MEMORANDUM & ORDER
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I. Background
A. The Facts
Plaintiff The Gerffert Company, Inc. (“Gerffert”), during the time period relevant to this lawsuit, was a New York distributor of Catholic-themed religious products, including prayer cards and framed prints. (Dkt. No. 335-1 (“Panigel Deck”) ¶ 3.) As of 1984, Gerffert’s owner and president was Plaintiff Stephen Panigel (“Panigel”). (Id. ¶¶ 3, 11.) Defendant James Dean (“Dean”) was first employed by Gerffert, from 1988 to 2005, as an independent sales representative
For approximately five decades, between the late 1950s and May 2007, Gerffert served as the sole distributor of Bonella artwork in the United States.
In terms of Gerffert’s marketing, Plaintiffs allege, but do not provide any evidence to establish, that Gerffert, in general, spent “in the millions of dollars” on “publicity and promotion of [its] products and services.” (Dkt. No. 1 (“Compb”) ¶¶ 112, 115.) Plaintiffs further allege that such marketing entailed “the use of catalogs, membership in trade groups and appearances at annual trade shows and conventions” by Gerffert, without indicating what portion of its advertising expenditures went toward catalogs for Bonellarelated products.
But, in other ways, these catalogs also varied widely in their designs. First, one of these catalogs had a cover that bore the Gerffert and Bonella logos, reproduced below, and the Bonella slogan (“The World’s Very Best”) (Pis.’ Ex. EE); another only bore on its cover the Bonella logo and slogan, with no reference to Gerffert (Pis.’ Ex. 0); a different one had a cover that only bore the Gerffert logo, but referenced “The Bonella Line” (Defs.’ Ex. 4, at Ex. K); and a fourth had a cover that only bore the Gerffert logo, with no reference to Bonella (Pis.’ Ex. L).
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Second, two catalogs had copyright stamps for Bonella, not Gerffert, at the bottom of every page (Pls.’ Ex. O; Pls.’ Ex. EE); another had a disclaimer of copyrights belonging to Bonella and Gerffert beneath the table of contents (Defs.’ Ex. 4, at Ex. K); and one attributed no copyrights to Bonella whatsoever (Pls.’ Ex. L).
There is no evidence of Gerffert’s success in generating sales from Bonella-related products, except for Panigel’s inapposite statement that its sales from all product lines “eventually reach[ed] over $5,000,000.00 annually.” (Panigel Decl. ¶ 50.) The evidence, in fact, belies such success. Starting in and around 2000, although Gerffert continued to send out its catalogs for Bonella-related products to customers,
• Panigel acknowledges that there was growing concern among the Bonella family about Gerffert’s “falling sales” of Bonella-related products, beginning in “about January 2000.” (Id. ¶ 52 (emphasis added); see also Comph ¶ 27 (same).)
• In July 2004, the Bonella family stated, in a letter to Panigel, that “the survival of Fratelli Bonella itself is in danger,” citing the fact that “the business is not increasing but strongly decreasing” and that, since 1995, Bonella had “lost 70% of [its] profitability in [the] USA.” (Pis.’ Ex. Q (emphasis added).) According to this letter, with annual sales of $1.2 million in 2003, Gerffert’s line of Bonella-related products failed to generate any profit; and, with annual sales of $876,000 in 2002 and projected annual sales of $900,000 in 2004, respectively, the product line actually lost money. (Id.)
• In an e-mail later that month, the Bonella family stated that “the time of the big monthly orders [of Bonella-related products] is over” and that they, along with Gerffert, needed a“way to substitute the decrease in our traditional products.” (Pis.’ Ex. S (emphasis added).)
• In May 2007, Panigel e-mailed the Bonella family, stating that he had endeavored to “salvage the situation” with respect to “sales of the Bonella line” which needed to be improved. (Compl., at Ex. C, at ECF 52.)
In August 2007, against this backdrop of declining, and increasingly unprofitable, sales in Bonella-related products by Gerffert, a new company, William J. Hirten Company, LLC (“New Hirten”), was created by Andrea, Dean, and Defendant Dolores King (“'King”).
