2019-2020 Saul Lefkowitz Moot Court Competition

Please note:

A. The Facts in this Opinion are fictional. The parties’ names, their businesses, and their trademarks and registrations are not intended, and should not be understood, to refer to or reference any individual (living or dead) or any institution, extant or defunct. Any resemblance to any real person, organization, product or situation is purely coincidental. The Opinion below of the U.S. District Court for the Southern District of Utopia is imaginary. Conclusions of law within the Opinion do not represent the opinion of the International Trademark Association (“INTA”) or any of its members. No inference should be drawn about any actual person, organization, product or situation on the basis of any facts or conclusions of law in this Opinion. The Opinion was drafted without knowledge of any person’s claims with respect to any trademarks or other claims of rights that are the same as or similar to those mentioned in the Opinion, and INTA takes no position with respect to any person’s ownership of, or rights to, such trademarks or other claims of rights.

B. Frequently, issues in a case that conceivably could be appealed are not. This Circuit,

like most, will not entertain arguments that are not fairly comprehended within the formal “Issues on Appeal,” which in this case are:

ISSUE NO. 1:

Did the District Court err in finding that the color red, when used in connection with retail gasoline and convenience store services, is aesthetically functional?

ISSUE NO. 2:

Did the District Court err in finding that while Plaintiff’s alleged roof design trade dress was not inherently distinctive primarily because it is a common basic shape, it had nevertheless acquired distinctiveness under 15 U.S.C. § 1052(f)?

ISSUE NO. 3:

Did the District Court err in finding that due to the weakness of Plaintiff’s asserted roof design trade dress, and the differences in the Plaintiff’s and Defendant’s marks and services, consumer confusion was not likely?

This year’s Problem is a denial of Plaintiff’s summary judgment motion that is appealed by the Plaintiff. While denials of summary judgement may sometimes not be final decisions for purposes of appeal, in this case it is. The parties do not question the procedure on the appeal.

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IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF UTOPIA

GAS & GOODIES, LLC

Plaintiff,

vs.

CHARGE ‘N SNACK, LLC

Defendant.

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: Civ. Dkt. 19-1252

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Vaughan, R.

Plaintiff Gas & Goodies, LLC (“Plaintiff” or “Gas & Goodies”) filed suit against

defendant Charge ‘N Snack, LLC (“Defendant” or “Charge ‘N Snack”) for trade dress

infringement claiming that both the color and shape of the roof of Defendant’s vehicle charging

stations are confusingly similar to the roof of Plaintiff’s gas stations.

Plaintiff now moves for summary judgment. In particular, Plaintiff argues that it owns

trade dress rights under the Lanham Act for both the color red and the shape of its roof design,

and that Defendant’s (1) use of the color red and (2) use of a similarly-shaped roof is confusingly

similar to Plaintiff’s established trade dress rights. Defendant opposes the motion, arguing that

neither Plaintiff’s alleged color red nor Plaintiff’s claimed roof design is protectable and, even if

protectable, confusion is unlikely and thus there is no infringement. .

In the District of Utopia, a court may grant summary judgment only if it concludes that

the moving party has demonstrated that there is no genuine issue of material fact and that, based

on the undisputed facts, the moving party is entitled to judgment as a matter of law. All evidence

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must be viewed in the light most favorable to the non-moving party. For the reasons set forth

hereafter, the Court denies Plaintiff’s motion.

FINDINGS OF FACT

1. Plaintiff Gas & Goodies, LLC is organized in the State of Utopia, with a principal

place of business at 1000 Petrol Place, Paradise, Utopia 40280.

2. Defendant Charge ‘N Snack, LLC is organized in the State of Utopia, with a

principal place of business at 501 Lightning Bolt Lane, Paradise, Utopia 40280.

PLAINTIFF GAS & GOODIES

3. Gas & Goodies was founded in 2011 by Rusty Rogers (“Rogers”). Prior to

founding Gas & Goodies, Rogers owned and operated a video game arcade and bumper car track

that doubled as an, albeit unknown, electric vehicle charging station. Due to the rise of stadium-

hosted e-sport competitions and because battery cars in Utopia never really took off, the business

operated at a loss for many years. Realizing that the citizens of Utopia’s thirst for gas guzzling

SUVs and sports cars would never be slaked, and due to the lack of adequate public

transportation in the city, he opened Gas & Goodies, a gas station and accompanying

convenience store.

