By Thomas K. Lauletta, J.D.
Bambi Baby’s Lanham Act and state law infringement claims asserted against an online competitor survive motions to dismiss.
Plaintiff Bambi Baby.Com Corp. (Bambi Baby) markets and ships its baby furniture from its website, www.bambibaby.com. Its amended complaint alleges that defendants Madonna Ventures, Inc. ("Madonna") and Inspiration by Sterling, Inc. ("Sterling"), which own and operate a competing store, Treasure Rooms, copied the "look and feel" of Bambi Baby’s website, thereby infringing on its intellectual property. Of Bambi Baby’s multi-count complaint, the federal district court in Newark, New Jersey, let stand claims for trade dress infringement under the Lanham Act, and state law violations for unfair competition and common law trademark infringement (Bambi Baby.com Corp. v. Madonna Ventures, Inc., June 3, 2019, Walls, W.).
The instant decision involves Madonna’s motion to dismiss Bambi Baby’s amended complaint, alleging (1) unfair competition under New Jersey’s Unfair Competition Act; (2) trade dress infringement under Section 43(a) of the Lanham Act; (3) false advertising under Section 43(a) of the Lanham Act; (4) common law trademark infringement; (5) and common law tortuous interference. Default was entered against Sterling for his failure to respond to Bambi Baby’s amended complaint.
Trade dress infringement. Bambi Baby alleges that Madonna infringed on Bambi Baby’s website’s "distinctive and innovative" trade dress that has become readily identifiable by consumers as originating from Bambi Baby. Bambi Baby identifies three elements that constitute its distinctive trade dress: (1) a distinctive palette of colors and images and videos, highlighted by bright and vibrant colors, with a backdrop of warm, baby tones; (2) a home page display featuring an assortment of products needed by new parents; and (3) the consistent placement and location of certain user options and the company’s logo on each page of the website.
Functionality. As an element to qualify for protection under Lanham Act Section 43(a)(1)(A) (15 U.S.C. §1125(a)(1)(A)), the plaintiff must show that the allegedly infringing trade dress is nonfunctional. Defendant Madonna argued that Bambi Baby’s trade dress (identified in paragraph 21(b) of the complaint) relating to the display of an assortment of products needed by parents, and that relating to the consistent placement of certain user options and the company logo (paragraph 21(c), were functional. The court concluded that these features identified for website visitors the products sold on the website, and therefore these features were functional, and not protected by the Lanham Act.
The aspect identified in paragraph 21(c) of the amended complaint, that of Bambi Baby’s use of a "distinctive palette of colors and images ... featuring ... bright, vibrant colors set in an environment/backdrop of warm, baby tones," was held by the court as nonfunctional.
Secondary meaning. The court noted that the "look and feel" of the Bambi Baby website is only protectable if it is distinctive. To be distinctive, a trade dress must be either inherently distinctive, or had acquired distinctiveness through its development of secondary meaning. Secondary meaning is present where the primary significance of the trade dress to consumers is to designate the producer of the product, rather than the product itself. The court concluded that Bambi Baby had adequately alleged the existence of secondary meaning.
Likelihood of confusion. To support infringement of trade dress under the Lanham Act, a plaintiff must allege that consumers are likely to confuse the source of the plaintiff’s and the defendant’s products. The Court concluded the by its allegations that the configuration and overall impression created by the defendant’s website is confusingly similar to that of Bambi Baby’s, and that this would likely cause confusion as to the source, origin, or affiliation of the defendant’s products, that Bambi Baby had adequately alleged the likelihood of confusion.
False advertising under Lanham Act. Based on the amended complaint, the court held that a claim of false advertising under the Lanham act was not adequately alleged because Bambi Baby did not claim that defendant Madonna misrepresented any characteristics of its products sold on its website. A false advertising claim under the Lanham Act cannot be established merely by an allegation that the defendant falsely asserted an affiliation with the plaintiff.
State law unfair competition. The court noted that the elements for recovery under New Jersey’s statutory unfair competition law are the same as those under Lanham Act 43(a). Because the court had already held that paragraph 21(a) of Bambi Baby’s amended complaint adequately alleged infringement of its trade dress relating to the distinctive palette of colors used in its website, Bambi Baby also adequate alleged a claim of unfair competition under the New Jersey law.
Common law trademark infringement. Bambi Baby argued that it established violation of its common law trademark rights in the "look and feel" of its website through its long and continued use of protected trade dress on that website. The court noted that liability for common law trademark infringement is established in New Jersey when a defendant violates the Lanham Act for trademark infringement. Accordingly, the court held that because Bambi Baby had adequately pleaded trade dress infringement under the Lanham Act, that it also stated a claim under New Jersey common law trademark infringement of the "look and feel" of its website.
Tortuous interference. Madonna moved to dismiss this count on the basis that Bambi Baby did not allege the tortuous interference requirement of the existence of a reasonable likelihood that there was an anticipated benefit from the protected interest that would have been realized except for the interference. The court agreed, stating that Bambi Baby’s mere allegation that it had established customer relationships that were disrupted by Madonna’s actions did not meet this requirement. What was needed, the court said, was support for this assertion by identifying, with specificity, customers that Madonna "poached," or customers prevented from reaching Bambi Baby in the first place. Because Bambi Baby did not establish this element, it had not stated a claim for tortuous interference.
Ruling. The court denied Madonna’s motions to dismiss Bambi Baby’s counts related to: (1) unfair competition under the New Jersey Unfair Competition Act; (2) common law trademark infringement; and (3) Lanham Act trade dress infringement under paragraph 21(a). The court granted Madonna’s motions to dismiss Bambi Baby’s counts related to: (1) false advertising under the Lanham Act; (2) common law tortuous interference; and (3) Lanham Act trade dress infringement under paragraphs 21(b) and 21(c). The court also dismissed as moot a copyright infringement claim (not discussed herein) that the parties had previously agreed to dismiss.
The case is No. 2:18-cv-12669-WHW-CLW.
Attorneys: Michael Anthony Rolek (Connell Foley LLP) for Bambi Baby.com Corp. Ronald D. Coleman (Mandelbaum Salsburg PC) for Madonna Ventures, Inc. d/b/a Treasure Rooms d/b/a Treasure Room Baby and Kids a/k/a Treasure Rooms LLC and Inspiration by Sterling, Inc. d/b/a Treasure Rooms.
Companies: Bambi Baby.com Corp.; Madonna Ventures, Inc. d/b/a Treasure Rooms d/b/a Treasure Room Baby and Kids a/k/a Treasure Rooms LLC; Inspiration by Sterling, Inc. d/b/a Treasure Rooms
MainStory: TopStory Trademark NewJerseyNews
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