IP Law Daily, TRADEMARK—SDNY: Failure to Allege Non-Functionality, Secondary Meaning, and Fame Doomed Trampoline Device Maker’s Trade Dress Claims Against Retailer, (Aug 9, 2012)

By Cheryl Beise, J.D.

Urban Group, maker of the low-impact “Urban Rebounder” trampoline exercise device, failed to state federal trade dress infringement and dilution claims against retailer Dick’s Sporting Goods, the federal district court in New York City has ruled (Urban Group Exercise Consultants, Ltd. v. Dick’s Sporting Goods, Inc., August 7, 2012, Sweet, R.). Urban’s trade dress infringement claim was dismissed for failure to allege non-functionality and secondary meaning, and its trade dress dilution claim was dismissed for failure to establish fame. After dismissing Urban’s federal claims, the court declined to exercise supplemental jurisdiction over Urban’s trade dress dilution under New York law.

The Urban Rebounder is a personal exercise trampoline-type device comprised of a stabilizing bar, a support frame bar, locking pins, a black jumping mat outlined in red, springs and legs to support the device, and a protective folding skirt that surrounded the mat and bore a logo and “Urban Rebounding,” Urban’s registered word mark. Urban has sold millions of Urban Rebounder units at a retail price of approximately $100. The Urban Rebounder has been featured in the media and was named as one of the top 100 fitness products.

Between 2005 and 2010, Dick’s Sporting Goods sold over 16,000 Urban Rebounder units. In 2010, Dick’s ceased selling Urban Rebounders and began selling a less expensive, competing device, the Fitness Gear Cardio Jump Trainer. The “Jump Trainer” bears the same exact black and red color scheme as the Urban Rebounder, only without Urban Rebounder’s logo. The only readily identifiable difference between the products is the Urban Rebounder’s logo.

Urban sued Dick’s for: (1) trade dress infringement under Section 43(a) of the Lanham Act, seeking $1 million in damages; (2) trade dress dilution under the Trademark Dilution Revision Act (“TDRA”), seeking an injunction preventing Dick’s from selling the Jump Trainer; and (3) trade dress dilution under New York law. Urban asserts that Dick’s promotion and sales of the inferior, copycat Jump Trainer has created customer confusion as to the expectations of the Urban Rebounder’s quality and durability.

Trade Dress Infringement

Trade dress encompasses the design and appearance of a product along with all the elements that serve to identify the product to consumers. To plead a claim of trade dress infringement involving the appearance of a product, a plaintiff must first offer “a precise expression of the character and scope of the claimed trade dress” and then must allege that: (1) the claimed trade dress is non-functional; (2) the claimed trade dress has secondary meaning; and (3) there is a likelihood of confusion between the plaintiff’s good and the defendant’s.

Trade Dress Elements. Urban asserted trade dress protection in: (1) the structural elements of the Urban Rebounder; (2) the black and red color scheme and protective fold skirt; and (3) the presence of Urban’s logo and trademark. The Rebounder’s structural elements did not qualify for trade dress protection as they were common to any trampoline. The Rebounder’s black and red color scheme and protective fold skirt showing Urban’s trademarked logo did qualify as protectable trade dress elements.

Functionality. Urban incorrectly asserted that Dick’s bore the burden of proving that Urban’s claimed trade dress was functional. The law is well-settled that a plaintiff alleging infringement or dilution of unregistered trade dress must prove that its trade dress is non-functional, the court said. Urban’s conclusory assertion that the Rebounder’s design was non-functional failed to meet its burden to establish non-functionality.

Secondary Meaning. In order to assert a claim for trade dress infringement, a plaintiff must establish that his trade dress has acquired a secondary meaning. Urban alleged that the Urban Rebounder’s product design “had acquired distinctiveness through secondary meaning” because its “underlying black and red color scheme conveys to the minds of the public that its primary significance is to identify Plaintiff Urban Group, the source of The Urban Rebounder Product.” Such conclusory allegations were insufficient to establish secondary meaning, according to the court.

In determining whether a plaintiff’s trade dress has secondary meaning, courts consider several factors, including: (1) plaintiff’s advertising expenditures; (2) consumer surveys linking the trade dress to a particular source; (3) sales success; (4) unsolicited media coverage; (5) attempts to plagiarize the trade dress; and (6) the length and exclusivity of the use. Information regarding Rebounder unit sales and media coverage was inadequate to show secondary meaning. Urban made no allegations regarding advertising expenditures, consumer surveys, prior attempts to plagiarize the trade dress or Urban’s exclusive used of the color scheme alleged.

Trade Dress Dilution

A claim for trademark dilution brought under the TDRA requires that a plaintiff show: (1) the trade dress is famous; (2) the defendant is using the trade dress in commerce; (3) the defendant’s use of the trade dress began after the trade dress became famous; and (4) the defendant’s use of the trade dress is likely to cause dilution.

Fame. Urban failed to allege facts to show that its trade dress was famous. Urban asserted that its trade dress “has famously become a source identifier of the Urban Rebounder distinguishable from other trampling devices.”

The TDRA explicitly states that “a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” This language is intended to reject dilution claims based on niche fame, i.e., fame limited to a particular geographic region, channel or trade, or segment of industry or service, the court explained.

Urban’s trade dress infringement and dilution claims were dismissed, with leave to amend.

Case No. 12 Civ. 3599 (RSW).

Bruce El Colfin (Jacobson & Colfin, P.C.) for Urban Group Exercise Consultants, Ltd. Michael A. Nicodema (Greenberg Traurig, LLP) for Dick’s Sporting Goods, Inc.

Cases: Trademark NewYorkNews