Appeal No. 06-0620

In the UNITED STATES COURT OF APPEALS

FOR THE TWELFTH CIRCUIT

RIGGS HOUSTON, Plaintiff,

v.

LAREDO SPECIALTY PRODUCTS, INC. and LANCE LAREDO,

Defendants.

On Appeal from the United States District Court for the District of Utopia

BRIEF FOR DEFENDANTS

Team W-12-024 Attorneys for Defendants

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QUESTIONS PRESENTED

I. The RIGGS ROCKER product design trade dress is not entitled to protection under the

Lanham Act since the functional features uniquely alter the tone of the guitar, do not create

a mental connection in potential consumers with a product source, and present no threat of a

likelihood of confusion among consumers with LSP’s miniature souvenir guitar.

II. Defendant LSP’s miniature souvenir guitars are not trademark counterfeits of the RIGGS

ROCKER because LSP did not intentionally create merchandise that was, nor could have

been, considered identical with or substantially indistinguishable from the RIGGS

ROCKER.

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TABLE OF CONTENTS

QUESTIONS PRESENTED............................................................................................................................. i TABLE OF CONTENTS................................................................................................................................. ii TABLE OF AUTHORITIES .......................................................................................................................... iv STATEMENT OF THE CASE...................................................................................................................... vii

A. Factual Background.................................................................................................................. vii B. Proceedings Below..................................................................................................................... x C. Standard of Review .................................................................................................................. xii

INTRODUCTION ........................................................................................................................................ xiii SUMMARY OF THE ARGUMENT .............................................................................................................. 1 ARGUMENT................................................................................................................................................... 3

I. THE RIGGS ROCKER TRADE DRESS IS NOT ENTITLED TO PROTECTION UNDER THE LANHAM ACT SINCE IT IS FUNCTIONAL, NON-DISTINCT, AND PRESENTS NO THREAT OF A LIKELIHOOD OF CONFUSION WITH LSP’S MINIATURE SOUVENIR GUITARS.......................................................................................................................................... 3 A. The RIGGS ROCKER Trade Dress Uniquely Alters The Sound Of The Guitar And Is

Therefore Functional. ................................................................................................................. 4 B. The RIGGS ROCKER Trade Dress Should Not Be Protected Under The Lanham Act

Because It Is Product Packaging And Cannot Be Inherently Distinctive And Has Not Acquired Secondary Meaning. ................................................................................................... 6 1. The RIGGS ROCKER trade dress is product design intended to increase the product’s

appeal, not indicate a source, and therefore is not inherently distinctive. .......................... 7 2. The RIGGS ROCKER trade dress has not acquired secondary meaning because it does

not create a mental connection to consumers as to the product’s source............................ 9

C. There Is No Likelihood of Confusion Between Mr. Laredo’s Souvenir Guitars and Mr. Houston’s Full Sized Instrument Guitar................................................................................... 10

II. DEFENDANT LSP’S MINIATURE SOUVENIR GUITARS ARE NOT TRADEMARK COUNTERFEITS OF THE RIGGS ROCKER BECAUSE LSP DID NOT INTENTIONALLY CREATE MERCHANDISE THAT WAS, NOT COULD HAVE BEEN, CONSIDERED IDENTICAL WITH OR SUBSTANTIALLY INDISTINGUISHABLE FROM THE RIGGS ROCKER......................................................................................................................................... 15

A. Though The Trademark Registrations For The RIGGS ROCKER Are Valid, Plaintiff Cannot Prevail Under A Trademark Counterfeit Claim Since He Has Failed To Establish That Defendants Intentionally Used A False Mark That Was Identical With Or Substantially Indistinguishable From The RIGGS ROCKER. ...................................................................... 17

B. LSP’s Souvenir Guitars Are Not A Spurious Designation Of The RIGGS ROCKER, Nor Are They Physically Or Visually Identical With Or Substantially Indistinguishable From Its Trade Dress......................................................................................................................................... 18 1. LSP’s souvenir guitars are not a spurious designation of the RIGGS ROCKER because

Mr. Laredo did not have an intent to deceive consumers, nor did he have knowledge that his conduct could amount to an alleged infringement. ..................................................... 19

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2. LSP’s souvenir guitars, which are miniature versions of full-sized guitars, are not identical with nor substantially indistinguishable from the RIGGS ROCKER due to obvious differences in size, style, and color. .................................................................... 22

C. Given The Lack Of Case Law Clarifying The Meaning Of “Identical With” Or “Substantially Indistinguishable From” Within The Meaning Of The Lanham Act, This Court Can Look To Patent Law’s Literal Infringement Doctrine And Find That LSP’s Souvenir Guitars Are Not A Literal Infringement Of The RIGGS ROCKER....................................................................... 24

CONCLUSION.............................................................................................................................................. 26 TABLE OF APPENDICES .................................................................................................................... App. 1

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TABLE OF AUTHORITIES United States Supreme Court Cases: Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165 (1995)............................................................................................................ 4 TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 20 (2001)............................................................................................................... 4 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 766-773 (1992)……………………………………..……………………. passim Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 215 (2000)........................................................................................ 3, 7, 8, 9 United States Circuit Court Cases: Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) ............................................................................................... 7 Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 629 (6th Cir. 2002). ..................................................................................... 4, 5, 6 Allied Mktg. Group, Inc. v. CDL Mktg., Inc., 878 F.2d 806, 813 (5th Cir. 1989). ........................................................................................... 11 AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979). ........................................................................................... 13 Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 868 (8th Cir. 1994) ...................................................................................xii, xiii, 9 Babbit Elec., Inc. v. Dynascan Corp., 38 F.3d 1161, 1181 (11th Cir.1994) ......................................................................................... 16 Hoxworth v. Blinder, Robinson & Co., 903 F.2d 186, 198 (3d Cir.1990).............................................................................................. xiii John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983) ........................................................................................... 3 Kelly-Brown v. Winfrey, 717 F.3d 295, 315 (2d Cir. 2013).............................................................................................. 23 Lane Capital Management, Inc. v. Lane Capital Management,

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Inc., 192 F.3d 337, 345 (2d. Cir. 1999). .................................................................................. 17 Larami Corp. v. Amron, 91 F.3d 166 (Fed. Cir. 1996)..................................................................................................... 25 Lorillard Tobacco Co. v. Bisan Food Corp., 377 F.3d 313, 319 (3d Cir. 2004)............................................................................................. xiii Nikon Inc. v. Ikon Corp., 987 F.2d 91, 95 (2d Cir. 1993).................................................................................................. 14 Paddington Corp. v. Attiki Importers & Distributors, Inc., 996 F.2d 577, 584-85 (2d Cir. 1993). ................................................................................ xiii, 15 Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir. 1987). ........................................................................................... 20 Shire US Inc. v. Barr Laboratories, Inc., 329 F.3d 348, 353 (3d Cir. 2003)............................................................................................... 9 Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d 780, 786 (8th Cir. 1995). ............................................................................................... 7 Versa Products Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 201 (3d Cir. 1995)...................................................................................... 9, 12, 14 Vuitton v. White, 945 F.2d, 569, 574 (3d Cir. 1991)............................................................................................ xiii Yamaha Intern. Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 1580 (Fed. Cir. 1988) .......................................................................... 7, 14

United States District Court Cases: Chanel, Inc. v. Gordashevsky, 558 F. Supp. 2d 532, 538 (D.N.J. 2008) ................................................................................... 19 Ford Motor Co. v. Heritage Mgmt. Grp., 911 F. Supp. 2d 616, 622 (E.D. Tenn. 2012)...................................................................... 19, 20 GMA Accessories, Inc. v. BOP, LLC., 765 F. Supp. 2d 457, 471 (S.D.N.Y. 2011). ........................................................... 17, 18, 22, 23 Goddard, Inc. v. Henry's Foods, Inc., 291 F. Supp. 2d 1021, 1046 (D. Minn. 2003)........................................................................... 10

