hermes v. thursday friday reply in support of mtd

8/6/2019 Hermes v. Thursday Friday Reply in Support of MTD

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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

)

HERMS INTERNATIONAL, a French )corporation, ))

Plaintiff, ))

v. ) No. 11 Civ. 580 (AKH)) ORAL ARGUMENT

THURSDAY FRIDAY, INC., a California ) REQUESTEDcorporation, )

)Defendant. )

))

REPLY MEMORANDUM IN SUPPORT OF

DEFENDANTS MOTION TO DISMISS UNDER RULE 12(b)(6)

THE CIMBALO FIRM, P.C.

Jeffrey L. Cimbalo (JC-6680)1306 W. Main St.Richmond, VA 23220Tel: (804) 313-6266

Paul R. Niehaus (PN-3394)S. Gabriel Hayes-Williams(SH-0775)NIEHAUS LLP

1359 BroadwaySuite 2001New York, NY 10018Tel: (212) 631-0223Fax: (212) 624-0223

Attorneys for Defendant

Thursday Friday, Inc.

Case 1:11-cv-00580-AKH Document 14 Filed 04/01/11 Page 1 of 26


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TABLE OF CONTENTS

PRELIMINARY STATEMENT ........................................................................................ 1

STATEMENT OF FACTS ................................................................................................. 2

ARGUMENT ...................................................................................................................... 3

I. Ashcroft v. IqbalDictates the Pleading Standard in this Case..................................... 3

II. Plaintiff Does Not Allege a Birkin Bag Trademark ................................................ 4

A. Plaintiff pleads an open set of distinctive design features..................................... 4

B. Plaintiff does not plead its claimed design features are distinctive........................ 6

C. Plaintiff does not adequately allege secondary meaning of the unregisteredtrade dress ........................................................................................................... 7

D. Likelihood of confusion between the two marks is pleaded onlyin the most conclusory way................................................................................ 11

III. Plaintiff Does Not Plead Use of the Claimed Birkin Bag Trademark................. 12

IV. Plaintiff Does Not Plead a Colorable Imitation of its RegisteredMark ....................................................................................................................... 15

V. The Federal Dilution Claim Is Inadequately Pleaded ............................................... 17

VI. Plaintiff Does Not Plead a Cause of Action for New York Common LawTrademark Infringement or Unfair Competition ...................................................... 17

VII. The State Dilution Claim Is Inadequately Pleaded ................................................... 18

CONCLUSION ................................................................................................................. 19



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TABLE OF AUTHORITIES

Page(s)

CASES

1-800 Contacts, Inc. v. WhenU.com, Inc.,

414 F.3d 400 (2d Cir. 2005) .............................................................................. 12, 13

Abercrombie & Fitch Co., et al., v. Moose Creek Inc., et al.,

468 F.3d 629 (9th Cir. 2007) ................................................................................... 16

American Steel Foundries v. Robertson,

269 U.S. 372, 46 S. Ct. 160 (1926) .......................................................................... 11

Ashcroft v. Iqbal,

129 S. Ct. 1937 (2009) ...................................................................................... 3, 4, 7Bell Atlantic Corp. v. Twombly,

550 U.S. 544, 127 S. Ct. 1955 (2007) .................................................................. 3, 12

Cartier, Inc. v. Four Star Jewelry Creations, Inc.,348 F. Supp. 2d 217 (S.D.N.Y. 2004).................................................................. 8, 14

Clinique Laboratories, Inc. v. Dep Corp.,

945 F. Supp. 547 (S.D.N.Y. 1996)........................................................................... 17

Coach, Inc. v. We Care Trading Co.,67 Fed. Appx. 626, 2002 U.S. App. LEXIS 28143 *1(2d Cir. May 20, 2002).....................................................................................5, 8, 14

Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd.,

604 F.2d 200 (2d Cir. 1979) .................................................................................... 14

In re Edward Ski Prods., Inc.,49 USPQ2d 2001 (TTAB 1999) .............................................................................. 10

Grotrian, Helfferich, Shulz, Th. Steinweg Nachf. v. Steinway and Sons,

523 F.2d 1331 (2d Cir. 1975) .................................................................................. 11

Heller, Inc. v. Design Within Reach, Inc.,No. 09 Civ. 1909, 2009 WL 2486054 *1 (S.D.N.Y. Aug. 14, 2009) .................. 4, 6, 7

Inwood Laboratories, Inc. v. Ives Laboratories, Inc.,456 U.S. 844, 102 S. Ct. 2182 (1982) ........................................................................ 7



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Landscape Forms, Inc. v. Columbia Cascade Co.,113 F.3d 373 (2d Cir. 1997) ...................................................................................... 5

McLean v. Fleming,

96 U.S. 245, 24 L.Ed. 828 (1877) ............................................................................ 16

Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc.,

875 F.2d 1026 (2d Cir. 1989) .................................................................................. 18

Metrokane Inc. v. Built NY,2008 U.S. Dist. LEXIS 107937 *1 (S.D.N.Y. September 3, 2008)....................5, 6, 14

In re Mogen David Wine Corp.,372 F.2d 539 (C.C.P.A. 1967) ................................................................................. 10

Natl Lighting v. Bridge Metal Indus.,LLC,

601 F. Supp.2d 556 (S.D.N.Y. 2009)..................................................................... 5, 7Rescuecom v. Google,

562 F.3d 123 (2d Cir. 2009) .................................................................................... 13

Saratoga Vichy Spring Co., Inc. v. Lehman,

625 F.2d 1037 (2d Cir. 1980) .................................................................................. 18

Sherwood 48 Assoc. v. Sony Corp. of Am.,76 Fed. Appx. 389 (2d Cir. 2003) .............................................................................. 4

Shevy Custom Wigs, Inc. v. Aggie Wigs,No. 06 Civ. 1657, 2006 WL 3335008 *1 (E.D.N.Y. Nov. 17, 2006) .......................... 6

TrafFix Devices, Inc. v. Marketing Displays,Inc.,532 U.S. 23 (2001) .................................................................................................. 13

Two Pesos, Inc. v. Taco Cabana, Inc.,505 U.S. 763, 112 S. Ct. 2753 (1992) .................................................................. 8, 14

In re Visual Communications Co.,51 USPQ2d 1141 (TTAB 1999) .............................................................................. 10

Wal-Mart Stores, Inc. v. Samara Bros., Inc.,

529 U.S. 205, 54 U.S.P.Q.2d 1065 (2000) ............................................................... 13

Western Pub. Co. v. Rose Art Industries, Inc.,

910 F.2d 57 (2d Cir.1990) ....................................................................................... 12



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Yurman Design, Inc. v. PAJ, Inc.,262 F.3d 101 (2d Cir. 2001) .................................................................................. 5, 6

U.S.C.A.

