MVS Wins Trademark Case at the 8th Circuit Court of AppealsNovember 17, 2022

MVS is pleased to announce that the Eighth Circuit affirmed Tuesday a lower court ruling, in our client’s favor, that threw out Pocket Plus’s trademark suit against Running Buddy over a competing waistband pouch, agreeing that the asserted trade dress is functional and thus not protected by trademark law.

The three-judge panel’s published opinion upholds an Iowa federal judge’s 2021 order awarding magnetic pouch maker Running Buddy summary judgment against claims that its product infringes rival Pocket Plus LLC’s trade dress. The panel found that the design of Pocket Plus’s portable pouch — despite more than $7 million in gross sales — cannot be protected as a trademark since it is functional.

According to the opinion, the “vertical orientation and over-the-hip design” of the Pocket Plus pouch “undoubtedly affect the quality of a portable pouch and are essential to its purpose.”

Pocket Plus, which has been selling its portable product known as “The Pocket Plus” since 2008, filed its trademark suit in the Northern District of Iowa in January 2021, asserting that competitor Running Buddy’s “Buddy Pouch Mini ‘Plus’” infringed distinctive look and feel of the Pocket Plus.

The MVS legal team of Glenn Johnson, Christine Lebron-Dykeman and Michael C. Gilchrist moved for summary judgment on behalf of Running Buddy, arguing that Pocket Plus’s trade dress wasn’t distinctive, but rather, were “an extremely simple rectangular pocket whose features are shared by many other competing products.”

U.S. District Judge C.J. Williams granted Running Buddy’s motion in October 2021, ruling that even though plaintiff  sold over 800,000 Pocket Pluses throughout the United States “multiple competitive products similar to the trade dress also participated in the market.”

“Neither the amount of sales, the number of customers, nor plaintiff’s established place in the market, show that consumers would associate any product satisfying all four elements of the purported trade dress with a single source,” Judge Williams said.

On appeal, Pocket Plus argued that the district court had erred in concluding that Pocket [Plus’s] trade dress was not exclusive.

The Court of Appeals stated  that “taken as a whole, there is no genuine dispute of material fact that Pocket [Plus’s] trade dress is functional” and “to grant trade-dress protection for Pocket Plus would be to hand it a monopoly over the ‘best’ portable-pouch design. Trademark law precludes that.”

Richard Marsolais is the Business Development Director at McKee, Voorhees & Sease, PLC. To learn more, visit our MVS website , or contact Richard directly via email.