Stephen J. Barrett (Partner-New York, NY) and Gabriela Rios (Associate-New York, NY) recently prevailed on behalf of a manufacturer client on a motion to dismiss in the Southern District of New York on a trade dress case. Plaintiff brought claims under the Lanham Act for trade dress infringement and trade dress dilution, along with state law claims, related to a unique piece of farming equipment that previously enjoyed patent protection. The plaintiff sought to prevent competitors from using the design of the previously patented product under the theory that the product’s non-patented elements were separately protectable under trademark law. In their motion to dismiss, Stephen and Gabriela argued that the alleged trade dress is functional and therefore not protectable, and that the trade dress is not famous, which is a separate requirement necessary for trade dress dilution. The court agreed with their arguments, stating that the complaint only offered conclusory statements that did not sufficiently plead non-functionality or the trade dress’s requisite level of fame. Plaintiff attempted to bolster its arguments by referencing an expired design patent, to which the court responded that the assertion of a legal presumption of non-functionality stemming from a design patent is not supported in the caselaw.