R and A Synergy v. Spanx - Order Granting MTD (W/leave To Amend)

Case 2:17-cv-09147-SVW-AS Document 28 Filed 05/01/19 Page 1 of 24 Page ID #:425
UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL

Case No. 2:17-cv-09147-SVW-AS Date May 1, 2019
Title R and A Synergy LLC v. Spanx, Inc.
Present: The Honorable STEPHEN V. WILSON, U.S. DISTRICT JUDGE

Paul M. Cruz N/A
Deputy Clerk Court Reporter / Recorder
Attorneys Present for Plaintiff: Attorneys Present for Defendant:
N/A N/A
Proceedings: ORDER GRANTING DEFENDANT’S MOTION TO DISMISS [15]
On September 27, 2018, Plaintiff R and A Synergy LLC filed a First Amended Complaint in this
action, bringing four causes of action against Defendant Spanx, Inc. for trade dress infringement and
unfair competition. See Dkt. 14 (the “FAC”). Before the Court is Defendant’s motion to dismiss the
FAC. See Dkt. 15. For the reasons set forth below, the Court GRANTS Defendant’s motion.
I. Factual Background
Plaintiff manufactures women’s clothing, specifically an “undergarment” product constituting

“slip-on sleeves” made to be worn under sleeveless and strapless dresses or other sleeveless tops.
FAC ¶¶ 8-9. On February 3, 2010, Plaintiff filed for and obtained a patent for the sleeved undergarment
product, with the identification number US Patent No. 8,365,313. Id. ¶ 13; see also id. Ex. A. Plaintiff
branded its product under the name “SLEEVEY WONDERS” and filed for a federal trademark for the
name on February 20, 2009. Id. ¶¶ 11, 14. Plaintiff also registered the “hangtag” accompanying its
product for copyright purposes, identified as Federal Copyright Registration No. VA-2-075-388. Id.
¶¶ 16-17; see also id. Exs. C, D. Beyond selling the product on Plaintiff’s own website, Plaintiff also
entered into a license agreement with Magic Tap LLC in November 2012 to license Plaintiff’s product
under the brand name “SLEEVEY MAGIC,” which was registered for a trademark on April 8, 2014. Id.
¶¶ 14, 26-27. The Court will collectively refer to the SLEEVEY WONDERS and SLEEVEY MAGIC
products as “Sleevey.”
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Initials of Preparer PMC
CIVIL MINUTES - GENERAL Page 1 of 24



Sleevey is made of lightweight, sheer, and form-fitting material that “fit[s] snuggly around the
arms of the wearer.” Id. ¶ 30. Plaintiff alleges that, when Sleevey is worn under a sleeveless
outergarment, the sleeveless outergarment appears to have sleeves, which can create a new look and can
allow the customer to wear sleeveless outergarments at any time during the year. Id. Plaintiff has sold
Sleevey across the United States since 2011 in a variety of colors, materials, and designs. Id. ¶¶ 14, 31-
33. Plaintiff claims that no other similar sleeved undergarment product existed before the Sleevey
products were introduced. Id. ¶ 15.
Plaintiff states on both its website and the hangtag accompanying the Sleevey products that
Sleevey is designed “to wear UNDER all your sleeveless & strapless tops & dresses.” Id. ¶ 25. Plaintiff
advertises the Sleevey product as “magically transforming your outfit into something NEW!” Id. ¶¶ 19,
25. Plaintiff’s advertising includes a “mathematical equation” to show how the combination of the
Sleevey product with outergarments can become a new outfit. Id. ¶ 20. Plaintiff also uses illustrations of
paper dolls wearing Sleevey, along with separate outergarments that can be placed on the paper dolls, to
demonstrate Sleevey’s versatility with other items of clothing. Id. ¶ 21. Plaintiff’s packaging features a
bullet point list describing “What Sleevey Wonders Can Do For You,” beyond merely covering “bare,
flabby arms.” Id. ¶ 22. For at least the past four years, Plaintiff’s brand advertising also uses the taglines
“Beautify your arms & expand your wardrobe” and “Made in the USA, with love.” Id. ¶¶ 23-24.
Plaintiff advertises on its own website, maintains social media accounts on Instagram and Facebook,
works with independent marketing and sales consultants to promote the sale of Sleevey in retail stores
throughout the United States and other countries, and attends trade shows to promote the Sleevey
products. Id. ¶¶ 36-39. Plaintiff also alleges that Sleevey has been worn by celebrities and has received
national recognition through blogs, journals, or other publications. Id. ¶ 41.
Defendant manufactures a large array of undergarments and other types of clothing for women.
Id. ¶ 2. Plaintiff alleges that on May 15, 2013, an employee of Defendant had ordered two Sleevey
products delivered directly to Defendant’s headquarters and addressed to Lisa Magazine, the executive
assistant to Defendant’s Chief Executive Officer, Sara Blakely. Id. ¶ 42; see also id. Ex. G. Plaintiff
alleges that, in April and May 2016, Plaintiff reached out to Defendant to offer a licensing deal that
would allow Defendant to sell the Sleevey products, but Defendant never responded. Id. ¶ 44.
Thereafter, in September 2017, Defendant released undergarment sleeve products intended to be worn
under sleeveless clothing, branded under the names “ARM TIGHTS” and “SHEER FASHION.”
Id. ¶¶ 45, 48. The Court will collectively refer to the ARM TIGHTS and SHEER FASHION products as
“Spanx.”
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Plaintiff alleges that, like Sleevey, Defendant’s Spanx products are made in all different colors,
textures, and combinations thereof. Id. ¶ 51. Plaintiff claims Spanx products are similarly advertised as
being able to “Transform your wardrobe!” Id. ¶ 54. Plaintiff alleges that Defendant also advertises
Spanx using paper dolls wearing sleeved undergarments with interchangeable outfits in order to
demonstrate the different variations that are possible with the product. Id. ¶ 55. Plaintiff alleges that
Defendant uses a bullet point list to showcase the Spanx products’ features, captioned “What’s it do?”
Id. ¶ 56. Plaintiff claims that Defendant’s website uses equations to show how combinations of the
Spanx products and outergarments can create new outfits. Id. ¶ 57. Defendant allegedly uses the tagline
“#Madewithlove” to advertise the Spanx products. Id. ¶ 58.
Plaintiff further asserts that Defendant generally claims to have come up with the idea for the
Spanx products on its own, including by representing that the Spanx products are new, that the Spanx
products fill a “white space” in the market, and that the Spanx products are “unlike any other layer
options” in the market. Id. ¶¶ 61-64. Plaintiff asserts that the Spanx products infringe on the Sleevey
trade dress, that Defendant falsely advertises that it came up with the idea for the Spanx sleeved
undergarments on its own, and that Defendant’s actions have created confusion in the marketplace
between Sleevey and Spanx, culminating in a reduction in Plaintiff’s sales of Sleevey. Id. ¶ 59, 65-66,
71-72, 75. Plaintiff also alleges that, because of Defendant’s infringement and false advertising,
Defendant is misleading the public into believing that Defendant operates its business with the intention
of supporting women in their entrepreneurial pursuits. See id. ¶ 67-70.
Plaintiff initiated the instant action against Defendant on December 21, 2017. Dkt. 1. After
attempts to resolve the case amicably were unsuccessful, on August 27, 2018, Plaintiff filed the FAC,
asserting causes of action for trade dress infringement, false advertising, and false designation of origin
under the Lanham Act, 15 U.S.C. § 1125, along with a related claim for false advertising and unfair
competition under Cal. Bus. & Prof. Code §§ 17200 and 17500 et seq. See generally FAC ¶¶ 77-122.
II. Standard of Review
A motion to dismiss under Rule 12(b)(6) challenges the legal sufficiency of the claims stated in
the complaint. See Fed. R. Civ. P. 12(b)(6). To survive a motion to dismiss, the plaintiff’s complaint
“must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its
face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S.
544, 570 (2007)). A claim is facially plausible “when the plaintiff pleads factual content that allows the
court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal,
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556 U.S. at 678. A complaint that offers mere “labels and conclusions” or “a formulaic recitation of the
elements of a cause of action will not do.” Id.; see also Moss v. U.S. Secret Serv., 572 F.3d 962, 969 (9th
Cir. 2009) (citing Iqbal, 556 U.S. at 678).
In reviewing a Rule 12(b)(6) motion, a court “must accept as true all factual allegations in the
complaint and draw all reasonable inferences in favor of the nonmoving party.” Retail Prop. Trust v.
United Bhd. of Carpenters & Joiners of Am., 768 F.3d 938, 945 (9th Cir. 2014). Thus, “[w]hile legal
conclusions can provide the complaint’s framework, they must be supported by factual allegations.
When there are well-pleaded factual allegations, a court should assume their veracity and then determine
whether they plausibly give rise to an entitlement to relief.” Iqbal, 556 U.S. at 679.
III. Analysis
Defendant moves to dismiss the FAC in its entirety, on the grounds that Plaintiff’s factual
allegations in the FAC are conclusory or insufficient to support a plausible claim for relief, the alleged
trade dress is not properly identified or defined in the FAC and therefore not protectable, the product
features Plaintiff seeks to protect are both generic and functional, and any alleged misrepresentations
made by the Defendant are true or constitute unactionable puffery.
Each of Plaintiff’s federal law claims originates under Section 43(a) of the Lanham Act, which
provides for the following:
Any person who, on or in connection with any goods or services, or any

