UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF VIRGINIA

CHARLOTTESVILLE DIVISION

ROTHY’S, INC. )
)
Plaintiff, )
)
v. )
)
JKM TECHNOLOGIES, LLC d/b/a ) Civil Action No. 3:18CV00067
OESH SHOES, )
)
and )
)
DR. CASEY KERRIGAN, )
)
Defendants. )

MEMORANDUM IN SUPPORT OF DEFENDANTS’

MOTION TO DISMISS PURSUANT TO RULE 12(B)(6)

Defendants JKM Technologies LLC (“JKM”), and Dr. Casey Kerrigan (“Dr. Kerrigan”)

(collectively “Defendants”), by counsel, file this memorandum in support of their motion to

dismiss all Counts of Rothy’s, Inc.’s (“Rothy’s” or “Plaintiff”) Complaint against Dr. Kerrigan in

her individual capacity, and Counts IV and V against Defendants pursuant to Federal Rule of

Civil Procedure 12(b)(6).

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 Table of Contents

Page

INTRODUCTION................................................................................................................1

PLAINTIFF’S FACTUAL ALLEGATIONS ....................................................................1

ARGUMENTS & AUTHORITIES ....................................................................................5

I. LEGAL STANDARD ...................................................................................................5

II. THE COMPLAINT CONTAINS NO ALLEGATIONS

AGAINST DR. KERRIGAN, THEREFORE REQUIRING
HER DISMISSAL FROM THIS LAWSUIT……………………..……………..6

III. PLAINTIFF’S CLAIM FOR UNREGISTERED TRADE DRESS

INFRINGEMENT SHOULD BE DISMISSED BECAUSE THE
COMPLAINT FAILS TO IDENTIFY ANY PROTECTABLE
TRADE DRESS IN ROTHY’S “THE FLAT” SHOE ..........................................8

A. Plaintiff Has Not Adequately Identified Its Alleged Trade Dress In “The
Flat” ...........................................................................................................................8

B. Plaintiff Has Not Provided Factual Allegations Supporting Plaintiff’s Legal

Conclusion That Its Trade Dress is Non-Functional; Indeed, Incorporated
Articles Strongly Support The Opposite Conclusion…...................................…11

C. Plaintiff Has Not Provided Plausible Facts Showing A Likelihood of

Confusion .................................................................................................................16

D. Plaintiff Has Not Provided Plausible Facts Showing Its

Shoe Product Is Inherently Distinctive or Has Acquired
Secondary Meaning………………………………………………………………..18

IV. COUNT V SHOULD BE DISMISSED FOR SAME REASONS AS

COUNT IV ...............................................................................................................21

CONCLUSION ...................................................................................................................21

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 TABLE OF AUTHORITIES

Page(s)

Cases

Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc.,

280 F.3d 619 (6th Cir. 2002) ...............................................................................................8, 14

Abingdon Livestock Exch., Inc. v. Smith,

594 F. Supp. 2d 688 (W.D. Va. 2009) ...................................................................................7, 8

Ale House Mgmt. v. Raiegh Ale House,

205 F.3d 137 (4th Cir. 2000) ...................................................................................................17

Ashcroft v. Iqbal,
556 U.S. 662 (2009) ...........................................................................................................1, 5, 9

Ashley Furniture Indus. v. Sangiacomo N.A.,

187 F.3d 363 (4th Cir. 1999) .............................................................................................10, 11

Bank of Tex. v. Commerce Sw., Inc.,

741 F.2d 785,788 (5th Cir. 1984) ............................................................................................20

Bell Atl. Corp. v. Twombly,

550 U.S. 544 (2007) ......................................................................................................... passim

Belmora LLC v. Bayer Consumer Care AG,

819 F.3d 697 (4th Cir. 2016) cert. denied, 137 S. Ct. 1202 (2017) ...........................................5

Board of Supervisors v. Smack Apparel Co.,

550 F.3d 465 (5th Cir. 2008), cert denied, 556 U.S. 1268, 129 S. Ct. 2759
(2009) .......................................................................................................................................12

Campbell Sales Group, Inc. v. Gramercy Park Design, LLC,

2010 U.S. Dist. LEXIS 107066 (M.D.N.C. Oct. 6, 2010) .................................................19, 20

Cheatle v. Rudd’s Swimming Pool Supply Co., Inc.,

234 Va. 207 (1987) ....................................................................................................................7

Clamp Mfg. Co. v. Enco Mfg. Co.,

870 F.2d 512 (9th Cir. 1989), cert denied, 493 U.S. 872 ..................................................12, 16

In re County Green Ltd. P’ship,

604 F.2d 289 (4th Cir. 1979) .....................................................................................................6

Devan Designs, Inc. v. Palliser Furniture Corp.,

1992 U.S. Dist. LEXIS 23117 (M.D.N.C. Sept 10, 1992) .......................................................19

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Eliya, Inc. v. Kohl’s Corp.,
2016 U.S. Dist. LEXIS 22085 (E.D.N.Y. Feb. 22, 2016) ..............................................9, 10, 11