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Gucci Am., Inc. v. Duty Free Apparel, Ltd. 286 F. Supp. 2d 284, 287 (S.D.N.Y. 2003) .............................................................................. 20 ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp. 2d 345, 351 (S.D.N.Y. 2000) ................................................................................ 11 Nike, Inc. v. Top Brand Co., 00 Civ. 8179(KMW), 2006 WL 2884437 (S.D.N.Y. Oct. 6, 2006)……………….…….21 Lifted Research Grp., Inc. v. Behdad, Inc., 591 F. Supp. 2d 3, 7 (D.D.C. 2008) .......................................................................................... 20 Louis Vuitton S.A., 875 F.2d 584, 590 (7th Cir.1989) ....................................................................................... 21, 22 Philip Morris USA Inc. v. Jackson, 826 F. Supp. 2d 448, 452 (E.D.N.Y. 2011). ....................................................................... 17, 24 Wheel Specialties, Ltd. v. Starr Wheel Grp., Inc., 918 F. Supp. 2d 688, 691 (N.D. Ohio 2013)............................................................................. 20 United States Court of Customs and Patent Appeals: Application of Hehr Mfg. Co., 279 F.2d 526, 528 (C.C.P.A. 1960) .......................................................................................... 10 Federal Statutes: 15 U.S.C. § 1052 (2006) ................................................................................................... 7, 8, 9, 14 15 U.S.C. § 1065 (2010) .............................................................................................................. xiii 15 U.S.C. § 1114 et seq. (2005)........................................................................................... x, xi, 16 15 U.S.C. § 1115 (2002). .............................................................................................................. 17 15 U.S.C. § 1116 et seq. (2008).................................................................................. 16, 17, 18, 25 15 U.S.C. § 1125 (2012) ................................................................................................... x, 3, 4, 11 28 U.S.C. § 1331 (1980) ................................................................................................................ xi 28 U.S.C. § 1338 et seq. (2011)..................................................................................................... xi 28 U.S.C. §1391(2011) .................................................................................................................. xi Treatises: 4 McCarthy on Trademarks and Unfair Competition § 25:10 (4th ed.) ....................................... 22 Thomas McCarthy, McCarthy on Trademark § 25:10 (3d ed. 1997) ......................... 16, 17, 19, 22

Restatements: Restatement (Third) of Unfair Competition §17 (1995)............................................................. 4, 6

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STATEMENT OF THE CASE

A. Factual Background

Lance Laredo is the founder and Chief Executive Officer (“CEO”) of Laredo Specialty

Products, Inc. (“LSP”), a family-run business organized under the laws of Utopia with an office

in downtown Cottonwood and a manufacturing facility in Granger. Mr. Laredo is a citizen of

Utopia, maintains a residence in Cottonwood, and was born and raised in the small town of

Granger, which is about 200 miles west of Cottonwood. Throughout his youth, Mr. Laredo

demonstrated an ambition and aptitude for business and entrepreneurship. Record 13. At nine

years old, he started a small business of making and selling kindling bundles from tumbleweed

twigs he gathered on the ranch. He was a Utopia 4H Livestock Blue Ribbon Winner for five

years in a row for his award-winning longhorn steer. His work experience also included

wrangling rattlesnakes for neighboring ranches, digging fence posts, delivering newspapers, and

selling snacks and souvenirs at the local rodeo. Mr. Laredo’s business acumen earned him local

prestige and he was described in the Utopia Prairie Companion as a “silver-tongued salesman”

in 2011. Id.

After graduating high school, Mr. Laredo attended business school at the University of

Cottonwood and landed an externship with the local Travis Cottonwood Toy Factory, where he

learned how to manufacture and sell niche products. Id. at 14. After graduating from business

school, Mr. Laredo founded “LSP” (Laredo Specialty Products) with a $75,000 award from the

Cottonwood Chamber of Commerce. Id. at 15. LSP is a family owned and operated business

and the largest employer in Granger, employing over twenty percent of the population. Id. at 3.

Armed with his new business degree, Mr. Laredo decided to take advantage of and participate

in Cottonwood’s growing tourism industry. Id. at 15. As a result, his first products were a series

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of souvenirs with local themes – small wooden bronco, a rattlesnake keychain, and an oversized

pencil with the word “Cottonwood” printed down the side surrounded by images of local

wildlife. Id. Today, LSP specializes in making tourist souvenirs for local souvenir stalls and

airport gift shops. Id. at 3.

The RIGGS ROCKER, as shown in App. A, is a guitar created by country-western

music icon Riggs Houston, a current resident of Cottonwood, which incorporates several

features distinctive of the City of Cottonwood: a star-shaped sound hole identical to the star on

the Cottonwood flag and a cowhide covered surface. Id. at 4. Mr. Houston rose to fame in 2006

after he posted a music video of him singing an original song over clips of his childhood home

videos. Id. After the video went viral on several video sharing websites, Mr. Houston was

bombarded with invitations for performance gigs and television appearances. Id. at 5.

The RIGGS ROCKER was first seen on national television in 2007 on the show Next

U.S. Music Icon, in which Mr. Houston played a song from his first album. Id. at 6. The clip

received more than ten million hits on the internet by the following week, and was viewed by

Mr. Laredo. Id. After winning the Next U.S. Music Icon competition, and prior to a tour of U.S.

military installations, Mr. Houston added a replica of a U.S. flag to the pick guard on the front

of the guitar. Id. at 7. Due to the RIGGS ROCKER’s wide appeal, the leading guitar

manufacturer in Utopia, Gilroy Guitars, negotiated an agreement with Mr. Houston to

manufacture and sell RIGGS ROCKER guitars, which today are a popular commodity with over

one hundred thousand annual sales. Id. at 8. Mr. Houston is also in the process of developing a

line of specialty guitar accessories and merchandise featuring the RIGGS ROCKER design and

the American Flag, which includes guitar picks and neck straps. Id.

On April 25, 2012, “Guitars International” published an article on guitar acoustics

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which detailed how the star-shaped sound hole and the cowhide surface layer alter the acoustics

of the RIGGS ROCKER. Id. at 11. The article cites studies by Claire Langston, a Ph.D.

candidate in guitar acoustics, who engaged in a detailed analysis of the effect of the shape and

composition of hundreds of different guitars for her thesis. Id. at 10. The article also cited

laboratory tests confirming a direct correlation between the dimensions of a sound hole and the

sound waves produced by a guitar when played. Id. at 11. For example, a sound hole with

sharper edges or straight lines will produce a “distinctly twangy sound.” Id. The article also

noted that materials from which a guitar is made directly impact the sound it produces. Id.

In 2012, Mr. Laredo chose to manufacture miniature guitars, as shown in App. B, to be

sold at the 2013 COUNTRYWOOD Music Festival He sought to create a miniature guitar that

could serve as a souvenir of the lovely city of Cottonwood. Id. at 16. Mr. Laredo recalled local

country singer Mr. Houston’s RIGGS ROCKER guitar and remembered liking it for its unique

sound. Id. Mr. Laredo found that a miniature guitar that could serve as a souvenir of the lovely

city of Cottonwood – the home of both the COUNTRYWOOD music festival and Riggs

Houston – would be the perfect keepsake purchase for all the country music fans attending the

festival. Id.

Although LSP’s first miniature guitar was inspired by country music icon Riggs

Houston and the City of Cottonwood’s COUNTRYWOOD Music Festival, there were many

visual differences between the souvenir guitar and Mr. Houston’s RIGGS ROCKER. LSP’s

souvenir guitar was about five inches long, with a star-shaped sound hole slightly more

compressed with the points fatter and shorter, a surface painted to look like cowhide, and a

small sticker of a U.S. flag on the side of the guitar accompanied by the phrase “MADE IN

AMERICA.” Id. at 17. Moreover, the miniature guitar was too small to be played. Id. An

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additional feature of the souvenir guitars is the embedded sound chip inside the guitar that plays

a recording of the sound of the RIGGS ROCKER guitar, with a touch of a button on the back

that activates the chip to emit a melodic fragment consisting of seven chords. Id. LSP later

produced an eleven-inch version of the souvenir guitar with a bigger “sound” that sold for four

times as much. Id.

The guitars were mass-produced for the music festival and were reportedly the best-

selling novelties of the 2013 COUNTRYWOOD Music Festival. Id. at 18. Mr. Houston is the

owner of United States Trademark Registrations on the Principal Register for the RIGGS

ROCKER, its trade dress, and its design mark. Id. at 12. All registrations are valid and

subsisting. Id. When Mr. Houston learned of the sales of these miniature guitars he filed an

action for trade dress infringement and unfair competition in the District Court of Cottonwood.

Id. at 19. Mr. Houston contends that the LSP “souvenir guitars” both infringe the registered

“Riggs Guitar Trade Dress” for guitars and constitute “counterfeits” of the same registered

mark. Id. at 20.

B. Proceedings Below

Upon learning of the sales of the miniature guitars, Mr. Houston filed an action for trade

dress infringement and unfair competition in the District Court of Cottonwood pursuant to 15

U.S.C. § 1114 (1), 15 U.S.C. § 1125 (a) and the common law of unfair competition against Mr.

Laredo and LSP. Record 19. Mr. Houston contended that the LSP “souvenir guitars” (to use Mr.

