Bubble Genius LLC v. Smith
MEMORANDUM & ORDER granting 19 Motion to Dismiss for Failure to State a Claim. For the reasons stated in the attached Memorandum and Order, defendants motion to dismiss the Amended Complaint is GRANTED. The Amended Complaint is dismissed in its entirety, with prejudice. The Clerk of Court is respectfully directed to enter judgment for defendant and close this case. Ordered by Judge Kiyo A. Matsumoto on 3/6/2017. (Fletcher, Camille)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
BUBBLE GENIUS LLC,
MEMORANDUM AND ORDER
MARIANN SMITH, an individual d/b/a
KIYO A. MATSUMOTO, United States District Judge:
Genius”) brings this action alleging trade dress infringement and
unfair competition pursuant to the Lanham Trademark Act (“Lanham
Act”) § 43, 15 U.S.C § 1125(a) and § 32, 15 U.S.C § 1114(1), New
York General Business Law § 360–I and New York State common law,
against defendant Mariann Smith d/b/a Just Bubbly (“defendant” or
Presently before the court is defendant’s Motion to
Dismiss the Amended Complaint (the “Motion”) for failure to state
a claim, pursuant to Fed. R. Civ. P. 12(b)(6).
(ECF No. 19.)
the reasons stated herein, the Motion is granted.
For purposes of this Motion, the court accepts as true
Bubble Genius and Ms. Smith are both in the business of producing
Plaintiff claims it possess an unregistered trade
dress in its “In Your Element Periodic Table Soap” (hereinafter
“In Your Element Soap”), which Bubble Genius created with the
intent “to invoke association with the chemical periodic table of
(Amended Complaint (“Am. Compl.”), ECF No. 17 at ¶
Plaintiff’s asserted trade dress, which in large part is
identical to periodic table of elements available in the public
domain, includes the chemical symbol, atomic number, name of the
element, atomic mass, energy level, and the layout of the element’s
It also includes the size, shape, and
color of the soaps, the use of black ink, the embedding of the ink
in the soap, clear packaging and Bubble Genius’ trademarks.
at ¶ 15.)
Plaintiff selected the colors that reflected the
radioactive elements, uranium, plutonium and radium, based on the
colors for its silver and gold soaps.
(Id. at ¶ 16.)
manufactured, packaged, advertised, marketed and distributed the
“In Your Element Soap.”
(Id. at ¶¶ 18-20.)
In or around June or July 2014, defendant introduced its
own line of soaps that utilized periodic tables in the public
(Id. at ¶ 25.)
Plaintiff was informed by one of its
customers in June 2015 that it had “found a new vendor for the
(Am. Compl., ECF No. 17 at ¶ 29.)
alleges that its customer had the “mistaken belief that defendant’s
product” was plaintiff’s “In Your Element Soap.”
(Id. at ¶ 29.)
In January 2015, plaintiff commenced an action against
defendant in United States District Court for the Central District
That action was dismissed for lack of personal
(Id. at ¶ 6.)
Plaintiff filed the Complaint in
this action on September 17, 2015.
(ECF No. 1.)
the Amended Complaint on March 7, 2016, alleging four claims, (1)
trade dress infringement, (2) federal unfair competition and false
designation of origin, (3) New York statutory unfair competition,
and (4) New York common law unfair competition.
No. 17 at §§ 31-52.)
(Am. Compl., ECF
The parties filed their fully briefed motion
to dismiss papers on May 18, 2016.
(ECF Nos. 18-23.)
heard oral argument on the Motion on November 1, 2016.
Entry dated November 1, 2016.)
Standard of Review
In deciding a motion to dismiss pursuant to Fed. R. Civ.
P. 12(b)(6), the court must “accept as true all factual statements
alleged in the complaint and draw all reasonable inferences in
favor of the non-moving party.”
McCarthy v. Dun & Bradstreet
Corp., 482 F.3d 184, 191 (2d Cir. 2007) (citations omitted). While
standard set forth in Rule 8 “demands more than an unadorned, thedefendant-unlawfully-harmed-me accusation.”
Ashcroft v. Iqbal,
556 U.S. 662, 678, 129 S. Ct. 1937, 1949, 173 L. Ed. 2d 868 (2009)
(quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555-57, 127
S.Ct. 1955, 167 L.Ed.2d 929 (2007)).
“A pleading that offers
‘labels and conclusions’ or ‘a formulaic recitation of the elements
of a cause of action will not do.’ [ ] Nor does a complaint suffice
if it tenders ‘naked assertion[s]’ devoid of ‘further factual
Moreover, “[t]o survive a motion to dismiss,
a complaint must contain sufficient factual matter, accepted as
true, to ‘state a claim to relief that is plausible on its face.’”
Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 570, 127 S.Ct.
“Where a complaint pleads facts that are merely
consistent with a defendant’s liability, it stops short of the
Id. (internal quotations and citations omitted).
For the purposes of a Rule 12(b)(6) motion, “a district
court may consider the facts alleged in the complaint, documents
attached to the complaint as exhibits, and documents incorporated
by reference in the complaint.”
DiFolco v. MSNBC Cable L.L.C.,
622 F.3d 104, 111 (2d Cir. 2010).
A district court may also
documents either in plaintiffs’ possession or of which plaintiffs
had knowledge and relied on in bringing suit.”
Chambers v. Time
Warner, Inc., 282 F.3d 147, 153 (2d Cir. 2002) (internal quotation
marks and citation omitted).
Defendant moves for dismissal of the Amended Complaint
arguing that plaintiff’s alleged trade dress is functional, and
therefore not protectable under Section 43(a) of the Lanham Act.