In re Ennco Display Sys.,

56 U.S.P.Q.2d (BNA) 1279 (Apr. 6 2000) ..............................................................................20

Gildan USA, Inc. v. Dillard’s, Inc.,

2015 U.S. Dist. LEXIS 35870 (W.D.N.C. March 20, 2015) ...................................................13

Glassybaby, LLC v. Provide Gifts, Inc.,

2011 U.S. Dist. LEXIS 60306 (W.D. Wash. June. 6, 2011) ......................................................9

I.P. Lund Trading v. Kohler Co.,

163 F.3d 27 (1st Cir. 1998) ......................................................................................................13

ID7D Co., Ltd. v. Sears Holding Corp.,

2012 U.S. Dist. LEXIS 52320 (D. Conn. Apr. 13, 2012) ..........................................................9

Inwood Laboratories, Inc. v. Ives Laboratories, Inc.,

456 U.S. 844 (1982) .................................................................................................................19

Landscape Forms, Inc. v. Columbia Cascade Co.,

113 F.3d 373 (2d Cir. 1997)...............................................................................................11, 14

Marks v. Crawford,
882 F. Supp. 530 (E.D. Va. 1993) .............................................................................................5

McAirlaids, Inc. v. Kimberly-Clark Corp.,

756 F.3d 307 (4th Cir. 2014) ...................................................................................................12

Miller v. Pacific Shore Funding,

224 F. Supp. 2d 977 (D. Md. 2002) ...........................................................................................6

Nat’l Lighting Co., Inc. v. Bridge Metal Indus., LLC.,

601 F. Supp. 2d 556 (S.D.N.Y. 2009)........................................................................................9

O’Hazza v. Executive Credit Corp.,

246 Va. 111, 431 S.E.2d 318 (1993)..........................................................................................7

Perpetual Real Estate Services, Inc. v. Michaelson Properties, Inc.,

974 F.2d 545 (4th Cir. 1992) .....................................................................................................6

Philip Morris, Inc. v. MidWest Tobacco, Inc.,

1988 U.S. Dist. LEXIS 16787 (E.D. Va. 1988) .......................................................................17

Qualitex Co. v. Jacobson Prods. Co.,

514 U.S. 159 (1995) ...........................................................................................................13, 15

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Rosetta Stone Ltd. v. Google, Inc.,
676 F.3d 144 (4th Cir. 2012) .............................................................................................12, 16

Searcy v. Locke,
2010 U.S. Dist. LEXIS 92932 (E.D. Va. Sept. 7, 2010) ............................................................5

SEC v. Woolf,
835 F. Supp. 2d 111 (E.D. Va. 2011) ....................................................................................6, 7

Secretary of State for Defense v. Trimble Navigation Ltd.,

484 F.3d 700 (4th Cir. 2007) .....................................................................................................5

Sleep Science Partners v. Lieberman,

2010 U.S. Dist. LEXIS 45385 (N.D. Cal. May 10, 2010) .........................................................8

Sloan v. Thornton,
249 Va. 492, 457 S.E.2d 60 (1995)............................................................................................6

Smith & Hawken, Ltd. v. Gardendance, Inc.,

2004 U.S. Dist. LEXIS 22934 (N.D. Cal. Nov. 5, 2004)...........................................................9

Tatoian v. Andrews,
2017 U.S. Dist. LEXIS 13056 (W.D. Va. 2017) .......................................................................7

Taubman Realty Group Ltd. P’ship v. Mineta,

320 F.3d 475 (4th Cir. 2003) .....................................................................................................5

Tools USA & Equip. Co. v. Champ Frame Straightening Equip., Inc.,
87 F.3d 654 (4th Cir. 1996) ...............................................................................................12, 13

TrafFix Devices, Inc. v. Mktg. Displays, Inc.,

532 U.S. 23 (2001) .............................................................................................................12, 20

Treat, Inc. v. Dessert Beauty,

2006 U.S. Dist. LEXIS 74476 (D. Or. May 5, 2006) ................................................................9

Two Pesos, Inc. v. Taco Cabana, Inc.,

505 U.S. 763 (1992) ...................................................................................................................8

Urban Group Exercise Consultants, Ltd. v. Dick’s Sporting Goods, Inc.,

2012 U.S. Dist. LEXIS 110974 (S.D.N.Y. Aug. 2, 2012) .........................................................9

Wal-Mart Stores, Inc. v. Samara Bros., Inc.,

529 U.S. 205 (2000) ...........................................................................................................19, 20

Yurman Design, Inc. v. PAJ, Inc.,

262 F.3d 101 (2d. Cir. 2001)......................................................................................................8

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Statutes

15 U.S.C. § 1125(a)(3) ...................................................................................................................12

U.S. Lanham Act.............................................................................................................1, 13, 19 21

U.S. Patent Act. ..............................................................................................................................10

Other Authorities

Connie Chen, Women in New York City and San Francisco are obsessed with
these comfortable flats made from recycled water bottles — here’s what they
feel like Business Insider (July 1, 2018) ....................................................................2, 3, 15, 21

Tariro Mzezewa, What if Your Environmentally Correct Shoes were Also Cute?,
N.Y. Times (June 6, 2017) .......................................................................................................15

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 INTRODUCTION

On August 16, 2018, Plaintiff filed its Complaint against JKM and Dr. Kerrigan, the

Founder and Chairman of JKM, in her individual capacity, claiming patent infringement, trade

dress infringement, unfair competition, and false designation of origin in violation of section 43(a)

of the Lanham Act (15 U.S.C. Section 1125(a)), based on allegations that Defendants used

Plaintiff’s alleged intellectual property to market and sell an all-purpose, and largely plain, ballet

flat shoe.