Laredo’s own terminology) both infringe the registered RIGGS ROCKER trade dress for guitars

and constitute “counterfeits” of the same registered mark. Id. at C. Mr. Houston then filed an

emergency motion for a temporary restraining order (“TRO”) prohibiting sales of the miniature

guitars, pending hearing of his motion for a preliminary injunction. Id. at 19. Jurisdiction arose

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under 28 U.S.C. §§ 1331 and 1338(a) - (b), and the venue was appropriate under 28 U.S.C. §

1391 (b)(1). Record A.

The District Court of Cottonwood, looking only at the motion for a temporary

restraining order, found that there was insufficient evidence in the record to establish that Mr.

Houston could succeed on the merits of his counterfeit claim. Id. at F. In regards to the trade

dress infringement claim, the District Court of Cottonwood found that Mr. Houston faced

immediate and irreparable harm in the sense that Mr. Houston was losing control over his

reputation and the goodwill associated with the RIGGS ROCKER trade dress. Id. at I.

Consequently, the court enjoined Mr. Laredo and LSP from making further use of the RIGGS

ROCKER trade dress for miniature guitars or any souvenir products. Id. at J.

The court determined whether there is a likelihood of confusion per § 1114(1)(a) by

looking at six factors: (1) the resemblance of the two marks in terms of sight, sound, and

meaning, (2) the relationship between the goods or services of the parties in terms of utility, use

and trade channels, (3) the strength, both inherent and acquired, of the Plaintiff’s mark, (4) any

evidence of actual confusion, or valid surveys indicative of such confusion, (5) an intent by the

newcomer to derive benefit from the original mark’s success, and (6) any other factor

recognized by this, or any other Utopian court, as probative of likelihood of confusion. Id. at H.

Regarding the first factor, the court found LSP’s miniature guitar to be visually similar

to the RIGGS ROCKER trade dress and that the sound emitted from the sound chip initially

resembles the sound of the RIGGS ROCKER. Id. at H(i). The court also noted that neither the

original mark nor the LSP miniature guitars have any significant meaning in and of themselves,

and the sum total of the latter facts weigh in favor of Plaintiff. Id.

Regarding the second factor, the court found that neither the original guitar nor the

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souvenir guitars have similar utilities, uses or trade channels, but that the Defendants sells

souvenirs emulating the original RIGGS ROCKER guitar. Id. at H(ii). Regarding the third

factor, the court found Plaintiff’s guitar to be inherently distinctive with very notable trade dress

and that “it is inconceivable on the basis of the record so far that the resemblance of the

Defendants’ souvenir guitars… is other than deliberate.” Id. at H(iii). However, regarding the

fourth factor, the court found that there was no evidence of actual confusion thus far. Id. at

H(iv). Regarding the fifth factor, the court makes an inference that Defendants sought to profit

from their imitation of Plaintiff’s mark. Id. at H(v). Regarding the sixth factor, the court cited no

other factors. Id. at H(vi).

Defendants, Mr. Laredo and LSP, made a speaking motion to cancel the registration of

the RIGGS ROCKER trade dress because it is functional because the features of the RIGGS

ROCKER trade dress affect the tone and sound of the guitar. Id. at J. The court made no

decision as to whether the RIGGS ROCKER trade dress was functional in regards to the quality

of the guitar’s sound, but held that functionality is not a defense in this case because the sound

generated from the souvenir guitars is by a sound chip, thereby denying defendants’

counterclaim to cancel the registration. Id.

C. Standard of Review

The question of whether a trade dress is distinctive, nonfunctional, or likely to be

confused with the alleged infringer’s products is a question of fact. Aromatique, Inc. v. Gold

Seal, Inc., 28 F.3d 863, 868 (8th Cir. 1994). If found to be clearly erroneous, the trial court’s

findings will be overturned. Id. With regard to a likelihood of confusion analysis, the Second

Circuit has stated that the determination of each individual factor is reviewed following a

clearly erroneous standard, however, the ultimate issue of likelihood of confusion is reviewed

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de novo. Paddington Corp. v. Attiki Importers & Distributors, Inc., 996 F.2d 577, 584-85 (2d

Cir. 1993).

A lower court’s decision regarding a trademark counterfeit claim is reviewed in the

same manner as an order granting or denying a preliminary injunction: “[the courts] review …

if there has been (1) an abuse of discretion, (2) an error of law, or (3) a clear mistake of fact.”

Lorillard Tobacco Co. v. Bisan Food Corp., 377 F.3d 313, 319 (3d Cir. 2004). See Vuitton v.

White, 945 F.2d, 569, 574 (3d Cir. 1991) (quoting Hoxworth v. Blinder, Robinson & Co., 903

F.2d 186, 198 (3d Cir.1990)). When a plaintiff in a trademark counterfeit claim seeks an ex

parte order under the Trademark Counterfeiting Act directing a seizure of the allegedly

counterfeit goods from retailers, the reviewing court asks “whether the District Court abused its

discretion, or were its factual findings clearly erroneous?” Lorillard Tobacco Co., 377 F.3d at

319.

INTRODUCTION

Defendant Lance Laredo, CEO of Laredo Specialty Products (“LSP”), appeals the

District of Utopia’s findings that the RIGGS ROCKER, created by Plaintiff Riggs Houston, is

entitled to trade dress protection under the Lanham Act and that there is a likelihood of

confusion with LSP’s souvenir guitars. As a preliminary matter, it should be noted that the

RIGGS ROCKER trade dress is contestable because it has not been in continuous use for five

consecutive years. 15 U.S.C. § 1065. Additionally, Plaintiff Riggs Houston appeals the District

of Utopia’s findings that LSP’s souvenir guitars are not counterfeits of the RIGGS ROCKER

trade dress.

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SUMMARY OF THE ARGUMENT

This court should reverse the District Court’s decision that the RIGGS ROCKER is

entitled to trade dress protection and should affirm the District Courts finding that LSP’s

souvenir guitars are not trademark counterfeits.

The RIGGS ROCKER is not entitled to trade dress protection because the trade dress is

functional, and there is also no likelihood of consumer confusion. The RIGGS ROCKER trade

dress is functional since the unique sound that is produces is due to the design and make of the

guitar. Since the only way to produce this sound is through the star-shaped hole and cowhide

design, the trade dress is essential in creating the sound and is therefore functional. Allowing

protection of this trade dress would be to give Mr. Houston exclusive use to that sound, which

would place competitors at a significant disadvantage in the market place. For all of these

reasons, this court should find that the RIGGS ROCKER trade dress is functional.

Even if the RIGGS ROCKER trade dress is held to be non-functional, it is still not

entitled to trade dress protection. The RIGGS ROCKER and the LSP souvenir guitar present no

likelihood of consumer confusion since there are clear visual differences between the marks.

Also, following the same factors that the District Court used in its decision, there is still no

likelihood of confusion amongst consumers and therefore there should be no trade dress

protection.

In order to establish trademark counterfeiting, it must be shown that the trademark is

registered, and also that the defendant intentionally used a false mark, that is identical to, or

substantially indistinguishable from the registered mark. Although it is undisputed that the

RIGGS ROCKER is registered as a valid trademark, Mr. Houston has failed to establish that

Mr. Laredo intentionally used a false mark that was identical to, or substantially

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indistinguishable from, Mr. Houston’s genuine mark.

Several courts have found a defendants’ admission of intent to produce precise

trademark counterfeits on goods they sold to be determinative of trademark counterfeit.

However, on the facts of this case, Mr. Laredo made no such admission nor are the souvenir

guitars “precise” replicas of the RIGGS ROCKER. Neither was Mr. Laredo making an apparent

attempt to capitalize upon the popularity of the RIGGS ROCKER, but rather Mr. Laredo create

a charming souvenir indicative of the City of Cottonwood and its annual COUNTRYWOOD

Music Festival. Additionally, there is insufficient evidence to establish that Mr. Laredo had

knowledge of the RIGGS ROCKER trademarks that would have amounted to willful blindness

because Mr. Laredo’s decision to manufacture the souvenir guitars was not reckless.

The souvenir guitars are not identical with the RIGGS ROCKER given their appearance

as well as the manner in which they are enjoyed; as souvenirs, not as instruments. Furthermore,

no agency has made a determination that the souvenir guitars are trademark counterfeits of the

RIGGS ROCKER, and an outside agency’s determination is typically present where trademark

counterfeit has been found.

Lastly, given the dearth of case law on trademark counterfeiting, this court should adapt

patent law’s Literal Infringement Doctrine and find that the souvenir guitars are not literally

infringing on the RIGGS ROCKER trademark. This doctrine states that even one alteration

from the original design deems it not a literal infringement. The application of such a doctrine

to trademark law would further clarify the meaning of “identical with or substantially

indistinguishable from.” Given the latter, LSP’s souvenir guitars should not be considered

trademark counterfeits.

