P and P Imports LLC v. Johnson Enterprises, LLC ( 2022 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
P AND P IMPORTS LLC, a California No. 21-55013
limited liability company,
Plaintiff-Appellant, D.C. No.
8:19-cv-00523-
v. DOC-JDE
JOHNSON ENTERPRISES, LLC, DBA
Tailgating Pros, a Virginia limited
liability company,
Defendant-Appellee,
and
DOES, 1–10, inclusive,
Defendant.
P AND P IMPORTS LLC, a California No. 21-55323
limited liability company,
Plaintiff-Appellee, D.C. No.
8:19-cv-00523-
v. DOC-JDE
JOHNSON ENTERPRISES, LLC, DBA
Tailgating Pros, a Virginia limited OPINION
liability company,
Defendant-Appellant.
2 P AND P IMPORTS V. JOHNSON ENTERPRISES
Appeals from the United States District Court
for the Central District of California
David O. Carter, District Judge, Presiding
Argued and Submitted April 11, 2022
Pasadena, California
Filed August 24, 2022
Before: A. Wallace Tashima and Kenneth K. Lee, Circuit
Judges, and Kathleen Cardone,* District Judge.
Opinion by Judge Lee
*
The Honorable Kathleen Cardone, United States District Judge for
the Western District of Texas, sitting by designation.
P AND P IMPORTS V. JOHNSON ENTERPRISES 3
SUMMARY **
Lanham Act
The panel reversed the district court’s grant of summary
judgment in favor of the defendant in an action alleging trade
dress infringement, remanded for further proceedings, and
dismissed as moot the defendant’s appeal from the denial of
attorneys’ fees.
P&P Imports, LLC, maker of a jumbo red-white-and-
blue Connect 4 game, sued Johnson Enterprises, LLC, maker
of a similar product, for trade dress infringement. The
district court granted summary judgment in favor of Johnson
Enterprises on the ground that P&P’s trade dress had not
acquired secondary meaning, and therefore was not
protectable, because consumers did not associate the trade
dress with P&P specifically.
The panel held that trade dress does not have to be linked
to a particular company. If consumers link the trade dress to
any single (even anonymous) source/company, that is
enough to constitute secondary meaning. Because P&P’s
evidence of intentional copying and a consumer survey
created a genuine issue of material fact about whether its
trade dress acquired secondary meaning, the panel reversed
and remanded.
The panel dismissed Johnson Enterprises’ attorneys’
fees appeal as moot.
**
This summary constitutes no part of the opinion of the court. It
has been prepared by court staff for the convenience of the reader.
4 P AND P IMPORTS V. JOHNSON ENTERPRISES
COUNSEL
Mark R. Yohalem (argued), Munger Toller & Olson LLP,
Los Angeles, California; Xionan April Hu, Munger Toller &
Olson LLP, Washington, D.C.; Casey H. Kempner, P&P
Imports LLP, Irvine, California; for Plaintiff-
Appellant/Cross-Appellee.
James E. Doroshow (argued), Fox Rothschild LLP, Los
Angeles, California, for Defendant-Appellee/Cross-
Appellant.
OPINION
LEE, Circuit Judge:
Imitation may be the sincerest form of flattery but that
does not shield someone from being sued for it. Two
competing companies created their own three-feet-wide
versions of Connect 4, the classic game in which players
drop colored plastic coins into an upright game board in
hopes of lodging four coins in a row. This case, however,
does not involve the original maker of Connect 4, but rather
two companies that lifted the Connect 4 concept to create
their own oversized versions.
The question before us is whether a manufacturer’s red-
white-and-blue jumbo rendition of this iconic game qualifies
as a protectable trade dress. P&P Imports thinks so. It sued
a competitor, Johnson Enterprises, whose version of this
game looks uncannily like P&P’s. To resolve this question,
we must determine whether P&P’s trade dress has acquired
“secondary meaning”—i.e., is P&P’s design distinctive
enough to be widely recognized in the market?