container for goods, uses in commerce any word, term, name, symbol, or
device, or any combination thereof, or any false designation of origin, false
or misleading description of fact, or false or misleading representation of
fact, which--
(A) is likely to cause confusion, or to cause mistake, or to deceive
as to the affiliation, connection, or association of such person with
another person, or as to the origin, sponsorship, or approval of his
or her goods, services, or commercial activities by another person,
or
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(B) in commercial advertising or promotion, misrepresents the

nature, characteristics, qualities, or geographic origin of his or her
or another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is
or is likely to be damaged by such act.
15 U.S.C. § 1125(a)(1). The Court will analyze each of Plaintiff’s Lanham Act claims below.
A. Trade Dress Infringement
To state a claim for trade dress infringement under the Lanham Act, a plaintiff must first identify
the trade dress at issue. Trade dress is the “total image of a product” presented to the consumer,
including features such as the “size, shape, color, color combinations, texture or graphics” of the
product. Int’l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993) (citation omitted);
see also Adidas Am., Inc. v. Skechers USA, Inc., 890 F.3d 747, 754 (9th Cir. 2018). Once the trade dress
is defined, the plaintiff must then establish that: (1) the trade dress is nonfunctional; (2) the trade dress is
inherently distinctive or has acquired a “secondary meaning” associated with the plaintiff’s product; and
(3) there is a substantial likelihood of confusion among consumers between the plaintiff’s product and
the defendant’s product. Art Attacks Ink, LLC v. MGA Entm’t Inc., 581 F.3d 1138, 1145 (9th Cir. 2009)
(citing Disc Golf Ass’n v. Champion Discs, 158 F.3d 1002, 1005 (9th Cir. 1998)).
1. Identifying the Trade Dress
It is unclear on the face of the FAC exactly what Plaintiff seeks to protect as Sleevey’s “trade
dress.” Plaintiff’s first cause of action for trade dress infringement cites only the similarities in “colors,
shapes, fabric materials and material arrangements” between Sleevey and Spanx products as the basis
for the claim for trade dress infringement. See FAC ¶¶ 80-81. Regarding the makeup of the Sleevey
products themselves, elsewhere in the FAC Plaintiff describes the Sleevey products as being numerous
different styles of undersleeves, including “basic, bell, bandeau, flutter, waterfall, halter, shirred, tunic,
and trellis” and as being available “in a variety of colors including black, white, grey, coral, pink, mint,
cobalt blue, periwinkle blue, apple green, olive green, forest green, navy, red, silver, turquoise, eggplant,
brown and off-white.” FAC ¶¶ 32-33. Plaintiff also highlights the similarities between Sleevey and
Spanx regarding certain elements of the products’ packaging and promotional materials, including the
fact that both products are advertised using “paper dolls wearing a sleeved undergarment with various
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interchangeable outfits,” a bullet point list of “What Sleevey Wonders Can Do For You,” an “equation
to show that the product combines items to create new items,” and other slogans stating that the products
are made “with love.” Id. ¶¶ 55-58. Plaintiff alleges that Defendant is “selling [Spanx] products nearly
identical in appearance to the [Sleevey] products and blatantly lifting slogans and product packaging
materials from Plaintiff.” Id. ¶ 59.
Regardless of the extent to which Plaintiff seeks to label the above features of Sleevey as “trade
dress,” Plaintiff has failed to sufficiently identify a precise and non-generic trade dress under the
applicable precedent. The concept of trade dress excludes “ordinary product design,” because extending
trade dress protection to the product design as a whole “would create a monopoly in the goods
themselves.” Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 380 (2d Cir. 1997)
(additionally noting that trade dress claims under the Lanham Act are intended to “accord protection to
symbols consumers are likely to rely upon in distinguishing goods, while denying protection that would
hamper efforts to market competitive goods”); see also Interactive Health LLC v. King Kong USA, Inc.,
No. CV 06-1902-VBF(PLAx), 2008 WL 11337393, at *2 (C.D. Cal. Mar. 6, 2008) (“Courts have
exercised caution when extending trade dress protection to product designs, as they present an ‘acute
risk’ of stifling competition.”) (citations omitted). Concerns of imprecise trade dress definitions include
the risk that jurors will interpret the same trade dress differently, the possibility that jurors or courts will
be unable to determine functionality or secondary meaning, the likely overbreadth of the trade dress
claim, and the difficulty in crafting narrowly-tailored injunctive relief. Interactive Health, 2008 WL
11337393, at *2 (citations omitted).
For these reasons, “generic product designs are unprotectible even upon a showing of secondary
meaning.” Walker & Zanger, Inc. v. Paragon Indus., Inc., 549 F. Supp. 2d. 1168, 1174 (N.D. Cal. 2007)
(citing Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619 (6th Cir. 2002)); see
also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) (noting that “generic marks—those
that refer to the genus of which the particular product is a species . . . [citation]—are not registrable as
trademarks”) (internal quotation marks and citations omitted). What constitutes “genericness” may refer
to three separate scenarios: “(1) if the definition of a product design is overbroad or too generalized; (2)
if a product design is the basic form of a type of product; or (3) if the product design is so common in
the industry that it cannot be said to identify a particular source.” Walker & Zanger, 549 F. Supp. 2d at
1174 (citing Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir. 1995); Yurman
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Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115 (2d Cir. 2001); Mana Prods., Inc. v. Columbia Cosmetics
Mfg., Inc., 65 F.3d 1053 (2d Cir. 1995)).
Here, Plaintiff’s attempt to identify the trade dress for its Sleevey products falls within the first
two categories of “genericness” identified above. Plaintiff’s definition of its trade dress product design
as “colors, shapes, fabric materials and material arrangements,” FAC ¶ 80, is far too overbroad and
generalized to be protectable under the Lanham Act. Plaintiff has not described any particular color,
shape, fabric, or arrangement of materials used in any individual Sleevey product with sufficient
specificity to allow the Court to conclude even what the trade dress is for that product. See, e.g., Walker
& Zanger, 549 F. Supp. 2d at 1176 (finding an overbroad description of trade dress regarding decorative
tiles where the plaintiff described the decorative or artistic elements of its tiles by “resort[ing] to empty
generalities in the face of more precise alternatives”). Even if Plaintiff did sufficiently describe these
features on its Sleevey products, those features amount to nothing more than the “basic form” of a
generic sleeved undergarment product, with some variation in quality and style. See id. To the extent
that Plaintiff seeks to label the concept of a “sleeved undergarment” as trade dress, such a description
would clearly be nothing more than a basic description of the product and its function.
Lastly, any of Plaintiff’s packaging and promotional materials do not appear to fit within the
description of the Sleevey product design, which is simply the sleeved undergarment itself. Therefore,
