IP Law Daily, TRADEMARK—S.D.N.Y.: Dismissal granted for failure to adequately describe motorcycle helmet trade dress, (Sep 9, 2022)

By Kevin M. Finson, J.D.

Claims based upon trade dress infringement were dismissed because the trade dress was not described with particularity.

A seller of motorcycle helmets failed for the second time to plead a protectable trade dress in its motorcycle helmets, the U.S. District Court in New York has held. The amended complaint used descriptions that were similarly vague as the previously dismissed original complaint. Vague descriptions of the trade dress and comparisons between measurements and unasserted auxiliary features of the parties helmets were inadequate (Cardinal Motors, Inc. v. H&H Sports Protection USA Inc., September 8, 2022, Crotty, P.).

Cardinal Motors, Inc. (Cardinal) was a seller of motorcycle helmets. Cardinal brought suit against a competitor, H&H Sports Protection USA, Inc. (H&H), for infringement of its distinctive helmet design for which it claimed trade dress protection, alleging that H&H’s “Torc-1” helmet copied the trade dress of Cardinal’s “Bullitt” helmet. H&H moved to dismiss for failure to adequately describe the features which constituted the claimed trade dress. The dismissal was granted with leave to amend, and Cardinal filed a First Amended Complaint. H&H moved to dismiss the amended complaint on the same ground.

Trade dress. H&H argued that Cardinal failed to state a claim for trade dress infringement and unfair competition under the Lanham Act because Cardinal did not offer a precise expression of the character and scope of the claimed trade dress. The claimed trade dress included such terms as “a substantially curved top helmet shape” and “a relatively large eyeport height” with no precise means of measuring what would infringe and what would not. The found held that these imprecise descriptors were overbroad and if allowed to stand as a claimed trade dress would give Cardinal exclusive ownership over a sweeping variety of designs in the market. Descriptions of auxiliary features—for example, brown chin straps, metal rivets, and leather trim—shared by the Bullitt and the Torc-1 were not helpful because Cardinal never contended these features were part of the purported trade dress. Even though Cardinal provided measurements showing that the sizes of various aspects were very similar between its product and H&H’s product, it was not entitled to claim a trade dress with such vagueness.

The court noted that all other claims in the case depended on the existence of a protectable trade dress and dismissed them with limited discussion. Leave to amend was granted one more time.

The Case is No. 1:20-cv-07899-PAC.

Attorneys: Anthony H. Handal (Handal & Morofsky, LLC) for Cardinal Motors, Inc. Kent Michael Walker (Lewis Kohn & Fitzwilliam LLP) for H&H Sports Protection USA Inc.

Companies: Cardinal Motors, Inc.; H&H Sports Protection USA Inc.

Cases: Trademark NewYorkNews