United States District Court, D. Rhode Island
REPORT AND RECOMMENDATION
PATRICIA A. SULLIVAN, UNITED STATES MAGISTRATE JUDGE
September 25, 2018, Plaintiff Little Kids, Inc., initiated
this trademark action against Defendant 18th Avenue Toys,
Ltd., asserting six registered federal trademarks pursuant to
the Lanham Act, 15 U.S.C. § 1051, et seq., and
Rhode Island statutory and common law. ECF No. 1
(“Compl.”). The parties in this case are both
competitors in the children's toy industry. The accused
product is Defendant's version of a “bubble
solution product, ” Compl. ¶ 18, which Plaintiff
has trademarked and sells as a BUBBLE
BUCKET®. Both Defendant's accused product and
Plaintiff's BUBBLE BUCKET® are sold as toys that hold
bubble solution and a wand children can use to blow bubbles.
Shortly after the Complaint was filed, the Court issued a
temporary restraining order prohibiting Defendant from
selling or offering for sale products with terms related to,
or products otherwise related to, Plaintiff's trademarks.
ECF Nos. 10, 12, 13.
responded to the Complaint with denials and affirmative
defenses, but also with a single-count Counterclaim. ECF No.
15 at 13-17 (“Countercl.”). The Counterclaim
seeks a judicial declaration that Plaintiff's purported
trade dress is invalid. Id.; Compl. ¶¶
29-31, 40, 51, 55. In support of the assertion of invalidity,
the Counterclaim alleges that Plaintiff's purported trade
dress is functional, generic, not distinctive and
unprotectable. Countercl. ¶¶ 6-8, 18.
now challenges the legal viability of the Counterclaim with a
motion to dismiss pursuant to Fed.R.Civ.P. 12(b)(6). ECF No.
16. Plaintiff argues that Defendant could have sought a
declaration of noninfringement of Plaintiff's
trade dress, but that a counterclaim seeking a declaration of
“invalidity of trade dress” is
unavailable as a matter of law. In support of its motion,
Plaintiff points out that its Complaint alleges four causes
of action, each based on infringement and dilution of its
trademarks, but that the Complaint does not assert an
independent claim of trade dress infringement. Defendant
counters that the Complaint purports to claim not only
trademark infringement and dilution, but that it also
includes the following allegations: that Defendant's
versions of the toy are similar and in some cases identical
to Plaintiff's “in appearance, sound, connotation
and commercial impression”; that Plaintiff has demanded
that Defendant cease from using Plaintiff's “trade
dress, ” but Defendant has wrongly continued to do so;
that Defendant has copied the style and shape of
Plaintiff's toy; and that Defendant has knowingly and
maliciously used a confusingly similar imitation to the toy
in derogation of Plaintiff's rights in its trade dress.
Compl. ¶¶ 29-31, 40, 51, 55. Defendant also points
out that Plaintiff's lengthy prayer for relief includes a
request for an injunction barring Defendant from using
Plaintiff's trade dress and from using any design that is
likely to dilute the distinctiveness of Plaintiff's trade
dress. Id. at 9-10. In response to these
allegations, Defendant's Counterclaim asks for a
declaration that the toy's overall appearance is
functional and generic and is therefore insufficiently
distinctive as to amount to protectable trade dress.
Countercl. at 17.
Fed.R.Civ.P. 12(b)(6) motion has been referred to me for
report and recommendation. 28 U.S.C. § 636(b)(1)(B). For
the reasons that follow, I recommend that the motion be
is a Rhode Island toy manufacturer, which owns six registered
federal trademarks related to the toy. Compl. ¶¶ 1,
5-10. Since acquiring the trademarks, Plaintiff has utilized
them in the production and sale of the toy. See id.
¶¶ 11-14. Defendant is a New York corporation that
is engaged in the toy business in New York and online.
Id. ¶ 15; ECF No. 15 ¶ 15
(“Answer”). It has purchased Plaintiff's
products for resale. Answer ¶¶ 16-17. According to
Plaintiff, this buy-sell relationship allowed Defendant to
become familiar with Plaintiff's toy; with this
familiarity, Plaintiff alleges, Defendant intentionally
commenced infringing Plaintiff's trademarks and
manufacturing and selling products that are confusingly
similar to the toy. See Compl. ¶¶ 18-21;
Answer ¶¶ 18-21 (denying these allegations). Based
on these contentions, Plaintiff's verified Complaint
presents four claims:
Count I: Federal Trademark Infringement
Count II: False Designation and Representation of Services in
Violation of Section 43(a) of the Lanham Act
Count III: Dilution of Trademarks
Count IV: Common Law Trademark Infringement and Unfair
Compl. at 1, 6, 8. Plaintiff seeks injunctive relief ordering
Defendant, inter alia, to stop selling and to
impound allegedly infringing products; it also asks for an
award of money damages, including punitive damages based on
willful and deliberate infringement. Id. at 9-11.
“trade dress” is not the basis for the claims set
out in the four enumerated Counts, as summarized
supra, there are multiple references to it in Counts
I, II and IV. Id. ¶¶ 29-31, 40, 51, 55
(e.g., “similarity . . . of Defendant's and Little
Kids' products and trade dress”; “cease and
desist from using the Little Kids Marks, trade dress”;
“deliberate and malicious use of a confusingly similar
imitation of the Little Kids Marks and trade dress”).
And Plaintiff's prayer for relief seeks to enjoin
Defendant from using or diluting Plaintiff's “trade
dress.” Id. at 9-10. As relevant here, the
Counterclaim contends that Plaintiff's purported trade
dress is not protectable because the toy's shape and
appearance are functional, generic and not distinctive, in
that it is simply a bucket that prevents spills and has a
handle. Countercl. ¶¶ 4-8. Corroborating this
allegation is the factual assertion (with illustrations) that
other competitors use the same or a similar bucket for their
bubble solution products. Id. ¶¶ 14-15.
Defendant has also raised trade dress invalidity as an
affirmative defense. Answer at 12. The motion to dismiss
challenges only the Counterclaim, not the trade dress
invalidity affirmative defense.