Galaxy America, Inc. v. EZ Inflatables, Inc. et al

Filing 87

ORDER denying defendants EZ Inflatables, Inc. and Edgar Abraamyan's 49 Dispositive Motion to Dismiss Counts VI, VII, VIII For Failure to State A Claim and To Dismiss All Claims Against Edgar Abraamyan For Lack of Personal Jurisdiction. See Order for further details. Signed by Judge John E. Steele on 5/12/2021. (TLP)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
GALAXY AMERICA, INC.,
Plaintiff,
v.

Case No:

EZ INFLATABLES,
EDGAR ABRAAMYAN,

INC.,

2:19-cv-855-JES-MRM

AND

Defendants.
OPINION AND ORDER
This matter comes before the Court on defendants' Dispositive
Motion to Dismiss Counts VI, VII, and VIII Against Defendants For
Failure To State A Claim and To Dismiss All Claims Against Edgar
Abraamyan For Lack of Personal Jurisdiction (Doc. #49) filed on
June 11, 2020. Plaintiff filed a corrected Response in Opposition
(Doc. #57) on July 14, 2020.

For the reasons set forth below, the

motion is denied.
I.
The eight-count First Amended Complaint (FAC) alleges that
plaintiff Galaxy America, Inc. (Galaxy or plaintiff) is a renowned
company in the attractions and amusements industry, manufacturing
some of the most innovative and high-quality inflatable designs
that are sold in the United States marketplace, as well as in over
45 other countries. (Doc. #47, ¶¶ 3, 43.) Galaxy’s designs include
commercial-grade

inflatable

games,
1

obstacle

courses,

slides,

jumpers,

water

slides,

climbing

walls,

and

mechanical

and

interactive amusements, some of which are marketed using Galaxy’s
TOXIC® trademark and/or Galaxy’s trade dress. (Id. at ¶¶ 5, 57.)
The FAC further alleges that Defendants coveted Galaxy’s lucrative
customer base and success in the marketplace, and as a result,
unlawfully created “knock-off’s” of Galaxy’s products and trade
dress in an effort to lure its customers away from Galaxy.

(Id.

at ¶ 16.) The FAC asserts that Defendants intentionally copied,
without Galaxy’s consent, its TOXIC® products that are federally
registered, its trade dress, and its common law marks, and then
sold infringing products. (Id.)

Additionally, the FAC alleges

that defendant Edgar Abraamyan (Abraamyan) engaged in unlawful
activity against Galaxy due to his ownership of EZ Inflatables and
his

direction,

control,

and

personal

participation

in

the

infringing activities of his alter ego EZ Inflatables, Inc. (EZ
Inflatables). (Doc. #47, ¶¶ 211, 216.)
Defendant EZ Inflatables only challenges three counts of the
FAC, alleging that each fails to state a claim: trade dress
infringement under § 1125(a) (Count VI); Florida common law trade
dress infringement (Count VII); and contributory and vicarious
unfair competition pursuant to § 1125(a) (Count VIII).
Doc. #49, pp. 1, 4-15.)

(Doc. #47;

Defendant Abraamyan seeks dismissal of

all counts against him based on a lack of personal jurisdiction.
(Doc. #49, pp. 16-20.)
2

II.
“A court must have the power to decide the claim before it
(subject-matter jurisdiction) and power over the parties before it
(personal jurisdiction) before it can resolve a case. See Ruhrgas
AG v. Marathon Oil Co., 526 U.S. 574, 583–585, 119 S.Ct. 1563, 143
L.Ed.2d 760 (1999).”

Lightfoot v. Cendant Mortg. Corp., 137 S.

Ct. 553, 562 (2017).

While subject-matter jurisdiction is not

disputed in this case, defendant Abraamyan asserts that the Court
lacks personal jurisdiction over him, and therefore the FAC must
be dismissed in its entirety as to him. (Doc. #49, pp. 16-20.)
"Federal courts ordinarily follow state law in determining
the bounds of their jurisdiction over persons." Daimler AG v.
Bauman, 571 U.S. 117, 125 (2014). The Supreme Court has recognized
two kinds of personal jurisdiction: “general (sometimes called
all-purpose) jurisdiction and specific (sometimes called caselinked) jurisdiction.”

Ford Motor Co. v. Montana Eighth Judicial

Dist. Court, 141 S. Ct. 1017, 1024 (2021) (citation omitted.)
Supreme Court has summarized the differences:
A state court may exercise general jurisdiction only
when a defendant is essentially at home in the State.
General jurisdiction, as its name implies, extends to
any and all claims brought against a defendant. Those
claims need not relate to the forum State or the
defendant's activity there; they may concern events and
conduct anywhere in the world. But that breadth imposes
a correlative limit: Only a select set of affiliations
with a forum will expose a defendant to such sweeping
jurisdiction. In what we have called the “paradigm”

3

The

case, an individual is subject to general jurisdiction
in her place of domicile.
. . .
Specific jurisdiction is different: It covers defendants
less intimately connected with a State, but only as to
a narrower class of claims. The contacts needed for this
kind of jurisdiction often go by the name “purposeful
availment.” The defendant, we have said, must take “some
act by which [it] purposefully avails itself of the
privilege of conducting activities within the forum
State.” The contacts must be the defendant's own choice
and not “random, isolated, or fortuitous.” They must
show that the defendant deliberately “reached out
beyond” its home—by, for example, “exploi[ting] a
market” in the forum State or entering a contractual
relationship centered there. Yet even then—because the
defendant is not “at home”—the forum State may exercise
jurisdiction in only certain cases. The plaintiff ’s
claims, we have often stated, “must arise out of or
relate to the defendant's contacts” with the forum. Or
put just a bit differently, “there must be ‘an
affiliation between the forum and the underlying
controversy, principally, [an] activity or an occurrence
that takes place in the forum State and is therefore
subject to the State's regulation.’”
Ford Motor Co., 141 S. Ct. at 1024–25 (internal citations and some
punctuation omitted.)

Florida's long-arm statute provides for

both specific and general personal jurisdiction. Fla. Stat. §§
48.193(1)-(2); Madara v. Hall, 916 F.2d 1510, 1516 n.7 (11th Cir.
1996).
Procedurally, plaintiff is required to allege sufficient
facts in the complaint to make out a prima facie case of personal
jurisdiction. Louis Vuitton Malletier, S.A. v. Mosseri, 736 F.3d
1339, 1350 (11th Cir. 2013)) (citation omitted).
move

to

dismiss

a

claim

by

asserting
4

the

A defendant may

lack

of

personal

jurisdiction. Fed. R. Civ. P. 12(b)(2). When a defendant challenges
personal jurisdiction by submitting affidavits or other competent
evidence in support of its position, the burden traditionally
shifts

back

to

the

plaintiff

to

produce

evidence

supporting

jurisdiction. Posner v. Essex Ins. Co., 178 F.3d 1209, 1214-15
(11th Cir. 1999)(when “the burden shifts back to the plaintiff,
this time requiring plaintiff to prove — not merely allege —
jurisdiction by affidavits, testimony, or other documents.”).
Here, the FAC alleges the Court has personal jurisdiction
over each defendant. (Doc. #47, ¶ 36.)

The FAC alleges that

Abraayman is a resident of California over whom the Court may
exercise

personal

jurisdiction

pursuant

to

the

general

and

specific jurisdiction provisions of Fla. Stat. § 48.193(1) & (2).
(Doc. #47, ¶ 36.)

