United States District Court, W.D. Texas, Austin Division
PITMAN UNITED STATES DISTRICT JUDGE
the Court is Defendants' Motion to Dismiss Pursuant to
Rule 12(b)(6) and the responsive pleadings thereto. (Dkt. 8).
Having reviewed the pleadings and the applicable law, the
Court issues the following order.
YETI Coolers, LLC, (“Plaintiff”) is a Delaware
corporation with its principal place of business in Austin,
Texas. Plaintiff engages in the development, manufacture, and
sale of premium, heavy-duty insulated drinkware. Defendants
Imagen Brands, LLC, and Ebsco Industries, Inc.,
(collectively, “Defendants”) are entities
organized under the laws of Alabama and Delaware,
respectively, with principal places of business in Alabama.
brought suit against Defendants on November 23, 2016.
Plaintiff's Complaint asserts six causes of action
against Defendants arising from the Defendants' sale of
stainless steel insulated drinkware. Specifically, these
claims are: (i) state and federal trade dress dilution; (ii)
federal and common law trade dress infringement; (iii)
federal and common law unfair competition; (iv) common law
misappropriation; and (v) unjust enrichment. Plaintiff
premises its claims on its allegation that Defendants have
unlawfully copied the design and trade dress of its 30-ounce
and 20-ounce stainless steel tumblers.
filed the instant motion to dismiss pursuant to Rule 12(b)(6)
on October 4, 2016. Defendants assert that Plaintiff has
failed to state a claim upon which relief may be granted
because: (1) Plaintiff has not adequately identified any
protectable trade dress; (2) Plaintiff has pleaded
insufficient facts to establish that its trade dress has
acquired secondary meaning or that there is a likelihood of
confusion between Plaintiff's and Defendants'
products; (3) Plaintiff has not adequately alleged claims for
false designation of origin, unfair competition, or unjust
enrichment; (4) Plaintiff has pleaded insufficient facts to
support its common law misappropriation claim; and (5)
Plaintiff has not alleged facts sufficient to demonstrate
that its trade dress is famous.
evaluating a motion to dismiss for failure to state a claim
under Rule 12(b)(6) the complaint must be liberally construed
in favor of the plaintiff and all facts pleaded therein must
be taken as true. Leatherman v. Tarrant Cty. Narcotics
Intelligence & Coordination Unit, 507 U.S. 163, 164
(1993); Baker v. Putnal, 75 F.3d 190, 196 (5th Cir.
1996). Although Federal Rule of Civil Procedure 8 mandates
only that a pleading contain a “short and plain
statement of the claim showing that the pleader is entitled
to relief, ” this standard demands more than unadorned
accusations, “labels and conclusions, ” “a
formulaic recitation of the elements of a cause of action,
” or “naked assertion[s]” devoid of
“further factual enhancement.” Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 555 (2007). Rather, a
complaint must contain sufficient factual matter, accepted as
true, to state a claim to relief that is plausible on its
face. Id. at 570. “A claim has facial
plausibility when the plaintiff pleads factual content that
allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged.”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). The
court must initially identify pleadings that are no more than
legal conclusions not entitled to the assumption of truth,
then assume the veracity of well-pleaded factual allegations
and determine whether those allegations plausibly give rise
to an entitlement to relief. If not, the complaint has
alleged-but it has not show[n]-that the pleader is entitled
to relief. Iqbal, 556 U.S. at 679 (quoting
Fed.R.Civ.P. 8(a)(2)). Throughout this process, the court
“must consider the complaint in its entirety, as well
as other sources courts ordinarily examine when ruling on
Rule 12(b)(6) motions to dismiss, in particular, documents
incorporated into the complaint by reference, and matters of
which a court may take judicial notice.” Tellabs,
Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308,
Trade Dress Infringement
Lanham Act provides a cause of action for trade dress
infringement. 15 U.S.C. § 1125(1). “‘Trade
dress refers to the total image and overall appearance of a
product and may include features such as the size, shape,
color, color combinations, textures, graphics, and even sales
techniques that characterize a particular
product.'” Amazing Spaces, Inc. v. Metro Mini
Storage, 608 F.3d 225, 251 (5th Cir. 2010) (quoting
Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526,
536 (5th Cir. 1998)).
succeed on an infringement or unfair competition claim under
the Lanham Act, a plaintiff must establish two elements.
First, the plaintiff must establish “that the mark or
trade dress, as the case may be, qualifies for
protection.” Pebble Beach, 155 F.3d at 536. To
qualify for legal protection, the trade dress must be
inherently distinctive or have achieved secondary meaning in
the public's mind; that is, it must have “come
through use to be uniquely associated with a specific
source.” Id. (internal quotations and
citations omitted). Trade dress, moreover, is only entitled
to legal protection if it is non-functional. Id.