Rothy’s has not raised any allegations supporting piercing the corporate veil or showing

why the case should proceed against Dr. Kerrigan in her personal capacity. In the absence of a

single allegation in this regard, Plaintiff is not entitled to pursue this “extraordinary” remedy

against Dr. Kerrigan. All claims against Dr. Kerrigan should be dismissed.

Further, Rothy’s has failed to properly plead its trade dress, unfair competition, and false

designation claims under the federal Lanham Act by omitting, inter alia, a precise expression of

the character and scope of the claimed trade dress, and cognizable factual allegations

demonstrating that (i) the claimed trade dress is non-functional, (ii) there is a likelihood of

confusion between Rothy’s shoe and the accused shoe, and (iii) the claimed trade dress has

secondary meaning. Consequently, all Lanham Act claims against both Defendants, including

alleged trade dress infringement, unfair competition, and false designation are not plausible under

Twombly and Iqbal and should be dismissed under Fed. R. Civ. P. 12(b)(6).

PLAINTIFF’S FACTUAL ALLEGATIONS

Plaintiff’s Complaint is predicated on a belief that its run-of-the-mill ballet shoe carries

such notoriety and recognition among the American public so as to foreclose legitimate

competition by other shoe manufacturers. Plaintiff placed its version of a ballet flat shoe, “The

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Flat,” into the stream of commerce in or around December, 2015. (Compl. ¶ 11.) “The Flat” is

purportedly manufactured from “recycled bottles using a proprietary 3D knitting process” (Compl.

¶ 9), and Plaintiff claims the shoe has a positive reputation for its “design, the comfortable fit and

lightweight and extremely attractive aesthetic.” (Compl. ¶ 11.) Plaintiff has also alleged patent

infringement based on three flawed and almost identical design patents for an “ornamental design

entitled ‘Shoe.’”1 (Compl. ¶ 16-18.)

Plaintiff further asserts that the “The Flat” contains—and has received outside

recognition—for its utilitarian design that enhances comfort, sustainability and versatility.

(Compl. ¶ 10-11, 14.) Plaintiff markets and advertises “The Flat” as “the perfect shoe to take you

through a busy day, wear to the gym, to the office, or to after-work drinks.” (Compl. ¶ 10.)

Plaintiff further cites to fashion articles, such as a piece by Connie Chen, writing on behalf of

Business Insider, who recognized “The Flat” for its “distinctive feel and functional advantages.”2

(Compl. ¶ 13.) That article goes on to discuss additional utilitarian features of “The Flat” including

the shoe’s “quality,” “versatility,” “comfort,” “breathab[ility],” “very light and flexible” structure,

etc.3 Nonetheless, Plaintiff baldly alleges that the “design of Rothy’s The Flat product is

nonfunctional” without providing any additional allegations or evidence. (Compl. ¶ 15.)

Although unregistered, Plaintiff asserts that “The Flat’s” design constitutes a protectable

trade dress. Plaintiff defines the “The Flat’s” trade dress as “a round toe with a distinctive pointed

vamp, seamless 3D knitted upper, slim profile and sleek outsole.” (Compl. ¶ 13.) Plaintiff avers

1
Two of the asserted design patents are literally identical in the scope of claimed subject matter.
The third is further limited to, inter alia, a color limitation and a pattern on the sole of the shoe,
none of which are even arguably practiced by the accused product sold by JKM.
2
Connie Chen, Women in New York City and San Francisco are obsessed with these comfortable
flats made from recycled water bottles — here’s what they feel like, Business Insider (July 1,
2018), http://amp.businessinsider.com/rothys-comfortable-work-flat-review-2018-6 (emphasis
added).
3
Id.

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that the trade dress of “The Flat” “has a distinctive shape and design such that it is recognized by

consumers of footwear.” (Compl. ¶ 12.) Notably, Plaintiff does not base its trade dress claim on

any discrete symbols, shapes, patterns, colors, or other non-functional aberrations. Rather,

Plaintiff is convinced that its ballet flat shoe—shown below—is so distinctive that consumers of

footwear can somehow recognize its version of the ballet flat above all others. (Compl. ¶ 12.)

Plaintiff further claims “The Flat” “has achieved secondary meaning in that it has come to be

associated with Rothy’s in the minds of consumers.” (Compl. ¶ 51.) The support provided by

Plaintiff is a series of online fashion articles that describe the functional characteristics of

Plaintiff’s ballet shoe. (Compl. ¶ 24.)

