Free Order on Motion for Summary Judgment - District Court of Connecticut - Connecticut

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UNITED STATES DISTRICT COURT DISTRICT OF CONNECTICUT

NEW COLT HOLDING CORP., ET AL Plaintiffs vs.

RJG HOLDINGS OF FLORIDA, INC., ET AL Defendants

: : : : : : : : :

Case No: 3:02cv173 (PCD)

RULING ON CROSS-MOTIONS FOR SUMMARY JUDGMENT Pursuant to Fed. R. Civ. P. 56, Plaintiffs and Defendants have filed cross-motions for summary judgment. For the reasons stated herein, Plaintiffs' Motion [Doc. No. 157] is granted in part, denied in part and Defendants' Motion [Doc. No. 144] is granted in part, denied in part. Additionally, Defendants' Motions to Strike [Doc. Nos. 186 and 193] are denied. I. BACKGROUND: Plaintiffs New Colt Holding Corporation and Colt's Manufacturing Company, Inc. brought this action against RJG Holdings of Florida, Inc f/k/a American Western Arms and AWA International, Inc. t/a American Western Arms alleging violations of the Lanham Act. 15 U.S.C. § 1051, et seq. (LEXIS 2004) and the Connecticut Unfair Trade Practices Act ("CUTPA"), Conn. Gen. Stat. §42-110b(a) (LEXIS 2004). Pursuant to Sections 32, 43(a), and (c) of the Lanham Act, 15 U.S.C. §§ 114, 1125(a), and (c), Plaintiffs allege infringement of the trade dress of their Peacemaker revolver (Count One), dilution of the trade dress of the Peacemaker revolver (Count Two), infringement of their registered trademarks "Peacekeeper"

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(Count Three) and "Rampant Colt (Count Four), infringement of Plaintiffs' unregistered marks "Peacekeeper" (Count Five) and "Armsear Crest" (Count Six), federal unfair competition (Count Seven), and unfair competition under state law pursuant to the CUTPA, Conn. Genn. Stat. §42110b(a) (Count Eight). Defendant AWA asserts five counterclaims against Plaintiffs. Pursuant to the Lanham Act, 15 U.S.C. § 1125(a)(1), Defendant AWA alleges false designation of origin claims as to whether Plaintiffs' Cowboy revolver is manufactured in the USA and false advertising concerning historical significance (First Counterclaim). Defendant AWA also alleges false designation of origin in as much as Plaintiffs mark their revolvers as manufactured in Hartford, Connecticut (Second Counterclaim). A violation of the CUTPA, Conn. Gen. Stat. § 42-110a et seq, is asserted when Plaintiffs filed a letter of protest with respect to Defendant's attempt at registration of the mark "Peacekeeper" (Third Counterclaim). Finally, it is alleged that the name "Single Action Army" and Plaintiffs' alleged trade dress have either been abandoned or become generic (Fourth and Fifth Counterclaims). The majority of the relevant facts will be discussed as necessary in the substance of this Ruling, however, some background is necessary.1 Plaintiff New Colt Holding Corp. is a corporation organized and existing under the laws of Delaware with its principal place of business in New York, NY. New Colt is the parent company of Plaintiff Colt's Manufacturing Company, Inc., which is a corporation organized and existing under the laws of the Delaware with a corporate address in Hartford, CT. Defendant RJG Holdings of Florida, Inc. is a

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Unless otherwise noted, the facts are taken from the parties' Local Rule 56(a) statements of material facts not in dispute.

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corporation organized and existing under the laws of Florida. Defendant AWA International, Inc. is a corporation organized and existing under the laws of Florida with its principal place of business in Delray Beach, FL. In October 2000, Defendant AWA assumed the operations of Defendant RJG. In 1872, Colt's Fire Arms began manufacturing the Model 1873 revolver, also known as the Peacemaker, Single Action Army, and/or the Model P. The introduction of the revolver was successful and by the end of the year, the United States Army adopted it as its standard issue. It is the appearance of this revolver, which Plaintiffs argue remains basically unchanged in its present day instantiation, that Plaintiffs claim as their trade dress. The revolver was continuously manufactured until 1941 when production of the revolver was halted. Plaintiffs claim this was necessary in order to dedicate their production facilities to manufacturing arms for World War II. Defendants contend production stopped because the revolvers were no longer selling well. Nonetheless, after approximately 14 years of nonproduction, manufacture of the Peacemaker resumed in late 1955. The revolvers produced after 1955 are typically referred to as Second Generation Peacemakers. Production was again continuous until 1976 when the revolver was retooled once more. Revolvers produced after this retooling are referred to as Third Generation Peacemakers, which are produced to this day. Plaintiffs contend that the differences between the three generations of revolvers are negligible and that the overall appearance and trade dress remain virtually unchanged. Defendants allege there have been significant changes and that the trade dress is not the same. It is agreed, however, that since 1873 virtually all of Plaintiffs' revolvers have had the name address, either in full or abbreviated, - "Colt's Patent Firearms Manufacturing Company, 3

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Hartford Connecticut USA" - stamped as a rollmark on the barrel of the revolver. Moreover, since 1956 Plaintiffs have been competing with various manufacturers of replicas of the Peacemaker revolver. Defendant RJG formerly known as American Western Arms was incorporated for the purpose of manufacturing replica Peacemaker revolvers. Its president, Robert Gangi, sought to manufacture the most accurate replicas of First Generation Peacemakers on the market. Mr. Gangi decided to offer two models for sale which were based on the Armi San Marco revolver another replica. One of the revolvers offered was the Peacekeeper revolver which is an extremely accurate replica of the First Generation Model P. The other revolver is closer to the Armi San Marco revolver and known as the Longhorn. Defendants allege that Mr. Gangi made numerous attempts to obtain a licensing agreement from Plaintiffs. After those efforts failed, the first sales of Mr. Gangi's replicas were made in June of 2000. Shortly thereafter, the assets of his company were sold to AWA International. Plaintiffs filed this lawsuit in January 2002. Plaintiffs' Peacemaker revolver retails for well over $1,000. Plaintiffs also market the "Cowboy" revolver, which they refer to as an "economy version" of the Peacemaker. It retails for approximately $700. Plaintiffs produced a Peacekeeper revolver from approximately 1985 through 1988. It was not a western style revolver and marketed towards law enforcement and home defense. Plaintiffs contend that they still provide repair services for the revolver. "The Rampant Colt" is a registered trademark of Plaintiffs'. It is a picture of a horse rearing up with a spear between its forelegs and another in its mouth. It often appears on the grips of Plaintiffs' revolvers inside an oval. Plaintiffs contend that they have been using some 4