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ARGUMENT

Trade dress has been defined as the “total image of a product” including various

distinctive traits such as size, shape, color, color combinations, and texture. John H. Harland

Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983). A preliminary question when

assessing an alleged trade dress infringement is classifying the particular trade dress as product

design, product packaging, or a “tertium quid.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529

U.S. 205, 215 (2000). The Court in Wal-Mart acknowledged that the difference between

product design and product packaging may be confusing and clarified that the primary purpose

of product packaging is source identification, while product design is used to “render the

product itself more useful or more appealing.” Id. at 213. The standard for trade dress

infringement of a product on the Principal Register established by the Supreme Court and

clarified by Congress requires that the plaintiff establish three facts in order for a trade dress to

be protectable under the Lanham Act: first, that the design is nonfunctional; second, that the

design is inherently distinctive or has acquired secondary meaning; and third, that there is a

likelihood of confusion amongst consumers between the two products. 15 U.S.C. § 1125; Two

Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 766-773 (1992).

I. THE RIGGS ROCKER TRADE DRESS IS NOT ENTITLED TO PROTECTION UNDER THE LANHAM ACT SINCE IT IS FUNCTIONAL, NON-DISTINCT, AND PRESENTS NO THREAT OF A LIKELIHOOD OF CONFUSION WITH LSP’S MINIATURE SOUVENIR GUITARS.

In order to prevail in his trade dress infringement claim, Mr. Houston bears the burden of

demonstrating that the RIGGS ROCKER trade dress is nonfunctional; second, that it is

inherently distinctive or has acquired secondary meaning; and third, that there exists a likelihood

of confusion amongst consumers between his trade dress and Mr. Laredo’s souvenir guitars. Id.

The first two elements are the requirements for the RIGGS ROCKER trade dress to be protected,

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and the third element is the standard for evaluating infringement. Abercrombie & Fitch Stores,

Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 629 (6th Cir. 2002). Simply put, trade dress

infringement occurs only if there is a likelihood of confusion between a plaintiff and defendant’s

products. Two Pesos, Inc., 505 U.S. at 770. While trade dress may be protected, the Court has

explained that in many instances, there is no prohibition against copying goods and products and

that the overall purpose of protection is to promote competition. TrafFix Devices, Inc. v. Mktg.

Displays, Inc., 532 U.S. 23, 20 (2001).

A. The RIGGS ROCKER Trade Dress Uniquely Alters The Sound Of The Guitar And Is Therefore Functional.

Under §43(a) of the Lanham Act, trade dress protection is only given if the features in

question are nonfunctional. Two Pesos, Inc., 505 U.S. at 769. The Supreme Court has defined a

product’s trade dress as functional if it is “essential to the use or purpose of the article or if it

affects the cost or quality of the article.” Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S.

159, 165 (1995). Additionally, the Restatement (Third) of Unfair Competition states that “a

design feature that substantially contributes to the aesthetic appeal of a product may qualify as

‘functional’.” Restatement (Third) of Unfair Competition §17 (1995). A finding of aesthetic

functionality is proper when objective evidence demonstrates the aesthetic value can’t be

duplicated with adequate alternative designs, because the particular design feature is the basis of

its appeal. Id. The Court has explained that this “functionality doctrine” prevents the inhibition

of legitimate competition by allowing a producer to control a useful product feature. Qualitex

Co., 514 U.S. at 164. If exclusive use of the particular trade dress would put competitors at a

significant, non-reputation-related disadvantage then it is functional. Id. at 165.

To establish whether exclusive use of a trade dress would put a competitor would be put

at a non-reputation-related disadvantage, a court must address whether or not there exist

5

alternative features for competitors to use in the market, or if protection of a feature would

hinder the ability of a competitor to compete effectively in the market. Abercrombie & Fitch

Stores, 280 F.3d at 642. These analyses are known, respectively, as the “comparable

alternatives” and “effective competition” tests and were utilized in Abercrombie. In that case,

Abercrombie brought suit against American Eagle Outfitters, a competitor retailer, alleging

trade dress infringement of its clothing, in-store displays, and catalog. Using these tests, the

court found that Abercrombie’s trade dress designs for its clothing and in-store presentations

were not protectable. Although both distinct, the court found that the use of primary color

combinations, patterns, and all natural fabrics in clothing could not be protected because there

would exist no alternative features for competitors to use in the market, leaving them at a

significant non-reputation related disadvantage. Id.

The “comparable alternative” and “effective competition” tests may be effectively used

to demonstrate that the RIGGS ROCKER trade dress is functional and should not be protected,

since the design is what enables the guitar to have its distinctive sound. The article on guitar

acoustics in the May 2012 issue of Guitars International explains how there exists a direct

correlation between the dimensions of the sound hole and the sound of the instrument. Record

11. Laboratory studies also found that materials from which a guitar is made alter the sound

produced, and that the cowhide surface layer changes the acoustic range of the RIGGS

ROCKER. Record 11. Importantly, the District Court held that the RIGGS ROCKER trade

dress itself “may or may not” be functional with respect to the quality and tone of the guitar’s

sound. Record J.

The District Court erroneously held that because LSP’s souvenir guitars used a sound

chip, functionality of trade dress was not a valid defense, since the sound was not produced

6

acoustically by the registered trade dress. The use of the sound chip, however, does not negate

LSP’s argument of functionality because the five and eleven inch guitars are too small to be

played like a full-sized guitar, cannot be covered in cowhide or make effective use of a sound

hole. Therefore, the only way for the souvenir guitar to mimic the unique sound of the RIGGS

ROCKER is through the use of a sound chip and no comparable alternatives, as defined in

Abercrombie, exist. Abercrombie & Fitch Stores., 280 F.3d at 642.

Not only does the trade dress affect the RIGGS ROCKER’s musicality, the features

contribute to its overall aesthetic appeal. LSP’s souvenir guitars, like its earlier bronco and

rattlesnake products, are a unique reflection on the City of Cottonwood and the country

lifestyle. The aesthetic value of the trade dress cannot be mimicked with alternative designs

because the star-shaped sound hole recalls the city’s flag and the cowhide covered surface is

emblematic of the city as well. These features are the basis of its appeal.

These factors demonstrate that the RIGGS ROCKER trade dress is functional,

aesthetically or musically, and there exist no comparable alternative features for manufacturers

to use to produce competitive products. To ban competitors from producing guitars with star-

shaped sound holes or a cowhide layer would prevent them from creating a “twangy” and

unique sound, appealing aesthetically, and would leave producers at a non-reputation related

disadvantage therefore hindering marketplace competition.

B. The RIGGS ROCKER Trade Dress Should Not Be Protected Under The Lanham Act Because It Is Product Packaging And Cannot Be Inherently Distinctive And Has Not Acquired Secondary Meaning.

Referencing the Restatement (Third) of Unfair Competition, the Supreme Court in Two

Pesos stated the general rule regarding distinctiveness: An identifying mark is distinctive and

capable of being protected only if it either (1) is inherently distinctive or (2) has acquired

7

distinctiveness through secondary meaning, which occurs when the mark has come to indicate

the source of a product. Two Pesos, Inc., 505 U.S. at 769. Proof of secondary meaning is not

required if a product is inherently distinctive. Id. at 773.

1. The RIGGS ROCKER trade dress is product design intended to increase the product’s appeal, not indicate a source, and therefore is not inherently distinctive.

Under Section 2(f) of the Lanham Act, a trade dress may be registered even if it is not

inherently distinctive, only if it has acquired distinctiveness through secondary meaning. 15

U.S.C. § 1052. It has been held that trade dress registrations based on a claim of acquired

distinctiveness under the Lanham Act §2(f) are themselves not inherently distinct. Yamaha

Intern. Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 1580 (Fed. Cir. 1988). To determine if

a trade dress is inherently distinctive, it is analyzed under the following categories: (1) generic,

(2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. Abercrombie & Fitch Co. v.

Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). Suggestive, arbitrary, or fanciful marks are

said to identify the commercial source of a product and are therefore considered inherently

distinctive. Two Pesos, Inc., 505 U.S. at 768. These definitions focus on the relationship

between the product and the trade dress, not the trade dress and the consumer. Stuart Hall Co.,

Inc. v. Ampad Corp., 51 F.3d 780, 786 (8th Cir. 1995). If design trade dress is only “tenuously

connected to the nature of the product,” then it is inherently distinctive. Id.

While analyzing the distinctiveness of a product’s trade dress is critical to a trade dress

infringement case, the Supreme Court in Wal-Mart explicitly held that product design cannot be

inherently distinctive. 529 U.S. at 212. Although the Court in Two Pesos held that inherently

distinctive trade dress could be protected under the Lanham Act without proof of secondary

meaning, the Court narrowed this holding in Wal-Mart to distinguish between product design

8

trade dress and product packaging trade dress. Id. at 215. The Court explained that product

packaging has the primary purpose of source identification which encourages consumers to

view product packaging trade dress symbols as an indication of the producer or brand. Id.

