SHOCK-TEK, L.L.C. v. TREK BICYCLE CORPORATION

Full title: SHOCK-TEK, L.L.C., Plaintiff, v. TREK BICYCLE CORPORATION and eTREK…

Court: United States District Court, E.D. Michigan, Southern Division

Date published: Dec 18, 2001

No. 01-71986 (E.D. Mich. Dec. 18, 2001)

Opinion

No. 01-71986.

December 18, 2001.

MEMORANDUM AND ORDER DISMISSING COUNTS II, III AND IV OF THE COMPLAINT WITHOUT PREJUDICE

AVERN COHN, U.S. District Judge

I. Introduction

Plaintiff Shock-Tek, L.L.C. (Shock-Tek) claims that defendants Trek Bicycle Corporation and eTrek, L.L.C. (collectively Trek) infringed on its patented glove (Shock-Tek glove) by marketing and distributing the Trek Moby Gel gloves. Shock-Tek also claims that Trek violated the Lanham Act 15 U.S.C. § 1125(a)(3)(1994), and the Michigan Consumer Protection Act, M.C.L.A. §§ 445.901 et seq. (MCPA), through unfair competition by copying the Shock-Tek glove pad resilient protector (glove pad) design and language contained in Shock-Tek glove promotional material. Shock-Tek also claims that Trek has been unjustly enriched through its use of the copied Shock-Tek glove pad design.

Before the Court is Trek's motion to dismiss Count II (unfair competition and false representation under the Lanham Act), Count III (unfair competition under the MCPA) and Count IV (unjust enrichment). For the reasons which follow, Trek's motion will be granted and Count's II, III and IV will be dismissed.

II. Background

In 1991, A. Robert Spitzer (Spitzer) was issued U.S. patent No. 5,031,640 for his design of a glove pad that would assist in the prevention of carpal tunnel syndrome. The abstract reads:

A cushion pad for preventing carpal tunnel syndrome is adapted to be placed between the grip or shaft of a tool and a hand. The cushion pad includes a recess within a predetermined size range for protecting the median nerve by eliminating gripping pressure thereon. The cushion pad may be configured as a cylindrical grip attached to the tool or as a hand glove to be placed on the hand prior to grasping the tool. The cushion pad may include positioning flanges for positioning the median nerve over the recess.

Spitzer was issued U.S. patent No. 6,006,571 in 1999 for a second glove designed to prevent carpal tunnel syndrome. The abstract reads:

A glove assembly adapted to inhibit or prevent carpal tunnel syndrome includes a flexible glove body having a front side and a back side which defines a wrist opening and at least one finger opening. The glove assembly further includes a resilient protector secured to the front side of the glove body for preventing the application of pressure to a median nerve. The resilient protector defines a recess extending substantially parallel with both sides of the median nerve. It is also interrupted along its extent thereby imparting greater flexibility and ease of movement to a wearer of the glove assembly. A grip is also disclosed which includes a resilient protector interrupted along its extent.

In 2001, Spitzer and a corporation he organized, Yad Hamsa, Inc., formed Shock-Tek, LLC, the plaintiff. All rights in the '640 patent and the '751 patent were assigned to Shock-Tek. Shock-Tek developed and is marketing cycling gloves incorporating the glove pad design. Shock-Tek gloves have been advertised and marketed at cycling trade shows, and are sold with a hand-tag which reads:

Shock-Tek gloves, patented, anatomical design protects the median nerve and carpal tunnel for maximum comfort and performance. Removes pressure from median nerve to help eliminate hand numbness, pain and fatigue.

Trek manufactures and markets various cycling gloves. In particular, Trek distributes Moby Gel gloves which are sold with a hang tag that reads, in relevant part:

Pad placement also eliminates pressure on the carpal tunnel area.

