Reversing and remanding a district court’s grant of summary judgment in favor of an accused trade dress infringer, the US Court of Appeals for the Ninth Circuit explained that trade dress does not need to be linked to a particular company. If consumers link the trade dress to any single (even anonymous) source or company, that is enough to constitute secondary meaning. P and P Imports LLC v. Johnson Enterprises LLC, DBA Tailgating Pros, Case Nos. 21-55013; -55323 (9th Cir. Aug. 24, 2022) (Tashima, Lee, Cardone, JJ.)

P&P makes and sells a jumbo red-white-and-blue Connect 4 game. Johnson sells a game almost identical in color, style and size. P&P sought to block Johnson from selling its game and sued for trade dress infringement under Lanham Act § 43(a) and unfair competition. During the district court proceeding, P&P’s expert submitted a consumer survey showing that most consumers associated P&P’s trade dress with a single source or company. He also submitted evidence of intentional copying and noted P&P’s advertising efforts as support for secondary meaning. The district court granted summary judgment for Johnson, ruling that P&P failed to present sufficient evidence of secondary meaning. The district court relied on the Ninth Circuit’s 2011 decision in Fleischer Studios v. A.V.E.L.A. to dismiss the survey evidence as irrelevant because the results showed a belief that P&P’s product is from a single source or company but did not show that trade dress was associated with P&P itself. P&P appealed.

The question before the Ninth Circuit was whether a manufacturer’s red-white-and-blue jumbo rendition of Connect 4 qualified as a protectable trade dress. This required the Court to determine whether P&P’s trade dress had acquired secondary meaning. Secondary meaning exists when “in the minds of the public, the primary significance of [the trade dress] is to identify the source of the product rather than the product itself.”

The Ninth Circuit concluded that the district court applied an incorrect legal standard for determining secondary meaning and that P&P presented sufficient evidence to survive summary judgment. The Court explained that many factors determine whether secondary meaning exists, including “direct consumer testimony; survey evidence; exclusivity, manner, and length of use of a mark; amount and manner of advertising; amount of sales and number of customers; established place in the market; and proof of intentional copying by the defendant.” The Court also noted that in the past it had found the presence of intentional copying and survey evidence sufficient to survive summary judgment.

Turning to the evidence presented by P&P, the Ninth Circuit explained that the district court’s analysis (which required consumers to both recognize P&P’s trade dress and be able to name P&P as the source) conflicted with the Court’s “long-established precedent[] requiring association with only a single—even anonymous—source,” and thus the district court erred by requiring evidence of specific association for secondary meaning. The Court also found strong suggestions that Johnson intentionally copied the P&P game, including the fact that Johnson conducted market research, ordered a copy of the game, sent samples of the game to its Chinese manufacturer and sold an almost identical game mere months after doing so. Johnson discounted the relevance of those actions, arguing that there was no intent to confuse consumers and pass off the product as P&P’s. However, the Ninth Circuit explained that it, unlike other circuits, has not adopted an intent requirement. The Court also noted that even if it did have an intent requirement, intent can be inferred when a defendant copies a product’s design and marketing. Johnson copied much of P&P’s product description, and the “decision to crib identical language of P&P’s advertisement suggests that Johnson intentionally cast its game as P&P’s” and provided reason to believe that Johnson’s attempt to confuse consumers would succeed. The Court explained in the footnotes that P&P provided some evidence of actual confusion in its consumer surveys. Johnson’s intentional copying of P&P’s trade dress and marketing strongly suggested that secondary meaning existed.

The Ninth Circuit explained that consumer surveys are evaluated in two steps:

1. A court must determine whether a survey is admissible.

2. If it is admissible, it is left to a jury to consider “methodology, survey design, reliability, the experience and reputation of the expert, critique of conclusions, and the like, issues that go to the weight of the survey rather than its admissibility.”

At step one, the Court explained that P&P’s survey was relevant and admissible. Johnson argued again for irrelevance because the survey was conducted more than two years after the Johnson game was first sold, but P&P was not required to preemptively conduct consumer surveys in anticipation of litigation. Surveys conducted within five years of the first infringing use are generally relevant. The Court mentioned that “to be fair,” the survey methodology raised some questions, including whether some respondents recognized the classic Connect 4 design instead of P&P’s trade dress, but Johnson failed to challenge the survey’s design.

Johnson had also appealed the district court’s denial of attorneys’ fees, but because Johnson was no longer the prevailing party, the Ninth Circuit dismissed this point as moot.