Plaintiff’s other allegations regarding the similarities between Sleevey and Spanx elsewhere in the FAC
fall outside the scope of Plaintiff’s trade dress claim, which exclusively focuses on product design. See,
e.g., FAC ¶¶ 77-86 (failing to specify in the trade dress infringement cause of action whether any of
Defendant’s advertising or promotional materials fall within Plaintiff’s purported trade dress definition);
Dkt. 23 at 7 (Plaintiff explicitly arguing in opposition to Defendant’s motion to dismiss the trade dress
infringement claim that, with respect to the “likelihood of confusion” element, “the comparison is not of
the packing and marketing materials [between Sleevey and Spanx] . . . but a comparison of the
undersleeve products themselves as advertised and sold by the respective parties”).
Because Plaintiff’s purported definition of the trade dress for its Sleevey products broadly
encompasses the entire family of Sleevey products, a finding that the concept of sleeved undergarments
as embodied by the Sleevey product line constitutes actionable trade dress would impermissibly result in
trade dress protection of the Sleevey product design as a whole, rather than any of the specific trade
dress elements of any particular Sleevey product. As the Supreme Court has noted, the Lanham Act
“does not exist to reward manufacturers for their innovation in creating a particular device; that is the
purpose of the patent law and its period of exclusivity.” TrafFix Devices, Inc. v. Mktg. Display, Inc., 532
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U.S. 23, 34 (2001). Accordingly, Plaintiff has not met its burden to identify the trade dress at issue for
its trade dress claim with sufficient specificity as necessary to “provide adequate notice to competitors in
the [apparel industry] regarding the breadth of [P]laintiff’s exclusivity rights” as to the Sleevey products.
Walker & Zanger, 549 F. Supp. 2d at 1176.
2. Functionality
Even assuming that Plaintiff has sufficiently identified the trade dress at issue regarding the
Sleevey products, the Sleevey product features Plaintiff seeks to protect are functional and therefore
non-actionable.
“[T]rade dress protection extends only to product features that are nonfunctional.” Disc Golf
Ass’n, 158 F.3d at 1006. When assessing functionality, “a product’s trade dress must be analyzed as a
whole.” First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1381 (9th Cir. 1987) (citations omitted).
There is a general two-step test to determine whether a product feature is functional for purpose
of trade dress infringement. In the first step of the functionality analysis, the court determines if the
product feature at issue is “functional,” i.e., the feature “is essential to the use or purpose of the article or
if it affects the cost or quality of the article.” Disc Golf Ass’n, 158 F.3d at 1006 (internal quotation marks
omitted) (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995); see also Walker &
Zanger, 549 F. Supp. 2d at 1177 (defining product features essential to the purpose of the product as
“utilitarian” functionality). Put another way, functional features are those that “constitute the actual
benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity
made, sponsored, or endorsed a product.” Disc Golf Ass’n, 158 F.3d at 1006 (internal quotation marks
and citation omitted).
The Ninth Circuit has developed a four-factor test to determine whether a product feature is
functional: “(1) whether the design yields a utilitarian advantage; (2) whether alternative designs are
available; (3) whether advertising touts the utilitarian advantage of the design; and (4) whether the
particular design results from a comparatively simple or inexpensive method of manufacture.” Walker &
Zanger, 549 F. Supp. 2d at 1177 (citing Disc Golf Ass’n, 158 F.3d at 1006; Talking Rain Beverage Co.
v. S. Beach Beverage Co., 349 F.3d 601, 603-04 (9th Cir. 2003)). Courts are wary of labeling mere
aesthetic qualities of a product as a “utilitarian advantage” and have limited the application of aesthetic
functionality “to product features that serve an aesthetic purpose wholly independent of any source-
identifying function.” Id. at 1178 (citing Qualitex, 514 U.S. at 166; Publ’ns Int’l, Ltd. v. Landoll, Inc.,
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164 F.3d 337, 342 (7th Cir. 1998); Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532 (Fed.
Cir. 1994)). Furthermore, the Ninth Circuit has “squarely rejected the notion that any feature of a
product which contributes to the consumer appeal and saleability of the product is, as a matter of law, a
functional element of that product.” Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062,
1073 (9th Cir. 2006) (internal quotation marks and citation omitted).
In the second step, the court analyzes whether “exclusive use of the [product] feature would put
competitors at a significant non-reputation-related disadvantage.” Disc Golf Ass’n, 158 F.3d at 1006
(internal quotation marks omitted) (quoting Qualitex, 514 U.S. at 165). This inquiry is generally
appropriate in cases of aesthetic functionality, but if the product feature is found to be functional under
the first step, “there is no need to proceed further to consider if there is a competitive necessity for the
feature.” TrafFix Devices, 532 U.S. at 33. Thus, “[i]f the [product feature] does not satisfy either step, it
is nonfunctional and protectible.” Walker & Zanger, 549 F. Supp. 2d at 1177.
Plaintiff has failed to plead how its proposed trade dress is non-functional. The “sleeved
undergarment” design Plaintiff seeks to protect, combined with the various colors, shapes, fabrics, and
material arrangements, is essential to the Sleevey products’ purpose, which is to provide women with a
variety of sleeved undergarments to pair with other short-sleeved apparel in order to create the
appearance of sleeves. Consumers purchasing sleeved undergarments certainly desire to purchase the
“benefit” of the sleeved undergarment design; as Plaintiff admits, the purpose of Sleevey is to cover
“bare, flabby arms,” FAC ¶ 22, and to “give the appearance of the sleeveless over garment having
sleeves,” id. ¶ 30. Similarly, the “form-fitting” nature of the sleeved undergarments serves an important
function as it relates to the overall look of the wearer’s outfit, beyond a mere aesthetically-unique
design. The same can be said of the particular material used for each individual Sleevey product;
consumers buy a particular item of clothing not just because of its overall look but also because of its
comfort and fit. For these reasons, Plaintiff’s purported trade dress in the entirety of the Sleevey product
line is functional in nature and not subject to a Lanham Act claim.
In terms of the varieties of colors, shapes, and material arrangements offered in the Sleevey
products line, Plaintiff has not alleged which specific designs of the Sleevey products, or which qualities
or features of any of its individual Sleevey products, are being infringed upon by Defendant beyond
merely the fact that Spanx also is a “sleeved undergarment” product. Even so, the fact that Plaintiff
seeks trade dress protection for the entirety of the Sleevey product line means that, when viewing the
Sleevey products as a whole, the general design and look of each individual Sleevey product is
undoubtedly functional. Plaintiff’s allegations about the purely aesthetic qualities of any of its Sleevey
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products are not described with sufficient detail at the motion to dismiss stage to allow the Court to
conclude that Defendant copied any non-functional, purely aesthetic features of any Sleevey product in
