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.”