Court grants motion for judgment for failure to sufficiently plead secondary meaning in product design trade dress
On 9 March 2022 the US District Court for the Central District of California granted a defendant’s motion for judgment on the pleadings, dismissing a complaint for failure to sufficiently plead secondary meaning in product design trade dress (S&B Filters, Inc v ETN Capital, LLC, Case No EDCV 21-1840 JGB (KKx)). The court did, however, grant the defendant 10 days to amend the complaint in order to address the deficiencies.
On 1 November 2021 the plaintiff S&B Filters Inc, filed its complaint alleging a single cause of action for infringement of unregistered trade dress under Section 43(a) of the Lanham Act. After filing its answer to the complaint and counterclaims, the defendant ETN Capital LLC, filed a motion for judgment on the pleadings pursuant to Rule 12(c) of the Federal Rules of Civil Procedure.
For purposes of the motion, the court assumed the following facts to be true:
- S&B manufactures and sells automotive parts, including body mounts for Ford pick-up trucks;
- there are dozens of different designs for body mounts in the marketplace, but the S&B Mount is distinct;
- S&B has invested much time, money, and resources to engineer its products to have a distinctive look and provide superior ride quality;
- S&B began selling its mounts around September 2018;
- in designing the S&B Mount, its engineers included several unique elements that give the S&B Mount a distinct shape and features, including a “unique upper and lower cup design”, a tapered lower busing and silicone shim that sits atop the frame rail; and
- those and other design aspects have become associated with S&B body mounts.
S&B also alleged that:
- ETN produces a truck body mount with the same “look and appearance” as the S&B Mount;
- that ETN owns no rights to the S&B designs or trade dress; and
- that S&B has never given ETN permission, licence, or authorisation to use S&B’s designs or trade dress.
S&B mount (left) and ETN mount (right)
ETN argued that S&B did not plead a proper claim for trade dress infringement. The court stated that to plead such a claim, a plaintiff must plausibly allege the following:
“(1) that its claimed trade dress is non-functional; (2) that its claimed trade dress serves as a source-identifying role either because it is inherently distinctive or has acquired secondary meaning; and (3) that the defendant’s product or service creates a likelihood of confusion.”
ETN challenged S&B’s allegations related to non-functionality and acquired secondary meaning but did not challenge the likelihood of confusion allegations.
To plead a claim for trade dress infringement, S&B was required to plausibly allege sufficient facts to show that the trade dress is non-functional. Here, the complainant pleaded that:
- the “overall ‘look’ and design of the S&B Mount is an integral part of its trade dress”;
- that the “function of S&B’s trade dress design is to identify S&B as the source of its products and to establish a symbol of quality and goodwill that consumers can trust”; and
- that “[i]n designing the S&B Mount, S&B engineers including a number of unique elements that give the mount a distinct shape, proportion, configuration, features and materials that are unlike anything else on the market”.
Based on these allegations, which the court was required to assume were true, it found that, taken as a whole, the allegations demonstrated that it was plausible that the S&B Mount’s design is used for source identification and is non-functional. The court concluded that S&B had pleaded sufficient facts – albeit minimally – to demonstrate the non-functionality of its mounts.
The court then stated that the second element of S&B’s trade dress infringement claim is whether the trade dress has acquired secondary meaning. After noting a non-exhaustive list of factors courts have used to determine whether secondary meaning has been achieved, the court found that S&B had failed to sufficiently allege that the trade dress of its mounts had acquired secondary meaning. S&B had pleaded that it:
- “invested considerable resources in developing its trade dress design and in promoting its products, including, in particular, the S&B Mount”;
- that ETN “willfully with full knowledge” and “deliberately” copied S&B’s trade dress; and
- that “S&B’s trade dress design is to identify S&B as the source of its products and to establish a symbol of quality and goodwill that consumers can trust.”
The problem for S&B was that the court considered these allegations, and others like them, to be “almost entirely devoid of facts”. Even though a plaintiff may adequately plead secondary meaning “mostly through conclusory statements,” the court noted that it must at a minimum provide some semblance of facts that lend credence to the argument that there is secondary meaning. In particular, the court noted that the fact that S&B had been selling its mount for less than four years made it difficult for it to rely on the otherwise “near-factually devoid allegations”. The court concluded that S&B had not met its minimal burden of sufficiently pleading secondary meaning and granted ETN’s motion, without prejudice, giving S&B 10 days in which to file an amended complaint to try to address the noted deficiencies.
Eric Gaum is a partner in Taft’s intellectual property group specializing in patent, trademark, and copyright litigation.
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