Like Gerffert, New Hirten catered to institutional customers, ie., other religious product companies, and not individual customers. (Id. ¶ 96.) Panigel states, without any evidence to support the statement, that, from the perspective of former Gerffert customers, “placing an order for [a Bonella-related] product from New Hirten was the same as placing an order with Gerffert,” implying that customers invariably confused the two companies. (Panigel Deck ¶ 48.) On the contrary, in November 2007, Panigel confessed that certain Gerffert customers had asked him whether, after “many years of buying from Gerffert,” they should now buy Bonella-related products from the “new company,” ie., New Hirten, and that he specifically assured them “it was O.K.” (Defs.’ Ex. 1, at Ex. I (emphasis added); see also Defs.’ Ex. 4 ¶40 (“During Gerffert’s winding up process, Gerffert employees also directed customers to New Hirten if Gerffert was out of stock of a particular Bonella item.”).) Moreover, in January 2008, New Hirten sent a letter to all potential customers, identifying itself as the “new distributor of the Bonella line” and indicating that “much of the stock available to you now was out of stock by the previous distributor,” ie., Gerffert. (Defs.’ Ex. 4, at Ex. E (emphasis added); see also Defs.’ 56.1 ¶ 92 (same).)
After its January 2008 letter, New Hirten began sending out catalogs for Bonella-related products to potential customers. (Defs.’ 56.1 ¶ 93.) New Hirten’s catalogs not only contained similar, if not the same, products as Gerffert’s catalogs, but also a nearly-identical spread of product descriptions, photographs,
• a cover which bears the Bonella logo and colorful photographs of holy cards featuring Bonella artwork;
• a table of contents listing three series of holy cards with similar bulleted text (e.g., “800 Series — English Text”; “700 Series — Spanish Text”; “Overall Size — 2# x 4 F ’; “All Laminated Cards Are Packed 25 Per Poly Bag”; “All of the above Series are not available as paper prayer cards ”) and a photograph next to each series; and
• product pages with (i) the same descriptions at the top (i.e., “Everlasting Laminated Holy Cards”; “Crystal Clear”; “Hard Lamination”; “2J£’ x 4# ”; “With Prayers In Full Col- or”), (ii) nearly-identical photographs of the fronts and backs of every holy card in each series and their series identifiers and image numbers, arranged in three-by-four rows on a blue background, and (iii) copyright stamps for Bonella.
(Compare Pls.’ Ex. BB, with Pls.’ Ex. EE.)
In November. 2008, having requested and received copies of New Hirten’s catalogs throughout the year, Panigel e-mailed Dean, in his capacity as an owner of New Hirten, to ' complain about the catalogs (Defs.’ 56.1 ¶¶ 99-100):
I received Hirten’s new Wall Décor catalog that you sent me in the mail the other day, and I must say, I.am appalled and disappointed at what I saw in it. You, Andrea and Dolores have copied, wholesale, much of Gerffert’s Wall Décor line. Who gave you permission to use Gerffert’s proprietary item numbers, Gerffert’s proprietary series numbers, [and] Gerffert’s page headers?
The Wall Décor catalog is not the first example of Hirten hijacking Gerffert’s proprietary line. In Hirten’s laminated holy card catalog as well as its microperf catalog, you, Andrea and Dolores have done the same thing.
(Defs.’ Ex. 4, at Ex. J (emphasis added).)
As of 2013, Gerffert was no longer in business. (Panigel Decl. ¶ 105.) Indeed, pursuant to an asset purchase agreement with a third-party company, Gerffert agreed that it would stop using its name for the sale of any products in the United States. (Defs.’ 56.1 ¶ 130.) Panigel states that Andrea, Dean, and King, through their ownership of New Hirten, were the “sole reason Gerffert is out of business,” and that these three individuals are now “operating New Hirten on the back of Gerffert.” (Panigel Decl. ¶ 106.)
