Running Buddy moved for summary judgment, arguing that the trade dress failed to satisfy two elements of an infringement claimโnonfunctionality and distinctiveness. See Gateway, Inc. v. Companion Prod., Inc. , 384 F.3d 503, 507 (8th Cir. 2004). A month later, and within only a few weeks of deposing Pocket Plus's owner, Running Buddy threatened to file for Rule 11 sanctions against Pocket Plus for its weak case.
In Lanham Act litigation, "[t]rade dress is the total image of a product, the overall impression created, not the individual features." Gateway, Inc. v. Companion Prods., Inc., 384 F.3d 503, 507 (8th Cir. 2004) (quotation omitted).
To succeed on a claim for unregistered trade dress infringement under the Lanham Act, a plaintiff must demonstrate, by a preponderance of the evidence, that the claimed trade dress is distinctive or has secondary meaning and is nonfunctional, and that its imitation would likely cause confusion for consumers as to the source of the product. Gateway, Inc. v. Companion Prods., 384 F.3d 503, 507 (8th Cir. 2004).
To establish a claim for unregistered trade dress infringement, a plaintiff must demonstrate that the claimed trade dress (1) is distinctive; (2) is nonfunctional; and (3) its imitation would likely cause confusion for consumers as to the source of the product. Gateway, Inc. v. Companion Prods., 384 F.3d 503, 507 (8th Cir.2004). ICM contends that Honeywell cannot meet its burden of establishing the nonfunctionality of its claimed trade dress.
Section 43(a) of the Lanham Act, 15 U.S.C. ยง 1125(a)(1), creates a federal cause of action for trade dress infringement." Gateway, Inc. v. CompanionProds., Inc., 384 F.3d 503, 507 (8th Cir. 2004). "`Trade dress is the total image of a product, the overall impression created, not the individual features.
" โ A finding is clearly erroneous when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed.โ " Gateway, Inc. v. Companion Prods., Inc., 384 F.3d 503, 507-08 (8th Cir.2004) (quoting Prufrock Ltd. v. Lasater, 781 F.2d 129, 133 (8th Cir.1986)). IV.
"To establish a claim for unregistered trade dress infringement, a plaintiff must demonstrate that the claimed trade dress (1) is distinctive; (2) is nonfunctional; and (3) its imitation would likely cause confusion for consumers as to the source of the product." Honeywell Int'l Inc. v. ICM Controls Corp., 45 F. Supp. 3d 969, 990 (D. Minn. 2014) (citing Gateway, Inc. v. Companion Prods., 384 F.3d 503, 507 (8th Cir. 2004)). Where the claimed trade dress has not been federally registered, the plaintiff "bears the burden of establishing that its marks are protectible under trademark law."
"Trade dress is the total image of a product, the overall impression created, not the individual features." Gateway, Inc. v. Companion Products, Inc., 384 F.3d 503, 507 (8th Cir.2004) (quoting Aromatique, Inc., v. Gold Seal, Inc., 28 F.3d 863, 868 (8th Cir.1994) ). Section 43(a) of the Lanham Act, 15 U.S.C. ยง 1125(a)(1), creates a federal cause of action for trade dress infringement.
(3) that its imitation would result in the likelihood of confusion in consumers' minds as to the source of the product.Gateway, Inc. v. Companion Products, Inc. , 384 F.3d 503 (8th Cir. 2004). The Court finds that a sufficient showing of secondary meaning has been made to justify injunctive relief on this theory.
There is no evidence that the exclusive use of the Safety Clown graphic would deny Frosty Treats's competitors the ability to compete effectively or place competitors at any non-reputational disadvantage. See Gateway, Inc. v. Companion Prods., Inc., 384 F.3d 503, 508 (8th Cir. 2004). At the very least, whether the Safety Clown graphic is functional presents a factual issue not appropriate for resolution upon a motion for summary judgment.