                                                                            FILED
                            NOT FOR PUBLICATION                              MAY 23 2012

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




                            FOR THE NINTH CIRCUIT



GLOBEFILL INCORPORATED, a                         No. 10-56895
Canadian corporation,
                                                  D.C. No. 2:10-cv-02034-CBM-
              Plaintiff - Appellant,              PLA

  v.
                                                  MEMORANDUM *
ELEMENTS SPIRITS, INC., a California
corporation; KIM BRANDI, an individual,

              Defendants - Appellees.



                   Appeal from the United States District Court
                       for the Central District of California
               Consuelo B. Marshall, Senior District Judge, Presiding

                        Argued and Submitted May 10, 2012
                               Pasadena, California

Before: WARDLAW, PAEZ, and RAWLINSON, Circuit Judges.

       Globefill Incorporated (“Globefill”) appeals the district court’s dismissal of

its claim against Elements Spirits, Inc. (“Elements”) for trade dress infringement in




        *
             This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). We have

jurisdiction under 28 U.S.C. § 1291, and we reverse.1

                                           A.

1.    Articulation of trade dress.

      “Trade dress refers generally to the total image, design, and appearance of a

product and may include features such as size, shape, color, color combinations,

texture or graphics.” Clicks Billiards v. Sixshooters, Inc., 251 F.3d 1252, 1257 (9th

Cir. 2001) (quotation marks omitted). Globefill’s Second Amended Complaint

alleged with specificity the elements of the trade dress it seeks to protect: “a bottle

in the shape of a human skull, including the skull itself, eye sockets, cheek bones, a

jaw bone, a nose socket, and teeth, and including a pour spout on the top thereof.”

These elements are part of the “total image, design, and appearance” of the product

and therefore may constitute protectable trade dress.

2.    Functionality.

      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



      1
        Globefill’s pending motion to take judicial notice of its trademark
registration is denied as moot.

                                            2
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). Applying these

factors, the trade dress elements Globefill described in its operative complaint

cannot be said to be functional as a matter of law. The skull design is ornamental

and serves no utilitarian purpose; alternative bottle designs are available in

abundance; and using the design increases, rather than decreases, Globefill’s

manufacturing and shipping costs.

      The district court relied on our decision in Rachel v. Banana Republic, Inc.,

831 F.2d 1503, 1505 (9th Cir. 1987). But the trade dress elements in Rachel were

eyes, noses, and other physical features which served the utilitarian purpose of

making the products at issue—lifelike animal reproductions—more realistic.

Globefill’s skull-shaped bottle, by contrast, is a purely ornamental container for its

vodka, and we have rejected the view that such features can be functional. See

Clicks Billiards, 251 F.3d at 1260 (“[T]rade dress cannot be both functional and

purely aesthetic. . . . Ornamental aesthetic designs are the antithesis of utilitarian

designs.”) (internal quotation marks and citations omitted).




                                            3
                                           B.

      Globefill’s Second Amended Complaint asserted a single cause of action:

unfair competition and false designation of origin in the nature of trade dress

infringement in violation of Section 43(a) of the Lanham Act. The district court,

however, treated the complaint as asserting two claims—one for trade dress

infringement, and one for “false designation of origin.” These claims are

coterminous and are governed by an identical legal standard. See Two Pesos, Inc.

v. Taco Cabana, Inc., 505 U.S. 763, 780 (1992). Globefill’s complaint sufficiently

states a claim for unfair competition under the Lanham Act.

      Having determined that Globefill failed to allege a claim for relief under the

Lanham Act, the district court denied Globefill’s motion for a preliminary

injunction. Because the district court did not otherwise determine whether

injunctive relief was warranted, or offer any other reason for denying the motion,

we remand this issue to the district court to address in the first instance. See Fed. R.

Civ. P. 52(a)(2).

      REVERSED and REMANDED for consideration of Globefill’s motion for

a preliminary injunction.




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