B. Procedural History
In January 2009, Plaintiffs filed the Complaint. The Complaint asserts “Diversity of Citizenship Claims” (Counts 1-
The Complaint also asserts “Claims Arising Under 15 U.S.C. § 1121 et seq [ie., the federal Lanham Act] and Pendent State Claims” (Counts 10-16). (Compl., at 26.) Plaintiffs characterize their federal Lanham Act claim (Count 10) as a “trade dress” claim pursuant to 15 U.S.C. § 1125(a), based on the allegation that New Hirten “divert[ed]” Gerffert customers by sending them catalogs that used the “proprietary stock numbers, item numbers, photography, header language or page layouts” that Gerffert’s catalogs used for the “same” Bonella-related products. (Id. ¶¶ 121-24, 140-43; Dkt. No. 336 (“Pis.’ Br.”), at 8-11.) Plaintiffs’ related state-law claims (Counts 11-16) involve allegations about the companies’ catalogs, along with other allegations about New Hirten’s improper use of Gerffert’s customer lists and purportedly untrue statements by New Hirten to potential customers. (Complin 144-84.)
After more than four years of discovery, Defendants filed this summary judgment motion, which was fully briefed on October 29, 2013. (Dkt. No. 331.) In opposing this motion, Plaintiffs also cross-moved pursuant to Federal Rule of Civil Procedure (“FRCP”) 56(d) for a deferral of summary judgment to permit further discovery. (Pis.’ Br., at 3-8.) Plaintiffs, however, do not argue for discovery with respect to their federal trade dress claim, but only with respect to certain of their related state-law claims. (See id. at 8 (opposing summary judgment, “[notwithstanding the paucity of documentary discovery conducted thus far,” on Counts 10-12 and Count 15), 13 (“Additional discovery is needed to establish the motives for the defendants’ conduct [with respect to Count 13].”).)
II. Discussion-
A. Legal Standard
To obtain summary judgment in their favor on a “claim or defense” in this case, Defendants, as the moving parties, must establish that “there-is no genuine dispute as to any material fact,” and, thus, that they are “entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). Defendants’ ability to satisfy this standard as to any “essential element” of a claim, for which Plaintiffs would “bear the burden of proof at trial,” “necessarily renders all other facts immaterial.” Celotex Corp. v. Catrett,
The summary judgment standard places on Defendants the initial burden to show that the evidence does not give rise to a “genuine” dispute over the facts legally relevant to Plaintiffs’ claim,
Once Defendants have met their burden under this standard, Plaintiffs must “do[ ] more than simply rely on the contrary allegation^] in [their] complaint,” and “go beyond the pleadings” to “designate specific facts showing that there is a genuine issue for trial.” Adickes,
B. Federal Trade Dress Claim
Defendants conclude that they are entitled to summary judgment on Plaintiffs’ federal Lanham Act claim of trade dress infringement based on the catalogs for Bonella-related products. (Dkt. No. 330 (“Defs.’ Br.”), at 41-44; Dkt. No. 337 (“Defs.’ Reply”), at 23-24.) Upon review of the available evidence and applicable law, the Court reaches the same conclusion, though, unlike Defendants who focus their analysis on the liability element of this claim (“likelihood of confusion”), the Court’s analysis focuses on the protectability elements (“non-functionality” and “distinctiveness”). Because Gerffert’s catalogs for Bonella-related products are not “inherently distinctive” and did not become distinctive by acquiring “secondary meaning,” they are not protectable trade dress.
The Federal Lanham Act not only protects the trademarks for products, but also their trade dress. 15 U.S.C. § 1125(a) (providing a “civil action for trade dress infringement under this chapter”);
To prevail on the federal trade dress claim, Plaintiffs must prove that their trade dress is (i) non-functional;
1. Non-Functionality
Trade dress is non-functional if it is neither traditionally, nor esthetically, func
In terms of traditional functionality, it is in no way clear, and indeed Defendants fail to argue, that Gerffert’s catalogs shaped the “use or purpose” or “cost or quality” of Bonella-related products. Id.; see Scan-Plast Indus., Inc. v. Scanimport Am. Inc.,
Whether a jury could find that Gerffert’s catalogs are not “esthetically” functional is a closer call. On the one hand, Gerffert’s catalogs primarily contained design elements that are competitively necessary, at least in the abstract, e.g., Bonella-related product descriptions, numbering, and photographs. The inability of rival companies to describe, designate, or display images of their products would impose on them a “significant non-reputation-related disadvantage.” TrafFix Devices,
Accordingly, there is an issue for trial with respect to the non-functionality element, because, on balance, a reasonable jury could find that Gerffert’s catalogs are not traditionally or esthetically functional.