its own Spanx products. See, e.g., S.F. Mercantile Co., Inc. v. Beeba’s Creations, Inc., 704 F. Supp.
1005, 1009 (C.D. Cal. 1988) (holding that the plaintiff failed to establish that its product was non-
functional because the plaintiff merely “discussed the general ‘look’ of the garments, rather than
focusing on the specific designs at issue”). In any event, “[t]here is no evidence or argument by
[P]laintiff that the garments in question were absolutely identical.” Id. The fact that Defendant offers
types, designs, and colors of sleeved undergarments similar to, but not identical to, previously-existing
Sleevey products does not, without more, equate to a finding that Defendant copied non-functional
aesthetic features of the Sleevey products. See, e.g., Int’l Jensen, 4 F.3d at 824 (noting that the “mere
use of a certain color will not automatically grant [the manufacturer] proprietary rights” in a product
because “[u]ntil secondary meaning has been established in every distinguishable shade [of color] . . .
there will always be an option available to a new market entrant”) (quoting another source); see also
Qualitex, 514 U.S. at 166 (holding that a color may be protectable where the color does not serve a
competitive need, acts as a symbol for the product, and identifies the product’s source).
As to the second step of the functionality analysis, Sleevey’s competitors, including the Spanx
line sold by Defendant, would be placed at a significant disadvantage if the Sleevey product line were to
be treated as protectable trade dress. Because of the wide variety of Sleevey products, to grant exclusive
use of these features to Plaintiff would mean that other undergarment manufacturers would be
foreclosed from producing any type of sleeved undergarment whatsoever, placing Sleevey’s competitors
at a non-reputational disadvantage in the marketplace. Ultimately, there is no unifying trade dress
element to the wide variety of Sleevey products offered, other than the fact that each product is a
“sleeved undergarment.” Extending trade dress protection to the entirety of Plaintiff’s product line
would foreclose meaningful competition contrary to the intent of the Lanham Act.
For these reasons, Plaintiff has failed to allege in the FAC how any of the features of the Sleevey
products Plaintiff seeks to protect are non-functional trade dress.
3. Distinctiveness and/or Secondary Meaning
Even if there were non-functional trade dress features of the Sleevey products meriting
protection under the Lanham Act, Plaintiff must still allege sufficient facts to support a plausible
conclusion that the trade dress is either “inherently distinctive” or has acquired “secondary meaning.”
Int’l Jensen, 4 F.3d at 824; see also Two Pesos, 505 U.S. at 769. Trade dress is inherently distinctive if it
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“identifies the source of the product or distinguishes it from other products.” Int’l Jensen, 4 F.3d at 824.
Secondary meaning occurs “when the purchasing public associates the mark or dress with a single
producer or source rather than with the product itself.” Id. In other words, secondary meaning is “a
learned association, an ‘acquired distinctiveness’” of the particular product feature developed over some
amount of time. Id. (quoting Two Pesos, 505 U.S. at 769).
To determine whether a product’s trade dress has acquired secondary meaning, courts will
consider: “(1) whether actual purchasers of the product bearing the claimed trademark associate the
trademark with the producer, (2) the degree and manner of advertising under the claimed trademark,
(3) the length and manner of use of the claimed trademark, and (4) whether use of the claimed trademark
has been exclusive.” Marketquest Grp., Inc. v. BIC Corp., 316 F. Supp. 3d 1234, 1262 (S.D. Cal. 2018)
(internal quotation marks omitted) (quoting Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove,
Inc., 419 F.3d 925, 930 (9th Cir. 2005)); see also Adidas Am., 890 F.3d at 754 (listing relevant factors
for determining secondary meaning as including “the exclusivity, manner, and length of use of the trade
dress, the amount and manner of advertising, the amount of sales, and proof of intentional copying by
the defendant”) (citation omitted). The primary inquiry of the secondary meaning analysis “is directed
towards the consumer’s attitude about the mark in question: does it denote to him a single thing coming
from a single source?” Marketquest Grp., 316 F. Supp. 3d at 1262 (internal quotation marks omitted)
(quoting Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 802 (9th Cir. 1970)).
Assuming as true all allegations in the FAC, Plaintiff has not sufficiently alleged that its
purported trade dress in the entirety of the Sleevey product line maintains a “secondary meaning” or is
“inherently distinctive.” Plaintiff makes only conclusory statements that the Sleevey products have
acquired secondary meaning and distinctiveness, see FAC ¶¶ 79, 104, 118, without explaining how any
of the factors listed above are satisfied.
Plaintiff does allege that the Sleevey product line has generated over $5.8 million in revenue, id.
¶¶ 39-40, and that Sleevey products have been worn by celebrities, showcased at trade shows, and
featured in magazines, id. ¶¶ 38, 41. However, while evidence of continued and widespread sales or
advertising may suggest secondary meaning, see Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352,
1358 (9th Cir. 1985) (en banc), such evidence of sales is not dispositive and “does not in itself create
legally protectable rights” in the product being sold, Carter-Wallace, 434 F.2d at 800 (internal quotation
marks and citation omitted). See also First Brands, 809 F.2d at 1383 (adding that “advertising and
promotional activities must involve ‘image advertising’” and the advertisements “must feature in some
way the trade dress itself”) (citation omitted). Without more, all Plaintiff has alleged is that Plaintiff has
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successfully sold its Sleevey products to date, which is insufficient to equate any “secondary meaning”
about any feature of the Sleevey products with the Sleevey brand. Indeed, “[t]he test of secondary
meaning is the effectiveness of the effort to create it,” not merely the effort to sell the product generally.
First Brands, 809 F.2d at 1383 (citation omitted) (holding that the plaintiff failed to establish secondary
meaning because the plaintiff “did not attempt to engender consumer identification with the yellow, F-
style jug” in which the product sold by the plaintiff was packaged). Plaintiff has not alleged that it
sufficiently urged consumers to associate any particular feature of the Sleevey products with the Sleevey
brand, other than by promoting the general design and purpose of sleeved undergarments in its
advertisements.
Based on the above, the FAC does not sufficiently allege enough factual matter to support a
plausible finding that Plaintiff’s proposed trade dress, even if sufficiently identified and non-functional,
has acquired secondary meaning or is inherently distinctive.
4. Likelihood of Confusion
When trade dress is both non-functional and is distinctive or has attained secondary meaning, the
plaintiff must then establish that the defendant’s use of the same or similar trade dress is likely to
confuse consumers. Int’l Jensen, 4 F.3d at 825. The likelihood of confusion among consumers “is the
core element of trademark infringement.” Id. (internal quotation marks omitted) (quoting E. & J. Gallo
Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992)).
The element of confusion is assessed as “whether a reasonably prudent consumer would be