P AND P IMPORTS V. JOHNSON ENTERPRISES 5
The district court granted summary judgment to
Johnson, ruling that P&P’s trade dress had not acquired
secondary meaning because consumers do not associate the
trade dress with P&P specifically. We reverse because trade
dress does not have to be linked to a particular company; if
consumers link the trade dress to any single (even
anonymous) source/company, that is enough to constitute
secondary meaning. And because a genuine issue of
material fact exists about whether P&P’s trade dress
acquired secondary meaning, we reverse and remand.
BACKGROUND
I. Ten months after P&P begins selling a three-foot,
red-white-and-blue version of Connect 4, Johnson
starts selling a virtually identical game.
P&P Imports sells outdoor games and sporting goods
under its GoSports brand. One of its games is the GoSports
Giant 4 in a Row Game (“P&P Game”), an enlarged, outdoor
variation of Connect 4, the classic tabletop game originally
made by Milton Bradley (now Hasbro) for nearly 50 years.
The P&P Game measures three feet wide and uses a red,
white, and blue color scheme.
In December 2016, P&P began selling its game through
various e-commerce channels such as Amazon and eBay. In
under a year, the P&P Game climbed the best seller ranks in
Amazon’s Toys and Games category, racking up significant
sales within its category.
6 P AND P IMPORTS V. JOHNSON ENTERPRISES
P&P’s success did not go unnoticed. Sometime in 2017,
Johnson Enterprises was looking to expand its product
offerings in the Yard Games category and decided it too
would produce a giant Connect 4-style game. After
conducting market research, Johnson discovered that P&P—
the most successful Amazon seller in this product
category—was selling 700 units per month. So Johnson
bought a copy of the P&P Game and sent samples to its
manufacturer in China. In October 2017, ten months after
the P&P Game hit the market, Johnson began selling an
almost identical game, the Tailgating Pros White Connect 4
game (“Johnson Game”). The P&P and Johnson Games
featured their respective logos at the top of the white game
boards but otherwise looked nearly identical in color, style,
and size.
(Blue Br. at 1)
II. P&P sues Johnson for federal trade dress
infringement under the Lanham Act, and unfair
competition under California law.
In March 2019, P&P sued Johnson for damages and
injunctive relief, bringing claims of (1) trade dress
P AND P IMPORTS V. JOHNSON ENTERPRISES 7
infringement under section 43(a) of the Lanham Act,
15 U.S.C. § 1125(a), (2) unfair competition under section
17200 et seq. of California Business and Professions Code,
and (3) unfair competition under California common law.
P&P alleged that Johnson appropriated its trade dress for
the “almost identical” Johnson Game. As stated in the
complaint, P&P’s trade dress consisted of:
the overall appearance of [the P&P Game]
which may be described as a combination of
individual features, including, but not limited
to the unique color combination of flat-white
colored square board with evenly spaced
round-hole cut-outs, bordered by a thin bas-
relief bezel on all four sides, with two
mirrored sculpted legs extending half way up
the sides of the bezel and joined to it by tee
joints which enfold part of the bezel to create
a relief on the bezel and extend depth-wise
slightly both frontwards and backwards, and
which vertically extend slightly below the
bezel where they are joined with the feet to
create a relief between them on the outside
edge, the feet extend depth-wise from the legs
with their flat-top extending into rounded
shoulders and squared ends with an arch type
shape cut into the bottom-center, which are
all contrasted with the smooth, circular flat-
red and flat-blue featureless chips game
pieces.
8 P AND P IMPORTS V. JOHNSON ENTERPRISES
In other words, P&P’s trade dress is defined by its flat-white
game board with circular cut-outs and flat, circular red and
blue tokens. 1
According to P&P, its “distinctive” trade dress had
become “widely known and recognized” such that it had
acquired “secondary meaning.” By copying its trade dress,
P&P says Johnson intended to “deceive the public as to the
source or origin” of its game to benefit from “P&P’s
goodwill and reputation in the four in a row market.”
III. P&P’s expert, Robert Wallace, submits consumer
survey evidence purporting to show secondary
meaning.