Conversely, product design does not persuade the consumer to identify the feature with a

source. Id. The Court notes that “even the most unusual of product designs…is intended not to

identify the source, but to render the product itself more useful or appealing.” Id.

The traits of the RIGGS ROCKER are product design and are not comparable to the

product packaging of restaurant décor, which was considered inherently distinctive in Two

Pesos. In that case, the trade dress of Taco Cabana, a Mexican restaurant chain, included dining

and patio areas decorated with artifacts, bright colors, paintings, and murals. Two Pesos, Inc.,

505 U.S. at 766. This “festive atmosphere” served to identify the restaurant to consumers as a

Taco Cabana establishment. Id. at 765. Conversely, the primary purpose of the star-shaped

sound hole, American Flag pick board, and cowhide covering is not source identification, but

rather, to make the guitar more useful and appealing. Additionally, the District Court’s

conclusion ordering Mr. Laredo to cease making souvenir products also specifically labels the

RIGGS ROCKER trade dress as product-design, and not product packaging. Record J.

Following Wal-Mart, because the RIGGS ROCKER is product packaging, it simply cannot be

inherently distinctive.

If there is confusion as to whether a trade dress is product-design or product packaging,

in order to benefit the consumer and encourage competition, courts should “err on the side of

caution” and require secondary meaning. Wal-Mart Stores, Inc., 529 U.S. at 215. Additionally,

the Riggs Guitar Trade Dress was registered under a claim of acquired distinctiveness, and

therefore secondary meaning must be shown. 15 U.S.C. § 1052. If the court cannot determine

9

whether the RIGGS ROCKER trade dress is product design or product packaging, the court

should follow Wal-Mart and require a showing of secondary meaning. Wal-Mart Stores, Inc.,

529 U.S. at 215.

2. The RIGGS ROCKER trade dress has not acquired secondary meaning because it does not create a mental connection to consumers as to the product’s source.

When a trade dress, in the minds of the public, identifies a product's source rather than

the product itself, it has acquired secondary meaning. Wal-Mart Stores, Inc., 529 U.S. at 206.

For a plaintiff to establish secondary meaning he must show that by long and exclusive use in

the sale of the good, the trade dress has become so associated in the public mind with such

goods that the dress serves to identify the source of the goods. Aromatique, Inc. v. Gold Seal,

Inc., 28 F.3d 863, 870 (8th Cir. 1994). A product’s functional features are not eligible for trade

dress protection, therefore, only those “incidental, arbitrary or ornamental product features

which identify the product's source” may be protected. Shire US Inc. v. Barr Laboratories, Inc.,

329 F.3d 348, 353 (3d Cir. 2003). Product design, or product configurations, have been held to

be unreliable as source indicators, partly because functional configurations are not protected and

may be freely copied and inherently distinctive configurations are rare. Versa Products Co., Inc.

v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 201 (3d Cir. 1995).

Section 2(f) of the Lanham Act provides that “nothing in this chapter shall prevent the

registration of a mark used by the applicant which has become distinctive of the applicant's

goods in commerce.” 15 U.S.C. § 1052. The section does not specifically state what type of

proof is necessary to establish secondary meaning, however, the United States Court of

Customs and Patent Appeals has noted that “substantially exclusive use for a period of five

years immediately preceding filing of an application may be considered prima facie evidence”

10

of secondary meaning. Application of Hehr Mfg. Co., 279 F.2d 526, 528 (C.C.P.A. 1960).

Other methods of demonstrating that potential buyers mentally associate a product with a

particular source include consumer surveys and anecdotal evidence showing consumer

identification of the trade dress with its source. Goddard, Inc. v. Henry's Foods, Inc., 291 F.

Supp. 2d 1021, 1046 (D. Minn. 2003).

There is no evidence of Mr. Houston utilizing surveys to discern if his trade dress had

acquired a secondary meaning. There is also no record of anecdotal evidence in which

consumers state that they identify the cowhide layer, star-shaped sound hole, or American flag

pick board with Mr. Houston. In fact, the record states definitively that there is no evidence of

actual confusion between the RIGGS ROCKER trade dress and LSP’s souvenir guitars. Record

H (iv). Also, because the trade dress serves to alter the sound of a guitar in a unique and

“twangy” way, these features are functional and not eligible for protection. There also can be no

prima facie evidence of secondary meaning because the United States Principal Trademark

Register lists the date of the trade dress’ first use as June 15, 2007 and an application date of

June 1, 2008. Record 12. This fails to meet the requirement of “substantially exclusive” use for

five years before filing an application. Application of Hehr Mfg. Co., 279 F.2d at 528.

Finally, if the Court finds the Riggs guitar trade dress to have secondary meaning, in

order for the defendant to be liable for trade dress infringement, likelihood of confusion

between the plaintiff and defendant’s products must be proven.

C. There Is No Likelihood Of Confusion Between Mr. Laredo’s Souvenir Guitars And Mr. Houston’s Full Sized Instrument Guitar. If a court determines that the trade dress is protected because it is non-functional, and it

is either distinctive or has acquired secondary meaning, the court must then determine whether

the trade dress has been infringed. Allied Mktg. Group, Inc. v. CDL Mktg., Inc., 878 F.2d 806,

11

813 (5th Cir. 1989). Infringement can be shown by demonstrating that there is a substantial

similarity in trade dress between products which is likely to confuse consumers. Id. In order for

a defendant to be liable for trade dress infringement under § 43(a) of the Lanham Act, there

must be proof that there is a likelihood of consumer confusion between related goods. Two

Pesos, Inc., 505 U.S. at 769. To determine likelihood of confusion, the Twelfth Circuit has

taken several factors into account, such as: (1) resemblance of the marks in sight, sound, and

meaning, (2) relationship between goods in terms of utility, use, and trade channels, (3)

strength, both inherent and acquired, of plaintiff’s mark, (4) any evidence of actual confusion or

valid surveys indicative of such confusion, (5) intent to derive benefit from original mark’s

success, and (6) other recognized factors. Record H.

Mr. Houston’s trade dress was not infringed because there is no likelihood of confusion

between the Riggs guitar trade dress and Mr. Laredo’s souvenir guitar. Although the District

Court took the previously listed factors into consideration when determining a likelihood of

confusion, the analysis “is not a mechanical test in which whoever has the most factors in their

favor wins”. ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp. 2d 345, 351 (S.D.N.Y. 2000). A court

must ultimately focus on the question: “Are consumers likely to be confused?” Id. While the

factors help to resolve this question, it is important to note that they are only used to assist in the

determination and are not required to determine consumer confusion. Id. As long as it can be

shown that there is no likelihood of confusion amongst consumers, there can be no infringement

of a trade dress. The District Court erred in its analysis of the factors and closer review

demonstrates there is no likelihood of confusion.

Addressing the first factor, the “resemblance of the mark in terms of sight, sound, and

meaning,” the Third Circuit has held that in a product design, or configuration case, the

12

similarity of designs does not alone allow a strong inference of likelihood of confusion. Versa

Products Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 209 (3d Cir. 1995). When reviewing

the products, it is evident two marks are very distinguishable in terms of sight, sound, and

meaning. The RIGGS ROCKER guitar has the standard six strings, while there are only four

strings on Mr. Laredo’s souvenir guitar. The printed design on Mr. Laredo’s souvenir guitar

also differs from the authentic cowhide that is on Mr. Houston’s guitar. Also, there is a

substantial distinction in the color scheme of the marks. The base on Mr. Laredo’s souvenir

guitar is primarily white with several brown spots, while Mr. Houston’s cowhide mark is

predominantly brown, with several white spots. Finally, Mr. Houston’s guitar trade dress

contains an American Flag pick board, while Mr. Laredo’s product does not have a pick board

at all. Moreover, the American flag is painted in a different location on Mr. Laredo’s souvenir

guitar from Mr. Houston’s authentic guitar. All of these stated differences create a substantial

dissimilarity in resemblance.

Although the District Court found that the resemblance was apparent, the two marks

display many more differences than commonalities in sight, sound, and meaning. At the very

least, the RIGGS ROCKER trade dress accompanies a real guitar that produces sounds from its

strings which can be strummed or plucked, while Mr. Laredo’s guitar is simply a small souvenir

not intended for actual use that uses a sound chip to produce the desired sound. Even the larger

version of Mr. Laredo’s mock guitar does not compare to Mr. Houston’s real guitar in terms of

size and use. In its decision, the District Court placed the most emphasis on the resemblance

factor when it analyzed the likelihood of confusion factors in descending order of importance,

with “resemblance” discussed first. Record H. If this court defers to the District Court’s

analysis, then an emphasis on the resemblance factor should support an opposite conclusion:

13

that there is no likelihood of confusion between the two products due to the clear differences in

appearance.

