small wonder: sleeve undergarment isn’t valid trade dress/innovation claim isn’t false advertising

R and A Synergy LLC v. Spanx, Inc., No. 2:17-cv-09147-SVW-AS,
2019 WL 4390564 (C.D. Cal. May 1, 2019)
The court dismissed trademark and false advertising claims
brought by R&A based on their “Sleevey Wonders” sleeved undergarments
designed to be worn under sleeveless tops. 
Note that it seems pretty bold for “Sleevey Wonders” to bring IP claims!
“Plaintiff claims that no other similar sleeved undergarment
product existed before the Sleevey products were introduced.”  Defendant ordered two Sleevey products and
then made its own Spanx-branded undergarment sleeve products.
Like Sleevey, Spanx products are allegedly made in different
colors, textures, and combinations thereof, similarly advertised as being able
to “Transform your wardrobe!,” advertised using paper dolls wearing sleeved
undergarments with interchangeable outfits in order to demonstrate the different
variations that are possible with the product. Like Sleevey, Spanx allegedly uses
a bullet point list to showcase the Spanx products’ features, and allegedly
uses equations to show how combinations of the Spanx products and outergarments
can create new outfits. It allegedly uses the tagline “#Madewithlove” to
advertise the Spanx products, similar to Sleevey’s claims to be made “with
love.”
Spanx allegedly claimed to have come up with the idea for
the Spanx products on its own, including by representing that the Spanx
products are new, that the Spanx products fill a “white space” in the market,
and that the Spanx products are “unlike any other layer options” in the market.
This allegedly misleads the public into thinking that Spanx operates its business
with the intention of supporting women in their entrepreneurial pursuits.
Trade dress infringement: Sleevey failed to properly
identify a protectable trade dress. It cited similarities in “colors, shapes,
fabric materials and material arrangements” between Sleevey and Spanx products.
Sleevey products include “basic, bell, bandeau, flutter, waterfall, halter,
shirred, tunic, and trellis” and are available “in a variety of colors
including black, white, grey, coral, pink, mint, cobalt blue, periwinkle blue,
apple green, olive green, forest green, navy, red, silver, turquoise, eggplant,
brown and off-white.” This failed to sufficiently identify a precise and
non-generic trade dress, and thus failed to provide proper notice to
competitors. “Concerns of imprecise trade dress definitions include the risk
that jurors will interpret the same trade dress differently, the possibility
that jurors or courts will be unable to determine functionality or secondary
meaning, the likely overbreadth of the trade dress claim, and the difficulty in
crafting narrowly-tailored injunctive relief.”
As alleged, the design was generic and uprotectable even on
a showing of secondary meaning. It was far too broad/generalized, and it was
also the basic form of a product. To the extent that Sleevey sought to claim
the concept of a “sleeved undergarment” as trade dress, that’s “nothing more
than a basic description of the product and its function.”
Nor did the packaging and promotional materials fit within
the description of product design; allegations about the similarities in
packaging weren’t contained in the trade dress claim.
For the same reasons, the features Sleevey sought to protect
were functional. The sleeved undergarment design, combined with various colors,
shapes, fabrics, and material arrangements, was essential to the Sleevey
products’ purpose, “which is to provide women with a variety of sleeved
undergarments to pair with other short-sleeved apparel in order to create the
appearance of sleeves.” Sleevey pled that the purpose of Sleevey is to cover
“bare, flabby arms,” and to “give the appearance of the sleeveless over garment
having sleeves.” The “form-fitting” nature of the sleeved undergarments “serves
an important function as it relates to the overall look of the wearer’s outfit,
beyond a mere aesthetically-unique design. The same can be said of the
particular material used for each individual Sleevey product; consumers buy a
particular item of clothing not just because of its overall look but also
because of its comfort and fit.” Because Sleevey sought protection for the
entire product line, “the general design and look of each individual Sleevey
product is undoubtedly functional.” Sleevey’s competitors, reciprocally, would
be placed at a significant disadvantage if the Sleevey product line were
treated as protectable trade dress.
Independently, Sleevey failed to plausibly allege secondary
meaning. (The court mentions inherent distinctiveness but of course that’s not
possible under Wal-Mart v. Samara.) Allegations that the Sleevey product
line has generated over $5.8 million in revenue, and that Sleevey products have
been worn by celebrities, showcased at trade shows, and featured in magazines, were
insufficient. Evidence of sales is not dispositive and “does not in itself
create legally protectable rights” in the product being sold; success in
promoting Sleevey as brand didn’t equate to secondary meaning in any feature of
the products themselves. “Plaintiff has not alleged that it sufficiently urged
consumers to associate any particular feature of the Sleevey products with the
Sleevey brand, other than by promoting the general design and purpose of
sleeved undergarments in its advertisements.”
Likely confusion: Sleevey didn’t plausibly plead likely
confusion.  It provided two examples of
alleged consumer confusion, one of which was allegedly consumer comments on Spanx’s
Instagram page regarding the similarities between Sleevey products worn by an
actress in a television show and Spanx products. There was also a comment on
Spanx’s Facebook page, where a consumer wrote that Spanx products “look a lot
like Sleevey Wonders.” These allegations didn’t support a confusion claim but
were consistent with the opposite conclusion: that consumers could readily
distinguish the Sleevey products from the Spanx products based on packaging,
manufacturing, and even product design. “The online comments Plaintiff alleges
were made by consumers were made on Defendant’s clearly-labeled corporate
accounts, refuting the notion that any consumer visiting those accounts would
believe that Defendant’s sleeved undergarment products were identical to
Plaintiff’s Sleevey products.” The marketing and packaging materials attached
to the complaint were also easily distinguishable.
False advertising: There were two categories alleged:
Spanx’s claims of innovation, e.g. its CEO being quoted in a newspaper article
as saying “[t]ights have been around for our legs for so many years, I was
thinking, ‘Why aren’t there tights for our arms?’ ” and its claims that its mission
is to support entrepreneurial women and to “help women feel great about
themselves and their potential.” This was allegedly false because Spanx hurt
Sleevey and other “small, women owned” businesses, rather than elevating those
women.
Nothing in the complaint alleged literal falsity, and the
statements weren’t misleading because they were puffing. “Merely advertising a
product as being new, invented, filling a white space, and being unlike other
layering options does not amount to an assertion of fact” and was puffery.  Likewise, statements that Spanx products are
“unlike any other layering options” was unquantifiable puffery.
Likewise, statements about Spanx’s mission to support women
in business were also clearly puffery:  “vague
and abstract goals in conducting business” that couldn’t be falsified. Plus,
the falsity claim put the cart before the horse by assuming infringement.
Puffery, of course, can’t be material. And “the Supreme
Court has directly addressed the question of whether representations about
which company came up with the idea for a product materially influence consumers”
in Dastar, which stated that claims under the Lanham Act “should not be
stretched to cover matters that are typically of no consequence to purchasers.”
It was clearly immaterial as a matter of law to consumers whether Sleevey or
Spanx was the original source of the general concept of sleeved undergarments.
False designation of origin: Unsurprisingly, no. Allegations
about similarities in the marketing and advertising materials were too
conclusory. The exhibits attached to the complaint “reveal that Defendant uses
clearly distinguishable advertising materials, packaging, and other brand
recognition materials under the Spanx brand, even if the substance and style of
those materials overlap with those Plaintiff uses for its Sleevey products.”

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