confused about the source of the goods bearing the marks.” Adidas Am., 890 F.3d at 755 (citing
Dreamwerks Prod. Grp., Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998)). A reasonable
consumer is confused if he or she is “likely to assume that a product or service is associated with a
source other than its actual source because of similarities between the two sources’ marks or marketing
techniques.” Int’l Jensen, 4 F.3d at 825 (internal quotation marks and citation omitted). In analyzing
customer confusion in the trade dress context, courts are directed to consider the same factors used in the
ordinary trademark context, which include “strength of the trade dress, similarity between plaintiff’s and
defendant’s trade dress, evidence of actual confusion, marketing channels used, type of goods and likely
degree of purchaser care, and the defendant’s intent in selecting its trade dress.” Vision Sports, Inc. v.
Melville Corp., 888 F.2d 609, 616 (9th Cir. 1989) (citations omitted). Courts consider the entire overall
appearance of the products and packaging at issue in order to assess the “total effect” of the trade dress
on potential consumers. See Int’l Jensen, 4 F.3d at 825 (quoting First Brands, 809 F.2d at 1383-84).
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Here, irrespective of the above deficiencies in Plaintiff’s allegations in the FAC, Plaintiff did not
plead sufficient facts to support a finding of a likelihood of confusion. Plaintiff provided two examples
of alleged consumer confusion, one of which was allegedly consumer comments on Defendant’s
Instagram page regarding the similarities between Plaintiff’s Sleevey products worn by an actress in a
television show and Defendant’s Spanx products. See FAC ¶ 66. The second instance is a comment on
Defendant’s Facebook page, where a consumer wrote that Defendant’s Spanx products “look a lot like
Sleevey Wonders.” Id. ¶ 75; see also id. Ex. A1. However, Plaintiff’s own allegations do not support the
conclusion that consumers could not tell the difference between Sleevey and Spanx products. In fact,
Plaintiff’s allegations are consistent with the opposite conclusion, that customers can readily distinguish
the Sleevey products from the Spanx products based on packaging, manufacturing, and even product
design. The online comments Plaintiff alleges were made by consumers were made on Defendant’s
clearly-labeled corporate accounts, refuting the notion that any consumer visiting those accounts would
believe that Defendant’s sleeved undergarment products were identical to Plaintiff’s Sleevey products.
Indeed, the marketing and packaging materials Plaintiff attached to the FAC for each of Sleevey and
Spanx products are easily discernible. See id. Exs. C, K-L, O-Q.
When assessing the competing products for the “total effect” on consumers, it is clear that
Plaintiff’s allegations in the FAC are insufficient to support a plausible finding that consumers are likely
to believe that Sleevey products are actually associated with Spanx products, or vice versa. Neither has
Plaintiff alleged any facts to support an assertion that Defendant’s intent with the Spanx product line is
to cause confusion among consumers with the name “Arm Tights” or with the slogans or marketing
phrases used in connection with the Spanx products. Moreover, the mere fact that Defendant’s CEO
previously ordered Sleevey products several years ago has no bearing on Defendant’s current intent in
marketing and selling Spanx products as a wholly separate and distinguishable product from the Sleevey
products.
Because Plaintiff has failed to allege sufficient facts to support a finding of consumer confusion,
Plaintiff’s trade dress infringement is deficient under Rule 12(b)(6) on yet another basis.
5. Summary
For the reasons set forth above, Plaintiff has not alleged sufficient facts in the FAC pursuant to
the applicable Rule 12(b)(6) standards to support a plausible claim for trade dress infringement under
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the Lanham Act. Therefore, the Court GRANTS Defendant’s motion to dismiss Plaintiff’s first cause of
action.
B. False Advertising
In order to succeed on a Lanham Act for false advertising, a plaintiff must establish the
following elements:
(1) a false statement of fact by the defendant in a commercial advertisement about its own or
another’s product;
(2) the statement actually deceived or has the tendency to deceive a substantial segment of its
audience;
(3) the deception is material, in that it is likely to influence the purchasing decision;
(4) the defendant caused its false statement to enter interstate commerce; and
(5) the plaintiff has been or is likely to be injured as a result of the false statement, either by
direct diversion of sales from itself to defendant or by a lessening of the goodwill
associated with its products.
Skydive Ariz., Inc. v. Quattrocchi, 673 F.3d 1105, 1110 (9th Cir. 2012) (citing 15 U.S.C.
§ 1125(a)(1)(B); Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134, 1139 (9th Cir. 1997)). 1
Plaintiff alleges that Defendant engaged in two categories of false statements when advertising
the Spanx product line. First, Plaintiff alleges that Defendant’s CEO ordered Sleevey products in 2013
and began producing Spanx products four years later, which Plaintiff argues is sufficient to support a
plausible finding that Defendant was aware of Plaintiff’s Sleevey products and did not come up with the
idea for Spanx on its own. See FAC ¶¶ 42-43. Thus, Plaintiff claims that Defendant’s assertions about
the ingenuity of the Spanx products, including Defendant’s advertising of Spanx products as “unlike any
other layering options,” id. ¶ 61, as well as quotes from Defendant’s CEO that Defendant “invented”
Spanx and that Spanx fills a “white space” in the market, id. ¶¶ 63-64, are false or intentionally
misleading. See also id. ¶ 64 (Defendant’s CEO quoted in a newspaper article as saying “[t]ights have
been around for our legs for so many years, I was thinking, ‘Why aren’t there tights for our arms?’”).
1
The parties do not appear to contest that Defendant’s challenged statements were made in connection with
commercial advertising for the Spanx products, or that the statements at issue were made in interstate commerce.
:



