Reveron v. Zumiez, Inc.

Background

Stephanie M. Reveron filed a Second Amended Complaint against numerous defendants. The defendants moved to dismiss it for failure to state a claim, meaning they argued that the allegations were not legally sufficient even if accepted as true. Magistrate Judge Gorenstein issued a report and recommendation advising that the motion be granted as to all defendants except Amazon.com Sales, Inc. (Amazon), Redbubble, Inc. (Redbubble), and Etsy, Inc. (Etsy).

The opinion discusses allegations concerning the use of words or letters, including “LES NYC,” on products and the possibility that those uses could involve trademark infringement. It also discusses whether the words were used symbolically, whether the products displayed the defendants’ own trademarks, whether the words could be understood as geographical descriptions, and whether the defendants could rely on fair use. Fair use is a defense that may apply when a party uses words for their ordinary descriptive meaning rather than as a trademark. The court noted that this defense is fact-intensive and often unsuitable for resolution at the motion-to-dismiss stage.

Objections

Amazon, Redbubble, and Etsy objected to the recommendation. Amazon and Redbubble argued that the recommendation lacked legal support for distinguishing the claims that should be dismissed from those that should continue. They also argued that the recommendation failed to account for conclusions by the Trademark Office and a Ninth Circuit decision, LTTB LLC v. Redbubble, Inc.

The court rejected those arguments. It explained that the Trademark Office had found only that Reveron’s first specimen—words on a T-shirt—was insufficient to register a trademark because the words were ornamental and did not identify the source of the goods. The court said that finding did not resolve whether words on a T-shirt could ever infringe a registered trademark that identifies the source of goods.

The court also agreed with the recommendation’s treatment of LTTB LLC. It noted that the Ninth Circuit decision involved the separate doctrine of aesthetic functionality, arose on summary judgment, and was based on a more developed factual record. The court found unpersuasive a footnote in that decision discussing, without adopting, an argument that words placed on products cannot identify a source.

Etsy separately argued that the recommendation failed to consider how its products were marketed, including captions, descriptions, sample photographs, and other details that might suggest the words were geographical descriptions. The court recognized that packaging and advertising can matter to fair use, but held that it was not clear error to evaluate the products themselves at the motion-to-dismiss stage. The court stated that the parties could explore the effects of packaging and marketing in discovery.

Ruling

Judge Jessica G. L. Clarke adopted the report and recommendation in full. The court granted in part and denied in part the defendants’ motion to dismiss. Claims against all defendants except Amazon, Redbubble, and Etsy were dismissed. The opinion does not state that the claims remaining against those three defendants were finally resolved; it states that they were not dismissed at this stage. The Clerk of Court was directed to terminate the specified docket entry.