Further, plaintiff moves to dismiss plaintiff’s New York statutory
unfair competition claim on preemption grounds, and its common law
unfair competition claim for failure to plead bad faith.
reasons stated herein, the court grants defendants’ motion to
dismiss the Amended Complaint.
A. Lanham Act Claims
Plaintiff alleges that defendant’s use of the periodic
table in its soap design violates 15 U.S.C. §§ 1114(1) and 1125(a).
Section 1114(1) requires that a plaintiff register its trade dress
to obtain relief against an alleged violator.
who shall, without the consent of the registrant. . .”).
Amended Complaint does not allege that plaintiff’s trade dress is
Therefore, plaintiff has not stated a plausible claim
under 15 U.S.C. § 1114. 1
Accordingly, the court analyzes Count 1
(Trade Dress Infringement) and Count 2 (Federal Unfair Competition
Plaintiff did not address defendant’s argument about the need for a registered
trademark in order to bring a claim under 15 U.S.C. § 1114(1) in its opposition
brief. Therefore, the court considers this claim abandoned.
and False Designation of Origin) under the unregistered trade dress
law pursuant to 15 U.S.C. § 1125(a), which provides in relevant
Any person who, on or in connection with any
goods or services, or any container for goods,
uses in commerce any word, term, name, symbol,
or device, or any combination thereof, or any
misleading description of fact, or false or
misleading representation of fact, which [ ]
is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation,
connection, or association of such person with
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.
“encompasses the overall design and appearance that make the
product identifiable to consumers.”
Nora Beverages, Inc. v.
Perrier Group of Am., Inc., 269 F.3d 114, 118 (2d Cir. 2001).
i. Federal Trade Dress Infringement
“To plead a claim of trade dress infringement involving
the appearance of a product, [a plaintiff] must allege that (1)
the claimed trade dress is non-functional; (2) the claimed trade
dress has secondary meaning; and (3) there is a likelihood of
confusion between the plaintiff’s [product] and the defendant’s.”
Sherwood 48 Assocs. v. Sony Corp. of Am., 76 Fed. Appx. 389, 391
(2d Cir. 2003) (citation omitted).
“A plaintiff must also offer
a precise expression of the character and scope of the claimed
trade dress,” id. (internal quotation marks and citation omitted),
specificity to be afforded trade dress protection.”
Wigs, Inc. v. Aggie Wigs., No. 06 Civ. 1657(JG), 2006 WL 3335008,
at *4 (E.D.N.Y. Nov. 17, 2006).
The Second Circuit has cautioned that in analyzing trade
dress claims, “courts must not lose sight of the underlying purpose
of the Lanham Act, which is protecting consumers and manufacturers
Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 375
(2d Cir. 1997).
Trade dress “analysis requires courts to balance
the policy of protecting consumers from confusion against that in
favor of free competition.”
Id. at 377, 380; see ID7D Co. v. Sears
Holding Corp., No. 3:11 cv1 054(VLB), 2012 WL 1247329, at *6 (D.
Conn. Apr. 13, 2012) (same).
“While trademarking a generic term
would create a monopoly in a necessary word or phrase, granting
trade dress protection to an ordinary product design would create
a monopoly in the goods themselves.
For this reason, courts have
Landscape Forms, Inc. v. Columbia Cascade Co.,
113 F.3d 373, 380 (2d Cir. 1997) (citing Jeffrey Milstein, Inc. v.
Greger, Lawlor, Roth, Inc., 58 F.3d 27, 332 (2d. Cir. 1995)); see
also Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 116 (2d Cir.
2001) (“[T]rade dress protection for product design . . . entails
a greater risk of impinging on ideas as compared with protection
of packaging or labeling.”)
product design, to wit, “each of the products in BGL’s line of
[“In Your Element Soap” which] employs . . . data from a chemical
periodic table of the elements, [and are] intended to invoke
association with the chemical periodic table of the elements.”
(Am. Compl., ECF No. 17 at ¶ 14).
As discussed below, plaintiff
has not alleged sufficiently plausible facts that the elements
comprising its trade dress are non-functional.
Nor has plaintiff
sufficiently alleged that its “In Your Element Soap” has attained
a secondary meaning.
Accordingly, plaintiff has failed to state
a plausible trade dress infringement claim pursuant to 15 U.S.C.
Plaintiffs bear the burden of alleging plausible facts
that the asserted trade dress is non-functional, 15 U.S.C. §
1125(a)(3), and there is a “statutory presumption that features
are deemed functional until proved otherwise by the party seeking
Displays, Inc., 532 U.S. 23, 30, 121 S.Ct. 1255, 149 L.Ed.2d 164
“[T]rade dress is functional, and thus not protectable,
when it is ‘essential to the use or purpose of the article,’”
Cartier, Inc. v. Sardell Jewelry, Inc., 294 Fed. Appx. 615, 620
(2d Cir. 2008) (citation omitted), or “if it affects the cost or
quality of the article.”
Yurman Design, Inc., 262 F.3d at 116
(citation and quotation marks omitted).
Moreover, under the aesthetic functionality doctrine, a
trade dress claim based on “[a] product design is functional when
competition in a particular market.” Cartier, Inc., 294 Fed. Appx.
at 620 (internal quotation marks and citation omitted); ID7D Co.,
2012 WL 1247329, at *6 (“[I]n cases involving an aesthetic feature,
the dress is also functional if the right to use it exclusively
disadvantage. Thus, the non-functionality requirement protects
competition even at the cost of potential consumer confusion.”).
