KEE ACTION SPORTS LLC et al v. VALKEN INC.
Filing
39
OPINION. Signed by Judge Noel L. Hillman on 12/17/2013. (TH, )
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
KEE ACTION SPORTS LLC, et
al.,
Plaintiffs,
Civ. No. 12-6069 (NLH/KMW)
OPINION
v.
VALKEN INC.,
Defendant.
APPEARANCES:
Christopher Mark Mikson, Esquire
Akin Gump Strauss Hauer & Feld LLP
2001 Market Street - Suite 4100
Philadelphia, Pennsylvania 19103
Attorney for Plaintiffs Kee Action Sports LLC and
Kee Action Sports II LLC
Anthony J. DiMarino, III, Esquire
Emmett Stephan Collazo, Esquire
A.J. DiMarino, III, PC
57 Euclid Street - Suite A
Woodbury, New Jersey 08096
Jane A. Lorber, Esquire
Valken, Inc.
1 Hawk Court
Swedesboro, New Jersey 08085
Attorneys for Defendant Valken Inc.
HILLMAN, District Judge
This matter comes before the Court by way of Defendant
Valken Inc.’s motion [Doc. No. 17] seeking to dismiss Count IV of
Plaintiffs’ complaint pursuant to Federal Rule of Civil Procedure
12(b)(6) for failure to state a claim upon which relief can be
granted.
The Court has considered the parties’ submissions and
decides this matter pursuant to Federal Rule of Civil Procedure
78.
For the reasons expressed below, Defendant’s motion will be
denied.
I.
JURISDICTION
In this action, Plaintiffs assert claims for both patent and
trade dress infringement arising under 35 U.S.C. § 271 and 15
U.S.C. § 1114, respectively.
The Court exercises jurisdiction
over Plaintiffs’ federal patent and trade dress infringement
claims pursuant to 28 U.S.C. §§ 1331, 1338.
II.
BACKGROUND
Although not specifically alleged in the complaint,
Plaintiffs Kee Action Sports LLC and Kee Actions Sports II LLC
(hereinafter, “Kee” or “Kee Action”) together 1 are “a major
supplier of paintball products[,]” “paintballs (also called
‘paint’), and markers, ... the devices that shoot ...
paintballs.”
(Kee’s Opp’n to Valken’s Mot. of Dismiss [Doc. No.
19] (hereinafter, “Kee’s Opp’n”), 7.)
On September 27, 2012, Kee
Action filed a four count complaint asserting claims for patent
1
Kee Action Sports II LLC is a wholly owned subsidiary of
Kee Action Sports LLC. (Compl. ¶ 2.)
2
infringement in Counts I, II, and III, and a claim for
infringement of Kee Action’s registered trade dress pursuant to
15 U.S.C. § 1114(1)(a) in Count IV. 2
Count IV of the complaint alleges that Kee Action is the
“owner by assignment of the registered trade dress” – U.S.
Registration No. 3049101 – for paintballs with “a design
consisting of ‘contrasting colors blended randomly together to
form the appearance of a fanciful design on the surface of a
paintball.’”
(Pls.’ Compl. [Doc. No. 1] ¶¶ 38-39.)
Plaintiffs
allege that Defendant’s “paintball products, including by not
limited to the Graffiti and the Redemption paintball products,
copy and infringe on Kee Action’s registered trade dress in
violation of 15 U.S.C. § 1114(1)(a).”
(Id. ¶ 40.)
Plaintiffs
essentially contend that both Defendant’s unauthorized use of Kee
Action’s registered trade dress, along with its manufacture and
distribution of “paintball products with shell design features
that copy elements of Kee Actions’ registered trade dress[, are,]
likely to cause confusion,” mistake, or to deceive the consumer
with respect to the origin or sponsorship of the paintballs.
2
Because the present motion seeks to dismiss only Count IV of
the complaint, this Opinion addresses solely those issues
relevant to Plaintiffs’ claim for trade dress infringement.
3
(Id. ¶ 41.)
According to Plaintiffs, Defendant’s manufacture and
distribution of the allegedly infringing paintballs “enables
Defendant to benefit unfairly from Kee Action’s reputation and
success, thereby giving Defendant’s infringing products sales and
commercial value they would not otherwise have[.]”
(Id. ¶ 43.)