In its Complaint, Plaintiff claims Defendants have manufactured and sold their own version

of a ballet flat shoe—entitled “The Dream Flat”—that has a “shape, design and look that is

virtually identical to Rothy’s The Flat product.” (Compl. ¶ 21.)

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 Rothy’s “The Flat” JKM’s “The Dream Flat”

(Compl. ¶ 24.) Based, in part, on the above picture, Plaintiff claims that JKM’s “The Dream Flat”

has “an overall appearance that is confusingly similar and substantially the same” as “The Flat,”

such that consumers are confused into thinking JKM’s “The Dream Flat” product “was related to

Rothy’s The Flat product.” (Compl. ¶ 22, 23.)

Plaintiff asserts all counts in the Complaint against JKM and Dr. Kerrigan in her individual

capacity. However, the Complaint does not specify any specific or unique acts that Dr. Kerrigan

committed in her role at JKM, a properly formed Virginia limited liability company.

Defendant now files its Motion to Dismiss and seeks dismissal of Dr. Kerrigan as a party

to this case and dismissal of Counts IV and V for trade dress infringement, false designation, and

unfair competition against all Defendants.

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 ARGUMENT & AUTHORITIES

I. LEGAL STANDARD

A motion to dismiss should be granted if a plaintiff fails to plead enough “factual content

to allow a court to draw the reasonable inference that the defendant is liable for the alleged

misconduct”; facts merely consistent with a defendant’s liability are not sufficient. Ashcroft v.

Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556-57, 570

(2007)). The court may properly dismiss a complaint on a Rule 12(b)(6) motion due to the “lack

of a cognizable legal theory or the absence of sufficient facts alleged under the cognizable legal

theory.” Searcy v. Locke, 2010 U.S. Dist. LEXIS 92932, at *14 (E.D. Va. Sept. 7, 2010). A

complaining party’s failure to allege “enough facts to state a claim to relief that is plausible on its

face” is fatal to its claims. Twombly, 550 U.S. at 570 (“Factual allegations must be enough to raise

a right to relief above the speculative level.”). While the allegations contained in a plaintiff’s

complaint must be viewed in the light most favorable to the plaintiff, courts need not credit

conclusory legal terms and allegations that are not reasonably supported by factual allegations.

Iqbal, 556 U.S. at 678; Taubman Realty Group Ltd. P’ship v. Mineta, 320 F.3d 475, 479 (4th Cir.

2003). Thus, pleading in the form of legal conclusions is insufficient, and courts are not bound to

accept conclusory allegations as true. Marks v. Crawford, 882 F. Supp. 530, 532 (E.D. Va. 1993).

In ruling on a Rule 12(b)(6) motion to dismiss, the court may consider “documents attached

to the complaint, as well as those attached to the motion to dismiss, so long as they are integral to

the complaint and authentic.” Secretary of State for Defense v. Trimble Navigation Ltd., 484 F.3d

700, 705 (4th Cir. 2007) (citing Blankenship v. Manchin, 471 F.3d 523, 526 n. 1 (4th Cir. 2006);

see also Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697, 705 (4th Cir. 2016) cert. denied,

137 S. Ct. 1202 (2017) (“In ruling on a motion to dismiss, a court evaluates the complaint in its

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entirety, as well as documents attached or incorporated into the complaint.”). “When the bare

allegations of the complaint conflict with any exhibits or documents, whether attached or

adopted by reference, the exhibits or documents prevail.” Miller v. Pacific Shore Funding,

224 F. Supp. 2d 977, 984 n.1 (D. Md. 2002) (citing Fayetteville Investors v. Commercial

Builders, Inc., 936 F.2d 1462, 1465 (4th Cir. 1991)).

II. THE COMPLAINT CONTAINS NO ALLEGATIONS AGAINST DR. KERRIGAN,

THEREFORE REQUIRING HER DISMISSAL FROM THIS LAWSUIT.

Plaintiff has failed to allege anything, much less sufficient facts, to “warrant setting aside

the corporate shield of limited liability” and holding Dr. Kerrigan individually liable under Counts

I-V of Plaintiff’s Complaint. SEC v. Woolf, 835 F. Supp. 2d 111, 123 (E.D. Va. 2011).

“A corporation is ‘an entity separate and apart from its officers and stockholders.’” Id. at

123 (quoting Terry v. Yancey, 344 F.2d 789, 790 (4th Cir. 1965)); see also Perpetual Real Estate

Services, Inc. v. Michaelson Properties, Inc., 974 F.2d 545, 547-48 (4th Cir. 1992) (“It is well

established that a corporation is a legal entity separate and distinct from its shareholders. A

fundamental purpose of incorporation is to ‘enable a group of persons to limit their liability . . . to

the extent of their contributions to the capital stock.’”).

