Bobcar Media, LLC v. Aardvark Event Logistics, Inc.

Filing 21

OPINION AND ORDER: re: #13 MOTION to Dismiss the Complaint filed by Aardvark Event Logistics, Inc.. For the reasons discussed above, Defendant's motion to dismiss is DENIED. Aardvark shall file its answer to Bobcar's claims on or before January 25, 2017. The Clerk of Court is directed to close the motion at Docket Number 13. SO ORDERED., Aardvark Event Logistics, Inc. answer due 1/25/2017. (Signed by Judge J. Paul Oetken on 1/04/2017) (ama)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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BOBCAR MEDIA, LLC,
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Plaintiff,
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-v :
AARDVARK EVENT LOGISTICS, INC.,
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Defendant. :
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16-CV-885 (JPO)
OPINION AND ORDER

J. PAUL OETKEN, District Judge:
Plaintiff Bobcar Media, LLC (“Bobcar”) initiated this action on February 4, 2016, and
filed the operative Second Amended Complaint on April 20, 2016, alleging patent infringement
under 35 U.S.C. § 271, trademark infringement and unfair competition under the Lanham Act,
15 U.S.C. § 1125, and unfair competition under New York law. (Dkt. No. 12 (“SAC”).)
Defendant Aardvark Event Logistics, Inc. (“Aardvark”) moves to dismiss the SAC for failure to
state a claim pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. For the reasons
that follow, Aardvark’s motion is denied.
I.

Background
The following facts are taken from the SAC and are presumed true for the purposes of

this motion.
Bobcar is a company that owns technology and designs for promotional vehicles. (SAC
¶ 7-8.) Bobcar owns three utility patents and three design patents in connection with its
promotional vehicles: U.S. Patent Nos. 7,942,461 (“the ’461 patent”); 8,220,854 (“the ’854
patent”); 8,690,215 (“the ’215 patent”); D652,353 (“the ’353 patent”); D678,823 (“the ’823
patent”); D736,675 (“the ’675 patent”). (Id. Exs. 1-6.) Each utility patent is entitled “Method

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and Apparatus for Selling Consumer Products,” and each design patent is entitled “Promotional
Vehicle.”
Bobcar also claims that it has rights to the trade dress of its promotional vehicle designs,
which it describes as:
[A] promotional vehicle having a compact cab in the front, and a
compact showroom in back, the showroom having substantially
rectangular or square panels on the left and rights sides and rear in
the closed position, the vehicle having a configuration in which
those panels are raised above the showroom and above the height of
the front cab in an open position, the showroom being open to the
public on three sides when the panels are in the open position,
providing an open air showroom which is used to promote goods or
services displayed in the showroom, wherein the promotional
vehicle includes a colorful front cab and colorful back, including a
colorful coordinated theme extending the entire length of the vehicle
from front to back and corresponding to the brand or type of goods
or services in the showroom, and with the vehicle having advertising
or promotional materials on the panels visible in the open and closed
positions and corresponding to the rand or type of goods or services
in the showroom.
(Id. ¶ 15.) Bobcar includes with its complaint multiple photographs of its promotional vehicles.
(Id. Ex. 7.) Bobcar claims that its trade dress is non-functional, inherently distinctive, and that it
was the first to introduce this combination and arrangement of features for a promotional vehicle
into interstate commerce. (Id. ¶¶ 16-18, 21.) Moreover, Bobcar claims that its trade dress has
acquired distinctiveness through its “expenditures of over a million dollars promoting and
popularizing its trade dress,” “industry recognition,” “media coverage,” “sales success,”
“approximately eight years of exclusive use,” and “recognition . . . and the good will associated
therewith.” (Id. ¶ 20.)
Bobcar alleges that Aardvark’s “Aardy” promotional vehicle—pictures of which Bobcar
attaches to the SAC—infringes Bobcar’s patents. (Id. ¶ 30, Ex. 8.) In particular, Bobcar claims

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that Aardvark’s vehicles infringe at least claim 1 of the ’461, 1 ’854, 2 and ’215 3 utility patents
and the single claim of the ’353, ’823, and ’675 design patents. (Id. ¶ 31, 43.) At bottom,
Bobcar claims that Aardvark’s “accused design is virtually identical, if not identical, to
[Bobcar]’s patented designs.” (Id. ¶ 51.)