The FAC continues:

Defendants have intentionally and voluntarily conducted
business in the State of Florida on a continuous,
systematic and substantial basis from at least 2013 to
2019, having also sold infringing products to Galaxy’s
existing customers and potential customers within the
State of Florida during this period. From at least 2011—
2019, Defendants have consistently, continuously, and
systematically conducted business in the State of
Florida, made substantial sales to, and purchases from,
Florida residents, consumers, and companies, including
Plaintiff.
Defendant
Abraamyan
has
personally
participated in such activities within and aimed at
Florida residents and consumers.
(Doc. #47, ¶ 89.) The FAC asserts that the Court has personal
jurisdiction over defendant Abraamyan because “EZ inflatables is
the alter ego of Abraamyan and the instrument through which
5

Abraamyan has committed and continues to commit unlawful, tortious
acts of . . . trade dress infringement . . ., including continuous
and systematic marketing, offers for sale and sales of products,
including products, within and to Florida from 2013 to 2019.” (Id.
at ¶¶ 92, 89, 104, 155, 160.) Plaintiff alleges that defendant
Abraamyan is directing and controlling activities of trade dress
infringement and unfair competition committed by and through his
alter ego, EZ Inflatables, in Florida, from which Abraamyan derives
personal

benefit

including

financial

gain,

and

personally

participates in the unlawful activities. (Id. at ¶¶ 37, 83.)
FAC

also

alleges

Inflatables

(his

that
alter

Abraamyan,

as

ego),

actively

has

the

sole

owner

of

participated

The
EZ
in,

directed, controlled, and supervised the planning, marketing and
sales of EZ Inflatables in the State of Florida, which includes
attending trade shows such as the IAAPA Expo in Orlando, Florida
from 2013 to 2019, advertising, marketing and selling of goods on
EZ Inflatable’s website and on social media websites, transporting
and delivering company products while in the State of Florida, and
selling infringing products to multiple Florida companies. (Id. at
¶¶ 37, 83, 93, 95, 211.) In doing these activities, Plaintiff
asserts that Defendants, including Abraamyan, have intentionally
targeted consumers in the State of Florida.

(Id. at ¶ 83.)

Defendant Abraamyan has filed a declaration in opposition to
personal jurisdiction. (Doc. #49-1.) In his declaration, Abraamyan
6

maintains that (1) he does not and has never resided in Florida;
(2) he does not own any property in Florida; (3) he does not own,
use, possess, or hold a mortgage, lien, or any real property in
Florida; (4) he does not have any bank accounts in Florida; (5)
neither

he

nor

EZ

Inflatables

have

any

contracts

requiring

performance in Florida; (6) he does not travel to Florida for
personal reasons, and that when he did travel to Florida, it was
for business related to EZ Inflatables; (7) neither he nor EZ
Inflatables maintain any licenses to conduct business in Florida,
and do not have offices, facilities, agent, employees, materials,
or products located within the State; and (8) neither he nor EZ
Inflatables have ever targeted Galaxy’s business in Florida. (Id.
at ¶¶ 3-4, 6-7, 10, 12, 16-17, 26.) Finally, Abraamyan asserts
that even though he has attended the IAAPA Expo on behalf of EZ
Inflatables, the Expo is not directed at Florida or any of its
residents because it is a global trade show. (Id. at ¶ 27.)
Abraamyan argues that Plaintiff has not met the high threshold of
showing he is subject to general jurisdiction in a Florida court.
(Doc. #49, p. 19.) See Helicopteros Nacionales de Colombia, S.A.
v. Hall, 466 U.S. 408, 414 (1984)("It is clear that a very high
threshold must be met in order for general jurisdiction to be
exercised over a nonresident defendant in Florida.").

7

In

response,

Responses

to

Plaintiff

Plaintiff’s

points

Request

to

For

Defendants’
Admissions,

Amended
in

which

Defendants admit that they sold products to purchasers or took
purchase orders during the IAAPA Expo in Florida, at least once
between 2013 and 2019, and that EZ Inflatables sold at least five
products per year into Florida for at least three of the past five
years.

(Doc. #57-8, pp. 6-7, 52.)

Plaintiff also relies upon

Robin Whincup’s1 declaration, which asserts that Abraamyan is the
moving force behind EZ Inflatables and that Whincup has personal
knowledge that Defendants have purchased and sold products to
Florida consumers, including Galaxy and Galaxy’s customers, each
year from at least 2013-2017. (Doc. #57-4, ¶ 13.) Attached to
Whincup’s declaration is a spreadsheet dated January 21, 2020,
that Whincup avers is evidence of systematic and continuous sales
by and between Defendants and Galaxy, and Florida.2 (Id. at ¶ 14;
Doc. #57-5, pp. 3-7.) In addition, Plaintiff provides copies of
three

websites

of

Florida

companies

that

sell

Defendants’

infringing products, along with Twitter posts that show promotion

Robin Whincup is the President and founder of Galaxy, which
is headquartered in Port Charlotte, Florida. (Doc. #47, ¶¶ 2-4,
32; Doc. #57-4, p. 2.)
1

The sales in the spreadsheet purportedly occurred from 2011
through 2017. (Doc. #57-5, pp. 3-7.)
2

8

of Defendants’ products, including a promotion in Fort Myers,
Florida. (Doc. #57-6, pp. 2-15, 19-20, 22, 28, 33, 35-57.)
A.

General Personal Jurisdiction

A Florida court exercises general personal jurisdiction over
nonresident defendant who is "engaged in substantial and not
isolated activity within this state, whether such activity is
wholly interstate, intrastate, or otherwise, [and] whether or not
the claim arises from that activity." Fla. Stat. § 48.193(2);
Fraser v. Smith, 594 F.3d 842, 849 (11th Cir. 2010). "In order to
establish that [defendant] was engaged in substantial and not
isolated activity in Florida, the activities of [defendant] must
be considered collectively and show a general course of business
activity in the State for pecuniary benefit." Stubbs v. Wyndham
Nassau Resort & Crystal Palace Casino, 447 F.3d 1357, 1361 (11th
Cir. 2006).
activity"
continuous

Section 48.193(2)'s "substantial and not isolated

requirement
and

is

systematic

"the

functional

contact

equivalent

requirement

for

of

the

general

jurisdiction under the Fourteenth Amendment" to the United States
Constitution.

Meier ex rel. Meier v. Sun Int'l Hotels, Ltd., 288

F.3d 1264, 1269 (11th Cir. 2002). Thus, “[t]he reach of this
provision extends to the limits on personal jurisdiction imposed
by the Due Process Clause of the Fourteenth Amendment.” Fraser,
594 F.3d at 846.

9

Plaintiff relies heavily on the alter-ego theory in an effort
to establish personal jurisdiction.

Under Florida law, to pierce

the corporate veil under an alter-ego theory, a plaintiff must
allege:

“(1)

the

shareholder

dominated

and

controlled

the

corporation to such an extent that the corporation's independent
existence was in fact non-existent and the shareholders were in
fact alter egos of the corporation; (2) the corporate form must
have been used fraudulently or for an improper purpose; and, (3)
the fraudulent or improper use of the corporate form caused injury
to the claimant.” Molinos Valle Del Cibao, C. por A. v. Lama, 633
F.3d 1330, 1349 (11th Cir. 2011).

See also WH Smith, PLC v.

