You are likely familiar with the children’s game, Connect 4, in which players drop red and black checker pieces into an upright rack trying to get four of their pieces in a row to win. Some of you may have even seen enlarged outdoor versions of the Connect 4 game at various venues. On August 24, 2022, the Ninth Circuit issued its opinion in P and P Imports, LLC v. Johnson Enterprises, LLC, in which the parties were battling a trade dress infringement claim involving these large outdoor Connect 4-like games.

P and P Imports (“P&P”) sells outdoor games under its GoSports brand, and in December 2016, it began selling its “Giant 4 in a Row Game” that was based on the classic tabletop version. P&P sold its game through Amazon and eBay and climbed the best seller rankings on Amazon.

A few months later, Johnson Enterprises sought to expand its outdoor yard game offerings and decided it, too, would sell a giant Connect 4-style game. It apparently conducted market research and discovered that P&P was one of the most successful sellers on Amazon in this category. Johnson Enterprises bought a copy of the P&P game, sent samples to a Chinese manufacturer, and began selling an almost identical version of P&P’s game that it called “Tailgating Pros White Connect 4” in October 2017. The two games look nearly identical in color, style and size and apparently differ only in the respective logos at the top of each game.

In March 2019, P&P sued Johnson Enterprises for trade dress infringement under section 43(a) of the Lanham Act and unfair competition under California law. P&P alleged that its trade dress was infringed by Johnson Enterprises marketing a nearly identical game that was “defined by its flat-white game board with circular cutouts and flat, circular red and blue tokens.” P&P argued that this distinctive trade dress had become “widely known and recognized” and had thus obtained “secondary meaning.” It further alleged that Johnson Enterprises 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.”

In the district court, Johnson Enterprises moved for summary judgment seeking to dismiss P&P’s claim. The district court granted the motion, ruling that P&P had failed to produce evidence “of secondary meaning” because it failed to show that consumers would associate its trade dress specifically with P&P, relying on a 2011 Ninth Circuit case, Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958. P&P appealed the summary judgment ruling to the Ninth Circuit. (This article will not address the issue of attorney’s fees, that was also the subject of an appeal).

In order to prove a trade dress infringement claim, a plaintiff must show: (1) the trade dress is nonfunctional, (2) the trade dress has acquired secondary meaning, and (3) there is a substantial likelihood of confusion between [the plaintiff’s] and [the defendant’] products.” Art Attacks Ink, LLC v. MGA Ent. Inc., 581 F.3d 1138, 1145 (9th Cir. 2009). Given the district court’s ruling on summary judgment, the Ninth Circuit focused its analysis on the second element, i.e., whether P&P’s trade dress had acquired secondary meaning.

The Ninth Circuit began by recognizing that a product’s design like “distinctive names, logos, packages or labels” may have developed a “source-identifying appearance.” If so, the product may receive trade dress protection and the manufacturer of such product can maintain a claim for trade dress infringement under the Lanham Act.

The Ninth Circuit noted that “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 district court, in interpreting the Ninth Circuit’s Fleischer case, held that this meant that P&P had to establish that consumers specifically associated P&P’s game with P&P as opposed to some other single or anonymous source.

The Ninth Circuit concluded that the trial court focused too heavily on a single sentence and misinterpreted the actual holding of the Fleischer case. The Ninth Circuit noted that because Fleischer had been decided by a three-judgment panel, it could not overturn prior Ninth Circuit binding decisions that had held that secondary meaning meant “association with only a single – even anonymous – source.” Notwithstanding this, the Ninth Circuit continued by recognizing that the trial court had omitted additional language from Fleischer that further showed an error in its finding. For instance, Fleischer held that “secondary meaning” can be “an association `with the same source’.” That is the Ninth Circuit made clear that it was not necessary to show that consumers knew the name of the source, only that the product came from “a single, albeit anonymous source.” The Ninth Circuit found that the district court’s reading of Fleischer was also contradicted by the language of the Lanham Act that specifically provides that a source may even be unknown in order for trade dress protection to apply.