Plaintiffs assert that Defendant has received profits by virtue
of this alleged infringement of Plaintiffs’ registered trade
dress.
(Id. ¶ 45.)
III. DISCUSSION
A.
Standard on Motion to Dismiss
Defendant now moves to dismiss Count IV of Plaintiffs’
complaint pursuant to Federal Rule of Civil Procedure 12(b)(6).
When considering a motion to dismiss a complaint for failure to
state a claim upon which relief can be granted pursuant to
Federal Rule of Civil Procedure 12(b)(6), a court must accept all
well-pleaded allegations in the complaint as true and view them
in the light most favorable to the plaintiff.
423 F.3d 347, 350 (3d Cir. 2005).
Evancho v. Fisher,
It is well settled that a
pleading is sufficient if it contains “a short and plain
statement of the claim showing that the pleader is entitled to
relief.”
FED. R. CIV. P. 8(a)(2).
A district court, in weighing a motion to dismiss, asks
4
“‘not whether a plaintiff will ultimately prevail but whether the
claimant is entitled to offer evidence to support the claims[.]’”
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 563 n.8 (2007) (quoting
Scheuer v. Rhoades, 416 U.S. 232, 236 (1974)); see also Ashcroft
v. Iqbal, 556 U.S. 662, 129 S. Ct. 1937, 1953 (2009) (“Our
decision in Twombly expounded the pleading standard for ‘all
civil actions[.]’”) (citation omitted).
The Third Circuit has
instructed district courts to conduct a two-part analysis in
deciding a motion to dismiss.
Fowler v. UPMC Shadyside, 578 F.3d
203, 210 (3d Cir. 2009).
First, a district court “must accept all of the complaint’s
well-pleaded facts as true, but may disregard any legal
conclusions.”
Fowler, 578 F.3d at 210-11 (citing Iqbal, 129 S.
Ct. at 1949).
Second, a district court must “determine whether
the facts alleged in the complaint are sufficient to show that
the plaintiff has a ‘plausible claim for relief.’”
F.3d at 211 (citing Iqbal, 129 S. Ct. at 1950).
Fowler, 578
“[A] complaint
must do more than allege the plaintiff’s entitlement to relief.”
Fowler, 578 F.3d at 211; see also Phillips v. Cnty. of Allegheny,
515 F.3d 224, 234 (3d Cir. 2008) (“The Supreme Court’s Twombly
formulation of the pleading standard can be summed up thus:
‘stating ... a claim requires a complaint with enough factual
5
matter (taken as true) to suggest’ the required element.
This
‘does not impose a probability requirement at the pleading
stage,’ but instead ‘simply calls for enough facts to raise a
reasonable expectation that discovery will reveal evidence of’
the necessary element.”) (citing Twombly, 550 U.S. at 556).
A court need not credit “‘bald assertions’” or “‘legal
conclusions’” in a complaint when deciding a motion to dismiss.
In re Burlington Coat Factory Sec. Litig., 114 F.3d 1410, 1429–30
(3d Cir. 1997).
The defendant has the burden of demonstrating
that no claim has been presented.
Hedges v. United States, 404
F.3d 744, 750 (3d Cir. 2005) (citing Kehr Packages, Inc. v.
Fidelcor, Inc., 926 F.2d 1406, 1409 (3d Cir. 1991)).
However, “if a complaint is subject to a Rule 12(b)(6)
dismissal, a district court must permit a curative amendment
unless such an amendment would be inequitable or futile.”
Phillips, 515 F.3d at 245; see also Alston v. Parker, 363 F.3d
229, 235 (3d Cir. 2004) (“We have held that even when a plaintiff
does not seek leave to amend, if a complaint is vulnerable to
12(b)(6) dismissal, a District Court must permit a curative
amendment, unless an amendment would be inequitable or futile.”);
Burrell v. DFS Servs., LLC, 753 F. Supp. 2d 438, 444 (D.N.J. 2010)
(“When a claim is dismissed pursuant to Federal Rule of Civil
6
Procedure 12(b)(6), leave to amend and reassert that claim is
ordinarily granted. ... A claim may be dismissed with prejudice,
however, if amending the complaint would be futile.”) (citation
omitted).
B.