“[T]he decision to pierce a corporate veil and expose those behind the corporation to

liability is one that is to be taken reluctantly and cautiously.” In re County Green Ltd. P’ship, 604

F.2d 289, 292 (4th Cir. 1979); see also Sloan v. Thornton, 249 Va. 492, 498, 457 S.E.2d 60 (1995)

(“Disregarding the corporate structure to impose liability on its shareholders or officers . . . is an

extraordinary remedy . . . undertaken only when necessary to avoid an injustice.”). “Ignoring the

separate existence of a corporation and imposing personal liability on shareholders for debts of the

corporation is an extraordinary act to be taken only when necessary to promote justice.” O’Hazza

v. Executive Credit Corp., 246 Va. 111, 115, 431 S.E.2d 318, 320 (1993).

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 As recently and unequivocally stated by this Court: “The Supreme Court of Virginia has

specifically held that proof of dominion or control of a corporation is not enough to pierce the

corporate veil. Rather, the plaintiff must also establish that the corporation was a device or sham

used to disguise wrongs, obscure fraud, or conceal crime in order to hold the shareholder liable.”

Tatoian v. Andrews, 2017 U.S. Dist. LEXIS 13056, at *3 (W.D. Va. 2017) (Judge Conrad)

(citations omitted).

Also, the burden of proof lies with the party seeking to pierce the corporate veil and is a

question of state law. Abingdon Livestock Exch., Inc. v. Smith, 594 F. Supp. 2d 688, 693 (W.D.

Va. 2009); O’Hazza, 246 Va. at 115. The Supreme Court of Virginia has stated that a court may

pierce the corporate veil and hold individuals liable if the corporate entity is found to be “the alter

ego, alias, stooge, or dummy of the individuals sought to be [held personally liable] and . . . a

device or sham used to disguise wrongs, obscure fraud, or conceal crime.” Cheatle v. Rudd’s

Swimming Pool Supply Co., Inc., 234 Va. 207, 212 (1987).

Pursuant to the Virginia and Fourth Circuit law articulated above, “this alter ego theory

must be supported by a showing that: (1) the individual and the corporation were united by interest

and ownership; and (2) the individual ‘used the corporation to evade a personal obligation, to

perpetrate fraud or a crime, to commit an injustice, or to gain an unfair advantage.’” Woolf, 835

F. Supp. 2d at 123 (quoting Newport News Holdings Corp. v. Virtual City Vision, Inc., 650 F.3d

423, 434 (4th Cir. 2011) cert denied, 565 U.S. 1037 (2011)); see also O’Hazza, 246 Va. at 115.

In the present case, Plaintiff’s Complaint fails to assert any cognizable grounds to hold Dr.

Kerrigan individually liable under any legal theory alleged in the Complaint. Instead, Plaintiff

apparently alleges by implication that Dr. Kerrigan, as a shareholder of JKM, ipso facto, should

presumably be liable for any alleged acts of JKM, thereby ignoring the clear authority cited above

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that Plaintiff carries the burden of pleading and proving it is entitled to pierce the corporate veil.

Abingdon Livestock Exch., Inc., 594 F. Supp. 2d at 693. Plaintiff’s failure to meet its burden at

the pleading stage is fatal, and the issue is clear cut: all claims against Dr. Kerrigan in her personal

capacity should be dismissed.

III. PLAINTIFF’S CLAIM FOR UNREGISTERED TRADE DRESS INFRINGEMENT

SHOULD BE DISMISSED BECAUSE THE COMPLAINT FAILS TO IDENTIFY
ANY ENFORCEABLE TRADE DRESS IN ROTHY’S “THE FLAT” SHOE.

A product’s “trade dress” is “essentially its total image and overall appearance.” Two

Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n. 1 (1992) (citations omitted). In addition to

(1) clearly identifying the character and scope of the alleged trade dress, a party asserting trade

dress infringement must plausibly plead with supporting factual allegations that (2) its trade dress

is primarily non-functional; (3) the alleged infringement creates a likelihood of confusion; and, (4)

the trade dress either (a) is inherently distinctive, or (b) has acquired a secondary meaning. The

Complaint fails in each of these respects.

A. Plaintiff Has Not Adequately Identified Its Alleged Trade Dress In “The Flat.”

It is axiomatic at the pleading stage that a Plaintiff “articulate the design elements that

compose the trade dress.” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 116 (2d. Cir. 2001);

Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 635 (6th Cir. 2002)

(finding a plaintiff is “expected to list the elements of the designs and the unique combinations it

sought to protect”); Sleep Science Partners v. Lieberman, 2010 U.S. Dist. LEXIS 45385, at *9

(N.D. Cal. May 10, 2010) (“Without an adequate definition of the elements comprising the

website’s ‘look and feel,’ [defendant] is not given adequate notice”; granting motion to dismiss);

McCarthy on Trademarks § 8.3 (“[t]he discrete elements” which make up the trade dress “should

be separated out and identified in a list”).

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 Identification of trade dress is necessary to permit the Court to assess whether plaintiff has

adequately pleaded the elements of the claim and to allow the defendant to respond to the claim.

