The U.S. Court of Appeals for the Sixth Circuit vacated in part a preliminary injunction issued by the district court, finding a failure to provide specific detail regarding the trade dress at issue. Tumblebus Inc. v. Meredith Cramer d/b/a Tumblebus of Louisville, Case No. 04-5060 (Sixth Cir., Jan. 13, 2005).

The plaintiff, Tumblebus, uses several school buses retrofitted with athletic equipment to provide children’s physical education activities at various locations (daycare centers, birthday parties, etc.) in the greater Louisville, Kentucky, area. Tumblebus also sells its "mobile gyms on wheels" to third parties and allows these third parties to use the "Tumblebus" name to market their services. Although Tumblebus does not have written contracts with all purchasers, it enters oral agreements with each purchaser limiting the geographic area in which it can offer Tumblebus services. In 2002, Cranmer purchased a Tumblebus bus from another third party and began to operate in Louisville under the name "Tumblebus." Efforts by the plaintiff to restrict Cranmer’s use of the TUMBLEBUS mark in the Louisville area were fruitless, and, by the time plaintiff filed suit against Cranmer in 2003, it had evidence of consumer confusion based on Cranmer’s operation in the Louisville area.

Tumblebus’ complaint accused Cranmer of trademark infringement, trade dress infringement and false advertising. The district court issued a preliminary injunction restricting Cranmer’s use of the TUMBLEBUS trademark and related trade dress in the Louisville area while the action was pending. Although the Sixth Circuit affirmed the district court’s preliminary injunction order preventing Cranmer’s use of the TUMBLEBUS trademark, it vacated the lower court’s holding regarding the Tumblebus trade dress.

The Sixth Circuit explained that it is appropriate to issue a preliminary injunction prohibiting use of particular trade dress, as long as the court describes in detail the specific acts it is restraining. According to the appellate court, "a party must first identify what particular elements or attributes comprise the protectable trade dress" to recover for trade dress infringement. After establishing these specific elements, the party must "show by a preponderance of the evidence that its trade dress is distinctive in the marketplace, that its trade dress is primarily nonfunctional and that the defendant’s trade dress is confusingly similar to the party’s protected trade dress." The appellate court could not assess Tumblebus Inc.’s likelihood of success on the merits of its trade dress infringement claim because the lower court did not identify which "particular aspects of Tumblebus Inc.’s vehicular design qualify as distinctive trade dress that is primarily nonfunctional and confusingly similar to Cranmer’s vehicle design."

Practice Note

Plaintiffs in a trade dress infringement action must provide specific information regarding the protectable elements of their nonfunctional and distinctive trade dress.

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