SUNDESA, LLC v. TEJARAH INTERNATIONAL INC.
OPINION (Reconsideration). Signed by Judge William J. Martini on 11/17/20. (gh, )
Case 2:20-cv-02609-WJM-MF Document 19 Filed 11/17/20 Page 1 of 4 PageID: 474
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
SUNDESA, LLC d/b/a THE
TEJARAH INTERNATIONAL INC.
WILLIAM J. MARTINI, U.S.D.J.:
This matter arises out of Defendant Tejarah International Inc. d/b/a/ Kitchsmart’s
(“Defendant”) alleged violation of Plaintiff Sundesa, LLC d/b/a The BlenderBottle
Company’s (“Plaintiff”) intellectual property rights. The matter comes before the Court on
Plaintiff’s motion for reconsideration of the Court’s prior finding that the design of
Plaintiff’s FLOW-THROUGH AGITATOR was functional and therefore unable to form
the basis of a trade dress infringement claim. ECF No. 11. For the reasons set forth below,
the motion is GRANTED.
The facts and procedural history of this case were set forth the Court’s August 25,
2020 opinion granting in part Plaintiff’s motion for default judgment (the “DJ Opinion”),
ECF No. 9, familiarity with which is assumed.
In the DJ Opinion, the Court held, among other things, that Plaintiff was not entitled
to default judgment on Count 2 of its Complaint for trade dress infringement with respect
to its FLOW-THROUGH AGITATOR (the “Agitator”) design. Specifically, the Court
concluded that the Agitator design was “functional,” and therefore unable to support a trade
dress infringement claim, because the patent for the Agitator “specifically describe[d] the
utility of its design.” DJ Op. at 2-3.
On September 8, 2020, Plaintiff filed a motion for partial reconsideration of the DJ
Opinion, arguing that the Court erred in concluding that the Agitator Trade Dress was
functional and that Plaintiff therefore could not maintain a trade dress infringement claim
under 15 U.S.C. § 1125(a) with respect thereto.
Reconsideration of a prior decision is appropriate upon a showing that either “(1)
an intervening change in controlling law has occurred; (2) evidence not previously
Case 2:20-cv-02609-WJM-MF Document 19 Filed 11/17/20 Page 2 of 4 PageID: 475
available has become available; or (3) [reconsideration] is necessary to correct a clear error
of law or prevent manifest injustice.” United States ex rel. Schumann v. Astrazeneca
Pharm. L.P., 769 F.3d 837, 848-49 (3d Cir. 2014) (quoting Max’s Seafood Café ex rel.
Lou-Ann, Inc. v. Quinteros, 176 F.3d 669, 677 (3d Cir. 1999)). The Court will grant a
motion for reconsideration where “its prior decision has overlooked a factual or legal issue
that may alter the disposition of the matter.” Church & Dwight Co. v. Abbotts Labs., 545
F. Supp. 2d 447, 449-50 (D.N.J. 2008).
In deciding Plaintiff’s motion, the Court must first determine if its previous
conclusion that the Agitator Trade Dress is functional was in error or warrants
reconsideration. If so, the Court must then determine whether Plaintiff has sufficiently
alleged the remaining elements of a viable claim for trade dress infringement such that
default judgment is appropriate.
Plaintiff argues that the Court overlooked three key legal and factual issues in
denying its request for default judgment with respect to its Agitator Trade Dress claim: (1)
that the Court failed to accept as true the factual allegations in the Complaint that the
Agitator Trade Dress is non-functional; (2) the Court erred in concluding, as a matter of
law, an expired utility patent necessarily rendered a design “functional” and therefore
unable to be the subject of a trade dress infringement claim; and (3) the Court erred in
dismissing Plaintiff’s claim without affording Plaintiff an opportunity to present evidence
in support thereof. The Court agrees and will grant Plaintiff’s motion for reconsideration.
In entering a default judgment, “the factual allegations of the complaint, except
those relating to damages, will be taken as true.” Comdyne I, Inc. v. Corbin, 908 F.2d 1142,
1149 (3d Cir. 1990) (quotations omitted). To that end, whether a design or feature is
functional is a question of fact, and allegations relating to the Agitator’s functionality must
therefore be taken as true. See Shire U.S. Inc. v. Barr Labs. Inc., 329 F.3d 348, 355 (3d Cir.
