Cardinal Motors, Inc. v. H&H Sports Prot. USA Inc.
128 F.4th 112 (2025)
Rule of Law:
The requirement for a plaintiff alleging trade dress infringement under the Lanham Act to precisely articulate the features of its claimed trade dress at the pleading stage is a distinct pleading requirement separate from, and does not include, the requirement to plead the distinctiveness of that trade dress.
Facts:
- Cardinal Motors, Inc. (Cardinal) designs motorcycle helmets and exclusively licenses its designs for production and sale by other companies.
- Cardinal has exclusively licensed the design of its motorcycle helmet, "The Bullitt," to Bell Sports, Inc. (Bell), which has achieved significant commercial success since its market introduction in 2014, becoming a flagship product known for its unique look and feel.
- Cardinal describes The Bullitt's unique appearance through two alternative trade dresses: a "General Trade Dress" (comprising a distinctive overall shape with a curved top, thin chin protector, large eyeport, single-level chin bar, thin chin bar height, substantial rear overhang, and large diameter pivot point escutcheon) and a "Detailed Trade Dress" (including all General Trade Dress features plus metallic reflective borderlines, decorative leather overlays, brown leather-like arc segments, metallic bottom trim, brown leather trim patch, and internal jig saw puzzle part V-shaped cheek pads with shiny and suede leather).
- H&H Sports Protection USA Inc. (H&H) manufactures and sells a motorcycle helmet called the "Torc T-1," which is sold in similar flat and bubble versions and features design elements akin to The Bullitt, such as metallic borders, large decorative screws, and cheek pads with a combination of brown shiny and suede leather.
- Cardinal never authorized H&H to incorporate either The Bullitt's General Trade Dress or Detailed Trade Dress into any of its helmets.
Procedural Posture:
- Cardinal Motors, Inc. (Plaintiff) commenced an action against H&H Sports Protection USA Inc. (Defendant) in the United States District Court for the Southern District of New York on September 24, 2020, principally alleging claims of unfair competition and trade dress infringement under federal law.
- Cardinal amended its complaint on two separate occasions, but the district court dismissed both amended complaints without prejudice, finding they failed to adequately plead the claimed trade dress with precision or with allegations of its distinctiveness.
- Cardinal filed a third amended complaint (TAC) on October 4, 2022, seeking to address the deficiencies by articulating two alternative trade dresses: the "General Trade Dress" and the "Detailed Trade Dress."
- On September 26, 2023, the district court granted H&H's motion to dismiss the TAC with prejudice, ruling that Cardinal failed to sufficiently articulate a precise expression of the General Trade Dress, including its distinctiveness, and summarily dismissed claims based on the Detailed Trade Dress for the same reasons.
- The district court also dismissed Cardinal's state law claims of unfair competition.
- Cardinal filed a notice of appeal on October 23, 2023, to the United States Court of Appeals for the Second Circuit (Appellant).
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Issue:
Does a plaintiff alleging trade dress infringement under the Lanham Act, when articulating the precise features of its claimed trade dress at the pleading stage, also need to articulate how that trade dress is distinct?
Opinions:
Majority - Chin, Circuit Judge
No, a plaintiff alleging trade dress infringement under the Lanham Act is not required to articulate the distinctiveness of that trade dress when precisely articulating the features of its claimed trade dress at the pleading stage. The court clarified that the "articulation requirement," established in cases like Landscape Forms, Inc. v. Columbia Cascade Co. and Yurman Design, Inc. v. PAJ, Inc., is a pleading requirement for plaintiffs to precisely list the specific components of their claimed trade dress. This requirement is separate from the element of distinctiveness, which must be pleaded and eventually proven as part of the trade dress infringement claim itself, as outlined in Wal-Mart Stores, Inc. v. Samara Bros. The district court erred by incorporating distinctiveness into its articulation analysis, prematurely dismissing Cardinal's claims based on the General Trade Dress by faulting its breadth and over-detail, which are issues related to distinctiveness, not the precision of articulation. The court found that both the General Trade Dress, which detailed specific attributes like a "curved top," "thin chin protector," and "large diameter pivot point escutcheon," and the Detailed Trade Dress, which added further features like "metallic reflective borderline" and "internal jig saw puzzle part V-shaped cheek pads," were articulated with sufficient precision to satisfy the pleading requirement. The purpose of the articulation requirement is to provide courts and juries with a crucial guidepost to evaluate the merits, winnow out overbroad claims, and enable narrowly-tailored relief, rather than to pre-judge distinctiveness.
Analysis:
This decision significantly clarifies the pleading standard for trade dress infringement claims within the Second Circuit, formally distinguishing the need to precisely describe trade dress features from the separate requirement to plead its distinctiveness. By disentangling these concepts, the court ensures that plaintiffs who can articulate their product's design with specificity are not prematurely dismissed on distinctiveness grounds, which properly belong to a later stage of litigation (e.g., summary judgment or trial). This ruling is likely to increase the number of trade dress cases that survive motions to dismiss, shifting the focus towards evaluating distinctiveness and likelihood of confusion after the initial pleading stage, and potentially enhancing protections for product designs against alleged copying.