Second, Plaintiff alleges that Defendant and Defendant’s CEO made other representations to the
public that Defendant’s mission is to support entrepreneurial women and to “help women feel great
about themselves and their potential.” Id. ¶¶ 67-70. Plaintiff claims these statements are false or
misleading because Defendant’s alleged infringement of Plaintiff’s Sleevey products hurts Plaintiff and
other “small, women owned” businesses, rather than elevating those women. Dkt. 23 at 12. Plaintiff also
alleges that it is “well-known” that women make a “habit” of supporting other women in business,
thereby generating more sales for Defendant’s Spanx products at the expense of Plaintiff’s Sleevey
products. Id.
1. False Statement of Fact
“To demonstrate falsity within the meaning of the Lanham Act, a plaintiff may show that the
statement was literally false, either on its face or by necessary implication, or that the statement was
literally true but likely to mislead or confuse consumers.” Southland Sod, 108 F.3d at 1139 (citation
omitted). The allegedly false statement must be examined in the full context of the advertising or
promotional materials in which the statement was made. Id. (citations omitted).
Conversely, an advertising statement may be non-actionable if it constitutes “puffery,” which is

defined as “exaggerated advertising, blustering, and boasting upon which no reasonable buyer would
rely.” Id. at 1145 (internal quotation marks and citation omitted). Examples of puffery include
“statement[s] of fact [in]capable of being proved false,” statements that are not “specific and
measurable,” or statements that otherwise cannot be “reasonably interpreted as a statement of objective
fact.” Coastal Abstract Serv., Inc. v. First Am. Title Ins. Co., 173 F.3d 725, 731 (9th Cir. 1999); see also
Glen Holly Entm’t, Inc. v. Tektronix Inc., 343 F.3d 1000, 1015 (9th Cir. 2003) (statements that are
“generalized, vague, or unspecific assertions” constitute unactionable puffery) (citations omitted); Cook,
Perkiss & Liehe, Inc. v. N. Cal. Collection Serv., Inc., 911 F.2d 242, 246 (9th Cir. 1990) (puffery “has
been described by most courts as involving outrageous generalized statements, not making specific
claims, that are so exaggerated as to preclude reliance by consumers”) (internal quotation marks and
citations omitted).
The court may determine at the motion to dismiss stage whether an alleged misrepresentation is a
statement of fact or mere puffery as a matter of law. Newcal Indus., Inc. v. Ikon Office Solution, 513
F.3d 1038, 1053 (9th Cir. 2008) (citing Cook, Perkiss & Liehe, 911 F.2d at 245).
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i. Literally False
To be literally false, a statement must “expressly or impliedly assert a fact that is susceptible to
being proved false” and must be subject to a reasonable interpretation of a statement of “actual facts.”
Coastal Abstract, 173 F.3d at 730 (internal quotation marks and citation omitted).
No statements allegedly made by Defendant as set forth in the FAC are literally false or could be
plausibly interpreted as stating actual facts. Merely advertising a product as being new, invented, filling
a white space, and being unlike other layering options does not amount to an assertion of fact. See, e.g.,
In re iPhone 4S Consumer Litig., No. C 12-1127 CW, 2014 WL 589388, at *6 (N.D. Cal. Feb 14, 2014)
(describing a voice-activated personal assistant used in cell phones as a “breakthrough” or an
“intelligent” product was non-actionable puffery), aff’d, 637 F App’x 414 (9th Cir. 2016); Tomek v.
Apple, Inc., No. 11-cv-02700-MCE, 2012 WL 2857035, at *4 (E.D. Cal. July 11, 2012) (statement that
the MacBook Pro laptop is a “breakthrough, through and through” was puffery); Oestreicher v.
Alienware Corp., 544 F. Supp. 2d 964, 973 (N.D. Cal. 2008) (finding puffery in generalized and vague
statements indicating product superiority such as “faster, more powerful, and more innovative than
competing machines”) (internal quotation marks omitted), aff’d, 322 F. App’x 489 (9th Cir. 2009);
OptoLum, Inc. v. Cree, Inc., 244 F. Supp. 3d 1005, 1011-12 (D. Ariz. 2017) (statements by the
defendant that its product is “a ‘very elegant solution’ to LED design problems” and is a “genius idea”
constitute puffery); Rosenthal Collins Grp., LLC v. Trading Techs. Int’l, Inc., No. 05 C 4088, 2005 WL
3557947, at *10 (N.D. Ill. Dec. 26, 2005) (statements that a product is “innovative” and “level[s] the
playing field” are “not specific, not concrete, not measurable, and therefore puffery”); Soilworks, LLC v.
Midwest Indus. Supply, Inc., 575 F. Supp. 2d 1118, 1133 (D. Ariz. 2008) (claims that a company was the
“innovator” of a product and that the product was the result of “revolutionary state-of-the-art
innovation” constituted puffery because those claims are general, vague, and unmeasurable).
In Williams & Lake LLC v. Genesis Systems LLC, No. CV-17-00117-TUC-CKJ, 2017 WL
6418937 (D. Ariz. Sept. 13, 2017), the court addressed a Lanham Act claim alleging that the defendants’
claims of authorship or inventorship of its vehicle braking system were actionable false or misleading
statements. Id. at *6-7. The court rejected the plaintiff’s false advertising claim at the motion to dismiss
stage, noting that “inventorship is not a cause of action” for false advertising under the Lanham Act. Id.
at *7. The court then rebuked the plaintiff’s attempt to distinguish representations of inventorship from
implications about the innovativeness of the defendant’s product. Id. at *8. Specifically, the court noted
that, just because the plaintiff alleged that the defendant’s statements about inventorship may raise the
perception that the plaintiff’s product is duplicitous or inferior, such allegations does not transform the
:



plaintiff’s claim to one challenging the nature of the defendant’s product. Id. “The essence of Plaintiff’s
argument involves an allegation that Defendants are falsely advertising that they invented the digital
brake system and nothing else. [Defendants’] statements are within the scope of inventorship in the
Ninth Circuit.” Id. (citing Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137, 1143-44 (9th Cir.
2008)). Accordingly, the court dismissed the plaintiff’s Lanham Act claim with prejudice. Id. at *9.
Similar to the cases cited above, statements made by Defendant’s CEO representing that she
“invented” the Spanx sleeved undergarments or that the Spanx products filled a “white space” in the
market are puffery and non-actionable under the Lanham Act. No reasonable consumer would rely on
those statements as an objective, measurable statement of fact. Moreover, it is settled law that “product
superiority claims that are vague or highly subjective” constitute puffery without any other basis to
conclude that those claims assert an objective statement of fact. Southland Sod, 108 F.3d at 1145 (citing
Cook, Perkiss & Liehe, 911 F.2d at 246). Thus, Defendant’s statement that Spanx products are “unlike
any other layering options” is an unquantifiable representation about the quality and uniqueness of the
Spanx products and also constitutes puffery. In fact, by advertising the Spanx products as “unlikely any
other layering options,” Defendant acknowledges the existence of other sleeved undergarment products
on the marketplace, rebutting Plaintiff’s assertion that Defendant falsely represented itself as the sole
inventor of sleeved undergarments generally. In sum, Plaintiff has not identified any literally false
statements made by Defendant about the origin or superiority of Defendant’s Spanx products.
As to the second category of statements about Defendant’s mission to support women in

business, these statements are also clearly puffery. Defendant’s “support” of women is not a statement
of objective fact; instead, the statement reflects the company’s vague and abstract goals in conducting
business. There is no readily available method to determine the truth or falsity of Defendant’s mission
statement. Regardless, Plaintiff’s argument about the falsity of Defendant’s mission statement puts the
cart before the horse by assuming that Defendant infringed upon Plaintiff’s sleeved undergarment
product design, thereby rendering Defendant’s mission to support women in business false. Defendant’s
mission statement is a prototypical example of non-actionable puffery, and Plaintiff has not advanced
any meritorious arguments to oppose such a conclusion.
Based on the above, Defendant’s challenged advertising statements constitute puffery and are not
literally false as a matter of law.
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ii. True but Misleading
If an advertising claim is not literally false, the plaintiff may still satisfy the first element of a
Lanham Act false advertising claim by establishing that the representations of fact in advertising
statements were literally true but otherwise misled, confused, or deceived the public. Southland Sod, 108
F.3d at 1140 (citations omitted). To assess whether consumers were misled, a plaintiff generally relies
on consumer surveys. Id. (citations omitted).
Plaintiff argues that Defendant’s challenged advertising statements may also be misleading to the
public, in that consumers might wrongly believe that Spanx was the first sleeved undergarment product
to appear on the marketplace or that female consumers would be more likely to buy Spanx products
based on Defendant’s mission statement supporting women in business, even though Defendant
allegedly infringed upon Plaintiff’s sleeved undergarment product. As explained above, all of these
statements are puffery and non-actionable, meaning that reasonable consumers would not rely on these
statements when making purchasing decisions regardless of whether the statements may be misleading
in some sense. Because consumers would not rely on Defendant’s puffery, Defendant’s statements
cannot be considered true but misleading as a matter of law.
2. Deception
Even assuming that Plaintiff has properly alleged an actionable false statement in the FAC,
Plaintiff must then allege that the alleged statement “actually deceived or has the tendency to deceive a
substantial segment of its audience.” Southland Sod, 108 F.3d at 1139.
Taking all of the allegations in the FAC as true, Plaintiff has failed to allege a plausible basis to
find that Defendant’s Spanx products actually deceive or have the tendency to deceive consumers as to
their origin. Plaintiff’s reliance on comments made on Defendant’s social media accounts, see FAC ¶¶
66, 75; id. Ex. 1A, are not sufficient to support a claim that any consumer would be deceived by
Defendant’s statements and would believe that the Spanx products are the first sleeved undergarment
products on the marketplace. Plaintiff has not alleged any other facts to support the conclusion that
consumers have mistaken Spanx for Sleevey, or vice versa, as a result of Defendant’s purportedly false
advertising statements. Neither are these social media comments sufficient to support the conclusion that
a “substantial segment” of Plaintiff’s target audience would be deceived about which company makes
what product, or even which company first came up with the idea for sleeved undergarments.
Furthermore, Plaintiff’s conclusory allegations “upon information and belief” that women buy Spanx
:



products in part because of Defendant’s mission statement to support women and female entrepreneurs,
see FAC ¶ 70, are insufficient to support a plausible claim of deception among consumers in the sleeved
undergarment industry.
Nevertheless, the Court recognizes that consumer deception is typically proved through
consumer surveys, which may be appropriately conducted during the discovery phase. Therefore, to the
extent that Plaintiff could identify a false actionable statement, Plaintiff’s allegations in the FAC likely
would be sufficient to support an inference of deception sufficient to withstand a Rule 12(b)(6) motion.
However, because Plaintiff has not identified a false actionable statement, the FAC does not contain
sufficient allegations to support a plausible claim that consumers are deceived or have the tendency to be
deceived by Defendant’s challenged advertising statements.
3. Materiality
A finding of consumer deception does not amount to a Lanham Act violation unless the
deception “is material, in that it is likely to influence the purchasing decision.” Southland Sod, 108 F.3d
at 1139.
For the same reasons articulated above, Plaintiff has failed to incorporate sufficient allegations in
the FAC as to why the alleged false statements would be material to consumers. Defendant’s statements
are mere puffery as a matter of law, which necessarily means that reasonable consumers would not rely
on the statements when making purchasing decisions. See id. at 1145 (internal quotation marks and
citation omitted).
If there is any doubt, even if Defendant’s statements about the invention of the Spanx products
were actionable false statements, the Supreme Court has directly addressed the question of whether
representations about which company came up with the idea for a product materially influence
consumers. In Dastar Corp. v. Twentieth Century Fox Film Corp., a case addressing a “false designation
of origin” claim under the Lanham Act, the Supreme Court noted that a consumer purchasing a
particular brand of product “does not automatically assume that the brand-name company is the same
entity that came up with the idea for the product, or designed the product—and typically does not care
whether it is.” 539 U.S. 23, 32 (2003) (emphasis added). Accordingly, claims under the Lanham Act
“should not be stretched to cover matters that are typically of no consequence to purchasers.” Id. at 33.
Although the context of the Supreme Court’s reasoning is slightly different than Plaintiff’s claim for
false advertising under the Lanham Act, as explained further below, a plaintiff bringing a Lanham Act
:



claim for false designation of origin must establish the same element of materiality of the deceptive
advertising. See Obesity Research Inst., LLC v. Fiber Research Int’l, LLC, 165 F. Supp. 3d 937, 949
(S.D. Cal. 2016) (“Obesity Research I”). Therefore, Dastar is instructive for the materiality component
of Plaintiff’s false advertising claim under the Lanham Act.
When applying Dastar to Plaintiff’s false advertising claim, it is clear that, even if Defendant’s
challenged statements about the origin of the Spanx products were false, any deception created by those
false statements would be “of no consequence to purchasers” of sleeved undergarment products. Dastar,
539 U.S. at 33. It is immaterial to consumers whether Plaintiff or Defendant is the original source of the
general concept of “sleeved undergarments.” Therefore, as a matter of law, Plaintiff cannot maintain a
plausible claim of false advertising under the Lanham Act for any of Defendant’s representations about
the invention of the Spanx products.
4. Harm to Plaintiff
A plaintiff who successfully establishes a Lanham Act violation is entitled to recover, “subject to
the principles of equity . . . (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3)
the costs of the action.” 15 U.S.C. § 1117(a). Because equitable relief is available under the Lanham Act
as well, see id. § 1116(a), a plaintiff bringing suit against a competitor for false advertising “need not
prove injury when suing to enjoin conduct that violates” the Lanham Act, Southland Sod, 108 F.3d at
1145 (internal quotation marks omitted) (quoting Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d
197, 210 (9th Cir. 1989)). Furthermore, a plaintiff will be presumed to have suffered commercial injury
for Article III standing purposes if the plaintiff is in direct competition with the defendant accused of
false advertising. See TrafficSchool.com, Inc. v. Edriver Inc., 653 F.3d 820, 826 (9th Cir. 2011) (“We
have generally presumed commercial injury when defendant and plaintiff are direct competitors and
defendant’s misrepresentation has a tendency to mislead consumers.”). That is to say, the inability of the
plaintiff to make a sufficient showing of actual damages will not preclude the ability to recover
monetary relief under the Lanham Act. See Obesity Research Inst., LLC v. Fiber Research Int’l, LLC,
310 F. Supp. 3d 1089, 1126 (S.D. Cal. 2018) (“Obesity Research II”). For these reasons, the FAC need
not allege injury to withstand a motion to dismiss under Rule 12(b)(6).
In any event, assuming that Plaintiff satisfied the other elements of a Lanham Act false
advertising claim, the FAC contains sufficient allegations to support a plausible claim that Plaintiff was
injured by Defendant’s conduct. Plaintiff alleges that Plaintiff has lost business as a result of
Defendant’s advertising and that there has been a loss of goodwill associated with Plaintiff’s product.
:



FAC ¶¶ 47, 59, 94. Therefore, accepting all of Plaintiff’s allegations as true for purposes of Defendant’s
12(b)(6) motion to dismiss, Plaintiff’s false advertising claim is not deficient with respect to Plaintiff’s
allegations of injury. Nevertheless, because Plaintiff failed to satisfy any of the other elements of a false
advertising claim under the Lanham Act, Plaintiff’s second cause of action is deficient under Rule
12(b)(6).
5. Summary
For the reasons stated above, Plaintiff’s second cause of action against Defendant for false
advertising under the Lanham Act is deficient as a matter of law. Plaintiff has not identified an
actionable false statement made by Defendant that would materially deceive consumers into purchasing
Defendant’s Spanx products at the expense of Plaintiff’s Sleevey products. Therefore, the Court
GRANTS Defendant’s motion to dismiss Plaintiff’s second cause of action.
C. False Designation of Origin
In addition to prohibiting trade dress infringement and false advertising, the Lanham Act also
protects against the “passing off,” or “palming off,” of another’s products via a claim for “false
designation of origin.” See Dastar, 539 U.S. at 29-31. Passing off, or palming off, occurs when a
producer sells its own goods as that of another brand. Id. at 27 n. 1. Conversely, “reverse passing off”
occurs when a producer sells another’s products under its own name. See id.; see also id. at 32 (an
example of false designation of origin as “the Coca–Cola Company’s passing off its product as Pepsi–
Cola or reverse passing off Pepsi–Cola as its product”). Additionally, Dastar defined the phrase “origin
of goods” as used in the Lanham Act to refer to “the producer of the tangible goods that are offered for
sale, and not to the author of any idea, concept or communication embodied in those goods.” Id. at 37
(emphasis added).
In order to state a claim for false designation of origin, a plaintiff must allege the following
elements:
(1) defendant uses a designation (any word, term, name, device, or any
combination thereof) or false designation of origin; (2) the use was in
interstate commerce; (3) the use was in connection with goods or services;
(4) the designation or false designation is likely to cause confusion, mistake,
or deception as to (a) the affiliation, connection, or association of defendant
:



with another person, or (b) as to the origin, sponsorship, or approval of

defendant’s goods, services, or commercial activities by another person;
and (5) plaintiff has been or is likely to be damaged by these acts.
Obesity Research I, 165 F. Supp. 3d at 949 (internal quotation marks omitted) (citing Summit Tech., Inc.
v. High-Line Med. Instruments, Co., 933 F. Supp. 918, 928 (C.D. Cal. 1996); Freecycle Network, Inc. v.
Oey, 505 F.3d 898, 902 (9th Cir. 2007)).
Plaintiff’s allegations in the FAC are insufficient to support a claim for false designation of
origin under the Lanham Act. Plaintiff does not allege that Defendant sold Sleevey products relabeled as
Spanx products, or that Defendant manufactured its own sleeved undergarments and sold them
purporting to be authentic Sleevey products. Plaintiff’s allegations confirm that Defendant manufactures
its own Spanx arm tights products and markets those products under the Spanx brand name. See, e.g.,
FAC ¶¶ 99-100 (asserting only that Spanx products are “nearly identical” to Sleevey products).
Plaintiff’s only allegations conceivably pertaining to passing off or reverse passing off are wholly
conclusory and unsupported by any factual allegations contained in the FAC. See id. ¶ 99 (alleging that
Defendant is “using Plaintiff R and A’s marketing and advertising materials, passing off Plaintiff R and
A’s work as its own, and/or misleading the public into believe [sic] that Plaintiff R and A’s products are
those of Defendant Spanx”). In fact, the exhibits Plaintiff attached to the FAC reveal that Defendant uses
clearly distinguishable advertising materials, packaging, and other brand recognition materials under the
Spanx brand, even if the substance and style of those materials overlap with those Plaintiff uses for its
Sleevey products. See id. Exs. C, K-L, O-Q. Simply put, Plaintiff’s allegations do not constitute passing
off or reverse passing off necessary to support a claim for false designation of origin.
One example of a proper false designation of origin action under the Lanham Act can be found
in Summit Technology, where the plaintiff alleged that a competitor was altering and reselling the
plaintiff’s products in the United States as a “custom” device with misrepresentations that conveyed the
false impression that the plaintiff “is affiliated with or approves of” the defendant’s resale actions. 933
F. Supp. at 925. The court denied the defendant’s motion to dismiss the false designation of origin
claim, holding that the defendant’s alleged actions to advertise and promote the plaintiff’s product as a
custom device, without disclosing that the product was manufactured by the plaintiff, “purely and
unmistakably” constituted reverse palming off. Id. at 941.
Another example is Luxul Technology Inc. v. Nectarlux, LLC, 78 F. Supp 3d 1156 (N.D. Cal
2015). There, the court denied the defendants’ motion to dismiss the plaintiff’s false designation of
:



origin claim, in which the plaintiff alleged that the defendants replaced the plaintiff’s brand name on the
plaintiff’s goods with the defendants’ brand and subsequently sold the relabeled goods to consumers. Id.
at 1171. In reaching this conclusion, the court noted that “in this circuit, a reverse passing off claim
requires the alteration of a product and a subsequent sale.” Id. Because the plaintiff had properly alleged
alteration and subsequent sale, the court held that the plaintiff maintained a plausible claim for reverse
passing off sufficient to support a false designation of origin claim under the Lanham Act. Id. at 1171-
72.
The FAC contains no allegations of passing off or reverse passing off akin to the allegations by
the plaintiffs in Summit Technology or Luxul Technology. Plaintiff’s true basis for the false designation
of origin claim is simply which company first came up with the general concept of sleeved
undergarments, but, as explained in Dastar, claims of false designation of origin premised upon the
origin of the “idea” or “concept” of a particular product is insufficient as a matter of law. See 539 U.S. at
37. In light of the disconnect between the applicable legal standards and Plaintiff’s allegations in the
FAC, it is apparent that Plaintiff misunderstood the gravamen of a false designation of origin claim
under the Lanham Act.
In sum, Plaintiff’s cause of action against Defendant for false designation of origin under the
Lanham Act is insufficient as a matter of law. Therefore, the Court GRANTS Defendant’s motion to
dismiss the false designation of origin claim.
D. State Law Unfair Competition and False Advertising
Plaintiff’s fourth cause of action is a derivative claim of unfair competition and false advertising
under Cal. Bus. & Prof. Code §§ 17200 and 17500 et seq. FAC ¶¶ 109-22. As repeatedly noted by the
Ninth Circuit, “state common law claims of unfair competition and actions pursuant to California
Business and Professions Code § 17200 are ‘substantially congruent’ to claims made under the Lanham
Act.” Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir. 1994) (citations omitted); see also
Millennium Labs., Inc. v. Ameritox, Ltd., 817 F.3d 1123, 1131 (9th Cir. 2016) (reversing the district
court’s granting of summary judgment for the defendant on the plaintiff’s Lanham Act claims and
similarly finding summary judgment inappropriate on the plaintiff’s state law unfair competition claims
because the state law claims were “inextricably linked” to the plaintiff’s Lanham Act claims).
Plaintiff’s state law claim for unfair competition realleges the same facts and reasserts the same
arguments as embodied by Plaintiff’s Lanham Act claims. As described above, Plaintiff has failed to
:



sufficiently plead in the FAC any plausible claim for relief under the Lanham Act. Therefore, for the
same reasons explained above, the Court GRANTS Defendant’s motion to dismiss Plaintiff’s derivative
state law claim.
IV. Conclusion
For the reasons set forth above, the Court GRANTS Defendant’s motion to dismiss the FAC.
Where a complaint is dismissed, “leave to amend should be granted ‘unless the court determines
that the allegation of other facts consistent with the challenged pleading could not possibly cure the
deficiency.’” DeSoto v. Yellow Freight Sys., Inc., 957 F.2d 655, 658 (9th Cir. 1992) (quoting Schreiber
Distrib. Co. v. Serv-Well Furniture Co., 806 F.2d 1393, 1401 (9th Cir. 1986)). “In the absence of any
apparent or declared reason—such as undue delay, bad faith or dilatory motive on the part of the
movant, repeated failure to cure deficiencies by amendments previously allowed, undue prejudice to the
opposing party by virtue of allowance of the amendment, futility of amendment, etc.—the leave sought
should, as the rules require, be ‘freely given.’” Foman v. Davis, 371 U.S. 178, 182 (1962); see also
Sharkey v. O’Neal, 778 F.3d 767, 774 (9th Cir. 2015) (holding that the trial court abused its discretion
by not applying Foman factors). Under Rule 15(a) there is a presumption in favor of granting leave to
amend absent prejudice or a strong showing of any Foman factors. Eminence Capital, LLC v. Aspeon,
Inc., 316 F.3d 1048, 1052 (9th Cir. 2003).
Although Plaintiff’s claims in the FAC are deficient as a matter of law, the Court finds it
appropriate to grant Plaintiff with leave to file an amended complaint pursuant to the liberal amendment
standards of Rule 15. Plaintiff will need to incorporate additional factual allegations beyond those
contained in the FAC in order to support a claim for trade dress infringement, false advertising, and/or
false designation of origin in accordance with the applicable legal standards above. Specifically, in order
to maintain a plausible claim for relief, Plaintiff must define the trade dress at issue with sufficient
specificity, identify any representations of objective fact in Defendant’s advertising materials which may
be false or misleading, and/or include sufficient allegations to support a plausible finding that Defendant
engaged in passing off or reverse passing off in connection with Plaintiff’s Sleevey products.
Accordingly, Plaintiff is ordered to file an amended complaint within 21 days of the date of this
Order; if Plaintiff fails to do so, Plaintiff’s case will be dismissed with prejudice.
IT IS SO ORDERED.
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Case 2:17-cv-09147-SVW-AS Document 28 Filed 05/01/19 Page 1 of 24 Page ID #:425

UNITED STATES DISTRICT COURT

CIVIL MINUTES - GENERAL

Present: The Honorable STEPHEN V. WILSON, U.S. DISTRICT JUDGE

Plaintiff manufactures women’s clothing, specifically an “undergarment” product constituting

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II. Standard of Review

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Any person who, on or in connection with any goods or services, or any

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(B) in commercial advertising or promotion, misrepresents the

A. Trade Dress Infringement

1. Identifying the Trade Dress

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3. Distinctiveness and/or Secondary Meaning

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The element of confusion is assessed as “whether a reasonably prudent consumer would be

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1. False Statement of Fact

Conversely, an advertising statement may be non-actionable if it constitutes “puffery,” which is

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