By Tamlin H. Bason
A manufacturer of an exercise trampoline failed to demonstrate that its asserted trade dress had acquired secondary meaning, the U.S. District Court for the Southern District of New York ruled March 8, dismissing a manufacturer's trade dress complaint for a second time (Urban Group Exercise Consultants Ltd. v. Dick's Sporting Goods Inc., S.D.N.Y., No. 1:12-cv-03599-RWS, 3/8/13).
The plaintiff's second amended complaint suffered from many of the same pleading deficiencies as the amended complaint that the court had dismissed in August, the court said. However, unlike the court's dismissal in August, the instant dismissal was with prejudice.
Urban Group Exercise Consultants Ltd.'s founder, J.B. Berns, designed and developed a low-impact trampoline-type exercise device called the Urban Rebounder.
The product includes a trampoline mat, a stabilizing device, a support frame, a protective fold skirt, springs, and legs. The product displays Urban's logo along with is mark, “Urban Rebounding,” registered with the Patent and Trademark Office in 2006. Millions of these devices have been sold, and the product has been featured on numerous television shows.
In 2005, Urban began selling the product to retailer Dick's Sporting Goods Inc. through an intermediary. Dick's sold approximately 10,000 units from 2005 to 2007, and in 2008 Dick's and Urban entered into a direct vending relationship.
Unlike other models of the Urban Rebounder, the model sold at Dick's had a distinctive black-and-red outline and protective folded skirt surrounding the jumping mat. The skirt also bore the Urban Rebounder logo.
From 2008 to 2010, Dick's purchased more than 15,000 units from Urban. In 2011, however, Dick's purchased just 21 units. At that time, Dick's was in the second year of a vendor agreement with the manufacturer of a competing product, the Fitness Gear Cardio Jump Trainer.
The Jump Trainer was in many ways similar to the Urban Rebounder, and even had the same red-and-black color scheme as the Urban Rebounder. However, the Jump Trainer had received below average customer reviews on the Dick's Sporting Goods website, due in large part to difficulties that customers experienced in folding the device.
Urban claimed that the similar color scheme had resulted in consumer confusion. It sued Dick's, alleging trade dress infringement, trade dress dilution under the Trademark Dilution Revision Act, and trade dress dilution under New York state law.
Dick's filed a motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) which was granted by the court (157 PTD, 8/15/12). In issuing its denial, the court determined that Urban Group had failed to demonstrate either that its alleged trade dress had acquired secondary meaning, or that the asserted trade dress was non-functional.
Urban amended its complaint and Dick's once again filed a Rule 12(b)(6) motion to dismiss.
“To plead a claim of trade dress infringement premised upon an unregistered design (such as UGEC's design of the Urban Rebounder), a plaintiff must allege that '(1) the claimed trade dress is non-functional; (2) the claimed trade dress has secondary meaning; and (3) there is a likelihood of confusion between the plaintiff's good and the defendant's,” the court said, quoting from Sherwood 48 Associates v. Sony Corporation of America, 76 Fed. App'x 389 (2d Cir. 2003).
The court bypassed the first factor and instead focused on secondary meaning. With respect to trade dress, secondary meaning is attained “when a consumer immediately associates the dress of the product with its source,” the court said, quoting from Sports Traveler Inc. v. Advance Magazine Publishers Inc., 25 F. Supp. 2d 154 (S.D.N.Y. 1998).
That showing, the court said, will depend on a number of factors, including advertising expenditures, sales of the product in question, unsolicited media coverage, and the length of continuous and exclusive use of the trade dress.
With respect to the first factor, the new complaint listed a number of financial expenditures purporting to show that the trade dress had attained secondary meaning. Urban claimed that over a period of 12 years, Berns had spent millions of dollars annually on television advertising. The company claimed that it has also promoted the Urban Rebounder at numerous tradeshows.
Dick's argued that even these new pleadings had failed to demonstrate that the alleged trade dress had attained secondary meaning. The court agreed.
As an initial matter, the complaint alleged that the trade dress had been in use only since 2008 and so the assertion that millions of dollars had been spent annually for 12 years was “irrelevant to the extent that it speaks about pre-2008 expenditures,” Judge Robert W. Sweet said.
The court also took issue with Urban's assertion that $4.8 million it has spent in global advertising since 2008 to promote the Urban Rebounder supported a finding of secondary meaning. On the contrary, “there is no allegation that any of those advertisements or promotions stressed or emphasized the alleged trade dress,” and so the court said that these alleged expenses did not in fact support a finding of secondary meaning.
Urban's failure in its second amended complaint to distinguish between pre-2008 activities and post-2008 activities tripped it up with respect to other secondary meaning factors as well. The problem, the court said, was that, prior to 2008, the Urban Rebounder featured a blue-and-yellow color scheme, and not the black-and-red scheme which was the subject of Urban's trade dress claim.
For instance, the court said that although the complaint had alleged that “millions of units” have been sold, it did not “identif[y] how many of the units sold actually bear the alleged trade dress.”
The same problem plagued Urban's proffer of unsolicited television broadcasts featuring the Urban Rebounder. The complaint had failed to state whether the broadcasts had occurred before 2008, and thus the broadcasts did not support a finding of secondary meaning, the court said.
With respect to length of use, Urban had alleged exclusive and continuous use of the trade dress for a period of five years. The court noted that a five-year period of exclusive use had been found sufficient for a showing of secondary meaning in Landscape Forms Inc. v. Columbia Cascade Co., 117 F. Supp. 2d 360, 56 U.S.P.Q.2d 1613 (S.D.N.Y. 2000).
Here, the other factors in the secondary meaning analysis militate against a finding of secondary meaning, … , so the mere fact that the alleged trade dress has been in continuous use for five years is insufficient to outweigh the factors militating against a finding of secondary meaning.
TDRA Claim Also Dismissed
The court also said that the second amended complaint had failed to state a claim for trademark dilution under the TDRA.
Such a claim, the court said, rests first and foremost on the plaintiff's ability to show that the alleged trade dress is widely recognized by the public. Accordingly, Urban's dilution claim suffered from the same deficiencies as did its trade dress infringement claim. The court thus dismissed the complaint with prejudice.
Urban was represented by Bruce El Colfin of Jacobson & Colfin, New York. Dick's was represented by Michael A. Nicodema of Greenberg Traurig, New York.
By Tamlin H. Bason
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)