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Claim 1 of the ’461 patent recites: “An article of manufacture, comprising: (a) a
self-propelled moving vehicle, said self-propelled moving vehicle comprising a cab and a
showroom, said showroom being provided behind said cab; (b) said showroom comprising a
frame and a display platform, said frame and display platform defining an internal display area;
(c) said self-propelled moving vehicle comprising a series of panels affixed to said frame, said
series of panels comprising a panel on the left side of said showroom, a panel on the right side of
said showroom, and a panel at the rear of said showroom; (d) said panels having a front side and
a back side, wherein advertising is provided on at least one of said sides of at least one of said
panels to promote a product or service to consumers; (e) wherein each of said panels is movable,
such that said panels have a lowered position and a raised position; (f) wherein said series of
panels surround said showroom on three sides when said panels are in said lowered position; (g)
wherein said display platform is open to the air on at least three sides when said series of panels
are all in said raised position, such that a consumer can reach in from the left side, right side, and
rear of said showroom to touch any products positioned on said display platform; and, (h)
wherein advertising is provided on said front of at least one of said panels when said panels are
in said raised position, such that said panel serves as a vertical billboard above said display
platform and above said roof of said showroom.”
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Claim 1 of the ’854 patent recites: “An article of manufacture, comprising: (a) a
self-propelled moving vehicle, said self-propelled moving vehicle comprising a cab and a
showroom, said showroom being provided behind said cab; (b) said showroom comprising a
display area; (c) said showroom further comprising a series of panels, said series of panels
comprising a panel on the left side of said showroom, a panel on the right side of said showroom,
and a panel at the rear of said showroom; (d) wherein each of said panels is movable, such that
each of said panels has a closed position and an open position; and (e) wherein said display area
is open to the air when one or more of said panels is in said open position, such that a consumer
can reach in to touch products positioned in said display area.”
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Claim 1 of the ’215 patent recites: “An article of manufacture, comprising: (a) a
self-propelled moving vehicle, said self-propelled moving vehicle comprising a cab and a
showroom, said showroom being provided behind said cab; (b) said showroom comprising a
display area; (c) said showroom further comprising a series of panels, said series of panels
comprising a panel on the left side of said showroom, a panel on the right side of said showroom,
and a panel at the rear side of said showroom; and, (d) wherein each of said panels is movable,
such that each of said panels has a closed position and an open position.”
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In the lead-up to this litigation, Bobcar and Aardvark corresponded about Aardvark’s
alleged infringement. Starting on December 21, 2015, counsel for Bobcar wrote a series of three
letters to Aardvark, notifying Aardvark of Bobcar’s intellectual property and alleging
infringement of it; Aardvark responded to the first two of these letters but not the third. (Id.
¶¶ 63-76, Ex. 9.) Bobcar alleges that for the duration of this correspondence, Aardvark claimed
non-infringement, but failed to support this position with detailed justification. (Id.)
Bobcar filed suit on February 4, 2016, and filed the operative Second Amended
Complaint on April 20, 2016. Bobcar asserts three claims against Aardvark: for patent
infringement, for trade dress infringement under the Lanham Act, and for unfair competition
under New York law. (Id. ¶¶ 93-131.) Bobcar seeks both damages and injunctive relief. (Id.
¶¶ 132-36.)
II.

Legal Standard
To determine whether a patent pleading survives a Rule 12(b)(6) motion to dismiss, the

Court applies Second Circuit law and follows the pleading standard set out in Bell Atlantic Corp.
v. Twombly, 550 U.S. 544, 570 (2007), and Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). 4 See
Anchor Sales & Mktg., Inc. v. Richloom Fabrics Grp., Inc., No. 15 Civ. 4442, 2016 WL
4224069, at *3 (S.D.N.Y. Aug. 9, 2016); see also Invitrogen Corp. v. Biocrest Mfg., L.P., 424
F.3d 1374, 1378-79 (Fed. Cir. 2005) (“The Federal Circuit applies its own law with respect to