Eliya, Inc. v. Kohl’s Corp., 2016 U.S. Dist. LEXIS 22085, at *12 (E.D.N.Y. Feb. 22, 2016) (“[A]

plaintiff’s inability to explain to a court exactly which aspects of its product design(s) merit

protection may indicate that its claim is pitched at an improper level of generality.”); Smith &

Hawken, Ltd. v. Gardendance, Inc., 2004 U.S. Dist. LEXIS 22934, at *8 (N.D. Cal. Nov. 5, 2004)

(finding claim “wholly deficient” where counter-claimants offered “no explanation as to the

nature, scope, or elements” of trade dress, thus providing “no facts . . . that would allow the Court

to determine whether [the trade dress was] distinctive, whether [it was] nonfunctional or whether

there exist[ed] a likelihood of confusion”; granting motion to dismiss).4

Here, Plaintiff does not articulate the discrete elements that make up the claimed trade dress

in any way that would give Plaintiff exclusivity over all other ballet flats. Plaintiff asserts trade

dress rights in its ballet flat shoe design using vague, categorical explanations of features of the

shoe Rothy’s claims embodies its trade dress—namely a plain, generic ballet flat marketed under

the unremarkable name, “The Flat.” Specifically, the entirety of Plaintiff’s explanation of its trade

dress is: “the signature round toe with a distinctive pointed vamp, seamless 3D knitted upper,

4
In the post Twombly and Iqbal era, courts routinely dismiss trade dress claims for failure to
identify the claimed trade dress with the required specificity or to plead facts sufficient to support
the required elements for trade dress infringement. See, e.g., Urban Group Exercise Consultants,
Ltd. v. Dick’s Sporting Goods, Inc., 2012 U.S. Dist. LEXIS 110974, at *15-17 (S.D.N.Y. Aug. 2,
2012) (dismissing trade dress claim for failure to establish trade dress was non-functional and
failed to establish secondary meaning); ID7D Co., Ltd. v. Sears Holding Corp., 2012 U.S. Dist.
LEXIS 52320, at *17-20 (D. Conn. Apr. 13, 2012) (dismissing trade dress claim for failure to
establish trade dress was non-functional and failure to show secondary meaning or likelihood of
confusion); Glassybaby, LLC v. Provide Gifts, Inc., 2011 U.S. Dist. LEXIS 60306, at *3-5 (W.D.
Wash. June. 6, 2011) (dismissing trade dress claim for failure to allege non-functionality); Nat’l
Lighting Co., Inc. v. Bridge Metal Indus., LLC., 601 F. Supp. 2d 556, 562 (S.D.N.Y. 2009)
(dismissing trade dress claim with prejudice for failure to provide “a precise expression of the
character and scope of the claimed trade dress”).

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slim profile and sleek outsole…” (Compl. ¶ 50.) Using imprecise, open-ended terms, like the

ones used in Rothy’s Complaint to describe its alleged trade dress, do not properly articulate

protectable intellectual property.

Eliya, Inc. v. Kohl’s Corp., 2016 U.S. Dist. LEXIS 22085 (E.D.N.Y. 2016), is instructive.

There, the plaintiff claimed trade dress protection for a shoe design “consist[ing] of a woven

pattern on the upper portion of the shoe, including the mary jane strap [and] an appendage on the

heel end that extends higher than the weave portion.” Id., at *15-16. However, the court in that

case rejected the plaintiff’s trade dress claim and dismissed it because, like in the current case,

“[n]othing in the complaint suggests exactly how these features are distinctive.” Id.

The same rationale is appropriate in the current case, because the same principles as in the

Eliya case apply here. Rothy’s does not provide any explanation as to why its trade dress—“a

round toe with a distinctive pointed vamp, 3D knitted upper, slim profile, and sleek outsole”

(Compl. ¶ 13)—is distinctive from any other ballet flat shoe. Ashley Furniture Indus. v.

Sangiacomo N.A., 187 F.3d 363, 374 (4th Cir. 1999) (“[I]f an overall product design differs only

slightly from the designs of preexisting competing products, it does not qualify for protection as

inherently distinctive trade dress.”). Permitting Plaintiff’s “vague allegations as constituting a

protectable trade dress raises the distinct danger of providing plaintiff a monopoly over a concept

. . . rather than a particular design.” Eliya, 2016 U.S. Dist. LEXIS 22085, *18 (citations omitted);

see also id. (recommending dismissal of the complaint because “[t]he graphical depictions of the

Lulu Sneakers and the Comfi Mary Jane Sneakers, read in conjunction with the textual description,

shed no further light on the purportedly unique features of these shoes”); Landscape Forms, Inc.

v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997) (“Without such a precise expression

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of the character and scope of the claimed trade dress, litigation will be difficult, as courts will be

unable to evaluate how unique and unexpected the design elements are in the relevant market.”).

Plaintiff’s trade dress claim, which articulates nothing as a trade dress other than features of a

typical ballet flat shoe, should be denied with prejudice because it is unfair to Defendants to defend

against a phantom claim, and it would upset an entire industry in which ballet flat shoe designs are

ubiquitous.

B. Plaintiff Has Not Provided Factual Allegations Supporting Plaintiff’s Legal

Conclusion That Its Trade Dress is Non-Functional; Indeed, Incorporated
Articles Strongly Support The Opposite Conclusion.