15 U.S.C.A. 1114(1)(a) (2010).......................................................................................... 15

15 U.S.C.A. 1125(a)(1)(A) (2010) ................................................................................... 15

15 U.S.C.A. 1125(a)(3) (2010)........................................................................................... 4

15 U.S.C.A. 1127 (2010).......................................................................................12, 15, 16

STATUTES AND REGULATIONS

Fed. R. Evid. 1002, 1006....................................................................................................... 9

Fed. R. Civ. P. 12(b)(6)......................................................................................................... 1

Trademark Rule 2.51(a)(1).................................................................................................... 9

PERIODICAL PUBLICATIONS

Stacey L. Dogan & Mark A. Lemley, Grounding Trademark Law through TrademarkUse, 98 Trademark Reporter no. 6 1345 (Nov.-Dec. 2008) ...................................... 12

Thomas P. Gressette, Jr., The Heightened Pleading Standard of Bell Atlantic Corp. v.Twombly and Ashcroft v. Iqbal: A New Phase in American Legal History Begins,58 Drake L. Rev. 401 (2010) ..................................................................................... 3

William P. Kratzke,Normative Economic Analysis of Trademark Law, 21 Memphis St.U.L. Rev. 199 (1991)............................................................................................... 13

NON-PERIODICAL PUBLICATIONS

1 Jeffrey A. Handelman, Guide to TTAB Practice 10.11 (2008)......................................................................................................... 11

James Love Hopkins, The Law of Trademarks, Tradenames, and Unfair Competition

123 (3d ed. 1917) ................................................................................................. 15

J. Thomas McCarthy,McCarthy on Trademarks and Unfair Competition

8:2, 19:58, 15:16 (multivolume treatise) ..................................................13, 16, 18



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T.M.R.P. 2.52(b)(2) ............................................................................................................ 16

7 The Oxford English Dictionary, 1081 (2d ed. 1989) ........................................................... 5



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Defendant Thursday Friday, Inc. (Thursday Friday) respectfully submits this reply

memorandum of law in support of its motion to dismiss pursuant to Rule 12(b)(6) of the Federal

Rules of Civil Procedure.

PRELIMINARY STATEMENT

After filing a Complaint, and filing an Amended Complaint, plaintiff has finally clarified

that the basis for its claims is an alleged unregistered trade dress infringement. Having staked

out that position, plaintiffs Opposition brief (Opp.) then must labor mightily to distract the

Court from the most seminal fact in this case as to trade dress: that the overall image of the

Together Bag does not in any way resemble the overall look and feel of a bag in the HermsBirkin line. Even if the images on the sides of the Together Bag were those of a genuine Herms

Birkin, complete with word marks,1 a viable claim for trade dress violation requires that the

component distinctive parts of the total image of a product be adopted and used.

The Amended Complaint does not allege that Thursday Friday adopted even one stated

feature of the Herms Birkin trade dress, as the Together Bag does not have 1) a three-lobed flap

design, 2) a dimpled triangular profile, 3) a closure at all with any features, 4) a circular turn lock

for the closure to fit into, 5) a leather fob, or 6) a padlock (Am. Compl. 11), but instead an

open, boxy tote bag design and profile and none of the other features. As such, and in addition to

failing to articulate a precise trade dress, plaintiff cannot allege that Thursday Friday has created

a product that infringes on its claimed trade dress. Its claims of the existence and infringement

or dilution of the Birkin Bag Trademark thus fail, and with it any protection of it under federal

or state statute or common law.

1 Now that plaintiff is forced to admit the presence of word trademarks, it states they are tiny and irrelevant.(Opp. at pp. 12-13.) Plaintiff admits, though, that the word marks are on two of the four distinctive elements itactually states are part of its trade dress, the closure and the padlock. (Id. at p. 12.) Resolution of images is limitedby this Courts ECF system, as it would make some attachments too large to file, but here showing the originalimages, without magnification, was sufficient to show the trademarks.



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Similarly, nothing in the Amended Complaint or plaintiffs Opposition pleads or argues

that the images on the Together Bag can constitute a colorable imitation or use of plaintiffs

three-dimensional registered closure design, since the design is of an object, by the registrations

terms, that has physical moving parts and serves a particular purpose of closing a flap on a

handbag. The physical features of the Together Bag do not include either a strap or a flap. Just

as plaintiff cannot plausibly state that disconnected photographs of a non-Herms bag can serve

to replicate the overall look and feel of the Herms Birkin, the use of a photograph of a closure

on a bag that has no closure at all cannot possibly serve as a colorable imitation or use of

plaintiffs trademark, plaintiffs attempts to argue the contrary notwithstanding.Under Supreme Court precedent, none of plaintiffs several conclusory allegations in the

Amended Complaint, including legal conclusions, are entitled to the presumption of truth.2 What

remains is a thin gruel for the Court to analyze, but entirely appropriate to be analyzed under

Iqbaland found to be implausible either on their face or after the application of the Courts

experience and common sense.

