Two Second Circuit Decisions Emphasize Importance of Clear Articulation of Trade Dress Elements

Two recent Second Circuit decisions, International Leisure Products v. Funboy LLC (2018) and Eliya Inc. v. Steve Madden (2018) both upheld dismissal of complaints involving trade dress claims, because the complaints failed to include a clear and enforceable definition of the claimed rights. Even though they included pictures, and one of them even contained an extensive, seven paragraph list of elements, neither were sufficient to state a claim.

Trade dress can be a very powerful (and long-lasting) form of IP protection, but it also has many court-imposed requirements, because courts are wary of allowing what could be an anti-competitive weapon.

One such requirement is that the putative trade dress owner clearly articulate the elements of what makes its claimed “dress” distinctive from other competitive goods. This clear articulation allows courts to judge whether the claimed trade dress is functional, whether an accused item is infringing and to formulate an injunction against an infringing defendant.

In any IP program, foundational work – securing the IP right – is crucial. The takeaway is that a central part of foundational work is creation of a clear and distinctive list of elements that will pass court muster. The qualification of the list has to satisfy several legal requirements (distinctiveness, non-functionality, clear warning to competitors).

Eliya Inc. claimed that it had trade dress rights in three shoe designs asserted to infringe by manufacturer Steve Madden. As described by Eliya in its complaint, these three shoe designs feature “[a]pproximately 1/4-inch multi-color or multi-shaded wide straps that form a woven distinctive alternating pattern on the upper portion 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.” Two of the design both have a “mary jane strap.” Another design has an “open toe with an angular cut out shape,” and the other two shoes have “closed toes with an angular shape on the top front portion of the shoe.” The sole of one has “horizontal grooves” and “weaved notches extending up from the bottom.” Another design has a flat sole, and a third has “[a]n angular-like shape on the top portion” and “[v]ertical grooves” on the sole. Eliya alleged that, by combining these features, these shoes have an “innovative and unique look,” and their “trade dress is well known to the consuming public and the trade” as identifying “Eliya as the exclusive and unique source of shoes that use such trade dress.”

Not sufficient, held the Second Circuit. This description was held to be merely “a laundry list of the elements that constitute a shoe’s features,” with no explanation as to how they are distinctive. Although the complaint also contained photos, “the photos of the shoes do not make up for the deficiency in the precise expression of the distinctive features of the trade dress.”

International Leisure Products (ILP) claimed a trade dress in the design of an inflatable, swan-shaped pool toy. The complaint contained a detailed list of seven elements. These were held insufficient:

[S]everal of ILP’s asserted trade dress elements contain subjective descriptors like a “pleasing appearance” or an “aesthetic proportion.” We have refused protection where, as here, a claimed trade dress lacked sufficiently objective identifiers. . . . In addition, some of the alleged trade dress elements contain “optional” or alternative features. The lack of objective metrics, combined with the multiplicity of possible combinations of optional features, makes it difficult to discern in ILP’s description a single distinctive look.

Critical to the decision is that recognition of the trade dress promotes trademark law’s goal of promoting source identification to protect both consumers and manufacturers. ILP’s vague and overbroad definition “appears to be seeking protection for a trade dress that would encompass any bird-shaped pool float with even a passing resemblance to ILP’s GIANT SWAN.”

These two decisions emphasize the importance of formulating a clear and legal valid list of trade dress elements before embarking on any trade dress enforcement. There is no precise formula as to how to do this, but one should ask themselves several questions:

(1) Does the list make clear what makes the goods “distinctive” – a trademark term of art that signifies that the goods are identifiable as those from a particular source.

(2) Does the list give competitors selling the same type of goods fair notice as to what they can and cannot do?

(3) Does the list make it possible to assess whether the claimed trade dress is “functional?”

(4) Does the list allow a judge or jury to determine whether an accused item infringes or not?

(5) Is the list one that would allow a court to incorporate it into an injunction?