Trade Dress Infringement
“The purpose of trade dress protection, like trademark
protection, is to ‘secure the owner of the [trade dress] the
goodwill of his business and to protect the ability of consumers
to distinguish among competing producers.’”
Shire US Inc. v. Barr
Labs., Inc., 329 F.3d 348, 353 (3d Cir. 2003) (citing Two Pesos,
Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992)).
“‘Trade
dress’ originally referred to the packaging or displays associated
with trademarked goods.”
Duraco Prods., Inc. v. Joy Plastic
Enters., Ltd., 40 F.3d 1431, 1438 (3d Cir. 1994); see also Shire,
329 F.3d at 353 (“‘[t]rade dress’ refers to the design or
packaging of a product which serves to identify the product’s
source.”) (citing TrafFix Devices, Inc. v. Marketing Displays,
Inc., 532 U.S. 23, 28 (2001)).
The Third Circuit has since explained that “[t]rade dress has
[now] been defined as the total image or overall appearance of a
product, and includes, but is not limited to, such features as
size, shape, color or color combinations, texture, graphics, or
7
even a particular sales technique.”
Rose Art Indus., Inc. v.
Swanson, 235 F.3d 165, 171 (3d Cir. 2000) (citing Two Pesos, 505
U.S. at 765 n.1).
“To establish trade dress infringement under
the Lanham Act, a plaintiff must prove that (1) the allegedly
infringing design is non-functional; (2) the design is inherently
distinctive or has acquired secondary meaning; and (3) consumers
are likely to confuse the source of the plaintiff’s product with
that of the defendant’s product.”
McNeil Nutritionals, LLC v.
Heartland Sweeteners, LLC, 511 F.3d 350, 357 (3d Cir. 2007); see
also Shire, 329 F.3d at 353 (citing Wal–Mart Stores, Inc. v.
Samara Bros., Inc., 529 U.S. 205, 210–211 (2000)). 3
IV.
ANALYSIS
Defendant makes two arguments in support of dismissal of
Count IV for infringement of a registered trade dress.
Initially, Defendant contends that “[t]o assert a claim for trade
dress infringement, a plaintiff must provide a ‘precise
expression of the character and scope of the claimed trade dress’
3
Rose Art, McNeil, and Shire analyzed trade dress infringement
claims asserted under Section 43(a) of the Lanham Act, 15 U.S.C. §
1125(a), for unregistered trade dress. The parties agree that the
same standard is applicable to Plaintiffs’ trade dress
infringement claim brought under Section 2 of the Act, 15 U.S.C. §
1114(1), for protection of registered trade dress. (See Def.’s
Mem. 10 n.3; Kee’s Opp’n 2); see also Wal-Mart, 529 U.S. at 210;
Two Pesos, 505 U.S. at 768.
8
that describes the trade dress that it seeks to protect.”
(Mem.
of Law in Supp. of Mot. to Dismiss Count IV of Pls.’ Compl. [Doc.
No. 17-1] (hereinafter, “Def.’s Mem.”), 7.)
Defendant argues
that requiring Plaintiffs to provide “a precise expression of the
alleged trade dress [being infringed] is necessary to protect
consumers and competition generally” because “‘granting trade
dress protection to an ordinary product design would create a
monopoly in the goods themselves.’”
(Def.’s Mem. at 9) (citing
Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381
(2d Cir. 1997)).
Secondly, Defendant asserts that in addition to the threepart test for trade dress infringement claims set forth supra,
Plaintiffs must identify and plead a recognizable and consistent
overall look of the trade dress in question.
(citing Rose Art, 235 F.3d at 172-73).
(Def.’s Mem. 10-11)
Defendant argues that
because Plaintiffs have failed to plead both a precise expression
of the trade dress at issue and a recognizable and consistent
overall look of the trade dress, Count IV of the complaint must
be dismissed.
The Court first addresses Defendant’s argument
that Plaintiffs must plead a recognizable and consistent overall
look before turning to Defendant’s precise expression argument.
9
A.
Recognizable and Consistent Overall Look
Defendant contends that Kee Action is required to identify
and plead the “recognizable and consistent overall look” of the
trade dress for which it seeks protection in this case.
Mem. 10.)