“[W]here an ornamental feature is claimed as a trademark and
trademark protection would significantly hinder competition by
limiting the range of adequate alternative designs, the aesthetic
Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d
206, 217 (2d Cir. 2012) (quoting Forschner Grp., Inc. v. Arrow
Trading Co., 124 F.3d 402, 409–10 (2d Cir. 1997) and
Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76, 81 (2d
“But on the other hand, distinctive and arbitrary
arrangements of predominantly ornamental features that do not
hinder potential competitors from entering the same market with
differently dressed versions of the product are non-functional,
Louboutin, 696 F.3d at 220 (citation and quotation marks omitted).
Here, defendant argues that plaintiff’s claimed trade
dress is functional and unprotectable because (1) when viewed as
a whole the trade dress is merely a copy of the periodic tables
available in the public domain, and (2) the following key elements
of plaintiff’s claimed trade dress are also functional: its use of
scientific information, its choice of colors, and the physical
characteristics of the soap.
(See Defendant’s Memorandum of Law
in Support of Her Motion to Dismiss Plaintiff’s Amended Complaint
(“Def. Br.”), ECF No. 19-1 at 6-11.)
Plaintiff counters that the
aesthetic features are not functional because the purpose of the
soaps are to cleanse.
(See Memorandum on Behalf of Bubble Genius
LLC in Opposition to Defendant’s Motion to Dismiss the Complaint
(“Pl. Opp.”), ECF No. 20 at 15-16).
Plaintiff also argues that
the appropriate market is the novelty soap market and that trade
dress protection for its “In Your Element Soaps” would not impede
defendant’s ability to compete in the novelty soap market.
Opp., ECF No. 20 at 8-9).
determining whether the design feature is “essential to the use or
purpose” or “affects the cost or quality” of the product at issue.
perspective, the trade dress is not essential to the use of the
product as a soap, nor does the trade dress affect the quality of
the soap because the trade dress is comprised of purely ornamental
Consequently, the court finds that the trade dress as
alleged is non-functional in the utilitarian context of all soap,
including novelty soaps inspired by periodic tables.
thus, continues its aesthetic functionality inquiry, to determine
whether the design features of the “In Your Element Soap” trade
dress are essential to, or would significantly hinder competition
in the market for periodic table inspired novelty soaps.
aesthetically functional because it is purely ornamental, and the
trade dress’ design features are necessary for competition in the
market for periodic table inspired novelty soaps.
functional when their use is necessary for competition in the
Plaintiff’s claimed trade dress is comprised of features
that are ornamental in nature, and that extend to the “overall
appearance” of its product. Where the asserted trade dress extends
comprising a product, the court must evaluate the functionality of
those features taken together.
See Jeffrey Milstein, 58 F.3d at
“[T]he fact that a trade dress is composed exclusively of
commonly used or functional elements might suggest that that dress
should be regarded as unprotectable or ‘generic,’ to avoid tying
up a product or marketing idea.”
Id. at 32.
Each element of plaintiff’s trade dress is generic, and
features well-known decorative details from periodic tables that
exist in the public domain.
Plaintiff’s soaps are rectangular and
display the following scientific information: the chemical symbol,
atomic number, atomic mass, energy levels, and the name of the
(Am. Compl., ECF No. 17 at ¶¶ 14-15.)
Element Soap” mirrors the actual placement of the same information
on periodic tables in the public domain.
Am. Compl., ECF No. 17-1.)
(Exhibit 1 (“Ex.”) to
Further, plaintiff’s color choices for
the soaps are closely associated with the periodic table and/or
the chemical element that it is supposed to reflect. For instance,
the colors of the soaps reflecting the chemical elements gold,
silver, krypton, and sodium are respectively, gold, silver, green
and a natural-salt color.
(Am. Compl., ECF No. 17 at ¶¶ 14-15.)
Little, if any creativity is reflected in plaintiff’s “In Your
Instead, plaintiff copied information readily
available in the public domain when designing its soaps.
viewed together, each bar of soap in plaintiff’s “In Your Element
Soap” product line depicts a chemical element using the same
format, information, and sometimes the same color commonly used in
periodic tables in the public domain.
The circumstances in this action are analogous to the
Godinger Silver Art Co., 916 F.2d 76, 81 (2d Cir. 1990).
Wallace, plaintiff sought trademark protection for its baroquestyle
decorative style, but for basic elements of a style that is part
protection for a baroque-style silverware pattern that the court
described as “ornate, massive and flowery with indented, flowery
roots and scrolls and curls along the side of the shaft, and flower
arrangements along the front of the shaft.”
Id. at 77.
elements including an indented root, scrolls, curls, and flowers.”
The defendant’s arrangement of the elements of its silverware
patterns were noticeably different, and the defendant’s pattern
extended further down the handle of the silverware than Wallace’s
The Second Circuit upheld the lower court’s finding
defendant’s patterns were common to all “baroque-style designs
used in the silverware market” and that effective competition in
Id. at 80.
The Wallace court held that the
elements of a style that is part of the public domain” and affirmed
the lower court’s decision.
Wallace 916 F.2d at 81-82.
periodic table of elements from the public domain to make its
novelty soaps, and consequently fails to state a claim for trade
Defendant’s product, like the product of the
defendant in Wallace, shares similarities to plaintiff’s product,
scientific information to appeal to consumers in the market for
periodic table inspired novelty soaps.
Both of the parties’
alleged periodic table soaps incorporate the same basic features
of the periodic table of elements, such as the chemical symbol,
atomic number, name of the element, atomic mass, energy level, and
format the element’s scientific information in a similar manner as
periodic tables in the public domain.
Furthermore, the similarity
of colors utilized in both product lines is indicative of the
chemical element the soaps are intended to represent, i.e. the
soap representing gold as an element is gold in color, and the
soap representing silver as an element is silver in color.
