Googly Eye Cru, LLC v. Fast Retailing USA, Inc.

Background

Googly Eye Cru, LLC (“GEC”) brought claims for trademark infringement and trade-dress infringement under 15 U.S.C. § 1125(a). GEC alleged that it creates, sells, and promotes lifestyle and apparel products bearing a googly-eye logo. It identified two federally registered trademarks: one showing a pair of cartoon eyeballs with inward-facing pupils and one showing a single eyeball with a downward-facing pupil.

Fast Retailing USA, Inc., through its wholly owned subsidiary Uniqlo USA, LLC, launched a collaboration with A.S.H.S. Limited called the “Uniqlo x Anya Hindmarch 2023 Winter Collection.” The collection included apparel and other products displaying a pair of black-and-white eyeballs. GEC alleged that this design infringed its marks and trade dress. After GEC sent Fast Retailing a letter concerning its rights and requesting discussions, GEC filed this action.

Motion to Dismiss

The defendants moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint alleges enough facts to state a plausible claim. The court accepted the complaint’s factual allegations as true for purposes of the motion and drew reasonable inferences in GEC’s favor.

Trademark Infringement Claim

To state a trademark-infringement claim, GEC had to allege that it owned a valid mark entitled to protection and that the defendants’ use was likely to cause consumer confusion.

The court found that GEC adequately alleged ownership of protected marks. GEC had provided screenshots showing active registrations with the United States Patent and Trademark Office. Those registrations created a presumption that the marks were valid.

The defendants argued that GEC’s marks were generic or otherwise failed to identify the source of the products because googly eyes are common designs and because GEC used variations of the eyes facing in different directions. The court held that whether the designs were generic or source-identifying presented fact questions that could not properly be resolved on the pleadings. The alleged variations retained common features, including black-and-white cartoon eyeballs with black pupils, and did not defeat the claim at this stage.

The court also considered the likelihood of consumer confusion using the eight-factor test commonly called the Polaroid test. The court found that the strength of GEC’s mark, the similarity of the marks, and the close competitive relationship between the parties’ apparel products favored GEC. The absence of evidence of actual confusion, product quality, and consumer sophistication were neutral. The defendants’ lack of alleged bad faith favored the defendants. The court treated the “bridging the gap” factor as irrelevant because the products were already in competitive proximity.

Although the factors did not decisively favor either side, the court concluded that they modestly favored GEC and that the likelihood-of-confusion issue required discovery and further factual development. GEC therefore adequately stated a trademark-infringement claim.

Trade-Dress Claim

Trade dress concerns the design and appearance of a product and the overall visual image presented to customers. To state a trade-dress-infringement claim, GEC had to allege that the design was nonfunctional, inherently distinctive or had acquired secondary meaning, and was likely to cause confusion.

The court found that the design feature was not essential to the use or purpose of the apparel and was therefore nonfunctional. Because GEC had registered the design with the United States Patent and Trademark Office, the court found that GEC adequately pleaded distinctiveness. The court also held that GEC did not need to define the precise contours of registered trade dress at the pleading stage. Based on its earlier likelihood-of-confusion analysis, the court found that GEC adequately pleaded the final element as well.

Disposition

The court denied the motion of Fast Retailing USA, Inc., Uniqlo USA, LLC, A.S.H.S. Limited, and Does 1–10 to dismiss GEC’s complaint. The defendants were ordered to answer the complaint within 21 days of the order.