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Bubble Genius LLC v. Smith

United States District Court, E.D. New York

March 6, 2017

MARIANN SMITH, an individual d/b/a “JUST BUBBLY, ” Defendant.



         Plaintiff Bubble Genius LLC (“plaintiff” or “Bubble Genius”) brings this action alleging trade dress infringement and unfair competition pursuant to the Lanham Trademark Act (“Lanham Act”) § 43, 15 U.S.C § 1125(a) and § 32, 15 U.S.C § 1114(1), New York General Business Law § 360-I and New York State common law, against defendant Mariann Smith d/b/a Just Bubbly (“defendant” or “Ms. Smith”). Presently before the court is defendant's Motion to Dismiss the Amended Complaint (the “Motion”) for failure to state a claim, pursuant to Fed.R.Civ.P. 12(b)(6). (ECF No. 19.) For the reasons stated herein, the Motion is granted.


         For purposes of this Motion, the court accepts as true the following allegations in plaintiff's Amended Complaint. Bubble Genius and Ms. Smith are both in the business of producing novelty soaps. Plaintiff claims it possess an unregistered trade dress in its “In Your Element Periodic Table Soap” (hereinafter “In Your Element Soap”), which Bubble Genius created with the intent “to invoke association with the chemical periodic table of [] elements.” (Amended Complaint (“Am. Compl.”), ECF No. 17 at ¶ 14.) Plaintiff's asserted trade dress, which in large part is identical to periodic table of elements available in the public domain, includes the chemical symbol, atomic number, name of the element, atomic mass, energy level, and the layout of the element's scientific information. It also includes the size, shape, and color of the soaps, the use of black ink, the embedding of the ink in the soap, clear packaging and Bubble Genius' trademarks. (Id. at ¶ 15.) Plaintiff selected the colors that reflected the radioactive elements, uranium, plutonium and radium, based on the available glow-in-the-dark colors and it chose the “obvious” colors for its silver and gold soaps. (Id. at ¶ 16.) Beginning in October 2010, plaintiff has exclusively and continuously manufactured, packaged, advertised, marketed and distributed the “In Your Element Soap.” (Id. at ¶¶ 18-20.)

         In or around June or July 2014, defendant introduced its own line of soaps that utilized periodic tables in the public domain. (Id. at ¶ 25.) Plaintiff was informed by one of its customers in June 2015 that it had “found a new vendor for the Element Soaps.” (Am. Compl., ECF No. 17 at ¶ 29.) Plaintiff alleges that its customer had the “mistaken belief that defendant's product” was plaintiff's “In Your Element Soap.” (Id. at ¶ 29.)

         In January 2015, plaintiff commenced an action against defendant in United States District Court for the Central District of California. That action was dismissed for lack of personal jurisdiction. (Id. at ¶ 6.) Plaintiff filed the Complaint in this action on September 17, 2015. (ECF No. 1.) Plaintiff filed the Amended Complaint on March 7, 2016, alleging four claims, (1) trade dress infringement, (2) federal unfair competition and false designation of origin, (3) New York statutory unfair competition, and (4) New York common law unfair competition. (Am. Compl., ECF No. 17 at §§ 31-52.) The parties filed their fully briefed motion to dismiss papers on May 18, 2016. (ECF Nos. 18-23.) The court heard oral argument on the Motion on November 1, 2016. (Minute Entry dated November 1, 2016.)


         I. Standard of Review

         In deciding a motion to dismiss pursuant to Fed.R.Civ.P. 12(b)(6), the court must “accept as true all factual statements alleged in the complaint and draw all reasonable inferences in favor of the non-moving party.” McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 191 (2d Cir. 2007) (citations omitted). While detailed factual allegations are not required, the pleading standard set forth in Rule 8 “demands more than an unadorned, the-defendant-unlawfully-harmed-me accusation.” Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 1949, 173 L.Ed.2d 868 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555-57, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)). “A pleading that offers ‘labels and conclusions' or ‘a formulaic recitation of the elements of a cause of action will not do.' [ ] Nor does a complaint suffice if it tenders ‘naked assertion[s]' devoid of ‘further factual enhancement.'” Id. Moreover, “[t]o survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.'” Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 570, 127 S.Ct. 1955 (2007)). “Where a complaint pleads facts that are merely consistent with a defendant's liability, it stops short of the line between possibility and plausibility of entitlement to relief.” Id. (internal quotations and citations omitted).