Compl., ECF No. 17 at ¶ 16(b) (“The choice of colors silver and
gold for its Ag(silver) soap and Au(gold) soap are obvious.”).)
between the two product lines is insufficient to state a trade
dress infringement claim because effective competition in the
market for periodic table inspired novelty soaps requires free
use, by all competitors, of the elements of the claimed trade
Further, plaintiff’s own allegations concede that its
trade dress was “intended to invoke association with the chemical
periodic table of the elements” and was meant to be an “amusing”
product that appealed to customers.
(Am. Compl., ECF No. 17 at ¶¶
The plaintiff’s choice of chemical elements to offer as
a soap is predictable and not protectable as trade dress.
parties selected chemical elements with attributes familiar to the
general public: hydrogen, oxygen, neon, krypton, silver, gold,
uranimum, plutonium and radium.
(Am. Compl., ECF No. 17 at ¶ 15,
Furthermore, plaintiff alleges that the colors it chose for
the radioactive elements was based on the “availability of glowin-the-dark colors” from the manufacturer.
(Id. at ¶ 16(a).)
Thus, the choice of glow-in-the-dark colors was not a creative one
that warrants trade dress protection.
dictated by availability.
But, rather, a choice
The design features of the periodic
table of elements and colors associated with the chemical elements,
which plaintiff claims as a protected trade dress would appeal to
a consumer in the market for periodic table inspired novelty soaps.
See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205,
213, 120 S.Ct. 1339 (2000) (“[A]lmost invariably, even the most
unusual of product designs—such as a cocktail shaker shaped like
a penguin—is intended not to identify the source, but to render
the product itself more useful or more appealing.”). Consequently,
competition for periodic table inspired novelty soaps; competitors
in this market would be placed at a “significant non-reputationrelated disadvantage” if plaintiff had exclusive rights to produce
and sell soaps that mimic publicly available periodic tables.
TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23,
32, 121 S.Ct. 1255, 1259 (2001); see Christian Louboutin, 696 F.3d
at 222 (quoting Forschner Grp., 124 F.3d at 409–10 and
916 F.2d at 81) (“[W]here an ornamental feature is claimed as a
competition by limiting the range of adequate alternative designs,
the aesthetic functionality doctrine denies such protection.”).
In sum, plaintiff seeks exclusive use, in the production
of its “In Your Element Soaps,” of the concept of a novelty soap
inspired by the periodic table of elements, and thus, plaintiff
has not stated a plausible claim for trade dress infringement under
15 U.S.C. § 1125(a).
See Christian Louboutin, 696 F.3d at 219
(quoting Genesee Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d
137, 145 n. 5) (“[I]t is a ‘fundamental principle of trademark law
that a trademark does not grant a monopoly of production.’”).
Courts are cautioned against stifling competition by protecting an
unregistered trade dress that is essentially an idea or a concept.
Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 165, 115
S.Ct. 1300, 131 L.Ed.2d 248 (1995) (holding when the aesthetic
design of a product is itself the mark for which protection is
sought, the mark may be deemed functional if giving the markholder the right to use it exclusively “would put competitors at
Milstein, 58 F.3d at 29, 32 (holding that trade dress law, much
like the law of copyright law, does not protect ideas, concepts,
or a generalized type of appearance, and denying trade dress
protection to “the idea of using die-cut photographs on greeting
Accepting plaintiff’s allegations as true and drawing
all reasonable inferences in plaintiff’s favor, the court finds
infringement claim under 15 U.S.C. § 1125(a) because the alleged
trade dress is aesthetically functional.
See Wallace, 916 F.2d at
at 81 (holding that “purely ornamental features” are functional
when their use is necessary for competition in the market).
2. Secondary Meaning
distinctiveness/secondary meaning analysis if the party claiming
trade dress infringement cannot prove non-functionality of the
dress, for ‘trade dress protection may not be claimed for product
features that are functional.’”
Metrokane, Inc. v. The Wine
Enthusiast, 160 F. Supp. 2d 633, 637 (S.D.N.Y. 2001) (quoting
TrafFix, 532 U.S. at 23, 121 S.Ct. 1255, 1259 (2001)); see also
considered whether plaintiff adequately pled secondary meaning and
concludes that the plaintiff has not pled sufficient and plausible
facts to state a claim that its alleged trade dress has acquired
a secondary meaning.
Trade dress acquires “secondary meaning” when “in the
minds of the public, the primary significance of a product feature
. . . is to identify the source of the product rather than the
Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S.
844, 851 n. 11, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982).
associates the dress of the product with its source.”
Traveler, Inc. v. Advance Magazine Publishers, Inc., 25 F. Supp.
2d 154, 164 (S.D.N.Y. 1998).
“Although each element of a trade
dress individually might not be inherently distinctive, it is the
Jeffrey Milstein, 58 F.3d at 32.
expenditures; (2) consumer studies linking the mark to a source;
(3) unsolicited media coverage of the product; (4) sales success;
(5) attempts to plagiarize the mark; and (6) length and exclusivity
of the mark’s use.”
U–Neek, Inc., v. Wal–Mart Stores, Inc., 147
Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217,
1222 (2d Cir. 1987)).
“None of these elements is determinative
and not every one of them must be proved to make a showing of
Landscape Forms, Inc. v. Columbia Cascade
Co., 117 F. Supp. 2d 360, 366 (S.D.N.Y. 2000) (citation omitted).
The “existence of secondary meaning . . . [is] not to be determined
by application of a rigid formula.”
Murphy v. Provident Mut. Life
Ins. Co., 923 F.2d 923, 928 (2d Cir. 1990).
