IP News

Federal Circuit: Trade Dress Imitation In the Ninth Circuit

In P & P Imports LLC v. Johnson Enterprises, LLC, 46 F.4th 953 (9th Cir. 2022), the United States Court of Appeals for the Ninth Circuit reversed and remanded a judgement from the United States District Court for the Central District of California, and held that a genuine issue of material fact exists as to whether P & P Imports, LLC's trade dress acquired secondary meaning.

Background

P & P Imports, LLC (P & P) sued a competitor Johnson Enterprises, LLC (Johnson) for trade dress infringement under the Lanham Act. P &P sells outdoor games and sporting goods, which include an outdoor variation of the game Connect 4 with a red, white, and blue color scheme. In 2017, Johnson bought a copy of the P & P Game and sent samples to its manufacturer in China. In October, 2017, Johnson began to sell an identical version of the P & P game with identical color, style, and size game pieces. As a result, P & P sued Johnson for trade dress infringement. Johnson moved for summary judgment arguing that P & P's trade dress did not acquire secondary meaning. The district court granted Johnson's motion for summary judgment and held that the plaintiff did not meet its burden. In particular, the district court held that under Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958 (9th Cir. 2011), P & P was required to prove that consumers associate the trade dress with P & P, rather than with any single company. The court found that P &P's expert's testimony and evidence were insufficient to prove customers associate the trade dress with P & P. P & P appealed and challenged the district court's holding that P & P's trade dress did not acquire secondary meaning.

Trade Dress and Secondary Meaning

To bring a trade dress infringement action, a plaintiff must prove that: i) the trade dress is nonfunctional; ii) that their trade dress has acquired secondary meaning; and iii) that there is a substantial likelihood of confusion between the plaintiff's and the defendant's products. Trade dress helps to identify the source of a product rather than the product itself. This case focused on the second prong. Under the second prong, the question before the court was whether a consumer must both recognize the trade dress and associate the trade dress with P & P.