(Def.’s
Defendant’s argument relies entirely upon a short
passage from the Third Circuit’s opinion in Rose Art which
provides:
This three-part inquiry alone, however, is
insufficient when the plaintiff in a trade dress
action seeks protection under the Lanham Act for a
series or line of products or packaging. As the
Second Circuit Court of Appeals has noted, in
contrast to a situation where the plaintiff is
seeking protection for a specific package or a
single product, “when protection is sought for an
entire line of products, our concern for protecting
competition is acute.”
Rose Art, 235 F.3d at 172 (citing Landscape Forms, 113 F.3d at
380).
Defendant goes on to argue that the Third Circuit “has
adopted the Landscape Forms reasoning regarding the
anticompetitive dangers of overbroad trade dress protection[.]”
(Def.’s Mem. 11.)
Defendant emphasizes the Third Circuit’s
holding that “[a] plaintiff, seeking protection for a series or
line of products, must first demonstrate that the series or line
has a recognizable and consistent overall look” before “the trial
court determine[s] whether the trade dress is distinctive, ...
10
nonfunctional, and whether the defendant’s use of plaintiff's
trade dress is likely to cause consumer confusion.”
(Def.’s Mem.
11) (citing Rose Art, 235 F.3d at 172-73). 4
In its opposition, Kee Action recognizes Defendant’s
“argument that a trade dress infringement claim should be
dismissed if the plaintiff does not allege ... a ‘recognizable
and consistent overall look’ of the trade dress for a ‘series’ or
‘line of products[.]’”
(Kee’s Opp’n 10.)
Kee Action counters,
however, that Defendant’s argument is inapposite and
substantively inapplicable here because Kee Action “seeks [trade
dress] protection for a single product – the Marballizer
paintball – a paint with a consistent overall look that is
consistently the same size and substance while sold in an array
of colors.”
(Id. at 12.)
Upon closer examination, Defendant’s argument regarding the
need to plead a “recognizable and consistent overall look” fails
given the circumstances of this particular case because
4
The Third Circuit in Rose Art agreed with “the District Court
that ‘if a plaintiff seeking trade dress protection cannot show
that its packages have a “consistent overall look,” the trade
dress that the defendant is allegedly infringing “does not
exist,”’ and the defendant must prevail.” 235 F.3d at 173 (citing
Rose Art Indus., Inc. v. Raymond Geddes & Co., 31 F. Supp. 2d 367,
374 (D.N.J. 1998)).
11
Plaintiffs seek trade dress protection for a single product, not
an entire line or series of products.
Even a cursory reading of
Rose Art makes clear that the “recognizable and consistent
overall look” threshold inquiry is only relevant in cases where
the plaintiff seeks protection for a series or an entire line of
products.
235 F.3d at 172-73 (clarifying that “[b]ecause of the
broad reach that protection of trade dress for a series or line
of products would embrace, we will require this more stringent
test before the non-functionality/distinctiveness/likelihood of
confusion test is applied. [Therefore,] [a] plaintiff, seeking
protection for a series or line of products, must first
demonstrate that the series or line has a recognizable and
consistent overall look.”) (emphasis added).
Here, Defendant offers nothing more than conclusory
statements that Plaintiff seeks trade dress protection for an
entire line of products, apparently relying on the fact that the
Marballizer paintball is sold in an array of colors.
(See Reply
to Pls.’ Mem. In Opp’n [Doc. No. 21] (hereinafter, “Def.’s
Reply”), 1, n.1) (“Plaintiffs seek trade dress protection for a
line of paintball products – not one specific paintball, but a
12
line of paintballs sold in an array of colors.”) 5
The Court’s
reading of the complaint and the present motion make clear that
Plaintiffs are not asserting a broad formulaic trade dress
spanning all of its paintball products.
Rather Plaintiffs are
claiming infringement of their trade dress for a single product –
a single type of paintball that utilizes the trademarked design
registered to Plaintiffs.
The fact that this product is
available in an array of colors does not transform it into a
“line” of products.
The Marballizer paintball is unlike the line
5
Defendant cites Liko AB v. Rise Lifts, Inc., No. 07-5302,
2008 WL 2977869, at *6-7 (E.D. Pa. July 31, 2008), for the
proposition that “[c]ourts have dismissed counts for trade dress
infringement where plaintiffs fail to meet this stringent test” of
demonstrating a recognizable and consistent overall look.