Benages & Assocs., Inc., 51 So.3d 577, 581 (Fla. Dist. Ct. App.
2010). The FAC does not allege that the corporate form was used
for an improper purpose or that the improper use of the corporate
form caused injury to Plaintiff.

The Court finds that Plaintiff

has not plausibly alleged facts to support its alter-ego theory
which would suffice to pierce the corporate veil. Eitzen Chem.
(Singapore) PTE, Ltd. v. Carib Petroleum, 749 F. App'x 765, 773
(11th Cir. 2018) (denying a veil-piercing claim where it was not
shown that the corporation was organized for a fraudulent or
illegal purpose or that the corporate form was itself misused.)
The Court finds that general jurisdiction is not otherwise
established over defendant Abraamyan.

The paradigm forum for

Abraamyan is California, his state of domicile. Ford Motor Co.,
10

141 S. Ct. at 1025.

Galaxy’s spreadsheet of purported sales

between Galaxy and Defendants from 2011 through 2017 shows there
were

numerous

sales,

but

not

“continuous and systematic.”

to

the

extent

that

they

were

See Croft, 2010 U.S. Dist. LEXIS

40592, at *8 (where the defendant derived sales and profits from
Florida residents on at least thirty-nine occasions over a three
year span, with at least 6% of worldwide sales going to Florida
residents, the court held it was a classic case of “sporadic and
insubstantial contacts” insufficient for general jurisdiction).
Likewise, evidence of Defendants’ website, Twitter feed, or three
companies in Florida that sell Defendants’ infringing products is
insufficient to show that Abraamyan has engaged in a general course
of business activity in the State for pecuniary benefit.

See,

e.g., Trustees of Columbia Univ. In City of New York v. Ocean
World, S.A., 12 So. 3d 788, 795 (Fla. 4th DCA 2009) ("The mere
existence of a website does not show that a defendant is directing
its business activities towards every forum where the website is
visible.") “To hold otherwise would "render any individual or
entity

that

created

.

.

.

a

website

subject

to

personal

jurisdiction' for virtually any matter." Regent Grand Mgmt., Ltd.
v. Tr. Hosp'y LLC, No. 18-21445-Civ, 2019 U.S. Dist. LEXIS 4829,
at *17 (S.D. Fla. Jan. 9, 2019).

Finally, Abraamyan’s attendance

at trade shows in Florida and marketing the alleged infringing
products

is

insufficient

to

warrant
11

the

exercise

of

general

jurisdiction over Abraamyan. See Schulman v. Inst. for Shipboard
Educ., 624 F. App'x 1002, 1005 (11th Cir. 2015) (citing Goodyear
Dunlop

Tires

Operations,

S.A.

v.

Brown,

564

U.S.

915,

919

(2011))(finding that marketing efforts and attendance at a Florida
trade show, even when coupled with sales to Florida dealers, do
not render the defendant "essentially at home.”).
Considering the totality of all these activities and drawing
all reasonable inferences in favor of Galaxy, the Court finds that
Abraamyan’s

contacts

with

Florida

are

insufficient

to

confer

general personal jurisdiction under the Florida long-arm statute’s
general jurisdiction provision.
B. Specific Personal Jurisdiction
Specific

jurisdiction

authorizes

a

Court

to

exercise

jurisdiction over a nonresident defendant when the cause of action
arises from or relates to the defendant's actions within a state.
Fla. Stat. § 48.193(1); Louis Vuitton, 736 F.3d at 1352.

Florida

Statute § 48.193(1)(a)(2) permits jurisdiction over a nonresident
defendant who commits a tort outside of the state that causes
injury inside the state of Florida.

Licciardello v. Lovelady, 544

F.3d 1280, 1283 (11th Cir. 2008). This provision does not require
a tortfeasor's "physical presence in Florida is not required to
obtain personal jurisdiction".

Binder v. Aeschlimann, No. 17-

80290-CIV, 2019 U.S. Dist. LEXIS 51869, at *13 (S.D. Fla. Mar. 25,
2019); Internet Sols. Corp. v. Marshall, 557 F.3d 1293, 1296 (11th
12

Cir. 2009). "It is well settled in the Eleventh Circuit that
trademark claims under the Lanham Act allege tortious acts for
long-arm purposes[.]" PG Creative Inc. v. Affirm Agency, LLC, No.
18-cv-24299, 2019 U.S. Dist. LEXIS 189001, 2019 WL 5684219, at *4
(S.D. Fla. Oct. 31, 2019); see also Hard Candy, LLC v. Hard Candy
Fitness,

LLC,

106

F.

Supp.

3d

1231,

1239

(S.D.

Fla.

2015)

(recognizing trademark infringement under 15 U.S.C. § 1125(a), and
common law unfair competition involve "tortious acts" under the
long-arm statute).
Abraamyan argues he has not engaged in tortious conduct
expressly aimed at Galaxy in Florida.
done

so,

Defendants

assert

that

But even if Abraamyan had
his

role

as

a

corporate

representative with EZ Inflatables does not subject him to specific
personal jurisdiction.

(Doc. #49, pp. 16-18; Doc. #49-1, pp. 2-

5.) The crux of Defendants’ argument is that Abraamyan is protected
under the corporate shield doctrine.

As this court has previously

explained,
[i]n Florida, the corporate shield doctrine, also known
as the "fiduciary shield" doctrine, provides that "acts
performed by a person exclusively in his corporate
capacity not in Florida but in a foreign state may not
form the predicate for the exercise of personal
jurisdiction over the employee in the forum state."
Kitroser v. Hurt, 85 So. 3d 1084, 1088 (Fla. 2012). The
rationale behind the doctrine is that it "may be unfair
to force an individual to defend an action filed against
him personally in a forum with which his only relevant
contacts are acts performed totally outside the forum
state and not for his own benefit but for the exclusive
benefit of his employer." Id. However, the defendants'
13

argument is misplaced, as the doctrine does not apply to
intentional torts. See Mosseri, 736 F.3d at 1355
("[U]nder Florida law, this corporate shield doctrine is
inapplicable where the corporate officer commits
intentional torts."); Black v. Bryant, 905 F. Supp.
1046, 1052 (M.D. Fla. 1995) (noting that in accordance
with Florida's long-arm statute, "a non-resident
corporate officer may be haled into court in Florida if
it is alleged that he personally committed an
intentional tort expressly aimed at the plaintiff in the
forum state.").
Skypoint Advisors, LLC v. 3 Amigos Prods. LLC, No. 2:18-cv-356FtM-29MRM, 2019 U.S. Dist. LEXIS 124134, at *23-24 (M.D. Fla. July
25, 2019). Since the FAC alleges that defendant Abraamyan actively
and knowingly engaged in an intentional tortious act of trade dress
infringement in Florida (Doc. #47, ¶¶ 87-90, 93, 155-56, 212), the
corporate

shield

doctrine

is

not

applicable.

