United States District Court, S.D. New York
OPINION AND ORDER
Can't Live Without It, LLC ("S'well") has
brought six claims against defendant ETS Express, Inc.
("ETS"). ETS manufactures the Force and Swig
Bottles, which have the exact same shape as plaintiff's
S'well and S'1p Bottles, respectively. ETS has moved
for summary judgment dismissing all six of S'well's
claims: (1) trade dress infringement in violation of the
Lanham Act; (2) false designation of origin and unfair
competition in violation of the Lanham Act; (3) trade dress
infringement under New York common law; (4) unfair
competition under New York common law; (5) deceptive acts and
practices m violation of New York General Business law §
349, and (6) false advertising in violation of New York
General Business Law § 350. ETS has also moved for
summary judgment on its counterclaim seeking cancellation of
the trade dress registrations for the S'well and S'1p
Bottles. S'well, in turn, has moved for summary judgment
as to liability on its second and fourth claims, but only
with regard to ETS's alleged use of S'well's
trademarked name, not S'well's trade dress rights.
reasons set forth below, the Court grants defendant's
motion for summary judgment dismissing plaintiff's second
claim (false designation of origin and unfair competition in
violation of the Lanham Act), fifth claim (deceptive acts and
practices in violation of New York General Business law
§ 349), and sixth claim (false advertising in violation
of New York General Business Law § 350). The Court
otherwise denies defendant's motions, and also denies
relevant facts, undisputed except where noted, are as
was founded in 2010 by Sarah Kauss, who remains its CEO.
Defendant ETS Express, Tnc.'s Response to Plaintiff's
Rule 56.1 Statement of Purported Undisputed Facts ("ETS
56.1 Resp.") ¶ 1, ECV No. 65. S'well
manufactures water bottles and holds various trademarks
registered with the United States Patent and Trademark Office
("PTO"), including for the words
"S'well" and "Swell, " as well as the
stylized mark S'well. Id. ¶ 5.
signature product is the S'well Bottle, id.
¶ 2, which came to market m 2010, id. ¶ 9.
All S'well Bottles have the "S'well" mark
printed on their sides. Plaintiff's Response and Counter
statement to ETS Express, Inc.'s Statement of Material
Facts Not in Dispute ("S'well 56.1 Resp."),
¶ 44, ECF No. 69. S'well registered the S'well
Bottle's trade dress (its three-dimensional shape and
cap, in combination) with the PTO Supplemental Register in
July 2013 and the PTO Principal Register in January 2017. ETS
56.1 Resp. ¶ 6. S'well has since litigated against
several companies it viewed as having infringed these trade
dress rights. See Can't Live Without It, LLC
d/b/a S'well Bottle v. RTIC Coolers, LLC, RTTC
Drinkware, LLC, RTIC Web Services, LLC, and John Doe
LLCs 1-5, 1: 17-cv-03530 (S.D.N.Y. May 11, 2017);
Can't Live Without It, Inc. d/b/a S'well
Bottle v. Shanghai2008 (HK) Trading Ltd., 1:16-cv-09520
(S.D.N.Y. Dec. 12, 2016).
S'well Bottle has been very successful, obtaining
substantial amounts of free, unsolicited media coverage,
selling millions of bottles and an increasing number each
year, and generating millions of dollars in income. ETS 56.1
Resp. ¶¶ 13-18. S'well sells its bottles (a)
directly to consumers on its website, (b) to retailers who
then sell the bottles in their stores, and (c) through
S'well's custom program, in which an imprint of a
company's name or logo is added to the bottle and the
company then resells or gives away the bottles. Id.
¶ 22. S'well has spent a great deal of money on
advertising and marketing its bottles and has collaborated
with various philanthropic organizations, trade shows,
festivals, and other events and tastemakers to further
develop its brand. Id. ¶ 26. As a result,
S'well is well known compared to other water bottle
brands. id. ¶ 27.
a drinkware company that was founded in 1985. S'well 56.1
Resp. ¶ 1. ETS has had success selling various kinds of
its own water bottles that are "patterned after"
retail brands. Declaration of Robert Penchina in Support of
Plaintiff's Motion for Summary Judgment dated November
20, 2017 ("Penchina Decl."), ECF No. 49, Ex. 6,
Deposition of Adam Stone ("Stone Dep.")