2. Distinctiveness
The distinctiveness of trade dress is assessed based on the same four classifications that Judge Henry Friendly on the Second Circuit articulated for trademark claims in Abercrombie & Fitch Company v. Hunting World, Incorporated (“Abercrombie ”),
i.. Inherently or Non-Inherently Distinctive
The first issue is whether Gerffert’s catalogs fall into one of the inherently distinctive classifications (arbitrary/fanciful or suggestive) or non-inherently distinctive classifications (descriptive or generic). The arbitrary/fanciful classification extends to
Although the Second Circuit in Mana Products, Inc. v. Columbia Cosmetics Mfg., Inc.,
The Court reaches the same conclusion in this case. Gerffert’s particular use of catalogs is not an “unfamiliar” method, or something newly “invented,” solely for marketing its Bonella-related products. Abercrombie,
At the same time, Gerffert’s catalogs are not so “commonplace ” that their appearance simply “refers ... to the genus” of Bonella-related products. Mana Prods.,
On balance, the four corners of Gerffert’s catalogs, as they should, “forthwith convey[] an immediate idea” about the Bonella-related products for sale and are, thus, descriptive in nature. Abercrombie,
Judge Posner’s opinion in Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc.,
Accordingly, there is no issue for trial with respect to the non-inherently distinctive classification of Gerffert’s catalogs. These catalogs are descriptive at best and, thus, require the acquisition of secondary meaning to be deemed protectable,
ii. Secondary Meaning
The second issue is whether Gerffert’s catalogs, as descriptive trade dress, somehow acquired secondary meaning. Secondary meaning requires that, “in the minds of the public,” the “primary significance of a product feature,” such as its trade dress, is “to identify the source of the product rather than the product itself.” Inwood Labs., Inc. v. Ives Labs., Inc.,
Plaintiffs, in this case, have ndither alleged, nor cited any evidence of, “consumer studies” equating Gerffert with its catalogs for Bonella-related products, “unsolicited media coverage” of these products, or other “attempts to plagiarize” these catalogs, apart from Defendants’ attempts with New Hirten’s catalogs. Id. Meanwhile, the “sales success” factor, at a minimum, does not support the presence of secondary meaning, and, if anything, is indicative of the absence of such meaning. Id. The sales that Gerffert generated from Bonella-related products declined, and became unprofitable, despite the company’s publication of catalogs for these products. See supra Section I.A.
In terms of “advertising expenditures,” Plaintiffs’ mere allegation in the Complaint that Gerffert spent “millions of dollars”' on advertising may not properly defeat summary judgment. Mana Prods.,
The only factor which remotely supports the finding that Gerffert’s catalogs acquired secondary meaning is the “length and exclusivity” with respect to its use of these catalogs. Mana Prods.,
However, certain inconsistencies in Gerffert’s catalogs throughout that period undermine the existence of secondary meaning based on the “length and exclusivity” of their use. See Regal Jewelry,
In short, Plaintiffs may only point, tenuously at best, to one of the six factors in arguing that Gerffert’s catalogs acquired secondary meaning. While every factor “need not be proved,” Thompson Med. Co., Inc. v. Pfizer Inc.,
Proof of secondary meaning requires at least some evidence that consumers associate the trade dress with the source. Although evidence of the pervasiveness of the trade dress may support the conclusion that a mark has acquired secondary meaning, it cannot, stand alone. To find otherwise would provide trade dress protection for any successful product, or for the packaging of any successful product.
Yankee Candle Co., Inc. v. Bridgewater Candle Co., LLC,
In Mana Products, the Second Circuit held that the plaintiff had not proven secondary meaning, because it only provided evidence of its multi-million dollar “advertising budget” and “failed to submit any consumer surveys, information as to the relative market share of its [products], unsolicited media coverage, or the amount of time that [the trade dress] made exclusive use of the challenged design.”