Plaintiff

has

plausibly pled sufficient facts to demonstrate the Court has
specific personal jurisdiction over Abraamyan.
C. Constitutional Due Process
The remaining question is whether exercising jurisdiction
over

Abraamyan

comports

with

the

Due

Process

Clause

of

the

Fourteenth Amendment. To determine whether exercising specific
jurisdiction comports with due process, courts employ a three-part
test, which examines:
(1) whether the plaintiff's claims "arise out of or
relate to" at least one of the defendant's contacts with
the forum; (2) whether the nonresident defendant
"purposefully availed" himself of the privilege of
conducting activities within the forum state, thus
invoking the benefit of the forum state's laws; and (3)
whether the exercise of personal jurisdiction comports
14

with "traditional notions of fair play and substantial
justice."
Louis Vuitton, 736 F.3d at 1355.
With

respect

to

the

first

prong,

Defendants

argue

that

Abraamyan’s contacts with Florida are not the “but-for cause” of
Plaintiff’s injuries, and that any alleged acts substantially
occurred in California. (Doc. #49, p. 20.) A "tort 'arises out of
or relates to' the defendant's activity in a state only if the
activity

is

a

'but-for'

cause

of

the

tort."

Waite

v.

Acquisition Corp., 901 F.3d 1307, 1314 (11th Cir. 2018).
alleges

defendants

EZ

Inflatables

and

Abraamyan

All

The FAC

have

each

committed unlawful, tortious acts of trade dress infringement, and
have marketed, advertised, and sold infringing products in the
State of Florida, which has caused harm to Galaxy and consumers
within Florida.

(Doc. #47, ¶¶ 37, 41-42, 92.)

The Court finds

Abraamyan’s alleged activities in Florida are the but-for cause of
Plaintiff’s alleged injuries and claims, satisfying the first
prong.
Turning

to

the

second

prong,

the

FAC

alleges

that

EZ

Inflatables and Abraamyan have intentionally targeted customers in
Florida through their website, social media, direct marketing, and
regular attendance at trade shows, and have marketed and sold
products in the State of Florida through these channels.

(Doc.

#47, ¶¶ 82-83, 89.) Defendants argue that website sales are “too

15

narrow a thread” on which to find meaningful contact (Doc. #49, p.
20), but the Court is not persuaded. See, e.g., GLD, LLC v. Gold
Presidents, LLC, No. 20-21617-CIV-MORE, 2021 U.S. Dist. LEXIS
8158, at *9 (S.D. Fla. Jan. 15, 2021) (finding purposeful availment
existed where the defendant created a website to sell watches that
infringed upon the plaintiff’s trade dress, which was accessible
in Florida, even though no sales were completed); EasyGroup Ltd.
v. Skyscanner, Inc., No. 20-20062-CIV, 2020 U.S. Dist. LEXIS
166425, at *29-30 (S.D. Fla. Sept. 11, 2020) ("Easyfly purposefully
availed itself of the privileges of conducting business in Florida.
Easyfly clearly does business over the Internet in the United
States and Florida; is willing to (and does) directly sell its
services to Florida customers; has not limited its sales to any
region or area; and accepts payment from Florida customers.");
Rice v. PetEdge, Inc., 975 F. Supp. 2d 1364, 1371 (N.D. Ga. 2013)
(where the defendant sold trademarked products online into the
forum state and it was defendant’s only contact, the court found
"[d]efendant's creation of a website that allows Georgia customers
to

directly

purchase

its

products

constitutes

purposeful

availment, as defendant financially benefits from doing business
in

Georgia.")

The

Court

finds

Abraamyan

purposefully

availed

himself of the privilege of conducting activities within Florida,
satisfying the second prong. Louis Vuitton, 736 F.3d at 1355.

16

As for the third and final prong, Defendants argue that given
Abraamyan’s non-existent contacts with Florida outside of his role
with EZ Inflatables, fair play and substantial justice merit
dismissal of all claims against him. (Doc. #49, p. 20.) The "fair
play and substantial justice factor is to be applied sparingly."
EasyGroup Ltd., 2020 U.S. Dist. LEXIS 166425, at *33. This inquiry
considers five "fairness factors" to determine whether exercising
jurisdiction over a defendant is reasonable: (1) the burden on the
defendant of litigating in the forum, (2) the forum state's
interest in adjudicating the dispute, (3) the plaintiff's interest
in obtaining convenient and effective relief, (4) the interstate
judicial

system's

interest

in

obtaining

the

most

efficient

resolution of controversies, and (5) states' shared interest in
furthering fundamental social policies. Meier ex rel., 288 F.3d at
1276.
Upon careful consideration of each factor, the Court finds
Defendants

have

not

“present[ed]

a

compelling

case

that

the

presence of some other considerations would render jurisdiction
unreasonable.” Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477
(1985). Litigating this case in Florida would not be unfair in
light

of

modern

methods

of

transportation

and

communication,

Maurer Rides USA, Inc. v. Beijing Shibaolai Amusement Equip. Co.,
Ltd., No. 6:10-cv-1718, 2014 U.S. Dist. LEXIS 100989, 2014 WL
3687098, at *5 (M.D. Fla. July 24, 2014), and his routine travel
17

to Florida. Furthermore, “Florida has a very strong interest in
affording its residents a forum to obtain relief from intentional
misconduct

of

nonresidents

causing

injury

in

Florida.”

Licciardello, 544 F.3d at 1288. The FAC has sufficiently alleged
that Plaintiff has been injured by the intentional misconduct of
Abraamyan, which was expressly aimed at a Florida corporation.
Galaxy should not have to travel to California to seek redress
from persons who knowingly caused injury in Florida. See id.
(noting that “[t]he Supreme Court concluded that ‘[a]n individual
injured in California need not go to Florida to seek redress from
persons who, though remaining in Florida, knowingly cause the
injury in California.’"). Finally, Galaxy “has a strong interest
in obtaining convenient and effective relief in order to protect
its company's reputation, resolve any consumer confusion, and
maintain the value of its trademark[s]." Spectrum Image, Inc. v.
Makozy, No. 19-21702-Civ, 2019 U.S. Dist. LEXIS 143346, 2019 WL
3997164, at *3 (S.D. Fla. Aug. 23, 2019) (alteration added;
citation omitted).

The Court finds this is not "one of those rare

cases in which minimum requirements inherent in the concept of
fair play and substantial justice defeat the reasonableness of
jurisdiction." U.S. S.E.C. v. Carrillo, 115 F.3d 1540, 1547 (11th
Cir. 1997) (quotation marks omitted).
Plaintiff has satisfied the specific personal jurisdiction
portion of Florida’s long-arm statute, and exercising specific
18

personal jurisdiction over defendant Abraamyan does not offend due
process. Accordingly, Defendant’s motion to dismiss all claims
against Abraamyan for lack of personal jurisdiction is denied.
III.
Defendant EZ Inflatable argues that Count VI through Count
VIII of the FAC should be dismissed for failure to state a claim.
(Doc. #49, pp. 1-15.)

For the reasons set forth below, that

portion of the motion is denied.
Under Federal Rule of Civil Procedure 8(a)(2), a Complaint
must contain a "short and plain statement of the claim showing
that

the

pleader

8(a)(2). This

is

entitled

obligation

to

relief." Fed.

"requires

more

than

R.

Civ.

labels

P.
and

conclusions, and a formulaic recitation of the elements of a cause
of action will not do." Bell Atl. Corp. v. Twombly, 550 U.S. 544,
555, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007) (citation omitted).
To survive dismissal, the factual allegations must be "plausible"
and

"must

be

enough

to

raise

a

right

to

relief

above

the

speculative level." Id. See also Phx. Entm't Partners, LLC v.
Casey Rd. Food & Bev., LLC, 728 F. App'x 910, 912 (11th Cir.
2018).

