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From Intellectual Property Law Daily, October 2, 2017

Manufacturer of cane-shaped massager sufficiently pleaded trade dress infringement in amended complaint

By Mark Engstrom, J.D.

A manufacturer of massage and fitness products sufficiently alleged the distinctiveness, secondary meaning, and non-functionality of its trade dress in an "S-shaped" cane massager in its first amended complaint, the federal district court in Bridgeport, Connecticut, has ruled. The amended complaint rectified deficiencies in the original pleadings with respect to trade dress, the court concluded, so the federal claims for trade dress infringement and unfair competition could proceed (AJB Enterprises, LLC v. BackJoy Orthotics, LLC, September 29, 2017, Bolden, V.).

AJB Enterprises, d/b/a Body Back Company, sued BackJoy Orthotics for trade dress infringement and unfair competition under federal law, and for violations of state law, including unfair competition, breach of contract, and unjust enrichment. According to AJB, BackJoy had copied the distinct design features of its "S-shaped trigger point massager" (the "Body Back" massager) and had sold the copied device as its own.

In a prior decision, the court dismissed AJB’s federal claims and declined to exercise supplemental jurisdiction over its state law claims. The court identified three problems with the original pleadings, with respect to the Lanham Act claim for infringement: (1) the distinctiveness of AJB’s claimed trade dress was insufficiently described; (2) AJB failed to specifically plead that its trade dress was non-functional; and (3) AJB failed to allege the secondary meaning of its trade dress because its factual allegations did not connect the claimed dress to its Body Back massager, and not simply to the existing "genre" of cane massagers.

Description of trade dress. The court noted that the "key deficiency" of the original pleadings was AJB’s failure to include allegations about the distinctiveness of its claimed trade dress. In the court’s view, however, the amended complaint included "detailed allegations regarding the variety of configurations of cane massagers" that were available on the market, and also included photographs of cane massagers, in various shapes, that were distinct from the "S-shape" that constituted most of AJB’s trade dress. The additional factual allegations sufficiently addressed the distinctiveness of AJB’s trade dress at the pleading stage of the proceedings, the court concluded, so dismissal was no longer warranted on that basis.

Non-functionality of trade dress. According to BackJoy, images that were proffered in the amended complaint showed that the shape and placement of the "massage nubs" of the Body Back massager made the asserted trade dress functional. Those design elements were sufficiently similar to other available cane massagers, BackJoy argued, to show that they were "dictated by function …."

The court disagreed. The amended complaint unequivocally stated that the claimed trade dress was "not essential to the use or purpose of a cane massage tool, as illustrated by the numerous products in various configurations which perform the identical self-massage functions as the Body Back Buddy." In the court’s view, the amended complaint sufficiently alleged non-functionality for the purpose of a motion to dismiss.

Secondary meaning. To plead secondary meaning at the motion to dismiss stage, AJB had to "plausibly allege that the Body Back massager’s S-shaped configuration and the placement of its massage nubs have acquired a secondary meaning." The court concluded that the amended complaint contained sufficient allegations of secondary meaning to survive dismissal at the pleading stage. Dismissal on the ground of secondary meaning was therefore unwarranted.

Lanham Act unfair competition. In order to state a claim for unfair competition under the Lanham Act, AJB had to show that: (1) it had a valid trademark that was entitled to protection under the Act and (2) the defendant’s actions were likely to cause confusion. Because the court had already found that the amended pleadings asserted a plausible claim for trade dress infringement, the first element of the unfair competition claim was satisfied. In addition, the court had recognized—in its prior ruling—that AJB’s allegations "sufficiently established confusion" for the purpose of the second element. For those reasons, dismissal was not warranted. AJB’s federal claim for unfair competition could thus proceed.

State law claims. In its original ruling, the court required AJB to specify the state whose substantive law was applicable to the asserted common law claims. AJB failed to follow those instructions, and instead mentioned the potential applicability of the laws of three different states. By claiming relief under three distinct standards from the common laws of three alternative states, AJB did not provide BackJoy with fair notice of the common law claims, the court explained, and thus violated the pleading requirements of Rule 8 of the Federal Rules of Civil Procedure. Dismissal of the common law claims was therefore granted, but without prejudice to re-filing a second amended complaint that identified the governing law.

The case is No. 3:16-cv-00758 (VAB).

Attorneys: Anthony H. Handal (Handal & Morofsky) for AJB Enterprises, LLC. Jonathan P. Goddard (Perkins Coie LLP) for Backjoy Orthotics, LLC.

Companies: AJB Enterprises, LLC; Backjoy Orthotics, LLC

MainStory: TopStory Trademark ConnecticutNews

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