By Brian Craig, J.D.
The court excluded the plaintiff’s consumer behavior expert report and held that sales success alone cannot establish secondary meaning.
New York-based marketing company Bobcar Media, LLC, failed to show that designs for promotional vehicles—which were asserted in a trade dress infringement and unfair competition action against a Pennsylvania provider of promotional electric vehicles—have acquired the requisite secondary meaning, the federal district court in New York City has decided. The court excluded the testimony of Bobcar’s consumer behavior expert because the expert offered impermissible legal conclusions that are not based on any reliable methodology. The court also granted summary judgment in favor of defendant Aardvark Event Logistics, Inc., concluding that sales success alone cannot establish secondary meaning for purposes of a trade dress infringement claim (Bobcar Media, LLC v. Aardvark Event Logistics, Inc., April 6, 2020, Oetken, J.).
New York-based marketing company Bobcar Media, LLC owns technology and designs for promotional vehicles. Bobcar vehicles are mobile marketing vehicles used in connection with mobile marketing programs conducted on behalf of brands or advertising agencies representing brands. The vehicle has panels that open and close to reveal products promoted in a showroom. Bobcar asserted patent infringement, trade dress infringement, and unfair competition claims against Aardvark Event Logistics, Inc., a company that offers electric mobile marketing vehicles used as "mobile showrooms" and "mobile billboards. While Bobcar holds four utility and four design patents, it never registered the trade dress it asserts in this action. In 2019, the court dismissed all patent infringement claims for lack of statutory standing. Aardvark moved to exclude the expert testimony of Bobcar’s consumer behavior expert, and for summary judgment on all remaining claims. Bobcar cross-moved for summary judgment.
Exclusion of expert. The court excluded the testimony of the consumer behavior expert because the expert offers both impermissible legal conclusions and opinions that are not based on any reliable methodology. The admissibility of expert testimony is governed by Federal Rule of Evidence 702, which provides that an expert who is qualified by knowledge, skill, experience, training, or education may testify if the testimony would be helpful to the trier of fact, is based on sufficient facts or data, and is the product of reliable principles and methods, reliably applied to the facts of the case. A court may conclude that there is simply too great an analytical gap between the data and the opinion proffered.
The court held that each section of the report by the consumer behavior expert ultimately draws legal conclusions based on evidence that is seemingly not analyzed in any meaningful way. As to trade dress, the expert offers no analysis beyond highlighting aspects of the record in the record that he finds important and demonstrating how it satisfies the legal standards he sets out. Because the jury would be engaging in the same process when assessing Bobcar’s claims, this is impermissible testimony. The court also found that the expert’s assessment of the non-functionality of Bobcar’s promotional vehicles also uses the same materials as trade dress, with the addition of a Google search. The review of the other evidence is unhelpful to the jury because it contains no analysis beyond that which can be done by the average juror. The expert’s review of the evidence concerning secondary meaning is not more sophisticated than that to be performed by the average juror. The extent of advertising expenditures, positive press, and sales revenues is evident from the face of the documents that the expert cites. The expert provides no support for the likelihood of confusion conclusion. Because the expert offers improper legal opinions that go to the ultimate issues in the case, the court excluded the expert report.
Trade dress infringement. The court next found that Bobcar failed to show secondary meaning to support the trade dress infringement claim. To assess whether a trade dress has acquired secondary meaning, courts consider the following factors: (1) advertising expenditures, (2) consumer studies, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of use.
All of the factors concerning secondary meaning—with the exception of sales success—weigh against secondary meaning in this case. Bobcar offered no evidence showing how much money has been spent on advertising activities. Bobcar failed to produce any consumer studies to support secondary meaning. Bobcar submitted ten articles in support of secondary meaning, but the media coverage does not refer to Bobcar as the company that created the vehicle. Furthermore, none of the articles are from the relevant time period. The only secondary meaning factor weighing in favor of Bobcar is its sales success. Courts have previously held that sales success alone cannot establish secondary meaning. Therefore, Bobcar did not produce sufficient evidence that its product acquired secondary meaning before the infringement began. Accordingly, the court dismissed Bobcar’s trade dress infringement claim.
Unfair competition. Because Bobcar’s trade dress claim fails, the court also dismissed the federal and state law unfair competition claims.An unfair competition claim under the Lanham Act requires a showing (1) of a valid trademark entitled to protection under the Act, and (2) that defendant’s actions are likely to cause confusion. Under New York law, an unfair competition claim is subject to the same analysis as a Lanham Act claim, except for the additional requirement of bad faith.
Accordingly, the court granted summary judgment in favor Aardvark on all remaining claims.
This case is No. 1:16-cv-00885-JPO.
Attorneys: Morris E. Cohen (Goldberg Cohen, LLP) for Bobcar Media, LLC. Evan Lechtman (Blank Rome, LLP) for Aardvark Event Logistics, Inc.
Companies: Bobcar Media, LLC; Aardvark Event Logistics, Inc.
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