'Look and Feel' Of A Website Can Constitute Protectable Trade Dress

Richard Raysman is a Partner in our New York office.

The United States District Court for the Northern District of California, in Ingrid & Isabel, LLC v. Baby Be Mine, LLC, --- F. Supp. 3d ----, 2014 WL 4954656 (N.D. Cal. 2014), in reviewing the arguments before it, attempted to catalogue previous cases that confronted the question of whether the "look and feel" of a website constituted protectable trade dress. It found only six cases it deemed "instructive." Five of those cases either deferred deciding the question or dismissed on technical grounds. One decided that it could, although in a context inapplicable to Baby Be Mine. In fact, as detailed below, the court in Baby Be Mine may have adopted a novel approach.

Facts

Ingrid & Isabel, LLC (I&I) and Baby Be Mine Maternity, LLC (Baby Be Mine) both sell belly bands, a cloth band worn around a pregnant woman's waist to hold up clothes that no longer fit because of the pregnancy. Belly bands are also considered functional for decorative purposes.

I&I had sued Baby Be Mine on multiple occasions leading up to the instant case. I&I alleged that Baby Be Mine sold its maternity waist bands under the name "Belly Band," a name that purports to be confusingly similar to the "Bella Band" name utilized by I&I, and therefore a violation of both common law trademark rights and the Lanham Act (15 U.S.C. §1125(a)). In a separate action, I&I alleged patent infringement and unfair competition against Baby Be Mine based on its patent that includes claims for a belly band which "hold[s] the skirt or pants in place on the women's body and which retain[s] the pants or skirt in place." Both the trademark and patent claims were dismissed pursuant to respective settlement agreements (the Agreements).

The relevant parts of the Agreements stipulated that Baby Be Mine would do as follows: (1) cease and desist from using the term "Bella" in connection with the sale of belly bands; (2) stop offering, marketing, distributing or promoting belly bands that hold up pants or skirts; and (3) refrain from copying any of I&I's advertising, marketing, and promotional materials.

Legal Analysis/Conclusions

To sustain a valid claim under the Lanham Act, a plaintiff must show: (1) that it possesses a valid, protectable proprietary interest in the trademark or trade name; and (2) defendant's use of the mark creates a 'likelihood of confusion' in the consuming public. See New W. Corp. v. NYM Co. of California, Inc., 595 F.2d 1194 (9th...