This requires "more than an unadorned, the-defendant-

unlawfully-harmed-me accusation." Ashcroft v. Iqbal, 556 U.S. 662,
678, 129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009) (citations omitted).
In deciding a Rule 12(b)(6) motion to dismiss, the Court must
accept all factual allegations in a complaint as true and take
19

them in the light most favorable to plaintiff, Erickson v. Pardus,
551 U.S. 89, 127 S. Ct. 2197, 167 L. Ed. 2d 1081 (2007), but
"[l]egal conclusions without adequate factual support are entitled
to no assumption of truth." Mamani v. Berzaín, 654 F.3d 1148, 1153
(11th Cir. 2011) (citations omitted). "Threadbare recitals of the
elements of a

cause of action, supported by mere conclusory

statements, do not suffice." Iqbal, 556 U.S. at 678. "Factual
allegations

that

are

merely

consistent

with

a

defendant's

liability fall short of being facially plausible."

Chaparro v.

Carnival Corp., 693 F.3d 1333, 1337 (11th Cir. 2012) (internal
citations

omitted).

Thus,

the

Court

engages

in

a

two-step

approach: "When there are well-pleaded factual allegations, a
court should assume their veracity and then determine whether they
plausibly give rise to an entitlement to relief." Iqbal, 556 U.S.
at 679.
A. Counts VI and Count VII
The FAC alleges claims of trade dress infringement under
§43(a) of the Lanham Act (Count VI) and under Florida common law
(Count VII). (Doc. #47, pp. 55-59.) "The Lanham Act provides
national protection of trademarks in order to secure to the owner
of the mark the goodwill of his business and to protect the ability
of consumers to distinguish between competing producers." Park 'N
Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198 (1985).
See also Savannah Coll. of Art & Design, Inc. v. Sportswear, Inc.,
20

872 F.3d 1256, 1260 (11th Cir. 2017). Section 43(a) of the Lanham
Act creates a federal cause of action commonly referred to as trade
dress infringement.

FIU Bd. of Trs. v. Fla. Nat'l Univ., Inc.,

830 F.3d 1242, 1265 (11th Cir. 2016).

Section 43(a) states:

(1) Any person who, on or in connection with any goods
or services, . . . uses in commerce any word, term, name,
symbol, or device, . . . or any false designation of
origin, false or misleading description of fact, or
false or misleading representation of fact, which —
(A) is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation,
connection, or association of such person with
another person, or as to the origin, sponsorship, or
approval of his or her goods, services, or
commercial activities by another person .
. .
shall be liable in a civil action by any person who
believes that he or she is or is likely to be damaged by
such act.
15 U.S.C. § 1125(1)(A).

Trade dress constitutes a "symbol" or

"device" by which the goods of the applicant may be distinguished
from the goods of others.

Wal-Mart Stores, Inc. v. Samara Bros.,

529 U.S. 205, 210-11 (2000).

Trade dress is defined as "the total

image of a product," which "may include features such as size,
shape, color or color combinations, texture, graphics, or even
particular sales techniques."

Yellowfin Yachts, Inc. v. Barker

Boatworks, LLC, 898 F.3d 1279, 1288 (11th Cir. 2018) (quoting John
H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th
Cir. 1983)).

A typical trade dress action involves “a good's

21

packaging or labeling, but the design of a product, or a feature
of

a

product,

may

also

constitute

protectable

trade

dress.”

Yellowfin Yachts, Inc., 898 F.3d at 1288.
A plaintiff must allege and ultimately prove three elements
to prevail on a trade dress claim under the Act: “1) its trade
dress is inherently distinctive or has acquired secondary meaning,
2)

its

trade

dress

is

primarily

non-functional,

and

3)

the

defendant's trade dress is confusingly similar.” Id. "As all three
elements are necessary for a finding of trade dress infringement,
any one could be characterized as threshold."

Dippin' Dots, Inc.

v. Frosty Bites Distribution, LLC, 369 F.3d 1197, 1202 (11th Cir.
2004).
“Courts may use an analysis of federal infringement claims as
a 'measuring stick' in evaluating the merits of state law claims
[of infringement]." Suntree Techs., Inc. v. Ecosense Int'l, Inc.,
693 F.3d 1338, 1345 (11th Cir. 2012).

Thus, the standard for

Plaintiff’s state law trade dress infringement claim is the same
as under the Lanham Act. See ZP NO. 314, LLC v. ILM Cap., LLC, No.
16-00521-B, 2019 U.S. Dist. LEXIS 170244, at *26 (S.D. Ala. Sep.
30, 2019). The Court will therefore consider together whether
Plaintiff has stated a plausible federal and Florida common law
claim for trade dress infringement.
Defendants assert that Plaintiff’s trade dress counts fail
for four reasons.

The Court will address each reason in turn.
22

(1) Failure to Allege Features Constituting Trade Dress
Defendants

argue

that

Plaintiff

has

failed

to

state

a

plausible trade dress claim because the FAC does not allege “a
sufficient description of what the trade dress consists of and on
what line of goods the amorphous Trade Dress is meant to serve as
a source indicator.” (Doc. #49, pp. 5-6.)
To describe the allegedly infringed trade dress, the FAC
provides the following image:

(Doc. #47, ¶ 8.) The FAC asserts that its trade dress designs
consist of
a well-defined black and yellow repeating pattern on the
upper baffles bordering the profiles and upper outline
of its product designs, including upon the upper
sections of the sidewalls, lower walls, slide walls and
arches creating an overall visual connection and
relationship between the curves, tapers, and lines of
the products.
(Id. at ¶ 10.) In addition to its yellow and black trade dress,
the FAC alleges that it has a multi-colored trade dress design

23

that includes specific configuration and use of color combinations
including:
yellow, black, green, and gray additional features of
its products in connection with the “floor panels (which
are typically primarily green), inner and out sidewall
baffles (which are typically alternating solid bands of
yellow, grey and/or black baffles typically configured
below the repeating pattern of back and yellow stripes),
obstacles, side walls and bordering in combination and
in relation to the yellow and black repeating pattern of
stripes which appear on the upper border baffles and
cylindrical elements . . .
(Id. at ¶ 11.)

The FAC associates the trade dress design with the

products Plaintiff manufactures, markets, offers for sale, and
sells such as fitness equipment, inflatables, obstacle courses,
amusement park rides, and carnival rides. (Id. at ¶ 12.) The FAC
also provides several pictures that depict Galaxy’s alleged trade
dress. See (Id., pp. 17-21 (Figures 1-6, 9.))
“A plaintiff must describe with words the distinctive feature
of trade dress, and a plaintiff who seeks protection for a line of
products ‘faces the particularly difficult challenge of showing
that

the

appearance

of

its

several

products

is

sufficiently

distinct and unique to merit protection as a recognizable trade
dress.’” Yellowfin Yachts, Inc. v. Barker Boatworks, LLC, 237 F.
Supp. 3d 1230, 1235 (M.D. Fla. 2017). “A plaintiff's inability to
identify and describe a distinctive, aesthetic feature exposes a
trade-dress claim too vague to succeed.” Id.; see, e.g., Yellowfin
Yachts, Inc. v. Barker Boatworks, LLC, No. 8:15-cv-990-T-23TGW,

24

2015 U.S. Dist. LEXIS 149754, at *5 (M.D. Fla. Nov. 4, 2015)
(citing to cases in finding that plaintiff’s pictures and diagrams
in the complaint were sufficient to describe the alleged trade
dress in defeating a motion to dismiss); Someecards v. SnarkeCards,
LLC, 2014 U.S. Dist. LEXIS 108264, 2014 WL 3866024, at *2 (W.D.N.C.
Aug. 6, 2014)("At the pleadings stage, pictures of trade dress
alone may provide the necessary description of trade dress.");
Weber-Stephen Prods. LLC v. Sears Holding Corp., 2013 U.S. Dist.
LEXIS

153806,

2013

WL

5782433,

at

*4

(N.D.

