Lack of Secondary Meaning Dooms Color-Based Trade Dress Infringement Claim

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A manufacturer of an exercise trampoline failed to allege both that its trade dress in the product was nonfunctional, and that the trade dress had acquired secondary meaning, and thus the trade dress complaint could not survive a motion to dismiss, the U.S. District Court for the Southern District of New York held Aug. 7 (Urban Group Exercise Consultants Ltd. v. Dick's Sporting Goods Inc., S.D.N.Y., No. 1:12-cv-03599-RWS, 8/7/12).

The court accordingly dismissed both a trade dress infringement claim and a trademark dilution claim, finding that complaint failed to establish that the trade dress was famous--a necessary showing for both claims. Thus, despite finding that the plaintiff properly established the existence of its unregistered trade dress--which consisted of a black and red colored protective fold skirt for the trampoline--the court said that the plaintiff failed to establish that the trade dress had been infringed.

Competing Exercise Trampoline Products.

Urban Group Exercise Consultants LTD's founder and CEO, 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,” that was 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 Dick's Sporting Goods Inc. through an intermediary. Dick's sold approximately 10,000 units between 2005 and 2007, and in 2008 Dick's and Urban entered into a direct vending relationship without benefit of an intermediary.

Unlike other models, the Urban Rebounder sold at Dick's had a distinctive black and red outline and protective fold skirt surrounding the jumping mat. The skirt bore the Rebounder logo.

Between 2008 and 2010, Dick's purchased over 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 is in many ways similar to the Urban Rebounder, and even has the same red and black color scheme as the Urban Rebounder. However, the Jump Trainer has received below average customer reviews on the Dick's Sporting Goods website, due in large part to the difficulty that customers have in folding the device.

Urban claimed that the similar color scheme between the two products has resulted in consumer confusion. It thus filed suit against 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 Rule 12(b)(6) motion to dismiss.

Urban claimed that it has attempted to get in touch with Impex, the maker of the Jump Trainer, but to date has been unsuccessful in those attempts. Accordingly, Impex is not a party to these proceedings.

Complaint Establishes Existence of Trade Dress.

“To plead a claim of trade dress infringement involving the appearance of a product, 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 began

However, even before reaching that test, Judge Robert W. Sweet said he first had to determine whether Urban had alleged the existence of a trade dress. The court concluded that the complaint had, albeit just narrowly, established the elements of a trade dress.

In order to establish that it has a trade dress, the plaintiff must in its complaint offer “a precise expression of the character and scope of the claimed trade dress,” the court said, quoting Landscape Forms Inc. v. Columbia Cascade Co., 113 F.3d 373, 42 USPQ2d 1641 (2d Cir. 1997).

Much of the Urban's complaint touted the elements of the Urban Rebounder, “elements which would appear to be common to any trampoline” and thus were insufficient to establish trade dress, the court said. However, the court noted that the complaint also described the “distinguishing” black and red color scheme and the protective fold featuring Urban's logo. The court determined that these descriptions were sufficient to establish the elements of Urban's trade dress.

No Secondary Meaning.

The court next turned to the issue of functionality, the first factor in the three-part test to determine if the complaint alleged an action of trade dress infringement. Although the burden is on a defendant to demonstrate that a plaintiff's registered trade dress is functional--and thus not protectable--the court noted that when the alleged trade dress is not registered then the plaintiff has the burden of establishing non-functionality.

Here, Urban's complaint described the trade dress as “unregistered,” the court noted, thus Urban was required to demonstrate that the trade dress was nonfunctional. Though the complaint stated, in conclusory fashion, that the trade dress was “non-functioning,” it failed to allege any facts to support this assertion, the court said.

On the issue of secondary meaning, Urban pointed to the fact that the product was featured on national television programs as evidence of its broad popularity. But this alone is insufficient to demonstrate secondary meaning--a standard that the court said was in fact heightened in this case.

Quoting Mana Products Inc. v. Columbia Cosmetics Manufacturing Inc., 65 F. 3d 1063, 36 USPQ2d 1176 (2d Cir. 1995), the court added, “Plaintiff's contention that a significant feature of its trade dress is its use of the colors black and red raises its burden, as 'color marks by their very nature are not generally distinctive.' ”

However, far from meeting this standard, “the Amended Complaint makes no allegations concerning Plaintiff's advertising expenditures, consumer surveys, prior attempts to plagiarize the trade dress or that Plaintiff exclusively uses the color scheme alleged,” the court said.

It thus determined that the complaint failed to allege secondary meaning.

The court concluded that while Urban's complaint established the existence of a trade dress, it failed to establish either that the trade dress was non-functional, or that it had acquired secondary meaning. “Without these two elements, the Amended Complaint fails to state a claim for trade dress infringement upon which relief can be granted, and Defendant's motion to dismiss the trade dress infringement count is granted.”

TDRA Claim Also Dismissed.

The first factor a plaintiff must establish in a trade dress dilution claim under the TDRA is that the trade dress is famous.

Looking to relevant case law, the court noted that fame under the TDRA has been achieved by such marks as Nike and Hotwheels. However, “In this case, Plaintiff does not plead sufficient facts to support the assertion that its trade dress is similarly famous,” the court said.

Indeed, as noted in the secondary meaning analysis, the court said there are no facts in the amended complaint concerning advertising expenses in relation to the alleged trade dress. Accordingly, the court dismissed the TDRA claim after determining that the alleged trade dress was not sufficiently famous to support such a claim.

The court then declined to exercise supplemental jurisdiction over Urban's state law trade dress dilution claim.

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  


Opinion at http://pub.bna.com/ptcj/1203599Aug712.pdf