However, Liko is distinguishable because the court there
specifically examined the plaintiff’s trade dress infringement
claim where “Count II ... allege[d] that Defendants' products
infringe[d] upon the trade dress of Plaintiff's Viking product
line.” Id. at *6 (emphasis added).
Moreover, even though the court in Liko found that the
plaintiff failed to allege a recognizable and consistent overall
look of the trade dress for the product line in question, the
court permitted the plaintiff to amend the complaint to allege
that threshold requirement. Id. at *6-7. The court’s willingness
to permit amendment in Liko undercuts Defendant’s argument that
Count IV of Kee Action’s complaint should be dismissed with
prejudice. (See Def.’s Proposed Order [Doc. No. 17-2] 1) (seeking
dismissal of Count IV with prejudice). Even assuming the Court
agreed with Defendant that Plaintiffs were required to plead a
recognizable and consistent overall look and had failed to do so,
the Court would grant Plaintiffs leave to amend to attempt to
correct any pleading deficiency.
13
of outdoor furniture at issue in Landscape Forms, which included
two different outdoor trash cans, six benches with backs, and two
benches without backs.
113 F.3d at 375.
This one type of
paintball – which the Court considers as a single product
available in several colors - is also distinct from the three
various lines of packaging at issue in Rose Art which were
relevant to multiple products including crayons, markers, colored
pencils, modeling clay, and chalk.
235 F.3d at 170.
Defendant fails to adequately demonstrate to the Court that
this case is like Rose Art or Landscape Forms where trade dress
protection was sought for an entire line of distinct but related
products.
There is simply no evidence in the complaint from
which the Court can conclude that Plaintiffs are seeking trade
dress protection for anything more than a singular type of
paintball.
Accordingly, the more stringent test set forth in
Rose Art requiring that a series or line of products have a
recognizable and consistent overall look is simply inapplicable
in this single product case.
Cf. Dayco Products, LLC v. Dorman
Products, Inc., No. 09-13139, 2010 WL 3855221, at *4 (E.D. Mich.
Sept. 28, 2010) (“Because Dayco is not attempting to assert a
consistent overall look across its entire line of automatic belt
tensioners, its failure to allege a consistent overall look is
14
not fatal to its individual claims of trade dress infringement.”)
B.
Precise Expression
In opposing Defendant’s motion, Kee Action also argues that
“Third Circuit precedent [only] requires a trade dress plaintiff
to plead that ‘(1) the allegedly infringing design is nonfunctional; (2) the design is inherently distinctive or has
acquired secondary meaning; and (3) consumers are likely to
confuse the source of the plaintiff’s products with that of the
defendant’s product.’”
at 357).
(Kee’s Opp’n 8) (citing McNeil, 511 F.3d
Kee Action counters that Defendant is seeking to inject
a new element into a trade dress infringement cause of action by
claiming that Plaintiffs must plead a “precise expression” of the
trade dress at issue here.
(Id. at 10.)
Kee Action further
points out that Defendant has failed to cite a case from the
Third Circuit which requires this “precise expression” element as
part of a trade dress infringement cause of action.
(Id. at 11.)
A thorough review of Defendant’s brief and the cases cited
in support of its argument requiring the “precise expression”
element reveals that Valken relies entirely upon non-binding case
law from courts other than the Court of Appeals for the Third
Circuit.
For example, Defendant primarily relies on the Second
Circuit’s opinion in Landscape Forms, Inc., v. Columbia Cascade
15
Company, 113 F.3d 373, (2d Cir. 1997).
(Def.’s Mem. 8.)
In
Landscape Forms, the Second Circuit noted that in cases where
trade dress “protection is sought for an entire line of
products[,]” litigation “will be difficult” if the plaintiff does
not articulate “a precise expression of the character and scope
of the claimed trade dress” because courts would be “unable to
evaluate how unique and unexpected the design elements are in the
relevant market.”
113 F.3d at 380-81.
Thus, the precise
expression element is required in the Second Circuit.
As a threshold matter, however, the Second Circuit’s opinion
in Landscape Forms is not binding precedent upon this Court, and
the Court need not consider it in resolving the present motion. 6
6
In a similar vein, none of the other cases Defendant cites in
support of the “precise expression” element are binding upon this
Court. By way of example, Defendant cites two other cases from
the Second Circuit, both of which explicitly rely on Landscape
Forms, and neither of these serve as precedent for this Court.