Form 18, provided in an appendix to Rule 84 of the Federal Rules of Civil
Procedure, formerly governed the pleading standards for claims of patent infringement. See In re
Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323 (Fed. Cir. 2012).
However, with the elimination of Form 18 in the amendments to the Federal Rules effective
December 1, 2015, the plausibility pleading requirement of Twombly and Iqbal became the
operative standard for pleading patent infringement.
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issues of substantive patent law and certain procedural issues pertaining to patent law, but
applies the law of the regional circuits on non-patent issues.”).
To survive a Rule 12(b)(6) motion to dismiss, a plaintiff must plead sufficient factual
allegations “to state a claim to relief that is plausible on its face.” Twombly, 550 U.S. at 570. A
claim is facially plausible “when the plaintiff pleads factual content that allows the court to draw
the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S.
at 678. The Court must accept as true all well-pleaded factual allegations in the complaint and
“draw[ ] all inferences in the plaintiff’s favor.” Allaire Corp. v. Okumus, 433 F.3d 248, 249–50
(2d Cir. 2006) (internal quotation marks omitted).
III.

Discussion
Aardvark moves to dismiss the SAC in its entirety. The Court addresses in turn each of

Bobcar’s claims: patent infringement; trade dress infringement; and unfair competition.
A.

Patent Infringement

Aardvark first challenges the sufficiency of Bobcar’s patent infringement claim.
Aardvark argues that Bobcar’s allegations are mere conclusory statements of liability and fail to
adequately allege infringement of the utility patents or the design patents, and also that Bobcar
fails to allege willful infringement. (Dkt. No. 14 at 5-13.)
There are “five elements of a patent infringement pleading, to (i) allege ownership of the
patent, (ii) name each defendant, (iii) cite the patent that is allegedly infringed, (iv) state the
means by which the defendant allegedly infringes, and (v) point to the sections of the patent law
invoked.” Hall v. Bed Bath & Beyond, Inc., 705 F.3d 1357, 1362 (Fed. Cir. 2013) (citing
Phonometrics, Inc. v. Hospitality Franchise Systems, Inc., 203 F.3d 790, 794 (Fed. Cir. 2000));

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see also Digigan, Inc. v. Ivalidate, Inc., No. 02 Civ. 420, 2004 WL 203010, at *4 (S.D.N.Y. Feb.
3, 2004) (applying the Phonometrics standard).
1.

Utility Patents

As regards each of the utility patents, Bobcar has satisfied each of the five elements
required to plead patent infringement. See Hall, 705 F.3d at 1362. First, Bobcar alleges
ownership of each of the patents. (SAC ¶¶ 7-11.) Second, Bobcar names Defendant Aardvark.
(Id. ¶ 6.) Third, Bobcar clearly identifies the allegedly infringed patents. (Id. ¶¶ 29-30.) Fourth,
Bobcar describes the means by which the defendant allegedly infringes. (Id. ¶¶ 31-41.) In
particular, Bobcar alleges infringement of claim one of each of the utility patents by describing
with specificity the infringing aspects of Aardvark’s products. As regards Claim 1 of the ’461
patent, Bobcar alleges that each of the accused products is (a) a self-propelled moving vehicle
with a cab and a showroom (id. ¶ 36), (b) with the showroom comprising a frame and display
platform (id. ¶ 37), (c) made up of a series of panels (id. ¶ 38), (d) each panel with a front and
back side, at least one of which contains promotional messaging (id.), (e) which are movable
(id.), (f) and surround the showroom when in the down position (id.), (g) with the showroom
open on three sides (id. ¶ 39), and (h) with advertising on the panels when they are raised (id. ¶
40). This series of allegations, coupled with the pictures of the allegedly infringing products
(Dkt. No. 12-8), adequately alleges infringement of each aspect of Claim 1 of the ’461 patent.
These allegations also suffice to allege infringement of Claim 1 of the ’854 patent and the ’215
patent. See supra notes 1-3. Aardvark’s arguments to the contrary that Bobcar fails to explain
“how” their Aardy promotional vehicle satisfies the claims of the asserted patents are thus
unavailing. Fifth and finally, Bobcar points to the sections of the patent law invoked by its
claims. (SAC ¶ 136.)

