IP Law Daily, TRADEMARK—E.D. Pa.: Motion to dismiss drum maker’s trade dress infringement claim granted, (Jul 10, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

Drum maker’s trade dress claim was dismissed without prejudice due to the insufficient facts pled to support a finding of nonfunctionality.

A federal district court in Pennsylvania granted a motion to dismiss a drum maker’s claim for trade dress infringement of its CX Series drum carriers. The district court determined that the drum maker failed to sufficiently prove its asserted design was purely nonfunctional, as the same features were central to a related patent (Pearl Musical Instrument Company Co. Ltd. v. Hoshino Gakki Co., Ltd., No. 2:23-cv-03220-KNS (E.D. Pa. Jul. 7, 2026)).

Background. Pearl Musical Instrument Company Co. Ltd. (Pearl), Hoshino Gakki Co., Ltd., and Hoshino (U.S.A.) Inc. are manufacturers and sellers of drums and drum carriers, among other instruments and accessories. Pearl filed its First Amended Complaint (FAC) alleging that Hoshino Gakki Co., Ltd., and Hoshino (U.S.A.) Inc. (Hoshino) infringed on Pearl’s Patent No. 7,671,261 (’261 Patent) and engaged in trade dress infringement under Section 43(a) of the Lanham Act regarding Pearl’s CX Series Carriers. Hoshino filed a motion to dismiss Pearl’s trade dress infringement claim. Hoshino argued that the FAC fails to adequately state a claim of trade dress infringement because: (1) the FAC fails to articulate the elements comprising the trade dress of its CX Series Carriers; (2) the purported trade dress is functional; and (3) the FAC fails to allege inherent distinctiveness or secondary meaning. Pearl opposed Hoshino’s motion to dismiss.

Trade dress infringement. To establish trade dress infringement under the Lanham Act, a plaintiff must prove (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 product with that of the defendant’s product. In addition to these elements, the plaintiff must articulate the specific elements which comprise its distinct dress. Hoshino argued that Pearl’s trade dress claim insufficiently articulates the elements that comprise its trade dress.

Description of trade dress. Pearl described its trade dress as including visual appearance of its CX Series Carriers, which provide the visual appearance, both alone and in combination with one or more other design features. However, Hoshino took issue with Pearl’s description of the trade dress because it covered the features listed both alone and in combination with one or more other design features. Hoshino asserted that such a qualifier is impermissible because it obscures the definition of the claimed trade dress by being open-ended. The district court found that Pearl did not allege that the features occur only sometimes or in some instances. Instead, the district court construed Pearl’s language to mean that the product may be defined by either the individual elements on their own or in combination with each other. Thus, the district court construed the qualifier as limited to the closed universe of discrete elements listed and concluded that Hoshino had adequate notice of the alleged trade dress.

Nonfunctionality. The district court found that to survive the motion to dismiss stage, the plaintiff must include adequate factual information that permits the court to infer nonfunctionality when construing the allegations in its favor, but Pearl failed to do so. Furthermore, Hoshino argued that the ’261 Patent is strong evidence in favor of functionality. The district court determined that without Pearl providing other facts explaining the product’s nonfunctionality, the court could not make a reasonable inference of nonfunctionality based on the current allegations. Therefore, the district court agreed with Hoshino that Pearl’s allegations of nonfunctionality were insufficient.

Inherent distinctiveness or secondary meaning. The district court disagreed with Hoshino that Pearl did not sufficiently plead how Pearl alleged trade dress is inherently distinctive or has secondary meaning. Citing Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 438 (3d Cir. 2000), the district court noted that the Third Circuit has enumerated a list of non-exhaustive factors for courts to consider when assessing secondary meaning: (1) the extent of sales and advertising leading to buyer association; (2) length of use; (3) exclusivity of use; (4) the fact of copying; (5) customer surveys; (6) customer testimony; (7) the use of the mark in trade journals; (8) the size of the company; (9) the number of sales; (10) the number of customers; and (11) actual confusion. The district court disagreed with Pearl’s presumption that copying alone was sufficient; instead viewing it as one of many factors that may establish secondary meaning. However, the district court noted that Pearl alleged the facts pertaining to: Hoshino copying Pearl’s CX Series Carriers representing approximately 90% of the marching drum carrier market, a large portion of Pearl’s customer base purchasing all or nearly all of their percussion instruments and related products from a single source, such as Pearl, and Pearl’s manufacturing and selling of the CX Series Carrier since 2010 whereas Hoshino had released their competitor carrier in 2023. Thus, based on these facts alleged, the district court found secondary meaning to be pled sufficiently.

Accordingly, Hoshino’s motion to dismiss Pearl’s trade dress infringement claim was granted.

The Case is No. 2:23-cv-03220-KNS.

Judge: Scott, J.

Attorneys: Caleb H. Hogan (Bass, Berry & Sims PLC) for Pearl Musical Instrument Co. Co Ltd. Elizabeth A. DiMarco (Wolf, Greenfield & Sacks, PC) for Hoshino Gakki Co., Ltd.

Companies: Pearl Musical Instrument Co. Co. Ltd; Hoshino Gakki Co., Ltd.

Cases: Trademark PennsylvaniaNews