# GLD, LLC v. Gold Presidents LLC

> District Court, S.D. Florida · January 15, 2021

URL: https://www.frixlaw.com/law-library/cases/10118620

## Case

- **Court:** District Court, S.D. Florida
- **Decided:** January 15, 2021
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10118620

## How later opinions describe it (automated extraction)

- stating that a court should consider the totality of the trade dress features
- recognizing trademark infringement under 15 U.S.C. section 1114, false designation of origin under 15 U.S.C. section 1125(a), trademark dilution under 15 U.S.C. section 1125(c

## Opinion text

UNITED STATES DISTRICT COURT FOR THE
SOUTHERN DISTRICT OF FLORIDA
Miami Division

Case Number: 20-21617-CIV-MORENO

GLD, LLC,

Plaintiff,

vs.

GOLD PRESIDENTS, LLC and DERRICK

JAMES MCDOWELL,

Defendant.
_________________________________________/

ORDER GRANTING IN PART AND DENYING IN PART MOTION TO DISMISS

THIS CAUSE came before the Court upon Motion to Dismiss Plaintiff's Complaint (D.E.
15), filed on July 27, 2020.
THE COURT has considered the motion, the response in opposition, the reply, pertinent
portions of the record, and being otherwise fully advised in the premises, it is
ADJUDGED that the motion is GRANTED IN PART AND DENIED IN PART.
I. Executive Summary
The motion to dismiss for lack of personal jurisdiction over the corporate defendant (Gold
Presidents LLC) is denied and is granted for the individual defendant (Derrick James
McDowell). Defendant’s motion to dismiss for failure to state a claim is granted on all counts
because the Plaintiff fails to include sufficient facts from which the Court could plausibly infer
that Plaintiff has a case for trademark infringement. The dismissal is without prejudice.
II. Background
Plaintiff, GLD LLC, is a Delaware company with principle place of business in Miami. It
designs and sells luxury jewelry and fashion. The Defendant, Gold Presidents, largely does the
same. Derrick James McDowell is the president of Gold Presidents. Both Defendants are Texas
citizens. Plaintiff brings six counts of trademark infringement—three federal, three Florida—
against Defendants, and asks the Court to pierce the corporate veil to hold McDowell responsible
for Gold Presidents’ acts. Gold Presidents offered a watch for sale that is very similar to a watch
that GLD has offered for sale since May 2019. Defendants never completed a sale, and the watch
is no longer listed.

Gold Presidents Presidential Watch GLD Alpha Era Watch
□□ ee
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Sa:
oy SG
ow

Il. Personal Jurisdiction
Defendants argue they are not subject to personal jurisdiction in Florida. The Court will
address Defendant in turn. Plaintiff alleges that Defendants created a website for the purpose of
offering for sale a wristwatch that violates Plaintiff's trade dress. The website was accessible,
and was indeed allegedly accessed, in Florida (although no sales were completed).
Under Federal Rule of Civil Procedure 12(b)(2), a defendant may move to dismiss a
claim against it by asserting the defense of lack of personal jurisdiction. Because “[f]ederal
courts ordinarily follow state law in determining the bounds of their jurisdiction over persons[, □□
Daimler AG vy. Bauman, 571 U.S. 117, 125 (2014) (alterations added; citing Fed. R. Civ. P.
4(k)(1)(A)), a federal court sitting in Florida may properly exercise personal jurisdiction only if
the requirements of (1) Florida's long-arm statute and (2) the Due Process Clause of the
Fourteenth Amendment to the United States Constitution are both satisfied, see Posner v. Essex
Ins. Co., Ltd., 178 F.3d 1209, 1214 (11th Cir. 1999)

