Seattle Trademark Lawyer

After sanctioning Mother, LLC, twice for discovery violations, the Western District found in its favor on August 24, denying L.L. Bean, Inc.’s motion for summary judgment dismissal of Mother’s Lanham Act and state law claims, namely, that L.L. Bean’s manufacture, marketing and sale of a hunting vest infringes the trade dress of Mother’s competing hunting vest. (STL’s posts on the sanction orders here and here.)

        
Trade dress infringement?
Mother Daypack (with belt extended) and Bean Upland Vestpack 

The court characterized the undisputed facts as follows: “The parties met in December 2004 to discuss the possibility of Bean selling the Mother Daypack, an upland hunting pack designed and sold by Mother. Bean began selling the Mother Daypack through its website and catalogue in July 2005. The Bean catalogue containing a one-page display of the Mother Daypack, was distributed to an estimated 1.2 million households. Bean then decided to produce its own Upland Vest Pack which they began selling in July 2006, terminating sales of the Mother Product.”

In order to succeed on its trade dress claims at trial, the court found Mother will need to prove: (1) secondary meaning, (2) non-functionality, and (3) likelihood of confusion. Magistrate Judge Kelley Arnold found that genuine issues of disputed fact on each of these elements made summary judgment improper.

On the secondary meaning element, the court found: “This is not a case where (1) there had been no relationship between the parties before the alleged infringement; (2) the alleged infringer had not sold the very product at issue prior to manufacturing the product in dispute; (3) there was a lapse of time between the utilization of plaintiff’s product by defendant and defendant’s production of the challenged product. While these non-exclusive factors are not dispositive they raise sufficient inferences to overcome summary judgment with regard to secondary meaning.

As to functionality, the court found: “Clearly the product in question has a specific functional purpose. Arguably, some of the trade dress issues raised by plaintiff are functional, some are quasi-functional, and some design components. The court cannot say as a matter of law that plaintiff’s trade dress allegations must be disposed of on the basis of functionality.”

“With regard to the element of confusion, the fact that defendant sold plaintiff’s product under plaintiff’s name and in rapid succession replaced it with [its] own remarkably similar product creates a threshold for confusion. If the fact-finder were to find ‘intentional copying’ that alone could create a question of fact with regard to confusion based on the advertising and marketing techniques.”

The case cite is Mother, LLC v. L.L. Bean, Inc., No. 06-5540 (W.D. Wash. 2007).