Robert Wallace submitted an expert report in support of
P&P. Wallace designed and conducted a “secondary
meaning” survey to measure how much consumers
associated P&P’s trade dress with a single source or
company. The survey exposed 200 respondents to an image
of the P&P Game as it appeared on Amazon, with the
GoSports logo and other descriptions of source removed.
The respondents were then asked a series of questions.
First, the survey asked, “Do you recognize this product?”
Of the 200 respondents, 188 answered “Yes.” Next, the
survey asked, “Do you believe that this specific product is
made by one company or more than one company?” Ninety-
two respondents answered, “One company.” The eighty
respondents that answered, “More than one company” were
1
According to the district court, when “[i]gnoring the functional
aspects of the P&P Game’s design, the alleged trade dress consists of a
‘flat-white colored square board with evenly spaced round-hole cut-outs
. . . contrasted with the smooth, circular flat-red and flat-blue featureless
chips game pieces.’”
P AND P IMPORTS V. JOHNSON ENTERPRISES 9
asked, “If you believe the products are sold by more than one
company, do you believe that they come from the same
source or producer?” 2 Thirty-four said, “Yes.” Wallace then
added the “92 respondents who believe that the product
comes from one company” to the “34 respondents who
believe the product comes from one source or producer” to
conclude that 126 of 200—63%—of respondents believe
that the P&P Game is “from a single source or company.”
In Wallace’s opinion, this “clear majority . . . established
secondary meaning.”
Wallace also noted evidence of intentional copying.
Deposition testimony revealed that Johnson bought the P&P
Game because it was the best-selling product in its category,
sent samples to its Chinese manufacturer, and then shortly
began selling a nearly identical game. According to
Wallace, the “most logical explanation . . . is that [Johnson]
set out, and did, copy [P&P’s] trade dress.”
Wallace also mentioned P&P’s advertising efforts. P&P
mainly advertised through Amazon’s web-based tools, such
as “Deals,” Amazon marketing services (“AMS”), and
Amazon marketing allowances. “Deals” is a promotional
program in which Amazon features certain products at
discounted rates. And AMS allows vendors to advertise
their products on the Amazon webpage on a “cost per click”
basis. P&P provided Amazon an eight-percent marketing
allowance to fund internal and external marketing, such as
promotion of P&P’s products on third-party sites. P&P also
conducted “grass roots marketing” by displaying the P&P
2
Twenty-eight respondents answered, “Don’t know, not sure” when
asked whether they believed the product “is made by one company or
more than one company.”
10 P AND P IMPORTS V. JOHNSON ENTERPRISES
Game at Orange County, California beaches on the
weekends.
IV. The district court grants summary judgment for
Johnson, ruling P&P failed to present sufficient
evidence of secondary meaning.
To prove its trade dress infringement claim, P&P had to
show that “(1) the trade dress is nonfunctional, (2) the trade
dress has acquired secondary meaning, and (3) there is a
substantial likelihood of confusion between [P&P’s] and
[Johnson’s] products.” See Art Attacks Ink, LLC v. MGA
Ent. Inc., 581 F.3d 1138, 1145 (9th Cir. 2009). In its motion
for summary judgment, Johnson argued that P&P had failed
to present sufficient evidence on all three elements.
The district court granted Johnson’s motion, ruling that
P&P failed to submit sufficient evidence of secondary
meaning. According to the district court, our decision in
Fleischer Studios, Inc. v. A.V.E.L.A., Inc. required P&P to
prove that consumers associate its trade dress with P&P
itself, rather than any single (even anonymous) company—a
standard which we refer to as “specific association” in this
opinion. See 654 F.3d 958, 966–67 (9th Cir. 2011).
Therefore, the district court wholesale dismissed the Wallace
Report’s survey evidence as irrelevant because the results—
that 63% of respondents “believe that Plaintiff’s product is
from a single source or company”—did not “show that the
trade dress has become associated with [P&P] itself.”
The district court also noted that the “short period of
exclusive use (approximately ten months), relatively low
volume of sales, and [P&P’s] inconsistent use of the trade
dress further cut against any finding of secondary meaning.”