The second factor in the likelihood of confusion analysis is the “relationship between

goods.” The District Court acknowledged that neither product has similar utilities, uses, or trade

channels. Record H (ii), Although the District Court stated that Mr. Laredo’s souvenir guitar

emulates Mr. Houston’s actual guitar, this is not the case since Mr. Houston’s trade dress is

functional and used to create a unique sound which can only be produced using the specific

trade dress elements. Mr. Laredo is not emulating Mr. Houston’s guitar specifically, but is

emulating a guitar that would produce that distinct sound. In its analysis of the relationship

between the goods, the District Court acknowledged that Mr. Houston owns the registration of

the RIGGS Guitar Design Mark for nine souvenir items of paraphernalia. Record H(ii). This

line of specialty accessories and merchandise are being developed with Gilroy Guitars and

would therefore likely also be sold by the leading guitar manufacturer in their retail outlets. It is

important to clarify that nothing in the record states that these accessories have actually been

manufactured or sold. Therefore, any analysis of likelihood of confusion should take into

account that consumers, at this point, have no reason to believe that the Riggs guitar trade dress

has expanded into the souvenir market or use the same trade channels.

When analyzing the third factor, “strength of the mark,” the District Court held that Mr.

Houston has an inherently distinctive trade dress. Record H (iii). The definition of a strong mark

is one that is inherently distinctive. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir.

1979). However, since the mark in question represents a trade dress design and not packaging, it

cannot be inherently distinctive. Two Pesos, Inc., 505 U.S. at 770. It has also been held that

trade dress registrations based on a claim of acquired distinctiveness under the Lanham Act

14

§2(f), as the Riggs guitar trade dress was, are themselves not inherently distinct. Yamaha Intern.

Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 1580 (Fed. Cir. 1988).

With respect to the fourth factor, there is no evidence of “actual confusion, or valid

surveys indicative of such confusion” amongst consumers between the Riggs guitar trade dress

and LSP’s souvenir guitars. Although surveys providing evidence of actual confusion is not a

requirement to demonstrate likelihood of confusion, the Second Circuit has found that its

absence may be used against a plaintiff. Nikon Inc. v. Ikon Corp., 987 F.2d 91, 95 (2d Cir.

1993). In that case, while the court found in favor of Nikon, it ruled that the lower court’s

decision to hold this factor in favor of Nikon’s competitor, IPC, on the basis of absence of

surveys, was not clearly erroneous. Id. There is no evidence to show that one would be confused

by these two marks and Mr. Houston has a much higher burden to meet in order to show a

likelihood of confusion. As the District Court stated, Mr. Houston has not produced any

evidence of actual confusion, or valid surveys indicative of such, to establish a likelihood of

confusion. There is also no evidence that he attempted to undertake consumer surveys to show

actual confusion.

The fifth factor that the District Court reviewed was whether or not there was “intent to

derive benefit from original mark’s success.” In Versa, the Third Circuit held that for product

configuration, or design, cases, the defendant’s intent is not relevant to the likelihood of

confusion analysis unless there existed misleading labeling and marketing. Versa Products Co.,

Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 209 (3d Cir. 1995). Although the District Court has

held that Mr. Laredo had an inescapable intent to derive a benefit from Mr. Houston’s success,

there is nothing in the record that specifically states that Mr. Laredo intended to profit from the

RIGGS ROCKER’s fame. The record states that the purpose of Mr. Laredo’s guitars was to

15

serve as a souvenir of the City of Cottonwood, and to provide a keepsake for music fans who

attended the Countrywood Music Festival. There is also no evidence of misleading labeling or

marketing of the souvenir guitar.

The District Court acknowledged that any other factor recognized by another Utopian

court would be pertinent in evaluating whether there is a likelihood of confusion. Record H.

Although the court ruled that it was unaware of any such factor, the Second Circuit includes a

review of the sophistication of consumers in its likelihood of confusion analysis. Applying this

factor to the case, there is again no likelihood of confusion between the RIGGS ROCKER trade

dress and that of Mr. Laredo’s souvenir guitars. First, any potential purchaser of a RIGGS

ROCKER would be familiar with the instrument as well as its trade dress, due to the price of a

guitar, or because they are strong devotees of Riggs Houston. Such trained consumers would

not likely be confused by the souvenir guitar and believe it to be a Riggs Houston or Gilroy

Guitars product.

Although courts have used these factors to assist the court in deciding likelihood of

confusion, again, these factors are not mechanical and are only used to aid in answering the

bigger picture of consumer confusion. Paddington Corp. v. Attiki Importers & Distributors,

Inc., 996 F.2d 577, 584 (2d Cir. 1993). Even if the trade dress is deemed non-functional and

considered to have secondary meaning, the guitars are vastly distinctive from one another in

design, use, and are sold in significantly different trade channels. As a result there is no

likelihood of consumer confusion. Therefore, Mr. Houston has failed to meet his burden of

establishing a likelihood of confusion.

II. DEFENDANT LSP’S MINIATURE SOUVENIR GUITARS WERE NOT TRADEMARK COUNTERFEITS OF THE RIGGS ROCKER BECAUSE LSP DID NOT INTENTIONALLY CREATE MERCHANDISE THAT WAS, NOR COULD

16

HAVE BEEN, CONSIDERED IDENTICAL WITH OR SUBSTANTIALLY INDISTINGUISHABLE FROM THE RIGGS ROCKER.

Trademark counterfeiting is “the act of producing, or selling a product or service with a

sham trademark that is an intentional and calculated reproduction of the genuine mark.” Thomas

McCarthy, McCarthy on Trademark § 25:10 (3d ed. 1997). In order to prevail on a trademark

counterfeiting claim, the plaintiff must show that defendant’s counterfeit mark (1) infringed a

registered and protected trademark in violation of 15 U.S.C. 1114 (1)(a) and (2) that defendant

“intentionally used a mark, knowing such mark is a counterfeit mark.” Babbit Elec., Inc. v.

Dynascan Corp., 38 F.3d 1161, 1181 (11th Cir.1994). A counterfeit mark is a “false mark that is

identical with, or substantially indistinguishable from, the genuine mark.” Thomas McCarthy,

McCarthy on Trademark § 25:10 (3d ed. 1997). Congress adopted this language when drafting

the Lanham Act to define a “counterfeit mark” as meaning “a counterfeit of a mark that is

registered on the principal register in the United States Patent and Trademark Office” 15 U.S.C.

§ 1116(d)(1)(b)(i) and “a spurious designation that is identical with, or substantially

indistinguishable from[the genuine mark]” 15 U.S.C. § 1116(d)(1)(B)(ii).

Counterfeiting differs from traditional trademark infringement in its narrow scope of

application. A counterfeit claim can only apply to marks that are made to look identical to the

actual mark, whereas trademark infringement encompasses any marks that are “likely to cause

confusion, to cause mistake, or to deceive.” A claim for general trademark infringement often

involves imitation or knock-off products whose coloring, shape, or labels are not identical to

other trademarks, but are close enough to cause confusion. Thomas McCarthy, McCarthy on

Trademark § 25:10 (3d ed. 1997). Counterfeit merchandise, on the other hand, is made so

closely as to imitate a well-known product in all details of construction and appearance so as to

deceive customers into thinking they are purchasing genuine merchandise. Id. Accordingly, as

17

McCarthy emphasizes, counterfeiting is one type of “hard core” or “first degree” trademark

infringement that is the most blatant and egregious form of “passing off.” Id. As such, courts

require that at the very least, the degree of similarity is closer than the traditional standard for

infringement. GMA Accessories, Inc. v. BOP, LLC., 765 F. Supp. 2d 457, 471 (S.D.N.Y. 2011).

A. Though The Trademark Registrations For The RIGGS ROCKER Are Valid, Plaintiff Cannot Prevail Under A Trademark Counterfeit Claim Since He Has Failed To Establish That Defendants Intentionally Used A False Mark That Was Identical With Or Substantially Indistinguishable From The RIGGS ROCKER.

To establish liability in a counterfeit claim, the plaintiff must demonstrate that defendant

has infringed a registered trademark that is recorded on the principal register. 15 U.S.C. § 1116

(d)(1)(B)(i). A plaintiff’s certificates of registration with the United States Patent & Trademark

Office (USPTO) serve as prima facie evidence that the registrant owns the mark and has the

exclusive right to its use in commerce. Philip Morris USA Inc. v. Jackson, 826 F. Supp. 2d 448,

452 (E.D.N.Y. 2011). Therefore, when a plaintiff sues for infringement of its registered mark,

the defendant bears the burden to rebut the presumption of the mark’s protectibility by a

preponderance of the evidence. Lane Capital Management, Inc. v. Lane Capital Management,

Inc., 192 F.3d 337, 345 (2d Cir. 1999).

