# Opinion

> District Court, E.D. Pennsylvania · July 7, 2026

URL: https://www.frixlaw.com/law-library/cases/11385824

## Case

- **Full name:** Pearl Musical Instrument Company Co. Ltd. v. Hoshino Gakki Co., Ltd. et al.
- **Court:** District Court, E.D. Pennsylvania
- **Decided:** July 7, 2026
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

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## Opinion text

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
PEARL MUSICAL INSTRUMENT :
COMPANY CO. LTD.,
Plaintiffs), :
v. CIVIL NO. 23-3220
HOSHINO GAKKI CO., LTD. et al.,
Defendant(s). :

Scott, J. July 7, 2026
MEMORANDUM
I. INTRODUCTION
On June 27, 2025, Plaintiff Pearl Musical Instrument Company Co. Ltd. filed its First
Amended Complaint (ECF No. 75) (“FAC”) alleging that Defendants Hoshino Gakki Co., Ltd.,
and Hoshino (U.S.A.) Inc. (“Defendants” or “Hoshino”) infringed on Plaintiff's Patent No.
7,671,261 (261 Patent’) under 35 U.S.C. § 1, et seq., and specifically § 271. Plaintiff also alleged
that Defendants engaged in trade dress infringement under Section 43(a) of the Lanham Act, 15
U.S.C. § 1125(a) regarding Plaintiffs CX Series Carriers. Plaintiff and Defendants are
manufacturers and sellers of drums and drum carriers, among other instruments and accessories.
On July 25, 2025, Defendants filed a Motion to Dismiss Plaintiff's trade dress infringement
claim under Fed. R. Civ. P. 12(b)(6) arguing that the FAC “fails to adequately state a claim of
trade dress infringement because: (1) the FAC fails to articulate the elements comprising the trade
dress of its CX Series Carriers; (2) the purported trade dress is functional; and (3) the FAC fails to
allege inherent distinctiveness or secondary meaning. Each one of these failures independently
justifies dismissing the claim.” (ECF No. 77-1 at 7). Plaintiff responded in opposition to

Defendants’ Motion (ECF No. 91)!, to which Defendants replied in support of the Motion (ECF
No. 82). On June 3, 2026, the Court held a hearing on the Motion. For the reasons discussed
herein, the Court finds Plaintiffs trade dress infringement claim as stated in the FAC to be
insufficient and hereby GRANTS Defendants’ Motion to Dismiss. The Court DISMISSES
Plaintiffs trade dress clam WITHOUT PREJUDICE solely due to the insufficient facts pled
regarding nonfunctionality.

II. LEGAL STANDARD
a. Motion to Dismiss
To survive a Rule 12(b)(6) motion, “a complaint must contain sufficient factual matter,
accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556
U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “Plausibility
means ‘more than a sheer possibility that a defendant has acted unlawfully.’” Tatis v. Allied
Interstate, LLC, 882 F.3d 422, 426 (3d Cir. 2018) (quoting /gbal, 556 U.S. at 678). A claim is
plausible “when the plaintiff pleads factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct alleged.” Jgbal, 556 U.S. at 678 (citing
Twombly, 550 U.S. at 556). “Threadbare recitals of the elements of a cause of action, supported
by mere conclusory statements, do not suffice.” /d In considering a motion to dismiss under Rule
12(b)(6), all well-pleaded allegations in the complaint are accepted as true and interpreted in the
light most favorable to the plaintiff, and all inferences are drawn in the plaintiffs favor. See
McTernan y. City of York, 577 F.3d 521, 526 (3d Cir. 2009) (quoting Schrob v. Catterson, 948
F.2d 1402, 1408 (3d Cir. 1991)).

' Plaintiff filed ECF No. 91 as a corrected version of ECF No. 80. The documents are substantively identical.

b. Trade Dress
Trade dress is “the total image or overall appearance of a product, and includes, but is not
limited to, such features as size, shape, color or color combinations, texture, graphics, or even a
particular sales technique.” Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 308 (3d Cir. 2014)
(citing Rose Art Indus., Inc. v. Swanson, 235 F.3d 165, 171 (3d Cir. 2000)). Trade dress protection
is meant to “secure the owner of the trade dress the goodwill of his business and to protect the
ability of consumers to distinguish among competing producers.” McNeil Nutritionals, LLC y.
Heartland Sweeteners, LLC, 511 F.3d 350, 357 (3d Cir. 2007); see also Fair Wind Sailing, 764
F.3d at 309. But there is no general prohibition against copying goods and products, and trade
dress protection is only meant to cover “incidental, arbitrary or ornamental product features which
identify the product's source.” Fair Wind Sailing, 764 F.3d at 309 (citing Shire US Inc. v. Barr
Labs., Inc., 329 F.3d 348, 353 (d Cir. 2003)).
To establish trade dress infringement under the Lanham Act, a plaintiff must prove “(1)
the allegedly infringing design is nonfunctional; (2) the design is inherently distinctive or has
acquired secondary meaning; and (3) consumers are likely to confuse the source of the plaintiff's
product with that of the defendant's product.” McNeil Nutritionals, 511 F.3d at 357. In addition
to these elements, the plaintiff must “articulat[e] the specific elements which comprise its distinct
dress.” Fair Wind Sailing, 764 F.3d at 309 (citing Landscape Forms, Inc. v. Columbia Cascade
Co., 113 F.3d 373, 381 (2d Cir. 1997)); see also 1 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition § 8:3 (4th ed. 2014) (“[T]he discrete elements which make up the [trade
dress claim] should be separated out and identified in a list.”). Thus, prior to assessing whether
trade dress is even protectable, district courts “should scrutinize a plaintiff's description of its trade
dress to ensure itself that the plaintiff seeks protection of visual elements of its business.” Jd.

