District Court Dismisses Trade-Dress Complaint On Multiple Grounds
On February 22, 2018, the United States District Court for the Eastern District of New York dismissed a trade-dress complaint with prejudice on the grounds that the complaint failed to identify the features of the claimed trade dress, failed to plead that any features are non-functional, and failed to plead a likelihood of confusion. Eliya Inc. v. Steve Madden, Ltd., No. 2:15-CV-1272 (E.D.N.Y. Feb. 22, 2018). In its already-amended complaint, plaintiff Eliya asserted product-configuration-type trade-dress rights under the Lanham Act in features of three of its shoe models, and claimed that defendant Steve Madden had infringed on those rights. Steve Madden moved to dismiss the complaint for failure to state a claim; a magistrate judge entered a report and recommendation to grant the motion; and the district judge adopted the recommendation, dismissing the complaint with prejudice. The opinion illustrates the importance of making a detailed, fully articulated pleading when asserting product-configuration trade-dress rights.
In its complaint, Eliya identified two features of all its shoe models at issue: “multi-color or multi-shaded wide straps that form a woven distinctive alternating pattern on the upper part of the shoe,” and “an appendage on the heel that extends higher than the weave portion and includes cutouts through which the weave can be seen.” Eliya also identified other features, e.g., a Mary Jane strap on two of the shoes, “horizontal grooves” on the sole of one shoe, and “vertical grooves” on the sole of another. Eliya argued that the combinations of these features resulted in “an innovative and unique look” and protectable trade dress.
The district court disagreed. First, the court found that despite its recitation of various shoe features, Eliya’s complaint was insufficiently precise about the elements claimed to amount to trade dress. The court held, for example, that the description of the woven alternating pattern “fails to explain the scope or character of the pattern or specify what colors or shades are covered.” The court found that vertical and horizontal grooves are generic categories, and that the complaint lacked “precise descriptions.” Ultimately, the court held that while the complaint identified various features of Eliya’s shoes, the complaint lacked any description of how those features are distinctive, and so the court would be “unable to evaluate how unique and unexpected the design elements are in the relevant market.”
The district court also found the complaint insufficient because “no specific facts are plead that plausibly support the non-functionality of the claimed trade dress.” That is, the grooves on the sole, for example, provide traction and thus have a utilitarian function, and the multi-colored straps are ornamental and thus have an aesthetic function. Critically, the court explained that the burden of proving non-functionality is on the party claiming trade dress protection, and a trade-dress complaint therefore must explain how the features of the claimed trade dress serve to identify the products’ source, rather than performing a utilitarian or aesthetic function.
Last, without elaboration the court ruled that the complaint failed to plead properly a likelihood of confusion between the plaintiff’s and the defendants’ shoes. The complaint contained photographs (which the court found not to support a likelihood of confusion), but no “written description of the Madden shoes.”
The decision is a helpful reminder of the level of detail required in a trade-dress complaint. The law values competition in the market, and for trade-dress rights to overcome the right to compete, they must be shown—even in the initial pleading—to be both specific and non-functional. Practitioners and their clients thus must focus on providing a fully detailed description of the claimed trade dress and how it serves to identify the source of the goods, rather than any utilitarian or even aesthetic function. It may be that seeking a design patent, rather than relying on trade dress, is the best route to protecting a product’s unique ornamental features.