Plaintiff has failed to allege sufficient facts to support its conclusory allegations that its

unregistered trade dress is non-functional. Plaintiff’s sole allegation related to non-functionality

is simply, “The shape and/or ornamental design of Rothy’s The Flat product is nonfunctional.”

(See Compl. ¶¶ 15, 51.) As stated in 15 U.S.C. § 1125(a)(3):

In a civil action for trade dress infringement under this Act for trade dress not registered
on the principal register, the person who asserts trade dress protection has the burden of
proving that the matter sought to be protected is not functional.

(Emphasis added.) Moreover, there is a “statutory presumption that features are deemed functional

until proved otherwise by the party seeking trade dress protection.” TrafFix Devices, Inc. v. Mktg.

Displays, Inc., 532 U.S. 23, 30 (2001). Therefore, while “[f]unctionality . . . is a question of fact”

that is “generally put to a jury,” McAirlaids, Inc. v. Kimberly-Clark Corp., 756 F.3d 307, 310 (4th

Cir. 2014), a plaintiff asserting unregistered trade dress infringement carries the burden of pleading

something more than a “statement of facts that merely creates a suspicion of a legally cognizable

right of action.” Twombly, 550 U.S. at 555 (citing Charles A. Wright & Arthur R. Miller, Federal

Practice and Procedure § 1216, pp. 235-36 (3d ed. 2004)).

The Fourth Circuit has explained that a “product feature is functional if it is essential to the

use or purpose of the article or if it affects the cost or quality of the article.” Rosetta Stone Ltd. v.

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Google, Inc., 676 F.3d 144, 161-62 (4th Cir. 2012) (quoting Inwood Laboratories, Inc. v. Ives

Laboratories, Inc., 456 U.S. 844, 850 n. 10 (1982)). A product design may also be functional if it

is:

 “the reason the device works . . . ” Board of Supervisors v. Smack Apparel Co., 550 F.3d
465, 486 (5th Cir. 2008), cert denied, 556 U.S. 1268, 129 S. Ct. 2759 (2009) (internal
quotation marks omitted);

 “the actual benefit that the customer wishes to purchase, as distinguished from an assurance
that a particular entity made, sponsored, or endorsed a product.” Clamp Mfg. Co. v. Enco
Mfg. Co., 870 F.2d 512, 516 (9th Cir. 1989), cert denied, 493 U.S. 872 (internal quotation
marks omitted);

 one of a few alternative options that are available for competitors to pursue without running
afoul of the trade dress. Tools USA & Equip. Co. v. Champ Frame Straightening Equip.,
Inc., 87 F.3d 654, 659 (4th Cir. 1996); or

 a design driven “by practical, engineering-type considerations such as making the product
work more efficiently, with fewer parts and longer life.” I.P. Lund Trading v. Kohler Co.,
163 F.3d 27, 37 n.5 (1st Cir. 1998).

Notably, “if a design’s ‘aesthetic value’ lies in its ability to confer a significant benefit that

cannot practically be duplicated by the use of alternative designs, then the design is ‘functional.’”

Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 170 (1995). Indeed, “the Lanham Act does

not afford protection to functional aspects of product packaging or to commonplace design

elements.” Gildan USA, Inc. v. Dillard’s, Inc., 2015 U.S. Dist. LEXIS 35870, at *6 (W.D.N.C.

March 20, 2015) (emphasis added). Importantly, rather than breaking a product’s functional and

nonfunctional features down individually, the appropriate inquiry is to ascertain if the

“combination and arrangement” of a product’s features serve a primarily functional purpose. Tools

USA & Equip. Co., 87 F.3d at 659 (quoting Computer Care v. Serv. Sys. Enters., 982 F.2d 1063,

1071 (7th Cir. 1992)). Plaintiff’s failures to properly plead non-functionality are specifically

identified below.

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 1. Plaintiff’s Entire Argument on Non-functionality is a Single Legal Conclusion.

Plaintiff’s Complaint fails to satisfy its burden of proving the design of its ballet flat shoe

is not functional because, rather than articulate aspects of the product design with any specificity,

Plaintiff simply recites statutory language that the “shape and/or ornamental design of Rothy’s The

Flat product is nonfunctional.” (Compl. ¶ 14.) In other words, Plaintiff’s entire argument for

functionality rests on a single legal conclusion that the Supreme Court of the United States has

directed courts to ignore. See Twombly, 550 U.S. at 556-57, 570 (“[T]he tenet that a court must

accept as true all of the allegations contained in a complaint is inapplicable to legal

conclusions.”). If this single legal conclusion is rightly ignored, the Complaint does not contain

any factual support whatsoever that would even conceivably support the conclusion that “The

Flat’s” alleged trade dress is non-functional. This fatal hole in Plaintiff’s claim single-handedly

requires dismissal of the Lanham Act claims altogether.

2. The Complaint’s Description of the Trade Dress and Incorporated Articles

Undermine Any Conclusion of Non-Functionality.

The functional purpose or practical benefit of a ballet flat is to give the wearer a slim fit

shoe for ample flexibility. Therefore, Plaintiff concedes that its trade dress is functional by

alleging that “The Flat’s” trade dress includes a “slim profile and sleek outsole.” (Compl. ¶ 13.)