Ill.

Oct.

25,

2013)(holding that "photographs and . . . figures" satisfied the
pleading requirements even though the complaint failed to "clarify
exactly what it mean[t] by 'shroud riveted band design.'").
At this stage of the proceedings, the Court finds that the
allegations in the FAC regarding infringement of Plaintiff’s trade
dress are sufficient to identify a protectable interest. See HakoMed USA, Inc. v. Axiom Worldwide, Inc., No. 8:06-CV-1790-T-27EAJ,
2006 U.S. Dist. LEXIS 94240, 2006 WL 3755331, at *11 (M.D. Fla.
Nov. 15, 2006) ("Under . . . the Lanham Act . . . 'the design of
a

product

itself

may

constitute

protectable

trade

dress.'"

(quoting John H. Harland Co., 711 F.2d at 980). The FAC, including
the pictures of the alleged trade dress, sufficiently identifies
and describes distinctive, aesthetic features of Galaxy’s trade
dress, such that Plaintiff’s “trade-dress claim [is not] too vague
to succeed.” Yellowfin Yachts, Inc., 237 F. Supp. 3d at 1235.
25

(2) Distinctiveness of Galaxy’s Trade Dress
Defendants also argue that the FAC fails to state a claim for
trade

dress

allegations

infringement
that

its

because

trade

dress

it
is

makes

only

inherently

conclusory

distinct

and

Plaintiff cannot show the trade dress has acquired secondary
meaning.
capable

(Doc. #49, pp. 7-11.) “A trade dress is distinctive and
of

being

protected

if

it

is

either

(1)

inherently

distinctive or (2) has acquired distinctiveness through secondary
meaning.” Tempur-Pedic N. Am., LLC v. Mattress Firm, Inc., No.
8:18-cv-2147-T-33SPF, 2019 U.S. Dist. LEXIS 89803, at *10 (M.D.
Fla. Jan. 11, 2019) (citing Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 769 (1992) (citation omitted)).

For the reasons set

forth below, this portion of the motion is denied.
(a) Inherently Distinctive Trade Dress
A trade dress is inherently distinctive when its "intrinsic
nature serves to identify a particular source of a product." Vital
Pharm., Inc., 472 F. Supp. 3d at 1250; Tempur-Pedic N. Am., LLC,
2019 U.S. Dist. LEXIS 89803, at *10. “The ultimate question in
determining whether a product's trade dress is distinctive is not
whether ‘each element or part’ of the dress is distinctive, but
rather whether the combination of elements, taken ‘as a whole,’
conveys a unique impression.”

Vital Pharm., Inc., 472 F. Supp. 3d

at 1251.

26

The FAC alleges that Galaxy chose to adopt and utilize a
specific trade dress which is “inherently distinctive in the
attractions and amusement industry.” (Doc. #47, ¶ 45.)

The FAC

alleges that Plaintiff’s trade dress is applied to its products in
a

manner

“which

wraps

certain

elements,

including

baffles,

cylindrical elements, borders, and booms . . . in a manner akin to
product packaging, creating a striking, vivid, recognizable and
consistent overall source identifying, commercial impression of
its products.”

(Id. at ¶ 51.) The FAC also alleges that “the

placement, stylization, design, combination, configuration, and
specific use of a unique color scheme [well-defined yellow and
black repeating pattern of stripes, and green and gray] as part of
Galaxy’s

trade

dress

creates

a

unique

overall

commercial

impression in the minds of consumers which serves to identify
Galaxy as the source origin of its products and to set Galaxy’s
products

apart

from

others

in

the

attractions

and

amusement

marketplace.” (Id. at ¶¶ 10, 46, pp. 17-21 (Figures 1-4, 7, 9,11.))
The FAC asserts that Galaxy’s trade dress is entitled to protection
under the Act because it is “distinctive, non-functional, and has
acquired secondary meaning.” (Id. at ¶¶ 10, 191.)
Defendants argue that the Court should ignore Plaintiff’s
mischaracterization that its trade dress is akin to “product
packaging” since Plaintiff is only making this allegation because
the product design cannot be inherently distinctive. (Doc. #49, p.
27

8.)

In ruling on a motion to dismiss, the Court must accept all

factual allegations in the FAC as true and take them in the light
most favorable to Plaintiff.

Erickson, 551 U.S. at 93-94. The FAC

has clearly alleged that Plaintiff’s trade dress is applied to its
products in a manner akin to product packaging.

While defendants

may disagree that such allegations are accurate, that dispute is
for another day.
Defendants also argue that irrespective of product packaging,
no color mark can ever be inherently distinctive. (Doc. #49, p.
9.) The Court disagrees. The Supreme Court has made clear that
inherent

distinctiveness

turns

on

whether

consumers

would

be

predisposed to "equate the [color] feature with the source." WalMart Stores, 529 U.S. at 211. While it is true that "color is
usually perceived as ornamentation," In re Owens-Corning Fiberglas
Corp., 774 F.2d 1116, 1124 (Fed. Cir. 1985), “a distinct colorbased product packaging mark can indicate the source of the goods
to a consumer, and, therefore, can be inherently distinctive.” In
re Forney Indus., 955 F.3d 940, 945 (Fed. Cir. 2020)(holding that
the

“use

of

color

in

product

packaging

can

be

inherently

distinctive . . . only if specific colors are used in combination
with

a

well-defined

shape,

pattern,

or

other

distinctive

design.”).
Plaintiff has sufficiently alleged it employs

unique, well-

defined overall color scheme which makes up Galaxy’s trade dress
28

and serves to identify Galaxy as the source origin of its products
to consumers and to set Galaxy’s products apart from others in the
attractions and amusement marketplace.

See Wal-Mart Stores, 529

U.S. at 211. The Court finds the FAC adequately and plausibly
alleges that Galaxy’s trade dress is inherently distinctive.
(b) Acquired Secondary Meaning
Defendants also argue that the FAC does not sufficiently
allege that Galaxy’s trade dress has acquired secondary meaning
and fails to allege that its trade dress acquired secondary meaning
prior to Defendants’ use of Galaxy’s trade dress. (Doc. #49, pp.
10-11.) The Court finds the FAC sufficient as to its allegations
concerning acquired secondary meaning.
Secondary meaning "occurs when, in the minds of the public,
the primary significance of [the] trade dress is to identify the
source of the product rather than the product itself.'" Miller's
Ale House, Inc. v. Boynton Carolina Ale House, LLC, 702 F.3d 1312,
1322 (11th Cir. 2012) (quoting Wal-Mart Stores, 529 U.S. at 211).
Relevant factors in determining whether a trade dress has acquired
secondary meaning are:
(1) The length and manner of its use; (2) the nature and
extent of advertising and promotion; (3) the efforts
made by the plaintiff to promote a conscious connection
in the public's mind between the trade dress and the
plaintiff's business; and (4) the extent to which the
public actually identifies the trade dress with the
plaintiff's products.

