In the recently decided case, Urban Group Exercise Consultants, Ltd. v. Dick's Sporting Goods, Inc., Urban Group claimed that Dick's Sporting Goods' sale of its “Jump Trainer” exercise trampoline infringed the former's unregistered trade dress in its “Urban Rebounder” exercise trampoline. Urban Group lost, and the court's decision in the case provides would-be trade dress plaintiffs (or defendants) with a helpful road map for how best to protect (or defend against) an unregistered trade dress claim.

The court began its holding by explaining that a product's trade dress is defined as the total image of a good, including its design, size, shape, color, texture and graphics. It then explained that courts need to exercise particular caution in extending trade dress protection to product designs, because protecting them raises a potential risk that doing so will hamper efforts to market competitive goods.

Therefore, to prove trade dress infringement premised upon an unregistered product design, a plaintiff must file a complaint that reasonably argues that its own trade dress is not functional, its trade dress has secondary meaning, and there is a likelihood of confusion between the plaintiff's goods and those of the defendant. In Urban Group Exercise v. Dick's, the court spent the bulk of the opinion discussing the second requirement: whether Urban Group's trade dress had attained secondary meaning.

The court began by explaining that a trade dress is considered to have attained secondary meaning when a consumer immediately associates the trade dress with the product's source. Think the curvaceous ribbed-glass shape of the Coca-Cola soda bottle, or the sternly British stiff upper lip of the grill of a Rolls Royce motor car.

To support its contention that it had strongly promoted its unregistered trade dress, which included a vivid red stripe outlining their depiction of the product, Urban Group alleged that:

1. It had spent millions of dollars advertising its trade dress over the last twelve years.
2. It typically spends $100,000 per month to advertise its trade dress.
3. It attends international trade shows to advertise its trade dress.
4. Nationwide research studies and consumer surveys reference its trade dress.
5. Its product had been featured on global broadcasts on NBC, CNBC, CNN, etc.
6. Its product had been featured in notable publications such as Allure, Fit, Home and Garden, etc.
7. Consumer Products named its product as one of the top U.S. fitness products in 2008.
8. It had sold millions of units worldwide.
9. It is found in over 5000 gyms worldwide.

This seems a pretty impressive list of accomplishments for an exercise trampoline. Unfortunately for Urban Group, the court was not equally impressed. The court began by explaining that any advertising or promotional activity prior to the year Urban Group introduced the red outline stripe surrounding its Urban Rebounder trampoline's black jumping mat was irrelevant. The court went even further to explain that even if it considered all of Urban Group's alleged advertising, because the complaint contained no contention that any of those advertisements or promotions stressed or emphasized the alleged trade dress, the company's claims did not support the product's design elements having acquired a secondary meaning. Put another way, to point to a representation on product packaging or in advertising of a specific product—even if that product does have a certain flare in its design, coloration, etc.—does not amount to a verifiable claim that such design, size, shape, color, texture and graphics have separately or collectively acquired a uniquely identifiable secondary meaning that stands singularly dependent of what the product actually it, videlicet a trampoline.

One obvious takeaway from this case is that evidence of advertising is all well and good, but if the advertising does not highlight non-functional and distinctive aspects of the alleged trade dress, the relevance of that advertising may be discounted, if not outright ignored.

The court then went on to explain that the consumer surveys Urban Group referred to were not traditional trademark consumer surveys conducted by trained trademark survey experts, but were medical research studies focused solely on the benefits of rebound exercises. The studies made no mention of the alleged trade dress and therefore, did not support a finding of secondary meaning.

Next, the court discounted the large sales figures offered by Urban Group because they did not identify how many of the units sold actually bore the alleged trade dress. Finally, the court explained that it was ignoring the unsolicited media coverage evidence because it too failed to state whether these broadcasts and other media mentions occurred prior to when the red stripe trade dress was adopted.

Urban Group Exercise v. Dick's is therefore instructive for those interested in asserting trade dress in an unregistered product shape. Potential plaintiffs should consider: (1) making sure that its advertising highlights the non-functional and distinctive aspects of the alleged trade dress; (2) that any surveys it provides are conducted by proven trademark consumer survey experts; (3) identifying exactly how much has been sold of the product bearing the alleged trade dress; and (4) identifying exactly how much of any unsolicited media coverage occurred after the trade dress was adopted. To succeed in a claim asserting an unregistered trade dress against a competitor, a plaintiff will likely need to fulfill all these criteria, and may wish to consider these issues as a branding and product development issue even before ever considering filing a claim. If not, such claim may leap high, but will have a harder landing than was hoped for.