STATEMENT OF FACTS

The relevant facts are set forth in the memorandum in support of this motion. Plaintiff

also adds three relevant facts: that plaintiff is attempting to plead an unregistered trade dress

claim, which was far from clear (Opp. at p. 5 n.2); that plaintiff admits that there are word

trademarks on the Herms Birkin (Opp. at pp. 12-13); and that plaintiff believes itself to have

been awaiting a trademark registration certificate for parts of the Herms Birkins design from

the United States Patent and Trademark Office since February 11, 2011. (Opp. Exh. A.)

2 Throughout, plaintiff hopes its legal conclusions will be presumed true: If the Birkin Bag design is a validtrademark or trade dress as must be assumed for the purposes of this motion . . . . (Opp. at p. 15) (to choose oneexample). Iqbalindicates that the opposite is true. See infra at pp. 3-4.



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ARGUMENT

I. Ashcroft v. IqbalDictates the Pleading Standard in this Case.

Plaintiffs Opposition opens with an attack on Thursday Fridays reliance on Ashcroft v.

Iqbal. (Opp. at p. 4 n.1.) Thursday Fridays reliance is well-placed, however, sinceIqbal

unequivocally extended the Twomblypleading standards to all civil cases, was cited 8500 times

in the District Courts and 400 times in the Circuit Courts of Appeals in its first year alone, and

has been referred to as the most important procedural ruling since Conley v. Gibson. Thomas

P. Gressette, Jr., The Heightened Pleading Standard of Bell Atlantic Corp. v. Twombly and

Ashcroft v. Iqbal: A New Phase in American Legal History Begins, 58 Drake L. Rev. 401, 402(2010).

In extending the Twombly pleading standards to all federal civil cases, the Supreme Court

prcisedits holding in the syllabus:

Two working principles underlie Twombly. First, the tenet that a court must accept acomplaints allegations is true is inapplicable to threadbare recitals of a cause of actionselements, supported by mere conclusory statements. [Twombly], at 555, 127 S. Ct. 1955.Second, determining whether a complaint states a plausible claim is context-specific,requiring the reviewing court to draw on its experience and common sense. Id., at 556,127 S. Ct. 1955. A court considering a motion to dismiss may begin by identifyingallegations that, because they are mere conclusions, are not entitled to the assumption oftruth. While legal conclusions can provide the complaints framework, they must besupported by factual allegations. When there are well-pleaded factual allegations, a courtshould assume their veracity and then determine whether they plausibly give rise to anentitlement to relief.

Ashcroft v. Iqbal, 129 S. Ct. 1937, 1940-41 (2009);see also id. at 1949-50;see also Bell Atlantic

Corp. v. Twombly, 550 U.S. 544, 599, 127 S. Ct. 1955, 1964-65 (2007) (While a complaint

attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual allegations, a

plaintiff's obligation to provide the grounds of his entitle[ment] to relief requires more than

labels and conclusions, and a formulaic recitation of the elements of a cause of action will not



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do.) (citations omitted).

Using this method, this Court need not consider the myriad conclusory allegations in the

Amended Complaint that are completely devoid of factual enhancement. Id. at 1951 (It is the

conclusory nature of respondents allegations, rather than their extravagantly fanciful nature, that

disentitles them to relief.). With those allegations that remain, this Court may use its experience

and common sense to analyze whether those residual allegations make plaintiffs claims of a

trademark, of infringement, and of dilution plausible. Id. As set forth below, the Amended

Complaint wholly fails this common sense test.

II. Plaintiff Does Not Allege a Birkin Bag Trademark.

Now that plaintiff has revealed that its Amended Complaint intended to plead

infringement and dilution of an unregistered trade dress, analysis of its inadequacy is

straightforward.3 The parties agree on the legal standard expressed in Sherwood 48 Assoc. v.

Sony Corp. of Am., 76 Fed. Appx. 389, 391 (2d Cir. 2003).4 (Defendants Memorandum in

Support of Motion to Dismiss (Mem.) at p. 11; Opp. at p. 17.) Though plaintiff does not

discuss the existence or adequacy of the facts pleaded for each element, it nevertheless concludes

that all four of these requirements are satisfied. (Opp. at 17.) In fact, none are.

A. Plaintiff pleads an open set of distinctive design features.

Plaintiff does not deny or address thatHeller v. Design Within Reach articulates the

specificity standard required to plead the existence of a protectable unregistered trade dress.

Heller, Inc. v. Design Within Reach, Inc., No. 09 Civ. 1909 (JGK), 2009 WL 2486054 *1 at *6

3 Thursday Friday did not suggest that there is anything talismanic about the term trade dress, just that it wasdifficult to tell that the Amended Complaint was trying to plead one, since the statute plaintiff attempts to sue underuses the term trade dress infringement for certain types of actions under that chapter but the Amended Complaintdoes not. 15 U.S.C.A. 1125 (a)(3) (2010).4 Plaintiff must 1) offer a precise explanation of the character and scope of the claimed trade dress; 2) allege thatthe claimed trade dress has secondary meaning; 3) allege a likelihood of confusion between the plaintiffs good andthe defendants; and 4) allege that the claimed trade dress is non-functional. Id.



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(S.D.N.Y. 2009). As to the first Sherwoodfactor, and as inHeller, plaintiff must articulate the

specific elements which compromise its distinct dress.Id., citing Landscape Forms, Inc. v.

Columbia Cascade Co., 113 F.3d 373, 379 (2d Cir. 1997). Moreover, the list of design elements

must be fixed and finite. Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 117 (2d Cir. 2001). So

while plaintiff claims that it has pleaded trade dress in at least as much specificity as the

parties in a number of cited cases (Opp. at p. 7), 5 plaintiff fails to fix and limit its trade dress

description as required by the Second Circuit, and as required to permit the Court to properly

analyze the claim.6

Here, plaintiff states four broad features with sub-features that are supposedly distinctive,but precedes the list with inter alia, which means amongst other things. (Am. Compl. 11);

7 The Oxford English Dictionary, at p. 1081 (2d ed. 1989) (under definition of inter). By these

prefatory words, which are nowhere disclaimed in the Opposition, and its further statement that

what they have identified are at leastfour specific distinctive elements of the Birkin Bag,

plaintiff admits that its claimed trade dress is an open set. (Opp. at p. 18) (emphasis added).

