CHAPTER 12 - § 12.03

• Jurisdiction: United States

§ 12.03 RECENT COMPLAINTS INVOLVING TRADE DRESS

While the above decisions give a sense of where various district courts stand on certain key issues, recent complaints and decisions in ongoing cases also provide some guidance on the types of trade dress litigants are trying to protect, the goals that they are trying to achieve through enforcement, and the success rate for certain types of relief. Because trade dress law varies somewhat from Circuit to Circuit, the summaries below are broken down in that fashion so that trends are more easily perceptible.

[1]—First Circuit

Bern Unlimited v. Burton et al. (Dist. Massachusetts 2011)—Bern initially filed a complaint alleging design patent infringement with respect to its "Baker" snowboard helmets naming defendants including Burton, Vans, Smith Optics and Easton-Bell (Bell). A few months into the case, Bern dropped the design patent claim in favor of a trade dress infringement claim. The defendants all filed motions for summary judgment that the "Baker" trade dress was functional, but the court denied the motions. In March 2014, Bern filed a Third Amended Complaint. In response, the defendants raised (for the first time) counterclaims for false advertising, unfair competition and for a declaratory judgment of invalidity and unenforceability for previously asserted design patent. The court ultimately dismissed the declaratory judgment counterclaims because Bern had 'disclaimed' the design patent with the U.S. Patent and Trademark Office, essentially giving up all rights to the patent.¹⁷ The court did allow the false advertising and unfair competition counterclaims to proceed, as there was evidence that Bern knew the design patent was invalid, but still advertised the "Baker" helmet as patent-protected, and also made statements in advertising that competitors were infringing the patent. As of October 2014, this case was still pending.

Converse v. Autonomie (Dist. Massachusetts 2013)—Converse filed a complaint alleging infringement of its registered trade dress in the "Chuck Taylor" sneaker design. About 4 months later, the parties filed a joint motion for a consent judgment, which the court entered, permanently enjoining Autonomie from selling the allegedly infringing sneaker.

The J.M. Smucker Co. v. Nestlé (Dist. Puerto Rico 2013)—Smuckers filed a complaint alleging infringement of its trade dress by Nestlé's use of gingham print lids on jars of baby food in December 2013. In August 2014, after several extensions of Nestle's time to answer the complaint, Smuckers filed a notice of voluntary dismissal. Based on this dismissal, it would appear that Nestlé agreed to desist using the gingham print design.

Alex and Ani v. Northeast Diamond (Dist. Massachusetts 2014)—Alex and Ani filed a complaint alleging trade dress and design patent infringement based on the defendants' sales of a 'double ring' bracelet. The defendants moved to dismiss the trade dress claims (but not the design patent claims) based on an alleged functionality of Alex and Ani's design. As of October 2014, the court had yet to rule on this motion.

Keds LLC v. Vans Inc. (Dist. Massachusetts 2014)—Keds filed a complaint alleging trade dress infringement in a blue square as applied to the heel of sneakers. Vans counterclaimed alleging the 'blue square' trade dress was functional. As of October 2014, no further actions had been taken by the parties.

[2]—Second Circuit

Luv N' Care (Nuby) v. Regent Baby Prods. (S.D. New York 2010)—Luv N' Care filed a complaint alleging trade dress and design patent infringement relating to the design of children's sippy cups in 2010. After several years of litigation, the court found the claimed trade dress for the sippy cups generic at summary judgment in December 2013. In the meantime, Regent put the asserted design patents into reexamination before the U.S. Patent and Trademark Office, and requested a stay of the case pending the outcome of the reexamination, which the court granted in early 2014. Around the same time, Luv N' Care applied to the court to certify the summary judgment ruling on the trade dress for immediate appeal, but the court denied that request. The case remains stayed pending the outcome of the design patent reexaminations.

Panache Beverage v. Pacific Edge (S.D. New York 2013)—Panache filed a complaint alleging infringement of its trade dress for "Wodka" vodka packaging by Pacific Edge's "Gruven" vodka. In March 2014, the court entered an order on Pacific Edge's Rule 68 Offer of Judgment in the amount of $25,000, which Panache had accepted. However, "Gruven" vodka still appears to be available for sale on Pacific Edge's website.

Contemporary Visions (Sonneman) v. Maxim Lighting (S.D. New York 2013)—Contemporary Visions filed a design patent and trade dress infringement complaint claiming protection for lighting fixtures. Within six months, the parties had filed a stipulation of dismissal with prejudice, and Maxim appears to have discontinued sales of the allegedly infringing fixtures.