And “[w]hatever questions may exist about advertising and
intentional copying, they do not rise above the level of a
P AND P IMPORTS V. JOHNSON ENTERPRISES 11
scintilla of evidence.” P&P thus “failed to raise a genuine
issue of material fact as to whether its trade dress . . . has
acquired secondary meaning.” And because P&P’s state-
law claims hinged on its trade dress claim, the district court
granted summary judgment for Johnson on all claims.
V. The district court denies P&P’s motion for
reconsideration and Johnson’s motion for attorneys’
fees, and this appeal follows.
P&P moved for reconsideration of the district court’s
grant of summary judgment. According to P&P, the district
court (1) committed “legal error because the relevant
purchasing public need not know the identity . . . of a single
source” denoted by the trade dress, and (2) relied on a legal
theory not raised by the parties by requiring specific
association, thereby denying P&P notice and an opportunity
to respond in violation of Federal Rule of Civil Procedure
56(f). The district court denied P&P’s motion, and P&P
timely appealed.
Johnson, in turn, moved for attorneys’ fees and costs as
the “prevailing party” under the Lanham Act. See 15 U.S.C.
§ 1117(a). The district court denied the motion because
P&P’s case was not “substantially weak.” Although
insufficient to preclude summary judgment, P&P presented
some evidence of secondary meaning, including “evidence
of willful copying,” referring to Johnson’s admission “to
buying [P&P’s game] and sending it to [their] Chinese
manufacturer.” Johnson timely appealed the district court’s
denial of fees. We consolidated both appeals.
STANDARD OF REVIEW
We review de novo a district court’s grant of summary
judgment, and we must “determine, viewing the evidence in
12 P AND P IMPORTS V. JOHNSON ENTERPRISES
the light most favorable to the nonmoving party, whether
there are any genuine issues of material fact and whether the
district court correctly applied substantive law.” Ballen v.
City of Redmond, 466 F.3d 736, 741 (9th Cir. 2006) (quoting
United States v. City of Tacoma, 332 F.3d 574, 578 (9th Cir.
2003)). We review a district court’s denial of attorneys’ fees
and costs under the Lanham Act for an abuse of discretion.
Sunearth, Inc. v. Sun Earth Solar Power Co., 839 F.3d 1179,
1181 (9th Cir. 2016) (en banc) (per curiam).
DISCUSSION
I. We reverse the district court’s grant of summary
judgment for Johnson.
Like “distinctive names, logos, packages, or labels,” a
product’s design may have a “source-identifying
appearance[].” See Blumenthal Distrib., Inc. v. Herman
Miller, Inc., 963 F.3d 859, 864 (9th Cir. 2020). Such
designs, if distinctive, may receive trade dress protection,
and the manufacturer may bring an action for infringement
under section 43(a) of the Lanham Act. See Wal-Mart
Stores v. Samara Bros., 529 U.S. 205, 209–10 (2000).
Because a product’s design can never be inherently
distinctive, a plaintiff must prove that the design has
acquired secondary meaning. See id. at 216. The district
court granted summary judgment for Johnson on secondary
meaning. But the district court applied an incorrect legal
standard for determining secondary meaning, and P&P has
presented sufficient evidence to survive summary judgment.
We thus reverse the district court’s grant of summary
judgment and remand for further proceedings.
P AND P IMPORTS V. JOHNSON ENTERPRISES 13
a. The district court applied the wrong legal
standard for secondary meaning by requiring
evidence of specific association.
Secondary meaning exists when “in the minds of the
public, the primary significance of [the trade dress] is to
identify the source of the product rather than the product
itself.” Inwood Lab’ys v. Ives Lab’ys, 456 U.S. 844, 851
n.11 (1982). The district court required P&P to show that
consumers specifically associate the P&P Game’s trade
dress with P&P itself. In other words, consumers must both
recognize P&P’s trade dress and be able to name P&P as the
source. The district court purportedly derived this standard
from a single sentence in Fleischer in which we said that the
plaintiff “must show that the mark has become identified
with the manufacturer . . . .” Fleischer, 654 F.3d at 967
(emphasis added) (internal quotation omitted).
