New York Court Issues Decision in Bottle Dispute

*This article first appeared on WTR Daily, part of World Trademark Review, in February 2018.

• Court has granted partial summary judgment in a trade dress infringement and unfair competition case involving alleged knock-off bottle.
• To prevail on federal unfair competition claim, plaintiff must show that defendant is using an imitation of the mark in commerce.
• Court must consider end consumers of products in evaluating the sophistication of buyers.

In Can’t Live Without It LLC v ETS Express Inc (Case No 17-CV-3506 (JSR), 2018 WL 401778 (SDNY), January 15 2018), the federal court for the Southern District of New York granted a partial summary judgment dismissing a federal claim for false designation of origin and unfair competition under 15 USC 1125 (a) and state claims for deceptive trade practices and false advertising. However, it refused to dismiss the federal trademark infringement and state common law trade dress infringement claims and the state common law unfair competition claims against the owner of an alleged knock-off product.

The decision holds that to prevail on a federal unfair competition claim a plaintiff must show that the defendant is using an imitation of the plaintiff’s mark in commerce. Second, a plaintiff need not pursue every copycat to ensure that its trademark or trade dress is deemed distinctive. Third, a court must consider end consumers of products in evaluating buyer sophistication under the ‘likelihood of confusion’ analysis, even if they did not buy the product directly from the defendant.

To read the full article, click here.