seattle, Washington

Before: BEEZER, O’SCANNLAIN, and PAEZ, Circuit Judges.




        In No. 09-36151, Weir appeals the district court’s order granting summary

judgment to Atlas Equipment on Weir’s trade dress claim. Weir contends that the

court applied an erroneous legal standard in analyzing functionality and that there

exists a triable issue of material fact. In No. 10-35051, Atlas appeals the district

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court’s order denying in part its motion for attorneys’ fees. We have jurisdiction

under 28 U.S.C. § 1291, and we affirm in both matters.

      We typically consider four factors in determining whether a product feature

is functional: “(1) whether the design yields a utilitarian advantage, (2) whether

alternative designs are available, (3) whether advertising touts the utilitarian

advantages of the design, (4) and whether the particular design results from a

comparatively simple or inexpensive method of manufacture.” Disc Golf Ass’n,

Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998). “A product

feature need only have some utilitarian advantage to be considered functional.” Id.

at 1007. Moreover, once a court determines that a particular trade dress is

functional, it need not continue to address whether there are alternative designs.

TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33-34 (2001).

      Atlas presented undisputed evidence that each of the elements of Weir’s

purported trade dress has a utilitarian advantage. Weir presented no evidence

concerning advertising or cost of production that raised a material triable issue of

fact about the functionality of the individual features that comprise its purported

trade dress. Accordingly, the district court properly concluded that Weir’s

purported trade dress was functional as a matter of law based on the undisputed

facts on the record, and there was no need for the court to consider further evidence


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of alternative designs. Id. In addition, because the overall configuration of the

slurry pump is “nothing other than the assemblage of functional parts,” there is no

separate trade dress protection for the appearance of the pump as a whole.

Leatherman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1013 (9th Cir.

1999).

         Although Weir’s claims were ultimately unsuccessful, we agree with the

district court that this was not an “exceptional” case under the Lanham Act, 15

U.S.C. § 1117(a), because Weir did not act unreasonably or in bad faith. See

Applied Info. Scis. Corp. v. eBay, Inc., 511 F.3d 966, 973 (9th Cir. 2007) (denying

attorneys’ fees to a prevailing plaintiff). The district court therefore did not abuse

its discretion in denying attorneys’ fees to Atlas. We do not address Atlas’s

request for attorneys’ fees for this appeal, as any such request must be made by

separate motion. Ninth Cir. R. 39-1.6.

         In No. 09-36151, AFFIRMED. In No. 10-35051, AFFIRMED.




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