The district court’s interpretation of Fleischer conflicts
with our long-established precedents requiring association
with only a single—even anonymous—source. See Maljack
Prods. v. Goodtimes Home Video Corp., 81 F.3d 881, 887
(9th Cir. 1996) (“[A] showing of secondary meaning only
requires proof that the public associates the [mark] with a
single source, even if that source is anonymous.”); Bentley
v. Sunset House Distrib. Corp., 359 F.2d 140, 147 (9th Cir.
1966) (“To show that some secondary meaning existed, it
was necessary for Bentley to establish that the public . . .
regard[s] its product as emanating . . . from a single, though
anonymous maker.”) (internal quotation omitted)).
Fleischer, decided by a three-judge panel, could not have
overturned these earlier binding decisions. Koerner v.
Grigas, 328 F.3d 1039, 1050 (9th Cir. 2003). Nor did
Fleischer purport to. In the very next sentence, the Fleischer
panel clarifies that the “basic element of secondary
14 P AND P IMPORTS V. JOHNSON ENTERPRISES
meaning” is an association “with the same source.”
Fleischer, 654 F.3d at 967 (emphasis added) (quoting Levi
Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 820 (9th Cir.
1980)). When judicial opinions refer to a “single” or “same”
source, they are not suggesting that consumers must know
“the corporate name of the producer or seller”; rather, they
connote that “a single, albeit anonymous, source” suffices.
2 McCarthy on Trademarks and Unfair Competition § 15:8
(5th ed. 2021); see also 8 Trademark Manual of Examining
Procedure (TMEP) 1212 (2021) (Secondary meaning only
requires association with “an anonymous producer, since
consumers often buy goods without knowing the . . . actual
name of the manufacturer.”) (quoting Ralston Purina Co. v.
Thomas J. Lipton, Inc., 341 F. Supp. 129, 133 (S.D.N.Y.
1972))).
The district court’s reading of Fleischer also clashes with
the text of the Lanham Act. Our “anonymous source” test
flows directly from the text of that statute, which defines
“trademark” as “any word, name, symbol, or device” that
“indicate[s] the source of the goods, even if that source is
unknown.” 15 U.S.C. § 1127 (emphasis added). Because
trade dress is a subcategory of trademarks, see Wal-Mart,
529 U.S. at 209, the same definition applies.
We thus hold that the district court erred by requiring
evidence of specific association for secondary meaning.
b. P&P’s intentional copying and consumer survey
evidence creates a triable issue of fact about
secondary meaning.
We assess many factors to determine whether secondary
meaning exists, including: “direct consumer testimony;
survey evidence; exclusivity, manner, and length of use of a
mark; amount and manner of advertising; amount of sales
P AND P IMPORTS V. JOHNSON ENTERPRISES 15
and number of customers; established place in the market;
and proof of intentional copying by the defendant.” Art
Attacks, 581 F.3d at 1145. “Because of the intensely factual
nature” of the secondary meaning inquiry, “summary
judgment is generally disfavored . . . .” See Soc. Techs. LLC
v. Apple Inc., 4 F.4th 811, 816 (9th Cir. 2021) (quoting
Rearden LLC v. Rearden Com., Inc., 683 F.3d 1190, 1202
(9th Cir. 2012)).
Though we have not prescribed the precise combination
of factors necessary to survive summary judgment, we have
found the presence of two factors—intentional copying and
survey evidence—sufficient. See Clicks Billiards, Inc. v.
Sixshooters Inc., 251 F.3d 1252, 1263–64 (9th Cir. 2001)
(reversing summary judgment for defendants because
plaintiff provided “sufficient evidence of secondary
meaning in the form of both a consumer survey and
testimony [about intentional copying]”). By submitting
evidence of intentional copying and an admissible consumer
survey, P&P created a triable issue of fact about secondary
meaning.
i. Johnson’s intentional copying strongly
suggests that P&P’s trade dress acquired
secondary meaning.
“[P]roof of copying strongly supports an inference of
secondary meaning.” Vision Sports, Inc. v. Melville Corp.,
888 F.2d 609, 615 (9th Cir. 1989). That is because
competitors generally copy “to realize upon a secondary
meaning that is in existence.” Audio Fid., Inc. v. High Fid.
