Urban Group Exercise Consultants, Ltd. v. Dick’s Sporting Goods, Inc., No. 12 Civ. 3599, 2012 WL 3240442 (S.D.N.Y. Aug. 7, 2012)

Urban Group designed and developed the low-impact Urban Rebounder exercise system, a small trampoline-type devise meant for use in gyms or at home. Dick’s is a sporting goods chain that operates nationwide. In 2005, Urban Group began selling its Urban Rebounder system to Dick’s, which then sold the Urban Rebounder to customers. A distinguishing feature of the Urban Rebounder sold to Dick’s was the trampoline’s red-and-black color scheme.

Beginning in 2010, Dick’s began selling the Jump Trainer, a competing trampoline exercise system, alongside the Urban Rebounder. Like the Urban Rebounder, the Jump Trainer also bore a red-and-black color scheme. The only difference between the two in visual appearance was the lack of the URBAN REBOUNDER mark on the Jump Trainer. Unlike the Urban Rebounder, the Jump Trainer received significantly less favorable customer reviews on Dick’s website.

Urban Group sued for federal trade dress infringement and dilution and state trade dress dilution. On Dick’s motion to dismiss, the court found that Urban Group failed to allege sufficient facts to establish that its trade dress was nonfunctional and that the trade dress had acquired secondary meaning. Moreover, Urban Group failed to plead facts that its trade dress was famous. Accordingly, the court granted the motion to dismiss and declined to accept jurisdiction over the state law claim, given the early stage of litigation.