As set forth below, plaintiff has failed to allege facts
that would support a plausible claim that its trade dress has
acquired a secondary meaning. Each factor of the secondary meaning
analysis is discussed in turn below.
a) Advertising Expenditures
Plaintiff, in a conclusory manner, alleges that it made
a substantial investment in “promoting, advertising and soliciting
sales” of its “In Your Element Soap.”
(Am. Compl., ECF No. 17 at
The Amended Complaint is silent on the amount of funds
spent on advertising and the specifics of how the “In Your Element
Soaps” were advertised.
The Amended Complaint is also silent as
to whether plaintiff’s advertising stressed the elements of the
See Braun Inc. v. Dynamics Corp. of Am., 975 F.2d
815, 826–27 n. 22 (Fed. Cir. 1992) (finding that $5.5 million in
advertising expenditures were irrelevant to the issue of secondary
meaning since the plaintiff “did not proffer evidence establishing
that the advertising effectively created secondary meaning” in the
alleged trade dress); see also American Footwear Corp. v. General
Footwear Co., 609 F.2d 655, 663 (2d Cir.1979) (mere presence of
The court finds that plaintiff’s allegation about its
substantial investment in “promoting, advertising and soliciting
sales” is nothing more than a conclusory statement devoid of
factual content that does not pass muster under Iqbal.
insufficient to support an inference that plaintiff’s “In Your
Element Soap” trade dress has acquired a secondary meaning.
b) Consumer Surveys
Consumer surveys that demonstrate consumer recognition
of the alleged trade dress are highly relevant to the secondary
See Jeffrey Milstein, 58 F.3d at 34.
Amended Complaint is silent on consumer recognition of the “In
Your Element Soap;” not a single alleged fact bears on this factor.
In its opposition papers, plaintiff submits customer reviews and
testimonials from various websites and Facebook.
Paula Bonhomme (“Bonhomme Aff.”), Exs. D and E, ECF Nos. 20-4, 205.)
These submissions, however, were not included in the Amended
Complaint, and therefore should not be considered when evaluating
the sufficiency of the pleadings.
See Goodman v. Port Authority
of N.Y. and N.J., 850 F. Supp. 2d 363, 380 (S.D.N.Y. 2012)
(“Memoranda and supporting affidavits in opposition to a motion to
dismiss cannot be used to cure a defective complaint.”).
sake of judicial economy, the court reviewed the testimonials and
The reviews and testimonials are not actual surveys but
anecdotal statements, and they primarily discuss Bubble Genius’
service, the scent and the quality of the soaps; none of which are
elements comprising the claimed trade dress.
D and E, ECF Nos. 20-4, 20-5.)
(Bonhomme Aff., Exs.
Further, many of the reviews and
testimonials were about other Bubble Genius products and not for
the “In Your Element Soap” at issue here.
recognition is not supported by alleged facts that would permit a
reasonable inference that the claimed trade dress has acquired a
secondary meaning. See Urban Grp. Exercise Consultants, Ltd. v.
Dick’s Sporting Goods, Inc., No. 12-CIV-3599, 2013 WL 866867, at
*4 (S.D.N.Y. Mar. 8, 2013) (finding studies posted on the company’s
website that made no mention of the trade dress as unsupportive of
a finding of secondary meaning); ID7D Co. v. Sears Holding Corp.,
No. 311-CV-1054 (VLB), 2012 WL 1247329, at *8 (D. Conn. Apr. 13,
regarding secondary meaning that would state a plausible claim
because plaintiff asserted no “facts relating to consumer surveys,
length and exclusivity of its use of the dress.”).
c) Sales Success
The Amended Complaint is silent on the sales success of
the “In Your Element Soap.”
In its opposition to the Motion,
plaintiff includes some sales data about the product in question.
(See Bonhomme Aff., ECF No. 20 at ¶ 11.)
But again, the court
should not consider these additional facts when determining the
sufficiency of the pleadings.
See Goodman, 850 F. Supp. 2d at 380
(“Memoranda and supporting affidavits in opposition to a motion to
dismiss cannot be used to cure a defective complaint.”). Plaintiff
states in its opposition papers that the “In Your Element Soap”
was its top selling soap, amounting to over 50% of its sales.
(Bonhomme Aff., ECF No. 20 at ¶ 11.)
Further, the total sales for
the “In Your Element Soap” decreased by 10% in the year after
defendant brought its product to the market.
(Id. at ¶ 11 n. 3.)
If the facts included in plaintiff’s opposition had been alleged
in the Amended Complaint, they would weigh in favor of an inference
that plaintiff’s alleged trade dress has acquired a secondary
No single factor is determinative, however and, as
discussed herein, the other factors weigh against the inference
that plaintiff’s alleged trade dress has acquired a secondary
Landscape Forms, Inc. v. Columbia Cascade Co., 117 F.
Supp. 2d 360, 366 (S.D.N.Y. 2000) (“None of these elements is
d) Unsolicited Media Coverage
The Amended Complaint is silent on unsolicited media
coverage, and, therefore, this factor weighs against an inference
that plaintiff’s alleged trade dress has acquired a secondary
See ID7D, 2012 WL 1247329, at *8 (“The court found that
plaintiff failed to plead facts regarding secondary meaning that
would state a plausible claim because plaintiff asserted no “facts
expenditures, media coverage or the length and exclusivity of its
use of the dress.”).
e) Attempts to Plagiarize the Trade Dress
The Amended complaint alleges that only defendant has
militates against an inference that the alleged trade dress has
acquired a secondary meaning.
See Dick’s Sporting Goods, 2013 WL
866867, at *5 (finding that the attempts to plagiarize factor
weighed against the finding of a secondary meaning where the only
plagiarizing alleged was the conduct at issue); Metrokane, 160 F.
