Premium Balloon Accessories, Inc. v. Creative Balloons Mfg., Inc., 573 F. App’x 547 (6th Cir. 2014)

Premium Balloons Accessories and Creative Balloon Manufacturing both make and sell balloon weights, which keep helium-filled balloons from flying away. In 1999, Premium sued Creative, claiming the design of Creative’s balloon weights infringed on Premium’s trade dress rights. The parties reached a settlement in that action, with Creative purchasing a license to use the designs.

Subsequently, Premium began making a heavier balloon weight. Years later, Creative introduced its own heavier weight. In response, Premium sued Creative again for trade-dress infringement, arguing that the license it sold to Creative in 1999 only covered products Premium was manufacturing at the time. Creative contended that its prior licensing agreement with Premium covered the heavier weight, and that it had not infringed on Premium’s trade-dress in any case.

On appeal from the District Court’s holding in favor of Premium, the 6th Circuit held, on two bases, that Creative had not infringed after all. First, the Court found that the new, heavier balloon weights utilized “essentially the same” trade dress as those weights at issue in 1999. According to the Court, Premium itself, in its 1999 settlement agreement with Creative, did not think that the heaviness of its weights was an essential aspect of their trade-dress.

Second, the Court found that, even if the licensing agreement did not cover Creative’s use of heavier balloon weights, Premium could not claim trade-dress infringement with respect to them because the weights themselves were functional, and because the design of the weights had acquired no secondary meaning in the marketplace. Since the Court determined that the weight designs served a functional purpose, it would not offer Premium a monopoly over “a significant benefit that other designs would not confer.”

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