There are two types of personal jurisdiction: specific and general. Madara v. Hall, 916
F.2d 1510, 1516 n.7 (11th Cir. 1996). Specific jurisdiction authorizes a Court to exercise over
defendants when the cause of action arises from or relates to the defendant’s actions within a
state. Louis Vuitton Malletier, S.A. v. Mosseri, 736 F.3d 1339, 1352 (11th Cir. 2013). Because
the Plaintiff only alleges specific jurisdiction, the Court need not address general jurisdiction.
Plaintiff claims the Court has personal jurisdiction over Defendants under section
48.193(1)(a)(2) of Florida law. The Court considers two questions when asked to exercise
jurisdiction over a nonresident defendant: (1) whether personal jurisdiction exists over the
nonresident defendant under Florida's long-arm statute, and (2) if so, whether that exercise of
jurisdiction would violate the Due Process Clause of the Fourteenth Amendment to the U.S.
Constitution. Mosseri, 736 F.3d 1339.
A. Florida Long-Arm Statute
First, the Court addresses the Florida long-arm statute. In the Eleventh Circuit, §
48.193(1)(a)(2) of that statute permits jurisdiction over the nonresident defendant who commits a
tort outside of the state that causes injury inside the state. Licciardello v. Lovelady, 544 F.3d
1280, 1283 (11th Cir. 2008). “It is well settled in the Eleventh Circuit that trademark claims
under the Lanham Act allege tortious acts for long-arm purposes[.]” PG Creative Inc. v. Affirm
Agency, LLC, No. 18-cv-24299, 2019 WL 5684219, at *4 (S.D. Fla. Oct. 31, 2019) (alteration
added; citation omitted); see also Hard Candy, LLC v. Hard Candy Fitness, LLC, 106 F. Supp.
3d 1231, 1239 (S.D. Fla. 2015) (recognizing trademark infringement under 15 U.S.C. section
1114, false designation of origin under 15 U.S.C. section 1125(a), trademark dilution under 15
U.S.C. section 1125(c), and common law unfair competition involve “tortious acts” under the
long-arm statute (quotation marks omitted; collecting cases)).
In Lovelady, 544 F.3d 1280, Plaintiff, a well-known singer, sued a Defendant who
allegedly created a website (accessible in Florida) that used Plaintiff’s trademarked name and
picture to imply an endorsement from Plaintiff. The panel held that “although the website was
created in Tennessee, the Florida long-arm statute is satisfied if the alleged trademark
infringement on the website caused injury in Florida.” Id. at 1283. Further, “the alleged
infringement clearly also occurred in Florida by virtue of the website’s accessibility in Florida.”
Id. Thus, Lovelady squarely governs this case. Because the website is accessible in Florida,
Florida is where injury and a tortious act occurred. This gives rise to jurisdiction under §
48.192(1)(a)(2). Cf. Internet Solutions Corp. v. Marshall, 39 So. 3d 1201, 1214-15 (holding that
the tortious act of defamation is completed where the information is published and viewed).
However, it is also worth noting the Eleventh Circuit’s decision in Louis Vuitton
Malletier. There, the Court found there was personal jurisdiction over an allegedly trademark
infringer under the same section of the Florida long-arm statute because “trademark infringing
goods were not only accessible on the website, but were sold to Florida customers through that
website.” Mosseri, at 1354 (emphasis added). The Court does not read that language as requiring
a sale through the website in order to satisfy the Florida long-arm statute, and Courts in this
district have found personal jurisdiction in similar cases without specifically noting that sales
were completed through the website. Kumbrink v. Hygenic Corp., No. 15-CIV-23530, 2016 WL
5369334 (S.D. Fla. Sept. 26, 2016) (Cooke, J.) Further, even in cases where sales are made,
Courts in this district do not seem to treat the sale as dispositive. For example, Judge Marra
wrote,
Furthermore, contrary to Defendant's argument otherwise, in determining whether the
defendant had committed a tortious act within the state for purposes of Florida's long-arm
statute, the Mosseri court did not purport to rest its determination on the substantial
quantity of goods sold in Florida.