101:23-02:2. The Force Bottle is one of ETS's most
popular products and is shaped identically to the S'well
Bottle. ETS 56.1 Resp. ¶¶ 32-34. ETS first placed a
factory order for a Force Bottle in May 2014. Id.
¶ 57. ETS characterizes itself as operating in the
"promotion products market" rather than the retail
market, meaning it fulfills orders placed by intermediaries
for custom-printed products and the intermediaries then sell
those products to businesses that give them away as
promotions. Id. ¶¶ 42-43. These
intermediaries sell a wide variety of products and do not
specialize m drinkware. Id. ¶ 44. ETS does sell
Force Bottles directly to some retailers - including, at
least, college bookstores and a coffee shop chain with
locations throughout California. Id. ¶ 47.
Additionally, some distributors sell to retailers who sell
Force Bottles to end-users either online or in retail stores.
Id.; Penchina Decl., Ex. 23.
judgment is appropriate if the "movant shows that there
is no genuine dispute as to any material fact."
Fed.R.Civ.P. 56(a). There is no genuine dispute if,
"drawing all reasonable inferences in favor of a
non-movant, no reasonable trier of fact could find in favor
of that party." Heublein, Inc. v. United
States, 996 F.2d 1455, 1461 (2d Cir. 1993). A fact
is material if it "might affect the outcome of the suit
under the governing law." Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986). "The movant bears
the burden of showing that there is no genuine dispute of
material fact." Id. at 256.
Trade Dress Violation under the Lanham Act (First
Cause of Action) and under New York Common Law (Third Cause
of Action) . Defendant's Counterclaim for
32 of the Lanham Act, in relevant part, holds liable any
person who "use[s] in commerce any reproduction,
counterfeit, copy, or colorable imitation of a registered
mark in connection with the sale, offering for sale,
distribution, or advertising of any goods" when
"such use is likely to cause confusion, or to cause
mistake, or to deceive." 15 U.S.C. § 1114(1)
(a). "[T]o succeed in a Lanham Act
suit for trademark infringement, a plaintiff has two
obstacles to overcome: the plaintiff must prove that its mark
is entitled to protection and, even more important, that the
defendant's use of its own mark will likely cause
confusion with plaintiff's mark." Gruner Jahr
USA Pub., a Div. of Gruner Jahr Printing &
Pub. Co. v. Meredith Corp., 991 F.2d 1072, 1074 (2d Cir.
1993). "The analysis for trade dress infringement is the
same under both the Lanham Act and New York State common
law." Sports Traveler, Inc. v. Advance
Magazine Publishers, Inc., 25 F.Supp.2d 154, 166
Validity of the Trademark and Defendant's Counterclaim
Lanham Act only protects nonfunctional, distinctive trade
dress. See Two Pesos, Inc. v. Taco Cabana, Inc., 505
U.S. 763, 775 (1992). If the trade dress is either functional
or not distinctive, then cancelation of the mark is
appropriate. See 15 USC § 1064(3) (authorizing
cancelation "if the registered mark becomes the generic
name for the goods or services, or a portion thereof, for
which it is registered, or is functional").
S'well's mark is presumptively distinctive and
nonfunctional because it is registered with the PTO. See 15
U.S.C. § 1057(b) ("A certificate of registration of
a mark upon the principal register provided by this chapter
shall be prima facie evidence of the validity of the
registered mark"). "As a result, when a plaintiff
sues for infringement of its registered mark, the defendant
bears the burden to rebut the presumption of [the] mark's
protectibillty by a preponderance of the evidence."
Lane Capital Mgmt., Inc. v. Lane Capital Mgmt.,
Inc., 192 F.3d 337, 345 (2d Cir. 1999).
trade dress can never be inherently distinctive, " as
product design, such as the shape of a bottle, always serves
a function beyond identifying the source of the product.
Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205,
214-15 (2000). To become distinctive, a product design trade
dress must acquire a secondary meaning. Id. Trade
dress has a secondary meaning if, "in the minds of the
public, the primary significance of a product feature or term
is to identify the source of the product rather than the
product itself." Inwood Labs., Inc. v. Ives Labs.,
Inc., 456 U.S. 844, 851 n.ll (1982). In evaluating this
issue, courts look to such factors, inter alia, as
advertising expenditures, consumer studies, sales success,
unsolicited media coverage, attempts to plagiarize the mark,
and length and exclusivity of the mark's use.
Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973
F.2d 1033, 1041 (2d Cir. 1992).
defendant's sole argument against distinctiveness is that
consumers cannot possibly associate the bottle shape here at
issue with any single source because so many different
businesses manufacture similarly shaped bottles. ETS provides
declarations from various employees who state that they
purchased S'well-like bottles from various stores and
websites, providing pictures, descriptions, and receipts.
See Defendant ETS Express, Inc.'s Local Rule
56.1 Statement of Material Facts Not in Dispute ("ETS
56.1 Stmt."), ¶¶ 23-25, 42, ECF No. 47. ETS
identifies 130 different sources of water bottles that have
the same shape as the S'well Bottle.
posits that, as a matter of law, if "the total number of
such different sources exceeds 20, the alleged mark is
generic because it cannot indicate that it emanates from a
single source." ETS Express, Inc.'s Memorandum of
Law in Support of Its Motion for Summary Judgment ("ETS
Mem.") at 5, ECF No. 57. But no such numeric rule
exists. If, for example, one source has such a large market
share and strong brand awareness that the public strongly
associates its mark with that brand, consumers will likely
assume that products bearing that mark are associated with
that brand, regardless of the number of "knockoff"
manufacturers. The number of manufacturers is therefore a
relevant, but not determinative factor.
ETS, in its motion seeking summary judgment dismissing
S'well's first and third claims largely relies on a
non-existent statistical rule, S'well, by contrast,
submits substantial evidence suggesting that the public in
fact does associate this particular shape with S'well,
including undisputed, significant levels of advertising
expenditures, sales success, and unsolicited media coverage.
ETS 56.1 Resp. ¶¶ 13-20. Moreover, ETS salespeople
in emails with distributors themselves referred to the Force
Bottle as a "S'well knockoff, " Penchina Decl.
Exs. 11, 12; a "swell like option, " Declaration of
Paul J. Safier in Support of Plaintiff's Opposition to
Defendant's Motion for Summary Judgment dated December 4,
2017 ("Safier Decl."), ECF No. 62, Ex. 14;
"S'well-like, " id., Ex. 15; and "the ones
that look like Swell, " id., Ex. 16. Online retailers
have similarly advertised Force Bottles to the public as
being similar to S'well Bottles. See id., Exs.
20, 21. These comparisons would be meaningless if the
audience did not associate the shape with the brand. See
Cartier, Inc. v. Four Star Jewelry Creations, Inc., 348
F.Supp.2d 217, 231 (S.D.N.Y. 2004) (use of "such terms
as 'Cartier style, ' 'Tank style' or
'Panthere style'" to advertise watches supported
finding of secondary meaning). Thus, at a minimum, a genuine
dispute exists as to whether S'well's trade dress has
acguired a secondary meaning, thereby precluding summary
judgment in ETS's favor on this issue.
design with a secondary meaning is nonetheless insufficient
to sustain plaintiff's first and third claims if the
protected design is functional, i.e., if it serves some
useful purpose beyond identification of source and there are
no marketable, alternative designs that would achieve the
same end. See Brandir Int'l, Inc. v. Cascade Pac.
Lumber Co., 834 F.2d 1142, 1148 (2d Cir. 1987). The
Latham Act is meant to protect consumers from confusion, not
to permit monopoly pricing for functional items. See
Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S.
159, 164-65 (1995).
argues that the registered configurations of both the
S'well and S'1p Bottles are functional because they
are "the most efficient container shape[s] from which to
drink." ETS Mem. at 10. ETS cites material S'well
itself submitted to the PTO in support of its registrations
to argue that both bottles contain "mouths" that
are big enough for ice cubes but small enough for
"drip-free sipping" and are located in the center
of the bottle, so users never need to rotate the bottle to
begin drinking. Id. at 10-11. ETS also asserts that
the circular shape is the "strongest and the easiest to
make, " and that the bottles' smooth tapering at a
relatively shallow angle from the base to the mouth permits
the bottles to be emptied completely with relatively minor
tilts. Id. at 11-12. The alternative design -
straight sides with a sharp angle just before the mouth -
creates a "catch basin, " so that the liquid in the
bottle, rather than smoothly flowing out, is trapped in the
depression where the angle changes until the bottle is tilted
further, at which point it comes rushing out all at once,
leading to spills and other dangers. Id. at 12-13.
however, cites no evidence in the section of its brief making
these assertions, and that by itself is enough to defeat
these assertions for purposes of a summary judgment motion.
