IP Law Daily, TRADEMARK—D. Utah: Trademark dispute over STROOPS resistance bands survives motion to dismiss, (Aug 17, 2022)

By Kevin M. Finson, J.D.

Dismissal of claims for trademark infringement and trade secret misappropriation was denied because the arguments made were more suitable for the summary judgment stage.

A maker of custom exercise equipment, including orange and black sleeved resistance bands called "Slastix" sold under the trademark STROOPS, stated claims for trademark infringement and trade secret misappropriation against a former business partner, the federal district court in Salt Lake City has held. While there were questions about what the evidence would eventually show, those arguments were premature at the pleading stage (Hark'n Technologies, Inc. v. Orange Whip Fitness X, LLC, August 16, 2022, Romero, C.).

Hark'n Technologies, Inc. (Hark'n) was in the business of manufacturing and selling custom exercise equipment, including orange and black sleeved resistance bands called "Slastix" sold under the trademark STROOPS. Orange Whip Fitness X, LLC and its co-defendants (collectively, "Orange") negotiated with Hark'n for Hark'n to develop elastic bands for use with Orange's golf products. Orange then allegedly refused to honor the contract with Hark'n, took the 106 prototypes that had been delivered to another manufacturer, and began selling its own line of elastic bands, and used pictures of Hark'n's products, including the STROOPS mark, in their advertising materials and instructional videos. Hark'n filed suit for fraud, breach of contract, trade dress infringement, false designation of origin, trademark infringement, Utah statutory and common law unfair competition, misappropriation of trade secrets under Federal and Utah state law, and unjust enrichment. Orange moved to dismiss.

Personal jurisdiction. Orange argued that it lacked minimum contacts with the forum state to support personal jurisdiction. While the court determined that this was true with regard to one defendant, who apparently only purchased and resold the prototypes, all the other defendants allegedly had engaged in a long-running negotiation with a Utah company and committed intentional acts directed against that company in Utah, so personal jurisdiction was proper.

Trade dress. Orange argued that the asserted trade dress wasn't non-functional but was instead inherent in the functioning of the goods as exercise equipment. The court noted that there were questions of fact and substantial case law on both sides and that this would be better addressed at summary judgment or trial on the merits.

Trademark. Orange argued that the STROOPS mark appeared too small in its advertising materials to cause consumer confusion. The court found that this was a fact question, and moreover, that the allegations concerned pictures of Hark'n's goods themselves being passed off as Orange's goods.

Finding that the decision on abandonment was sufficient to cancel the marks, the Board did not reach the remaining asserted grounds for cancellation.

Trade secrets. Orange argued that the trade secrets alleged by Hark'n were not protectable. Without addressing the individual secrets at issue, the court ruled that Orange was again raising factual disputes at the pleading stage. The claim was properly pleaded, and whether evidence would support the pleading was a question for another day.

The court held that the remaining claims were also not subject to dismissal, noting again that issues of factual disputes were not properly before it on a motion to dismiss.

The Case is No. 1:21-cv-00054-CMR.

Attorneys: Alan C. Bradshaw (Manning Curtis Bradshaw & Bednar PLLC) for Hark'n Technologies, Inc. John R. Perkins, Jr. (Perkins Law Firm) for Orange Whip Fitness X, LLC.

Companies: Hark'n Technologies, Inc.; Orange Whip Fitness X, LLC

Cases: Trademark TradeSecrets UtahNews