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form of the Rampant Colt logo since 1836 and that it has appeared on the grips of Plaintiffs' revolvers since approximately 1897. The Rampant Colt also appears in connection with Plaintiffs' other firearms and related accessories. Plaintiffs' Armsmear Crest is the family crest of Colt's founder Samuel Colt. It pictures a horse similar in appearance to the horse visible in the Rampant Colt mark. Defendants place a logo of a horse on their revolver grips. This logo involves a running horse, as opposed to rearing up, and does not picture any spears, but is inside an oval and appears in a similar location on Defendants' revolvers. Defendants contend that the logo was designed without reference to Plaintiffs'. II. STANDARD OF REVIEW: A party moving for summary judgment must establish that there are no genuine issues of material fact in dispute and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986). "A party opposing a properly brought motion for summary judgment bears the burden of going beyond the pleadings, and `designating specific facts showing that there is a genuine issue for trial.'" Amnesty Am. v. Town of W. Hartford, 288 F.3d 467, 470 (2d Cir. 2002), citing Celotex Corp. v. Catrett, 477 U.S. 317, 324, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). "In moving for summary judgment against a party who will bear the ultimate burden of proof at trial, the movant's burden of establishing that there is no genuine issue of material fact in dispute will be satisfied if he or she can point to an absence of evidence to support an essential element of the nonmoving party's claim." Legg v. Dellavolpe, 228 F. Supp. 2d 51, 56 (D. Conn. 2002), citing Celotex, 477 U.S. at 322. In determining whether a genuine issue has been raised, all 5

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ambiguities are resolved and all reasonable inferences are drawn against the moving party. United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S. Ct. 993, 8 L. Ed. 2d 176 (1962); Quinn v. Syracuse Model Neighborhood Corp., 613 F.2d 438, 445 (2d Cir. 1980). Summary judgment is proper when reasonable minds could not differ as to the import of evidence. Bryant v. Maffucci, 923 F.2d 979, 982 (2d Cir. 1991). "Conclusory allegations will not suffice to create a genuine issue." Delaware & H. R. Co. v. Conrail, 902 F.2d 174, 178 (2d Cir. 1990). Determinations of the weight to accord evidence or credibility of witnesses are improper on a motion for summary judgment as such are within the sole province of the jury. Hayes v. N.Y. City Dep't of Corr., 84 F.3d 614, 619 (2d Cir. 1996). III. DISCUSSION:2 A. Plaintiffs' Trade Dress Claims:

Counts One, Two, Seven, and Eight deal with claims for relief based on Plaintiffs' alleged trade dress. Defendants move for summary judgment on each of these counts.3 Defendants' Motion is denied for the reasons stated herein.

2

It bears mentioning at the outset that the hostility evident in both parties' briefs is entirely inappropriate and unprofessional. Referring to another party's argument as preposterous, ludicrous, absurd, or anything similar does nothing to advance rational discussion of an issue or aid in its resolution. In fact, such language has the tendency to discredit rather than bolster legal arguments. Count Eight asserts a violation of the CUTPA. Defendants do not make any arguments tailored to the CUTPA. Presumably they are relying on the fact that many courts view a violation of the Lanham Act as a per se violation of the CUTPA. See e.g. Timex Corp. v. Stoller, 961 F. Supp. 374, 381 (D. Conn. 1997), but see also Sporty's Farm, LLC v. Sportsman's Mkt., Inc., No. 3:96CV0756 (AVC), 1998 U.S. Dist. LEXIS 23290, *25 (D. Conn. 1998) (Finding of a violation of the Lanham Act does not necessarily obviate the necessity to consider the CUTPA standard). Thus, if Defendants establish their entitlement to summary judgment on Counts One, Two, and Seven, they presumably establish their entitlement to judgment on Count Eight. However, because Defendants fail to establish their entitlement to summary judgment on Plaintiffs' trade dress claims, separate consideration of Count Eight is unnecessary.

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"The concept of trade dress encompasses the design and appearance of the product together with all the elements making up the overall image that serves to identify the product presented to the consumer." Fun-Damental Too v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2d Cir. 1997) (citation omitted). Plaintiffs seek protection of the overall image or design of the product and not its packaging, as trade dress claims once exclusively involved. See Wal-Mart v Samara Bros., 529 U.S. 205, 209, 120 S. Ct. 1339, 146 L. Ed. 182 (2000) (discussing recent expansion of trade dress to encompass design features of the product itself). A plaintiff asserting trade dress rights in a design must prove (1) that its design is "distinctive as to the source of the good," i.e. that it has acquired secondary meaning, and (2) "that there is a likelihood of confusion between its good and the defendant's." Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115 (2d Cir. 2001). Even assuming demonstration of those elements, trade dress does not protect designs descriptions that are "overbroad or 'generic'" - i.e. "those that 'refer to the genus of which the particular product is a species.'" Id. (citation omitted). Trade dress is not designed to protect ideas or generalized appearances and thus proper interpretation of trade dress protection avoids the "monopolization of products and ideas." Id. Finally, trade dress protection "may not be claimed for product features that are functional." Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-65, 115 S. Ct. 1300, 131 L. Ed. 2d 248 (1995). Therefore, the burden is on a plaintiff seeking trade dress protection for a design to demonstrate that it is not functional. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29, 121 S. Ct. 1255, 149 L. Ed. 2d 164 (2001). Based on the strong likelihood of functional features appearing in product designs and the desire to avoid creating a monopoly in the goods themselves, as opposed to simply their appearance, courts exercise "particular caution" when "extending protection to product designs." 7

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Yurman, 262 F.3d at 114-15. As Defendants move for summary judgment with respect to each of these elements, they will be defined further and discussed below. 1. Sufficiency of Plaintiffs' Description of Their Trade Dress:

Defendants argue that Plaintiffs cannot be afforded any protection because they have failed to adequately describe their claimed trade dress. With respect to a product line, a "focus on the overall look of a product does not permit a plaintiff to dispense with an articulation of the specific elements which comprise its distinct dress." Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997). Requiring an appropriate level of specificity furthers several important interests: 1) "without a specification of the design features that compose the trade dress, different jurors viewing the same line of products may conceive the trade dress in terms of different elements and features, so that the verdict may be based on inconsistent findings"; 2) "no juror can evaluate secondary meaning, overbreadth, or nonfunctionality without knowing precisely what the plaintiff is trying to protect"; 3) "a plaintiff's inability to explain to a court exactly which aspects of its product design(s) merit protection may indicate that its claim is pitched at an improper level of generality, i.e., the claimant seeks protection for an unprotectable style, theme or idea[,]" which will help eliminate claims that "are overbroad as a matter of law"; and 4) "courts will . . . be unable to shape narrowly-tailored relief if they do not know what distinctive combination of ingredients deserves protection." Yurman Design, 262 F.3d at 117 (internal citations omitted). Plaintiffs argue that although they meet the requirements set out above, because Yurman and Landscape Forms apply to product lines, not individual products, they are not applicable. Pl. Br. Opp. Def. Mot. for Summ. J. at 8-9 n. 3. Moreover, Plaintiffs caution against requiring an 8

