841 F. Supp. 2d 753
S.D.N.Y.2012Background
- Plaintiffs Luv N’ care and Admar International allege patent, trademark, and trade dress violations, plus dilution claims under TDRA and New York law, and common-law claims.
- Defendant is a nationwide distributor accused of selling unauthorized knock-offs that resemble plaintiffs’ products.
- Plaintiffs’ products include No-Spill Cups and related cups, pacifiers, teething items, and storage bowls, with alleged distinctive designs and trade dress.
- Plaintiffs claim their designs and trade dress have acquired secondary meaning and are widely recognized nationwide and internationally.
- The amended complaint asserts dilution, misrepresentation, and confusion in commerce, along with design-patent claims and NY common-law unfair competition claims, among others.
- defendant moves to dismiss counts III (federal dilution) and V (New York dilution) as preempted or inadequately pled.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are the marks famous under TDRA §1125(c)? | Plaintiffs contend marks are widely recognized nationwide. | Defendant argues plaintiffs fail to plead general-public fame. | Not sufficiently pled; limited to potential repleading. |
| Does TDRA fame requirement apply to the dilution claim here? | TDRA applies; marks are famous. | Fame not shown; TDRA not satisfied. | TDRA fame not established; require repleading. |
| Is NY dilution claim preempted by federal patent law for potentially patentable designs? | NY dilution protects non-patentable and patentable designs alike. | Bonito Boats precludes state protection for patentable designs against copying. | Preempted for potentially patentable designs; NY can apply to non-patentable. |
| Can plaintiffs pursue a NY dilution claim for non-patentable designs notwithstanding preemption? | State law can address non-patentable trade dress protection. | Preemption bars patent-like protection. | Survival limited to non-patentable designs; repleading allowed for count III. |
| Rule on leave to replead and scope of dismissal | Plaintiffs should be allowed to replead. | Dismissals should be final. | Count III dismissed with leave to replead; count V limited as to potentially patentable designs. |
Key Cases Cited
- Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) (pleading standards; plausible claims required on motion to dismiss)
- TCPIP Holding Co. v. Haar Communications, Inc., 244 F.3d 88 (2d Cir. 2001) (federal dilution framework; standards for famous marks)
- Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (Supreme Court 1989) (preemption of state regulation where conflict with federal patent law arises)
- Escada AG v. Limited, Inc., 810 F. Supp. 571 (S.D.N.Y. 1993) (limits of state dilution law against potentially patentable designs)
- Merriam‑Webster, Inc. v. Random House, Inc., 35 F.3d 65 (2d Cir. 1994) (dilution considerations and trade dress protection under NY law)