Yeti Coolers, LLC v. Home Depot U.S.A., Inc.
1:17-cv-00342
| W.D. Tex. | Mar 12, 2018Background
- YETI Coolers, LLC sued Takeya USA (and others) alleging trade dress infringement, dilution, unfair competition, misappropriation, and unjust enrichment over the design of YETI’s 30 oz. and 20 oz. Rambler tumblers.
- YETI pleads its asserted trade dress as a combination of visual features (tapers, style line, rim, lid elements, color contrasts, placement/appearance of features) and includes exemplar photos.
- Takeya moved to dismiss under Rule 12(b)(6) arguing YETI failed to: plead the trade dress with particularity, plead likelihood of confusion, plead secondary meaning/fame, and plead nonfunctionality; Takeya also sought judicial notice of website images.
- The Court granted Takeya’s unopposed motion to take judicial notice of website images but denied Takeya’s motion to dismiss on all grounds.
- The Court relied on Fifth Circuit and Supreme Court standards for pleading plausibility (Twombly/Iqbal) and trademark/trade dress elements (Pebble Beach, TrafFix, Samara/Wal-Mart), finding YETI’s allegations sufficiently specific and plausible at the pleadings stage.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trade-dress articulation | YETI identified specific visual elements and their design/placement as the protected trade dress | Takeya: description is generic and therefore insufficient | Court: YETI’s description is sufficiently particular to survive dismissal |
| Likelihood of confusion | YETI alleged similar-looking products, exemplar photos, overlapping channels, and intentional copying | Takeya: complaint is conclusory and omits logos/branding in images | Court: factual allegations (similarity, intent, images) suffice at this stage |
| Secondary meaning / fame | YETI alleged long, continuous promotion, millions sold, advertising/publicity and resultant recognition | Takeya: allegations lack concrete facts (surveys, detailed sales figures) and fame is a high bar | Court: allegations are plausible and match prior rulings; survive dismissal |
| Nonfunctionality | YETI: trade dress is a protectable arbitrary combination of features; pleaded nonfunctionality | Takeya: features are functional/common (e.g., Big Gulp similarity) and YETI’s allegations are conclusory | Court: combination pleading plausibly alleges nonfunctionality; dismissal denied |
Key Cases Cited
- Cuvillier v. Taylor, 503 F.3d 397 (5th Cir. 2007) (pleading standard discussion)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility pleading standard)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (legal conclusions not presumed true)
- Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir. 1998) (trade dress protection elements)
- TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001) (nonfunctionality requirement)
- Taco Cabana Int’l, Inc. v. Two Pesos, Inc., 932 F.2d 1113 (5th Cir. 1991) (combination of functional features may be protectable)
- Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225 (5th Cir. 2010) (definition and scope of trade dress)