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emphasis on written descriptions of the dress over and above the visual representations submitted. Id. at 7, citing Imagineering, Inc. v. Van Klassens, Inc., 851 F. Supp. 532, 542 (S.D.N.Y. 1994) ("To require that [a plaintiff] describe its trade dress only in prose would run the risk, first, that the description might not adequately describe this 'image,' and, second, that defendants' would be provided numerous opportunities to seek to evade the injunction's proscription by, for example, changing one aspect of a multi-faceted 'image' and claiming that the trade dress, as defined, was not being infringed"). While the present action does not involve an entire line of products, Plaintiffs do not point to any case law that would prevent a court from imposing similar standards here. Indeed, the reasoning behind Landscape Forms and Yurman Designs is persuasive in any trade dress claim. It is more relevant when, as here, the product involved is part of a long and well-known history and where Defendants argue that the design itself is part of the public domain and not Plaintiffs' to claim. Under these circumstances it is appropriate to require Plaintiff to clearly articulate the basis for its trade dress claim rather than risk overbroad protection and imprecise relief (should any be granted). With that said, the usefulness of visual representations of the product to aid the trade dress definition is not in dispute. As to the actual description, in their Complaint Plaintiffs describe the trade dress in the following way: (a) the shape, style, composition and finish of the grip frame; (b) the angle of the grip frame in relation to the frame and barrel; (c) the shape, style, composition and finish of the trigger and trigger guard; (d) the angle or slant of the trigger guard in relation to the frame and barrel; (e) the shape, style, composition and color of the grip panels, including the rampant colt and eagle emblazoned on the sides; (f) the shape and style of the front sight; 9

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(g) the shape and style of the rear sight; (h) the shape, style and finish of the checkered hammer; (i) the shape, style and finish of the color case hardened frame; (j) the shape, length, style and finish of the steel barrel; (k) the shape, style and finish of the steel cylinder; (l) the shape, style and finish of the cylinder pin; and (m) the shape, style and finish of the ejector rod and ejector rod housing. Amended Complaint ¶43. Although not elaborating on this description in the text of their Opposition Brief, Plaintiffs point to two exhibits to further define the nature of their claims. Pl. Br. Opp. Summ. J. at 10. In a lengthy response to Defendants' interrogatory requesting that Plaintiffs more specifically detail the features of the revolver claimed to be unique and/or distinctive, Plaintiffs describe the shape and appearance of the frame, rear sight, hammer, cylinder, cylinder pin, trigger, trigger guard, grips, grip frame, front sight, barrel, ejector rod, ejector rod housing, and some variations in finish and barrel length that are available. See Fortner Decl., Exh. 75. The obvious implication of this description is that Plaintiffs are quite literally claiming the appearance of the entire gun leaving nothing out. Michael Reissig's testimony supports this conclusion, explaining that Plaintiffs claim "the overall appearance of the gun." Decl. of Robert Gill, Exh. 1, Reissig Depo. at 173. According to Reissig, this entails any available barrel length, the current configuration of the front sight, any combination of colors that may appear through the color case hardening process, both the half moon and donut shapes of the ejector rod head (and any variations thereof), the position of the roll marks on the gun, other words appearing on the barrel, the rampant colt and eagle stamped on the grips, the overall appearance of the hammer (including the color, which may include nickel, color-case, plated, blue, and fire blue), and the hammer as it relates to the rest of the 10

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appearance of the gun.4 Id. at 172-89. Defendants contend that these descriptions are insufficient. In particular, Defendants point to changes in the alleged trade dress over the years and question which changes are part of Plaintiffs' trade dress claims and which are excluded - if any. Defendants point to changes in the revolver's frame, including the various frame finishes mentioned above, finishes to the barrel, cylinder, trigger guard and backstrap, variations in hammer shapes and hammer gnurling, base pin, cylinder beveling, ejector rod heads, ejector rod housings, firing pins, front sights, rear sights, trigger guard shapes, and cylinder bushings. Def. Br. Supp. Summ. J. at 7. Defendants also point to variations in the grips ranging from rubber with rampant colt, but no eagle, to rubber with both rampant colt and eagle. Id. at 13. Defendants allege that the grips have been offered in wood with medallions and wood without medallions as well. Id.5 While disputing the extent and significance of these variations, nowhere do Plaintiffs assert that there have been no variations at all. In fact, Plaintiffs assert that Defendants' revolver matches some of the variations mentioned and that variation in a 130 year old product is to be expected. Pl. Br. Opp. Summ. J. at 11 and n.6, citing Samara Bros. v. Wal-Mart Stores, 165 F.3d 120, 129 (2d Cir. 1998) ("We do not mean to suggest, however, that in order to gain protection each garment must contain identical specified design elements. We expect that in a product line there will be inevitable variation in the products"), rev'd in part 529 U.S. 205, 146 L. Ed. 2d 182, 120 S. Ct. 1339 (2000). Plaintiffs clarify that with respect to color case hardening, what is
4

The witness does not appear to claim the actual firing pin, but rather as stated how the shape of the hammer looks in relation to the rest of the gun. Reissig Depo. at 187:17-20. Plaintiffs object to some of Defendants' evidence in support of this contention as hearsay. Pl. Br. Opp. Summ. J. at 11 n. 7. Plaintiffs' objection is conclusory and does not properly raise the question. It will not be considered.

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distinctive is the fact that the frame, as opposed to the entire gun, is finished in that fashion. Id. at 12. And Plaintiffs assert that despite all this, the overall look of the revolver has remained essentially unchanged and recognizable. They assert that it would be improper to focus too narrowly on individual features, as they "need not be separately protectible" in light of the overall appearance. Id., citing Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1042 (2d Cir. 1992) ("Individual aspects of a trade dress may be eligible for trademark protection in their own right, but in an action for trade dress infringement each aspect should be viewed in relation to the entire trade dress"). While this may be true, at some point deflecting focus from individual features in favor of the whole becomes a sort of claim construction sleight of hand that prevents meaningful interrogation of the nature of the claim asserted. On the facts presented, any lack of clarity in Plaintiffs' descriptions stems from their attempts to claim the entire appearance of the revolver and the difficulty inherent in adequately describing all the requisite details. Should all other elements be met, there is no rule of law known or cited that prohibits a plaintiff from claiming the entire appearance of a product as its trade dress. In this sense, Plaintiffs adequately describe the claimed trade dress.6 2. Proof of Secondary Meaning:

In order to be protected, trade dress must be distinctive. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209, 120 S. Ct. 1339, 146 L. Ed. 2d 182 (2000) (Without the protected trade dress being distinctive, potentially infringing trade dress would not cause confusion as to the origin, sponsorship or approval of the goods). Trade dress can be distinctive

6

It should be noted however that Plaintiffs are bound to what they claim and it is therefore possible that relatively minor variations in the replicas may affect the overall appearance and defeat Plaintiffs claims.