Weingartner v. Draper James, LLC, No. 15-81581-CIV, 2016 WL 8678544 (S.D. Fla. Oct. 4,
2016). Thus, the lack of completed sales does not mean that the Plaintiff does not satisfy the
Florida long-arm statute, but it may play a role in the due process analysis discussed below.
B. Due Process
If the Florida long-arm statute is satisfied (as it is here), the Court still may not exercise
jurisdiction over the Defendant if doing so would violate the Fourteenth Amendment’s Due
Process Clause.
The exercise of jurisdiction over a non-resident must “have certain minimum contacts
with [the forum] such that the maintenance of the suit does not offend traditional notions of fair
play and substantial justice.” International Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)
(internal quotation omitted). The Eleventh Circuit Court of Appeals has set forth a three-part test
to determine whether an exercise of specific personal jurisdiction comports with due process.
Under this test, the Court must examine: (1) Whether the plaintiff’s claims “arise out of or relate
to” at least one of the defendant’s contacts with the forum; (2) whether the nonresident defendant
“purposefully availed” himself of the privilege of conducting activities within the forum state,
thus invoking the benefit of the forum state’s laws; and (3) whether the exercise of personal
jurisdiction comports with “traditional notions of fair play and substantial justice.” See Louis
Vuitton Malletier, S.A., 736 F.3d 1339, 1355 (11th Cir. 2013). In performing this analysis, the
Court identifies all contacts between a nonresident defendant and a forum state and ask whether,
individually or collectively, those contacts satisfy these criteria. Id. at 1357.
i. Arises Out Of/Relates To
The first prong is satisfied. A “tort ‘arises out of or relates to’ the defendant's activity in a
state only if the activity is a ‘but-for’ cause of the tort.” Waite v. All Acquisition Corp., 901 F.3d
1307, 1314 (11th Cir. 2018) (alterations adopted; citation omitted). Defendants’ offer of the
wristwatch for sale on its interactive website is the but-for cause of Plaintiff’s claims, and so the
Court will consider that activity in its Due Process analysis. However, Plaintiff urges the Court
to also consider Defendant’s Florida sales of non-infringing merchandise—likely because no
watches were actually sold. These other sales are not a but-for cause of Plaintiff’s allegations.
Thus, under the Eleventh Circuit’s strict test for “arising out of or relating to,” the Court will not
explicitly consider those sales as part of the jurisdictional analysis. But the Court will not shut its
eyes to those contacts either; they will be useful in determining whether Defendants’ offer of the
allegedly infringing watch was a purposeful availment of the forum’s privileges and whether
jurisdiction comports with fair play and substantial justice.
ii. Purposeful Availment
The second prong is more complicated in this case. When faced with an intentional tort
case such as this one, the Court may answer the purposeful availment question in two ways. The
first is the Effects Test, which is available in intentional tort cases. Aviation One of Fla., Inc. v.
Airborne Ins. Consultants (PTY), Ltd, 722 F. App'x 870 (11th Cir. 2018) (citing Calder v. Jones,
465 U.S. 783 (1984)). That test requires a showing that the defendant (1) committed an
intentional tort (2) that was directly aimed at the forum, (3) causing an injury within the forum
that the defendant should have reasonably anticipated. First, trademark infringement is an
intentional tort. Next, when considering whether the Defendants aimed their conduct at the
forum, the Court must consider more than just a defendant’s relationship to the plaintiff and the
plaintiff’s location. In Walden v. Fiore, a Supreme Court case subsequent to Lovelady, the Court
explained that the plaintiff cannot be the only link between the defendant and the forum, and that
mere injury to a forum resident is not a sufficient connection to the forum. Walden v. Fiore, 571
U.S. 277 (2014); Cf. Volt, LLC v. Volt Lighting Group LLC, 369 F. Supp. 3d. 1241 (M.D. Fla.
Feb. 25, 2019) (finding no personal jurisdiction where “nothing that shows VLG's website was
viewed by, and confused, a Florida consumer or even targeted a Florida consumer. Additionally,
nothing suggests that VLG's limited sales to Florida resulted from the allegedly infringing
website, which included no mechanism to effect a purchase.”). Defendant aimed to sell its watch
in Florida, even though the sale was not completed. As evidenced by its previous sales through
the same website, Defendant likely intended that its website would reach customers in Florida.1
Finally, by the same token, Defendant knew that its conduct would cause injury in Florida
because it knew that Florida customers had purchased from the site before. Additionally, while
not in the pleadings, a visit to the Defendants’ website reveals an entire section devoted to
“Miami Cuban” gold chains.
Alternatively, the Court could answer the purposeful availment question by evaluating
the Defendants’ conduct through the Zippo framework. Zippo Mfg. Co. v. Zippo Dot Com, 952 F.
Supp. 1119 (W.D. Pa. 1997).2 It is clear that websites through which commerce is conducted sit
at the far end of the Zippo sliding scale framework, indicating jurisdiction; whereas websites that
merely post information sit at the other end. Id.; Foreign Imported Prods. & Pub., Inc. v. Grupo
Indus. Hotelero, S.A., No. 07-22066-CIV, 2008 WL 4724495 (S.D. Fla. Oct. 24, 2008). In an
almost identical Northern District of Georgia case where the Defendant was selling trademarked
products online into the forum state, and such sales were the only connection between Defendant
and the forum state. There, Judge Julie Carnes (then on the District Court) applied both the Zippo

1 While the pleadings do not specify what percentage of Defendant’s sales came from Florida, Defendant puts the
number at “less than 10%.”