2003). A design or feature is functional if it is “useful”; that is, if the design or feature
works better in the shape it is in by, for example, being cheaper to produce or easier to use.
Kaisha v. Lotte Int’l Am. Corp., 977 F.3d 261, 267 (3d Cir. 2020).
Here, the Complaint sufficiently alleges that the Agitator Trade Dress is not
functional. Specifically, the Complaint alleges that the design of the Agitator “is not
essential to the function of the product, does not make the product cheaper or easier to
manufacture, and does not affect the quality of the product.” Complaint ¶ 17. The
Complaint further alleges that the design of the Agitator is not a competitive necessity, id.,
but rather a shape that “symbolizes [Plaintiff] and is a registered trademark used by
BlenderBottle as its corporate logo.” Id. ¶ 18. Accepting these allegations as true, which
the Court must, it is clear these allegations are sufficient to establish that the Agitator Trade
Dress is non-functional.
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The existence of an expired utility patent does not support the opposite result. “[A]
utility patent is strong evidence that the features therein claimed are functional.” TrafFix
Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29 (2001). However, the Third Circuit
has recently emphasized that the existence of a utility patent is not dispositive and may not
suggest functionality where, as here, the design or feature is not the “central advance” of
the utility patent. Kaisha, 977 F.3d at 269.
Here, it is clear that the shape and aesthetic design of the Agitator are not the “central
advance” of the utility patent. The abstract of the ’032 Patent for the FLOW-THROUGH
The apparatus of preferred embodiments of the present invention comprises
a wire-frame object with interstitial spaces which allow flow of liquids and
powders into and out of the interior of the wire-frame object. Some
embodiments further comprise and [sic] interior agitator placed within the
wire-frame object which may be a solid shape or another wire-frame object.
Compl., Ex. 1. Further, in the section titled “Summary and Objects of the Invention” the
’032 Patent states that “the shape must be formed by a wire frame that allows flow of
material through and around the object” but that “the shape of the agitator object may also
vary widely, including, but not limited to, cubes spheres, ellipsoids, pyramids, polyhedrons,
cylinders and others.” Id. ¶ 20 (emphasis added). It is thus clear that the wire frame object
through which liquid and powder pass through is the “central advance” of the patent and
that the shape of that wire-frame object is itself irrelevant to the invention’s function.
Accordingly, the Court concludes that it erred in finding that the existence of the
utility patent precluded default judgment on the Agitator Trade Dress claim in Count 2 of
the Complaint, and that reconsideration of this finding is warranted.
Remaining Elements of Trade Dress Infringement
Because the Court has determined that the Agitator Trade Dress is non-functional,
it must evaluate the remaining elements of trade dress infringement claim to determine
whether Plaintiff has adequately stated a claim therefor with respect to its FLOWTHROUGH AGITATOR. In addition to non-functionality, to state a claim for trade dress
infringement, Plaintiff must show that (1) the design is inherently distinctive or has
acquired secondary meaning; and (2) 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).
Here, Plaintiff has sufficiently pleaded each of these elements. Plaintiff has alleged
that the Agitator design is distinctive in that it symbolizes the company and is a registered
trademark used by Plaintiff as its corporate logo, Compl. ¶¶ 15-16, 18, and that its design
has acquired a secondary meaning by which the public associates the design with Plaintiff,
Compl. ¶ 16. Plaintiff has further alleged that Defendant’s use of the Agitator design is
likely to cause confusion among consumers. Id. ¶ 44. Accordingly, Plaintiff has stated a
valid claim for trade dress infringement with respect to the Agitator Trade Dress.
Case 2:20-cv-02609-WJM-MF Document 19 Filed 11/17/20 Page 4 of 4 PageID: 477
For the reasons set forth above, Plaintiff’s motion for reconsideration is
GRANTED. Plaintiff has sufficiently pleaded a viable claim for trade dress infringement
with respect to its FLOW-THROUGH AGITATOR. Solely to the extent it denied
Plaintiff’s motion for default judgment with respect to its claim for trade dress infringement
relating to the Agitator design in Count 2 of the Complaint, the DJ Opinion and
accompanying Order are hereby vacated. An appropriate order entering default judgment
with respect to the Agitator Trade Dress claim follows.
/s/ William J. Martini
WILLIAM J. MARTINI, U.S.D.J.
Date: November 17, 2020
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