ss It has been almost 25 years since Laramie, a small Philadelphia-based purveyor of “rack” (read “knockoff”) toys switched roles and scored an enormous hit with its TV-advertised, patented, and SUPER SOAKER® branded line of air pressure water guns. As Laramie’s chief intellectual property enforcer at the time, I remember well several frenetic years of legal activity as we tried, generally successfully, to protect Laramie’s proprietary position against knockoff artists foreign and domestic, and watching with astonishment as the company established new and ever-higher price points for what was still, after all, a rather cheap piece of plastic. Spring was always the busiest time of year, when both the current year’s retail selling season for water guns and the product cycle for the following year’s lines were ramping up. Like Proust’s madeleine, the U.S. District Court for New Jersey’s opinion last week in Buzz Bee Toys v. Swimways Corp., has brought these memories flooding back.

 Time marches on. Laramie was acquired by Hasbro, patents expired, competitors in the product category found ways to erode the original’s proprietary position at the edges, and personnel left to form their own companies, such as Buzz Bee Toys, maker of the WATER WARRIORS line of toy water guns. Buzz Bee learned that for the 2014 summer season its WATER WARRIORS line would be supplanted on the shelves of Target Stores by a new entrant to the market, FLOOD FORCE, and it has sued both the manufacturer, Swimways, and Target for infringement of what Buzz Bee claims is the distinctive trade dress of its products. (Trade dress refers to the design or packaging of a product which serves to identify the product’s source. For the water guns at issue, which are displayed in open-front packaging, Buzz Bee emphasized their “wavelike arcuate design, futuristic coil designs, and futuristic bubble projections.”) Although Judge Jerome Simandle found that “the overall similarity of the product lines is unmistakeable,” and acknowledged that the summer season is a make-or-break time in this product market, he nonetheless denied the preliminary injunction.

As Judge Simandle noted, a trade dress infringement claim requires proof of three elements: (1) that the trade dress is not functional (a topic we addressed in connection with the Louboutin “red outsole” case a few years back); (2) that the trade dress have acquired “secondary meaning” as an indicator of source; and (3) as in any trademark case, a likelihood of confusion as to the source of the products. Buzz Bee’s case foundered on the second element.

The court reviewed evidence pertaining to an extensive list of considerations bearing on secondary meaning, but found “no evidence in the record as to whether consumers purchase Buzz Bee’s or Swimways’ waterguns because their appearance identifies the source or whether the purchase is motivated by other factors, such as pleasing design, price, or convenient availability at a frequently-visited store.” The court concluded:

 Plaintiff has not adduced any evidence indicating that a customer would go to Target, ask for Buzz Bee or WATER WARRIORS products, and leave with a Swimways FLOOD FORCE product mistakenly believing that the watergun was a Buzz Bee or WATER WARRIORS product. Instead, it appears that a customer would go to Target, ask for a watergun, and leave with Defendant Swimways’ products simply because Swimways’ products were available.

As an old toy lawyer, I find this final piece of dicta a somewhat disconcerting. The scenario in which the customer asks for a particular product by name seems inapposite in a trade dress case. Better to ask, I think, whether a customer would go to Target, recognize the look of the products on the shelf as similar to Buzz Bee products which he or she has either been satisfied with in the past, or has been told (perhaps by his or her children showing a picture of what they want) are of good quality and desirable, only to later find out they are Swimways’.

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