4. When working on the architectural design of Gas & Goodies, Rogers decided to

use the color red for the roof of the fueling station. His decision was based on a number of

factors, including that red was his daughter’s favorite color, the red rose was his wife’s favorite

flower, the red bowtie that he was well known for wearing, and because he thought that the color

red was catching to the eye, signaling a very clear message to those in automobiles to STOP! In

fact, before finally deciding on the color red, Rogers had researched the color significantly,

including its meaning to people all over the globe, and found that it was the universal symbol for

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“STOP.” Rogers believed that the color would subconsciously motivate potential customers to

“stop” at his stations to fill up their vehicles and visit the convenience store.

5. The peaked design of the roof was also key to Rogers’ plan, as he believed it

would stand out against the Utopian cityscape, which was quite flat. While developing his plan

that the peak appear like an arrow, he chuckled at the juxtaposition caused by the red color

meaning “stop” and the arrow indicating “go.” This is the general shape and color of Rogers’

gas stations:

6. Gas & Goodies obtained the following trademark registration on the Principal

Register, via a claim of acquired distinctiveness under Section 2(f) of the Lanham Act, for the

shape of the roof of its building:

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Mark: [Design of Roof]

Owner: Gas & Goodies, LLC

Services: Retail store services featuring convenience store items and gasoline (Class 35)

Registration No.: 6,234,567

Registration Date: December 1, 2018

Application Date: March 4, 2016

Filing Basis: Lanham Act § 1(a)

Date of First Use: February 1, 2011

Date of First Use in Commerce: February 1, 2011

Mark Description: Color is not claimed as a feature of the mark. The mark consists of a

design of a roof comprised of a horizontal base and a triangular peak that looks like an arrow

in the center. The broken lines show the placement of the mark in relation to the supporting

building, which is not claimed as part of the mark.

Type of Mark: Service Mark

Register: Principal 2(f)

7. Gas & Goodies was not immediately successful after Rogers opened the flagship

location on Petrol Place and business floundered for a few years while consumers preferred to

frequent more mainstream gas stations.

8. In 2014, and about to give up, Rogers decided to devote the rest of his financial

resources, which had been reduced to a meager $300,000, to advertising his accompanying

convenience store services, which contained a wide array of highly sugared soft drinks and junk

food, as well as a full-service espresso and coffee bar. In fact, Gas & Goodies offered barista

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services for customers paying for premium gasoline, who could quickly order and receive a

variety of coffee drinks—sized from “petite” to “XXL”—from roller-skating servers.

Advertising, combined with minimal wait time at gasoline pumps and many caffeine options,

proved a winning formula and Rogers opened ten additional Gas & Goodies locations across

Utopia between 2015 and 2018. The peaked red roofs of the filling stations stood out against the

Utopia skyline and the city’s citizens, always hungry for more fuel for their vehicles and a XXL

triple espresso latte/nitro coffee combo drink, were drawn to the stations like moths to a flame.

9. The success of Gas & Goodies led Rogers to decrease his advertising

significantly. Since mid-2018, Rogers has spent only $150,000 on print, television, and Internet

ads. A large portion of this spend has gone to a recurring ad in the Sunday edition of the Utopian

Times featuring a photo of the roof of one of his stations and from which readers can scan a UPC

code using their smart phone to buy a discounted soda. The ad was expensive, but Rogers

figured that the readership of 1.2 million people was well worth it. Rogers did not think that a

lot of advertising was necessary, as over 10 million unique visitors have visited the Gas &

Goodies website, which since 2015, has prominently displayed an image of the peaked red roof.

Rogers also released a mobile app in 2016 that consumers can use to locate the nearest Gas &

Goodies station and pre-order barista-served drinks. The app, downloaded over 50 million times

since its launch, is easily identified on the app stores by a red-colored app tile overlaid with the

letters G&G in a stylized white font. However, nowhere in the app are images of the stations or

its red roof.