Several propositions on which they rely, moreover, are far
from self-evident. ETS states that manufacturing a circular
shape is the easiest and cheapest option, but a rectangular
shape might likely be easier to stack and ship. Cf.
Abbott Labs, v. Mead Johnson & Co., 971 F.2d 6,
20 (7th Cir. 1992) (nail polish manufacturer arguing that
square container was functional for these reasons). The
founder of S'well also said in her declaration that she
made several aesthetic choices when she designed the bottles
that she knew would be more expensive. Declaration of Sarah
Kauss dated December 4, 2017 ¶ 5, ECF No. 63.
ETS offers no evidence suggesting that no other designs could
have these same functional benefits. S'well has not
trademarked all water bottles with gently sloping sides.
Indeed, ETS's argument that both the S'1p and
S'Well Bottles have ideal shapes, despite the two being
shaped differently, suggests that these benefits may be
available in other shapes as well. And ETS says nothing about
the distinctive bottle cap, which is part of S'well's
trade dress. Nor is it clear that S'well and S'1p
Bottles have achieved the perfect mouth size. (How many ice
cubes will not fit a smaller bottle mouth? How much more
spilling does a bigger bottle mouth risk?)
sure, container shapes are often functional, and
"society is better served if functional containers . . .
remain available for use among competitors. To the extent
this causes a modicum of confusion of the public, it will be
tolerated." In re Water Gremlin Co.,
635 F.2d 841, 844 (C.C.P.A. 1980). But ETS has not offered
sufficient evidence to show that the function the instant
combination of design elements serves is otherwise
the genuine dispute that therefore exists as to whether
S'well's trade dress rights are distinctive and
nonfunctional is insufficient in itself to end the inquiry
regarding defendant's motion for summary judgment on
plaintiff's first and third causes of action (see the
next section), it is sufficient to deny defendant's
motion for summary judgment on its counterclaim seeking
cancelation of plaintiff's marks. That motion is
Likelihood of Confusion
its mark is valid, a plaintiff cannot succeed on claims of
infringement under the Lanham Act or parallel New York State
law unless the defendant's use of the mark tends to cause
confusion. The Court therefore considers whether customers or
potential customers who see the allegedly infringing product
(the Force Bottle) are likely to either confuse it with the
protected product (the S'well Bottle) or believe that
S'well is somehow associated with Force Bottle. In
deciding whether a product is likely to confuse consumers
about its origins, courts in this circuit examine the eight
factors famously enumerated by Judge Friendly in Polaroid
Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.
(1) strength of the plaintiff's mark; (2) the degree of
similarity between the two marks;
(3) the proximity of the products; (4) the likelihood that
the prior owner will "bridge the gap" . . .; (5)
actual confusion; (6) the defendant's good faith in
adopting its mark;
(7) the quality of defendant's product; and
(8) the sophistication of the buyers.
Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474,
478 (2d Cir. 1996). "If a factual inference must be
drawn to arrive at a particular finding on a
Polaroid factor, and if a reasonable trier of fact
could reach a different conclusion, the district court may
not properly resolve that issue on summary judgment."
discussed above, S'well has adduced significant evidence
that its mark is distinctive and strong, despite the fact
that many other manufacturers make similar bottles. And
defendant concedes that the two products are very similar.
ETS Mem. at 6. These first two critical factors therefore
weigh against granting defendant's motion.
principal argument is that S'well's claim fails on
the third and eighth Polaroid factors. According to
ETS, Force Bottles and S'well Bottles are sold in
separate markets to sophisticated consumers who would not
confuse them. ETS submits a declaration from an expert who
opines that distributors that purchase Force Bottles from ETS
and the businesses that order those bottles from the
distributors are unlikely to be confused about the bottles
they purchase. Declaration of Michael W. Carwin in Support of
Defendant ETS Express, Inc.'s Motion for ...