Last week, the U.S. Court of Appeals for the Eighth Circuit issued an opinion in National Presto v. U.S. Merchants Financial Group, Inc., No. 23-1493 (Nov. 12, 2024), affirming the district court’s rulings that National Presto: (1) had no right to a jury trial on its trade dress infringement claim; and (2) failed to prove its asserted trade dress possessed secondary meaning.
The lawsuit involved National Presto’s “HeatDish” electric grill and U.S. Merchants’ lookalike product. National Presto sued U.S. Merchants for trade dress infringement and sought disgorgement of U.S. Merchants’ profits under the Lanham Act. The district court denied National Presto’s request for a jury trial on the trade dress infringement claim because it determined the claim for disgorgement of profits sought equitable, not legal, relief, and a jury trial is only available to determine damages that are legal in nature—such as actual damages. After a bench trial, the district court concluded National Presto failed to meet its burden to prove customers identify the grill as coming from one source. The grill shape, the district court determined, lacked secondary meaning. National Presto appealed.
The Eighth Circuit affirmed. On whether National Presto had a right to a jury trial, the Court held the remedy of disgorgement of profits in a Lanham Act case is, categorically, an equitable one. The Court rejected National Presto’s assertion that disgorgement of profits in a Lanham Act case should be deemed a legal remedy because it serves as a proxy for actual damages, explaining disgorged profits are not a proxy for actual damages, in part because the Lanham Act does not require a plaintiff to prove the profits subject to disgorgement are caused by the infringement. On secondary meaning, the Court held the district court did not clearly err in finding National Presto failed to meet its burden to prove that consumers recognize the shape of the grill as identifying the source of the product. Specifically, the Court explained that National Presto’s disagreement with how the district court weighed its evidence on secondary considerations does not establish clear error. The Court further explained that National Presto’s advertising evidence promoted function and appearance, not source; its copying evidence did not demonstrate secondary meaning; and its purported actual confusion evidence was inconclusive because it was unclear whether it demonstrated confusion on the part of the retailer or on the part of consumers.