         For the purposes of a Rule 12(b)(6) motion, “a district court may consider the facts alleged in the complaint, documents attached to the complaint as exhibits, and documents incorporated by reference in the complaint.” DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104, 111 (2d Cir. 2010). A district court may also consider “matters of which judicial notice may be taken, or documents either in plaintiffs' possession or of which plaintiffs had knowledge and relied on in bringing suit.” Chambers v. Time Warner, Inc., 282 F.3d 147, 153 (2d Cir. 2002) (internal quotation marks and citation omitted).

         II. Analysis

         Defendant moves for dismissal of the Amended Complaint arguing that plaintiff's alleged trade dress is functional, and therefore not protectable under Section 43(a) of the Lanham Act. Further, plaintiff moves to dismiss plaintiff's New York statutory unfair competition claim on preemption grounds, and its common law unfair competition claim for failure to plead bad faith. For the reasons stated herein, the court grants defendants' motion to dismiss the Amended Complaint.

         A. Lanham Act Claims

         Plaintiff alleges that defendant's use of the periodic table in its soap design violates 15 U.S.C. §§ 1114(1) and 1125(a). Section 1114(1) requires that a plaintiff register its trade dress to obtain relief against an alleged violator. Id. (“Any person who shall, without the consent of the registrant. . .”). The Amended Complaint does not allege that plaintiff's trade dress is registered. Therefore, plaintiff has not stated a plausible claim under 15 U.S.C. § 1114.[1] Accordingly, the court analyzes Count 1 (Trade Dress Infringement) and Count 2 (Federal Unfair Competition and False Designation of Origin) under the unregistered trade dress law pursuant to 15 U.S.C. § 1125(a), which provides in relevant part:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which [ ] is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person [ ] shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a)(1)(A). Protection under 15 U.S.C. § 1125(a)(1)(A) extends to a product's trade dress which “encompasses the overall design and appearance that make the product identifiable to consumers.” Nora Beverages, Inc. v. Perrier Group of Am., Inc., 269 F.3d 114, 118 (2d Cir. 2001).

         i. Federal Trade Dress Infringement

         “To plead a claim of trade dress infringement involving the appearance of a product, [a plaintiff] must allege that (1) the claimed trade dress is non-functional; (2) the claimed trade dress has secondary meaning; and (3) there is a likelihood of confusion between the plaintiff's [product] and the defendant's.” Sherwood 48 Assocs. v. Sony Corp. of Am., 76 Fed.Appx. 389, 391(2d Cir. 2003) (citation omitted). “A plaintiff must also offer a precise expression of the character and scope of the claimed trade dress, ” id. (internal quotation marks and citation omitted), and articulate the “elements of their product design with specificity to be afforded trade dress protection.” Shevy Custom Wigs, Inc. v. Aggie Wigs., No. 06 Civ. 1657(JG), 2006 WL 3335008, at *4 (E.D.N.Y. Nov. 17, 2006).

         The Second Circuit has cautioned that in analyzing trade dress claims, “courts must not lose sight of the underlying purpose of the Lanham Act, which is protecting consumers and manufacturers from deceptive representations of affiliation and origin.” Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 375 (2d Cir. 1997). Trade dress “analysis requires courts to balance the policy of protecting consumers from confusion against that in favor of free competition.” Id. at 377, 380; see ID7D Co. v. Sears Holding Corp., No. 3:11 cv1 054(VLB), 2012 WL 1247329, at *6 (D. Conn. Apr. 13, 2012) (same). “While trademarking a generic term would create a monopoly in a necessary word or phrase, granting trade dress protection to an ordinary product design would create a monopoly in the goods themselves. For this reason, courts have exercised particular ‘caution' when extending protection to product designs.” Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 380 (2d Cir. 1997) (citing Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 332 (2d. Cir. 1995)); see also Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 116 (2d Cir. 2001) (“[T]rade dress protection for product design . . . entails a greater risk of impinging on ideas as compared with protection of packaging or labeling.”)

         Here, plaintiff seeks trade dress protection for a product design, to wit, “each of the products in BGL's line of [“In Your Element Soap” which] employs . . . data from a chemical periodic table of the elements, [and are] intended to invoke association with the chemical periodic table of the elements.” (Am. Compl., ECF No. 17 at ¶ 14). As discussed below, plaintiff has not alleged sufficiently plausible facts that the elements comprising its trade dress are non-functional. Nor has plaintiff sufficiently alleged that its “In Your Element Soap” has attained a secondary meaning. Accordingly, plaintiff has failed to state a plausible trade dress infringement claim pursuant to 15 U.S.C. § 1125(a).

         1. F ...

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