Mercado Latino Inc v. Indio Products Inc et al

Filing 95

ORDER DENYING DEFENDANTS MOTION FOR JUDGMENT ON THE PLEADINGS 79 by Judge Dean D. Pregerson . (lc). Modified on 4/11/2017 (lc). (Main Document 95 replaced on 4/11/2017) (lc).

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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MERCADO LATINO, INC. dba
CONTINENTAL CANDLE COMPANY,

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Plaintiff,
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v.
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INDIO PRODUCTS, INC., a
California corporation,

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Defendants.
___________________________

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Case No. CV 13-01027 DDP (RNBx)
ORDER DENYING DEFENDANT’S MOTION
FOR JUDGMENT ON THE PLEADINGS

[Dkt. No.79]

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Presently before the court is Defendant Indio Products, Inc.

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(“Indio”)’s Motion for Judgment on the Pleadings.1

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considered the submissions of the parties and heard oral argument,

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the court denies the motion and adopts the following order.

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I.

Having

Background

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Although Defendant’s Notice of Motion refers to a motion to
dismiss, the memorandum in support of the motion concerns a motion
for judgment on the pleadings.

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Indio and Plaintiff Mercado Latino, Inc. (“Mercado”) both

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sell devotional prayer candles bearing images of saints and other

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religious figures.

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cylindrical container that is approximately 2.25 x 2.25 x 8.0

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inches in length, width and height, filled with a solid, single

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color wax, the clear cylindrical container has an opaque die-cut

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label with two opposite sides – a ‘front’ and ‘back’.

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side of the die-cut label has a silhouette outlined by a black

(Second Amended Complaint (“SAC”) ¶¶ 7, 12,

Mercado’s “Sanctuary Series” candles feature “a clear

The front

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border with a top portion that tapers together and forms a pointed

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tip that resembles a ‘bullet’ shape, with segments of shapes in

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varying and alternating sizes and colors, similar to a stained

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glass window.

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other religious icon.

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or religious icon, (sic) is a separate segment on the label that

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resembles a scroll with the name of the saint or religious icon.”

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(SAC ¶ 12.)

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distinctive and non-functional.

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alleges that it has promoted, advertised, and sold Sanctuary Series

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candles for over twenty years, and that Sanctuary Series candles

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are sold at large, nationwide retailers and “smaller independent

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Latino retailers.”

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Placed over that label is a depiction of a saint or
Directly beneath the depiction of the saint

Mercado alleges that this trade dress is inherently
(Id. ¶¶ 11, 13.)

Mercado further

(Id. ¶ 15.)

Mercado alleges, among other things, that Defendant sells a
line of candles that infringe upon Plaintiff’s Sanctuary Series

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trade dress.2

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with respect to the trade dress claim.

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II.

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Defendant now moves for judgment on the pleadings

Legal Standard
A party may move for judgment on the pleadings “[a]fter the

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pleadings are closed [] but early enough as not to delay the

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trial.”

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proper when the moving party clearly establishes that no material

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issue of fact remains to be resolved and that it is entitled to

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judgment as a matter of law.

Fed. R. Civ. P. 12(c).

Judgment on the pleadings is

Hal Roach Studios, Inc. v. Richard

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Feiner & Co., 896 F.2d 1542, 1550 (9th Cir. 1990); Doleman v. Meiji

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Mut. Life Ins. Co., 727 F.2d 1480, 1482 (9th Cir. 1984).

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standard applied on a Rule 12(c) motion is essentially the same as

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that applied on a Rule 12(b)(6) motion to dismiss for failure to

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state a claim, with the court accepting all of the non-moving

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party’s allegations as true.

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F.3d 877, 883 (9th Cir. 2011).

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The

Lyon v. Chase Bank USA, N.A., 656

A complaint will survive a motion to dismiss when it contains

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“sufficient factual matter, accepted as true, to state a claim to

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relief that is plausible on its face.”

Ashcroft v. Iqbal, 556 U.S.

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An earlier iteration of Plaintiff’s complaint alleged that
Defendant also infringed upon Plaintiff’s copyrights on artwork
depicted on Sanctuary Series candles. (First Amended Complaint ¶¶
12-14, 29.) Plaintiff specifically identified “artwork of border
with appearance of cathedral window-shaped stained glass.” This
court dismissed Plaintiff’s copyright claim, concluding that the
shape of the artwork was not protectable, and that Plaintiff’s
border artwork is not substantially similar to Defendant’s design.
(Dkt. 25 at 4-7.) The court also concluded that Plaintiff’s trade
dress claim was duplicative of its copyright claim, and therefore
dismissed the trade dress claim as preempted by the Copyright Act.
(Dkt. 25 at 7.) Mercado appealed this Court’s decision regarding
the trade dress claim, but not the court’s dismissal of the
copyright claim. The Court of Appeals for the Ninth Circuit
concluded that Plaintiff’s trade dress claim is not preempted by
the Copyright Act and remanded to this Court. (Dkt. 59.)
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662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544,

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570 (2007)).

