Seattle Trademark Lawyer

Plaintiff Larin Corporation’s Section 43(a) claim against Alltrade Inc. started out as one for trade dress but morphed into one for false advertising.

Both parties sell hydraulic-lift stools styled like motorcycle seats. Larin Corp. claimed the photographs and coloring on the packaging in which Alltrade sells its stools are confusingly similar to the photographs and coloring on the packaging in which Larin Corp. sells its stools.

Following Larin Corp.’s shift in theories during discovery, Alltrade moved for summary judgment on its Section 43(a) claim on the basis of judicial estoppel — that Larin Corp. had elected false advertising as its theory and could not pursue its trade dress theory. The Central District of California granted the motion and dismissed the claim.

On appeal, the Ninth Circuit reversed and sent it back to the Central District. It found that while the district court was understandably unhappy with Larin Corp., judicial estoppel did not apply.

“We do not opine as to whether the district court correctly concluded that Larin’s attorney attempted to mislead Alltrade’s counsel during discovery — and the district court’s frustration with said counsel’s lack of clarity is certainly understandable — but assuming there is error to be remedied here, judicial estoppel is the wrong tool for the job,” the court found.

Instead, the court found that Larin Corp. did not adopt clearly inconsistent positions; the district court did not rely on Larin Corp.’s original theory; and Larin’s new theory did not prejudice Alltrade. In other words, none of the elements of judicial estoppel existed.

“Larin’s scattered references to false advertising during discovery do not support the contention that Larin adopted disparate positions that were clearly inconsistent with one another. Throughout the record, the essential nature of the dispute is readily apparent. The record is replete with claims about and discovery related to the similarities between the Larin and Alltrade boxes. Claims of false advertising and trade dress infringement are not mutually exclusive, and plaintiffs can and do advance both theories in a complaint. Alltrade acknowledged during the pretrial conference that the elements of false advertising and trade dress infringement overlap to some degree. Larin’s self-definition of ‘trade dress’ during discovery muddied the waters, but in the end did not change the essential nature of its claims.

“We have also ‘restricted the application of judicial estoppel to cases where the court relied on, or ‘accepted,’ the party’s previous inconsistent position.’ Nothing in the record demonstrates that Larin succeeded in persuading the district or magistrate judges to accept the position that Larin had abandoned its trade dress infringement claim.

“Finally, there is insufficient evidence to support the claim that Alltrade was prejudiced by Larin’s behavior. Despite the district court’s determination that Larin’s counsel was playing ‘bait-and-switch’ with its theories of liability, Alltrade was able to obtain evidence relevant to both false advertising and trade dress infringement defenses. Indeed, while Alltrade asserted on appeal that it had not conducted sufficient discovery on trade dress infringement elements like secondary meaning, its final pretrial disclosure tells a different story. There, Alltrade asserted, among other things, that its expert was ready to testify regarding secondary meaning in the Larin and Alltrade packaging.”

The case cite is Larin Corp. v. Mueller, 2010 WL 444344, Nos. 08-55625, 08-55790, 08-56191 (9th Cir. Feb. 5, 2010).