Law School Case Brief
MZ Wallace Inc. v. Fuller - No. 18cv2265(DLC), 2018 U.S. Dist. LEXIS 214754 (S.D.N.Y. Dec. 20, 2018)
In order for a trade dress to be protectable, "the mark must be distinctive and not generic."
MZ Wallace is a fashion company that manufactures and sells handbags and other fashion accessories. It became popular for a design consisting of (1) a nylon bag; (2) with a quilted grid; (3) of 7/8 inch squares; (4) placed at a 45-degree angle with a corner facing downward; and (5) with squares covering all or substantially all of the bag (the "Trade Dress"). From 2012 through 2017, MZ Wallace continued to launch other new products that also bore the Trade Dress. MZ Wallace's bags that bear its Trade Dress have had significant commercial success. Between 2014 and 2018, MZ Wallace sold hundreds of thousands of items bearing the Trade Dress, resulting in tens of millions of dollars in sales. MZ Wallace filed suit against Oliver Thomas asserting six causes of action, each of which is premised on its assertion of trade dress rights: false designation of origin and dilution in violation of the Lanham Act, deceptive practices and dilution under New York state law, common law trademark and trade dress infringement, and common law unfair competition. Oliver Thomas filed a motion to dismiss asserting three counterclaims for a declaration that MZ Wallace's alleged trade dress is not protectable, for a declaration of non-infringement, and for tortious interference with a business relationship.
Should the court dismiss the case?
The Court granted Oliver Thomas's motion to dismiss MZ Wallace's Lanham Act dilution claim and the New York deceptive practices and dilution claims. Oliver Thomas's counterclaim for tortious interference with business relations was also dismissed. It held that the claimed Trade Dress had not acquired secondary meaning and was not a strong mark. The two products are also not very similar the only similarity it had was the process of quilting.
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