(See Def.’s Mem. 8) (citing Sherwood 48 Assocs. v. Sony Corp. of
Am., 6 F. App’x 389, 391 (2d Cir. 2003); Yurman Design, Inc. v.
PAJ, Inc., 262 F.3d 101, 115-16 (2d Cir. 2001).
Defendant cites four other cases from the United States
District Courts for the District of Connecticut and the Southern
District of New York. (See Def.’s Mem. 8, n.1) (citing ID7D Co.,
Ltd. v. Sears Holding Corp., No. 3:11cv1054, 2012 WL 1247329, *6
(D. Conn. Apr. 13, 2012); Nat’l Lighting Co., Inc. v. Bridge Metal
Indus., LLC, 601 F. Supp. 2d 556, 560-61 (S.D.N.Y. 2009); Heller
Inc. v. Design Within Reach, Inc., No. 09-1909, 2009 WL 2486054,
*6 (S.D.N.Y. Aug. 14, 2009); Cartier, Inc. v. Four Star Jewelry
Creations, Inc., 348 F. Supp. 2d 217, 223 (S.D.N.Y. 2004)). The
Court notes however, that each of the District Courts issuing
16
Third Circuit case law is clear that the elements of a cause of
action for trade dress infringement require proof that (1) the
allegedly infringing design is non-functional; (2) the design is
inherently distinctive or has acquired secondary meaning; and (3)
consumers are likely to confuse the source of the plaintiff’s
product with that of the defendant's product.
See, e.g., McNeil,
511 F.3d at 357; Shire, 329 F.3d at 353 (citing Wal–Mart Stores,
529 U.S. at 210–211); Rose Art, 235 F.3d at 171 (recognizing that
the basic elements for a trade dress infringement claim are “(1)
inherent distinctiveness or secondary meaning, (2) nonfunctionality, and (3) likelihood of confusion.”); Versa Products
Co. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 199 (3d Cir. 1995).
these decisions was bound – unlike this Court – by the Second
Circuit’s opinion in Landscape Forms.
Defendant cites only two cases from District Courts within
the Third Circuit. The first, from the Western District of
Pennsylvania, American Beverage Corp. v. Diageo North America,
Inc., 936 F. Supp. 2d 555, 595 (W.D. Pa. 2013), specifically
relies on Landscape Forms in requiring the precise expression
element of a trade dress infringement claim. The second case,
from the District of the Virgin Islands, Fair Wind Sailing, Inc.
v. Dempster, No. 2011-55, 2013 WL 1091310, *4, 6 (D.V.I. Mar. 15,
2013), cites to Landscape Forms and to case law from the Sixth
Circuit requiring this precise expression element.
Although these District Courts are within the same Circuit as
this Court, the Court is not persuaded by their reasoning which is
drawn from case law established by Courts of Appeals other than
the Third Circuit. The Court remains unconvinced that the precise
expression element urged by Defendant is required under Third
Circuit precedent to survive a motion to dismiss under Rule
12(b)(6).
17
Moreover, the Court’s independent review has failed to
reveal a single case from the Third Circuit or from any court in
the District of New Jersey where precise expression of the
claimed trade dress was regarded as an essential element that
must be pled in order to withstand a motion to dismiss under Rule
12(b)(6). 7
As a result, the Court is unpersuaded by Defendant’s
argument that Kee Action is required to assert a precise
expression of the character and scope of its claimed trade dress
in the complaint under the law in this Circuit.
Even if the Court were to consider Landscape Forms, however,
the present case is distinguishable from Landscape Forms for two
primary reasons.
Initially, and as set forth supra, it is clear
from the pleadings and the briefing on this motion that unlike
7
In fact, courts within the District of New Jersey
consistently apply the Third Circuit’s three-part inquiry as set
forth above when analyzing claims for trade dress infringement.
See, e.g., Coach, Inc. v. Fashion Paradise, LLC, No. 10-4888, 2012
WL 194092, at *3 (D.N.J. Jan. 20, 2012) (citing McNeil); IDT Corp.
v. Unlimited Recharge, Inc., No. 11-4992, 2011 WL 6020571, at *4
(D.N.J. Dec. 2, 2011) (citing McNeil for three elements of trade
dress infringement claim brought under 15 U.S.C. § 1114(1)); Star
Pac. Corp. v. Star Atl. Corp., No. 08–04957, 2011 WL 2413150, at
*6 (D.N.J. June 10, 2011) (citing McNeil, Shire); Katiroll Co., v.