Supp. 2d at 640 (S.D.N.Y. 2001) (same).
f) Length and Exclusivity of Use
Plaintiff alleges that it began using the claimed trade
dress exclusively in October 2010 and defendant began infringing
in June or July of 2014.
Therefore, plaintiff utilized the trade
dress exclusively for, at most, three years and nine months before
defendant’s alleged infringement.
(Am. Compl., ECF No. 17 at ¶¶
Secondary meaning has been found when continuous
exclusive usage of a trade dress occurred over a five-year period.
See Landscape Forms, Inc. v. Columbia Cascade Co., 117 F. Supp. 2d
360, 366–67 (S.D.N.Y. 2000).
In Landscape Forms the secondary
meaning finding was based not only upon five years of continuous
exclusive usage of the trade dress, but also on other factors such
as advertising highlighting the products trade dress, substantial
funds spent on advertising in trade journals, postcard mailings,
etc., insubstantial unsolicited media coverage, testimony from
members of the relevant customer group, and substantial gross sales
exceeding five million dollars.
The allegations here are not
analogous to the record in Landscape Forms because, at most, Bubble
Genius used the trade dress exclusively for three years and nine
months, and the other factors all weigh against an inference that
plaintiff’s trade dress had acquired a secondary meaning.
In sum, absent from the pleadings are facts concerning
success, specific advertising expenditures, or specific acts by
others, in addition to plaintiff, to plagiarize the plaintiff’s
On balance, these factors weigh against an inference
that plaintiff’s trade dress has acquired a secondary meaning.
See, Eyal R.D. Corp. v. Jewelex N.Y. Ltd., 784 F. Supp. 2d 441,
“exclusive and widespread use” of the trade dress, that it “has
acquired enormous value and recognition in the United States,” and
that its “trade dress is well known to the consuming public” and
within the trade “as the exclusive and unique source” identifier);
Dick’s Sporting Goods, Inc., 2012 WL 3240442, at *7 (The court
held that although the complaint alleged facts describing the
period plaintiffs used the alleged trade dress, the sales success
of product, and
media coverage, because the complaint “fail[ed]
attempts to plagiarize [p]laintiffs trade dress,” plaintiff failed
to adequately allege that its trade dress acquired a secondary
meaning.); Carson Optical, Inc. v. Prym Consumer USA, Inc., 11 F.
Supp. 3d 317, 344-45 (E.D.N.Y. 2014) (finding that plaintiff failed
“concerning actual consumer surveys, unsolicited media coverage or
specific attempts to plagiarize the trade dress at issue” and the
complaint had general and cursory allegations about the sales,
marketing and promotion of the trade dress, and the sums spent on
advertising and product design).
Because plaintiff has not pled sufficient facts to make
the non-functionality of its trade dress plausible, nor has it
pled sufficient facts making it plausible that its trade dress has
acquired a secondary meaning, the court need not, and does not,
reach the question of whether the likelihood of the parties’
Louboutin, 696 F.3d at 217 (“[I]f (and only if) the plaintiff’s
trademark is “distinctive” within the meaning of trademark law and
is therefore valid and protectable, [do we] then determine whether
the defendant’s use of a similar mark is likely to cause consumer
(citation and internal quotation marks omitted).
ii. Federal Unfair Competition
In addition to trade dress infringement under the Lanham
Act, plaintiff also seeks to hold defendant liable for unfair
competition under federal law.
(Am. Compl., ECF No. 17 at ¶¶ 39-
“A Lanham Act unfair competition claim examines ‘whether the
public is likely to be misled into believing that the defendant is
(N.Y.), Inc., 64 F. Supp. 3d 494, 513 (S.D.N.Y. 2014) (quoting
Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 79 (2d Cir.
In order to state an unfair competition claim under the
Lanham Act, the moving party must “demonstrate ‘(1) that it has a
valid trademark entitled to protection under the Act, and (2)
defendant’s actions are likely to cause confusion.’” Estate of
Ellington ex rel. Ellington v. Harbrew Imports, Ltd., 812 F. Supp.
2d 186, 192 (E.D.N.Y. 2011) (citing Phillip Morris USA Inc. v.
Marlboro Express, No. 03-CV-1161, 2006 WL 2076921, at *4 (E.D.N.Y.
Aug. 26, 2005)).
As previously noted, plaintiff has not alleged
that its trade dress is registered, and plaintiff has failed to
adequately plead that its “In Your Element Soap” trade dress is
functional, and plaintiff has not pled sufficient facts leading to
plausible federal unfair competition claim based on trade dress
See AJB Enterprises, LLC v. Backjoy Orthotics, LLC,
No. 3:16-CV-00758 (VAB), 2016 WL 7341702, at *7-*8 (D. Conn. Dec.
finding that plaintiff failed to plead facts making it plausible
that it had a protectable trademark interest “whether in the form
of an unregistered trademark, valid trade dress or other source of
B. New York Common Law Unfair Competition Claim
In New York, “[t]he essence of unfair competition . . .
is the bad faith misappropriation of the labors and expenditures
of another, likely to cause confusion or to deceive purchasers as
to the origin of the goods.”
Jeffrey Milstein, Inc. v. Greger,
Lawlor, Roth, Inc., 58 F.3d 27, 34 (2d Cir. 1995) (citations and
internal quotation marks omitted); see Luv n’ Care, Ltd. v. Mayborn
USA, Inc., 898 F. Supp. 2d 634, 643 (S.D.N.Y. 2012) (“[A] plaintiff
asserting an unfair competition claim under New York common law
must also show that the defendant acted in bad faith.”).