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“accept as true all allegations of material fact and must construe

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those facts in the light most favorable to the plaintiff.”

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v. Hayes, 213 F.3d 443, 447 (9th Cir. 2000).

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need not include “detailed factual allegations,” it must offer

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“more than an unadorned, the-defendant-unlawfully-harmed-me

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accusation.”

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allegations that are no more than a statement of a legal conclusion

When considering a Rule 12(b)(6) motion, a court must

Iqbal, 556 U.S. at 678.

Resnick

Although a complaint

Conclusory allegations or

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“are not entitled to the assumption of truth.” Id. at 679.

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other words, a pleading that merely offers “labels and

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conclusions,” a “formulaic recitation of the elements,” or “naked

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assertions” will not be sufficient to state a claim upon which

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relief can be granted.

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quotation marks omitted).

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In

Id. at 678 (citations and internal

“When there are well-pleaded factual allegations, a court

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should assume their veracity and then determine whether they

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plausibly give rise to an entitlement of relief.” Id. at 679.

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Plaintiffs must allege “plausible grounds to infer” that their

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claims rise “above the speculative level.” Twombly, 550 U.S. at

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555. “Determining whether a complaint states a plausible claim for

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relief” is a “context-specific task that requires the reviewing

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court to draw on its judicial experience and common sense.”

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556 U.S. at 679.

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III. Discussion

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A.

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Iqbal,

Trade dress is the “total image of a product, including

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Specificity of the Claimed Trade Dress

features such as size, shape, color, texture, and graphics[.]”
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Millennium Labs., Inc. v. Ameritox, Ltd., 817 F.3d 1123, 1126 (9th

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Cir. 2016) (internal quotation and citations omitted).

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bringing a trade dress claim must allege “(1) that its claimed

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dress is nonfunctional; (2) that its claimed dress serves a

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source-identifying role[,] either because it is inherently

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distinctive or has acquired secondary meaning; and (3) that the

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defendant’s product . . . creates a likelihood of consumer

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confusion.”

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1252, 1258 (9th Cir. 2001).

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A plaintiff

Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d

Defendant argues first that Plaintiff has not adequately

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defined its trade dress.

(Motion at 9.)

A plaintiff must

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describe its trade dress clearly enough to give a defendant

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sufficient notice of the plaintiff’s claim.

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Housewares, LLC v. Euro-Pro Operating LLC, No. CV 14-03954 DDP

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(MANx), 2014 WL 6892141 at *3 (C.D. Cal. Nov. 5, 2014); Millenium

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Labs., Inc. v. Ameritox, Ltd., No. 12CV1063-MMA(JMA), 2012 WL

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4863781 at *2 (S.D. Cal. Oct. 12, 2012).

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regarding Plaintiff’s description of the claimed trade dress

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appears to be less a question of articulation, however, than of

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overbreadth.

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dress is described so broadly as “to capture nearly any stained

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glass type design, essentially making Mercado’s stained glass

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design generic.”

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problems of overbreadth are better considered as questions of

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genericness rather than specificity.

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Paragon, Indus., Inc., 549 F.Supp.2d 1168, 1174 (N.D. Cal. 2007)

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(“Cases addressing product design suggests that the term

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‘genericness’ covers three situations: (1) if the definition of a

See Homeland

Defendant’s argument

Defendant argues, for example, that the alleged trade

(Mot. at 10:20-22.)

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As this argument suggests,

See Walker & Zanger, Inc. v.

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product design is overbroad or too generalized; (2) if a product

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design is the basic form of a type of product; or (3) if the

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product design is so common in the industry that it cannot be said

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to identify a particular source.”).

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however, are questions of fact.

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Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir. 2005).

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Here, Plaintiff’s relatively detailed description of its claimed

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trade dress is adequate to put defendant on notice, particularly in

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light of Plaintiff’s inclusion of images of the claimed trade dress

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in the SAC.

Questions of genericness,

Yellow Cab Co. of Sacramento v.

(SAC ¶ 12, Ex. A.)

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B.