Audemars Piguet v. Swiss Watch Int'l d/b/a/ Swiss Legend (S.D. New York 2012)—Audemars Piguet filed a complaint for infringement of its registered trade dress in watch and bezel designs for its "Royal Oak" watch. After a four day bench trial, the court entered Findings of Fact & Conclusions of Law that the trade dress was infringed, and that the Swiss Legend "Trimix" watch was a counterfeit. The court disgorged over $3.2 million in Swiss Legend's profits to Audemars Piguet for all sales occurring before the trial. Audemars Piguet then filed a motion for to recover post-trial damages, to treble the total damages award, and for attorneys' fees and costs. In August 2014, the court awarded Audemars Piguet a total of about $11.7 million, including about $3.6 million in actual profits (trebled to $10.8 million), and about $880,000 in attorneys' fees and costs. Because the Swiss Legend "Trimix" watches were found to be counterfeits, the court also ordered a recall of all inventory in the market within fifteen (15) days.

Audemars Piguet v. Hilfiger & Movado (S.D. New York 2013)—Audemars Piguet filed a complaint for infringement of its "Royal Oak" trade dress. The parties settled on undisclosed terms about two months later, and it appears that the Hilfiger "Eton" watch (which was made by Movado) is no longer being sold.

Tommy Hilfiger v. Jumbo Bright (S.D. New York 2013)—Jumbo Bright asserted registered trade dress in a stripe pattern applied to the interior of shoes, and Hilfiger filed for a declaratory judgment that the registered trade dress was invalid and not infringed. About three months later, Hilfiger voluntarily dismissed with the complaint with prejudice, and does not appear to be selling its "Ithaca Stripe" shoes any longer.

Marc Joseph NY v. C & J Clark America (Clarks) (E.D. New York 2013)—Marc Joseph filed a complaint for infringement claiming trade dress in the overall design of a 'racing moccasin' type shoe. Clarks counterclaimed for a declaratory judgment that the moccasin trade dress was both functional and lacking secondary meaning, and Marc Joseph moved to dismiss those counterclaims. The court denied the motion to dismiss. In August 2014, Clarks filed a motion requesting a conference with the court to discuss leave to file a summary judgment motion. The court granted this motion, and set the conference for September 2014.

Vox Amplification v. Phantom Guitar Works Inc. (E.D. New York 2013)—Vox filed a declaratory judgment action that its guitars do not infringe Phantom's registered trade dress in two different guitar body shapes—the "Teardrop" and the "Phantom". Phantom counterclaimed for a preliminary injunction, which the court grated with respect to the "Phantom" trade dress (but not the "Teardrop") in February 2014. Vox filed Rule 72 objections to the Magistrate Judge's Report and Recommendation granting preliminary relief, and also moved for leave to supplement the preliminary injunction record. In October 2014, the court denied Vox's objections and motion for leave, and adopted the Report and Recommendation in its entirety.

Kind LLC v. Clif Bar (S.D. New York 2014)—Kind filed a complaint and motion for preliminary injunction, alleging trade dress in the packaging for an energy bar. A hearing on the motion was held within about two months of the filing, and about two months later the court issued an order denying the preliminary injunction for failure of Kind to show secondary meaning in the packaging. Kind then filed a Notice of Interlocutory Appeal to the Second Circuit. In December 2014, the parties settled, with Clif adopting a revised packaging design as part of the settlement.

Swatch AG v. Target Corp. (S.D. New York 2014)—Swatch filed a complaint alleging trade dress in certain watch designs including its "Zebra" and "Multi-Color" lines. At the initial scheduling conference before the court, the parties agreed at the engage in approximately sixty days of settlement negotiations rather than enter a case management plan. In September 2014, counsel for the parties informed the court that they had made "tremendous progress" toward a settlement, and hoped to finalize the terms within a month.

Nespresso v. HiLine Coffee (S.D. New York 2014)—Nespresso filed a complaint alleging trade dress in the shape of coffee pods. Nespresso moved for an order to show cause why it should not be granted expedited discovery and an immediate briefing schedule for a preliminary injunction motion. On consent of the parties, the court then ordered that: (1) the parties engage in a settlement conference, (2) if no settlement was reached that depositions be taken on an expedited basis (over about 5 weeks), and (3) Nespresso's preliminary injunction motion be filed immediately after the conclusion of the depositions. A hearing for the preliminary injunction motion was set for September 2014. However, in August 2014, the court revised the schedule by request of the parties...