10. The success of Gas & Goodies also garnered Rogers interviews, conducted in his

home office, with several local Utopian news networks. Of course, he always wore his red

bowtie. During one of these interviews, Rogers revealed that annual sales since 2016 were

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approximately $25 million yearly, and that the large majority of this revenue comes not from

high-priced gasoline sales (sometimes as much as $8 a gallon!), but rather from the sugary sodas

and coffee drinks purchased in the convenience stores.

DEFENDANT CHARGE ‘N SNACK

11. In 2016, Charge ‘N Snack was founded by Milton Mickleson, known by his

friends as “Mickey”.

12. Prior to forming Charge ‘N Snack, Mickey had been in many dead-end jobs,

including working as a door-to-door hummus salesman, a kale washer at a trendy smoothie shop,

and a smog analyst.

13. An environmental and health enthusiast at heart, Mickey was appalled by

Utopia’s position as the top gasoline-consuming city in the country as well as the fact that its

citizens were the least healthy among neighboring towns. He believed that there would be a day

when battery cars ruled the roads and kale was an ingredient in all foods. He did not watch

television or browse the Internet often. In fact, he still owned a flip phone that was not “smart”.

He survived on a diet of oat milk, pea protein, green smoothies, raw nuts and seeds, and beans.

He only wore clothes made out of hemp and was a regular attendee at the city’s goat yoga

classes, to which he could ride his skateboard or his electric bike. He perceived that his mission

in life was to end Utopia’s dependency on petroleum and sugary sodas.

14. Therefore, with a hefty inheritance from his beloved aunt Mildred, Mickey set out

on a new business venture and, in 2016, Charge ‘N Snack was born. At Charge ‘N Snack,

customers could plug in their battery cars at various charging stations. While waiting for their

vehicles to charge, patrons could go inside the open-air Charge ‘N Snack “farmer’s market” that

offered a variety of nutritious food options and an organic juice bar. There was no caffeine or

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any drinks with “added sugar” on the premises. The Charge ‘N Snack also featured a “Personal

Recharging” room where patrons could meditate.

15. Mickleson was proud of his architectural design, which featured an awning-

covered outdoor space and an airy interior. His companying charging stations featured a two-

toned red, triangular-peaked roof, as depicted in the schematic below:

16. Mickey thought that the roof design of his charging station was clever. Although

Mickey knew that the color red is the international color that signifies “stop,” what he really

liked about it was that it is the color symbolizing good luck. Mickey figured that he needed as

much luck as he could get after a string of failed careers, and he liked the connotation that people

should “stop” and charge up at his station.

17. Charge ‘N Snack was an immediate hit with the younger generation of Utopian

citizens who shared Mickey’s vision of zero carbon emissions and healthy eating. In light of its

success, Mickey opened up three other Charge ‘N Snack locations throughout Utopia between

2017 and 2018.

18. One day, while Rogers was cruising down the highway in his 6.0 liter V12 SUV

chugging an energy drink, he came upon a Charge ‘N Snack. He immediately took note of the

conspicuous red roof atop the building and was outraged.

19. Rogers believed that Charge ‘N Snack was clearly trying to trade on the success

and goodwill of Gas & Goodies. He hired an accredited intellectual property attorney who sent

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Charge ‘N Snack a cease and desist letter demanding that Charge ‘N Snack immediately redesign

the roofs of all its stations to a shape that is not confusingly similar to that of Gas & Goodies’

roofs, which was protected by a federal trademark registration. The letter also demanded that

Charge ‘N Snack immediately cease using the color red. The letter asserted that both the shape

and color of Charge ‘N Snack’s roofs was a clear attempt by the company to trade upon the

goodwill that Gas & Goodies had built in its distinctive and well-known branding, and to confuse

consumers to stop at Charge ‘N Snack rather than Gas & Goodies.