Il. DISCUSSION
Defendants argue that Plaintiffs trade dress claim insufficiently articulates the elements
that comprise Plaintiff's trade dress. (ECF No. 77-1 at 15). The Court disagrees and discusses
Plaintiff's description of its trade dress below.”
a. Plaintiff’s trade dress description
Plaintiff describes its trade dress as “includ[ing] visual appearance of its CX Series
Carriers, which provide the visual appearance, both alone and in combination with one or more
other design features of:
a. A drum carrier having a u-shaped rigid tubular or rod frame that rests on the shoulders
and across the back of the user, a transition area having frame sections extending
horizontally across the wearer’s chest toward each other, two portions of the frame
extending downward from the transition area with a consistent distance therebetween
for attachment to a belly plate;
b. Shoulder pad(s) removably attached to a rigid frame via proportionally spaced flexible
hook and loop fasteners such that at least two fasteners are visible above each shoulder
apex when worn, the shoulder pads further being proportionally wider than the rigid
frame, the shoulder pads having a stitched border that runs along and near the edge of
the shoulder pads, collectively the shoulder pad(s) being u-shaped with rounded ends
positioned at or near the front of each shoulder of the wearer when worn, and the
shoulder pads attached such that a substantial portion of the rigid frame is visible above
the shoulder pads when in use;

Defendant makes no argument regarding the third element, likelihood of confusion, so the Court does not address
this element.

c. A rectangular elongated plate attached to and extending between the two downward
extending sections of the drum carrier at or near the transition area and downward
extending frame portions;
d. An elliptically shaped belly plate with an arcuate shaped top line substantially
perpendicular to the two sections of the downwardly extending frame, and having a
pad with a visible edge at or near the belly plates perimeter;
e. The belly plate also having two elongated belt-receiving slots, one of each located near
the side edge of the belly plate;
f. A mounting mechanism positioned on an exposed surface of the belly plate for
engaging the downward extending portions of the frame and holding two J-mounts or
rods capable of receiving a drum;
g. The carrier is substantially unicolor where substantially all of the major visible
components of the carriers are of the same color; and
h. The color scheme for all of the foregoing design elements—including the frame,
shoulder pads, belly plate, and central plate—is the color black.”
FAC 4 71. Plaintiff proceeds to state that “[t]he combination and arrangement of the design
elements set forth above constitute the trade dress owned by PMI and are widely recognized by
the general consuming public of the United States as designations of the source of PMI’s goods or
services.” Id. § 72.
Defendants take issue with Plaintiff's description of the trade dress because it covers the
features listed “both alone and in combination with one or more other design features.” ECF No.
77-1 at 15. Defendants assert that such a qualifier is impermissible because it “obscur[es] the
definition of the claimed trade dress” by being “open-ended.” Jd. at 15-16. Regarding this

argument, the Court is persuaded by Plaintiff's explanation of its description vis-a-vis these eight
features. That is, Plaintiffs description does not mirror the prohibited language in Digital Dream
Labs, LLC y. Living Tech. (Shenzhen) Co., 587 F. Supp. 3d 305, 310-11 (W.D. Pa. 2022), because
Plaintiffs description is indeed defined by the eight visual elements on their own or taken together.
The visual elements here are clearly stated. Cf Classic Touch Décor, Inc. v. Michael Aram, Inc.,
No. 15-CV-453 (NGG) (RLM), 2015 U.S. Dist. LEXIS 144636 at *12 (E.D.N.Y. Oct. 23, 2015)
(noting in the Rule 12(c) context that plaintiff “cannot claim trade dress protection for an element
that appears ‘sometimes’ or only ‘in some instances,’ because it renders the presence of the element
meaningless.”); Mosaic Brands, Inc. v. Ridge Wallet LLC, No. 2:20-cv-04556-AB (JCx), 2020
USS. Dist. LEXIS 219857, at *17-18 (C.D. Cal. Oct. 29, 2020) (“Courts have often dismissed trade
dress claims for failing to provide a complete list of elements where the list of alleged trade dress
elements is preceded by a non-limiting qualifier.”); see also Tetris Holding, LLC v. Xio Interactive,
Inc., 863 F. Supp. 2d 394, 415 n.16 (D.N.J. 2012) (noting that the use of “including, but not limited
to” permitted the court to construe the trade dress as alleged because “[p]laintiffs have had
sufficient time to determine exactly the contours of the alleged trade dress violation[.]”’)
Here, Plaintiff does not allege that the features occur only sometimes or in some instances.
Instead, the Court construes Plaintiffs language to mean that the product may be defined by either
the individual elements on their own or in combination with each other, The Court thus construes
the qualifier as limited to the closed universe of discrete elements listed and concludes that
Defendants have adequate notice of the alleged trade dress.
b. Nonfunctionality of the purported trade dress
Although the Court agrees that Plaintiffs description of visual elements is sufficiently
specific, the Court agrees with Defendants that Plaintiffs allegations of nonfunctionality are

