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PET Gifts USA, LLC v. Imagine This Company, LLC

United States District Court, D. New Jersey

March 29, 2018

PET GIFTS USA, LLC, Plaintiff,
v.
IMAGINE THIS COMPANY, LLC, et al, Defendants.

          MEMORANDUM AND ORDER

          PETER G. SHERIDAN, U.S.D.J.

         This matter comes before the Court on Defendants Imagine This Company (hereinafter, "ITC") and Twelve, Inc.'s Motion for Summary Judgment. (ECF No. 99). Having previously dismissed Counts I through V of Plaintiff Pet Gift USA, LLC's Complaint with prejudice (ECF No. 72), Defendants now seek summary judgment dismissal of Plaintiffs remaining claim, Count VI, which alleges trade dress infringement under N.J.S.A. § 56:4-1. For the reasons discussed herein, Defendants' motion for summary judgment is granted.

         I.

         Plaintiff Pet Gifts, a sole proprietorship that designs and produces animal-themed products, including dog bone and paw magnets, brought this lawsuit against Defendant ITC, alleging trade dress infringement. Pet Gifts describes its magnet trade dress as:

a) the dimensions of the packaging including the header card; b) shaped to correspond to the bone or paw shaped magnets; c) paw shaped magnets are 5.5" x 5.5" and Bone shaped magnets are 2.25" x 7"; d) thickness is .30 mil; e) humorous slogans provided by Plaintiff; f) the paw magnets are black with a white border and white lettering inside the magnet, the bone magnet are [sic] white with a black border including black "swoosh" symbol and red heart, the header cards are black offset with white lettering with "made in America" printed on the front, as well as "Instructions For Use" on the back.

(Defendants' Statement of Material Facts [SOMF] at ¶ 66). At deposition, Pet Gifts' co-owner, Elicia Kessler, described the trade dress more simply as "a black-and-white header card, a poly bag, stapled on the outside corners by people with disabilities ... we were identified in the marketplace with this magent in a black-and-white header card attached to a poly bag." (Id. at ¶ 68; ECF No. 99-8, "Kessler Deposition" at 103-04).

         Since the early 1990s, ITC has sold outdoor novelty car magnets, which it designs and produces at its printing facility. (Id. at ¶¶ 6-7). According to ITC, in 2005, it added dog bone and paw shaped car magnets to its production line, which were sold shortly thereafter. (Id. at ¶¶ 10-12). "The paw prints consisted of a black paw on a white background, while the bone magnets are depicted in white with [a] black outline." (Id. at ¶ 15). Within these magnets, ITC included humorous slogans, such as: "My Cat Tolerates Me, " "My Dog Loves Me, " and "I Hate My Cat." (Id.). In late 2005, ITC also prepared a four-page sales brochure, which depicted the various pet-themed magnets that ITC had to offer. (Id. at ¶ 16). The 2005 brochure was part of a marketing effort by ITC to expand its sale to new commercial consumers, primarily retailers. (Id. at ¶ 17). As a result of its marketing efforts, ITC distributed bone and paw shaped magnets beginning in 2005; some of these orders were customized, with unique or personalized phrases placed within the magnet, while others were stock items. (Id. at ¶ 20). According to ITC, many of its bone and paw shaped magnets were unpackaged and delivered in bulk; however, in late 2005, it began packaging its products, using a shrink-wrapped transparent plastic affixed with a header card that said, "I Love My Pet Magnets." (Id. at ¶ 25). An image of this packaging is depicted below:

         (IMAGE OMITTED) (Id.).

         In February 2007, ITC's co-owner, Beverly Moss, met Kessler at the Henrico Pet Expo in Virginia. (Id. at ¶ 34). According to ITC, Kessler had learned that another company involved in the novelty pet magnet business purchased its magnets from ITC. (Id. at ¶ 33). During this communication, the parties discussed the possibility of Pet Gifts purchasing magnets directly from ITC. (Id. at ¶ 34). Over the next few months, ITC and Pet Gifts exchanged emails, regarding orders for pet magnets from ITC's 2005 Brochure. (Id. at ¶ 37). On April 23, 2007, Pet Gifts placed its first order from ITC for bone shaped car magnets. (Id. at ¶ 44). Prior to preparing the order, ITC sent Pet Gifts a proof sheet to ensure that the magnets would be printed in accordance with Pet Gifts' specifications. (Id. at ¶ 45). According to ITC, the proof sheet also included language that stated, "Imagine This Company was reserving for itself the rights and designs that it sells." (Id. at ¶ 46). Pet Gifts, however, claims that this language was illegible and it did not understand the proof sheet as reserving ITC with the rights to Pet Gifts' designs. (Plaintiffs SOMF at ¶ 42).

         Thereafter, Pet Gifts sought ITC's assistance in printing a paper header card from which Pet Gifts magnets could hang. (Defendants' SOMF at ¶ 51). The design was a black header card, with white font, that said "Magnetic Pedigrees, " attached to the header card was a transparent plastic poly bag, which would contain the magnet. (Id. at ¶¶ 52-53). An example of this packaging is depicted below:

         (IMAGE OMITTED)

         A few months later, in August 2007, ITC changed the packaging of its magnets, now utilizing a single sheet of rigid vinyl, finished with a dark blue header and white font, the magnet is inserted within the rigid vinyl, no plastic poly bag is used. (Id. at ¶¶ 73-74). An example of this packaging is provided below:

         (IMAGE OMITTED)

         Notably, ITC's name is placed not only on the magnet itself, but ...


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