20. Mickey hired his uncle Milton, a tax lawyer, to respond for Charge ‘N Snack. Its

response argued that neither the color red nor the asserted roof design was a protectable

trademark and thus there could be no infringement. In particular, Charge ‘N Snack argued that

(i) the color red, as used by Gas & Goodies, was functional and therefore unprotectable; (ii) Gas

& Goodies’ roof design was not distinctive and also therefore unprotectable; and (iii) the

trademark registration of the roof design was invalid because the trademark examiner merely

accepted a claim of acquired distinctiveness under Section 2(f) of the Lanham Act, without

requesting any supporting evidence that the design had, in fact, acquired distinctiveness in the

marketplace. Even if the asserted roof design is distinctive now, as Charge ‘N Snack further

argued, it was not when Charge ‘N Snack entered the market several years ago, meaning that

Charge ‘N Snack could not be an infringer. Moreover, given the highly distinctive nature of the

services offered by Gas & Goodies and Charge ‘N Snack, there is simply no way that the citizens

of Utopia could even be confused.

PROCEDURAL HISTORY

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21. Dissatisfied with Charge ‘N Snack’s response, Gas & Goodies filed a complaint

in the United States District Court for the Southern District of Utopia alleging trade dress

infringement under Sections 32 and 43(a) the Lanham Act. Charge ‘N Snack filed an Answer

denying all claims.

22. The parties engaged in discovery and, thereafter, Plaintiff Gas & Goodies moved

for summary judgment on its ultimate claim of infringement. Defendant Charge ‘N Snack

vehemently opposed the motion, arguing that Plaintiff did not own any trade dress rights.

CONCLUSIONS OF LAW

Jurisdiction and Venue.

A. This action is brought pursuant to 15 U.S.C. §§ 1114 and 1125(a). Jurisdiction

arises under 28 U.S.C. §§ 1331 and 1338(a). Venue is appropriate under 28 U.S.C. § 1391(b)(1).

Plaintiff’s Alleged Color Red Trademark

B. The United States Supreme Court has held that a single color of a product is

capable of being registered and protected as a trademark, provided that it has acquired secondary

meaning in the market. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).

C. Interpreting the Supreme Court’s guidance in Qualitex, this Court notes that color

is protectable as a trademark only if it acts as a symbol that distinguishes a company’s services

and identifies its source, without serving any other significant function.

D. However, aspects of a product that are functional generally cannot serve as a

trademark. Two forms of the functionality defense are relevant to us today: “traditional” a/k/a

“utilitarian” functionality, and “aesthetic” functionality. A product feature is functional, and

cannot serve as a trademark, “if it is essential to the use or purpose of the article or if it affects

the cost or quality of the article.” Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S.

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844, 214 USPQ 1, 4 n.10 (1982). Generally, “[w]here [a product’s] design is functional under

the Inwood formulation there is no need to proceed further” because that finding means that the

asserted trade dress cannot be owned exclusively as a trademark by any single person or entity.

TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001). When the aesthetic

design of a product is itself the mark for which protection is sought, a court may also deem the

mark functional if giving the markholder the right to use it exclusively “would put competitors at

a significant nonreputation-related disadvantage.” Qualitex, 514 U.S. at 165. This remains true

even if there is “no indication that [the mark has] any bearing on the use or purpose of the

product or its cost or quality.” TrafFix, 532 U.S. at 33. This is the aesthetic functionality test.

E. This Court finds that the color red, when used in connection with retail gasoline

and convenience store services is aesthetically functional because reserving the color red

exclusively to Plaintiff would significantly undermine a competitor's ability to compete in the

relevant market. Indeed, the record reflects that both parties adopted the color red because it

signals, perhaps uniformly, for consumers to “stop” at their stations. Accordingly, Plaintiff

cannot claim an exclusive right to the color red with such services. Because the Court finds that

the color red, when used in connection with retail gasoline and convenience store services, is

functional, it need not opine further as to whether the color has acquired distinctiveness and/or is

merely ornamental.

Plaintiff’s Alleged Roof Design Trade Dress

F. When used with services, trade dress typically consists of three-dimensional

matter or visual elements that form or otherwise affect the “packaging” of the services, i.e., the

image or appearance of the location where, or the means by which, the services are performed.

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G. When a party claims rights in product design, product packaging, color, or other

trade dress for goods or services, the Court must separately consider two substantive issues: (1)

functionality and (2) distinctiveness. See TrafFix Devices, Inc. v. Mktg.Displays, Inc., 532 U.S.

