Court Rejects Trade Dress Protecton for Point-of-Sale Display as Functional

In a May 26, 2015 ruling, Judge P. Kevin Castel rejected trade dress protection for the counterclaim plaintiff’s point-of-sale display of its goods, and granted summary judgment to the counterclaim defendant.  The counterclaim plaintiff argued that although at least some of the elements of the claimed trade dress are functional, the Court must consider the “overall impression” created by the trade dress.  Judge Castel rejected that argument, quoting a Ninth Circuit case for the proposition that “where the whole is nothing other than the assemblage of functional parts, and where even the arrangement and combination of the parts is designed to result in superior performance, it is semantic trickery to say that there is still some sort of separate ‘overall appearance’ which is non-functional.”  The Court further noted that “where the only similarities between the parties’ trade dresses consist of unprotectable elements, a trade dress infringement claim must fail.”  Judge Castel concluded that recognizing trade dress protection for the counterclaim plaintiff’s display would confer on the counterclaim plaintiff “a marketing advantage based not on brand recognition or advertising prowess, but simply on its right to display its goods more effectively than its competitors.”

Court Finds Trademark and Trade Dress Infringement; Awards Treble Damages and Attorneys' Fees

In a January 6, 2014 ruling, Judge Harold Baer, Jr. entered judgment in favor of the plaintiffs after a four-day bench trial on the plaintiffs’ trademark and trade dress infringement claim over plaintiff Audemars Piguet Holding S.A.’s well-known octagonal watch design.  The plaintiffs contended that two models of the defendants’ watches infringed their trademarks and trade dress in their “Red Oak” line of watches.  In finding in favor of the plaintiffs, Judge Baer found that “the similarities between these watches remain striking.”

In considering the trade dress claim, the Court wrote that a “plaintiff asserting product design trade dress infringement must prove distinctiveness by showing that ‘“in the minds of the public, the primary significance of [the mark] is to identify the source of the product rather than the product itself” (what is known as ‘acquired distinctiveness’ or ‘secondary meaning’).’”  Judge Baer added that to “determine whether a secondary meaning has attached, the court considers six factors:  ‘(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use.’”  The Court considered each factor in turn, and found that all but one of them favored the plaintiffs.

Having found that the plaintiffs’ trade dress has secondary meaning, the Court conducted a similar analysis to determine whether there was a likelihood of confusion between the plaintiffs’ and the defendants’ watches, using the well-known eight factor Polaroid test.  Finding that four of the factors favored the plaintiffs, the Court concluded that the defendants’ “use of the allegedly infringing designs is likely to cause customer confusion.”