P & P Imports LLC v. Johnson Enters., LLC
| Citation | 46 F.4th 953 |
| Decision Date | 24 August 2022 |
| Docket Number | 21-55013, No. 21-55323 |
| Parties | P AND P IMPORTS LLC, a California limited liability company, Plaintiff-Appellant, v. JOHNSON ENTERPRISES, LLC, DBA Tailgating Pros, a Virginia limited liability company, Defendant-Appellee, and Does, 1–10, inclusive, Defendant. P and P Imports LLC, a California limited liability company, Plaintiff-Appellee, v. Johnson Enterprises, LLC, DBA Tailgating Pros, a Virginia limited liability company, Defendant-Appellant. |
| Court | U.S. Court of Appeals — Ninth Circuit |
46 F.4th 953
P AND P IMPORTS LLC, a California limited liability company, Plaintiff-Appellant,
v.
JOHNSON ENTERPRISES, LLC, DBA Tailgating Pros, a Virginia limited liability company, Defendant-Appellee,
and
Does, 1–10, inclusive, Defendant.
P and P Imports LLC, a California limited liability company, Plaintiff-Appellee,
v.
Johnson Enterprises, LLC, DBA Tailgating Pros, a Virginia limited liability company, Defendant-Appellant.
No. 21-55013
No. 21-55323
United States Court of Appeals, Ninth Circuit.
Argued and Submitted April 11, 2022 Pasadena, California
Filed August 24, 2022
Mark R. Yohalem (argued), Wilson Sonsini Goodrich & Rosati, Los Angeles, California; Xiaonan April Hu, Munger Toller & Olson LLP, Washington, D.C.; Casey H. Kempner, P&P Imports LLP, Irvine, California; for Plaintiff-Appellant/Cross-Appellee.
James E. Doroshow (argued), Fox Rothschild LLP, Los Angeles, California, for Defendant-Appellee/Cross-Appellant.
Before: A. Wallace Tashima and Kenneth K. Lee, Circuit Judges, and Kathleen Cardone,* District Judge.
LEE, Circuit Judge:
Imitation may be the sincerest form of flattery but that does not shield someone from being sued for it. Two competing companies created their own three-feet-wide versions of Connect 4, the classic game in which players drop colored plastic coins into an upright game board in hopes of lodging four coins in a row. This case, however, does not involve the original maker of Connect 4, but rather two companies that lifted the Connect 4 concept to create their own oversized versions.
The question before us is whether a manufacturer's red-white-and-blue jumbo rendition of this iconic game qualifies as a protectable trade dress. P&P Imports thinks so. It sued a competitor, Johnson Enterprises, whose version of this game looks uncannily like P&P's. To resolve this question, we must determine whether P&P's trade dress has acquired "secondary meaning"—i.e., is P&P's design distinctive enough to be widely recognized in the market?
The district court granted summary judgment to Johnson, ruling that P&P's trade dress had not acquired secondary meaning because consumers do not associate the trade dress with P&P specifically. We reverse because trade dress does not have to be linked to a particular company; if consumers link the trade dress to any single (even anonymous) source/company, that is enough to constitute secondary meaning. And because a genuine issue of material fact exists about whether P&P's trade dress acquired secondary meaning, we reverse and remand.
BACKGROUND
I. Ten months after P&P begins selling a three-foot, red-white-and-blue version of Connect 4, Johnson starts selling a virtually identical game.
P&P Imports sells outdoor games and sporting goods under its GoSports brand. One of its games is the GoSports Giant 4 in a Row Game ("P&P Game"), an enlarged, outdoor variation of Connect 4, the classic tabletop game originally made by Milton Bradley (now Hasbro) for nearly 50 years. The P&P Game measures three feet wide and uses a red, white, and blue color scheme.
In December 2016, P&P began selling its game through various e-commerce channels such as Amazon and eBay. In under a year, the P&P Game climbed the best seller ranks in Amazon's Toys and Games category, racking up significant sales within its category.
P&P's success did not go unnoticed. Sometime in 2017, Johnson Enterprises was looking to expand its product offerings in the Yard Games category and decided it too would produce a giant Connect 4-style game. After conducting market research, Johnson discovered that P&P—the most successful Amazon seller in this product category—was selling 700 units per month. So Johnson bought a copy of the P&P Game and sent samples to its manufacturer in China. In October 2017, ten months after the P&P Game hit the market, Johnson
began selling an almost identical game, the Tailgating Pros White Connect 4 game ("Johnson Game"). The P&P and Johnson Games featured their respective logos at the top of the white game boards but otherwise looked nearly identical in color, style, and size.
II. P&P sues Johnson for federal trade dress infringement under the Lanham Act, and unfair competition under California law.
In March 2019, P&P sued Johnson for damages and injunctive relief, bringing claims of (1) trade dress infringement under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), (2) unfair competition under section 17200 et seq. of California Business and Professions Code, and (3) unfair competition under California common law.
P&P alleged that Johnson appropriated its trade dress for the "almost identical" Johnson Game. As stated in the complaint, P&P's trade dress consisted of:
the overall appearance of [the P&P Game] which may be described as a combination of individual features, including, but not limited to the unique color combination of flat-white colored square board with evenly spaced round-hole cut-outs, bordered by a thin bas-relief bezel on all four sides, with two mirrored sculpted legs extending half way up the sides of the bezel and joined to it by tee joints which enfold part of the bezel to create a relief on the bezel and extend depth-wise slightly both frontwards and backwards, and which vertically extend slightly below the bezel where they are joined with the feet to create a relief between them on the outside edge, the feet extend depth-wise from the legs with their flat-top extending into rounded shoulders and squared ends with an arch type shape cut into the bottom-center, which are all contrasted with the smooth, circular flat-red and flat-blue featureless chips game pieces.
In other words, P&P's trade dress is defined by its flat-white game board with circular cut-outs and flat, circular red and blue tokens.1
According to P&P, its "distinctive" trade dress had become "widely known and recognized" such that it had acquired "secondary meaning." By copying its trade
dress, P&P says Johnson intended to "deceive the public as to the source or origin" of its game to benefit from "P&P's goodwill and reputation in the four in a row market."
III. P&P's expert, Robert Wallace, submits consumer survey evidence purporting to show secondary meaning.
Robert Wallace submitted an expert report in support of P&P. Wallace designed and conducted a "secondary meaning" survey to measure how much consumers associated P&P's trade dress with a single source or company. The survey exposed 200 respondents to an image of the P&P Game as it appeared on Amazon, with the GoSports logo and other descriptions of source removed. The respondents were then asked a series of questions.
First, the survey asked, "Do you recognize this product?" Of the 200 respondents, 188 answered "Yes." Next, the survey asked, "Do you believe that this specific product is made by one company or more than one company?" Ninety-two respondents answered, "One company." The eighty respondents that answered, "More than one company" were asked, "If you believe the products are sold by more than one company, do you believe that they come from the same source or producer?"2 Thirty-four said, "Yes." Wallace then added the "92 respondents who believe that the product comes from one company" to the "34 respondents who believe the product comes from one source or producer" to conclude that 126 of 200—63%—of respondents believe that the P&P Game is "from a single source or company." In Wallace's opinion, this "clear majority ... established secondary...
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