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Bobcar also alleges, “[a]lternatively or additionally,” infringement under the doctrine of
equivalents. (Id. ¶ 42.) “Infringement can be established in either of two ways: through direct
infringement (which is also known as literal infringement), or through the doctrine of
equivalents.” Baseball Quick, LLC v. MLB Advanced Media L.P., No. 11 Civ. 1735, 2014 WL
6850965, at *4 (S.D.N.Y. Dec. 4, 2014) (citing J & M Corp. v. Harley–Davidson, Inc., 269 F.3d
1360, 1366 (Fed. Cir. 2001)), aff’d, 623 F. App’x 1012 (Fed. Cir. 2015). The doctrine of
equivalents provides that “a product or process that does not literally infringe upon the express
terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between
the elements of the accused product or process and the claimed elements of the patented
invention.” Warner–Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997) (citing
Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950)). The question for
the doctrine of equivalents is “whether the accused device performs substantially the same
function in substantially the same way to obtain substantially the same result as the claim
limitation.” VirnetX, Inc. v. Cisco Systems, Inc., 767 F.3d 1308, 1322 (Fed. Cir. 2014).
Here, as is made clear by the similarities discussed above in the context of literal
infringement, Bobcar has adequately alleged that Aardvark’s promotional vehicles are
sufficiently equivalent so as to also sustain a claim under the doctrine of equivalents. Bobcar has
adequately pleaded infringement of the utility patents.
2.

Design Patents

Next, Aardvark contends that Bobcar fails to state a claim for infringement of the single
claim of each of the ’353, ’823 and ’675 design patents.
The Court applies the “ordinary observer” test to determine whether a product infringes a
patented design. Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1303 (Fed. Cir. 2010). This

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requires Bobcar to demonstrate that an ordinary observer “would be deceived into believing that
the accused product is the same as the patented design.” Id. “[I]f, in the eye of an ordinary
observer, giving such attention as a purchaser usually gives, two designs are substantially the
same, if the resemblance is such as to deceive such an observer, inducing him to purchase one
supposing it to be the other, the first one patented is infringed by the other.” Egyptian Goddess,
Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (quoting Gorham Co. v. White, 81 U.S.
511, 528 (1871)). In applying this test, the Court focuses on the overall appearance of the
design, rather than particular elements, and often undertakes a side-by-side visual comparison.
Crocs, 598 F.3d at 1302.
To that end, some images are helpful. First, an image of one of Bobcar’s patented
promotional vehicles:

(SAC ¶ 15, Ex. 7.)
Next, an image from each of the three allegedly infringed design patents.

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The ’353 patent, Figure 1:

The ’823 patent, Figure 1:

And the ’675 patent, Figure 1:

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And third, images of two of Aardvark’s allegedly infringing vehicles:

(SAC ¶ 30, Ex. 8.)
Applying the ordinary observer test, the Court concludes that these designs are
sufficiently similar so as to deceive an ordinary observer. In defense, Aardvark points to others
of its products—sharing the name “Aardy”—that look different from the ones that Bobcar
depicts in its complaint; but this does nothing to imply that the products Bobcar does identify are
not infringing. (Dkt. No. 14 at 10.) Bobcar’s allegations that the similarity is sufficient to
deceive an ordinary observer (SAC ¶¶ 45-50), and that the designs are “virtually identical” (id. ¶
51), are plausible. At this stage, that is enough. See, e.g., Hall, 705 F.3d at 1362-64 (reversing
dismissal where plaintiff provided a copy of its patent and a picture of the allegedly infringing
product along with an allegation that the accused product was identical to the patented design).
3.