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in two ways: 1) it is inherently distinctive if its "intrinsic nature serves to identify a particular source of a product"; or 2) if the dress has acquired distinctiveness that "in the minds of the public, the primary significance" of the trade dress "is to identify the source of the product rather than the product itself." Id. at 210-11. In either case, it is the ability of the trade dress to designate a product source that is decisive. However, as to product designs, trade dress cannot be inherently distinctive and a plaintiff must show secondary meaning for the dress to be protected under the Lanham Act. Id. at 215. Accordingly, Plaintiffs here must be able "to show that, over time, the trade dress has become identified with its producer in the minds of potential consumers." L. & J.G. Stickley, Inc. v. Canal Dover Furniture Co., 79 F.3d 258, 263 (2d Cir. 1996). Proof of secondary meaning "entails vigorous evidentiary requirements" and generally involves demonstration of six factors: 1) advertising expenditures; 2) consumer studies linking product appearance to product source; 3) sales success; 4) unsolicited media coverage of the product; 5) attempts to plagiarize the trade dress; and 6) length and exclusivity of use. Thompson Medical Co. v. Pfizer, Inc., 753 F.2d 208, 217 (2d Cir. 1985). However, no single factor is determinative and every element need not be proven. Id. Because a producer may use a competitor's trade dress if it is without secondary meaning, the proper time period for determining secondary meaning is when the alleged infringement began, not the date of the original product's introduction. Nora Beverages, Inc. v. Perrier Group of Am. Inc., 164 F.3d 736, 745 (2d Cir. 1998). In this case, that date is the year 2000 when Defendants began selling their replicas. a. Advertising Expenditures:

Plaintiffs argue that the "record contains an abundance of evidence" relating to their 13

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advertisements. Pl. Br. Opp. Def. Mot. for Summ. J. at 69. The record does not support this assertion. Plaintiffs cite only seven exhibits containing catalogs or advertisements that focus on the revolver's trade dress. Id. Plaintiffs do not produce any evidence of expenditures or other relevant evidence pertaining to advertising. Furthermore, they concede that since 1999 they have not advertised any single action revolver in gun periodicals. Id. at 70. Considering that Plaintiffs have been manufacturing the revolver for about 50 years since resuming production, the evidence produced could properly be denied weight by a fact finder. Nevertheless, Plaintiffs produce some evidence of advertising and therefore the question cannot be resolved on summary judgment and must be counted against Defendants. b. Consumer Studies:

Plaintiffs point to the survey conducted by Warren Keegan as evidence of consumers linking Plaintiffs' alleged trade dress with Plaintiffs. The survey Keegan conducted, although "designed to determine consumer confusion of the names, trade symbols, and overall appearance of the two single action revolvers ... also [allegedly] had the effect of testing consumer awareness of the marks and trade dress." Decl. of H. David Starr, Exh. 26 at 3. To this effect Keegan states that "[w]hen shown the AWA Peacekeeper 67% indicated that they knew who made the gun. Of those, only 26% named AWA while 58% incorrectly named Colt's." Id. at 8. This finding does not demonstrate a link between the claimed trade dress with Plaintiffs. In order to demonstrate such a link, consumers surveyed would have to be shown Plaintiffs' gun and identify Plaintiffs as the manufacturer. Keegan's report goes onto state that of those who "claimed to know who made the Peacemaker" 91% correctly named Colt, Id., but it is somewhat unclear from the write up whether this refers to people being shown the Peacemaker (thus looking at its trade dress) or the 14

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point in the survey when participants are asked (without viewing the revolver itself) whether they have heard of a gun called the Peacekeeper and if they know who manufactures that gun. Based on an examination of the survey results, this statement apparently refers to the former and would be some evidence of secondary meaning. To the extent that it is the latter, that question would have no value towards demonstrating secondary meaning with respect to Plaintiffs' trade dress. Defendants argue that this survey cannot be considered evidence of secondary meaning because it was designed to test consumer confusion. Def. Br. Supp. Summ. J. at 68. Defendants point to no law that would require this conclusion and it is not desirable to formulate a rule of law that would prevent consideration of unintended, but relevant, consequences of a survey so long as those results indicate trustworthiness. Defendants also argue that because source indicators were left on the pictures of the revolvers, the survey results are not probative as to secondary meaning. Def. Br. Supp. Summ. J. at 69. Plaintiffs counter that this is irrelevant because participants were not exposed to the manufacturers' names until towards the end of the survey when they viewed the photographs and even when exposed to the names participants still misidentified Defendants' revolver as being made by Plaintiffs. Pl. Br. Opp. Summ. J. at 70-71. Plaintiffs misstate the nature of secondary meaning. It is inconsequential that the participants misidentified Defendants' revolver as Plaintiffs'. Plaintiffs must affirmatively show that participants identified their revolver's trade dress with Plaintiffs' manufacture. To assume misidentification of Defendants' revolver demonstrates secondary meaning in Plaintiffs' trade dress presupposes an answer to the very question this litigation is intended to answer. Furthermore, if Plaintiffs' name appeared on the revolver the trade dress of which is at issue, then this fact casts substantial doubt on any attempt to link participants' identification of Plaintiffs as 15

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the manufacturer to the distinctive nature of the trade dress and not simply the fact that Plaintiffs' name appeared on the revolver. Accordingly, as a matter of law this factor does not weigh in Plaintiffs' favor. Although, a court cannot weigh the credibility of the evidence at summary judgment, the nonmoving party must still produce enough evidence such that a reasonable trier of fact could find in their favor. See Bryant, 923 F.2d at 982 (Summary judgment is appropriate when reasonable minds could not differ as to the import of the evidence). Plaintiffs have failed to meet that burden with respect to this factor. c. Unsolicited Media Coverage of the Product:

Both parties acknowledge that much has been written about Plaintiffs' revolvers. Defendants, however, argue that much of what was written focuses on the time period before 1940 when Plaintiffs initially halted production of the revolver and is not relevant to demonstrate secondary meaning today. Def. Br. Supp. Summ. J. at 70-71. As stated above, the relevant period for determining secondary meaning is when Defendants entered the market in 2000. It is unlikely therefore that media coverage from over 60 years ago or pertaining to that period is relevant to that determination. However, Plaintiffs also produce evidence of more recent media attention. Defendants argue that because media attention has been focused on replicas as well, media attention dedicated to Plaintiffs does not demonstrate secondary meaning. Id. at 71. Determining the weight to accord this evidence is properly a question for a trier of fact and not a court on summary judgment. d. Sales Success:

Plaintiffs contend that since the introduction of its revolver, the total sales reach approximately one million. Pl. Br. Opp. Summ. J. at 72. Defendants contend that in recent years 16

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replica revolvers have sold at least as many revolvers as Plaintiffs, suggesting a lack of secondary meaning in Plaintiffs' trade dress. Def. Br. Supp. Summ. J. at 71. Recent sales success is more probative towards demonstrating secondary meaning as it pertains to this action, but a question nevertheless remains as to the proper weight given to each party's evidence. Attempting to resolve that question would be inappropriate on summary judgment. e. Attempts to Plagiarize the Product:

Intentional copying may constitute "persuasive evidence of consumer recognition." Coach Leatherware Co. v. AnnTaylor, Inc., 933 F.2d 162, 169 (2d Cir. 1991). This is particularly so when "the circumstances indicate an intent to benefit from the good will of the prior user through confusion." Laureyssens v. Idea Group, Inc., 964 F.2d 131, 136 (2d Cir. 1992). However, this fact alone does not establish secondary meaning, Coach Leatherware, 933 F.2d at 169, and should be balanced against the recognition that, absent other legal protections, imitation in the marketplace is a good thing. See American Safety Table Co. v. Schreiber, 269 F.2d 255, 272 (2d Cir. 1959) ("It is the unimpeded availability of substantially equivalent units that permits the normal operation of supply and demand to yield the fair price society must pay for a given commodity") (citation omitted). It is undisputed that Defendants were manufacturing replicas of Plaintiffs' revolver. Furthermore, Defendants' advertising has at least referenced Plaintiffs' history and founder Sam Colt. Pl. Br. Opp. Summ. J. at 72. While, these facts alone are not necessarily determinative Defendants point out, there have been manufacturers of similar replicas for years and they continue to this day - Defendants have not presented undisputed evidence that would entitle them to summary judgment. At best, Defendants create a question out of this factor which would have 17

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otherwise looked very much like Defendants were purposely trading on Plaintiffs' good will. Accordingly, summary disposition is unavailable on this factor. f. Length and Exclusivity of Use:

Plaintiffs have been manufacturing their revolvers since 1873. Defendants, however, note that since 1956 Plaintiffs have been competing with other replica makers and that when Defendants began marketing their gun, nine replica sellers were in the market. Def. Br. Supp. Summ. J. at 72. Plaintiffs argue that the significance of "third-party copying depends wholly upon their usage, and third-party marks must be 'well promoted' or 'recognized' by consumers in order to be of significance." Pl. Br. Opp. Summ. J. at 73, citing Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 1170 (2d Cir. 1976) ("Defendant introduced no evidence that these [third-party] trademarks were actually used by third parties, that they were well promoted or that they were recognized by consumers"). Plaintiffs' arguments are in error. Scarves by Vera dealt with registered trademarks which are presumptively distinctive, Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 871 (2d Cir. 1986), but Plaintiffs receive no such presumption concerning their trade dress. In fact, the very purpose of this discussion is a determination of whether Plaintiffs' claimed trade dress is distinctive. Thus, requiring Defendants to demonstrate that competing users are recognized by customers misplaces the burden of proof and places the proverbial cart before the horse. Accordingly, based on the undisputed facts, length of use weighs in Plaintiffs' favor, but exclusivity certainly does not.7 This in effect creates a factual question over how to weigh this factor and must count against summary judgment in favor of

7

Of course, the significance of this fact may be mitigated by weighing the import of evidence of intentional copying. No position is taken on the outcome of this balancing of factors here.

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Defendants. g. Conclusion as to Secondary Meaning:

On balance Plaintiffs do not present particularly strong evidence of secondary meaning in their trade dress. However, because there are factual disputes with respect to some of the factors discussed, and a finding of secondary meaning can only be made by a careful consideration of all six factors, with no single factor being determinative, the question cannot be decided as a matter of law, but is properly to be decided by a jury. Accordingly, Defendants' Motion is denied on this ground. 3. Whether Plaintiffs' Trade Dress has been Abandoned or is Generic:

Defendants argue that Plaintiffs have either abandoned their trade dress or that it has become generic and is no longer protectable. To support a finding of abandonment, use of the mark or trade dress must have been "discontinued with intent not to resume such use" or, as a result of the conduct of the owner, "become the generic name for the goods or services on or in connection with which it is used" and have lost "its significance as a mark." L. & J.G. Stickley, Inc., 79 F.3d at 263. Thus, the claims that a mark is generic or abandoned are related. Even assuming a product design is distinctive, that "is insufficient to protect product designs that are overbroad or generic - those that refer to the genus of which the particular product is a species." Yurman Design, 262 F.3d at 115 (citation and quotations omitted). Trade dress may be generic if it "conforms to a well-established industry custom." Nora Beverages, 164 F.3d at 743. Defendants argue that Plaintiffs abandoned their trade dress and that when they resumed manufacturing western style single action revolvers in 1955, there "was already at least one other company manufacturing replicas" of Plaintiffs' Model "P." Def. Br. Supp. Summ. J. at 19

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61. Since that time, others have entered the market to produce similar replicas, which are produced to this day. Defendants allege that Plaintiffs knew of these replicas and did nothing to stop their production. Thus, because Plaintiffs' "trade dress has been used for so many years by these numerous entities and because [Plaintiffs'] own actions promoted and acknowledged that it had no exclusive rights to the appearance of the Colt Model 'P'," the appearance has become generic. Id. at 64-65. Common usage may render trade dress that was once distinctive generic if, by virtue of the use, the dress "can no longer be understood to represent a source" of the product. BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 1570 (Fed. Cir. 1995). This inquiry may involve a highly factual analysis to demonstrate that consumers do not in fact identify the trade dress with its source, or any source. See Hermes Int'l v. Lederer de Paris Fifth Ave., Inc., 219 F.3d 104, 110 (2d Cir. 2000) (Discussing with approval district court's requirement that a "highly factual analysis of consumer perception and identification" be undertaken in order to prove that the trade dress is generic). The question is linked to whether Plaintiffs can prove secondary meaning, or that their trade dress is identified with a source. Defendants are not precluded from proving the product generic through common usage but, in order to so prove, it entail proving that Plaintiffs trade dress lacks secondary meaning. As discussed above, there is a question of fact as to whether consumers identify Plaintiffs' trade dress with a source. As a consequence, simply pointing to the existence of other replica makers is not sufficient to establish that there is no question that the trade dress is generic. Summary judgment on Defendants generic argument is therefore inappropriate. Defendants' assertion of a defense of abandonment also centers on the interruption in 20