III. Motion to Dismiss Standard

When analyzing a motion to dismiss under Fed.R.Civ.P. 12(b)(6), the Court must take a plaintiffs well-pleaded allegations as true. Miree v. DeKalb County, 433 U.S. 25, 27 n. 1 (1977). "[T]he Court may consider documents attached to the complaint as exhibits or incorporated in it by reference." FED. R. CIV. P. 10(c). "[W]hen an allegation is capable of more than one inference, it must be construed in the plaintiffs favor."Sinay v. Lawson Sessions Co., 948 F.2d 1037, 1039-40 (6th Cir. 1991). "A court may dismiss a complaint only if it is clear that no relief could be granted under any set of facts that could be proved consistent with the allegations." Hishon v. King Spalding, 467 U.S. 69, 73 (1984).

IV. Discussion A. Count II and III ¹

1 The count for unfair competition in violation of the Lanham Act (Count II) and the count for unfair competition in violation of the Michigan Consumer Protection Act (Count III) are functionally the same. The standard for asserting a valid claim for unfair competition is the same under each of the statutes. Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100 (1991). Accordingly, these counts are addressed as one.
As an alternative argument to dispose of plaintiffs MCPA claim, the defendant argued at oral argument that plaintiff lacked standing as a business competitor to sue under the MCPA, citing Wynn Oil Co. v. American Way Service Corp., 736 F. Supp. 746 (E.D. Mich. 1990). This Court considered this issue in John Labatt Limited v. Molson Breweries, 853 F. Supp. 965 (E.D. Mich. 1994) (addressing the reasoning in Wynn and concluding that business competitors do have standing to sue under the MCPA). Therefore, Shock-Tek has standing to sue under the MCPA as a business competitor. However, in view of the Court's disposition, it need not address this issue.

Design or promotional materials associated with a patented article may be protected under the Lanham Act as trade dress. To establish a claim for unfair competition of trade dress, a plaintiff must plead and prove that 1) the design and promotional material were entitled to protection and 2) that the defendant's use of the protected material is likely to cause confusion among consumers. See Traffix Devices, Inc. v. Marketing Displays, Inc., 121 S.Ct. 1255 (2001).

1. Design a.

The design of a product is protected as trade dress if it is not functional. Traffix Devices, 121 S. Ct. at 1261-62.² A design feature is functional if it is not "merely an ornamental, incidental, or arbitrary aspect of the device," but rather is essential to the use or purpose of the device or if it affects the cost or quality of the device. Id. at 1260-61. In Traffix, the Supreme Court held that a dual-spring design on an outdoor sign was functional because it was the essential feature of the trade dress sought to be protected. The Supreme Court reasoned that the design enabled the sign to resist toppling in the wind, the purpose of the outdoor sign, and, therefore, was not ornamental but was functional. Accordingly, the Supreme Court denied trade dress protection to the design.

2 While the Supreme Court addressed the issue of functionality on summary judgment, the court in Metrokane, Inc. v. Wine Enthusiast, 160 F. Supp.2d 633 (S.D.N.Y. 2001) applied the Traffix functionality test on a motion to dimiss a claim.

Shock-Tek does not allege that the glove pad design is not functional. Further, a review of the '640 and '751 patents establish that the glove pad design is functional. Both patents state that the purpose of the patented glove is to "prevent carpal tunnel syndrome." This is accomplished through the design of the glove pad which prevents pressure on the median nerve. While Shock-Tek argues that the glove pad is not essential to the functioning of the cycling glove as a glove, it is essential to the functioning of the patented and marketed glove, the purpose of which is to prevent carpal tunnel syndrome. Similar to the outdoor sign in Traffix, while the glove may be able to function as a regular cycling glove without the glove pad design, the design is necessary for the glove to operate as intended. Accordingly, the glove pad design is not ornamental in nature; it is essential to the purpose of the glove. Shock-Tek has failed to plead a protectable design.

b.

Even assuming that Shock-Tek has sufficiently plead that the pad of the glove is not functional and is entitled to protection, it has failed to allege that Trek's use of the design has acquired secondary meaning. In addition to pleading that a design is not functional, the plaintiff must plead that the design is distinctive or has acquired secondary meaning and that the defendant's use of the design is likely to cause confusion among consumers. Wal-mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000). A design cannot be inherently distinctive. Therefore, the plaintiff must plead that the design has acquired secondary meaning. Id. Secondary meaning has been defined as follows:

To acquire a secondary meaning in the minds of the buying public, an article of merchandise when shown to a prospective customer must prompt the affirmation, "That is the article I want because I know its source," and not the negative inquiry as to "Who makes that article?" In other words, the article must proclaim its identification with its source, and not simply stimulate inquiry about it.