Willful Infringement

Aardvark also argues that Bobcar fails to plead willful infringement justifying enhanced
damages, applying the standard set out in In re Seagate Technology, LLC, 497 F.3d 1360, 1371
(Fed. Cir. 2007).
Section 284 of the Patent Act allows courts to “increase the damages up to three times the
amount found or assessed.” 35 U.S.C. § 284. Mere days after briefing on the instant motion was
completed, the Supreme Court rejected the prevailing test for enhanced damages due to willful
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infringement. See Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016) (abrogating
Seagate, 497 F.3d at 1371). Under the erstwhile Seagate test for willfulness, a patentee was
required to show by clear and convincing evidence “that the infringer acted despite an
objectively high likelihood that its actions constituted infringement of a valid patent” and that
risk of infringement “was either known or so obvious that it should have been known to the
accused infringer.” Seagate, 497 F.3d at 1371. In Halo, the Supreme Court rejected the Seagate
test in favor of something of an un-test, devolving greater discretion to the district courts to
determine whether a given case is an “egregious case[] of misconduct beyond typical
infringement,” thereby meriting enhanced damages. Halo, 136 S. Ct. at 1935. In doing so, the
Court noted that “subjective willfulness of a patent infringer, intentional or knowing, may
warrant enhanced damages, without regard to whether his infringement was objectively
reckless,” id. at 1933, but also that “[t]he sort of conduct warranting enhanced damages has been
variously described as willful, wanton, malicious, bad-faith, deliberate, consciously wrongful,
flagrant or . . . characteristic of a pirate,” id. at 1932. Additionally, the Court replaced Seagate’s
clear and convincing standard with a preponderance of the evidence standard. Id. at 1934.
Halo’s effect on the pleading standard for willful infringement remains unclear.
Compare John Keeler & Co. v. Heron Point Seafood, Inc., No. 14 Civ. 1652, 2016 WL 6839615,
at *4 n.2 (N.D. Ohio July 8, 2016) (“[Halo], in which the Supreme Court abrogated the two-part
test for proving willful infringement, may also affect the pleading standard.”), with Nanosys, Inc.
v. QD Vision, Inc., No. 16 Civ. 01957, 2016 WL 4943006, at *8 (N.D. Cal. Sept. 16, 2016)
(“Halo did not address pleading standards at the motion to dismiss stage.”). At a minimum, the
discretion that Halo confers on district courts to award enhanced damages based on the nature of

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the specific misconduct in a given case counsels hesitation before dismissing allegations of
willfulness at the pleading stage.
In support of its claim for willful infringement, Bobcar describes multiple letters sent to
Aardvark describing the alleged infringement. (SAC ¶¶ 63-78.) For example, Bobcar’s
December 21, 2015, letter named particular patents at issue, identified Aardvark’s allegedly
infringing products, and informed Aardvark that Bobcar believed Aardvark to be using Bobcar’s
patents without authorization. (Id. Ex. 9.) Bobcar alleges that after receiving these letters,
Aardvark never claimed non-infringement—instead arguing that the patents were invalid—and
continued to engage in the allegedly infringing activities. (Id. ¶¶ 77-78.)
These allegations plausibly suggest that Aardvark’s actions were subjectively willfull—
which is enough under Halo. Compare Halo, 136 S. Ct. at 1933 (finding subjective willfulness
sufficient to justify enhanced damages), with Seagate, 497 F.3d at 1371 (requiring a showing of
objective recklessness). It is possible that further development of the facts of this case may
reveal that it is not an “egregious case” justifying enhanced damages, but at the pleading stage,
especially in light of Halo, Bobcar has carried its burden.
B.

Trade Dress Infringement

Aardvark next argues that the Court should dismiss Bobcar’s allegations of trade dress
infringement under the Lanham Act.
The Lanham Act provides for the protection of unregistered trade dress, which refers to
the design or packaging of a product. 15 U.S.C. § 1125; Wal-Mart Stores, Inc. v. Samara Bros.,
529 U.S. 205, 209 (2000). In order to state a claim for trade dress infringement, a plaintiff must
show that (1) the allegedly infringing feature is “not functional,” 15 U.S.C. § 1125(a)(3), (2)
there is a likelihood of confusion between the original and infringing goods, id. § 1125(a)(1)(A),

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and (3) the trade dress is inherently distinctive or has acquired distinctiveness through secondary
meaning, Wal-Mart, 529 U.S. at 210.
1.

