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Game on! Ninth Circuit revives trade dress infringement claim

February / March 2023 IP Newsletter

Two competing companies created their own three-foot-wide versions of the popular game “four-in-a-row” or “horizontal checkers.” P&P Imports (P&P) was trying to claim trade dress in the design of its four-in-a-row apparatus and color scheme. A trade dress dispute ensued between P&P (the plaintiff) and another gaming company, offering the U.S. Court of Appeals for the Ninth Circuit the opportunity to describe the proper standard for “secondary meaning.”

Imitation fails to flatter

The plaintiff sold outdoor games and sporting goods, including its red, white and blue version of four-in-a-row. It began selling the game through various e-commerce channels in December 2016, and the game quickly climbed the best-seller ranks on Amazon.

Sometime in 2017, the defendant learned about the plaintiff’s product. It bought a copy and sent samples to its manufacturer. In October 2017, the defendant began selling an almost identical game.

The plaintiff sued the defendant for trade dress infringement. The trial court dismissed the case before trial, finding the plaintiff didn’t present sufficient evidence of secondary meaning, as required to prove a trade dress claim. The plaintiff appealed.

Appellate court doesn’t second dismissal

The Ninth Circuit reversed the lower court after finding that it applied the wrong standard for determining secondary meaning. Under the proper standard, the plaintiff had indeed presented sufficient evidence.

Secondary meaning exists when, in the minds of the public, the primary significance of trade dress is to identify the source of the product, rather than the product itself. It doesn’t have to be linked to a particular company; it’s sufficient if consumers link the trade dress to any single source. The trial court had incorrectly required the plaintiff to show that consumers specifically associate its trade dress with the plaintiff itself.

Courts assess many factors to determine whether secondary meaning exists, including:

Notably, unlike other federal appellate courts, the Ninth Circuit doesn’t require an intent to confuse consumers.

Nor does the court require a specific combination of the factors, though it has found the presence of intentional copying and survey evidence sufficient to proceed to trial. Because the plaintiff had presented evidence of both, the court ruled the dismissal improper.

The jury’s turn

Although the court allowed the case to proceed, the claims may yet fail. A jury might find that the defendant’s copying of the game or the plaintiff’s marketing doesn’t establish secondary meaning.