2 The Eleventh Circuit has acknowledged Zippo but has neither adopted nor rejected Zippo's “sliding scale.” Louis
Vuitton, 736 F.3d at 1355 n.10; Oldfield, 558 F.3d at 1219 n.26. However, several federal circuit courts and several
federal district courts in Florida have adopted Zippo's sliding scale to consider whether exercising personal
jurisdiction accords with due process. Phazzer Elecs. Inc. v. Protective Sols., Inc., No. 6:15-cv-348-Orl-31DAB,
2016 WL 3543638, at *5 n.9 (M.D. Fla. June 29, 2016) (Presnell, J.) (“While Zippo test is not binding in this
jurisdiction, it is a factor this Court may take into account”); Pathman v. Grey Flannel Auctions, Inc., 741 F.Supp.2d
1318, 1325 (S.D. Fla. 2010) (King, J.) (“The court views internet activity within the sliding scale provided by Zippo,
as an aspect of purposeful availment, but not as definitive in and of itself”); Foreign Imported Prods. & Publ'g, Inc.
v. Grupo Industrial Hotelero, S.A., No. 07-22066-CIV, 2008 WL 4724495, *7–9 (S.D. Fla. Oct. 24, 2008) (Gold, J.)
(recording Zippo's adoption by federal circuit courts and Florida's district courts of appeal and using Zippo's sliding
scale to determine whether the defendant's website supported Florida's exercising personal jurisdiction); Knights
Armament Co v. Optical Sys. Tech., Inc., No. 6:07-cv-1323-Orl-22KRS, 2008 WL 2157108, at *7 (M.D. Fla. May
21, 2008) (Conway, J.) (citing Zippo and concluding “[t]hat [the defendant's] website may be viewed in every state
is not a sufficient contact with Florida to support specific ... jurisdiction”).
framework and the traditional purposeful availment analysis and found there was personal
jurisdiction. Rice v. PetEdge, Inc., 975 F. Supp. 2d 1364, 1371 (N.D. Ga. 2013) (“Defendant's
creation of a website that allows Georgia customers to directly purchase its products constitutes
purposeful availment, as defendant financially benefits from doing business in Georgia.”). Judge
Carnes cited World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (1980) for the
proposition that when a corporation conducts business in a forum, it is on notice that it may be
sued there and is therefore subject to personal jurisdiction. Id. In so holding, Judge Carnes
rejected Defendant’s arguments that 1% or 2% of total sales is insufficient to confer jurisdiction
and that a lack of forum-specific targeted advertising would defeat a finding of personal
jurisdiction. See also easyGroup Ltd. v. Skyscanner, Inc., No. 20-20062-CIV, 2020 WL 5500695
(S.D. Fla. Sept. 11, 2020) (“Easyfly purposefully availed itself of the privileges of conducting
business in Florida. Easyfly clearly does business over the Internet in the United States and
Florida; is willing to (and does) directly sell its services to Florida customers; has not limited its
sales to any region or area; and accepts payment from Florida customers.”) (Altonaga, J.). Here,
Defendant cannot “have its cake and eat it, too . . . .” It cannot have the “benefit of a nationwide
business model with none of the exposure.” Illinois v. Hemi Grp. LLC, 622 F.3d 754, 760 (7th
Cir. 2010). Thus, the Court finds there was purposeful availment.
iii. Fair Play
Once the Court finds that minimum contacts exist, the burden shifts to the defendant to
“present a compelling case that the presence of some other considerations would render
jurisdiction unreasonable.” Burger King Corp., 471 U.S. at 477. The “fair play and substantial
justice factor is to be applied sparingly.” easyGroup Ltd. v. Skyscanner, Inc., No. 20-20062-CIV,
2020 WL 5500695, at *12 (S.D. Fla. Sept. 11, 2020). This inquiry considers five “fairness
factors” to determine whether exercising jurisdiction over a defendant is reasonable: (1) the
burden on the defendant of litigating in the forum, (2) the forum state's interest in adjudicating
the dispute, (3) the plaintiff's interest in obtaining convenient and effective relief, (4) the
interstate judicial system's interest in obtaining the most efficient resolution of controversies, and
(5) states' shared interest in furthering fundamental social policies. Meier ex rel. Meier v. Sun
Int'l Hotels, Ltd., 288 F.3d 1264, 1276 (11th Cir. 2002). In this all things considered inquiry,
neither party presents facts that should sway the Court in one direction or the other. It would not
violate fair play and substantial justice to exercise jurisdiction over the corporate Defendant here,
when minimum contacts exist.
C. Personal Jurisdiction Over Individual Corporate Officer
Plaintiffs also ask that the Court exercise personal jurisdiction over Derrick James
McDowell, Gold Presidents LLC’s President. The Complaint alleges that the corporation is a
mere instrumentality for McDowell and his alter ego, thus, McDowell is personally liable for the
acts of the corporation. This allegation presents two issues: First, does the complaint sufficiently
allege enough to pierce the corporate veil? Second, if it does not, can this Court still exercise
personal jurisdiction over McDowell? The answer to both questions is a clear “no.”