“[n]ot every act, even if taken in bad faith, constitutes unfair
CA, Inc. v. Simple.com, Inc., 621 F. Supp. 2d 45,
53 (E.D.N.Y. 2009).
To recover for common law unfair competition,
a “plaintiff must show either actual confusion in an action for
damages or a likelihood of confusion for equitable relief,” and
must show that there was bad faith.
Jeffrey Milstein, 58 F.3d at
Here, the Amended Complaint does not contain any facts
that would lead to the plausible inference of actual or likelihood
of confusion, or that defendant acted in bad faith.
alleges in a conclusory manner that defendant acted “willfully,
wantonly, oppressively and maliciously, and with the intent to
cause confusion, mistake and to deceive prospective customers.”
(Am. Compl., ECF No. 17 at ¶ 32.)
The Amended Complaint also
alleges that plaintiff had “full knowledge” of Bubble Genius’ trade
dress before engaging in the alleged copying.
(Id. at ¶ 33.)
Plaintiff provided no facts supporting these statements.
conclusory language has been held insufficient to support an
inference of bad faith.
See Carson Optical, 11 F. Supp. 3d at
“undertaken in bad faith to misappropriate” insufficient to plead
bad faith). Moreover, that the two products have some similarities
is not indicative of misappropriation grounded in bad faith because
the similarities are attributable to the concept of a soap inspired
by and incorporating features from the periodic tables in the
A concept directly based on information in the
public domain is not protectable.
See Wallace, 916 F.2d at 81
(“[B]asic elements of a style that is part of the public domain”
are not protectable.); Kaufman & Fisher Wish Co. v. F.A.O. Schwarz,
51 F. App’x 335, 337 (2d Cir. 2002) (finding no bad faith where
the similarities between two products was due to “the commonality
of the concept of an angelic wish doll marketable to young girls”).
Accordingly, plaintiff has not pled bad faith and, therefore, has
not pled a plausible common law unfair competition claim.
Jeffrey Milstein, 58 F.3d at 34-35 (a showing of bad faith is a
required element of a common law unfair competition claim); Sly
Magazine, LLC v. Weider Publications L.L.C., 346 F. App’x 721, 723
(2d Cir. 2009) (affirming dismissal of state law unfair competition
claim where no evidence of bad faith was presented); Nat. Organics,
Inc. v. Nutraceutical Corp., 271 F. App’x 89, 90 (2d Cir. 2008)
Further, plaintiff’s common law unfair competition claim
plaintiff has not established ownership of a distinctive, nonfunctional trade dress.
See Car-Freshner Corp. v. D & J Distrib.
& Mfg., Inc., No. 14-CV-391 PKC, 2015 WL 3385683, at *9 (S.D.N.Y.
May 26, 2015) (the common law unfair competition claim failed
Marketing LLC, No. 11 Civ. 01794(LTS)(AJP), 2011 WL 6600267, at *9
(S.D.N.Y. Dec. 22, 2011) (“In New York, a common law unfair
competition claim is identical to a Lanham Act claim, save for the
faith.”); Eyal, 784 F. Supp. 2d at 448 (requiring, for a common
law trade dress infringement claim, that the plaintiff prove
distinctiveness and non-functionality); Elements/Jill Schwartz,
Inc. v. Gloriosa Co., No. 01 Civ. 904(DLC), 2002 WL 1492197, at *7
qualifies for protection and thus no trade dress in which the
plaintiff has a proprietary right, the plaintiff cannot make out
a claim for unfair competition based on the bad faith infringement
of that trade dress.”).
C. New York Statutory Unfair Competition Claim
Plaintiff’s New York State statutory unfair competition
claim is preempted by federal trade dress law.
A state law claim
is preempted by federal law if it “‘stands as an obstacle to the
accomplishment and execution of the full purposes and objectives
Ultra–Precision Mfg., Ltd. v. Ford Motor Co., 411
F.3d 1369, 1377 (Fed. Cir. 2005) (quoting Aronson v. Quick Point
Pencil Co., 440 U.S. 257, 262, 99 S. Ct. 1096 (1979)).
preemption analysis turns on the “allegedly tortious conduct”
underlying the state law claim.
Carson Optical, Inc. v. Prym
Consumer USA, Inc., 11 F. Supp. 3d 317, 328 (E.D.N.Y. 2014)
(quoting Hunter Douglas, Inc. v. Harmonic Design, Inc., 153 F.3d
1318, 1335 (Fed. Cir. 1998), overruled in part on other grounds by
Midwest Ind. Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1360–
61 (Fed. Cir. 1999) (en banc in part)).
“To survive preemption,
plaintiffs must plead conduct in violation of state law that is
Optical, 11 F. Supp. 3d at 328 (internal quotation marks and
citation omitted); see also Computer Assoc., Int’l, Inc. v. Altai,
Inc., 982 F.2d 693, 716 (2d Cir. 1992.
Here, plaintiff alleges unfair competition pursuant to
New York General Business Law § 360–I, which provides that a
“[l]ikelihood of . . . dilution of the distinctive quality of a
mark or trade name shall be a ground for injunctive relief . . .
notwithstanding the absence of competition between the parties or
the absence of confusion as to the source of goods or services.”
To establish a dilution claim under N.Y. Gen. Bus. Law § 360–I, a
plaintiff must show “(1) that the trademark is truly distinctive
or has acquired secondary meaning, and (2) a likelihood of dilution
either as a result of ‘blurring’ or ‘tarnishment.’”
Supp. 2d at 449 (citation omitted).
Eyal, 784 F.