23, 28-29, 58 USPQ2d 1001, 1004-1005 (2001).

H. Unlike the color red, Plaintiff’s roof design does not appear to be functional.

I. Distinctiveness may be shown either by (1) proof that the mark is itself inherently

distinctive, or by (2) showing that the mark has acquired, through use, secondary meaning in the

public eye. The following factors are considered when determining the inherent distinctiveness

of configuration marks for services:

(1) Whether the applied-for mark is a “common” basic shape or design.

(2) Whether the applied-for mark is unique or unusual in the field in which it is

used.

(3) Whether the applied-for mark is a mere refinement of a commonly-adopted and

well-known form of ornamentation for a particular class of goods or services viewed by

the public as a dress or ornamentation for the goods or services.

(4) Whether the applied-for mark is capable of creating a commercial impression

distinct from the accompanying words.

Any one of these factors, by itself, may be determinative as to whether the mark is

inherently distinctive.

J. Here, the Court finds that the Plaintiff’s alleged roof design trade dress was not

inherently distinctive primarily because it is a common basic shape. However, that does not end

the Court’s inquiry as Plaintiff’s alleged roof design trade dress could still be protectable if it has

acquired distinctiveness. The Court concludes that, through its evidence of advertising and sales,

Plaintiff has shown that its asserted roof design is recognized and associated by purchasers and

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prospective purchasers with the services offered by Plaintiff. Plaintiff has thus proven that the

shape of its roof has acquired distinctiveness.

Likelihood of Confusion

K. The legal test for whether a trademark is infringed is whether Defendant has used

or is using in commerce any word, term, name, symbol, or device, or any combination thereof in

connection with goods or services which is likely to cause confusion, or to cause mistake, or to

deceive as to the affiliation, connection, or association with another’s mark. 15 U.S.C. §

1125(a)(1)(A).

L. The pertinent factors in evaluating whether there is a likelihood of confusion, in

descending order of importance, are: (i) the resemblance of the two marks in terms of sight, sound,

and meaning; (ii) the relationship between the goods or services of the parties in terms of utility,

use, and trade channels; (iii) the strength, both inherent and acquired, of the Plaintiff’s mark; (iv)

any evidence of actual confusion, or valid surveys indicative of such confusion; (v) an intent by

the newcomer to derive benefit from the original mark’s success; and (vi) any other factor

recognized by this, or any other Utopian court, as probative of likelihood of confusion. The Court

discusses each of these factors in order.

(i) The resemblance of the marks: The Court finds that the marks are not similar in

appearance. In particular, the roof designs are shaped differently. Because Plaintiff

does not own the color red, the similarities in the colors are irrelevant.

(ii) The relationship between the goods or services of the parties in terms of utility, use,

and trade channels: The Court finds that the services are also not similar due to

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the parties’ distinct focus on gasoline and sugary snacks and coffee vs. electric

powered vehicles and healthy food and drinks.

(iii) The strength, both inherent and acquired, of the Plaintiff’s mark: Plaintiff’s mark

is not strong. As noted, the color red is not protectable. The roof design is a basic

shape that is not inherently distinctive. While the roof design has acquired

distinctiveness, the Court finds that it is a weak mark nonetheless that is entitled

only to a narrow scope of protection.

(iv) Any evidence of actual confusion, or valid surveys indicative of such confusion: The

parties did not submit any evidence of actual confusion or any survey evidence.

(v) An intent by the newcomer to derive benefit from the original mark’s success: The

Court finds that there is no evidence that Defendant intended to derive benefit from

the Plaintiff’s success. Accordingly, this factor weighs in favor of Defendant.

(vi) Any other factor recognized by this, or any other Utopian court, as probative of

likelihood of confusion: The Court is aware of none, and none has been cited by

either party.

The Court holds that, due to the weakness of Plaintiff’s asserted roof design trade dress,

and the differences in the marks and services, confusion is not likely.

WHEREFORE, this Court hereby denies Plaintiff’s motion for summary judgment in its

entirety.

SO ORDERED.