Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Camco Manufacturing, Inc. v. Jones Stephens Corp.

United States District Court, M.D. North Carolina

May 20, 2019

CAMCO MANUFACTURING, INC., Plaintiff,
v.
JONES STEPHENS CORP., AND TREK POWER INC., Defendants.

          MEMORANDUM OPINION AND ORDER

          THOMAS D. SCHROEDER, CHIEF DISTRICT JUDGE.

         Plaintiff Camco Manufacturing, Inc. (“Camco”) claims that Defendants Jones Stephens Corp. (“JSC”) and Trek Power Inc. (“Trek Power”) copied its yellow and black trade dress for electrical adapters and extension cords. (Doc. 16 ¶ 1.) Camco alleges trade dress infringement under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), common law trade dress infringement, passing off, common law unfair competition, and unfair competition under North Carolina's Unfair and Deceptive Trade Practices Act (“UDTPA”), N.C. Gen. Stat. § 75-1.1. (Doc. 16.) Before the court are motions to dismiss by Trek Power and JSC pursuant to Federal Rule of Civil Procedure 12(b)(6). (Docs. 19 & 27.) The motions have been fully briefed and are ready for decision. For the reasons set forth below, the motions will be granted in part and denied in part.

         I. BACKGROUND

         The fundamental allegations of the amended complaint, taken in the light most favorable to Camco, show the following:

Camco manufactures equipment for recreational vehicles (“RVs”), including electrical adapters (sometimes called “dogbones”) and electrical extension cords used to connect to power sources. (Doc. 16 ¶ 8.) Its cords are black with yellow ends, heads, or receptacles, which it asserts is an ornamental trade dress. (Id. ¶ 10.) Camco sells its products through stores, catalogs, and the internet, and has sold its products with its trade dress since approximately March 2005. (Id. ¶¶ 9, 12.) Defendants sell similar products that Camco alleges will likely cause confusion among consumers, because the products are of the same type, sold through the same channels of trade, and have “identical or nearly identical colors and color combinations of a black cord with yellow ends, heads, or receptacle.” (Id. ¶¶ 24, 26.)

         II. ANALYSIS

         A. Standard of Review

         Federal Rule of Civil Procedure 8(a)(2) provides that a complaint must contain “a short and plain statement of the claim showing that the pleader is entitled to relief.” Fed.R.Civ.P. 8(a)(2). Under Federal Rule of Civil Procedure 12(b)(6), “a complaint must contain sufficient factual matter . . . to ‘state a claim to relief that is plausible on its face.'” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is plausible “when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. In considering a Rule 12(b)(6) motion, a court “must accept as true all of the factual allegations contained in the complaint, ” Erickson v. Pardus, 551 U.S. 89, 94 (2007) (per curiam), and all reasonable inferences must be drawn in the plaintiff's favor, Ibarra v. United States, 120 F.3d 472, 474 (4th Cir. 1997). “Rule 12(b)(6) protects against meritless litigation by requiring sufficient factual allegations ‘to raise a right to relief above the speculative level' so as to ‘nudge[] the[] claims across the line from conceivable to plausible.'” Sauers v. Winston-Salem/Forsyth Cty. Bd. of Educ., 179 F.Supp.3d 544, 550 (M.D. N.C. 2016) (quoting Twombly, 550 U.S. at 555). Mere legal conclusions are not accepted as true, and “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Iqbal, 556 U.S. at 678.

         B. Trade Dress Infringement Under the Federal Lanham Act

         The first claim for relief alleges trade dress infringement under the Lanham Act. (Doc. 16 at 14.) “The trade dress of a product consists of its ‘total image and overall appearance,' including its ‘size, shape, color or color combinations, texture, graphics, or even particular sales techniques.'” Ashley Furniture Indus., Inc. v. SanGiacomo N.A. Ltd., 187 F.3d 363, 368 (4th Cir. 1999) (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992)). A federal claim for trade dress infringement arises under Section 43(a) of the Lanham Act when “(1) the trade dress is primarily non-functional; (2) the trade dress is inherently distinctive or has acquired a secondary meaning; and (3) the alleged infringement creates a likelihood of confusion.” Tools USA & Equip. Co. v. Champ Frame Straightening Equip. Inc., 87 F.3d 654, 657 (4th Cir. 1996). Defendants argue that Camco's amended complaint fails to allege that its purported trade dress is inherently distinctive or has acquired secondary meaning and that it is non-functional. (See Doc. 20 at 5; Doc. 28 at 6.) Each element will be addressed in turn.

         1. Inherently Distinctive

         Defendants first argue that Camco's amended complaint fails to allege inherent distinctiveness, because the allegations are conclusory and are limited to color and possibly design, which, as a matter of law, are insufficient to state a claim. (Doc. 20 at 5-6; Doc. 28 at 9-10.)

         The Supreme Court has clearly held that color cannot be inherently distinctive and can only be protected upon a showing of secondary meaning. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-12 (2000) (citing Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 162-63 (1995)). The Supreme Court has also clearly held that “design, like color, is not inherently distinctive, ” and “therefore protectible[] only upon a showing of secondary meaning.” Id. at 212, 216. Therefore, Camco's allegations that its trade dress is inherently distinctive (Doc. 16 ¶¶ 18, 47) fail as a matter of law. Camco acknowledges as much by not responding directly to this argument, but rather making its arguments about secondary meaning. (Doc. 21 at 9; Doc. 33 at 12; see Doc. 32 at 3; Doc. 34 at 7.)

         2. Secondary Meaning

         To plausibly allege a claim for trade dress infringement based on Camco's yellow and black color and/or design, the amended complaint must allege that Camco's trade dress attained distinctiveness through a showing of secondary meaning. “Secondary meaning occurs when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself.” Rothy's, Inc. v. JKM Techs., LLC, 360 F.Supp.3d 373, 387 (W.D. Va. 2018) (internal quotation marks and brackets omitted) (quoting Wal-Mart, 529 U.S. at 211). “[P]roof of secondary meaning entails vigorous evidentiary requirements, ” and thus “secondary meaning is factual in nature and typically ill-suited for a motion to dismiss.” Id. at 387 (brackets omitted) (first quoting Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 125 (4th Cir. 1990); then quoting Stat Ltd. v. Beard Head, Inc., 60 F.Supp.3d 634, 639 (E.D. Va. 2014)).

         Courts in the Fourth Circuit consider four factors to determine if purported trade dress has acquired secondary meaning: “(1) long use; (2) advertising; (3) sales volume; and (4) identity of service or origin in the minds of the purchasing public.” Tools USA, 87 F.3d at 660 (quoting Pizzeria Uno Corp. v. Temple,747 F.2d 1522, 1528 n.3 (4th Cir. 1984)).[1] “All of these elements need not be proved in order for the plaintiff to establish secondary meaning and no single factor is determinative. These factors are merely tools to aid a court in assessing whether the relevant group of consumers made the requisite mental association between product and producer.” Devan ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.