Gi Sportz, Inc. v. Apx Gear, LLC
692 F. App'x 839
9th Cir.2017Background
- GI Sportz (plaintiffs) sued APX Gear (defendant) for trade-dress infringement relating to GI Sportz’s “Marballizer” paintball design and sought a preliminary injunction.
- The district court applied the four Winter factors for preliminary injunctions but focused solely on the first factor: likelihood of success on the merits.
- The district court concluded GI Sportz failed to show its trade dress is source-identifying (i.e., inherently distinctive or has secondary meaning).
- GI Sportz’s trade-dress registration has attained incontestable status under the Lanham Act after five years of continuous use.
- On interlocutory appeal, the Ninth Circuit reviewed for abuse of discretion and found the district court erred in its conclusion about source-identifying role because incontestability is conclusive proof of secondary meaning.
- The Ninth Circuit vacated and remanded, holding this error does not automatically entitle GI Sportz to an injunction and leaving remaining Winter-factor analysis to the district court.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether GI Sportz established its trade dress is source-identifying | Incontestable registration proves secondary meaning and thus source-identifying | Trade dress lacks inherent distinctiveness or secondary meaning | Court: Incontestability is conclusive proof of secondary meaning; district court erred in finding otherwise |
| Whether district court abused its discretion by focusing only on the first Winter factor | N/A (challenge to district court’s analysis) | N/A | Court: Abuse of discretion occurred because of an erroneous legal conclusion about incontestability |
| Whether GI Sportz is entitled to a preliminary injunction based on that error | GI Sportz argues district court’s error requires relief | APX contends all Winter factors still must be satisfied | Court: Error does not automatically grant injunction; plaintiff still must satisfy all Winter factors on remand |
| Proper scope of appellate disposition | GI Sportz seeks reversal and injunction | APX seeks affirmation | Court: Vacated and remanded for further proceedings; other issues left to district court |
Key Cases Cited
- Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008) (four-factor test for preliminary injunctions)
- Clicks Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252 (9th Cir. 2001) (trade-dress must be source-identifying: inherently distinctive or secondary meaning)
- Am. Trucking Ass’ns v. City of Los Angeles, 559 F.3d 1046 (9th Cir. 2009) (standard for abuse of discretion review)
- Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135 (9th Cir. 2002) (incontestability serves as conclusive proof of secondary meaning)
- Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985) (effect of incontestable trademark registrations)
- Munaf v. Geren, 553 U.S. 674 (2008) (preliminary injunction is an extraordinary remedy)