The Ninth Circuit then turned to whether there was evidence before the trial court to establish secondary meaning sufficient to avoid summary judgment. The Ninth Circuit noted that courts should consider a number of factors, 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.” Because each of these factors are normally factual issues, summary judgment is generally disfavored in cases of trade dress infringement. The Ninth Circuit noted that the presence of at least two factors, such as intentional copying and survey evidence, can be sufficient to avoid summary judgment on a trade dress infringement claim.

The Ninth Circuit first recognized that “proof of copying strongly supports an inference of secondary meaning.” That is, when one is purposely copying a competitor’s product, it is likely seeking “to realize upon a secondary meaning that is in existence.” The Ninth Circuit found it significant that Johnson Enterprises had done market research into P&P’s product, ordered a copy of it that it sent to its Chinese manufacturer, and began selling a nearly identical game just months later. The Court found that this evidence “strongly suggests that Johnson [Enterprises] intentionally copied the P&P game.”

Johnson Enterprises argued that, while it may have copied the game’s components, this evidence was not relevant since these product features were “wholly functional” and there was no evidence that Johnson Enterprises “intended to confuse consumers and pass off its product as the Plaintiffs.” The Ninth Circuit noted that while some circuits, such as the Tenth Circuit, has adopted similar reasoning on this issue, the Ninth Circuit has limited the issue of intent to confuse to the element of likelihood of consumer confusion, which it noted was a separate element. Furthermore, the Ninth Circuit held that even if such an intent was required, courts have held that such intent can be “inferred when the defendant copies a product’s design and marketing.” The Court noted that Johnson Enterprises copied much of P&P’s product description and that while such language may had been expected, “its decision to crib identical language from P&P’s advertisement suggests that Johnson intentionally cast its game as P&P’s.” The Court found it significant that the two games are identical except for the logs displayed on the product.

The Ninth Circuit cautioned that given that it was ruling on a grant of summary judgment, a jury could still find that “Johnson’s copying of P&P’s game and its marketing does not establish secondary meaning.” The Ninth Circuit observed (somewhat tongue and cheek) that: “Indeed, it may appear a bit rich that P&P accuses Johnson of copying its game when both are essentially oversized knock-offs of Connect 4.”

The Ninth Circuit also found it significant that P&P offered survey evidence from an expert who found that 63% of respondents said that P&P’s game must have come from a single source/company. The expert opined that this “strongly suggests that P&P’s trade dress acquired secondary meaning.” Courts can consider such surveys provided that they: (1) have a proper foundation and are relevant; and (2) any issues concerning the survey’s methodology, design, reliability, etc. “go to the weight of the survey rather than its admissibility.”

The Ninth Circuit concluded that the trial court erred in finding the survey evidence to be irrelevant since the trial court was too narrowly focused on a specific association with P&P (as opposed to a more general “single source” attribution). The Ninth Circuit rejected Johnson Enterprises’ argument that the survey was not relevant because it had been conducted 2 ½ years after its product had hit the market. The Ninth Circuit cautioned that a plaintiff is “not required to preemptively conduct consumer surveys in anticipation of litigation.” Rather, courts have routinely “admitted surveys conducted years after the first alleged infringing use.” Again, the Ninth Circuit cautioned that the survey evidence could be subject to attack in that respondents may have been more likely to attribute P&P’s game to the original Milton Bradley Connect 4 game and not to P&P. The Court noted that this might be an issue for the parties at the time of trial. Nevertheless, because P&P had come forward with evidence of both intentional copying and survey evidence, the trial court improperly granted summary judgment to Johnson Enterprises.

The Ninth Circuit’s decision in P and P Imports provides an example of the type of evidence a plaintiff must be prepared to submit to a court to establish the element of secondary meaning in prosecuting a trade dress infringement claim.