Under Texas law (the state in which Gold Presidents is incorporated), “[t]here must be
something more than mere unity of financial interest, ownership and control for a court to treat
the subsidiary as the alter ego of the parent and make the parent liable for the subsidiary's tort.
The corporate entity of the subsidiary must have been used to ‘bring about results which are
condemned by the general statements of public policy which are enunciated by the courts as
‘rules' which determine whether the courts will recognize their own child.’” Lucas v. Texas
Indus., Inc., 696 S.W.2d 372, 374 (Tex. 1984) (internal citations omitted). Plaintiff’s allegations
plainly fail to a state a claim that meets the above standard. Other than conclusory allegations
such as “Gold Presidents is a mere instrumentality” and “Gold Presidents has only one or very
few members, fails to follow corporate formalities, intermingles assets with Defendant James,
and/or is inadequately capitalized,” Plaintiff alleges no concrete factual matter to support those
statements nor the general allegation that the Corporation is McDowell’s alter ego. Further,
McDowell submits an unrebutted declaration that states he has not personally sold any infringing
products, nor does he have any significant contacts to Florida, nor did he intentionally infringe
trade dress, nor does he have a joint bank account with the Corporation.
Plaintiff both fails to allege sufficient factual information for this Court to pierce the
corporate veil under Texas law and fails to allege sufficient factual information to even make a
prima facie case of personal jurisdiction over Defendant McDowell. Posner v. Essex Ins. Co.,
178 F.3d 1209, 1214 (11th Cir. 1999). The claims against the individual defendant are dismissed
for lack of personal jurisdiction and the Court declines to pierce the corporate veil, as this Court
has declined to do before. Tingle v. Banks, No. 06-60700-CIV, 2006 WL 8431545, at *3 (S.D.
Fla. Dec. 20, 2006) (Moreno, J.), aff'd, 232 F. App'x 956 (11th Cir. 2007).
IV. Failure to State a Claim
Plaintiff alleges three counts under 15 U.S.C. § 1125(a) and (c) and three counts under
Florida law. Plaintiff does not have a trademark on its product, and according to the Defendant, it
has only been on sale since May 2019. The complaint is largely devoid of any specific factual
allegations, which I will address count-by-count below.
In order to survive a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), a
complaint must plead sufficient facts to state a claim for relief that is plausible on its face.
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007). When ruling on such a motion, a court must view the complaint in a light most favorable
to the plaintiff and accept the plaintiff's well-pleaded facts as true. See Twombly, 550 U.S. at
555-56. In order to establish a facially plausible claim, a plaintiff must show “more than a sheer
possibility that a defendant has acted unlawfully.” Iqbal, 556 U.S. at 678. “Threadbare recitals of
the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Id.
A. Count I: Federal Trade Dress Infringement under 15 U.S.C. § 1125(a)
Section 43(a) of the Lanham Act creates a federal cause of action for trade dress
infringement. AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1535 (11th Cir. 1986). “The term ‘trade
dress' refers to the appearance of a product when that appearance is used to identify the
producer.” Publications Int'l, Ltd. v. Landoll, Inc., 164 F.3d 337, 338 (7th Cir. 1998). “‘Trade
[d]ress' involves the total image of a product and may include features such as size, shape, color
..., texture, graphics, or even particular sales techniques.” AmBrit, 812 F.2d at 1535 (internal
quotation omitted).
In order to prevail on a claim for trade dress infringement pursuant to this statute, a
Plaintiff must prove by a preponderance of the evidence that (1) the trade dress of the two
products is confusingly similar; (2) that the features of the trade dress are primarily
nonfunctional; and (3) that the trade dress is inherently distinctive or has acquired secondary
meaning. Vital Pharm., Inc. v. Am. Body Bldg. Prod., LLC, 511 F. Supp. 2d 1303, 1309–10 (S.D.
Fla. 2007) (Middlebrooks, J.). I will address each in turn.
i. Likelihood of Confusion
Courts in this Circuit “consider seven factors in assessing whether or not the “likelihood
of confusion” exists: (1) the type of mark (in short, whether the “relationship between the name
and the service or good it describes” is such that the chosen name qualifies as generic,
descriptive, suggestive, or arbitrary); (2) the similarity of the marks (based on “the overall
impressions that the marks create, including the sound, appearance, and manner in which they
are used”); (3) the similarity of the goods (“whether the products are the kind that the public
attributes to a single source”); (4) the similarity of the parties' retail outlets, trade channels, and
customers (“consider[ing] where, how, and to whom the parties' products are sold”); (5) the