Herman Miller, Inc. v. Palazzetti Imports and Exports, 270 F.3d 298 (6th Cir. 2001).

Shock-Tek has not alleged in its complaint that the glove pad has acquired secondary meaning. Counts II and III of Shock-Tek's complaint only allege that defendant's Moby Gel gloves are "confusingly similar" to the Shock-Tek gloves. In its brief, Shock-Tek argues that the glove pad design is inherently distinctive. This argument is meritless. Shock-Tek also argues that, in the alternative, the glove pad design has acquired secondary meaning. Shock-Tek says in its brief that the median groove surrounded by the cushion pads on the glove is a key identifying trait of the glove, giving it secondary meaning. This allegation alone is insufficient to plead secondary meaning. See Goes Lithography Co. v. Banta Corp., 26 F. Supp.2d 1042 (N.D. Ill. 1998) (holding that the plaintiff failed to plead a claim for trade dress infringement because it failed to plead that the design was nonfunctional and had acquired secondary meaning). Accordingly, Shock-Tek has failed to plead a claim for unfair competition under the Lanham Act and the MCPA with regards to the glove pad design.

2. Promotional Materials

Promotional materials that are claimed to be protected trade dress "will fit somewhere in the spectrum which ranges through (1) generic or common descriptive and (2) merely descriptive to (3) suggestive and (4) arbitrary or fanciful." Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th Cir. 1984). While a term that is generic or a common descriptive term is not protected as trade dress, a merely descriptive term can be protected if it has acquired secondary meaning. Id. A merely descriptive term "describes a characteristic or ingredient of an article." Id.

The promotional material that Shock-Tek claims as protected trade dress is the language on the hang-tag sold with the Shock-Tek gloves quoted above. In its brief, Shock-Tek argues that this language is distinctive and protected as trade dress. Shock-Tek makes no argument regarding where in the Induct-O-Matic spectrum the promotional language falls. The promotional language appears only to describe the function of the Shock-Tek gloves, specifically the characteristics of the glove pad. Therefore, the promotional language is merely descriptive and is protected as trade dress only if it has acquired secondary meaning.

Shock-Tek's complaint does not allege that the promotional language has acquired secondary meaning. Further, Shock-Tek makes no argument in its brief that the promotional language has acquired secondary meaning beyond stating that it is "distinctive." Accordingly, Shock-Tek has failed to plead a claim for unfair competition under the Lanham Act and the MCPA with respect to the promotional language.

B. Count IV of Shock-Tek's Complaint

Shock-Tek claims unjust enrichment in Count IV of its complaint. "The elements of unjust enrichment are (1) receipt of a benefit by defendant from plaintiff, and (2) such benefit is inequitable for the defendant to retain." Dumas v. Auto Club Ins. Ass'n, 437 Mich. 521, 546 (1991).

Shock-Tek argues that it has pled a claim for unjust enrichment because it has alleged that Trek has copied the Shock-Tek gloves' "unique" glove pad design with its Moby Gel gloves and profited from the copying. InTraffix, the Supreme Court stated that there is no prohibition against copying nonprotected functional design features. The Supreme Court reasoned that "allowing competitors to copy will have salutary effects. . . ." Traffix Devices, Inc., 121 S. Ct. at 1260.

The glove pad design of the Shock-Tek gloves is functional. Consequently, there is no prohibition against the copying of such a design. Trek, therefore, has not received a benefit that is "inequitable" to retain. Accordingly, Shock-Tek has failed to plead a claim for unjust enrichment.

V. Conclusion

Shock-Tek has failed to plead a claim for unfair competition under the Lanham Act and the MCPA with regards to the Shock-Tek glove design and promotional materials. Further, Shock-Tek has failed to plead a claim for unjust enrichment. Accordingly, Trek's motion to dismiss Count II, III and IV of Shock-Tek's complaint is GRANTED and Count II, III and IV are DISMISSED. The case will proceed with regards to Count I.

SO ORDERED.