Kati Roll and Platters Inc., No. 10–3620, 2011 WL 346502, at *6
(D.N.J. Feb. 1, 2011) (citing McNeil, Shire); Euro Pro Corp. v.
Tristar Products, Inc., 172 F. Supp. 2d 567, 572 (D.N.J. 2001)
(citing Wal-Mart, Two Pesos, American Greetings Corp. v. Dan-Dee
Imports, Inc., 807 F.2d 1136, 1141 (3d Cir. 1986)).
18
the plaintiff in Landscape Forms, Kee Action is seeking
protection, not for an entire line of products, but rather for a
single product – the Marballizer paintball - that comes in a
variety of colors.
By contrast, the Landscape Forms plaintiff
sought protection for an entire line of outdoor furniture known
as the Petoskey line, which included “two different outdoor trash
cans, two benches without back support, and six benches with
backs.”
113 F.3d at 375.
It was in this specific context that the Second Circuit went
on to note that its “concern for protecting competition is acute”
where trade dress “protection is sought for an entire line of
products[.]”
Id. at 380.
Therefore, to the extent the Second
Circuit requires “a precise expression of the character and scope
of the claimed trade dress” and does not permit a plaintiff to
“focus on the overall look of a product” in order to establish
trade dress protection, id. at 381, Landscape Forms makes clear
that this requirement arose where protection was sought for an
entire line of separate and varied products (trash cans, benches
with backs, benches without backs) that were connected only by
their similar design aspects and overall appearance.
Here,
however, the fact that Kee Action is seeking protection for one
product (the Marballizer paintball) – as opposed to an entire
19
line of products – minimizes the need to require a plaintiff to
allege a precise expression of the trade dress at issue.
Moreover, to fully understand why the Second Circuit’s
precise expression requirement arose in Landscape Forms, it is
worth examining the language used by the plaintiff in that case
to articulate the claimed trade dress.
As the Second Circuit
noted, the plaintiff’s complaint stated only that “‘[t]he product
design and configuration of [Landscape's] Petoskey Group
Collection employs a number of distinctive elements which, when
taken together, constitute a trade dress recognizable by
architects, landscape architects and designers, as well as the
public at large.’”
Id.
The Second Circuit specifically observed
that these so-called “‘distinctive elements’ [were] not
enumerated.”
Id.
Here, defendant provides the Court with dictionary
definitions of nearly each word used to describe the trade dress
at issue in an attempt to demonstrate the alleged lack of
precision used in articulating the trade dress.
this argument unpersuasive.
The Court finds
Unlike the plaintiff in Landscape
Form which asserted a very broad and general trade dress for an
entire line of products and failed to define its “distinctive
elements,” Kee Action has sufficiently plead the nature of the
20
asserted trade dress it alleges Defendant infringed upon.
With
respect to the Marballizer paintball, paragraph 23 of the
complaint alleges that “Kee Action’s registered trade dress is
for a design consisting of ‘contrasting colors blended randomly
together to form the appearance of a fanciful design on the
surface of a paintball.’”
(Compl. ¶ 23.)
The Court is satisfied
at this initial pleading stage that Kee Action has sufficiently
pled the nature of the claimed trade dress to satisfy the notice
requirements of Federal Rule of Civil Procedure 8.
Having rejected Defendant’s recognizable and consistent
overall look argument as well as its precise expression argument,
the Court notes that Valken does not challenge the pleading
sufficiency of the complaint under Rule 12(b)(6) with respect to
the non-functionality, distinctiveness, and likelihood of
confusion.
Therefore, at this time, the Court need not address
whether Plaintiffs’ complaint sufficiently pleads the three
elements of the trade dress infringement claim.
V.
CONCLUSION
For the foregoing reasons, Defendant’s motion to dismiss
will be denied.
An Order consistent with this Opinion will be
entered.
Dated: December 17, 2013
At Camden, New Jersey
s/ Noel L. Hillman
NOEL L. HILLMAN, U.S.D.J.
21
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