Recordings, Inc., 283 F.2d 551, 558 (9th Cir. 1960).
Johnson conducted market research, ordered a copy of the
best-selling three-foot Connect 4-style game made by P&P,
sent samples of the P&P Game to its Chinese manufacturer,
and began selling a nearly identical game mere months later.
16 P AND P IMPORTS V. JOHNSON ENTERPRISES
This chronology strongly suggests that Johnson intentionally
copied the P&P Game.
Johnson does not deny copying but discounts its
relevance. While competitors usually copy to appropriate
secondary meaning, we have recognized that they may also
“copy product features” that are “wholly functional . . .
because of those features’ intrinsic economic benefits.”
Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837,
844–45 (9th Cir. 1987) (holding that a jury may but is not
required to infer secondary meaning from copying).
Johnson thus argues that “intentional copying supports a
finding of secondary meaning only where the defendant
intended to confuse consumers and pass off its product as the
plaintiff’s. (quoting Cont’l Lab’y Prods. v. Medax Int’l, Inc.,
114 F. Supp. 2d 992, 1010 (S.D. Cal. 2000)).” According to
Johnson, there is no evidence of such intent.
Though some circuits have adopted Johnson’s argument
about an intent to confuse requirement, see, e.g., Craft Smith,
LLC v. EC Design, LLC, 969 F.3d 1092, 1110 (10th Cir.
2020), we have not done so. We have only held that an intent
to confuse is required for establishing likelihood of
consumer confusion, a separate element of a trade dress
claim. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 349,
354 (9th Cir. 1979). Admittedly though, we have also
recognized that “[s]econdary meaning can also be
established by evidence of likelihood of confusion” because
they are “related determinations . . . rising from the same
evidentiary findings.” Transgo, Inc. v. Ajac Transmission
Parts Corp., 768 F.2d 1001, 1015–16 (9th Cir. 1985)
(emphasis added).
But even if an intent to confuse is required for the
intentional copying factor under secondary meaning,
Johnson’s argument still falls short. An intent to confuse
P AND P IMPORTS V. JOHNSON ENTERPRISES 17
may be inferred when the defendant copies a product’s
design and marketing. See Leatherman Tool Grp., Inc. v.
Cooper Indus., 199 F.3d 1009, 1013 (9th Cir. 1999) (citing
Versa Prods. Co. v. Bifold Co. (Mfg.), 50 F.3d 189, 207–08
(3d Cir. 1995)). While the universe of functionally optimal
product designs may be limited, there are many ways to
market a product to consumers. Thus, precise copying of the
plaintiff’s marketing suggests that the defendant intended to
“pass off its product as the plaintiff’s.” Cont’l, 114 F. Supp.
2d at 1010.
Johnson copied much of P&P’s product description.
Like P&P, Johnson says the game board is made from
“premium wood”; the tokens are made from “durable
plastic” that “will never break”; the carrying case was
“durable” or “robust”; the game will provide “giant” or
“jumbo” fun for “kids and adults of all ages”; and the game
measures “3 feet,” even though the Johnson Game is slightly
smaller. While we would expect Johnson to describe the
game’s materials, durability, and dimensions, its decision to
crib identical language from P&P’s advertisement suggests
that Johnson intentionally cast its game as P&P’s.
There is also reason to believe that Johnson’s attempt to
confuse consumers will succeed. The two games are almost
identical, apart from their logos displayed on the product.
See Adidas Am., Inc. v. Skechers USA, Inc., 890 F.3d 747,
755 (9th Cir. 2018) (“[T]he greater the similarity . . . the
greater the likelihood of confusion.” (quotation omitted)).
These nearly identical games are sold through the same e-
commerce channels—Amazon and eBay. See Interstellar
Starship Servs. v. Epix, Inc., 184 F.3d 1107, 1110 (9th Cir.
