IP Law Daily, TRADEMARK—S.D.N.Y.: TushBaby baby carriers granted trade dress protection against competing brand, (Nov 1, 2024)

By Thomas K. Lauletta, J.D.

Plaintiff TushBaby established grounds for a preliminary injunction by showing likelihood of success, consumer confusion, irreparable harm, and public interest favoring the injunction.

The federal district court in New York City granted TushBaby a preliminary injunction with respect to Lanham Act trade dress violations against HKAI brand baby carriers. The court held that TushBaby demonstrated its likelihood for success on the merits by proving the merits of protecting its trade dress, and that six of the eight Polaroid factors for showing consumer confusion weighed in favor of granting the injunction. The plaintiff also established that irreparable harm would result in absence of the injunction. Finally, the public interest and the balances of hardships favored the grant of the injunction (TushBaby, Inc. v. Jinjang Kangbersi Trade Co, Ltd., No. 1:24-cv-06150-JMF (S.D.N.Y. Oct. 30, 2024)).

The plaintiff, TushBaby, Inc., manufactures and distributes baby carrier products. The defendants also sell similar products on Amazon under the “HKAI” brand. The plaintiffs filed suit alleging Lanham Act trade dress violation against defendants selling the HKAI brand products.

On October 23, 2024, the court granted the plaintiff’s motion for a preliminary injunction. The court based its decision on its conclusion that the plaintiff had met all requirements for the grant of injunctive relief: (1) likelihood of success on the merits; (2) irreparable harm; and (3) both the public interest and the balance of hardships favoring the injunction.

Likelihood of success on the merits. To establish a valid Lanham Act claim based on trade dress infringement, a party must show (1) that the trade dress is valid and entitled to protection, and (2) that the defendant’s use of the trade dress is likely to cause consumer confusion.

Trade dress validity. The plaintiff first established the validity of its trade dress by its registration of the trade dress by the USPTO, which meant that that trade dress was presumptively valid. Second, the plaintiff established that its trade dress had acquired distinctiveness through secondary meaning. The court found secondary meaning based on the plaintiff’s evidence of sales success, advertising expenditures, unsolicited media coverage showcasing its trade dress, and by the defendants’ imitation of the plaintiff’s trade dress.

Consumer confusion. The court concluded that the plaintiff demonstrated a likelihood of confusion based on the eight factors of Polaroid Corp. v. Polarad Elecs. Corp.:

1. Strength of TushBaby’s trade dress. The court found that the TushBaby’s trade dress was conceptually and commercially strong. Here, the strength of the TushBaby’s trade dress weighed heavily in TushBaby’s favor.

2. Similarity of the marks. In this instance, the noted that the defendants’ product utilizes trade dress which is “practically identical” to the TushBaby trade dress. The defendants’ product has all the same features that comprise the TushBaby carrier, namely the rounded front pouch, the black wraparound straps, an outer shell in a variety of neutral colors, and adjoined mesh pockets with side zippers. This element strongly favors TushBaby.

3. and (4) The Polaroid factors of competitive proximity and bridging the gap are not disputed and support a likelihood of confusion.

4. Actual consumer confusion. Here, the court concluded that the actual consumer confusion factor slightly favored TushBaby. To prove that consumers are attracted to the defendants’ products by virtue of their resemblance to the TushBaby product (i.e., initial-interest confusion), TushBaby collected several buyer reviews and social media posts describing the defendants’ carrier as a “knock off” or “dupe” of the TushBaby carrier. Although the court stated that TushBaby’s evidence of actual consumer confusion was far from overwhelming, it plausibly suggested that consumers gravitated toward the defendants’ products precisely because they imitated TushBaby’s trade dress.

5. Bad faith. The court stated that in “this case, the record is replete with evidence of bad faith.” Concluding that this factor weighed heavily in favor of TushBaby, the court rejected the defendants’ argument that its good faith was shown by the use of its brand label on its baby carriers. Further, the court disbelieved the defendants’ assertion that they had no knowledge of TushBaby before being sued. The court also stated that intent to deceive can be inferred from the remarkable similarities between the trade dresses of the parties.

6. and (8) Regarding the last two Polaroid factors, the quality of the products and the sophistication of consumers, the court concluded that these two factors favored neither party. The court found the parties’ respective arguments on these factors to be unpersuasive and refused to rule on these two factors.

Irreparable harm. The court found that TushBaby established that it would suffer irreparable harm absent the grant of the injunction. The court concluded that, by misappropriating TushBaby’s trade dress, the defendants were not only trading on TushBaby’s earned goodwill but were also depriving TushBaby of control over its reputation and the products offered under its name.

Public interest and balance of hardships. The court concluded that TushBaby had established that the equitable injunction factors tipped in its favor. As to the public interest, the court noted that the consuming public has a protectable interest in being free from confusion, deception, and mistake. The court also stated that although the preliminary injunction will cause the defendants economic costs, such harms are largely self-inflicted given that the defendants took a calculated risk in launching a product with a trade dress virtually identical to TushBaby’s trade dress.

Court action. The court granted TushBaby’s request for a preliminary injunction.

The Case is No. 1:24-cv-06150-JMF.

Judge: Furman, J.

Attorneys: Leo Martin Lichtman (Esca Legal) for TushBaby, Inc.

Companies: TushBaby, Inc.; Jinjang Kangbersi Trade Co, Ltd.; Wenxi Wuyuan E-Commerce Co., Ltd.; Guangzhou City Woma International Trade Co., Ltd.

Cases: Trademark NewYorkNews