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Trade Dress Infringement | Van Leeuwen vs Rebel Creamery

Van Leeuwen claims that Rebel Creamery copied their trade dress by using the same kinds of colors, fonts, and minimalist designs, such that their product seems nearly identical to Van Leeuwen’s signature elements.

May 09, 2024

Home » Blog » Trade Dress Infringement | Van Leeuwen vs Rebel Creamery

When you have a favorite ice cream flavor, you’re more likely to order it at an ice cream parlor, look for it at the grocery store, or ask for it at a café. You might remember certain elements of its packaging, like its visually appealing container or the company’s logo. What happens if you go to the store one day to buy your favorite ice cream and see a similar product on display?

The ongoing case of Van Leeuwen Ice Cream LLC vs. Rebel Creamery LLC highlights the argument on how a similar trade dress on an ice cream container can potentially affect the reputation and sales of a business. If you are wondering how to protect your business and the corresponding intellectual property rights, our attorneys at The Fried Firm may have some answers for you. We are lawyers for creatives who are engaged in the practice of law to help people like you understand and protect your creative business. Contact The Fried Firm today for a complimentary consultation.

What Are Van Leeuwen and Rebel Creamery Known For?

Van Leeuwen Ice Cream is a well-known artisanal ice cream brand based in New York City. Established in 2008, Van Leeuwen is known for its high-quality ingredients, creamy texture, and simple pastel packaging. While Van Leeuwen offers popular vegan ice cream, usually made with cashew cream instead of dairy, they do not offer low-calorie or ketogenic options.

Meanwhile, Rebel Creamery is a frozen dessert brand with a different niche. Rebel Creamery, launched via Kickstarter in December 2017 to create full-fat, dairy-based ice cream with no sugar added. Instead, their ice cream brand is marketed as a low-carb, high-fat ketogenic option.

At first glance, these two ice cream makers have very little in common. Van Leeuwen offers pop-up shops (called “scoop shops”) as well as pints, while you would find Rebel Creamery mostly at grocery stores. Van Leeuwen makes regular, full dairy and sugar ice cream as well as vegan options, whereas Rebel Creamery is marketed to those attempting to avoid sugar. However, when it comes to their trade dress, the reason for the dispute becomes clearer.

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Why Did Van Leeuwen Sue Rebel Creamery?

Van Leeuwen’s trade dress involves several elements that they define as critical to their overall success. Their aesthetic or branding was developed in conjunction with Pentagram, a well-known branding agency, and is in contradiction with many other ice cream brands’ bright colors, drawings, and busy designs. Instead, Van Leeuwen’s trade dress is monochromatic and pastel-hued. The company uses matching lids and large black script writing, with an exaggerated capital letter.

Within the first six months that Van Leeuwen adopted their trade dress, their sales and sales velocity increased by nearly 50%. Van Leeuwen now claims that Rebel Creamery then copied their style, using the same kinds of colors, fonts, and minimalist designs, making their product seem nearly identical to Van Leeuwen’s signature elements. Van Leeuwen states that it has documentation that their trade dress has been in continuous use since August 2016 (and their logo and color palette since 2008). On the other hand, Rebel Creamery was launched in 2017 via a Kickstarter campaign.

What Are Van Leeuwen’s Claims Against Rebel Creamery?

Van Leeuwen claims that these overreaching similarities have caused them damage like lower sales and customer confusion. In the lawsuit against Rebel Creamery, they give examples like a major retail chain saying they could not carry both Van Leeuwen and Rebel Creamery, as the trade dress is too similar. The plaintiff’s allegations include:

  • False designation of origin, unfair competition, and trade dress infringement under the Lanham Act
  • Reverse confusion under the Lanham Act
  • Common law trade dress infringement and unfair competition
  • Trademark dilution in violation of New York general business law

What is Van Leeuwen’s Prayer for Relief?

The prayer for relief in a civil procedure is the component of the claim where the plaintiff requests from the court the remedy that they are seeking by filing the lawsuit. In Van Leeuwen Ice Cream LLC vs. Rebel Creamery LLC, the plaintiff asked that the defendant be prevented from using trade dress that is identical to theirs, and that they be prevented from competing unfairly with Van Leeuwen in that same way moving forward.

In addition to the prayer for injunctive relief, Van Leeuwen sought compensatory damages in order to make up for the harm done, like retail opportunities missed out on because of Rebel Creamery’s similarities. They also asked for punitive damages, and that Rebel Creamery turn over to Van Leeuwen any profits, gains, or advantages made from the unfairly competing trade dress.

In March 2024, Rebel Creamery’s motion to strike jury demand based on the argument that the plaintiff abandoned its legal claims when it declined to provide a computation of its damages in discovery, was granted. This means the plaintiff can only seek equitable relief, i.e. injunctive relief against the defendant from using a similar trade dress on its products.

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What Is a Trade Dress?

The trade dress definition consists of more than just a trademarked logo. It also involves a product’s packaging, configuration, and overall branding. It can include sound marks, image marks, or scent marks. Trade dress is one of the reasons why an Abercrombie & Fitch in a mall in Tucson, Arizona has a similar aesthetic, layout, and branding to the one in Times Square. The experience of the brand is defined not just by its trademarked logo, but by the individual components that make up its overall look and feel.