Perhaps the Court and Thursday Friday are expected to guess the other elements from the

photographs attached (Opp. at. p. 8), but in any event, what plaintiff pleaded was not a closed list

that gives any notice as to the specific elements that compromise its trade dress.7 Plaintiff fails

5See, e.g., Coach, Inc. v. We Care Trading Co., 67 Fed. Appx. 626, 2002 U.S. App. LEXIS 28143 *1 at *6 (2d Cir.May 20, 2002) (set of four elements claimed in trade dress); Metrokane Inc. v. Built NY, 2008 U.S. Dist. LEXIS107937 *1, **44-46 (S.D.N.Y. September 3, 2008) (set of four elements described).6

Heller, decided by this Court afterMetrokane, clearly usedLandscape Forms as imposing a requirement of proofthat affects what must be pleaded in trade dress cases. The guidance sought by the Magistrate Judge for pleadingstandards in Metrokane when only summary judgment cases were available (Opp. at p. 7) need not concern thisCourt, asHellerhas settled whatever ambiguity existed at the time ofMetrokane.7 As to those design features not listed in the text of the Amended Complaint but claimed by plaintiff to have stillbeen pleaded, they cannot but be guessed at by reference to the images attached. Natl Lighting v. Bridge MetalIndus.,LLC, 601 F. Supp.2d 556, 563 (S.D.N.Y. 2009) (where a laundry list and photographs were contained in acomplaint, court stated that it could not be expected to distill from a set of images those elements that are commonto a line of products and both distinctive and non-functional). However, even if more may be discerned from thephotos, from the top to the bottom of the Herms Birkin, from its stiff long leather handles to its protruding metal



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to specify its supposed trade dress not because it did not plead enough features, it fails because it

does not cut off the list at all, which is the essence of fair notice in this context.

The Second Circuit has identified four reasons for the requirement of a finite description

of a plaintiffs trade dress:

First, without a specification of the design features that compose the trade dress,different jurors viewing the same line of products may conceive the trade dress interms of different elements and features . . . .

Second, no juror can evaluate secondary meaning, overbreadth ornonfunctionality without knowing precisely what plaintiff is trying to protect . . . .

Third, . . . the identification of design elements that compose the asserted trade

dress will . . . assist in winnowing out claims that are overbroad as a matter of law. . . .

Fourth, [c]ourts will . . . be unable to shape narrowly tailored relief if they do notknow what distinctive combination of ingredients deserve protection. . . . And ifa court is unable to identify what types of design will infringe a trade dress, howis a competitor . . . to know what new designs would be subject to challenge . . . ?

Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 117 (2d Cir. 2001), cited inMetrokane, 2008

U.S. Dist. LEXIS 107937 at **42-43. Here, all four concerns are implicated where plaintiff has

failed to close the set of features at all, no matter how many are listed. Thus, plaintiff has failed

to satisfy the requirement that it settle on a closed list of factors that make up its trade dress such

that their combined effect on the total image of the bag may be analyzed, and a narrow remedy

for infringement fashioned.

B. Plaintiff does not plead its claimed design features are distinctive.

Plaintiff must, but failed utterly to, plead not just which features are distinctive but also

how they are distinctive. Heller, 2009 WL 2486054 at *6, citing Shevy Custom Wigs, Inc. v.

Aggie Wigs, No. 06 Civ. 1657, 2006 WL 3335008 *1, at *5 (E.D.N.Y. Nov. 17, 2006) (emphases

feet, plaintiff would only be claiming, without the embarrassment of actually having to claim, even more featuresthat it does not share with the Together Bag.



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in original). Plaintiff does not address this requirement in its Opposition. It is not the place of

the movant on a motion to dismiss to analyze whether each listed feature is in fact distinctive,

and indeed it is impossible to analyze the unlisted but allegedly distinctive features indicated by

inter alia setting off the list of features and repeated throughout the Opposition. But it is

sufficient to say that the Amended Complaint contains no facts whatsoever that state how the

elements of its supposed trade dress it does list are distinctive, as required.

Relatedly, plaintiff also does not plead any facts to support its formulaic conclusion that

the design of the Herms Birkin bag is non-functional. (Am. Compl. 11);see alsoNatl

Lighting, 601 F. Supp. 2d at 563 (complaint should make clear elements that are both distinctiveand non-functional). This naked conclusion is not entitled to the presumption of truth,Ashcroft

v. Iqbal, 121 S. Ct. at 1949, and no other facts support any inference relating to it, such as

whether the component parts of its claimed trade dress are themselves non-functional. Indeed, a

number of the elements it lists, such as a highly functional padlock (Am. Compl. 11), appear

to directly contradict this conclusory allegation. For this reason also, plaintiff fails to offer a

precise expression of the character and scope of the claimed trade dress, or to allege any facts in

support that the claimed trade dress is non-functional and dismissal is appropriate under either

the first or fourth Sherwoodprongs, or both. Heller, 2009 WL 2486054 at *5.

C. Plaintiff does not adequately allege secondary meaning of the

unregistered trade dress.

To establish secondary meaning, a manufacturer must show that, in the minds of the

public, the primary significance of a product feature or term is to identify the source of the

product rather than the product itself. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456

U.S. 844, 851 n. 11, 102 S.Ct. 2182, n. 11 (1982). In the trade dress context the product feature

requiring secondary meaning is the total image or overall appearance of the product, and



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may include may include features such as size, shape, color, color combinations, texture and

graphics. Two Pesos, 505 U.S. at 765 n. 1, 112 S. Ct. at 2755 n.1.