The first component of plaintiff’s counterfeit claim, that plaintiff’s mark is registered on

the principal register and thus protected under the Lanham Act, is undisputed in this case. The

defendants will concede that plaintiff Riggs Houston’s RIGGS ROCKER trademark

registrations are admissible and prima facie evidence of the validity, ownership, registration and

exclusive right to use the marks in commerce for the goods for which they are registered, since

they are registered with the USPTO. 15 U.S.C. § 1115 (a). LSP will not dispute that Riggs

Guitar Trade Dress and Riggs Guitar Design trademark registrations fall within the protection of

the Lanham Act. Rather, LSP contends that the plaintiff cannot demonstrate that defendant (2)

18

intentionally used a false mark that was identical to, or substantially indistinguishable from,

plaintiff’s genuine mark.

This court must address both components of the Lanham Act’s definition of “counterfeit

mark” because to ignore the second component would be to apply circular reasoning. The term

counterfeit mark is defined as “a counterfeit of a mark that is registered on the principal register

…” (Emphasis added) 15 U.S.C. § 1116 (d)(1)(B)(i). Such circular language presupposes the

court’s defining LSP’s souvenir guitars as counterfeit marks, for nowhere in the language of the

first component is there an elaboration on the meaning of counterfeit. Rather the definition of a

counterfeit mark is laid out in the second component of the definition; a counterfeit mark is a

spurious designation that is identical with or substantially indistinguishable from the trademark

in question. 15 U.S.C. § 1116 (d)(1)(B)(ii). Therefore a proper reading of what appears to be

two components separated by an “or” is actually one test separated by an “and” Thus, this court

must determine whether LSP’s souvenir guitars were a spurious designation, identical with or

substantially indistinguishable from the registered RIGGS ROCKER trademarks.

B. LSP’s Souvenir Guitars Are Not A Spurious Designation Of The RIGGS ROCKER, Nor Are They Physically Or Visually Identical With Or Substantially Indistinguishable From Its Trade Dress.

The requirement that a defendant “intentionally used a false mark that was identical to,

or substantially indistinguishable from, a plaintiff’s genuine mark,” can be further divided into

two components: (1) intentional use of a “spurious” mark, (2) that is identical to, or

substantially indistinguishable from, the plaintiff’s genuine mark. Due to a dearth of case law

defining the word “spurious,” courts rely on the definition of spurious from Black’s Law

Dictionary; “deceptively suggesting an erroneous origin; fake.” GMA Accessories, Inc., 765 F.

Supp. 2d at 472. Similarly, Thomas McCarthy uses the phrase “sham trademark that is an

19

intentional and calculated reproduction of the genuine mark.” Thomas McCarthy, McCarthy on

Trademark § 25:10 (3d ed. 1997). Both definitions address an intent that is required in order to

satisfy the phrase “spurious mark” and thus succeed on a counterfeit claim.

Other classifications of “counterfeit” allude to the inclusion of knowledge as a

requirement. The court in Ford Motor Co. v. Heritage Mgmt. Grp., Inc. held “if a plaintiff

alleges trademark counterfeiting, he must also show that the defendant intentionally used the

mark knowing it was a counterfeit.” 911 F. Supp. 2d 616, 622 (E.D. Tenn. 2012). The latter

refining of “spurious” indicates that this court determine whether LSP manufactured the

souvenir guitars with (1) intent to counterfeit, or (2) knowledge that such action would result in

counterfeit. The presence of intent or knowledge is what distinguishes trademark infringement

from trademark counterfeit and must be established for a trademark counterfeit claim to

succeed.

1. LSP’s souvenir guitars are not a spurious designation of the RIGGS ROCKER because Mr. Laredo did not have an intent to deceive consumers nor did he have knowledge that his conduct could amount to an alleged infringement.

There is insufficient evidence to establish that LSP’s owner, Mr. Laredo, manufactured

the “souvenir guitars” with an intent to counterfeit a registered mark, or with knowledge that he

had infringed a registered mark. In Ford Motor Co., the plaintiff’s counterfeit claim was

established through defendants’ admission of intentionally producing precise trademark

counterfeits on goods they sold, as well as, intentionally creating nearly identical labels bearing

Ford’s registered mark. Ford Motor Co., 911 F. Supp. at 622. Several other courts have similarly

found defendants’ admission of intent to be determinative of trademark counterfeit. See Chanel,

Inc. v. Gordashevsky, 558 F. Supp. 2d 532, 538 (D.N.J. 2008) (“Defendant … [admitted] … that

he acted willfully and had knowledge of Chanel's ownership of the marks”), Lifted Research

20

Grp., Inc. v. Behdad, Inc., 591 F. Supp. 2d 3, 7 (D.D.C. 2008) (“Defendant admits that it

intentionally used the Marks knowing they were counterfeit”), Wheel Specialties, Ltd. v. Starr

Wheel Grp., Inc., 918 F. Supp. 2d 688, 691 (N.D. Ohio 2013). (“[Defendant] admittedly sold

wheels bearing Custom Wheels' marks to customers at a lower rate than authentic Custom

Wheels' wheels”). As the court stated in Gucci Am., Inc. v. Duty Free Apparel, Ltd., “counterfeits

by their very nature cause confusion; indeed, confusing the customer is the whole purpose of

creating counterfeit goods.” 286 F. Supp. 2d 284, 287 (S.D.N.Y. 2003).

Where a court finds that a defendant intended to confuse a consumer as to the origin of

their counterfeit goods, counterfeiting is established. Ford Motor Co., 911 F. Supp. at 622.

Nowhere in the record does Mr. Laredo admit to intentionally manufacturing counterfeit goods,

and thus the facts of this case are distinguishable from the cases where trademark counterfeit was

established through a blatant admission by the defendant. Mr. Laredo had not intended to cause

confusion because the merchandise itself was called a “souvenir” and meant to be a keepsake of

the City of Cottonwood. Confusing the customer is the purpose of creating counterfeit goods, for

“one produces counterfeit goods in an apparent attempt to capitalize upon the popularity of, and

demand for, another’s product.” Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir.

1987). A designation of the product as “souvenir” would make it clear to any reasonable

consumer that the miniature guitar was only meant to be a symbol of something more – in this

case, the City of Cottonwood and its longstanding celebration of music via the annual

Countrywood Music Festival.

Mr. Laredo was not making an apparent attempt to capitalize upon the popularity of, and

demand for, the RIGGS ROCKER because Mr. Laredo’s only intention in manufacturing the

souvenir guitars was to create a popular trinket for Cottonwood’s COUNTRYWOOD Music

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Festival. Record 16. The star-shaped sound hole is a copy of the star on the Cottonwood flag,

and Riggs Houston is from Cottonwood. Id. at 4. It would be more accurate to say that Mr.

Houston was capitalizing upon the popularity of, and demand for, the imagery of the City of

Cottonwood in the same way that LSP did, in the sense that both the RIGGS ROCKER and the

souvenir guitars were inspired by the City of Cottonwood. The fact that Mr. Laredo chose to

make a miniature guitar is understandable given it was to be a trinket for a music festival,

particularly one that featured country music. Country music is a genre in which an acoustic

guitar is either the most prominently featured instrument or the only featured instrument in the

musical composition.

Furthermore, there is insufficient evidence to establish that Mr. Laredo had knowledge

that he was manufacturing merchandise that was a counterfeit of a registered trademark because

he was not being willfully blind. The court in Louis Vuitton S.A. found that “willful blindness is

knowledge itself.” 875 F.2d 584, 590 (7th Cir.1989). See Nike, Inc. v. Top Brand Co., 00 Civ.

8179(KMW), 2006 WL 2884437 (S.D.N.Y. Oct. 6, 2006) (“[t]he standard for willfulness is

whether the defendant had knowledge that [his] conduct represented infringement or perhaps

recklessly disregarded the possibility”). Louis Vuitton S.A. involved merchants who resold

counterfeit luggage, which they had cheaply obtained from a street peddler who had a history of

selling counterfeit luggage. The court found on the latter facts that the merchant’s willful

blindness had amounted to knowledge. Louis Vuitton, 875 F.2d at 590.