29

GLD, LLC, 2021 U.S. Dist. LEXIS 8158, at *21; Tropic Ocean Airways,
Inc. v. Floyd, 598 F. App'x 608, 612 (11th Cir. 2014).
With respect to secondary meaning, the FAC alleges that:
12. Galaxy has consistently and continuously used its
marketing to promote a conscious connection in the minds
of consumers between the Galaxy Trade Dress and Galaxy
as the sole source of origin of products bearing such
trade dress.
15. Galaxy has also continuously and extensively
utilized its trade dress since at least 2013 in its
marketing materials including its catalogs, brochures,
flyers, social medial campaigns, company websites,
displays, exhibits and other advertising. As a result,
consumers in the attractions and amusement market have
come to identify Galaxy’s trade dress as a sign of the
high-quality and distinctive products produced and sold
by Galaxy. Indeed, through Galaxy’s extensive and
continuous use in commerce, the Galaxy Trade Dress
designs have become well-known indicators of the origin
and quality of Galaxy’s Trade Dress Products, acquiring
substantial secondary meaning in the attractions and
amusements marketplace, including within Florida.
48. Galaxy’s extensive worldwide marketing efforts in
connection with its unique trade dress have resulted in
consumers identifying its trade dress with Galaxy as the
source of products bearing the unique and specific color
combinations, shapes, pattern, placements and design
comprising the Galaxy Trade Dress.
192. Galaxy has extensively and continuously promoted
and used its trade dress in interstate commerce within
the United States since at least 2013 . . . The Galaxy
Trade Dress has also acquired substantial secondary
meaning in the marketplace. Moreover, Galaxy commenced
use of its trade dress long before Defendants’ unlawful
use of Galaxy’s trade dress in connection with the
infringing products.
(Doc. #47, ¶¶ 12, 15, 48, 192.)

30

Accepting these allegations as true and viewing them in a
light most favorable to Plaintiff, Galaxy has plausibly alleged
that its trade dress has acquired secondary meaning.

The FAC

provides sufficient facts about the length of time Galaxy has used
its trade dress (at least since 2013), the nature and extent of
marketing (in catalogs and flyers, on websites and in social
media), the continuous and extensive effort Galaxy has made to
promote a connection in the consumer’s mind between its trade dress
and Galaxy’s business, and that the public has now come to identify
Galaxy’s trade dress with its products. Contrary to Defendants’
argument, the Court finds these allegations are sufficient to show
that Plaintiff’s trade dress may have obtained secondary meaning
prior to Defendants’ use of the trade dress. See (Doc. #47, ¶¶ 18,
192.)

Additionally,

Plaintiff

has

alleged

that

Defendants

intentionally copied Plaintiff's Trade Dress, (Doc. #47, ¶¶ 16,
88), and “proof of intentional copying is probative evidence as to
secondary meaning issue.” Vital Pharm., Inc., 472 F. Supp. 3d at
1259 (quoting Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 716 F.2d
854, 860 (11th Cir. 1983)).
(3) Non-functionality of Galaxy’s Trade Dress
Defendants argue that the FAC does not and cannot allege that
Galaxy’s trade dress is non-functional.3

(Doc. #49, pp. 11-13.)

Defendants have provided the Court with records from the
U.S. Patent and Trademark Office as well as records related to
3

31

The Court, however, finds the FAC has sufficiently pled this
element of trade dress infringement.
"Functional features are by definition those likely to be
shared by different producers of the same product and therefore
are unlikely to identify a particular producer." Dippin' Dots,
Inc., 369 F.3d at 1203. “[A] product feature is functional . . .
if it is essential to the use or purpose of the [product] or if it
affects the cost or quality of the [product].” TrafFix Devices,
Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 24 (2001)(internal
quotation marks omitted). Likewise, a functional feature “is one
the exclusive use of which would put competitors at a significant
non-reputation-related disadvantage.” Dippin' Dots, Inc., 369 F.3d
at

1203.

"These

features

cannot

be

appropriated;

otherwise,

competitors would be prevented from duplicating the new product
even to the extent permitted by the branches of the law of
intellectual

property

that

protect

innovation

rather

than

designations of source." Id. Functionality is considered with
respect to the design in its entirety. Id.
Here, the FAC alleges that its trade dress - consisting of
the strategic placement of a well-defined yellow and black stripe

U.S. Nuclear Regulatory Commission Regulation—10 C.F.R. § 34.35,
and request the Court take judicial notice of such records. See
(Doc. #49, p. 12, n.5; p. 15.) The Court will do so. See Horne v.
Potter, 392 F. App'x 800, 802 (11th Cir. 2010)(stating that the
court may take judicial notice of public records without converting
a motion to dismiss into a motion for summary judgment).
32

pattern, as well as the specific configuration of yellow, black,
green and gray color features on its products - is non-functional.
(Doc. #47, ¶ 14.)

Specifically, the FAC alleges that Galaxy’s

trade dress is non-functional because it is not essential to the
use and purpose of its attractions and amusement products, nor
does the Galaxy trade dress affect the cost or quality of its
products. (Id. at ¶¶ 14, 50.) The FAC asserts Galaxy’s trade dress
is a source identifier due to its unique, distinctive multi-colored
design, which sets Galaxy’s products apart from its competitors
and creates a commercial impression in the minds of consumers,
identifying Galaxy as the source of such products. (Id. at ¶¶ 14,
49.) In addition, the FAC alleges that Galaxy’s trade dress does
not serve a utilitarian function because it does place competitors
at a non-reputational disadvantage. (Id. at ¶ 50.) Rather, The FAC
asserts that endless alternative color combinations are available
to competitors. (Id.)
Although

Plaintiff’s

proof

of

these

allegations

may

ultimately fail, such allegations are accepted as true in resolving
Defendants’ motion.

The FAC has alleged a plausible claim based

on non-functionality.
(4) Likelihood of Confusion
“The touchstone test for a violation of § 43(a) is the
likelihood of confusion resulting from the defendant's adoption of
a trade dress similar to the plaintiff's."
33

AmBrit, Inc. v. Kraft,

Inc.,

812

F.2d

1531,

1538

(11th

Cir.

1986)).

Although

"the

likelihood of confusion is generally a question of fact," Garden
Meadow, Inc. v. Smart Solar, Inc., 24 F. Supp. 3d 1201, 1212 (M.D.
Fla. 2014), the Court may determine whether a likelihood of
consumer confusion has been sufficiently alleged. See Yellowfin
Yachts, Inc., 2015 U.S. Dist. LEXIS 149754, at *6-7.

The Eleventh

Circuit has identified seven factors when analyzing whether a
likelihood of confusion exists between Defendants’ and Plaintiff’s
trade dress:
(1) strength of the mark alleged to have been infringed;
(2) similarity of the infringed and infringing marks;
(3) similarity between the goods and services offered
under the two marks; (4) similarity of the actual sales
methods used by the holders of the marks, such as their
sales outlets and customer base; (5) similarity of
advertising methods; (6) intent of the alleged infringer
to misappropriate the proprietor's good will; and (7)
the existence and extent of actual confusion in the
consuming public.
Savannah Coll. of Art & Design v. Sportswear, Inc., 983 F.3d 1273,
1280-81 (11th Cir. 2020). The court need not consider all factors
in every case. See id. at 1281. While "the type of mark and the
evidence of actual confusion are the most important" factor, Fla.
Int'l Univ. Bd. of Trustees v. Fla. Nat'l Univ., Inc., 830 F.3d at
1255

(11th

individual

Cir.