similarity of advertising media (examining “each party's method of advertising” to determine
“whether there is likely to be significant enough overlap” in the respective target audiences such
“that a possibility of confusion could result”); (6) the defendant's intent (determining whether the
defendant had a “conscious intent to capitalize on [the plaintiff's] business reputation,” was
“intentionally blind,” or otherwise manifested “improper intent”); and (7) actual confusion (that
is, whether there is evidence that consumers were actually confused).” Custom Mfg. & Eng'g,
Inc. v. Midway Servs., Inc., 508 F.3d 641, 648 (11th Cir. 2007). “Because the bottom line is the
likelihood of consumer confusion, application of the Frehling factors entails more than the
mechanistic summation of the number of factors on each side; it involves an evaluation of the
‘overall balance.’” Id. at 649.
Plaintiff makes it difficult for the Court to apply these factors in an informed fashion.
Beyond the side-by-side graphic, there is no specific, factual information included in the
complaint. Mostly, Plaintiff alleges bare recitations of the elements of each cause of action. For
example, Plaintiff does not include the total sales for each product (Defendants note not even one
of their watches were sold before the product was removed from the site), where advertisements
are placed, how much (if any) advertising was done, where each watch is offered for sale, etc.
However, I think that a simple glance at the side-by-side picture is enough for Plaintiff to survive
a motion to dismiss on this prong of the inquiry. Save for the “Pres” small difference in the
second hand, the watches are identical. Any closer analysis is best done by the fact-finder. Cf.
Tana v. Dantanna's, 611 F.3d 767, 775 n.7 (11th Cir. 2010) (“Although likelihood of confusion
is a question of fact, it may be decided as a matter of law.”).
ii. Non-functionality:
“Functional features are by definition those likely to be shared by different producers of
the same product and therefore are unlikely to identify a particular producer.” Dippin' Dots, Inc.
v. Frosty Bites Distrib., LLC, 369 F.3d 1197, 1203 (11th Cir. 2004). “These features cannot be
appropriated; otherwise, competitors would be prevented from duplicating the new product even
to the extent permitted by the branches of the law of intellectual property that protect innovation
rather than designations of source.” Id. Functionality is considered with respect to the design in
its entirety. Id. As Defendant notes in their briefing, Plaintiff’s complaint does not specify which
aspect of its design it believes to be non-functional. Thus, the Court will assume that Plaintiff is
referring to the whole of all the features combined as non-functional. See AmBrit, 812 F.2d at
1538 (stating that a court should consider the totality of the trade dress features). This Circuit has
laid out two tests for determining functionality.
Under the first test, commonly referred to as the traditional test, a product feature is
functional if it is essential to the use or purpose of the article or if it affects the cost or
quality of the article. Under the second test, which is commonly called the competitive
necessity test and generally applied in cases of aesthetic functionality, a functional
feature is one the exclusive use of which would put competitors at a significant non-
reputation-related disadvantage. Where the design is functional under the traditional test,
there is no need to proceed further to consider if there is a competitive necessity for the
feature.
Dippin' Dots, Inc., 369 F.3d at 1203 (emphasis added). Thus, applying the second competitive
necessity test, Plaintiff’s design is functional (and not protected) if its exclusivity would put
competitors like Defendant at a competitive disadvantage. At this stage of the litigation, finding
as a matter of law that no set of facts could show that Plaintiff’s design is non-functional goes
too far. Although Plaintiff in its complaint does little more than conclusorily allege that its
features are non-functional, common sense teaches that the totality of a watch’s aesthetic design
(including its diamond bezel, Rolex-style band, roman numeral face, and shape of its hands)
would not prevent a competitor from manufacturing a different, functional watch that keeps time.
Defendant has not yet done anything to rebut that common sense. In its motion to dismiss nor its
reply, Defendant does not cite a single case that would support its argument that a GLD
monopoly on the aesthetic would put competition at a disadvantage. For example, in Dippin’
Dots, the Eleventh Circuit relied on evidence about flash-frozen ice cream production process to
determine that a different size would alter creaminess, a different shape would alter the freezing-
method, and different colors would inhibit the company’s ability to signify flavor to the
consumer. Dippin' Dots, Inc., 369 F.3d at 1203-05.
iii. Secondary Meaning