Plaintiff properly expresses six elements that may indicate secondary meaning, and

acknowledges that its pleading must include at least some of them. (Opp. at p. 9.)8 But plaintiff

concedes that it does not allege advertising expenditures sufficient to bolster its claims of

secondary meaning for the Birkin Bag Trademark. (Id.) Plaintiff does not state any attempts

to plagiarize the mark, nor the scope of that alleged plagiarism,9 other than a vague reference that

two juries, apparently in the same case, came to some finding of distinctiveness of some design

features of the Herms Birkin. (Am. Compl. 10.) It does not even cite an opinion in the case.Moreover, plaintiff claims it alleges unsolicited media coverage (Id.), but nowhere is that

coverage alleged in the Amended Complaint to be unsolicited, and in fact may well be heavily

solicited, eliminating that possible factor as well. Because it also does not claim that there are

any consumer studies in existence that show secondary meaning, plaintiff does not plead any

aspect of four of the six elements it cites to test for secondary meaning. (Opp. at p. 9.) This

itself renders its claim of secondary meaning implausible.

Additionally, plaintiff cites cases where those very elements that it does not plead at all

were enormously influential toward a finding of secondary meaning. Cartier, Inc. v. Four Star

Jewelry Creations, Inc., 348 F. Supp. 2d 217, 224 (S.D.N.Y. 2004) (noting that Cartier spent

$500,000 - $2,000,000 per year advertising and a considerable amount of unsolicited

advertising in the form of media commentary); Coach, 67 Fed. Appx. at 630, 2002 U.S. App.

LEXIS 28143 at *6 (noting Coachs promotional efforts, inherently distinctive elements, and

8 Those features are 1) advertising expenditures, 2) consumer studies linking the mark to the source, 3) unsolicitedmedia coverage of the product, 4) sales success, 5) attempts to plagiarize the mark, and 6) length and exclusivity ofthe marks use. Id.9 Plaintiff claims that intentional copying can overwhelm this analysis (Opp. at pp. 13-14), but pleads no factsrelating to similarity that meet any legal definition of copying, putting aside intent. See infra at pp. 13-18.



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200,000 copies per year being plagiarized). None of these factors important to the Coach and

Cartiercourts are alleged by plaintiff, and one of them, inherent distinctiveness, is expressly

disclaimed as irrelevant in contemporary cases. (Opp. at p. 12 n.7.)

Nor can an uncited, apparently unreported, and presumably not precedential jury finding

in another case based on an unstated trade dress operate to prove secondary meaning. (Opp. at

pp. 10-11.) Plaintiff had an opportunity to state any authority that emanates from those jury

findings that may have some res judicata or other effect on this analysis. That it did not do so

means that the jury findings in some other case have no effect at all, and are simply another legal

conclusion offered without factual enhancement.Equally perplexing is plaintiffs inclusion of partial correspondence with the USPTO

regarding what seems to be plaintiffs application to register some aspects of its trade dress.10 It

offers the correspondence as a constructive registration, as no certificate has been issued. (Opp.

Exh. A.) Even if a routine notification of non-final status can be a public document, it is

incomplete, so judicial notice is inappropriate. Fed. R. Evid. 1002, 1006. Its incompleteness

masks what details the application is seeking to register, so it is also irrelevant, because the

image offered is not clearly coterminous with a fixed set of distinctive design features, or with

those it chose to list in the Amended Complaint. (Opp. Exh. A.) And, pursuant to Trademark

Rule 2.51(a)(1), which provides that, in an application under section 1(a) of the Act (as is the

case herein), the drawing of the mark must be a substantially exact representation of the mark as

used on or in connection with the goods and/or services, the fact that the drawing, from what

10 To the extent the correspondence is relevant at all, it is to show the seemingly endless reservoir of bad faith ofplaintiff in imposing costs on the defendant to first deal with an obvious factual misstatement and then to answer ordefend Counts relating to the unregistered Birkin Bag Trademark when plaintiff knew as of February 11, 2011(six days before the Amended Complaint was filed), that a certificate would issue, which would obliterate itsunregistered trade dress claims. (Opp. p. 11 n.6.) To plead and maintain a cause of action that a plaintiff knows willbe legally frivolous in the very near future (or right now, if plaintiffs judicial notice proffer is to be considered) isthe very definition of a meritless legal claim, and provides a strong argument for dismissing all counts relating to theclaimed unregistered Birkin Bag Trademark in itself.



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can be seen of the correspondence, does not contain the Herms-Paris word mark on the

closure, implies that plaintiff may have been just as forthcoming with the USPTO about the

presence of word marks as it was in the original Complaint (that is, until a sanctions motion was

about to issue). Id.11 Further, the chimera that proof of a registration of a trade dress provides an

argument not to dismiss an unregistered trade dress claim (because registered trade dresses are

claimed not to need to prove secondary meaning) is so devoid of legal merit as to be totally

frivolous. The content of the correspondence, if accepted as true, provides ample reason to

dismiss all claims relating the Birkin Bag [unregistered] Trademark at once.

Nowhere does Thursday Friday state that the presence of word trademarks causes there tobe no secondary meaning. (Opp. at p. 12.) Instead, Thursday Friday merely cites the long line

of cases that any secondary meaning of other parts of an object that also contains word

trademarks must plead and prove secondary meaning separate and apart from those word marks.

(Mem. at pp. 8-9.) This line of cases has long applied to trade dress. See In re Mogen David

Wine Corp., 372 F.2d 539 (C.C.P.A. 1967) (wine bottle design does not create a commercial

impression separate and apart from the word marks.);In re Visual Communications Co., 51

USPQ2d 1141, 1145-46 (TTAB 1999) (no evidence of promotion of product configuration apart

from word marks, so no secondary meaning found);In re Edward Ski Prods., Inc., 49 USPQ2d

2001, 2005 (TTAB 1999) (The deficiency in applicants claim of acquired distinctiveness lies in

the absence of any evidence of the promotion by applicant of the configuration of its ski masks

as a trademark. While the product design may be shown on each and every advertisement, there

is no indication that a potential purchaser would view this as more than a picture of the goods.

11 Should discovery occur, and it be shown that in either registration, the word trademarks present on the HermsBirkin were not revealed to the USPTO upon application, Thursday Friday will seek to amend its responsivepleading to add a counterclaim for cancellation of that registration, as the registration(s) may have been procured byfraud.