1999) (overlapping internet marketing channels are likely to
cause confusion). Thus, consumers are likely to encounter
these substantially similar games “at the same time, on the
18 P AND P IMPORTS V. JOHNSON ENTERPRISES
same screen,” compounding the risk of confusion. See
GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207
(9th Cir. 2000). 3
Ultimately, a jury may find that Johnson’s copying of
P&P’s Game and its marketing does not establish secondary
meaning. Indeed, it may appear a bit rich that P&P accuses
Johnson of copying its game when both are essentially
oversized knock-offs of Connect 4. But at the summary
judgment stage, we must draw all reasonable inferences in
favor of P&P. See Ballen, 466 F.3d at 741. Johnson’s
intentional copying of P&P’s trade dress and marketing
strongly suggests that secondary meaning exists. See Vision
Sports, 888 F.2d at 615. The presence of multiple confusion
factors further supports this inference. See Transgo,
768 F.2d at 1015–16.
3
Additionally, P&P provides some evidence of actual confusion in
the form of two consumer surveys. See Thane Int’l v. Trek Bicycle Corp.,
305 F.3d 894, 902 (9th Cir. 2002) (“Survey evidence may establish
actual confusion.”). Both surveys had a “test” and “control” group. The
test groups were shown side-by-side pictures of the P&P and Johnson
games, with logos and branding removed. The control groups were
shown side-by-side pictures of the P&P Game and a different
competitor’s game with a “markedly different” trade dress. The
respondents were asked whether they believed the products “come from
a single source or company” to measure whether the consumer was
confused. The disparity between the amount of confusion in the test and
control groups—the “net confusion level”—was calculated. The net
confusion level was 18% and 16.5% for the first and second surveys,
respectively. We have previously found a net confusion level of 11%
sufficient to preclude summary judgment on the issue of confusion. See
Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt.,
618 F.3d 1025, 1036–38 (9th Cir. 2010).
P AND P IMPORTS V. JOHNSON ENTERPRISES 19
ii. The consumer survey is admissible and
supports a finding of secondary meaning.
P&P submitted a consumer survey showing that 63% of
respondents said that the P&P Game comes from a single
source/company. According to P&P’s expert, this strongly
suggests that P&P’s trade dress acquired secondary
meaning. See Vision Sports, 888 F.2d at 615 (“An expert
survey of purchasers can provide the most persuasive
evidence of secondary meaning.”).
Consumer surveys are evaluated in two-steps. See Clicks
Billiards, 251 F.3d at 1263. First, a court must determine
whether the survey is admissible by ensuring that the survey
has “a proper foundation . . . and is . . . relevant and
conducted according to accepted principles.” Id. Second,
once the survey is admitted, issues about “methodology,
survey design, reliability, the experience and reputation of
the expert, critique of conclusions, and the like go to the
weight of the survey rather than its admissibility” and are
“for a jury” to decide. Id.The survey was relevant and admissible at step one. The
district court erroneously dismissed P&P’s consumer survey
as irrelevant because it failed to prove specific association.
But as we explained, secondary meaning requires
association with only a single, anonymous source. This is
precisely what the survey attempts to measure.
Still, Johnson argues that the survey is irrelevant because
it was conducted two-and-a-half years after the Johnson
Game was first sold, so the survey does not “measure public
perception at the time of Johnson’s first alleged infringing
use.” But P&P was not required to preemptively conduct
consumer surveys in anticipation of litigation, see Gen.
Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 419 (6th
20 P AND P IMPORTS V. JOHNSON ENTERPRISES
Cir. 2006), and we have admitted surveys conducted years
after the first alleged infringing use, see, e.g., Faberge, Inc.
v. Saxony Prods., Inc., 605 F.2d 426, 428 (9th Cir. 1979)
(admitting survey from 1974 to gauge secondary meaning in
1970). Surveys conducted within five years of the first
infringing use are generally relevant, and the time (zero to
five years) between the first infringing use and the survey
goes to the weight of the survey evidence. See Converse,
Inc. v. ITC, 909 F.3d 1110, 1123 (Fed. Cir. 2018). Here,
Wallace conducted his survey two-and-a-half years after
Johnson began selling its allegedly infringing product.
