                           NOT FOR PUBLICATION

                    UNITED STATES COURT OF APPEALS                           FILED
                            FOR THE NINTH CIRCUIT                            MAR 26 2014

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

BOBRICK WASHROOM EQUIPMENT,                     No. 12-56653
INC., a California Corporation,
                                                D.C. No. 2:10-cv-06938-SVW-
             Plaintiff-counter-defendant -      PLA
            Appellant,

  v.                                            MEMORANDUM*

AMERICAN SPECIALTIES, INC., a New
York Corporation,

             Defendant-counter-claimant -
            Appellee.



BOBRICK WASHROOM EQUIPMENT,                     No. 13-55471
INC., a California Corporation,
                                                D.C. No. 2:10-cv-06938-SVW-
              Plaintiff - Appellant,            PLA

  v.

AMERICAN SPECIALTIES, INC., a New
York Corporation,

              Defendant - Appellee.




        *
             This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
                    Appeal from the United States District Court
                        for the Central District of California
                    Stephen V. Wilson, District Judge, Presiding

                        Argued and Submitted March 3, 2014
                               Pasadena, California

Before: PREGERSON, PAEZ, and HURWITZ, Circuit Judges.

      Bobrick Washroom Equipment, Inc. (Bobrick) appeals a district court

judgment, entered after a bench trial, in this Lanham Act action against American

Specialties, Inc. (ASI). Bobrick alleged that ASI infringed its registered trademark

and unregistered trade dress by manufacturing and selling a washroom accessory line,

called “Roval,” that closely resembles Bobrick’s “Contura Series.” The district court

found that the registered trademark and alleged trade dress were functional and hence

invalid. Bobrick also appeals the district court’s order awarding it attorneys’ fees and

costs for ASI’s discovery misconduct.

      We review a district court’s findings of fact after a bench trial for clear error.

Oswalt v. Resolute Indus., Inc., 642 F.3d 856, 859 (9th Cir. 2011). We review the

district court’s imposition of discovery sanctions for an abuse of discretion. Leon v.

IDX Sys. Corp., 464 F.3d 951, 957–58 (9th Cir. 2006). We have jurisdiction pursuant

to 28 U.S.C. § 1291 and affirm.




                                           2
1.    The district court properly placed the burden on ASI to establish that Bobrick’s

registered trade dress was functional and on Bobrick to establish that its alleged

unregistered trade dress was nonfunctional. The district court then properly identified

and evaluated the factors enumerated in Disc Golf Ass’n v. Champion Discs, Inc., 158

F.3d 1002, 1006 (9th Cir. 1998), and concluded that both Bobrick’s registered

trademark and alleged unregistered trade dress were functional. These factual

findings of functionality were supported by ample evidence, including expert

testimony presented by ASI and an advertisement from Bobrick documenting the

functionality of the product. The district court correctly viewed the Bobrick product

design as a whole, and did not base its determination merely on the conclusion that the

component parts of the Contura Series were functional. See Secalt S.A. v. Wuxi Shenxi

Constr. Mach. Co., 668 F.3d 677, 683 (9th Cir. 2012); Clicks Billiards Inc. v.

Sixshooters Inc., 251 F.3d 1252, 1259 (9th Cir. 2001).1

2.    The district court did not abuse its discretion in imposing monetary sanctions

rather than a default judgment and refusing to draw adverse inferences as a result of

ASI’s discovery violations. Nor, given the district court’s detailed explanation for the

attorney’s fee award and the considerable discretion afforded to the district court in

1
       Because we conclude that Bobrick’s trademark and alleged trade dress are
invalid, we need not reach the district court’s alternative conclusions that Bobrick
failed to establish either secondary meaning or likelihood of confusion.

                                           3
determining fees and costs, see Lahiri v. Universal Music & Video Distrib. Corp., 606

F.3d 1216, 1222–23 (9th Cir. 2010), has Bobrick established that the district court

abused its discretion by substantially reducing the requested fees and costs.2

      AFFIRMED




2
       Bobrick’s motion to strike portions of ASI’s supplemental excerpts of record
is granted in part and denied in part. The full deposition transcripts lodged but not
filed in the district court are stricken. To the extent that excerpts of the deposition
transcripts were filed with the court and considered, however, those excerpts are
properly part of the record on appeal.
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