According to Two Pesos, Inc. v. Taco Cabana, Inc., a trade dress consists of product packaging trade dress and product configuration trade dress. Walmart Stores, Inc. v. Samara Bros., Inc. took this further to state how product configuration can acquire meaning and distinctiveness in order to qualify for legal protection. Since trade dress is a developing area of trademark law based around the larger objective of fostering fair competition in the market, one preclusion to trade dress infringement is functionality. This means if a company makes a decision to include a certain element in its design, branding, packaging, or layout because it is more functional that way, then it cannot be protected under a trade dress lawsuit.

You can register your trade dress with the Principal Register or Supplemental Register of the United States Patent and Trademark Office (USPTO) with the help of an intellectual property attorney.

Trade Dress Examples

Imagine that a taco restaurant opens up in town, with low prices, good food, and an outdoor seating area marked with bright murals and neon-striped awnings and umbrellas. You become a regular, and then you hear about another taco restaurant opening up that seems nearly identical – awnings, umbrellas, colorful murals, similar menu styles, and more. You might go to the second restaurant, and not even realize that it’s a different company from the first, all because it seems so similar. You might become a regular there instead, or assume that the first restaurant owner is starting to branch out and that your initial favorite has become a chain. This is essentially what happened in the case of Two Pesos. The secondary taco restaurant, Two Pesos, was found to have deliberately infringed upon the trade dress of the first restaurant, called Taco Cabana.

In the Samara Bros case, Samara Bros is a children’s clothing manufacturer, and Walmart contracted with another supplier to sell children’s clothing based on photographs of Samara Bros’ designs. While Walmart attempted to argue that the colors and clothing designs could not be protected, a jury (and subsequent appeals) affirmed that Samara should receive relief based on Walmart’s sales of what were essentially knock-offs.

Distinctiveness, a main qualifier for protection under trademark law, can come from a unique kind of packaging that a product is encased in. Bad faith designs, like those that attempt to encourage customers to make a certain connection between brands, like in Car-Freshner Corp. vs. Am. Covers, can be held to be trade dress infringement.

This does not mean that every idea needs to be entirely original in order to avoid a lawsuit. Creativity builds upon itself, and some decisions might be influenced by market trends. However, once you have a sizable market share, you become more at risk of being harmed by those who want to ride the coattails of your success.

Trade Dress vs. Trademark

A trademark can be applied to a word, phrase, or design that is associated with your product or company. A trade dress, on the other hand, can encompass the many aspects of how your product or service appears, covering elements like its packaging, design, color combination, and more.

Trade Dress vs. Design Patent

Design patents are largely property rights claims, while trade dress infringement law is meant to prevent consumer confusion. Design patents do not need to be marketed in order to be enforceable, but trade dress must be in use and for sale in the market in order for a claim to move forward.

What is Trade Dress Infringement?

Trade dress is protected by trademark law if it meets the following qualifications:

  1. It is non-functional. If an element is chosen simply because of its functionality, it cannot be considered a protected design choice.
  2. It is distinctive. Trade dress can best be understood as the overall impression created in the consumer’s mind when they behold the product or experience.

Trade Dress Infringement Elements

In a lawsuit, a trade dress infringement attorney will have to prove the following:

  1. The trade dress meets all the required qualifications to be considered protected.
  2. The trade dress is owned by the plaintiff.
  3. The defendant’s trade dress is similar to the plaintiff’s to an inappropriate degree.
  4. The defendant’s use of the trade dress is likely to confuse consumers and cause actual loss to the plaintiff.

Trade Dress Infringement vs. Trade Dress Dilution

Trade dress dilution occurs when a company’s use of another’s trade dress not only confuses consumers and takes away opportunities from them, but also tarnishes a consumer’s association with the brand. An example might be a company that copies another’s trade dress, and then is publicly associated with a sex scandal or a drug ring. They might also dilute the uniqueness of the brand by using its design on unrelated goods or services.

What Does a Trade Dress Infringement Attorney Do?

Simply put, a trade dress infringement attorney helps a business seek damages from a competitor who has crossed the line and copied their trade dress.

Whether your trade dress is registered or not, a qualified attorney may be able to hold violators accountable and help you seek the compensation you need to cover your losses.

At the Fried Firm, our team can help recover the following from the defendant in a trade dress infringement lawsuit:

  • Missing profits
  • Damages from the loss
  • Costs associated with additional advertising
  • Royalties
  • Litigation costs
  • Attorney’s fees
  • Counterfeit damages

If successful, you can also have the defendant recall all of the overlapping materials involved in the trade dress claim.

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Contact an Experienced Trade Dress Infringement Lawyer Today

Are you concerned about protecting your trade dress? As the ongoing Van Leeuwen vs. Rebel Creamery battle shows, the proprietary elements that set your product apart are worth standing up for. At the same time, you need excellent legal representation to be able to justify why your brand deserves protection and how you have suffered losses as a result of a potential infringement by another entity. You may be able to receive substantial damages in the event that the court finds in your favor for a trade dress claim. An established firm like The Fried Firm can help you get started with your case.