In order to avoid preemption
for a claim brought under N.Y. Gen. Bus. Law § 360–I, “that which
is claimed to be unfair competition must be something different
from copying, or the fruits of copying, or the intent or bad faith
that can be inferred from the act of copying; if the harm arises
from the simple fact of copying, the claim falls within [federal
law] and is preempted.”
Eyal, 784 F. Supp. 2d at 447, 449; see
also Computer Assoc., 982 F.2d at 717 (“[U]nfair competition and
plaintiff’s protected expression are preempted by [federal law].”)
(collecting cases); Carson Optical, 11 F. Supp. 3d at 336 n.10
(state law claims for unfair competition based solely on copying
are preempted by federal law); Buttner v. RD Palmer Enterprises,
Inc., No. 5:13-CV-0342 LEK/ATB, 2013 WL 6196560, at *3 (N.D.N.Y.
Nov. 27, 2013) (same).
Plaintiff alleges that pursuant to N.Y. Gen. Bus. Law §
360–I plaintiff has infringed on its distinctive trade dress
because “defendant is advertising, selling and offering for sale
hand soap that exhibits a trade dress that is virtually identical
to [plaintiff’s trade dress], all of which is likely to cause
confusion, mistake and to deceive the public.”
No. 17 at ¶ 27.)
(Am. Compl., ECF
Plaintiff essentially complains that defendant
has copied its designs which will lead to confusion, mistake and
statutory state law unfair competition claim is based solely on
defendant’s alleged copying of its design, it is preempted by
Eyal, 784 F. Supp. 2d at 446, 449 (S.D.N.Y. 2011)
(dismissing claim brought pursuant to N.Y. Gen. Bus. Law § 360–I
because the basis for the claim was the copying of plaintiff’s
Even if plaintiff’s statutory unfair competition state
law claim was not preempted by federal law, plaintiff has not
stated a plausible claim under N.Y. Gen. Bus. Law § 360–I.
sufficient facts that would lead to an inference that the “In Your
Element Soap” trade dress has acquired a secondary meaning or is
See Car-Freshner, 2015 WL 3385683, at *9
(holding that plaintiff’s N.Y. Gen. Bus. Law § 360–I claim failed
because plaintiff failed to demonstrate ownership of a distinctive
and non-functional mark); Elements/Jill Schwartz, Inc. v. Gloriosa
Co., No. 01 CIV. 904 (DLC), 2002 WL 1492197, at *7 (S.D.N.Y. July
15, 2002) (“The plaintiff having failed to articulate a protectible
trade dress in the design of its frames and books, and thus having
failed to demonstrate its ownership of a distinctive mark, its
plaintiff’s unfair competition claim pursuant to New York General
Business Law § 360–I is dismissed for failure to state a claim on
which relief may be granted.
Leave to Replead
Plaintiff seeks leave to replead any claims that are
Federal Rule of Civil Procedure 15(a) provides that
leave to file an amended complaint should be granted “freely . .
. when justice so requires.”
Fed. R. Civ. P. 15(a)(2); see Foman
v. Davis, 371 U.S. 178, 182, 83 S. Ct. 227 (1962).
“futility of amendment” is a valid basis for denying leave to
Citigroup, 659 F.3d 208, 214 (2d Cir. 2011) (“[L]eave to amend
need not be granted where the proposed amendment would be futile.”)
(internal quotation marks and citations omitted); Ruotolo v. City
of New York, 514 F.3d 184, 191 (2d Cir. 2008) (same).
amend may also be denied where previous amendments have not cured
the complaint’s deficiencies.”
Garcia v. Paylock, No. 13–CV–2868
(KAM), 2014 WL 298593, at *8 (E.D.N.Y. Jan. 28, 2014) (citations
omitted); see also Ariel (UK) Ltd. v. Reuters Grp., PLC, 277 Fed.
Appx. 43, 45–46 (2d Cir. 2008).
Plaintiff’s claims are deficient as a matter of law, and
plaintiff has failed to show how the legal deficiencies can be
cured, and has already had an opportunity to amend the complaint. 2
See Goodrich v. Long Island R.R. Co., 654 F.3d 190, 200 (2d Cir.
complaint could be cured, we must conclude that repleading would
be futile.”); DeJesus v. Sears, Roebuck & Co., 87 F.3d 65, 72 (2d
Cir. 1996) (observing that the Second Circuit has “upheld decisions
to dismiss a complaint without leave to replead when a party has
been given ample prior opportunity to allege a claim”) (collecting
Accordingly, plaintiff’s request for leave to replead is
For the foregoing reasons, defendant’s motion to dismiss
dismissed in its entirety, with prejudice.
The Clerk of Court is
Plaintiff sought to supplement its briefing, after oral argument on defendant’s
motion, with invoices showing that plaintiff’s customers who bought “In Your
Element Soaps” also purchased plaintiff’s other novelty soap.
intended for the invoices to support its argument that the market should be
defined more broadly as the “Novelty” hand soap market, rather than the market
for soaps reflecting the periodic table of elements.
(ECF No. 26.) As stated
above, “memoranda and supporting affidavits in opposition to a motion to dismiss
cannot be used to cure a defective complaint.” Goodman v. Port Authority of
N.Y. and N.J., 850 F. Supp. 2d 363, 380 (S.D.N.Y. 2012). Thus, the court would
not have considered the invoices in evaluating the sufficiency of plaintiff’s
pleading. Moreover, as discussed in greater detail herein, plaintiff’s trade
dress fails because it is aesthetically functional and because plaintiff has
not adequately pled that its trade dress has acquired a secondary meaning, nor
has plaintiff otherwise stated plausible unfair competition state law claims.
respectfully directed to enter judgment for defendant and close
March 6, 2017
Brooklyn, New York
Hon. Kiyo A. Matsumoto
United States District Judge
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