Solo Cup Operating Corp. v. Lollicup USA, Inc., No. 16 C 8041, Slip Op. (N.D. Ill. May 17, 2017) (Lefkow, J.).
Judge Lefkow granted plaintiff Solo Cup’s Fed. R. Civ. P. 12(b)(6) motion to dismiss several of defendant Lollicup’s counterclaims in this trademark dispute involving Solo Cup’s product configuration mark or trade dress for its “Traveler” coffee-cup lid.
Fradulent Procurement Counterclaims & Affirmative Defenses
Lollicup alleged that Solo Cup fraudulently procured its Traveler registration, despite having disclosed its relevant patents during examination, by making inconsistent statements about the functionality of the elements to the relevant patent examiner and the relevant trademark examiner. But because the trademark examiner had the prosecution history of the patents and, therefore, was in a position to examine Solo Cup’s statements and choose whether or not to agree with them, there was not a reasonable inference of fraudulent intent.
False Advertising Counterclaim
Lollicup could not make a claim for false advertising based upon Solo Cup’s use of a registration symbol – ® – because Solo Cup’s mark was registered. The fact that Lollicup is challenging the registration does not change that, unless and until the mark was canceled or abandoned.
Unconstitutionality & Preemption
There is no per se prohibition against features disclosed in an expired patent being given trademark protection. In fact, the guarantee against using trademark registration to extend the life of a patent monopoly is the functionality doctrine.