Trade Dress Infringement | Van Leeuwen vs Rebel Creamery

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.

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.

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.