Non-functionality

First, Bobcar has adequately pleaded non-functionality. “In a civil action for trade dress
infringement . . . the person who asserts trade dress protection has the burden of proving that the
matter sought to be protected is not functional.” 15 U.S.C. § 1125(a)(3). “[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 F. App’x 615, 620 (2d Cir. 2008) (quoting Yurman
Design, Inc. v. PAJ, Inc., 262 F.3d 101, 116 (2d Cir. 2001)). “[T]he absence of alternative
constructions performing the same function . . . renders the feature functional.” Brandir Int’l,
Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1148 (2d Cir. 1987).
Bobcar here describes its trade dress with specificity and in terms that adequately support
non-functionality. 5 (SAC ¶¶ 15, 21-25.) See Luv n’ Care, Ltd. v. Regent Baby Prod. Corp., 986
F. Supp. 2d 400, 405–06 (S.D.N.Y. 2013) (“[A] Lanham Act claimant must describe its
protectable interest with some clarity—it must offer ‘a precise expression of the character and
scope of the claimed trade dress.’” (quoting Yurman Design, 262 F.3d at 117)). Bobcar
describes its trade dress as requiring a “compact” cab and showroom, with “rectangular or square
panels,” a “colorful” cab and back, with a “colorful coordinated theme extending the entire
length of the vehicle . . . corresponding to the brand or type of goods or services in the

Aardvark argues that Bobcar has not “offer[ed] a precise expression of the
character and scope of the claimed trade dress.” (Dkt. No. 14 at 15 (quoting Sherwood 48
Assocs. v. Sony Corp. of Am., 76 Fed. App’x 389, 391 (2d Cir. 2003).) However, Bobcar’s
extended description of its trade dress (SAC ¶ 15), identifies the trade dress with precision,
focusing on “specific elements” of the design rather than giving a “vague and overbroad
articulation of the trade dress elements,” Sherwood 48 Assocs., 76 Fed. App’x at 391 (quoting
Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997)).
5

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showroom.” (Id. ¶ 15.) Though Aardvark argues that Bobcar is merely seeking trade dress
protection for functional features already covered by its patents (Dkt. No. 14 at 17), these nonfunctional features do not appear in the description of Bobcar’s patents. Moreover, these design
features are not essential to the purpose of Bobcar’s promotional vehicles—its advertising
function could be performed by numerous other constructions or configurations. See Cartier;
294 F. App’x at 620; Brandir, 834 F.2d at 1148. Bobcar has thus adequately pleaded nonfunctionality.
2.

Likelihood of Confusion

Aardvark does not specifically challenge Bobcar’s pleading of likelihood of confusion,
instead devoting its argument on this claim to the contention that Bobcar has not adequately
identified its trade dress or pleaded distinctiveness or non-functionality. (Dkt. No. 14 at 14-18;
Dkt. No. 18 at 4-6.) In any event, Bobcar has specifically and sufficiently alleged likelihood of
confusion. (SAC ¶¶ 54-56, Ex. 7, Ex. 8.) See Nat. Organics, Inc. v. Nutraceutical Corp., 426
F.3d 576, 578 (2d Cir. 2005) (describing the factors considered in determining likelihood of
confusion).
3.

Distinctiveness

To plead distinctiveness of its product design, Bobcar must show that its design is either
inherently distinctive or has “acquired secondary meaning giving it distinctiveness to the
consumer.” Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 1000 (2d Cir. 1997).
To determine whether the trade dress has secondary meaning, 6 the Court considers six factors:

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Bobcar also claims in its complaint that its trade dress is inherently distinctive.
(SAC ¶ 18.) However, it gives the Court little to go on in order to establish that the dress is
sufficiently suggestive, arbitrary, or fanciful so as to necessarily deem the dress inherently
distinctive. See Fun-Damental Too, 111 F.3d at 1000 (“[T]rade dress is classified on a spectrum
of increasing distinctiveness as generic, descriptive, suggestive, or arbitrary/fanciful. Suggestive
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“(1) advertising 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.” Cartier, 294 Fed. App’x at 618 (quoting Mana
Prods., Inc. v. Columbia Cosmetics Mfg., Inc., 65 F.3d 1063, 1070 (2d Cir. 1995)). “In assessing
the existence of secondary meaning, no ‘single factor is determinative,’ and every element need
not be proved. Each case, therefore, must be resolved by reference to the relevant factual
calculus.” Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208, 217 (2d Cir. 1985) (internal citation
omitted) (quoting Am. Footwear Corp. v. Gen. Footwear Co., 609 F.2d 655, 663 (2d Cir. 1979)).
Bobcar addresses all but one of these factors (consumer studies), each of which supports
alleged distinctiveness. Bobcar explains that it has spent over one million dollars “promoting
and popularizing its trade dress.” (SAC ¶ 20.) Bobcar describes external recognition and media
coverage, including the 2015 EX Silver Award for Best Mobile Marketing Program. (Id.)
Bobcar claims sales success of “millions of dollars” in revenue from its trade dress and its use in
marketing programs by many major companies, including Samsung, T-Mobile, and Verizon.
(Id.) Finally, Bobcar states that it has used the trade dress exclusively for about eight years and
the Aardvark’s alleged plagiarism trades off the good will associated with Bobcar’s trade dress.
(Id.) Bobcar has thus satisfied all but one of the Cartier factors, namely, consumer studies. In
light of the recognition that the distinctiveness inquiry is a “factual matter,” Bobcar has alleged
enough at this stage. Cartier, 294 Fed. App’x at 618 (quoting Mana Prods., 65 F.3d at 1070).
Bobcar has described its trade dress claim with specificity and has plausibly pleaded nonfunctionality, likelihood of confusion, and distinctiveness. Its claim therefore survives.

and arbitrary or fanciful trade dress are deemed inherently distinctive and thus always satisfy the
first prong of the test for protection.”).
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C.

Unfair Competition

Unfair competition is a “capacious tort.” Reed Const. Data Inc. v. McGraw-Hill
Companies, Inc., 49 F. Supp. 3d 385, 430 (S.D.N.Y. 2014), aff’d, 638 F. App’x 43 (2d Cir.
2016). “The 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, 34-35 (2d Cir. 1995).
Aardvark contends that Bobcar has failed to state a claim for unfair competition. But
Bobcar’s detailed complaint belies this argument. Specifically, Bobcar describes how Aardvark
“misappropriated Bobcar’s trade dress and advertising and marketing ideas and program, by use
of Bobcar’s promotional vehicle trade dress . . . in conjunction with an infringing vehicle,” and
continued to do so even after Bobcar had notified it of the alleged wrongful conduct. (SAC ¶
124; see id. ¶¶ 53-76.) To hear Bobcar tell it, Aardvark was consciously misappropriating
Bobcar’s ideas and labor and using them to serve Bobcar’s own customers. (Compare id. ¶ 124
(describing an infringing Aardvark vehicle promoting Samsung and T-Mobile), with id. ¶ 20
(describing Samsung and T-Mobile as customers of Bobcar).) Whatever the broad metes and
bounds of the law of unfair competition may be, Bobcar has plausibly alleged conduct by
Aardvark that falls within them. 7

Aardvark also argues that Bobcar’s state-law claim is preempted by federal law as
it is “based solely on the underlying allegations of patent infringement.” (Dkt. No. 14 at 18-20.)
But in support of its unfair competition claims, Bobcar alleges conduct that is factually distinct
from that supporting its patent infringement claims, including misappropriation of Bobcar’s
advertising and marketing projects. (SAC ¶¶ 122-124.) And as regards Bobcar’s claim of trade
dress infringement under the Lanham Act, such claims are not preemptive of state-law unfair
competition. See 20th Century Wear, Inc. v. Sanmark-Stardust Inc., 747 F.2d 81, 92 n.15 (2d
Cir. 1984) (The Lanham act is “cumulative of, and does not preempt, the broader consumeroriented remedies provided by the common law of unfair competition.” (quoting Keebler Co. v.
Rovira Biscuit Corp., 624 F.2d 366, 373 (1st Cir. 1980) (internal quotation marks omitted)).
7

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IV.

Conclusion
For the reasons discussed above, Defendant’s motion to dismiss is DENIED. Aardvark

shall file its answer to Bobcar’s claims on or before January 25, 2017.
The Clerk of Court is directed to close the motion at Docket Number 13.
SO ORDERED.
Dated: January 4, 2017
New York, New York
____________________________________
J. PAUL OETKEN
United States District Judge

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