United States District Court, M.D. North Carolina
MEMORANDUM OPINION AND ORDER
D. SCHROEDER, CHIEF DISTRICT JUDGE.
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.
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.)
Standard of Review
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.
Trade Dress Infringement Under the Federal Lanham Act
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.
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.)
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.)
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)).
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)). “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