insufficient. ECF No. 77-1 at 22-23. A feature is nonfunctional when it is “unrelated to []
consumer demand ... and serves merely to identify the source of the product.” Fair Wind Sailing,
764 F.3d at 311 (citing Prufrock Ltd., Inc. v. Lasater, 781 F.2d 129, 133 (8th Cir. 1986)). And, as
the Third Circuit has observed, “the fact that individual elements of the trade dress may be
functional does not necessarily mean that the trade dress as a whole is functional; rather, functional
elements that are separately unprotectable can be protected together as part of trade dress.” Fair
Wind Sailing, 764 F.3d at 311 (citing Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252,
1259 (9th Cir. 2001)) (alterations and internal quotation marks omitted).
Upon discussing the trade dress infringement claim, Plaintiff merely makes several
conclusory statements regarding the nonfunctionality of its drum carriers. See ECF No. 75 at 4 §
66, 67, 74, 122. Such threadbare recitals do not pass muster. To survive the motion to dismiss
stage, Plaintiff must include adequate factual information that permits the Court to infer
nonfunctionality when construing the allegations in its favor. Plaintiff has failed to do so.
Furthermore, Defendants argue that the 261 Patent is strong evidence in favor of functionality.
Without Plaintiff providing other facts explaining the product’s nonfunctionality, the Court cannot
make a reasonable inference of nonfunctionality based on the current allegations. *

c. Inherent Distinctiveness or Secondary Meaning
The Court disagrees with Defendants that Plaintiff has not sufficiently pled “how Plaintiffs
alleged trade dress is inherently distinctive or has secondary meaning.” ECF No. 77-1 at 23. A
mark, including non-word marks, is inherently distinctive if its “intrinsic nature serves to identify
a particular source.” Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 211 (2000) (citing Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) (citations omitted)). A mark may still

* To be clear, the Court is not making a finding of functionality or nonfunctionality at this stage. The Court merely
concludes that Plaintiff has provided inadequate information at this juncture to support a finding of nonfunctionality.

be distinctive “even if it is not inherently distinctive, if it has developed secondary meaning, which
occurs when, ‘in the minds of the public, the primary significance of a [mark] is to identify the
source of the product rather than the product itself.’” Jd. (citing Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U.S. 844, 851, n.11 (1982)).
Here, Defendants include the “fact of copying” as one element courts consider when
determining the existence of secondary meaning. ECF No. 77-1 at 24. Indeed, the Third Circuit
has enumerated a list of non-exhaustive factors for courts to consider when assessing secondary
meaning. See Commerce Nat. Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 438
(3d Cir. 2000) (“(1) the extent of sales and advertising leading to buyer association; (2) length of
use; (3) exclusivity of use; (4) the fact of copying; (5) customer surveys; (6) customer testimony;
(7) the use of the mark in trade journals; (8) the size of the company; (9) the number of sales; (10)
the number of customers; and (11) actual confusion.’’). Plaintiff, however, argues that “intentional
copying of PMI’s Trade Dress, as amply alleged here, can provide a presumption of secondary
meaning in the asserted trade dress.” ECF No. 91 at 23.
Notably, the Court need not find evidence in support of each factor to plausibly infer
secondary meaning at this stage. See 1M. Wilson, Inc. v. Otvetstvennostyou “GRICHKO”, 500 F.
Supp. 3d 380, 411 (E.D. Pa. 2020). The Court disagrees, however, with Plaintiff's presumption
that copying alone is sufficient, instead viewing it as one of many factors that may establish
secondary meaning. The Court nonetheless finds this prong satisfied due to Plaintiffs allegations
pertaining to: Defendants copying Plaintiff, Plaintiffs CX Series Carriers “representing
approximately 90 percent [] of the marching drum carrier market[,|” a large portion of Plaintiffs
customer base purchasing “all or nearly all of their percussion instruments and related products
from a single source, such as Pearl[,]” and Plaintiff's manufacturing and selling of the CX Series

Carrier since 2010 whereas Defendants released their competitor carrier in 2023. See ECF No. 75
{7 125, 91, 33,27. Thus, based on the facts alleged, the Court finds secondary meaning to be pled
sufficiently.

IV. CONCLUSION
The Court GRANTS Defendants’ Motion to Dismiss. The Court DISMISSES Plaintiffs
trade dress clam WITHOUT PREJUDICE solely due to the insufficient facts pled to support a
finding of nonfunctionality, as discussed above. The Court permits Plaintiff to amend its
complaint once more to cure this deficiency. An appropriate Order accompanies this
Memorandum.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/11385824. Public record. Not legal advice.