Cardinal Motors, Inc. v. H&H Sports Protection USA Inc.

Background

Cardinal Motors designs motorcycle helmets and licenses its designs. It licensed its “The Bullitt” helmet design to Bell Sports, Inc., which manufactures the helmet. H&H Sports Protection manufactures and sells motorcycle helmets, including the “Torc-1.” Cardinal Motors alleged that the Torc-1 copied The Bullitt’s trade dress—the product’s overall design and appearance—and asserted federal claims under Section 43(a) of the Lanham Act, along with related New York and California unfair-competition claims.

Cardinal Motors previously filed two amended complaints. The court dismissed both without prejudice because the alleged trade dress was not described precisely enough and Cardinal Motors did not adequately allege that the design was distinctive. The court had warned that the next complaint would be the final opportunity to amend.

The Third Amended Complaint

The Substitute Third Amended Complaint presented two alternative theories. The “General Trade Dress” covered features such as the helmet’s curved top, thin chin protector and chin bar, flattish base, eyeport, rear overhang, squat appearance, and pivot-point escutcheon. The “Detailed Trade Dress” repeated much of that description and added features such as metallic borderlines and brown leather accents.

H&H moved under Federal Rule of Civil Procedure 12(b)(6) to dismiss the complaint for failure to state a legally sufficient claim. H&H also moved under Rule 12(f) to strike references to treble damages, counterfeiting, and helmet features that were not directly tied to the claimed trade dress.

Court’s Analysis

For a product-design trade-dress claim, the plaintiff must allege a precise description of the claimed trade dress, that it is not functional, that it has acquired secondary meaning, and that the defendant’s use is likely to confuse consumers. The court held that the General Trade Dress remained too broad and imprecise. Although it listed many details, the description covered the entire helmet and general categories of features rather than identifying a particular protectable design. The court also held that Cardinal Motors’ allegations that The Bullitt had a “distinctive general overall shape” and differed from other helmets were conclusory. Listing differences between The Bullitt and third-party helmets did not adequately explain why the claimed design was distinctive.

The court did not separately analyze the sufficiency of the Detailed Trade Dress because it substantially relied on the General Trade Dress, which failed to state a claim. The Detailed Trade Dress claim therefore failed for the same reasons. The court also dismissed the state-law unfair-competition claims because the federal claims had been dismissed and the case was still at an early stage.

Disposition

The court granted H&H’s motion to dismiss Cardinal Motors’ Lanham Act trade-dress claims in Counts I and IV and its state-law unfair-competition claims in Counts II and III, with prejudice. The court dismissed the Substitute Third Amended Complaint with prejudice because Cardinal Motors had failed three times to withstand a motion to dismiss after being given opportunities to amend. The court denied H&H’s motion to strike as moot.