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Plaintiffs production of the Peacemaker revolver from 1941 to 1955 and the near constant presence of replica makers since Plaintiffs returned to the market in 1956. Def. Br. Opp. Summ. J. at 60. Plaintiffs argue that they did not intend to permanently cease production of the revolver and that they maintained consumer goodwill during the period of non-production such that when they resumed production in 1956 it retained its secondary meaning among consumers. Pl. Br. Supp. Summ. J. at 57-60. Defendants rely heavily on the Second Circuit's opinion in L. & J.G. Stickley, Inc. v. Canal Dover Furniture Co., 79 F.3d 258 (2d Cir. 1996) to support their claim for abandonment. See Def. Br. Opp. Summ. J. at 61-63. Stickley involves a furniture maker, Gustav Stickley who was largely part responsible for a popular style of furniture. L. & J.G. Stickley, Inc., 79 F.3d at 260. When the designs became commercially unpopular, Stickley ceased producing them and joined his brothers in a cabinet making business. Id. That company became L. & J.G. Stickley, which 60 years later decided to capitalize on the renewed popularity of the designs and began to manufacture them once more. Id. at 260-61. Given these facts, the Second Circuit noted the difficulty the manufacturer would face "in establishing that consumers identify the [presently manufactured] trade dress with L. & J.G. Stickley rather than with the maker of the popular originals." Id. at 264. Because of that difficulty, the Second Circuit found L. & J.G. Stickley unlikely to succeed on the merits and vacated a preliminary injunction against the defendant. Id. at 264-65.8 In this respect, the Second Circuit distinguished its decision from Ferrari S.P.A. Esercizio

8

This procedural detail is important in that the Second Circuit did not prevent Stickley from going forward, as Defendants ask this Court to do, rather they merely found that the claim was unlikely to succeed and did not warrant a preliminary injunction.

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v. Roberts, 944 F.2d 1235 (6th Cir. 1991) because the Sixth Circuit "found that even though Ferrari had ceased production of its 365 GTB/4 Daytona in 1974, the car design maintained secondary meaning in the eyes of the public because Ferrari continued to design cars with a very similar appearance and continued to manufacture parts for 365 GTB/4 Daytona owners." L. & J.G. Stickley, Inc., 79 F.3d 258 at 264 n. 5. Loss of secondary meaning during the period of nonproduction is therefore essential to a finding of abandonment. However, as discussed above, there remains a dispute of fact over the existence of secondary meaning. Accordingly, Defendants claim of abandonment cannot be resolved on summary judgment. It bears mentioning however, that even "[o]nce a registered trademark has been abandoned, any subsequent user of the mark must measure its rights from the time the subsequent use begins, and cannot rely upon any residual secondary meaning in the mark from the original period of use." Id. at 263-64. This is the case even if the original user resumes use of the abandoned trade dress. Id. at 264 (emphasis added). Thus, even if a fact-finder were to find that, based on the interruption in production, Plaintiffs' trade dress lost its secondary meaning, this would not preclude Plaintiffs from rebuilding secondary meaning in the almost 60 years it has been manufacturing the revolvers before Defendants entered the market. All that Plaintiffs would be prohibited from doing is relying on secondary meaning acquired prior to abandoning its trade dress. In this sense, the abandonment argument, even if successful, is not likely to get Defendants far because secondary meaning must be established at the time Defendants entered the market, Nora Beverages, 164 F.3d at 745, and thus focusing on any loss of secondary meaning 60 years ago may not be determinative. Similarly for Plaintiffs, focusing on the storied history of their revolver may not help them in establishing secondary meaning if 22

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they cannot demonstrate that such goodwill persists to this day. 4. Functionality:9

As discussed above, trade dress protection cannot be had for features that are functional and the burden is on the party seeking protection to prove nonfunctionality. TrafFix, 532 U.S. at 32. Functionality is a question of fact, Innovative Networks v. Satellite Airlines Ticketing Ctrs., 871 F. Supp. 709, 723 (S.D.N.Y. 1995), thus any factual disputes will preclude summary judgment. There are two types of functionality at issue: traditional or utilitarian functionality and aesthetic functionality. a. Traditional/Utilitarian Functionality:

The Supreme Court recently reasserted the prominence of the so-called "traditional rule" of functionality. Id. at 33. Under this rule and "'in general terms, a product feature is functional,' and cannot serve as a trademark, if it 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." Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 115 S. Ct. 1300, 131 L. Ed. 2d 248 (1995), citing Inwood Labs. v. Ives Labs., 456 U.S. 844, 851 n. 10, 102 S. Ct. 2182, 72 L. Ed. 2d 606 (1982). In TrafFix, the Supreme Court discussed the effect of prior patents, noting that a "utility patent is strong evidence that the features therein are functional." 532 U.S. at 29. However, even in the context of a patent, a manufacturer might be successful in seeking "to protect arbitrary, incidental, or ornamental
9

It is important to keep in mind that with respect to most of the discussion of functionality that it is geared towards whether or not Defendants have properly supported their Motion and if so whether Plaintiffs produce enough evidence to survive summary judgment on that point. The Ruling is thus narrowly tailored to the adequacy of Plaintiffs' response to Defendants' arguments. This should not detract from or bear on Plaintiffs' ultimate burden to affirmatively prove nonfunctionality at trial, which is distinct from their burden at summary judgment.

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aspects of features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs" if "those aspects do not serve a purpose within the terms of the utility patent." Id. at 34. The "Lanham Act does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity." Id.10 The TrafFix decision is also important with respect to the relevance of design alternatives to a functionality inquiry. In the past, the Second Circuit (and others) considered the availability of design alternatives in determining the functionality of a feature. See e.g. Fabrication Enterprises. v. Hygenic Corp., 64 F.3d 53, 59 (2d Cir. 1995) ("a court must examine a number of variables, including (1) the degree of functionality of the similar features of the product, (2) the degree of similarity between the non-functional (ornamental) features of the competing products,

