UnIntellectual Property (UnIP): Trade Dress for Stylus Holder

The United States District Court for the District of Massachusetts granted summary judgment to Defendants with respect to Plaintiff’s claim of trade dress infringement of a stylus holder.  The Court recognized that Plaintiff and Defendants had done business together, including one Defendant (Pitney Bowes) having purchased stylus holders directly from Plaintiff and the other Defendant having helped source a “similar” alternative stylus holders for a cheaper price to Pitney Bowes.  However, the Court found that although issues of material fact remained with regard to whether the wingless shape, oval-shaped backplate, and curved spine were functional, Plaintiff had failed to establish the requisite secondary meaning so as to establish distinctiveness for its trade dress.

In doing so, the Court analyzed both direct and indirect evidence offered by Plaintiff in support of its claim of distinctiveness, based upon secondary meaning.  The First Circuit only recognizes consumer surveys as direct evidence, and Plaintiff’s consumer survey was deemed deficient.  In particular, the Court noted that the 8 question multiple choice survey was more geared toward likelihood of confusion rather than secondary meaning.  Even the two questions that could be arguably directed toward secondary meaning were held deficient because the survey only questioned existing customers who are already familiar with Plaintiff’s product and was thus an improper sampling of individuals.  Since consumers had a 30% chance at guessing the source of the product, it was not sufficient to establish that consumers associated the stylus with a single source, namely the Plaintiff.

As it relates to indirect evidence, the Court acknowledged that the following could suffice: 1) the length and manner of the use of the trade dress; 2) the nature and extent of advertising and promotion; 3) the efforts to promote a conscious connection between the public, the trade dress, and the source; 4) the products’ established place in the market (possibly through continuous use in the market); and 5) proof of intentional copying.  Despite Plaintiff’s arguing, and offering some evidence in support of such arguments, that its existance for over seven years with large expenditures resulting in web traffic and “Top 10” placement on Google, the Court held that “[p]roof of secondary meaning requires at least some evidence that the consumer associates the trade dress with the source.”  Plaintiff simply did not provide such evidence.  Therefore, Defendants were granted summary judgment.

Had the survey been different, would this case have survived summary judgment?  Would a piece of evidence showing intentional copying or indirect evidence (perhaps consumer testimony) that it associates the trade dress with Plaintiff have created an issue of material fact?  Trademark/trade dress attorneys can advise their clients of these issues, but unfortunately, as is more often than not the case in the subjective area of trademark law, one piece of evidence may make or break a case.  Surveys are typically ripe for dispute and can become (or not) that important piece of evidence, as shown by this case.

Genesis Strategies, Inc. v. Pitney Bowes, Inc., CIV.A. 11-12270-TSH, 2014 WL 2048447 (D. Mass. May 16, 2014).


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