Bern Unlimited, Inc. v. Burton Corp.
95 F. Supp. 3d 184
D. Mass.2015Background
- Bern Unlimited, Inc. sues six helmet makers for trade-dress infringement and unfair competition, claiming its rounded-brim design identifies Bern as the source.
- Bern markets a line with a rounded profile and distinctive visor; its Baker helmet was the flagship trade dress at issue.
- Defendants include Burton, BRG Sports, Smith Sport Optics, Vans, Amer Sports, and K-2; they counterclaim for false advertising, alleging Bern misrepresented its patent status.
- Bern’s trade dress claims are evaluated under 15 U.S.C. § 1125(a) and state law; Bern asserted secondary meaning but did not offer consumer surveys.
- The court granted summary judgment for defendants on Bern’s trade-dress claims due to lack of acquired secondary meaning; it also granted Bern’s summary-judgment motion on counterclaims, dismissing defendants’ false-advertising and related claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Has Bern acquired secondary meaning for its trade dress? | Bern argues the design has acquired secondary meaning in the market. | Defendants contend Bern failed to prove acquired secondary meaning. | No secondary meaning; summary judgment for defendants. |
| Is Bern's trade dress non-functional? | Trade dress is non-functional if not essential to use or purpose. | Defendants argue Bern’s design is functional and thus unprotectable. | Not reached/undetermined due to lack of secondary meaning. |
| Is there a likelihood of confusion between Bern and the accused helmets? | Bern asserts that the designs create source confusion. | Defendants contend no likelihood of confusion given absence of secondary meaning. | Moot; court did not reach due to absence of secondary meaning. |
| Do the false-advertising counterclaims fail as a matter of law? | Defendants claim Bern falsely advertised its patent as valid when it was not. | Defendants contend materiality and injury show false advertising. | Bern granted summary judgment on counterclaims; defendants’ claims fail. |
| Do dilution and state-law trade-dress claims survive? | Bern seeks protection under federal and Massachusetts dilution and state-law claims. | Without distinctiveness/secondary meaning, these claims fail. | Dilution and state-law claims fail; judgment for Bern on counterclaims; overall dismissal. |
Key Cases Cited
- Yankee Candle Co. v. Bridgewater Candle Co., Inc., 259 F.3d 42 (1st Cir. 2001) (direct/indirect evidence of secondary meaning; circumstantial factors)
- Wal-Mart Stores v. Samara Bros., Inc., 529 U.S. 205 (U.S. 2000) (trade dress must be distinctive or acquire secondary meaning)
- I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27 (1st Cir. 1998) (test for secondary meaning and likelihood of confusion factors)
- Commerce National Insurance v. Kohler Co., 214 F.3d 432 (3d Cir. 2000) (timing of surveys in secondary-meaning analysis; probative value)
- General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006) (recognizes survey strength and timing in secondary meaning analysis)