Urban Group Exercise Consultants, Ltd. v. Dick's Sporting Goods, Inc.
1:12-cv-03599
S.D.N.Y.Mar 8, 2013Background
- UGEC sued DSG in SDNY (12-cv-3599) alleging federal trade dress infringement (unregistered Urban Rebounder trade dress) and dilution under Lanham Act and NY dilution statute; DSG moved to dismiss under Rule 12(b)(6).
- SAC asserts trade dress includes Urban Rebounder features and a red stripe adopted in 2008, plus extensive pre- and post-2008 advertising and media activity.
- The court previously dismissed the FAC for lack of federal trade dress infringement and dilution and allowed UGEC to replead (August 7, 2012).
- SAC alleges advertising expenditures, international promotion, media appearances, and extensive sales into gyms worldwide to support secondary meaning.
- Court grants DSG’s Rule 12(b)(6) motion, dismissing the SAC with prejudice, finding no secondary meaning or fame and that pre-2008 advertising is irrelevant to the claimed trade dress, with dilution claims also dismissed.
- Supplemental jurisdiction over UGEC’s state-law dilution claim is declined.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether UGEC’s trade dress claim is viable. | UGEC contends its red-stripe trade dress is non-functional and has secondary meaning. | DSG argues no secondary meaning or protectable trade dress. | No; secondary meaning not established; trade dress claim dismissed. |
| Whether UGEC’s dilution claim is viable. | UGEC contends its Urban Rebounder trade dress is famous. | DSG asserts the mark is not famous. | No; dilution claim dismissed for lack of fame. |
| Whether pre-2008 advertising can support secondary meaning. | Advertising history proves recognition. | Pre-2008 ads are irrelevant to the alleged trade dress since dress adopted in 2008. | Irrelevant to secondary meaning analysis. |
| Whether consumer surveys or other evidence supports secondary meaning. | UGEC relies on consumer surveys and media coverage. | Evidence cited is not actual consumer surveys or focused on the trade dress. | Not established; insufficient to prove secondary meaning. |
| Whether the court should exercise supplemental jurisdiction over the state-law dilution claim. | Declined. |
Key Cases Cited
- Louis Vuitton Malletier v. Louis Vuitton, et al., 454 F.3d 108 (2d Cir. 2006) (defers to strict limits on trade dress protection for product designs)
- Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir. 2001) (trade dress protection is limited and nonfunctional designs favored)
- Sports Traveler, Inc. v. Advance Publications Inc., 25 F. Supp. 2d 154 (S.D.N.Y. 1998) (secondary meaning factors include advertising, sales, and media coverage)
- Braun, Inc. v. Dynamics Corp. of America, 975 F.2d 815 (Fed. Cir. 1992) (advertising expenditure alone does not create secondary meaning)
- First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378 (9th Cir. 1987) (large ad spend not determinative of secondary meaning)
- Landscape Forms, Inc. v. Columbia Cascade Co., 117 F. Supp. 2d 360 (S.D.N.Y. 2000) (five-year use insufficient without other supporting factors)