AirWair International Ltd. v. Pull & Bear Espana SA

Nature of the order

This was a final pretrial order issued after a July 27, 2021, conference. The case was set for a jury trial beginning August 2, 2021. The order states that all parties were represented by counsel.

Trial procedures

The court ordered a jury of eight members and allowed each side four peremptory challenges, meaning challenges that do not require a stated reason. The court would conduct general questioning of prospective jurors, with up to 20 minutes for each side’s counsel to question the panel. The parties had to confer on a neutral statement of the case for the jury panel.

The parties had to confer about proposed jury instructions and submit one complete set of agreed and disputed instructions. They also had to submit organized sets of trial exhibits. The trial was estimated to last five days. Each side received up to 30 minutes for opening statements, seven hours to present evidence, and one hour for closing argument. Jury selection was scheduled to begin August 2 at 8:30 a.m.; the order also addressed daily breaks and stated that the court does not conduct trials on Fridays, although juries may deliberate on Fridays.

Jurors and counsel were required to wear masks. Witnesses testifying and counsel questioning them could remove their masks, and the parties were directed to make efforts to maintain social distance.

Motions in limine

A motion in limine is a request to decide before trial whether particular evidence or arguments may be presented to the jury. The court ruled as follows:

- Airwair’s motion #1 to exclude evidence or argument about settlement negotiations was granted. - Airwair’s motion #2 to exclude evidence or argument about sales of third-party shoes on third-party websites was denied, provided the evidence was not used to prove the truth of statements appearing on those websites. The court found the evidence relevant to the strength of Airwair’s alleged trade dress. - Airwair’s motion concerning prosecution history of its registrations and applications was granted in part and denied in part. The court granted the request to exclude prosecution history relating to Airwair’s unasserted trade-dress registrations and denied the request concerning its asserted trade-dress registrations. - Pull & Bear’s motion #1 to exclude Airwair’s use of the Klein Survey to prove likelihood of confusion for three non-tested ITX products was denied. - Pull & Bear’s motion #2 to limit testimony by Bertrand Guillaume and Robert Klein was denied. The order stated that Klein could not testify beyond his report, but the witnesses could address evidence already presented by Pull & Bear, so long as rebuttal testimony did not introduce new arguments or evidence. - Pull & Bear’s motion #3 to exclude Airwair’s allegedly illegible evidence was denied. The court noted that Pull & Bear had not notified Airwair of the alleged deficiencies until one day before filing the motion and that Airwair represented it had provided legible evidence afterward. - Pull & Bear’s motion #4 to prevent Airwair from relying on the Klein Survey to prove secondary meaning was denied. The court stated that Klein could not testify beyond his report, but counsel could argue that the survey was evidence of secondary meaning. - Pull & Bear’s motion #5 to exclude Guillaume’s testimony about Airwair’s advertising and sales was denied. - Pull & Bear’s motion #6 to exclude Airwair’s complaints, cease-and-desist letters, and consent decrees from other cases was granted because the evidence was unduly prejudicial, confusing, and time-consuming. The court stated that Airwair’s witnesses could still testify generally about its sales, marketing, and efforts to enforce and protect its marks.

Other matters and effect

The court reconsidered its earlier denial of Airwair’s request to have witnesses appear remotely and ruled that either side could present witnesses remotely. The parties also had to submit briefs about whether “restriction” was properly an issue in the case and, if so, what related issues would be presented to the jury.

This order managed the trial and resolved evidence questions; it did not decide the parties’ underlying trademark or trade-dress claims.