Secondary meaning is acquired when “in the minds of the public, the primary
significance of a product feature ... is to identify the source of the product rather than the product
itself.” See Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851, n.11 (1982). Whether a
product has established secondary meaning is a question of fact. Pride Family Brands, Inc. v.
Carl's Patio, Inc., No. 12-21783-CIV, 2014 WL 347040, at *4 (S.D. Fla. Jan. 30, 2014). For
evidence that a product has attained secondary meaning the Eleventh Circuit looks to: 1) the
length and manner of the product's use; 2) the nature and extent of advertising and promotion; 3)
the efforts made by plaintiff to promote a conscious connection in the public's mind between the
trade dress and plaintiff's business; and 4) the extent to which the public actually identifies the
name with plaintiffs goods and services. So, under the governing Supreme Court test, Plaintiff
needs to plausibly allege that consumers primarily associate the watch design at issue with GLD,
LLC rather than merely a watch with diamonds and roman numerals.
Plaintiff does not allege any facts that would give the Court insight into whether Plaintiff
can meet its burden. For instance, Plaintiff alleges “this design has become a well-known
indicator of the origin and quality of the GLD Alpha Era Watch,” “GLD has enjoyed significant
sales . . . ,” and “. . . products have achieved extraordinary success in brand recognition and
market penetration.” The complaint includes no support for these statements, such as sales
figures, consumer surveys, or advertising budgets.
Ultimately, the trade dress infringement claim is dismissed without prejudice for the plaintiff
to refile with at least some factual allegations. At the motion to dismiss stage in a different S.D.
Fla. trademark infringement case3, Judge Bloom noted that “a developed factual record is
necessary to address these questions” and that a visual depiction of trade dress “is not so vague
as to deprive Defendants of fair notice of Plaintiff’s claim of trade dress infringement,” but it
would be a better use of judicial resources to force the Plaintiff to show some of its cards up