10

The left side of the Model P revolver includes three patent dates corresponding to U.S. Patent No. 119, 048 (issued 9/19/1871), U.S. Patent No. 128, 644 (issued 7/2/1872), and U.S. Patent No. 158, 957 (issued 1/19/1875). Def. Br. Supp. Summ. J. at 44. Defendants argue that because features of the alleged trade dress are pictured in the drawings pertaining to the 1873 and 1875 patents, those features have been dedicated to the public and are not protectable. Id. at 44-47. It is generally true that "the claim of a specific device or combination, and an omission to claim other devices or combinations apparent on the face of the patent, are, in law, a dedication to the public of that which is not claimed." Miller v. Brass Co., 104 U.S. 350, 352 (1881); see also General Radio Co. v. Kepco, Inc., 435 F.2d 135, 136-37 (2d Cir. 1970) ("The fact that the [device] was not specifically claimed ... is not determinative, for the device was disclosed in the specification and is thus public property"). This rule is distinct from the principle discussed above in TrafFix 532 U.S. at 29 (stating that the existence of a utility patent is strong evidence of functionality), largely ignored by Defendants, and it is not clear that it applies to trademark protection. See J. Thomas McCarthy, 1 M cCarthy on Trademarks and Unfair Competition § 7:89.2, 7-259 (4 th Ed. 2003) (Stating author's view that "this rule is confined to patent law"). Indeed, such a rule would exclude trade dress protection for any shape or design visible in a patent specification regardless of the functionality of that feature and would seem to cut against, if not render obsolete, the Supreme Court's statement about the significance of utility patents for determining functionality. A utility patent would not be strong evidence of functionality, but conclusive evidence of the unavailability of trade dress protection. Accordingly, it is most in line with trademark law to apply a functionality analysis, which addresses the concerns surrounding the perpetual nature of trade dress protection applied to a utilitarian design, rather than fashion a potentially overbroad rule and exclude designs otherwise protectable under the principles of trade dress law.

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and (3) the feasibility of alternative designs that would not impair the utility of the product"); Stormy Clime, Ltd. v. Progroup, Inc., 809 F.2d 971, 977 (2d Cir. 1987) (directing consideration of the same factors); see also Landscape Forms, 70 F.3d at 254-55 (remanding for the district court to consider whether the design confers a significant competitive benefit that cannot practically be duplicated by the use of alternative designs). In TrafFix, however, the Court wrote that the functionality of the design at issue under the traditional Inwood analysis meant "competitors need not explore whether other spring juxtapositions might be used. The dual-spring design is not an arbitrary flourish in the configuration of [the plaintiff's] product; it is the reason the device works." 532 U.S. at 33-34 (emphasis added). Nevertheless, Plaintiffs argue that this language does not preclude consideration of design alternatives. Pl. Br. Opp. Def. Mot. for Summ. J. at 20. In support, Plaintiffs cite to a postTrafFix Second Circuit opinion that requires looking to the feasibility of design alternatives. Id., citing Neiman Marcus Group, Inc. v. A'Lor Int'l, Ltd., No. 00-9504, 2001 U.S. App. LEXIS 25182, *4 (2d Cir. Nov. 20, 2001). Neiman Marcus makes no mention of TrafFix, but it does post-date it by several months. However, the opinion in Neiman Marcus is unpublished and clearly marked "summary order." According to the Second Circuit's Local Rules of Appellate Procedure, because summary orders "do not constitute formal opinions of the court and are unreported or not uniformly available to all parties, they shall not be cited or otherwise used in unrelated cases before this or any other court." Local Rule § 0.23. Plaintiffs' reliance on Neiman Marcus is therefore misplaced and is not binding authority. This is not to say that there is no authority for the proposition that design alternatives may still be considered, see Pl. Br. Opp. Def. Mot. for Summ. J. at 21-22 (citing to various unpublished district court cases in this circuit), but 25

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Plaintiffs have not pointed to any binding authority. Other circuits are divided as to the question of design alternatives. The Federal Circuit has found that even though "there is no need to consider the availability of alternative designs ... that does not mean that the availability of alternative designs cannot be a legitimate source of evidence to determine whether a feature is functional in the first place." Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276 (Fed. Cir. 2002). The Federal Circuit concluded, therefore, that TrafFix did not change applicable law, Valu Engineering, 278 F.3d at 1276, and thus because prior case law directed consideration of design alternatives, it is still necessary to do so. The Sixth Circuit found differently, opting not to consider design alternatives, because "at the very least, a court is not required to examine alternative designs when applying the traditional test for functionality" and that if "if a product is clearly functional under Inwood, a court need not apply the competitive-necessity test and its related inquiry concerning the availability of alternative designs." Antioch Co. v. W. Trimming Corp., 347 F.3d 150, 156 (6th Cir. 2003) (emphasis in original). The latter position is more in line with TrafFix. There is nothing to suggest that courts are prohibited from considering design alternatives, but when functionality is apparent under the Inwood test, the inquiry is over and the existence of design alternatives cannot resurrect an otherwise functional feature. Accordingly, to the extent that Second Circuit law required consideration of design alternatives in all circumstances, that is no longer the law. However, under the present circumstances and given the nature of the product, the existence of design alternatives is helpful for determining whether a particular design is truly necessary to the way the revolver works. For example, Plaintiffs assert that with respect to the grip frame on the revolvers that they are not claiming the handle itself (in layman's terms), but 26

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rather a specific shape of a handle that is separable from the handle itself. In order to determine whether the specific shape is in fact separable, it is instructive to look to whether other shapes exist and whether they are similarly effective. The critical inquiry then is the "feasibility of alternative arrangements of functional features that would not impair the utility of the product." Fabrication Enterprises, 64 F.3d at 59 (emphasis added). The mere existence of other designs does not satisfy that requirement as those designs may be functionally deficient by comparison. Accordingly, for design alternatives to be probative, Plaintiffs must produce evidence that could demonstrate that the alternative design would be equally effective as a functional matter. Because Plaintiffs are seeking trade dress protection for the overall appearance of the revolver, breaking down the trade dress into its individual elements and then attacking them as functional may be error. Le Sportsac, Inc. v. K Mart Corp., 754 F.2d 71, 76 (2d Cir. 1985); see also Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 842 (9th Cir. 1987) ("We examine trade dress as a whole to determine its functionality ... elements that are separately unprotectable can be protected together as part of a trade dress"). "Nonetheless, the fact that a trade dress is composed exclusively of commonly used or functional elements might suggest that that dress should be regarded as unprotectable or 'generic,' to avoid tying up a product or marketing idea." Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir. 1995). As a result, Plaintiffs' claimed trade dress will be considered first as to its individual parts and then as a whole. i. The shape, style, composition, and finish of the grip frame:

Defendants argue that the shape and style of the grip frame "serve to allow the shooter to best hold the revolver and to handle the recoil of the gun when fired." Def. Br. Supp. Summ. J. 27

