IP Law Daily Trade dress claims defective in suit over cane-shaped massager
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Monday, December 19, 2016

Trade dress claims defective in suit over cane-shaped massager

By Mark Engstrom, J.D.

A manufacturer of massage and fitness products could not pursue trade dress infringement or unfair competition claims against the marketer of a substantially similar "cane massager," the federal district court in New Haven, Connecticut, has ruled. Although the manufacturer had plausibly alleged a likelihood of consumer confusion with respect to its trade dress, it failed to describe the claimed dress with the requisite level of detail, failed to specifically allege that the claimed dress was non-functional, and failed to proffer any actual allegations that would connect the claimed dress to the manufacturer for the purpose of establishing secondary meaning. The trade dress claim was therefore dismissed, but without prejudice. For similar reasons, two unfair competition claims—one based on trade dress infringement and another based on the defendant’s use of the title "Trigger Point Massager" in combination with the claimed trade dress—were also dismissed, with leave to amend (AJB Enterprises, LLC v. BackJoy Orthotics, LLC, December 18, 2016, Bolden, V.).

In 2014, plaintiff AJB Enterprise, d/b/a Body Back Company, and defendant BackJoy Orthotics discussed a licensing agreement that would allow BackJoy to sell AJB’s "S-shaped cane massager" in exchange for royalty payments. Body Back provided BackJoy with the information it needed to make the cane massager, and also initiated production at an injection molding facility to enable the test marketing of the product.

The parties successfully sold the massager at Bed Bath & Beyond, and discussions about a consulting agreement continued by e-mail. Eventually, BackJoy told Body Back that it would be sending an updated consulting agreement, but it never provided a revised agreement.

In December of 2016, BackJoy informed Body Back that the fee structure of the agreement no longer worked, and that an alternate "consulting" arrangement—for past and ongoing work—would be preferable. BackJoy continued to sell the cane massager through Bed Bath & Beyond, but the parties were never able to agree on a written contract. Ultimately, AJB sued BackJoy for trade dress infringement, unfair competition, breach of contract, and unjust enrichment.

Trade dress infringement. The court noted that a viable trade dress claim required: (1) a "precise expression" of the character and scope of the claimed trade dress; (2) a non-functional trade dress; (3) a trade dress with a secondary meaning; and (4) a likelihood of confusion between the products at issue.

Character, scope of trade dress. The court noted that the claimed trade dress encompassed product design. According to the court, AJB had specified six distinct features of its trade dress for a "Trigger Point Massager," but the description focused on an "overall elongated S-shaped cane configuration" and strategically placed "massage nubs." The complaint repeatedly referenced those features as "distinctive," but it failed to provide any details about how those features were distinctive, the court explained. Limiting its analysis to the four corners of the complaint, the court found that the proffered description did not describe the claimed trade dress with the detail that was required to survive dismissal.

Functionality. The features of the plaintiff’s "cane massager" trade dress appeared to be directly related to the functionality of the massaging device, according to the court. In an e-mail correspondence between BackJoy and Paul Nash (the owner of Body Back), Nash described the placement of the product’s massage nubs as contributing to the functioning of the product. Nash explained that "[t]he main function of the tool is by using the knobs that are at the ends of the S curve," and further explained that the "other knobs are secondary but useful."

AJB acknowledged that those features were useful, but nevertheless argued that they were not essential to the purpose of the product because a variety of alternative configurations were also effective. In AJB’s view, the features were simply not functional.

However, courts in the Second Circuit had long held that a product’s features were deemed functional until proved otherwise—by the party that sought trade dress protection—and in this case, AJB did not plead any factual allegations that would overcome the presumption of functionality. Significantly, the complaint did not address: (1) the functionality of the specific features that composed the claimed trade dress or (2) the effect of trade dress protection on "effective competition."

Secondary meaning. AJB alleged that Body Back had sold the contested cane massager, in commerce, for more than 20 years. The complaint also alleged that Body Back had used the claimed trade dress through "widespread sales," and that the trade dress had "come to indicate origin with Plaintiff Body Back." AJB argued that those allegations, combined with advertisements of the product’s S-shaped configuration, plausibly pleaded secondary meaning (acquired distinctiveness).

The court noted, however, that an extensive and successful history of selling and advertising the product—without more—was insufficient to show that the claimed trade dress had acquired secondary meaning for purpose of a trade dress infringement claim. Substantial sales without a concomitant effort on the seller’s part to associate the product’s trade dress with the source of the product, rather than the product itself, did not establish the secondary meaning of the claimed dress.

Because the plaintiffs’ complaint did not include any factual allegations that would connect the claimed trade dress to Body Back as the source of that dress, the "secondary meaning" element was not established.

Likelihood of confusion. AJB alleged that the Trigger Point Massager that BackJoy had sold was "essentially identical" to its own Trigger Point Massager. AJB proffered photographs of the two products, and apart from slight variations in the shape of the massage nubs and the presence of an additional nub on the Body Back product, the products were "indistinguishable," according to the court. The similarity of the parties’ trade dress thus favored a likelihood of confusion.

Other likelihood-of-confusion factors were not specifically addressed by the plaintiffs. Although their complaint stated generally that BackJoy had acted in bad faith, the undisputed facts indicated that BackJoy had initially made the allegedly infringing massagers with Body Back’s permission.

Considering the product as a whole—in light of the overall similarity between the two Trigger Point Massagers—the court concluded that AJB had plausibly pleaded a likelihood of confusion for the purpose of its infringement claim. Nevertheless, AJB failed to plead the character, scope, non-funtionality, and secondary meaning of the claimed trade dress, and thus failed to allege a valid trade dress claim.

Unfair competition. Because AJB failed to adequately plead a protectable trademark interest in the Trigger Point Massager, it failed to state a viable claim for federal unfair competition based on trade dress infringement. Similarly, because AJB failed to adequately allege the secondary meaning of its trade dress, it failed to allege an unfair competition claim based on BackJoy’s use of the title "Trigger Point Massager" in combination with the claimed trade dress.

The case is No. 3:16-cv-00758 (VAB).

Attorneys: Anthony H. Handal (Handal & Morofsky, LLC) for AJB Enterprises, LLC. Jonathan P. Goddard (Perkins Coie LLP) and Jill M. O’Toole (Shipman & Goodwin LLP) for BackJoy Orthotics, LLC.

Companies: AJB Enterprises, LLC; Backjoy Orthotics, LLC

MainStory: TopStory Trademark ConnecticutNews

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