Distinctiveness

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Defendant also contends that Plaintiff has not sufficiently

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pleaded that the claimed trade dress serves a source-identifying

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role because the Sanctuary Series trade dress is not inherently

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distinctive and Plaintiff has not adequately alleged secondary

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meaning.3

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Plaintiff’s trade dress claim is a “product design” claim or a

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“product packaging” claim.

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The distinction is important because product design trade dress can

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never be inherently distinctive, and therefore always requires a

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showing of secondary meaning to support a claim of infringement.

As an initial matter, the parties dispute whether

(Opposition at 14:12, Reply at 5:9.)

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“A trade dress is inherently distinctive if ‘its intrinsic
nature serves to identify a particular source of a product.’”
Paramount Farms Int'l LLC v. Keenan Farms Inc., No.
2:12-CV-01463-SVW-E, 2012 WL 5974169 at *5 (C.D. Cal. Nov. 28,
2012) (quoting Two Pesos v. Taco Cabana, Inc., 505 U.S. 763, 768
(1992)). The distinctiveness of a trade dress is a question of
fact. Paramount Farms, 2012 WL 5974169 at *5 (citing Zobmondo
Entertainment, LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th
Cir. 2010).
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Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 216

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(2000).

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“Product packaging trade dress,” or something similar,

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encompasses a wide variety of forms of trade dress, including not

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only a physical product’s external packaging, but also, for

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example, the decor of a restaurant.

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Plaintiff asserts here that its claim is of the product packaging

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variety, that cannot be the case.4

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premised on the Sanctuary Series label alone might qualify as a

Id. at 215.

Although

Although a trade dress claim

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packaging claim, Plaintiff describes its trade dress as

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encompassing even the essential, physical aspects of the Sanctuary

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Series candles, including a cylindrical container and a solid,

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single color wax.

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trade dress similar to that here, concluded that a claim

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incorporating physical features inherent to a product, along with

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other, more packaging-type features, such as labels and a product

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catalog, fell closer to the product design end of the trade dress

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spectrum, and therefore required a showing of secondary meaning.

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Yankee Candle Co., Inc. v. Bridgewater Candle Co., LLC., 259 F.3d

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25, 40-41 (1st Cir., 2001).

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same conclusion regarding the trade dress alleged by Plaintiff.

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Furthermore, the Supreme Court has counseled that “courts should

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err on the side of caution and classify ambiguous trade dress as

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product design, thereby requiring secondary meaning.”

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Bros., 529 U.S. at 215.

(SAC ¶ 12.)

The First Circuit, analyzing a

This Court agrees, and comes to the

Samara

Because Plaintiff’s trade dress is best

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Specifically, Defendant’s one-sentence argument states,
“Much of Indio’s brief on [inherent distinctiveness] is devoted to
insisting that Mercado’s trade dress is ‘product design’ variety
when it is not.” (Opp. at 14:12-13.)
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characterized as product design rather than packaging, and

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therefore cannot be inherently distinctive, Plaintiff’s allegations

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regarding inherent distinctiveness are of no moment.

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The question remains, however, whether the SAC sufficiently

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alleges that the Sanctuary Series trade dress has acquired

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secondary meaning.

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meaning when the purchasing public associates the dress with a

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single producer or source rather than just the product itself.”

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First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th

“A product’s trade dress acquires secondary

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Cir. 1987).

Contrary to Defendant’s suggestion, Plaintiff need not

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make any showing or provide any evidence at the pleading stage.

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Id. (“Whether a particular trade dress has acquired secondary

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meaning is a question of fact . . . .”).

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Plaintiff has promoted and sold Sanctuary Series candles for over

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twenty years, and has marketed Sanctuary Series candles through

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advertisements, sales representatives, and catalogs.

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20.)

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Series candles and that Plaintiff is the exclusive source of the

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trade dress, which identifies Plaintiff as its source.

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17, 19.)

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seen, they are adequate to survive a motion for judgment on the

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pleadings.5

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Inc., 870 F.2d 512, 517 (9th Cir. 1989) (“Evidence of use and

The SAC alleges that

(SAC ¶¶ 15,

The SAC further alleges that consumers seek out Sanctuary

(SAC ¶¶ 15-

Although the veracity of those allegations remains to be

See, e.g., Clamp Mfg. Co., Inc. v. Enco Mfg. Co.,

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Plaintiff will also, of course, bear the burden of
demonstrating that its trade dress is not generic. Yellow Cab, 419
F.3d at 928; see also Brighton Collectibles, Inc. v. RK Texas
Leather Mfg., 923 F.Supp.2d 1245, 1251-52 (S.D. Cal. 2013); Big
Island Candies, Inc. v. Cookie Corner, 269 F. Supp. 2d 1236, 124244 (D. Haw. 2003).
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advertising over a substantial period of time is enough to

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establish secondary meaning.”); see also Spirit Clothing Co. v.

