Subversive Tools, Inc. v. Bootstrap Farmer LLC

Background

Subversive alleged that its WINSTRIP® air-pruning tray had a distinctive trade dress: a diagonal arrangement of square planting cells and air openings. It claimed that the design was nonfunctional, had acquired meaning identifying Subversive as the source, and had been used continuously for nearly thirty years. Subversive alleged that Bootstrap introduced a competing tray with a substantially similar configuration, marketed it through online channels, and used references to the “iconic Wingerden design” and WINSTRIP-related search terms.

Subversive asserted four claims: trade-dress infringement under the federal Lanham Act, federal trade-dress dilution, trade-dress dilution under New York General Business Law § 360-l, and unfair competition under New York common law. Bootstrap moved to dismiss the First Amended Complaint under Federal Rule of Civil Procedure 12(b)(6), which permits dismissal when a complaint does not allege enough facts to support a legally plausible claim.

Trade-Dress Infringement

The court held that Subversive plausibly alleged the three required elements of Lanham Act trade-dress infringement: nonfunctionality, secondary meaning, and a likelihood of consumer confusion.

On nonfunctionality, Subversive alleged that the diagonal top layout did not affect airflow, root pruning, tray strength, seedling growth, manufacturing cost, or performance. It also alleged that other top-surface designs could achieve the same functional results. The court found these allegations sufficient at the pleading stage and stated that competing factual assertions about functionality could not be resolved on a motion to dismiss.

On secondary meaning, the court found that Subversive plausibly alleged that consumers associate the design with a particular source. Relevant allegations included decades of use, sales, advertising, unsolicited media coverage, and recognition in the horticultural industry. The absence of consumer-survey evidence did not require dismissal at this stage.

On likelihood of confusion, the court found that the alleged strength of Subversive’s design, the substantial similarity between the trays, and the parties’ competition through overlapping sales channels and customer groups supported a plausible claim. The court treated several other factors as neutral, including the absence of alleged actual confusion and unresolved questions about Bootstrap’s intent. The motion to dismiss the Lanham Act infringement claim was DENIED.

Federal Trade-Dress Dilution

The court held that Subversive failed to plausibly allege that the WINSTRIP® trade dress was famous under the federal dilution statute. Federal dilution protection requires recognition by the general consuming public nationwide, not merely recognition within a specialized market. The court concluded that Subversive’s allegations described recognition among professional growers, greenhouse operators, and small-farm practitioners, rather than broad public fame.

The court therefore GRANTED the motion as to the federal trade-dress dilution claim and DISMISSED without prejudice Count II. Subversive was granted leave to file a Second Amended Complaint alleging sufficient facts in good faith. The court set December 15, 2025, as the amendment deadline.

New York Trade-Dress Dilution

The court held that Subversive plausibly alleged a claim under New York General Business Law § 360-l. Unlike the federal dilution claim, the state claim did not require fame among the general public. The alleged distinctiveness of the design, near-identical competing tray, overlapping products, and shared customers and marketing channels were sufficient to support a plausible risk of blurring. The motion to dismiss Count III was DENIED.

New York Unfair Competition

The court also held that Subversive plausibly alleged common-law unfair competition. This claim required an additional showing of bad faith. The court found that the allegations about Bootstrap’s similar design, public statements, and marketing could support an inference that Bootstrap intended to benefit from Subversive’s goodwill, although the issue required factual development. The motion to dismiss Count IV was DENIED.

Disposition

Judge Nelson S. Roman ordered that Bootstrap’s motion to dismiss the First Amended Complaint was GRANTED in part and DENIED in part. Dismissal was denied as to Counts I, III, and IV. Count II, the federal trade-dress dilution claim, was dismissed without prejudice, with leave to amend. The court stated that claims dismissed without prejudice could later be treated as dismissed with prejudice if Subversive failed to amend on time and could not show good cause for the failure.