Wallace’s survey is well within the outer limit of temporally
relevant secondary meaning surveys.
To be fair, Wallace’s survey methodology raises some
questions. Connect 4 has been sold by Milton Bradley (and
now by Hasbro) for nearly 50 years. Large swaths of the
public were already familiar with Connect 4 when the P&P
Game hit the market. When respondents were shown a
picture of the P&P Game—which, apart from its color,
substantially resembles Connect 4—some may have
recognized the classic Connect 4 design, not P&P’s red-
white-and-blue trade dress. This possibility is supported by
the fact that, when the survey asked which company made
the P&P Game, only 3 out of 200 respondents said GoSports.
So when these respondents said the P&P Game comes from
a single source, they may have been referring to Hasbro, not
P&P. This would mean that the overall look and feel of
Connect 4—and not P&P’s trade dress—has a source-
identifying appearance.
But Johnson failed to challenge the survey’s design
under Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579(1993). See Southland Sod Farms v. Stover Seed Co.,
108 F.3d 1134, 1143 n.8 (9th Cir. 1997) (Defendants may
P AND P IMPORTS V. JOHNSON ENTERPRISES 21
object under Daubert “to the technical reliability of a
survey.”); In re Ford Tailgate Litig., No. 11-cv-02953-RS,
2015 U.S. Dist. LEXIS 159534, at *19 n.3 (N.D. Cal. Nov.
25, 2015) (“Daubert dictates the analysis necessary for a
motion to exclude expert testimony in the context of a
motion for summary judgment.”). And in any event, these
criticisms arguably bear more on the survey’s
persuasiveness, not its admissibility. See Clicks Billiards,
251 F.3d at 1263.
Because P&P has presented compelling evidence of
intentional copying and an admissible consumer survey, a
triable issue of fact exists on secondary meaning. We thus
reverse the district court’s grant of summary judgment on all
claims. 4
II. We dismiss as moot Johnson’s appeal of the district
court’s denial of attorneys’ fees.
In “exceptional cases,” a district court has discretion to
award attorneys’ fees to the “prevailing party” under the
Lanham Act. See 15 U.S.C. § 1117(a). Because we reverse
summary judgment, Johnson is no longer the prevailing
party, so we dismiss as moot Johnson’s appeal of the district
court’s denial of fees. See Grouse River Outfitters, Ltd. v.
Oracle Corp., 848 F. App’x 238, 245 (9th Cir. 2021).
4
The parties dispute whether the remaining Art Attacks factors, such
as the amount of sales, the amount of advertising, and the exclusivity,
manner, and length of use of the trade dress weigh in favor of secondary
meaning. See Art Attacks, 581 F.3d at 1145. Because the intentional
copying and consumer survey evidence here are sufficient to preclude
summary judgment, we need not address these additional factors.
22 P AND P IMPORTS V. JOHNSON ENTERPRISES
CONCLUSION
The district court erred by requiring evidence of specific
association. We hold that P&P’s intentional copying and
survey evidence were sufficient to create a triable issue of
fact about secondary meaning. We REVERSE the district
court’s grant of summary judgment, and REMAND for
further proceedings consistent with this opinion.5 Johnson’s
appeal is DISMISSED as moot. P&P shall recover its costs
on appeal.
5
As alternative grounds for affirmance, Johnson argues that P&P
has failed to prove nonfunctionality and the likelihood of consumer
confusion. See L.A. News Serv. v. CBS Broad., Inc., 305 F.3d 924, 934
(9th Cir. 2002) (Summary judgment may be affirmed by any ground
supported in the record.). Because the remaining elements of P&P’s
trade dress claim are also “intensely factual issue[s],” see Zobmondo
Ent., LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010)
(quoting KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408
F.3d 596, 605 (9th Cir. 2005)), and “the district court is in a better
position to develop the facts and assess their legal significance in the first
instance,” Alexander v. Newland, 20 F. App’x 662, 663 (9th Cir. 2001)
(quoting Whalem/Hunt v. Early, 233 F.3d 1146, 1148 (9th Cir. 2000)),
we remand for the district court to address these elements as necessary.