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The shape of the mask has not been advanced as a means of recognizing applicant as the source

of the product; only the word mark THE MASQUE has been used in the manner of a

trademark.). See also 1 Jeffrey A. Handelman, Guide to TTAB Practice 10.11 at p. 10 (2008)

([I]n a product configuration case, the relevant secondary-meaning inquiry is whether the

productsshape apart from any word trademarkappearing on the product signifies a single

producer. The key question is whether the shape itself creates a commercial impression as a

signifier of source separate and apart from any labeling appearing on the product.). The

Amended Complaint cannot be seen to plead secondary meaning apart from the word marks,

which could explain why plaintiff could not bring itself to acknowledge the word marks in eitherthe Complaint or the Amended Complaint. Further, Thursday Fridays Memorandum shows

how plaintiffs claims of secondary meaning are simple conclusions with no additional factual

enhancement as to its formulas and labels, providing no substance for the Court to analyze on the

point. (Mem.at pp. 13-14). Accordingly, and for all these reasons, secondary meaning is not

adequately pleaded as to the Birkin Bag Trademark.

D. Likelihood of confusion between the two marks is pleaded only in themost conclusory way.

In its initial Memorandum, Thursday Friday made clear how conclusory and devoid of

factual content plaintiffs claims of likelihood of confusion between the two bags are. (Mem. at

pp. 17-18 n.5.) None are entitled to the presumption of truth, and no other facts can be said to

enhance those conclusions sufficient to raise the plausibility, in the Courts mind, that likelihood

of confusion is probable.American Steel Foundries v. Robertson, 269 U.S. 372, 383, 46 S. Ct.

160 (1926) ([W]e are of the opinion that it does not appear that the use of the word as a trade-

mark upon the goods of the plaintiff will probably confuse or deceive the public, . . .); Grotrian,

Helfferich, Shulz, Th. Steinweg Nachf. v. Steinway and Sons, 523 F.2d 1331, 1342 n.20 (2d Cir.



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1975) (A mere possibility [of confusion] would not be enough.). Nor is it plausible working

from the non-conclusory allegations that Thursday Fridays supposed use of the plaintiffs

overall image of the Together Bag is likely to confuse an appreciable number of ordinary

prudent purchasers as to the source of the product or service in question. Western Pub. Co. v.

Rose Art Industries, Inc., 910 F.2d 57, 59 (2d Cir.1990). Merely arguing that it recited the legal

formula is not enough. (Opp. at p. 19) (Herms [sic] claim . . . includes allegations that

Defendants acts are likely to . . . cause confusion among consumers.); Twombly, 550 U.S. at

559, 127 S. Ct. at 1964-65. Plaintiff thus fails to adequately plead likelihood of confusion.

III.

Plaintiff Does Not Plead Use of the Claimed Birkin Bag Trademark.

Plaintiff argues in its Opposition that Defendant affixes . . . images of the Herms

Birkin and that this constitutes affixing its trade dress to constitute use under the Lanham Act.

(Opp. at p. 18.) Plaintiff does not anywhere allege that Thursday Friday used plaintiffs actual

trade dress, which in this context can only mean that it uses the elements that make up the

overall image of the Herms Birkin as is necessary to make out a trademark use. 15

U.S.C.A. 1127 (2010). To the contrary, plaintiff simply conflates use and in commerce to

bootstrap its arguments about the commercial sale of the Together Bag and use. (Opp. at pp.

18-19.) This is exactly the opposite of what the Second Circuit requires, that use, in

commerce and likelihood of confusion be pleaded separately and have substance. 1-800

Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400, 412 (2d Cir. 2005).

Generally speaking, If a party adopts its competitors protected, non-functional product

configuration in a way that confuses potential customers over source, sponsorship, or affiliation,

it is engaged in a trademark use of that trade dress. Stacey L. Dogan & Mark A. Lemley,

Grounding Trademark Law through Trademark Use, 98 Trademark Reporter no. 6 1345, 1376



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(Nov.-Dec. 2008). The Second Circuits separate and iconoclastic use pleading requirement,

derived from its reading of the statutory meaning of the terms use and in commerce, can

only mean, in trade dress cases, that defendant adopted its competitors protected, non-functional

product configuration, without reference to likelihood of similarity. 1-800 Contacts, 414 F.3d at

412 (absent improper use of 1-800s trademark, however, such conduct does not violate the

Lanham Act), citing TrafFix Devices, Inc. v. Mktg. Displays, inc., 532 U.S. 23, 29, 121 S. Ct.

1255 (2001).12 The Second Circuits requirement of pleading use has particular value where,

as here, there is no multiplicity of similarities of the two trade dresses to analyze at all and,

ideally, disposed early in the litigation process. 1 McCarthy on Trademarks 8:2 at 8-10 (It isthe multiplicity of similarities, each of which may be nonexclusive with plaintiff, that may

result in unfair competition.) (citation omitted); Wal-Mart Stores v. Samara Bros., 529 U.S.

205, 214, 54 U.S.P.Q.2d 1065, 1069 (2000) (need for clear rules in trademark law to allow

summary disposition of anti-competitive strike suits). Plaintiffs Opposition does not even

acknowledge the requirement.

To further stretch the Lanham Act beyond any language or conceivable intent, plaintiff

asserts that even though the photographed bag is a lookalike bag (though one without word

trademarks (Opp. at 19)), there is some type of derivative infringement occurring. That is,

plaintiff has apparently alone determined that the bag photographed for the sides of the Together

12 Nothing in the expansive analysis of the meaning of the terms use and in commerce as defined in 15 U.S.C.A. 1127, and as applying to infringement claims under 15 U.S.C.A. 1114 and 1125, can be seen to be restricted to

the facts of1-800 Contacts or its progeny in the keyword advertising context. The requirement of pleading use,meaning use as separate from in commerce or likelihood of confusion, is applicable to all Lanham Act cases.Id.; Rescuecom v. Google, 562 F.3d 123, 127 (2d Cir. 2009) (1-800 Contacts court ruled that a complaint fails tostate a claim under the Lanham Act unless it follows 1-800 Contactss precedential definition of use incommerce.). Important also was the 1-800 Contacts courts citation of William P. Kratzke,Normative EconomicAnalysis of Trademark Law, 21 Memphis St. U.L. Rev. 199, 223 (1991), which criticiz[ed] importation intotrademark law of unjust enrichment and free riding theories based on a trademark holders goodwill. Id. at411. That importation is exactly what plaintiff seeks as punishment for simply riding on the reputation andrecognition of the Birkin Bag to sell its otherwise generic tote bags (Am. Compl. 1), and provides another reasonfor dismissal of the counts related to the claimed Birkin Bag Trademark.



