Trove Brands LLC v. Jia Wei Lifestyle Inc

Background

Trove Brands LLC, doing business as The BlenderBottle Company, and Runway Blue, LLC sued Jia Wei Lifestyle Inc. Trove Brands alleged that Jia Wei developed, manufactured, imported, advertised, and sold shaker bottles and lids that copied the BlenderBottle product. The claims included patent infringement, registered-trademark infringement, product-design trade-dress infringement, deceptive business practices under New York General Business Law § 349, and New York common-law unfair competition.

Trove Brands alleged that its lid trade dress included a recessed dome, conical spout, pivoting arm, and circular spout closure. It described its bottle trade dress as the overall design of the bottle and lid, including a generally cylindrical bottle, a recessed domed lid, a conical spout, brackets, and a flip-cap. The lid trade dress was covered by a registered trademark, and Trove Brands alleged that it was the exclusive licensee of that trademark and two patents. Trove Brands did not claim to own a patent or trademark in the bottle trade dress.

Trove Brands alleged that Jia Wei’s bottles were identical or nearly identical, were sold to the same customers through overlapping channels, and were likely to confuse consumers about whether the products were affiliated with BlenderBottle. It also alleged that Jia Wei continued distributing the products after receiving demands to stop.

Motion to dismiss

Jia Wei moved under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint states a legally sufficient claim, to dismiss the trademark, trade-dress, New York General Business Law § 349, and unfair-competition claims. The patent claim was not included in that dismissal request. At this stage, the court was required to accept well-pleaded factual allegations as true and draw reasonable inferences for Trove Brands.

Federal trademark and trade-dress claims

The court denied dismissal of the claims involving the registered trademark, lid trade dress, and bottle trade dress. It held that the registered trademark was presumed distinctive because it was registered on the federal Principal Register, and Jia Wei had not overcome that presumption at the pleading stage. The court also credited Trove Brands’ allegation that the allegedly infringing use continued after registration.

For the trade-dress claims, the court held that Trove Brands had described the claimed design features with enough precision to identify what it sought to protect. The court also held that Trove Brands plausibly alleged that the designs were nonfunctional because it identified alternative bottle designs and alleged that the claimed features were not essential to the product’s use, did not reduce manufacturing cost or improve quality, and were not a competitive necessity.

The court treated the lid trade dress as plausibly distinctive because it was registered. The bottle trade dress was unregistered product-design trade dress, so Trove Brands had to plausibly allege secondary meaning—meaning that consumers primarily associate the design with the product’s source rather than merely with the product itself. The court found those allegations sufficient, citing allegations about advertising, media attention, celebrity use, sales, market leadership, revenue, and use of the design since 2003.

The court also found that Trove Brands plausibly alleged a likelihood of consumer confusion. It relied on allegations that the products were identical or nearly identical, were sold to the same customers through overlapping channels, and appeared designed to trade on BlenderBottle’s reputation. The court noted that the ultimate confusion inquiry is fact-intensive and could be addressed after discovery.

New York claims

The court granted dismissal of the New York General Business Law § 349 claim. That statute addresses deceptive business practices affecting the public interest. The court held that Trove Brands alleged only the type of consumer injury ordinarily associated with trademark or trade-dress infringement, not a specific and substantial injury to the public beyond that ordinary infringement.

The court denied dismissal of the New York common-law unfair-competition claim. That claim generally requires proof of conduct resembling trademark or trade-dress infringement plus bad faith. The court found that allegations that Jia Wei’s bottles appeared identical, that some carried labels reading “Blender Bottle,” and that Jia Wei had not offered a benign explanation plausibly supported an inference that Jia Wei deliberately copied the product to capitalize on Trove Brands’ goodwill.

Motion to strike

Jia Wei separately moved under Rule 12(f) to strike allegations concerning the presumption of protectability associated with the registered trademark and alleged that Trove Brands obtained the registration through improper conduct. The court denied the motion to strike. It held that the pleadings and attached exhibits did not support Jia Wei’s accusation and that the issue could be explored in discovery. The court stated that the denial was without prejudice to Jia Wei’s ability to investigate those factual claims during discovery.

Judicial notice

The court granted Jia Wei’s request for judicial notice as to Exhibits A and B, which were documents publicly filed with the United States Patent and Trademark Office. It denied the request as to Exhibits C through H because Jia Wei sought to use those materials to dispute factual allegations in the amended complaint, which was improper on a motion to dismiss.

Disposition and next steps

The court granted the Rule 12(b)(6) motion only as to the New York General Business Law § 349 claim and denied it otherwise. It denied the Rule 12(f) motion to strike. It granted the judicial-notice motion in part as to Exhibits A and B and denied it as to Exhibits C through H. The court stated that it expected to address the patent-infringement claim at summary judgment after a claim-construction hearing and would separately schedule that hearing and fact and expert discovery.