Plaintiffs rely on Ivy Mar in arguing that a jury could find that Gerffert’s catalogs had secondary meaning. (See Pis.’ Br., at 10.) Such reliance is misplaced. In that case, the district court found a triable issue of secondary meaning, in light of the plaintiffs’ direct “evidence indicating that their customers relied upon the stock numbers and the layout of the merchandise in the catalogs as a means of identifying [the plaintiffs] as the source of the merchandise.” Ivy Mar,
Here, the only evidence that Plaintiffs have presented with respect to any relevant factor, ie., the “length and exclusivity” of Gerffert’s catalog usage, is insufficient to establish secondary meaning as a matter of law. Accordingly, there is no issue for trial with respect to whether Gerffert’s catalogs, as descriptive trade dress, failed to acquire such meaning. .
Because no reasonable jury could find that these catalogs were inherently distinctive or distinctive through their acquisition of secondary meaning, Plaintiffs’ federal trade dress claim is dismissed with prejudice.
Having dismissed this claim on the basis of non-distinctiveness, the Court declines to consider the likelihood of confusion element.
C. Related State-Law Claims
The Court “may decline to exercise supplemental jurisdiction” over Plaintiffs’ related state-law claims, if, among other things, it has already “dismissed all claims over which it has original jurisdiction,” ie., their federal Lanham Act claim of trade dress infringement. 28 U.S.C. § 1367(c)(3). In the “usual case in which all federal-law claims are eliminated before trial,” the so-called Gibbs factors of “judicial economy, convenience, fairness, and comity,” which the Court should also consider before declining to exercise supplemental jurisdiction .under 28 U.S.C. § 1367(c), will “point toward declining to exercise jurisdiction over the remaining state-law claims.” Carnegie-Mellon Univ. v. Cohill (“Cohill ”),
In Blau Plumbing, upon affirming the dismissal of the plaintiffs advertisement-based trade dress claim on summary judgment, Judge Posner concluded that the district court was “wrong to go on and decide the merits of [the plaintiffs] state law claim for false advertising.”
First, judicial resources are better conserved by dismissing the related state-law claims. These claims, which involve more than the allegations concerning Gerffert’s and New Hirten’s catalogs, would require “resolving additional issues of fact.” N.Y. Mercantile Exch., Inc. v. IntercontinentalExchange, Inc.,
Second, a dismissal without prejudice of the related state-law claims is still convenient for, and fair to, the parties. Because the Court previously dismissed other state-law claims for lack of subject matter jurisdiction, the parties may now pursue all of these claims in a single case before the state court, without duplicating their discovery efforts. See Tishman v. Associated Press, No. 05-CV-4278,
Finally, the interest in comity with state courts is served as well. Resolving the related state-law claims, which involve factual issues separate from the federal trade dress claim, would result in a “[n]eedless deeision[] of state law.” Gibbs,
This case, therefore, is the “usual” one in which the Gibbs factors “point toward” the Court’s dismissal of the related state-law claims without prejudice, upon its dismissal of the federal trade dress claim with prejudice. Cohill,
III. Conclusion
For the reasons set forth above, the Court (i) dismisses Plaintiffs’ federal Lanham Act claim of trade dress infringement with prejudice and (ii) dismisses their related state-law claims without prejudice to be re-filed in state court. The Clerk of the Court is directed to enter judgment accordingly, and close this case.
SO ORDERED.
Notes
. (Dkt. Nos. 332-1-334 & 337-1-337-8 ("Defs.’ Exs.”), Ex. 4, at Ex. K ("Inspirational Wall Decor” catalog); Dkt. Nos. 335-3-335-67 ("Pis.’ Exs.”), Ex. L ("Frame/Magnet & Key Chain” catalog); Pis.’ Ex. O ("Micro-Perforated Prayer Cards” catalog); Pis.’ Ex. EE ("Everlasting Laminated Holy Cards” catalog).)
. Fratelli Bonella was originally formed as a partnership, but later became the Italian equivalent of a limited liability company, or an "s.r.l.,” which stands for "societá a responsabilitá limitata.” For purposes of this decision, Fratelli Bonella's corporate form is irrelevant.
. (Pis.’ Ex. BB (“Everlasting Laminated Holy Cards” catalog); Pis.’ Ex. CC ("Micro Perforated Prayer Cards” and other "Holy Cards” catalog); Pis.' Ex. DD ("Catholic Art Creations” catalog); Pis.’ Ex. FF ("Full Line” catalog).)