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Bag infringes on its trade dress, so any photograph of that bag must also do that. These

judgments by plaintiff did not make the text of the Complaint, however, and would only have

added to the legal frivolity and practical implausibility of its claims if they had.

The one case of relatively ancient vintage offered as authority on the matter of images,

Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979),

actually involved the creation and (vulgar) depiction by defendant of a three-dimensional and

almost identical copy of all elements of the plaintiffs trade dress, where defendant did not argue

that the use requirement was at issue, and the case turned on damage to reputation and

consumer confusion. Id. at 205. Plaintiffs suggestion thatDallas Cowboys applies in this casedenies the fact that here, the product in question is a three-dimensional bag that may be

compared to plaintiffs trade dress directly. Far from miss[ing] the point (Opp. at p. 15), the

existence of an infringing trade dress, created by the adoption of the senior trade dresss features,

is a requirement for a trade dress infringement case. The only relevant point is that, where there

are no physical similarities between two trade dresses there is no infringing trade dress, as here.

1-800 Contacts sets a standard of pleading use of trademarks by defendant, meaning

here the actual use of the overall design made up of all of the plaintiffs distinctive trade dress

elements. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1, 112 S. Ct. 2753, 2755

n.1 (1992); Cartier, 348 F. Supp. 2d at 224 (defendants watch designs were nearly identical in

every way pleaded); Coach, 2002 U.S. App. LEXIS 28143 *6 (all four of plaintiffs pleaded

design elements were adopted by defendant); Metrokane, 2008 U.S. Dist. LEXIS 107937 at *44-

46 (every design element pleaded was adopted by defendant). The Together Bag exists in three

dimensions, and its overall appearance when compared to the Herms Birkins overall

appearance must be analyzed without regard for likelihood of confusion, but contains none of the



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design features on the also-three-dimensional Herms Birkin.13 Any use of the Herms

Birkins overall appearance by Thursday Friday is implausible.

The Oppositions reliance on the in commerce requirement is not enough. Plaintiff

simply does not plead use of any three-dimensional trade dress elements that could possibly

make up an infringing trade dress (an infringing overall image including the trapezoidal shape,

actual loops, actual strap, and actual padlock). It cannot be said either that plaintiff pleaded any

use separate from its conclusory statements on likelihood of confusion, since they can only be

derived, if at all, from the exact same allegations attempting to plead likelihood of confusion.

(Mem. at pp. 17-18 n.5.) For all these reasons, plaintiff does not plead a use of its trademarkby Thursday Friday under the Lanham Act as required in this Circuit. 15 U.S.C.A.

1114(1)(a), 1125(a)(1)(A) (2010).

IV. Plaintiff Does Not Plead a Colorable Imitation of its Registered Mark.Plaintiff argues that the Amended Complaint states a knockoff or colorable imitation.

(Opp. at p. 16.) The law disagrees. There can be no question that plaintiff cannot plead that

Thursday Friday has counterfeited (knocked off) its registered closure, as that requires it be

a spurious mark which is identical with, or substantially indistinguishable from, a registered

mark. 15 U.S.C.A. 1127 (2010). No allegations exist that the photographic production,

whatever that might mean (Am. Compl. 27), is actually a copy or reproduction of the mark

within the meaning of the Lanham Act, which has long been thought to also include a

requirement of identity or near-identity. See James Love Hopkins, The Law of Trademarks,

Tradenames, and Unfair Competition 123 at p. 300 (3d ed. 1917) (A counterfeit mark is a

facsimile, that is an exact copy or reproduction of a genuine trademark.). All that is left is

13 Under plaintiffs reading ofDallas Cowboys, the cover design for Bringing Home the Birkin, essentiallyphotocopying the actual three-dimensional registered closure (including the word mark) would also be a trademarkuse of the registered closure, though it does not appear that plaintiff so objected. (Am. Compl 17.)



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colorable imitation, which has long meant any mark which so resembles a registered mark as

to be likely to cause confusion or mistake or to deceive. 15 U.S.C.A. 1127 (2010). Careful

inspection is required to distinguish a colorable imitation from the genuine, in contrast to

situations when ordinary attention by the purchaser of the article would enable him at once to

discriminate the one from the other.Abercrombie & Fitch Co., et al., v. Moose Creek Inc., et

al., 468 F.3d 629, 638 (9th Cir. 2007), citing McLean v. Fleming, 96 U.S. 245, 255, 24 L.Ed. 828

(1877). All four statutory possibilities require near identity of the marks to be actionable. Here,

the Lanham Acts test is whether the Together Bag contains any feature that closely resembles

the actual closure on the Herms Birkin. Because there is no closure at all, anyone candistinguish the two immediately, including the Court.

The same analysis of use as for trade dress,supra at pp. 13-16, leading to the

conclusion that it was not adequately pleaded here, applies to plaintiffs claim of infringement on

its three-dimensional closure design, which actual closure nowhere appears on the Together Bag.

In addition to the obvious physical dissimilarities between the registered closure and the

photograph of the closure on a bag with no flap and no strap, which the Court may take into

account on a motion to dismiss, lack of pleading likelihood of confusion adequately also is

insufficient to plead a colorable imitation of the closure of the Herms Birkin.

