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Advanstar Communications Inc. v. Dirt Motosports

September 25, 2006

ADVANSTAR COMMUNICATIONS INC., A NEW YORK CORPORATION, PLAINTIFF,
v.
DIRT MOTOSPORTS, INC., A DELAWARE CORPORATION F/K/A BOUNDLESS MOTOR SPORTS RACING, INC., DEFENDANT.



The opinion of the court was delivered by: Hon. Norman A. Mordue, Chief U.S. District Judge

MEMORANDUM-DECISION AND ORDER

INTRODUCTION

In this Lanham Act case, 15 U.S.C. § 1051 et seq., plaintiff seeks judgment declaring that defendant has no valid and/or enforceable rights in the mark Dirt Motorsports, or, in the alternative, that plaintiff's use of the marks Dirtsports, Dirtsports the Voice of Off-Road Motorsports, and Dirtsports Expo Live does not infringe any valid and enforceable trademark rights owned by defendant. In its answer (Dkt. No. 12), defendant interposes counterclaims seeking injunctive relief and a declaration that plaintiff has no valid and/or enforceable rights to use the marks Dirtsports, Dirtsports the Voice of Off-Road Motorsports, and Dirtsports Expo Live.

Plaintiff moves (Dkt. No. 17) for an order dismissing defendant's trade dress infringement counterclaim (third counterclaim) on the ground that it fails to state a cognizable claim, Fed. R. Civ. P. 12(b)(6); or, in the alternative, an order compelling defendant to articulate a more definite statement of its third counterclaim, Fed. R. Civ. P. 12(e); and an order compelling defendant to plead its fourth counterclaim for false advertising with particularity. Fed. R. Civ. P. 9(b).

DISCUSSION

Third Counterclaim

Defendant's third counterclaim is for trade dress infringement under Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A).*fn1 Section 1125(a)(1)(A) provides a cause of action to anyone injured or likely to be injured by another's use of "any word, term, name, symbol, or device, or any combination thereof ... which ... is likely to cause confusion ... as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities[.]" This protection extends both to trademarks and trade dress. See generally Forschner Group, Inc. v. Arrow Trading Co., Inc., 124 F.3d 402, 407 (2d Cir. 1997). A trademark is a symbol made up of one or more elements such as name, font, color, and graphic, see, e.g., Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 115-16 (2d Cir. 2006), whereas trade dress is the "design or packaging of a product." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28 (2001). As explained by the Second Circuit:

At one time, "trade dress" referred only to the manner in which a product was "dressed up" to go to market with a label, package, display card, and similar packaging elements. However, "trade dress" has taken on a more expansive meaning and includes the design and appearance of the product as well as that of the container and all elements making up the total visual image by which the product is presented to customers. Thus, trade dress is "essentially [a product's] total image and overall appearance" ... "as defined by its overall composition and design, including size, shape, color, texture, and graphics."

Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 31 (2d Cir. 1995) (citations omitted); accord, Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209-10 (2000).

In his treatise on trademarks and unfair competition, Professor J. Thomas McCarthy compares trademark and trade dress protection as follows:

The emphasis and thrust of a claim of trademark infringement is in deciding whether a discrete symbol, such as a word, number or picture in fact functions as a mark and whether defendant's mark is likely to cause confusion. On the other hand, trade dress protection is generally focused more broadly. To determine trade dress infringement, if the plaintiff has defined the trade dress as the total image or overall impression of plaintiff's product, package and advertising, then it is this composite that is compared with the corresponding image or impression of defendant's product. If defendant's trade dress is likely to cause confusion with plaintiff's trade dress, then a finding of unfair competition is warranted. The ultimate protection desired-prevention of a likelihood of confusion of buyers-is just as important when a junior user presents a package which in toto is confusingly similar to plaintiff's, as when a mere part of the package (such as a word mark) is simulated.

1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 8.1 (4th ed. 2006) (footnotes omitted).

The third counterclaim alleges as follows:

79. DIRT has valid and enforceable trade dress rights in, among others, the distinctive design and color scheme it has used when displaying its DIRTVISION trademark and such ...


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