. Because the Court has already dismissed certain of Plaintiffs' claims (Counts 1-9) for lack of subject matter jurisdiction (Dkt. No. 350), it only addresses their remaining claims (Counts 10-16) and the facts relevant for deciding these claims.
. Citations to "ECF” reference the pagination of the Court’s Electronic Court Filing system, and not the particular document's internal pagination.
. The Court construes any disputed facts in the light most favorable to Plaintiffs, as the non-moving parties, for purposes of Defendants’ summary judgment motion. See Adickes v. S.H. Kress & Co.,
. Gerffert sold its products through independent sales representatives, who also worked for a number of other companies. (Defs.' 56.1 ¶ 65.)
. The dispute over whether this exclusive distribution arrangement was legally-enforceable, and/or in writing (Defs.' 56.1 ¶¶ 3, 112), is the subject of the claims that the Court has already dismissed. (Dkt. No. 350.)
. Andrea, however, claims that Bonella, not Gerffert, created this numbering system. To support his claim, Andrea points out that Boñella uses the same series identifiers and image numbers as Gerffert for the sale of Bonella-related products in "other countries, including Japan, South Africa, New Zealand, Argentina and Australia.” (Defs.’ Ex. 1 ¶¶ 6, 8, 14, 17.) But, as Panigel argues, there is no evidence to establish that the products associated with particular series identifiers and image numbers outside of the United States are the same as the products associated with those identifiers and numbers in the United States. (Panigel Deck ¶¶ 36-37, 49.)
Andrea also points out that Bonella had U.S. copyrights on the series identifiers and .image numbers, and a catalog containing those identifiers and numbers, for some of the Bonella-related products that Gerffert sold. (Defs.’ Ex. 1 ¶¶ 11-12.) At best, Andrea suggests that Bonella created the image numbers, not the series identifiers, for certain products. For instance, Bonella had a registered copyright for the image called the "Immaculate heart of Mary. No. 101-12,” which Gerffert sold in the form of a micro-perforated prayer card as "M-101-12.” (Defs.' Ex. 1, at Ex. C, at ECF 42; Pis.’ Ex. O, at 18.) Bonella also had a registered copyright for a catalog that contained the "Alba 01” image of Jesus, which Gerffert sold as , "M-ALBA-01.” (Defs.’ Ex. 1, at Ex. D, at ECF 81; Pis.’ Ex. O, at 21.)
Because the factual issue regarding the creation of this numbering system ultimately remains in dispute, the Court will construe it in the light most favorable to Plaintiffs, and assume that Gerffert devised the system. See Adickes,
.With respect to Bonella-related products, Panigel merely states that Gerffert bought "1,000 floor stands and a similar amount of counter-top displays” to market its laminated holy cards featuring Bonella artwork. (Panigel Deck ¶ 38.) Panigel also stated, in a November 2008 e-mail to Dean, that Gerffert spent a “great deal of money” inputting the series identifiers and image numbers for Bonella-related products into its customers’ "computer systems.” (Defs.' Ex. 4, at Ex. J.) None of these statements give any indication of Gerffert’s expenditures on the subject trade dress in this case, namely, its catalogs.
. Gerffert's "Inspirational Wall Decor” catalog seems to be the only one of its catalogs, provided to the Court, which Gerffert published before 2000. (See Defs.' Ex. 4, at Ex. K (1996); see also Pis.' Ex. G (1986).) The other catalogs seem to have post-dated the sales decline, in and around 2000. (See Pls.' Ex. L (2006); Pls.’ Ex. G (2006); Pls.' Ex. EE (2000).)
.King previously owned William J. Hirten Company, Inc., a New York distributor of other Catholic-themed religious products, including communion items and prayer books. (Defs.’ 56.1 ¶ 8; Panigel Deck ¶ 54; see also Compl. ¶ 31 (same).) The dispute over whether Andrea and Dean improperly terminated any other negotiations with Gerffert, and created New Hirten with King instead (Defs.’ 56.1 ¶¶ 30-31, 33, 108-109), is also the subject of the claims that the Court has already dismissed. (Dkt. No. 350.)