Second, the plaintiff must show that the defendant's use
of the trade dress creates “a likelihood of confusion
in the minds of potential customers as to the source,
affiliation, or sponsorship” of the defendant's
product or service. Bd. of Supervisors for La. State
Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550
F.3d 465, 478 (5th Cir. 2008) (internal quotations and
citations omitted). “An identical test applies to
claims for trademark infringement, unfair competition, and
unjust enrichment under Texas common law.”
Primesource Building Products, Inc. v. Hillman Group,
Inc., No. 3:14-CV-2521-B, 2015 WL 11120882, at *3 (N.D.
Tex. March 31, 2015) (citing Amazing Spaces, Inc. v.
Metro Mini Storage, 608 F.3d 225, 235 n.7 (5th Cir.
2010); KLN Steel Prods., 278 S.W.3d at 440)).
purpose of the Lanham Act's protection “is
‘to secure to the owner of the [trade dress] the
goodwill of his business and to protect the ability of
consumers to distinguish among competing
products.'” Eppendorf-Netheler-Hinz GMBH v.
Ritter GMBH, 289 F.3d 351, 354-55 (5th Cir. 2002)
(quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505
U.S. 763, 774 (1992)). A pro-competitive theory underlies the
law: allowing the exclusive use of source-identifying trade
dress benefits both consumers and producers. By identifying a
single source of the product, the trade dress provides a
quick way to assure consumers that the product “is made
by the same producer as other similarly marked items that he
or she liked (or disliked) in the past, ” thus reducing
the costs associated with making purchasing decisions.
Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S.
159, 165 (1995). The law benefits producers by ensuring that
they-rather than free-riding imitators-reap the financial
rewards associated with making superior products.
Id. “The law thereby encourage[s] the
production of quality products . . . and simultaneously
discourages those who hope to sell inferior products by
capitalizing on a consumer's inability quickly to
evaluate the quality of an item offered for sale.”
Id. (internal quotations and citations omitted).
same time, the Supreme Court has recognized that
anti-competitive abuse of the Lanham Act could result from
the overextension of the law's protection for
product-design trade dress. See Wal-Mart Stores, Inc. v.
Samara Bros., Inc., 529 U.S. 205, 214 (2000). The Court
has stated that “[t]rade dress protection must subsist
with the recognition that in many instances there is no
prohibition against copying goods and products, ” and
that such copying “will have salutary effects in many
instances.” TrafFix Devices, Inc. v. Mktg.
Displays, Inc., 532 U.S. 23, 29 (2001). Accordingly,
“[w]hen trade dress is claimed for the design of a
product itself . . . the courts are especially skeptical,
wary of creating ‘back-door patents' which could
deform competition and tilt the playing field in favor of the
established firm over the brash new-comer.” 1 McCarthy
on Trademarks and Unfair Competition § 7.64 (4th ed.).
case, YETI alleges it has protectable product-design trade
dress rights in:
the overall look and appearance of the [tumblers], including,
but not limited to, the visual flow of the [tumblers]; the
curves, tapers, and lines in the [tumblers]; the design,
style, and appearance of these curves, tapers, and lines in
the [tumblers]; the visual connection and relationship
between the curves, tapers, and lines in the [tumblers]; the
style, design, and appearance of design aspects of the
[tumblers]; the design and appearance of the walls of the
[tumblers]; the design and appearance of the rim of the
[tumblers]; the design, appearance, and placement of the
taper in the side wall of the [tumblers]; the design,
appearance, and placement of the upper portion, mid portion,
and bottom portion of the side wall of the 30 oz. tumbler;
the design, appearance, and placement of the style line
around the base of the [tumblers]; the design, appearance,
and placement of the tab on the lid of the [tumblers]; the
design, appearance, and placement of the drinking opening on
the lid of the [tumblers]; the design, appearance, and
placement of the top plane of the lid of the [tumblers]; the
design, appearance, and placement of the side walls of the
lid of the [tumblers]; the color contrast and color
combinations of the [tumblers] and the tumbler lid on the
[tumblers]; and the overall look and appearance of the
tumbler and the tumbler with the tumbler lid that YETI uses
in connection with the [tumblers].
(Compl., Dkt. 1, ¶¶ 13, 15).
includes in its Complaint the following two photographs to
exemplify its claimed trade dress.
initial matter relevant to each of Plaintiff's claims,
Defendants argue that Plaintiff has not sufficiently
identified its trade dress but has instead claimed protection
for elements of a generic product design. As to trade dress
infringement specifically, Defendants assert that
Plaintiff's Complaint lacks sufficient factual
allegations to demonstrate that Plaintiff's products have
acquired secondary meaning or distinctiveness. The Court
considers each of Defendants' arguments in turn.