Unlike the actions of the merchants in Louis Vuitton S.A., Mr. Laredo’s good faith

decision to manufacture his souvenir guitars cannot be considered an equivalent form of willful

blindness amounting to knowledge. The merchants in Louis Vuitton S.A. knew that they were

buying from a street vendor with a history of selling counterfeit goods. It was willful blindness

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to overlook the fact that a cheaply priced, poor quality bag from that same vendor would have

also been a counterfeit good. It cannot be said that Mr. Laredo acted with the same level of

reckless disregard as the Louis Vuitton merchants did. Mr. Laredo saw the guitar in 2007 on

Next U.S. Music Icon before it had been registered as a trademark in 2008. Record 6. Aside

from the fact that the souvenir guitars incorporate a feature already in the public domain - the

star prominently featured on the Cottonwood flag - Mr. Laredo had no reason to believe that the

mark was registered given that it was like any other guitar.

2. LSP’s souvenir guitars, which are miniature versions of full-sized guitars, are not identical with nor substantially indistinguishable from the RIGGS ROCKER due to obvious differences in size, style, and color.

A counterfeit mark is a “false mark that is identical with or substantially

indistinguishable from the genuine mark.” Thomas McCarthy, McCarthy on Trademark § 25:10

(3d ed. 1997). Counterfeiting is further distinguishable from trademark infringement in that it is

narrower in scope and applies only to marks made to look identical to the actual mark. Id. This

distinction is elaborated upon in GMA Accessories, Inc. v. BOP, LLC, which noted that a

counterfeit mark requires a closer degree of similarity than is required for traditional trademark

infringement – it must at the very least be closer than the traditional standard for infringement

“colorable imitation.” 765 F. Supp. 2d 457, 471-472 (2011). The Lanham Act defines a

“colorable imitation,” as any mark which so resembles a registered mark “as to be likely to

cause confusion or mistake or to deceive.” 4 McCarthy on Trademarks and Unfair Competition

§ 25:10 (4th ed.) Following a likelihood of confusion analysis, this court should then further

inquire as to whether LSP’s “souvenir guitars” look identical to the RIGGS ROCKER.

The term “identical” means just that, for in regards to word marks, “it cannot be enough

that one word in the allegedly offending mark is the same with no reference to font, color,

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typeface, or context.” GMA Accessories, Inc. v. BOP, LLC, 765 F. Supp. 2d 457, 471-472

(2011) In GMA, the plaintiff and owner of a word mark, argued that one word of a multi-word

mark was enough to establish trademark counterfeit. The court however disagreed and further

found that the word marks were intended for entirely dissimilar purposes. Id. Therefore,

“identical with” not only implies a similarity of the marks appearance, but a similarity in its use

as well.

Similarly, in Kelly-Brown v. Winfrey, the court held that the font, color, and

capitalization of Kelly-Brown’s mark “Own Your Power” differed from the offending uses

made by defendants in a magazine cover, website, and at an event and did not constitute

trademark counterfeiting. 717 F.3d 295, 315 (2d Cir. 2013). After comparing Kelly-Brown’s

service mark with the logo at defendant’s event and the headline on the cover of the magazine,

the court concluded that the font “Own Your Power” was visibly different from the stylized

powder-blue letters that Kelly-Brown registered as a part of her mark. Id. at 314. While the

court recognized that Kelly-Brown’s counterfeit claim would carry more weight if the audience

solely encountered the mark aurally, the featured logos and backdrops displayed at the event

provided obvious visual differences, eliminating any possibility of identicalness.

Just as in GMA Accessories and Kelly-Brown, there are obvious visual differences

between the RIGGS ROCKER and the souvenir guitars. First, LSP’s souvenir guitars are

different in shape and size, since they are five inches and eleven inches, and therefore not

identical with the RIGGS ROCKER which is a full size guitar. Furthermore, the dimensions of

the star sound hole is more compressed with points that are fatter and shorter than the RIGGS

ROCKER. Record 17. Second, the souvenir guitars are different from the RIGGS ROCKER in

style, the sticker of an American flag on the side of the guitar is a nod to the fact that the

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souvenir was “made in America” and fundamentally different from the RIGGS Guitar American

guitar pick board. Id. Third, the souvenir guitars serve a different purpose than the RIGGS

ROCKER, which is an actual musical instrument, a full size guitar. The souvenir guitars are not

playable guitars and meant to be simple trinkets to commemorate the Countrywood Music

Festival and the City of Cottonwood’s longstanding country music tradition.

Lastly, the souvenir guitars have a different feel than the RIGGS ROCKER because the

souvenir guitars have a painted version of a cowhide design, whereas the RIGGS ROCKER has

actual cowhide on it. Id. at 4, 17. Moreover, the color scheme of the brown cowhide design on

the RIGGS ROCKER greatly differs from the white paint coating on the souvenir guitars. See

App. B. The RIGGS ROCKER employs a more heavily brown cowhide, whereas the souvenir

guitars have a prominent white paint coating. See App. A.

Additionally, the determination of whether a mark is a counterfeit of a registered

trademark is supported by evidence from an outside agency whose sole purpose is to identify

counterfeit goods; in this case, no such agency has determined that LSP’s souvenir guitars are

counterfeit of the RIGGS ROCKER. In Phillip Morris USA v. Jackson, a tribal smoke shop sold

counterfeit cigarettes which infringed on the manufacturer’s MARBORO LIGHTS trademark,

and the counterfeit determination was made by the Brand Integrity Department of Altria Client

Services. 826 F. Supp. 2d 448, 452 (E.D.N.Y. 2011). LSP’s souvenir guitars were inspected by

no such agency, and therefore there is insufficient evidence to show that LSP’s “souvenir

guitars were a spurious designation that is identical with or substantially indistinguishable from

the registered mark.

C. Given The Lack Of Case Law Clarifying The Meaning Of “Identical With” Or “Substantially Indistinguishable From” Within The Lanham Act, This Court Can Look To Patent Law’s Literal Infringement Doctrine And Find That LSP’s Souvenir Guitars Are Not A Literal Infringement Of The RIGGS ROCKER.

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In order for there to be a patent infringement under patent law’s Literal Infringement

Doctrine there must be a literal infringement. If even one element of a patent’s claim is missing

from the accused product then there can be no infringement as a matter of law. Larami Corp. v.

Amron, 91 F.3d 166 (Fed. Cir. 1996). In Larami Corp., a toy water gun made by Larami was

identical to a toy water gun made by Amron’s in all aspects but one; the Larami gun had its

water chamber outside the gun, whereas the Amron water gun had its water chamber inside the

gun. The court found that Larami did not infringe on Amron’s patent because placement of the

water chamber outside the gun was an improvement on Amron’s patent and not a literal

infringement. Id.

This court may defer to Patent Law’s Literal Infringement Doctrine in a trademark

counterfeit context because for trademark counterfeit it must already be established that a

counterfeit mark be “identical with or substantially indistinguishable from the [genuine mark].”

15 U.S.C. § 1116(d)(1)(B)(ii). The application of the Literal Infringement Doctrine would

clarify the meaning of “identical with or substantially indistinguishable from” and remedy the

lack of case and statutory law surrounding trademark counterfeit.

LSP’s souvenir guitars are not a literal infringement on the RIGGS ROCKER because

more than one element of the RIGGS ROCKER is substantially distinguishable from the design

of the souvenir guitars. First, the souvenir guitars have no American flag on the pick board;

rather, the flag is painted on the face of the guitar. See App. B. Second, the souvenir guitars

have a music box attached, which have a unique mechanical design irrespective of the RIGGS

ROCKER. Record 17. Third, the souvenir guitars are five inches and eleven inches long as

opposed to the standard length of a full size guitar like the RIGGS ROCKER. Id.

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CONCLUSION

This Court should reverse the District Court finding that the RIGGS ROCKER was

entitled to trade dress protection because its trade dress is functional, and protection would

hinder marketplace competition. The trade dress is also not distinct because the RIGGS

ROCKER has not acquired secondary meaning and in the minds of the public does not identify

Mr. Houston or his goods in commerce as the source. There is also no trade dress protection

since there is no likelihood of confusion due to no evidence of actual confusion and a vast

difference between the two marks.

Furthermore, this Court should affirm the District Court’s finding that LSP’s souvenir

guitars are not trademark counterfeits because they were not spuriously manufactured to be

identical replicas of the RIGGS ROCKER. Instead, LSP’s souvenir guitars commemorate the

COUNTRYWOOD Music Festival and the City of Cottonwood’s longstanding country music

tradition.

Respectfully submitted, TEAM W-12-024 ATTORNEYS FOR DEFENDANTS SUBMITTED JANUARY 3, 2014

App. 1

TABLE OF APPENDICES

Appendix A: Exhibit A RIGGS ROCKER guitar App. 2

Appendix B: Exhibit B Laredo Specialty Products (LSP) Toy Guitar App. 3

App. 2

APPENDIX A

App. 3

APPENDIX B