2016),

the

court

likelihood-of-confusion

may

“accord

factors

based

weight
on

to

the

what

the

situation calls for and [need] not simply calculate the number of
factors favoring such a conclusion and the number of factors

34

militating against it.” Savannah Coll. of Art & Design, 983 F.3d
at 1281.
The

FAC

addresses

all

factors

and

sufficiently

plausible facts to survive a motion to dismiss.

alleges

With respect to

the strength of Galaxy’s trade dress, the FAC alleges that since
at least 2013 Galaxy has extensively and continuously used its
trade dress to promote, market, exhibit, offer for sale and sell
its products in the United States, including Florida.

(Doc. #47,

¶¶ 8, 14.) This is alleged to have resulted in brand recognition
among consumers in the attractions and amusement industry, since
Galaxy is the sole source of origin of products bearing the unique
and specific color combinations, shapes, patterns, and design that
make up its trade dress. (Id. at ¶¶ 14-15, 48.) Such allegations
support a plausible likelihood of confusion.
As

to

the

similarity

between

Galaxy’s

trade

dress

and

Defendants’ infringing trade dress, the FAC asserts Defendants
have copied its trade dress, including the same color combinations
and placement of the same, or have used confusingly similar color
configurations, style and design. (Id. at ¶¶ 109, 114.) Plaintiff
has provided several side-by-side images, one of Galaxy’s trade
dress and one of Defendants’ infringing product. (Id.) The images
portray similar colors and patterns as shown below:

35

(Id., p. 36(Figures 16-17.)) Plaintiff’s allegations and images
are sufficient to support a claim of likelihood of confusion based
on

similarity

between

Galaxy’s

trade

dress

and

Defendants’

products.
With regard to the similarity of products and services, the
FAC alleges that Defendants have misappropriated Galaxy’s trade
dress to incorporate it into inflatable attractions and amusement
products—the same very products that Galaxy’s produces, markets
and sells in an effort to lure Galaxy’s customers away. (Doc. #47,
¶ 16.) The FAC asserts that Defendants’ willful and intentional
trade dress infringement are currently causing and likely to cause
customer confusion as to the source of origin of products. (Id. at
¶ 25.)

The Court finds Plaintiff has adequately pled similarity

of products and services such that consumer confusion is likely to
result. Playboy Enters., Inc. v. Frena, 839 F. Supp. 1552, 1560

36

(M.D. Fla. 1993)("The greater the similarity between products and
services, the greater the likelihood of confusion.").
The FAC also sets forth allegations that Galaxy and Defendants
have similar sales outlets and customers, as well as advertising
methods. In particular, the FAC asserts that Galaxy and Defendants
not only sell their inflatable products to customers in the same
attractions and amusement industry,

but Defendants have copied

Galaxy’s marketing strategy and continue to

sell and market their

infringing inflatable products through similar trade shows like
the

IAAPA

Expo,

fully

interactive

websites,

i.e.,

www.galaxymultirides.com and www.ezinflatables.com, social media
websites (including Twitter, Facebook, InstaGram, and YouTube),
catalogue distribution, and direct email promotions.

(Doc. #47,

¶¶ 13, 21, 24, 61, 82, 84, 87, 109.) The FAC asserts that Defendants
continued marketing and sales through these similar channels are
likely to cause confusion in the minds of consumers as to the
source of origin, affiliation, sponsorship, or connection of such
products with Galaxy.

(Id. at ¶¶ 86, 108.)

Under the Rule 12(b)(6) standard, Plaintiff has sufficiently
alleged

factual

content

that

allows

the

court

to

draw

the

reasonable inference that confusion is likely to result due to
similar sales outlets, customers and advertising methods. See
Ambrit, Inc., 812 F.2d at 1538 ("Likelihood of confusion is more

37

probable if the products are sold through the same channels to the
same purchasers.").
With regard to Defendants’ intent, the FAC alleges that
Defendants intentionally copied its trade dress without Galaxy’s
consent to market and sell its infringing products. (Doc. #47, ¶¶
16, 88.) Despite putting Defendants on notice during a 2018 IAAPA
Expo, that Defendants were infringing on Galaxy’s trademarks and
trade dress, the FAC asserts that Defendants have acted in bad
faith by continuing willfully and maliciously to use Galaxy’s trade
dress for its own financial benefit. (Id. at ¶¶ 19-21, 88.)
Plaintiff alleges that Defendants actions have been with the intent
to confuse, mislead, and deceive consumers as the true source of
Defendant’s products, and to falsely advertise or suggest to
consumers that its infringing products are associated with or
identical

to

Galaxy’s

products.

(Id.

at

¶

117.)

Galaxy

has

plausibly alleged Defendants’ bad faith intent to misappropriate
the proprietor's good will. See Marco's Franchising, LLC v. Marco's
Italian Express, Inc., No. 8:06-cv-00670-T-17-TGW, 2007 U.S. Dist.
LEXIS 49211, at *26 (M.D. Fla. July 9, 2007) ("A finding of
malicious intent on the part of the defendant will . . . incline
a court to find a likelihood of confusion.").
Finally,

the

FAC

alleges

that

“Defendants’

willful,

intentional, systematic, and unlawful activities have in the past,
[and] are currently causing . . . consumer confusion regarding the
38

quality and source of origin” bearing Galaxy’s trade dress. (Doc.
#47, ¶ 25.) The FAC also asserts that Defendants’ marketing,
promotion and sales of infringing products to the consuming public
in the State of Florida, has already resulted in actual confusion
and false belief in the minds of the consumers that there is a
connection between Defendants’ products and Galaxy. (Id. at ¶ 115.)
“Evidence of confusion by actual or potential customers is, of
course, the best evidence of a likelihood of confusion.” FIU Bd.
of Trs. v. Fla. Nat'l Univ., Inc., 830 F.3d 1242, 1264 (11th Cir.
2016).
Upon consideration of the seven factors, the Court finds the
allegations in the FAC are sufficient to plausibly demonstrate
that Defendants’ use of Galaxy’s trade dress is likely to cause
confusion among customers or consumers. Plaintiff has sufficiently
pled a plausible claim for trade dress infringement.
The Court denies Defendants’ Motion to Dismiss Count VI—trade
dress infringement under § 1125(a) and Count VII-Florida common
law trade dress infringement.
B. Count VIII
Defendants challenge Count VIII of the FAC, which alleges
that Abraamyan is engaging in contributory or vicarious unfair
competition in violation of Section 1125(a) of the Act. (Doc. #49,
p. 1.) Defendant’s only argument is that this claim should be
dismissed for the same reasons dismissal of Counts VI and VII are
39

warranted. (Id., p. 5, n.1.)

Because the Court has already found

that the FAC is sufficient as to those counts, the Court finds
that dismissal of Count VIII is not warranted.

This portion of

Defendant’s motion is therefore denied.
Accordingly, it is now
ORDERED:
Defendants’ Motion to Dismiss Counts VI, VII, and VIII Against
Defendants For Failure To State A Claim and To Dismiss All Claims
Against Edgar Abraamyan For Lack of Personal Jurisdiction (Doc.
#49) is DENIED.
DONE AND ORDERED at Fort Myers, Florida, this
May, 2021.

Copies:
Counsel of record

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12th

day of