Subversive Tools, Inc. v. Bootstrap Farmer LLC

Background

Subversive Tools, Inc. alleged claims against Bootstrap Farmer, LLC under the federal Lanham Act, New York General Business Law § 360-1, and New York common law. The claims concerned the alleged infringement and dilution of trade dress—the overall appearance and design associated with a product—used for Subversive Tools’ WINSTRIP air-pruning nursery tray.

According to the complaint, the WINSTRIP design had been used in commerce for many years and had received attention in farming-related publications and videos. Subversive Tools alleged that Bootstrap Farmer sold air-pruning trays with a virtually identical design, described its product as its own version of the design, and used Subversive Tools’ meta tags to direct consumers searching for WINSTRIP products to Bootstrap Farmer’s website.

Bootstrap Farmer moved to dismiss under Federal Rule of Civil Procedure 12(b)(6). At that stage, the court accepted well-pleaded factual allegations as true but required the complaint to contain enough factual matter to make the claims plausible, rather than relying on legal conclusions or bare statements of the elements.

Federal trade-dress infringement claim

For trade-dress infringement under the Lanham Act, the plaintiff had to plead that the claimed design was nonfunctional, had acquired secondary meaning, and created a likelihood of confusion between the parties’ goods. The court focused on nonfunctionality, which means that the claimed design features serve to identify the product’s source rather than perform a useful function.

The court held that Subversive Tools had not adequately pleaded nonfunctionality. The complaint repeatedly stated that the trade dress was nonfunctional and that the diagonal orientation of the tray’s cells and air spaces served no functional purpose, but the court found those statements conclusory and circular. The complaint’s reference to an expired design patent also did not provide enough support. The court explained that a design patent could be some evidence of nonfunctionality, but the patent alone was insufficient here, particularly because the complaint offered no adequate factual allegations beyond its conclusory assertions. The court also rejected the complaint’s reliance on alternative designs as a basis for establishing nonfunctionality.

The court dismissed the Lanham Act trade-dress infringement claim without prejudice and granted leave to amend with additional facts that might show nonfunctionality. Because the claim failed on that requirement, the court did not address the other requirements for infringement.

Federal trade-dress dilution claim

For federal trade-dress dilution, the plaintiff had to show that the trade dress was nonfunctional and famous. The court explained that federal dilution law requires recognition by the general consuming public of the United States, not merely substantial recognition within a specialized market.

The court held that the complaint’s allegations—including long use, advertising, sales, and coverage in farming-related publications and videos—at most suggested a strong reputation within a niche farming market. The complaint did not plausibly allege that the WINSTRIP trade dress was recognized by the general United States public. The court therefore dismissed the Lanham Act dilution claim without prejudice and granted leave to amend with additional facts that might show both nonfunctionality and fame.

State-law claims and disposition

The New York dilution and common-law unfair-competition claims were the third and fourth causes of action. Because the court dismissed the federal claims, which were the only claims providing original federal jurisdiction, it declined to exercise supplemental jurisdiction over the state-law claims. Those claims were dismissed without prejudice to recommencing them in state court.

The court granted Bootstrap Farmer’s motion to dismiss the first and second causes of action without prejudice. Subversive Tools was granted leave to file an amended complaint by October 18, 2024. The court stated that an amended complaint would replace, rather than supplement, the original complaint, and that any claims Subversive Tools wished to pursue had to be included in or attached to it. If no amended complaint were filed by the deadline, the claims dismissed without prejudice would be deemed dismissed with prejudice. The clerk was directed to terminate the motion.