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at 32. They also argue that the composition of the frame, steel, works more effectively than other metals and that the finishes that are available (blued or nickeled) prevent oxidation. Id. at 33. Plaintiffs' characterization of Defendants' arguments as simply allowing "the shooter to grip the gun," Pl. Br. Opp. Summ. J. at 24, (like any grip frame would) misses Defendants' assertion that the specific shape allows for certain advantages. Defendants point to many other possible designs for the grip frame, but simply pointing to these other designs fails to elucidate how these designs offer similar or better functional advantages such that a buyer would not suffer in functional efficiency when purchasing a gun with these designs alternatives. As stated above, the fundamental inquiry when looking to design alternatives is that the other arrangements do not impair the utility of the product. Stormy Clime, 809 F.2d at 977. Plaintiffs also argue that "the contours of the frame do not serve any specific purpose." Id. This argument is conclusory and nowhere elaborated, not even in the exhibit cited. See Gill Decl., Exh. 19, ¶ 19. Plaintiffs point to statements by Defendants' personnel to the effect that because they were making replicas of Plaintiffs guns they chose not to use other possible designs. Pl. Br. Opp. Def. Mot. for Summ. J. at 25. This does raise a question concerning other possible motivations for using a grip frame similar to Plaintiffs', but does not address directly the issue of functional advantages. Nowhere is it established that the desire to copy negates or is mutually exclusive to the issue of functionality. That is, there is no reason why Defendants' desire to copy a feature, as opposed to using similar features on other revolvers, negates functionality. As to the finishes and metals used on the grip frame, Plaintiffs, while conceding a certain functionality, again simply point to alternatives without establishing that these other finishes and 28

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metals would work just as well. Id. at 25. Accordingly, Plaintiffs fail to meet their burden to produce evidence sufficient to raise a question of nonfunctionality with respect to the grip frame. ii. The angle of the grip frame in relation to the frame and barrel:

Plaintiffs define the angle of the grip frame in relation to the frame and barrel as approximately 7 ½ degrees. Pl. Br. Opp. Summ. J. at 25. Plaintiffs assert that this angle is cosmetic11 and serves to "make the gun look the way it does" but does not serve any function. Id. at 26. Plaintiffs point to no design alternatives that would work just as well. Defendants argue that this angle is functional in that "it positions your hand so that the barrel will shoot." Def. Br. Supp. Summ. J. at 33. If the angle were different, the user would have to point the barrel differently to make it shoot accurately. Fortner Decl., Exh. 32 at 90. It is not clear whether this angle is necessary to its functioning or merely incidental - i.e. would having to point the barrel differently impede the revolver's use? On the other hand, it is not clear that Plaintiffs have established nonfunctionality. There is certainly nothing about the angle that prevents it from both giving the gun a distinct look and serving the purpose of correctly lining up the barrel when it is held. The weighing and crediting of these two accounts is therefore in the province of the fact finder and not a court's on summary judgment. Accordingly, this feature must be considered nonfunctional in considering Defendants' Motion. iii. The shape, style, composition, and finish of the trigger and trigger guard:

11

Defendants argue that Plaintiffs' witness has conceded functionality. Def. Br. Supp. Summ. J. at 33, citing Def. Exh. 14 at 98-101. Plaintiffs witness does make this concession but consistently asserts the purely cosmetic nature of this feature.

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The trigger and trigger guard serve the obvious function of firing the gun and protecting against premature firing. Nonetheless, Plaintiffs argue that neither the specific shape (not size) of the trigger guard nor the finish of both the trigger and the trigger guard are dictated by this function. Pl. Br. Opp. Summ. J. at 26. Plaintiffs argue that although the shape of the trigger has to be different from that of a double action revolver and that the trigger design on their revolver is designed for a single action revolver, that this does not mean that the trigger design is functional. Pl. Br. Opp. Summ. J. at 26-7. How this is so is entirely unclear and counterintuitive. Indeed, it seems to be a statement that the trigger design is functional as it is dictated by the mechanical necessities of the gun. Furthermore with respect to the blued finish, Plaintiffs continue to fail to address the alleged functional benefits discussed above with respect to the grip frame and simply point to the existence of alternatives as if this fact by itself raises a question of functionality. Pl. Br. Opp. Summ. J. at 27. Thus, Plaintiffs fail to meet their burden to produce evidence sufficient to raise a question of fact as to the functionality of the trigger design. iv. The angle or slant of the trigger guard in relation to the frame and barrel:

Defendants argue that the rounded and slanted shape of the trigger guard aid in holstering the revolver. Def. Br. Supp. Summ. J. at 33-34. Plaintiffs argue that while this may be true, any rounded shape will do and the specific shape of their trigger frame is not therefore necessary and functional. Pl. Br. Opp. Summ. J. at 26-27. There is therefore a dispute of fact with respect to this feature which cannot be resolved on summary judgment. v. The shape, style, composition, and color of the grip panels, including the Rampant Colt and eagle emblem emblazoned 30

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on the sides: Defendants allege that users often change the grips on their revolvers for functional (e.g. a better fit) and cosmetic reasons. Def. Br. Supp. Summ. J. at 34. Defendants also argue that the eagle on the sides of Plaintiffs' grips serve the function of providing a "tactile acknowledgment" that the user has the proper grip on the gun. Id. Plaintiffs counter that any logo would serve the same purpose and there is no need for the logo to involve an eagle as Plaintiffs' do. Pl. Br. Opp. Summ. J. at 28. Plaintiffs do not respond to Defendants' argument about the generally functional nature of the grips, but Defendants' argument is conclusory and fails to elaborate how if users change the grips for both functional and cosmetic purposes this demonstrates that the functional aspect of the grips is essential to the use or purpose of the item. Indeed, by their own argument cosmetic reasons may be just as important. Accordingly, although the ultimate burden of persuasion remains with Plaintiff, the burden of production for the purposes of summary judgment on this point has not been properly shifted to Plaintiff. vi. The shape and style of the front sight:

A front sight serves the obvious purpose of allowing the user to properly aim the revolver. Defendants further contend that the specific shape of Plaintiffs' sight, namely that it is rounded, eases holstering by preventing snags. Def. Br. Supp. Summ. J. at 35. Plaintiffs argue that there are other designs, including different rounded designs, that would serve the same purpose without affecting quality or effectiveness. Pl. Br. Opp. Summ. J. at 28. Accordingly, there are material factual disputes as to the functionality of the front sight. vii. The shape and style of the rear sight:

Again, the rear sight serves an obvious functional purpose. Although, Plaintiffs once 31

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again argue that the specific shape is not functional, they cite to no witness testimony or other evidence to that effect. Pl. Mem. Opp. Summ. J. at 29. Indeed, Plaintiffs' own witness, Edwin Zalewa, who testified at deposition that the shape of the front site was not functional as the shape could vary, Fortner Decl., Exh. 11, Zalewa Depo at 115, testified that as to the rear sight, the shape is functional. Id. at 113. Plaintiffs cite to a purported admission by Defendants' witness, Robert Gangi, that were it not for the fact that Defendants were manufacturing replicas of Plaintiffs' first generation single action revolver, there would be other design options for rear sights available. Pl. Br. Opp. Summ. J. at 29, citing Gangi Depo., Starr Decl., Exh. 37 at 216-17. The testimony cited does not address the issue of functional benefits, which the mere existence of other designs does not disprove or negate. Plaintiffs presumably view the testimony as an admission that the design of Defendants' revolver was not based on functional considerations. It is not clear