UnIntellectual Property (UnIP): Trade Dress for Water Squirting Toys

The United States District Court for the District of Jersey, in an over 60 page opinion, has refused to issue a preliminary injunction based upon alleged infringement of trade dress.  Plaintiff, Buzz Bee, offers a product line entitled WATER WARRIORS, which includes the AVENGER, KWIK GRIP XL, ARGON, and XENON water squirting toys, and seeks to protect the trade dress for each model.  For example, Plaintiff identified its AVENGER trade dress, which was not registered with the USPTO as follows:

(i) a raised portion along the top of the rear body portion, having a downwardly sloping body element crossing forwardly along the rear body portion, a forward wavy top projection and a forward wavy lower projection with a wave-like arcuate design pointing rearward formed between the top projection and the lower projection; (ii) an irregularly shaped inlay having a forward point located in the rear body portion; (iii) a front and bottom body portion having a complementary wave-like shape to meet the rear body portion, a grip portion having a raised back, a downwardly extending trigger guard portion having an arcuate design inlay pointing forward, a forward raised conical portion; (iv) a forward stock portion having three sloped ridges; and (v) a cylindrical orange muzzle portion.
Defendant, Swimways, manufactures leisure and recreational water products, including a watergun product line from a manufacturer’s catalog while in discussions with Target for the sale of the same.  Swimways’ FLOOD FORCE line includes the AVALANCE, TSUNAMI, STORM, and STRYKER.
As evidence of the similarity between Buzz Bee’s and Swimways’ products, Plaintiff provided a February 12, 2014 post from the “BUFFDADDY NERF” blog, in which the blogger discussed similarities amongst the products.  Defendant countered with evidence of massive third party use of such products.
The Court first analyzed whether the trade dress claimed by Plaintiff was functional, to which it held: “The WATER WARRIORS trade dresses are not functional; Plaintiff has shown a likelihood of success with this element.”  However, Plaintiff’s efforts to obtain a preliminary injunction failed because, as the Court put it, “[u]pon the present record, Plaintiff has not demonstrated a likelihood of showing that its trade dresses have acquired secondary meaning,” after having analyzed each of the factors: (1) the extent of sales and advertising leading to buyer association; (2) length of use; (3) exclusivity of use; (4) the fact of copying; (5) customer surveys; (6) customer testimony; (7) the use of the mark in trade journals; (8) the size of the company; (9) the number of sales; (10) the number of customers; and, (11) actual confusion.  While the Court noted the similarity between the products makes it a difficult decision, the extraordinary remedy of an injunction ultimately favored denial.  That said, the Court seemed to provide a road map, so to speak, of ways Plaintiff’s case could be improved, including additional evidence.  One such piece of evidence, which always becomes a factor in secondary meaning cases relates to surveys and/or testimony, to which the Court said: “Perhaps as pretrial discovery progresses, Plaintiff will amass customer testimony or survey evidence that sheds light upon customer recognition of Buzz Bee’s products or confusion as to the source of Swimways’ products. Presently, this lack of customer evidence cuts against Plaintiff.”
This case is one worth keeping an eye on if it proceeds.  The Court’s analysis is, in my humble opinion, typical of these cases and provides an easy to follow, factor by factor, guide for trademark lawyers in these kinds of cases.  I wonder if a design patent had been pursued, and successfully, whether this case would be different.  Dual protection, with the trade dress remaining even after any such design patent expires, may have been the best IP protection route.  That said, it is always easy to critique after the fact, without knowing what discussion the IP lawyers had with the client and/or the client’s desires/budget/etc.
Buzz Bee Toys, Inc. v. Swimways Corp., CIV. 14-1948 JBS/KMW, 2014 WL 2006799 (D.N.J. May 15, 2014).


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