Bubble Genius LLC v. Smith
239 F. Supp. 3d 586
E.D.N.Y2017Background
- Bubble Genius (plaintiff) sells novelty "In Your Element" soaps that replicate periodic-table formatting (symbol, atomic number, name, mass, energy level), colors, rectangular shape, black embedded ink, clear packaging, and its trademarks; first sold in October 2010.
- Mariann Smith d/b/a Just Bubbly (defendant) later sold a line of soaps using periodic-table information (introduced mid-2014); a customer thought defendant’s product was plaintiff’s.
- Plaintiff sued under the Lanham Act (trade dress infringement and unfair competition), New York Gen. Bus. Law § 360-1 (statutory unfair competition/dilution), and New York common law unfair competition; plaintiff’s trade dress is unregistered.
- Defendant moved to dismiss under Fed. R. Civ. P. 12(b)(6), arguing the asserted trade dress is functional (aesthetic functionality and public-domain materials), and that state-law claims are preempted; plaintiff seeks leave to replead.
- The district court accepted pleaded facts as true but held the asserted trade dress is aesthetically functional, plaintiff failed to plead secondary meaning, the § 1114 claim was abandoned (no registration), the state statutory claim is preempted, and the common-law claim lacks pleaded bad faith.
- Result: Complaint dismissed with prejudice; leave to replead denied as futile.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Protectability of unregistered trade dress under §1125(a) — functionality | Trade dress is ornamental for soaps and non-functional because soaps’ purpose is cleansing, and market is novelty soaps generally | Trade dress is aesthetically functional because it copies public-domain periodic-table elements and colors; exclusive rights would hinder competition in that niche | Dismissed: trade dress is aesthetically functional and not protectable under §1125(a) |
| Secondary meaning for trade dress | Plaintiff alleged long, exclusive use and advertising investment supporting source-identification | Defendant: no specific consumer surveys, media coverage, sales figures, or other evidence showing source-identification | Dismissed as inadequately pleaded; plaintiff failed to plausibly allege secondary meaning |
| Federal unfair competition (Lanham Act) based on trade dress | Plaintiff contends defendant’s product causes consumer confusion and misrepresents source | Defendant: no protectable mark (functional, no secondary meaning); §1114 claim abandoned because no registration | Dismissed: federal unfair-competition claim fails because no protectable trade dress and §1114 claim waived |
| State claims — NY Gen. Bus. Law §360-1 and common-law unfair competition | Plaintiff alleges dilution and unfair competition from copying | Defendant: state-law claims are preempted by federal law because they rest on copying; common-law claim also fails for lack of pleaded bad faith and lack of protectable mark | Dismissed: §360-1 claim preempted and fails on merits; common-law claim fails for lack of bad faith and lack of protectable trade dress |
Key Cases Cited
- TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (aesthetic/functional features presumed functional until shown otherwise)
- Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (product-design trade dress requires distinctiveness/secondary meaning)
- Wallace Int’l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76 (2d Cir. 1990) (denying protection for basic, public-domain decorative style elements)
- Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206 (2d Cir. 2012) (aesthetic functionality doctrine — exclusive rights cannot significantly hinder competition)
- Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27 (2d Cir. 1995) (trade dress cannot protect ideas or generalized appearances)
- Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159 (aesthetic features can be functional if exclusivity would harm competition)
- Nora Beverages, Inc. v. Perrier Group of Am., Inc., 269 F.3d 114 (2d Cir. 2001) (trade dress protects overall design/appearance that identifies source)