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N.S. Enterprises, Inc., No. CV 13-2203-RGK, 2013 WL 12144107 at *3

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(C.D. Cal. July 23, 2013); Bobrick Washroom Equipment, Inc. v. Am.

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Specialties Inc., No. CV 10-6938-SVW, 2010 WL 11462854 at *3 (C.D.

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Cal. Dec. 15, 2010).6

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C.

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Defendant further argues that Plaintiff failed to make a

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Functionality

“factual showing” of non-functionality.

(Reply at 12:21.)

The

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test for functionality proceeds in two steps.

First, courts

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examine whether an arguably functional feature is essential to the

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use of purpose of the article or affects the cost or quality of the

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article.

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trade dress is functional, and the inquiry is over.

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If not, courts must proceed to the second step and determine

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whether exclusive use of the feature would impose “a significant

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non-reputation-related competitive disadvantage.”

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inquiry, however, including the inquiry whether a particular

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combination of elements is functional, presents a question of fact.

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Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 842-43

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(9th Cir. 1987).

At this stage, Plaintiff need not make any

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factual showing.

See, e.g., Stop Staring! Designs v. Tatyana, LLC,

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No. CV 09-2014 DSF(AJW), 2009 WL 10655208 at *2 (C.D. Cal. June 9,

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2009) (“The issues of distinctiveness, functionality, and

Millenium Laboratories, 817 F.3d at 1128-29.

If so, the

Id. at 1129.

Id.

This

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See also Int’l Jensen, Inc. v. Metrosound U.S.A., Inc., 4
F.3d 819, 824 (9th Cir. 1993) (“While evidence of a manufacturer’s
sales, advertising and promotional activities may be relevant in
determining secondary meaning, the true test of secondary meaning
is the effectiveness of this effort to create it.”) (citing First
Brands, 809 F.2d at 1383).
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likelihood of confusion are questions of fact that are not

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generally amenable to a motion to dismiss.”).

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D.

Likelihood of Confusion

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Lastly, Defendant argues that Plaintiff has provided no

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evidence of confusion and, as a result of this court’s dismissal of

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Plaintiff’s copyright claim, Plaintiff has not adequately pleaded

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likelihood of confusion for trade dress purposes.

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Plaintiff is not required to provide any evidence at the pleading

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stage.

Stop Staring!, 2009 WL 10655208 at *2.

To reiterate,

Likelihood of

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confusion is not only the “most important element” of trade dress

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claim, but is a question of fact “routinely submitted for jury

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determination[.]”

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Furthermore, this Court’s determination regarding Plaintiff’s

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copyright claim is not dispositive of the trade dress claim.

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First, substantial similarity for copyright purposes is distinct

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from likelihood of confusion for trademark or trade dress purposes.

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Second, the court’s substantial similarity copyright analysis

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focused on a far narrower set of elements than that presented in

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conjunction with Plaintiff’s trade dress claim.

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Court’s copyright analysis looked only to border artwork with the

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appearance of stained glass, Plaintiff’s trade dress claim

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encompasses numerous elements, including wax, a glass container of

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a certain shape, size, and opacity, a label of specific manufacture

Clicks Billiards, 251 F.3d at 1264-65.7

Whereas this

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Multi Time Machine, Inc. v. Amazon.com, Inc., 804 F.3d 930,
939 (9th Cir. 2015) does not support Defendant’s contention that
this court should find no likelihood of confusion at the pleading
stage. Although the Ninth Circuit did state that likelihood of
confusion is “often a question of fact, but not always[,]” it did
so in the summary judgment context, with references to specific
evidence.
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and shape, and art depicted thereupon.8

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Defendant are, therefore, inapt.

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Spielberg, 736 F.2d 1352, 1357-58 (9th Cir. 1984) (holding that two

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dramatic works were not substantially similar for copyright

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purposes, and therefore affirming dismissal of Lanham Act claim for

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reverse passing off).

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IV.

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The cases cited by

See, e.g. Lichtfield v.

Conclusion
For the reasons stated above, Defendant’s Motion for Judgment

on the Pleadings is DENIED.

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IT IS SO ORDERED.

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Dated: April 11, 2017

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DEAN D. PREGERSON
United States District Judge

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See note 2, supra.
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