UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT

MOLDEX-METRIC, INC., a California No. 16-55548 corporation, Plaintiff-Appellant, D.C. No. 2:11-cv-01742- v. GHK-AGR

MCKEON PRODUCTS, INC., a Michigan Corporation, OPINION Defendant-Appellee.

Appeal from the United States District Court for the Central District of California George H. King, District Judge, Presiding

Argued and Submitted December 5, 2017 Pasadena, California

Filed June 5, 2018

Before: Kim McLane Wardlaw and Ronald M. Gould, Circuit Judges, and Lawrence L. Piersol,* District Judge.

Opinion by Judge Piersol

* The Honorable Lawrence L. Piersol, United States District Judge for the District of South Dakota, sitting by designation. 2 MOLDEX-METRIC V. MCKEON PRODUCTS

SUMMARY**

Trademark

The panel reversed the district court’s summary judgment in favor of the defendant in a suit for trademark infringement.

Moldex-Metric, Inc., a producer of foam ear plugs with a specific bright green color, alleged that McKeon Products, Inc., infringed its mark by using a similar green color for ear plugs. The district court concluded that the green color mark was functional and thus not protectable as trade dress.

Reversing, the panel held that the existence or nonexistence of alternative designs is probative of functionality or nonfunctionality. Thus, evidence of alternative colors must be considered in deciding the functionality of Moldex’s mark. The panel concluded that there remained a dispute of material fact as to whether Moldex’s bright green color was functional. The panel vacated the district court’s grant of summary judgment and remanded for the district court to consider McKeon’s arguments both that Molex’s green color lacked secondary meaning and that there was no likelihood of confusion, and then if necessary go to trial.

** This summary constitutes no part of the opinion of the court. It has been prepared by court staff for the convenience of the reader. MOLDEX-METRIC V. MCKEON PRODUCTS 3

COUNSEL Sanford I. Weisburst (argued), Quinn Emanuel Urquhart & Sullivan LLP, New York, New York; Joseph M. Paunovich and Harold A. Barza, Quinn Emanuel Urquhart & Sullivan LLP, Los Angeles, California; for Plaintiff-Appellant. Steven M. Weinberg (argued) and Michael J. Salvatore, Holmes Weinberg PC, Malibu, California; Robert L. Meylan, Meylan Davitt Jain Arevian & Kim LLP, Los Angeles, California; for Defendant-Appellee.

OPINION

Moldex-Metric, Inc. filed suit against McKeon Products, Inc. for trademark infringement. The district court granted summary judgment in favor of McKeon, and Moldex appeals. We reverse and remand.

I

Since 1982, Moldex has been producing foam ear plugs with a specific bright green color. The color in question has also been described as fluorescent green-yellow or fluorescent lime. From 1982 through 2011, Moldex sold more than 1.6 billion pairs and $191,917,123.77 worth of the green ear plugs. Moldex has never acquired a federal registration of its green color, but it has sued to enforce the mark against other companies selling ear plugs bearing the green color. After McKeon began using a similar green color for its ear plugs, Moldex initiated this lawsuit in 2011. 4 MOLDEX-METRIC V. MCKEON PRODUCTS

The parties filed cross motions for summary judgment. McKeon claimed, among other things, that the green color mark is functional. The district court granted McKeon’s motion after finding that the mark