IP Law Daily, TRADEMARK—S.D.N.Y.: Allegations separating function from design supported trade dress infringement claim, (Nov 20, 2025)

By Robert Margolis, J.D.

Manufacturer of agricultural equipment alleging competitor infringed distinctive product design survives motion to dismiss Lanham Act claim.

On its second bite at the apple, agricultural propagation equipment manufacturer and designer Subversive Tools, Inc. has stated a claim that competitor Bootstrap Farmer LLC has infringed its distinctive trade dress in violation of the Lanham Act by replicating the distinctive geometric configuration of Subversive’s WINSTRIP® air-pruning seed trays for use on one of Bootstrap’s competing products, the federal district court in Manhattan has held. The court denied Bootstrap’s motion to dismiss Subversive’s Lanham Act claim, as well as its trade dress dilution claim under New York’s General Business Law, and its common law unfair competition claim. The court, however, granted Bootstrap’s motion as to Subversive’s Lanham Act trade dress dilution claim, holding Subversive did not allege that its trade dress is famous (Subversive Tools, Inc. v. Bootstrap Farmer LLC, No. 7:23-cv-06946-NSR (S.D.N.Y. Nov. 19, 2025)).

Design allegations. Subversive’s WINSTRIP® air-pruning tray is a reusable seed-starting system used in greenhouse cultivation and small-scale farming. Air-pruning trays allow air to enter the tray’s “cells” that hold soil and seeds, so the air can assist in promoting healthy growth. The slits through which air enters are typically on the bottom of the trays. Subversive alleges that separate from the functioning of these slits on the tray bottoms, its tray is designed such that the top surface of the tray consists of a grid of square cells separated by diamond-shaped air openings arranged diagonally across the surface. Subversive alleges that this diagonal alignment of alternating squares and diamonds creates a geometric pattern that constitutes the WINSTRIP® trade dress. Subversive further alleges that this design is purely ornamental, providing no operational advantage, and having no effect on the product’s manufacturing cost, quality, or performance. The allegations also specified how the air-pruning trays work, with air flowing up from the bottoms of the trays, thus distinguishing the trays’ functionality from the designs manufacturers use on the tray tops to distinguish their products. The WINSTRIP® design has been in use for more than thirty years.

Competing product. Subversive alleges Bootstrap’s competing air-pruning trays incorporate the same diagonal arrangement of square cells and air openings as the WINSTRIP®. In a YouTube video, a Bootstrap representative described its air-pruning tray as “our own version of the iconic Wingerden design” that WINSTRIP® had been using for more than thirty years.

Claims. Alleging Bootstrap’s use of that design is likely to cause consumer confusion, and was willful and deliberate, Subversive pled claims for trade dress infringement under the Lanham Act, trade dress dilution under the Lanham Act and under New York law, and common law unfair competition. The district court dismissed Subversive’s first attempt at pleading its infringement claim, finding Subversive failed to allege that the design is non-functional. The dismissal was without prejudice, Subversive filed its amended complaint, and Bootstrap again moved to dismiss the claims.

Trade dress infringement. This time the court held Subversive pled all elements of its Lanham Act trade dress infringement claim: (1) the claimed trade dress is non-functional, (2) it has secondary meaning, and (3) there is a likelihood of confusion between plaintiff’s goods and the defendant’s.

The court first found the pleading sufficient to allege non-functionality. Subversive “isolate[d] the design feature at issue” and alleged with specificity how it has “no role in the functional mechanisms” that make the air-pruning trays work, the court found. The functional portions of the WINSTRIP® are the slits on the bottom, coupled with the material with which the trays are made. The design elements are the shape and configuration of the cells on the surface of the trays. This separation of the design from the function sufficiently pled that “the claimed design is not utility driven,” the court noted. Also probative, the court found, were allegations of alternative top-surface configurations used by other manufacturers that have no effect on functionality.

The court next found that the allegations of secondary meaning were sufficient, as it is a fact-intensive inquiry typically not resolvable on the pleadings. But even if the court were to analyze the pleadings under the traditional six-factor test, the allegations would pass muster. Subversive alleged approximately thirty years of continuous and exclusive use of the design; substantial public exposure through trade publications, academic studies, and online media; and high volume of sales and significant advertising efforts.

Finally, the court also held that the fact-intensive inquiry required for determining likelihood of confusion was reason enough to deny Bootstrap’s challenge to this element. But even if it considered the eight likelihood-of-confusion factors, it would still find that Subversive pled this element, the court held. The strength of the trade dress is plausibly more than minimal given the specialized small-farm and greenhouse market, and the three decades of Subversive’s continuous and exclusive use. The similarity of the parties’ respective trade dress is substantial, as is the market proximity of the parties’ products. While Subversive argued the YouTube video was evidence of Bootstrap’s bad faith, the court held that could not be determined on a pleading motion and called that factor neutral. The remaining factors were neutral as well, but with three factors supporting the claim, the likelihood-of-confusion element was satisfied.

Dilution. The court dismissed Subversive’s trade dress dilution claim under the Lanham Act, because the amended complaint could not plausibly allege that the WINSTRIP® trade dress is “famous,” a required element for the claim. While the trade dress may be well-known and established in the niche market of small farmers and greenhouse operators, the fame required for a dilution claim must reach the level of “household names” recognizable by the general consuming public. “Niche fame” among a specific marketplace is insufficient.

Because, however, New York’s General Business Law does not require the plaintiff’s mark to be famous, Subversive’s claim under that statute survived the motion. A plaintiff need only plead that the trade dress is distinctive, and that dilution is likely. The above-described allegations of distinctiveness (long-time use and recognition of its design), coupled with the likelihood-of-confusion factors that also support a likelihood of dilution, led the court to sustain this claim.

Unfair competition. Finally, the court held Subversive plausibly stated a claim for unfair competition under New York common law. Such a claim requires the elements of infringement plus an allegation of bad faith. Here, after finding the Lanham Act infringement claim already well-pleaded, the court noted that the allegation of the YouTube video plausibly pled the bad faith requirement.

The Case is No. 7:23-cv-06946-NSR.

Judge: Roman, N.

Attorneys: Nicholas Mesiti (Heslin Rothenberg Farley & Mesiti PC) for Subversive Tools, Inc. Stephen James Barrett (Wilson Elser Moskowitz Edelman & Dicker LLP) for Bootstrap Farmer LLC.

Companies: Subversive Tools, Inc.; Bootstrap Farmer LLC

Cases: Trademark NewYorkNews