3 S. Beach Skin Care, Inc. v. Dermaset, Inc., No. 13-24645-CIV, 2014 WL 11958623 at *2 (S.D.
Fla. Aug. 18, 2014).
front (especially when it chooses to bring such fact-intensive claims). Even if the side-by-side
photo is enough to establish a likelihood of confusion, Plaintiff does not do enough to establish
the other threshold elements of a prima facie Lanham Act trade dress infringement case, namely
secondary meaning/inherent distinctiveness.
B. Count II: False Designation of Origin under 15 U.S.C. § 1125(a) and Unfair Competition
Plaintiff also brings a claim for false designation of origin and, in the same count, a claim
for unfair competition under the same statute. To establish a prima facie case under section
43(a), “a plaintiff must show (1) that the plaintiff had enforceable ... rights in the mark or name,
and (2) that the defendant made unauthorized use of it ‘such that consumers were likely to
confuse the two.’ ” Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 647 (11th
Cir. 2007). Plaintiff fails to plead a prima facie case meeting the first requirement, and these
counts should be dismissed without prejudice as well.
Plaintiff does not allege a registered trademark, and “common-law trademark rights are
appropriated only through actual prior use in commerce.” Planetary Motion, Inc. v.
Techsplosion, Inc., 261 F.3d 1188, 1193–94 (11th Cir. 2001) (internal quotation and citation
omitted). “[T]he use of a mark in commerce ... must be sufficient to establish ownership rights
for a plaintiff to recover against subsequent users under section 43(a).” Id. at 1195. The Eleventh
Circuit has applied a two-part test to determine whether a party has proved “prior use” of a mark
sufficient to establish ownership: Evidence showing, first, adoption, and, second, use in a way
sufficiently public to identify or distinguish the marked goods in an appropriate segment of the
public mind as those of the adopter of the mark. Crystal Entm't & Filmworks, Inc. v. Jurado, 643
F.3d 1313, 1321 (11th Cir. 2011) (internal citations omitted and alterations made). As described
above, the complaint does not include enough information for the Court to make this
determination even when taking all facts as true and making all plausible inferences on behalf of
the Plaintiff. Thus, Count II is dismissed as well.
C. Count III: Federal Trade Dress Dilution under 15 U.S.C. § 1125(c)
“Title 15 U.S.C. § 1125(c) provides that the owner of a famous mark that is distinctive,
inherently or through acquired distinctiveness, shall be entitled to an injunction against another
person who, at any time after the owner's mark has become famous, commences use of a mark or
trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of
the famous mark, regardless of the presence or absence of actual or likely confusion, of
competition, or of actual economic injury. 15 U.S.C. § 1125(c). To establish a dilution claim, a
plaintiff must provide sufficient evidence that (1) the mark is famous; (2) the alleged infringer
adopted the mark after the mark became famous; (3) the infringer diluted the mark; and (4) the
defendant's use is commercial and in commerce.” Brain Pharma, LLC v. Scalini, 858 F. Supp. 2d
1349 (S.D. Fla. 2012) (Cohn, J.) (internal citations and quotations omitted).
A mark is famous “if it is widely recognized by the general consuming public of the
United States as a designation of source of the goods or services of the mark's owner.” 15 U.S.C.
§ 1125(c)(2)(A). To determine whether a mark is recognized by the public, courts consider
factors such as (1) the duration, extent, and geographic reach of advertising and publicity of the
mark; (2) the amount, volume, and geographic extent of sales of goods or services offered under
the mark; (3) the extent of actual recognition of the mark; and (4) whether the mark was
registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal
register. Id. Trademark dilution claims, are limited to “truly famous marks such as Budweiser
beer, Camel cigarettes, and Barbie dolls.” Brain Pharma, LLC v. Scalini, 858 F. Supp. 2d 1349,
1357 (S.D. Fla. 2012) (citing Bd. of Regents, Univ. of Texas Sys. v. KST Elec., Ltd., 550 F.
Supp. 2d 657, 679 (W.D. Tex. 2008)). Plaintiff’s complaint again fails to pled a prima facie case
of fame, and further, it is likely that no set of facts could put its watch on par with Budweiser,
Camel, and Barbie. This Count is dismissed as well.
D. Florida Counts
Finally, Plaintiff brings three counts under Florida law. Dilution under Fla. Stat. §
495.151, infringement under Florida common law, and unfair competition and false designation
of origin under Fla. Stat. § 501.201-501.213. The analysis under the Lanham Act for trademark
infringement also applies to claims of 1) trademark infringement and 2) unfair competition under
Florida common law. See Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d
1261, 1264 (S.D. Fla. 1999), citing Chanel, Inc. v. Italian Activewear of Florida, Inc., 931 F.2d
1472, 1475 (11th Cir. 1991). And dilution under Florida law also requires a famous mark, which
as discussed above, is not properly alleged here. Thus, all Florida counts are dismissed as well.
V. Conclusion
The Court has personal jurisdiction over the corporation, but not the individual defendant.
However, Plaintiff’s claims for myriad trademark violations under federal and Florida law are
dismissed for failure to state a claim. Other than a side-by-side photo of Plaintiff's watch and
Defendants’ watch, the Complaint is devoid of any specific allegations and replete with vague,
legal conclusions. In a field that is as fact-specific as trademark, it is a better use of judicial
resources to allow Plaintiff to re-file their complaint rather than allowing the suit to proceed
when the Court has no idea whether Plaintiff could plausibly meet their burdens later in the
litigation. This is especially so since the allegedly infringing watch is no longer for sale, and no
sales were ever actually completed.

DONE AND ORDERED in Chambers at Miami, Florida, this 15" of January 2021.

FEDERICO A. MORENO
UNITED STATES DISTRICT JUDGE
Copies furnished to:
Counsel of Record

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10118620. Public record. Not legal advice.