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- The most recent state and federal cases that cite the actions’ elements;
- The applicable statute of limitations for each action; and
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Trade Dress Infringement

1 Elements and Case Citations

“‘[T]rade dress “refers to the ‘total image of a product’ and may include features such as size, shape, color, color combinations, texture or graphics.” . . . The design of a product, as well as its packaging, both are part of its ‘trade dress.’ . . . ‘A seller's adoption of a trade dress confusingly similar to a competitor's constitutes unfair competition that is actionable under section 43(a) of the Lanham Act.’” Magic Kitchen LLC v. Good Things Internat., Ltd., 153 Cal. App. 4th 1144, 1155 (2007).

“To establish trade dress infringement, [a plaintiff] must show

(1) that its product design is non-functional,
(2) that the design is inherently distinctive or has acquired a secondary meaning, and
(3) that there is a likelihood of confusion. [Citation.]

Because affording trade dress protection to product designs may hinder legitimate competition, the Ninth Circuit has advised district courts to evaluate such claims with greater scrutiny than claims involving other forms of trade dress.’”

Magic Kitchen LLC v. Good Things Internat., Ltd., 153 Cal. App. 4th 1144, 1155 (2007) (citing Continental Laboratory Products, Inc. v. Medax Intern., Inc., 114 F.Supp.2d 992, 997 (S.D. Cal. 2000)).

CALIFORNIA STATE COURTS

Supreme Court of California: None.

California 1st District: El-Com Hardware v. Fireman’s Fund Ins. Co., 92 Cal. App. 4th 205, 214-15 (2001).

California 2d District: Magic Kitchen LLC v. Good Things Internat., Ltd., 153 Cal. App. 4th 1144, 1155 (2007).

California 3d District: None.

California 4th District: None.

California 5th District: None.

California 6th District: None.

CALIFORNIA FEDERAL COURTS

United States Court of Appeal for the 9th Circuit: Am. Rena Int'l Corp. v. Sis-Joyce Int'l Co., No. 12-57169, 2013 U.S. App. LEXIS 15039, at *4 (9th Cir. July 11, 2013); Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 (9th Cir. 1998).

Central District: Card Tech Int'l, LLLP v. Provenzano, No. CV 11-2434 DSF (PLAx), 2012 U.S. Dist. LEXIS 81481, at *59-60 (C.D. Cal. June 7, 2012).

Eastern District: Basalite Concrete Prods., LLC v. Nat'l Union Fire Ins. Co. of Pittsburgh, PA, No. 2:12-02814 WBS EFB, 2013 U.S. Dist. LEXIS 70597, at *15-16 (E.D. Cal. May 16, 2013).

Northern District: Ferrington v. McAfee, Inc., No. 10-CV-01455-LHK, 2010 U.S. Dist. LEXIS 106600, at *47 n.3 (N.D. Cal. Oct. 5, 2010); Axis Imex, Inc. v. Sunset Bay Rattan, Inc., No. C 08-3931 RS, 2009 U.S. Dist. LEXIS 2667, at *6-7 (N.D. Cal. Jan. 7, 2009).

Southern District: Zodiac Pool Sys. v. Aquastar Pool Prods., No. 13cv343-GPC(WMC), 2013 U.S. Dist. LEXIS 25477, at *8-9 (S.D. Cal. Feb. 22, 2013); Continental Laboratory Products, Inc. v. Medax Intern., Inc., 114 F. Supp. 2d 992, 997 (S.D. Cal. 2000).

 

2 Issues and Defenses to Claim for Unfair Competition – Trade Dress

(1) Cal. Code Civ. Proc. § 431.30(b)(2) (pleading affirmative defenses), and other standard defenses. See Chapter 1 for all defenses.

(2) Statute of Limitations: Not determined. See Magic Kitchen LLC v. Good Things Internat., Ltd., 153 Cal. App. 4th 1144, 1157 n.3 (2007) (declining to decide whether 3 or 4 year statute of limitations applied because the claim accrued more than four years before it was brought).

(3) Distinctiveness: “Marks are often classified in one of five categories of increasing distinctiveness: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful.” Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 (9th Cir. 1998).

(4) Functionality: “To determine whether a product is functional, a court should consider whether: (1) the design yields a utilitarian advantage; (2) alternative designs are available; (3) advertising touts the utilitarian advantages of the design; and (4) the particular design results from a comparatively simple or inexpensive method of manufacture.” Axis Imex, Inc. v. Sunset Bay Rattan, Inc., No. C 08-3931 RS, 2009 U.S. Dist. LEXIS 2667, at *7 n.2 (N.D. Cal. Jan. 7, 2009).