. Defendants, however, suggest that, in the "late summer of 2007,” Gerffert chose to "stop[] submitting purchase orders [for Bonella artwork]” and "instructed Bonella to hold off on shipping previously placed orders.” (Defs.’ 56.1 ¶ 41.)
. Some photographs came from Starr Digital Photo, Inc. (“Starr”), which helped to
. Indeed, Defendants do not dispute that New Hirten’s catalogs contained the "same or similar” Bonella-related products identified by the “same series and item numbers.” (Defs.’ 56.1 ¶¶ 97-98.)
. "Material” facts are legally-relevant ones, i.e., facts that “might affect the outcome of the suit under the governing law.” Anderson v. Liberty Lobby, Inc.,
. Disputes over facts that are "merely color-able” or "not significantly probative,” or amount to a "scintilla ... in support of [Plaintiffs’] position,” are not "genuine.” Anderson,
. The broad language of 15 U.S.C. § 1125(a) prohibits infringing uses of "any word, term, name, symbol, or device, or any combination thereof' that are "likely to cause confusion ... as to the origin, sponsorship, or approval of [one's] goods, services, or commercial activities by another person.” 15 U.S.C. § 1125(a)(1).
. See also SGC Commc’n Res., LLC v. Seminar Ctr., Inc., No. 98-CV-2724,
. The non-functionality element is further explained infra at Section II.B.l.
. Although courts have inconsistently set forth the ordering for the three elements of federal trade dress claims, the Court here adopts the above ordering for purposes of resolving Plaintiffs’ claim on summary judgment, even though only the second element and not the first element is dispositive. Accord TrafFix Devices,
. The protectability elements are designed to ensure that protection under federal law only extends to trade dress that "serves to identify the produces] with [their] manufacturer or source.” TrafFix Devices,
. The non-functionality element overlaps with the distinctiveness element: trade dress which combines elements that make it functional, as a whole, "should be regarded as unprotectable or ‘generic.’ ” Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc.,
. See also Am. Eagle Outfitters,
. Cf. Chelo Publ’g Inc. v. Focus Publ’g Ltd., No. 94-CV-123,
. See also Tools USA,
. See also Tools USA,
.See also Fun-Damental Too,
. In their opposition (Pls.' Br., at 9), Plaintiffs quote Ivy Mar Co., Inc. v. C.R. Seasons Ltd., No. 95-CV-508,
. In Publications International, Judge Posner added that "distinctiveness is not really an issue of fact,” but is "classified with issues of fact for purposes of drawing the line between the jury's authority and that of the judge and the reviewing court.”
. See also Tools USA,
. See also Waddington N. Am. Bus. Trust v. EMI Plastics, Inc., No. 02-CV-3781,
. See also Rosco,
. Similarly, the district court in SGC Communication Resources only decided against a grant of summary judgment on the secondary meaning issue, because the plaintiff put forth some evidence of all of the relevant factors except for "consumer surveys.”
. Even if the Court were to consider the likelihood of confusion element, it would probably conclude that several of Judge Friendly's well-accepted Polaroid factors, designed to assess this element, disfavor Plaintiffs: (i) Gerffert’s catalogs have minimal "strength” as descriptive trade dress; (ii) Bonella-related products sold by Gerffert and New Hirten lacked temporal "proximity,” because these products were never on the market at the same time; (iii) potential customers in the market for Bonella-related products were “sophisticated]” institutions, not individuals; and (iv) there was no "actual confusion” between both sources of Bonella-related products, because potential customers were notified that New Hirten was a new company,not to be confused with Gerffert. Polaroid Corp. v. Polarad Elecs. Corp.,
. Because the Court dismisses without prejudice the related state-law claims, it need not address Plaintiffs’ FRCP 56(d) cross-motion with respect to such claims (Pls.' Br., at 3-8).
. In this case, the Court may also, but need not, dismiss such claims on the basis that they "substantially predominate[]” over the federal trade dress claim. 28 U.S.C. § 1367(c)(2).
.The Court also declines to address Defendants’ collateral estoppel and res judicata defenses (Defs.' Br., at 6-15), which are moot in light of its decision.