But the fact that the mark itself has three-dimensional features is also extremely relevant to

finding that Thursday Friday used a colorable imitation of the registered closure on the

Together Bag. If the mark has three-dimensional features, the applicant [for registration] must

include a description of the mark indicating that the mark is three-dimensional, and the applicant

must submit a drawing that depicts a single rendition of the mark. T.M.R.P. 2.52(b)(2)

(Trademark Rules and Practice of the Patent and Trademark Office), cited in 3 McCarthy on



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Trademarks 19:58 at 19-179. Plaintiff, in its Opposition, does not and certainly cannot deny

that the registration expresses a mark that requires three dimensions to function. (Am. Compl.

Exh. B) (showing a closure wrapping around stated to be attached to the flap of a handbag and

rendering a perspective view of the three-dimensional mark). It cannot be, then, that an

infringing colorable imitation of a three-dimensional mark on a handbag could ever be

expressed in two dimensions on a handbag, particularly one that has no flap, loops, or straps as

might be actionable on an identical or near-identical three-dimensional bag with those features.

V. The Federal Dilution Claim Is Inadequately Pleaded.In addition to failing to plead fame adequately within the prudential limits set forth in

Heller(Mem. at pp. 22-24), plaintiff does not state anything in its Complaint that alleges fame

outside its registered word marks shown on the Herms Birkin, and does not address it in its

Opposition, even after admitting that there are word marks on the bag. (Opp. at pp. 12-13.) The

federal dilution claim may be dismissed on this ground as well as the others stated in the

Memorandum. (Mem. at pp. 21-26.)

As to tarnishment, Plaintiffs reliance on the posture of the case at the time of the

decision in Clinique is equally meritless. Clinique stands for the proposition, exceedingly

relevant to this case, that even if plaintiff proves a lower price and lower quality for defendants

good, it is not sufficient to prove shoddiness. Clinique Laboratories, Inc. v. Dep Corp., 945 F.

Supp. 547, 562 (S.D.N.Y. 1996). Since that is all plaintiff pleads in this case, it cannot raise the

plausibility of its federal and state tarnishment claims.

VI. Plaintiff Does Not Plead a Cause of Action for New York Common LawTrademark Infringement or Unfair Competition.

Plaintiff does not plead a state infringement claim for the same reasons it cannot plead its

federal claims. Plaintiff also does not claim that it adequately pleads bad faith as to the New



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York State common law unfair competition claim. Instead, it argues that it does not have to.

(Opp. at 20-21); but see,Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037, 1044 (2d

Cir. 1980) (The essence of an unfair competition claim under New York law is that the

defendant has misappropriated the labors and expenditures of another . . . . Central to this

motion is some element of bad faith.); 3 McCarthy on Trademarks 15:16 at 15-31, 23:113 at

23-357 ([S]everal Second Circuit and New York decisions recite that to prevail in any claim of

unfair competition, New York law requires proof of bad faith, defined by the Second Circuit as

the intent to sow confusion between the two companies products). Its recitations as to bad

faith cannot withstand even the most cursory review when the Court culls conclusory allegationsfrom the Amended Complaint on this motion to dismiss, and they ought not be assumed to be

true. Thursday Friday cannot be said, and were not said by plaintiff, to have taken all steps

possible, or any steps at all, to create confusion as to the two totally dissimilar trade dresses or

between the two-dimensional photo of a closure and Hermss registered three-dimensional

closure, complete with word marks. To the vast extent that those articles differ physically, the

differences can be assumed to have been intentional, not assumed to imply bad faith. (Opp. at

p.14 ("the obvious intent is to make people believe that it is a photo of a Birkin Bag.").) There

are no other statements that make such a claim of bad faith plausible in the Amended Complaint.

VII. The State Dilution Claim Is Inadequately Pleaded.Plaintiff makes no effort to contend with the fact that the design of the Herms Birkin and

the design of the Together Bag must be very or substantially similar to invoke New York

General Business Law Section 360-l. Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A.,

Inc., 875 F.2d 1026, 1028-29 (2d Cir. 1989); (Mem. at p. 28-29). Though plaintiff relies on

bloodless abstraction after bloodless abstraction to try to imply physical similarity, or encourage



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the Court to ignore its total lack thereof, despite the clear legal standard that the dresses or

imitation actually resemble one another, neither the appearance of the two trade dresses nor the

three-dimensional registered mark when compared to the photograph of anothers mark can be

said to be very similar to each other, so this claim fails as well.

In addition, plaintiffs pleading of injury to business reputation is admittedly tracking

the language of the statute (Opp. at p. 22), and adds no facts that raise the plausibility of its

claim. Without more, not only is the elemental recitation not entitled to the presumption of truth,

it is also rendered implausible by its lack of factual enhancement.

CONCLUSION

For all the above reasons, all Counts in the Amended Complaint should be dismissed with

prejudice.

Dated: Richmond, VirginiaApril 1, 2011

THE CIMBALO FIRM, P.C.

/s/ Jeffrey L. CimbaloJeffrey L. Cimbalo (JC-6680)1306 W. Main St.Richmond, VA 23220Tel: (804) 313-6266

Paul R. Niehaus (PN-3994)S. Gabriel Hayes-Williams(SH-0775)NIEHAUS LLP

1359 BroadwaySuite 2001New York, NY 10018Tel: (212) 631-0223Fax: (212) 624-0223

Attorneys for DefendantThursday Friday, Inc.



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CERTIFICATE OF SERVICE

I, Jeffrey L. Cimbalo, an attorney duly admitted to the bar of this court, and thePrincipal of the law firm The Cimbalo Firm, P.C., Counsel to Defendant ThursdayFriday, Inc., hereby certify that on April 1, 2011, a true and correct copy of the Reply

Memorandum in Support of Defendants Motion to Dismiss under Rule 12(b)(6) has beenelectronically filed with the Clerk of Court using the CM/ECF system, whichautomatically sent e-mail notification to counsel of record to Andrew Baum [email protected].

Dated: April 1, 2011Richmond, Virginia

/s/ Jeffrey L. CimbaloJeffrey L. Cimbalo


hermes v. thursday friday reply in support of mtd

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