Additionally, Plaintiff’s description of “The Flat’s” trade dress seemingly ignores that every ballet

shoe shares these exact same qualities. As stated by the Second Circuit, “granting trade dress

protection to an ordinary product design would create a monopoly in the goods themselves.”

Landscape Forms, 113 F.3d at 380.

Plaintiff attempts to end-run the clear functionality implications by relying on the design

patent descriptions for “The Flat,” e.g., “an ornamental design entitled ‘Shoe.’” (See Compl. ¶ 16-

18). For example, in the three paragraphs directly subsequent to its statement that “[t]he shape

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and/or ornamental design of Rothy’s The Flat is nonfunctional,” Plaintiff cites to the design

patents, as if the allegedly “ornamental” design patents are proof of the trade dress’s non-

functionality.5 However, this argument by implication does not save Plaintiff’s claim and is an

improper conflation of trade dress and patent law. Indeed, “the functionality doctrine may apply

even to features of a product that are purely ornamental.” Abercrombie & Fitch Stores, Inc., 280

F.3d at 641 (citing Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1006 (2d Cir. 1995) (“[W]here

an ornamental feature is claimed as a trademark and trademark protection would significantly

hinder competition by limiting the range of adequate alternative designs, the aesthetic functionality

doctrine denies such protection.”). Even if such characteristics are purely ornamental, providing

trade dress protection would have the consequence of “preventing competitors from creating an

alternative design with similar benefits.” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 170

(1995).6

Furthermore, the articles cited by Plaintiff in its Complaint are fatal to the trade dress claim

because they demonstrate that “The Flat” shoe is functional in nature. For example, an article

from Business Insider reports about “The Flat’s” “distinctive feel and functional advantages.”

Supra p. 7 (emphasis added). That article goes on to discuss the shoe’s design, which provides

for “all-day comfort” and overall “sustainability.” 7 Similarly, the New York Times article cited

5
It is worth noting that the asserted design patents are similarly invalid for being functional in
nature, but those particular arguments are outside the scope of the current Motion to Dismiss and
will be addressed at a later time.
6
In a case such as this, where Plaintiff alleges both design patent infringement and trade dress
infringement, it must distinguish the facts supporting each claim to avoid a conflict between the
two bodies of law. Ashley Furniture Indus. v. Sangiacomo N.A., 187 F.3d 363, 376 (4th Cir.
1999) (“Yet another justification for heightening trade dress requirements in product
configuration cases is the perceived need to protect the boundaries between trade dress,
copyright, and patent law.”) Accordingly, anything related to the design patents in the
Complaint is wholly irrelevant to the trade dress allegations, or lack thereof.
7
Connie Chen, Women in New York City and San Francisco are obsessed with these comfortable
flats made from recycled water bottles — here’s what they feel like, Business Insider (July 1,

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in the Complaint describes “The Flat” as “breathable” and “comfortable.” 8 Thus, rather than

supporting Plaintiff’s trade dress claims, these articles erode its position.

As stated in Qualitex Co., 514 U.S. at 164, “[t]he functionality doctrine prevents trademark

law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting

legitimate competition by allowing a producer to control a useful product feature.” Plaintiff’s

trade dress claim is caught in the snares of that doctrine and must fail.

3. Not Only Does The Complaint Fail To Factually Support Its Trade Dress
Claims, But The Factual Allegations It Does Contain Establish “The Flat’s” Trade
Dress is Functional.

Plaintiff’s Complaint indicates that the design of “The Flat” is predicated on practical

and functional considerations such as being “sustainable,” having a “comfortable fit,” and being

“lightweight.” (Compl. ¶ 9, 11.) This makes sense due to Plaintiff’s own description of “The

Flat”: “the perfect shoe to take you through a busy day, wear to the gym, to the office, or to after-

work drinks.” (Compl. ¶ 10.) In other words, “The Flat’s” alleged trade dress encompasses “the

actual benefit that the customer wishes to purchase, as distinguished from an assurance that a

particular entity made, sponsored, or endorsed a product.” Enco. Mfg. Co., 870 F.2d at 516. Such

allegations are fatal.

Highlighting this problem are the Complaint’s allegations regarding the 3D knitting

process used to make the upper portion of “The Flat.” Plaintiff claims “The Flat’s” “seamless

3D knitted upper” as part of its trade dress. (Compl. ¶ 50). This is a blatant attempt to claim an

underlying utilitarian process─which would not be readily perceived by consumers as an

2018), http://amp.businessinsider.com/rothys-comfortable-work-flat-review-2018-6 (emphasis

added).
8
Tariro Mzezewa, What if Your Environmentally Correct Shoes were Also Cute?, N.Y. Times
(June 6, 2017), https://www.nytimes.com/2017/06/06/fashion/rothys-recycled-plastic-bottle-
shoes.html.

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aesthetic functional feature unique to Rothy’s “The Flat”─as exclusively Rothy’s intellectual

property.9 Plaintiff’s manufacturing process and materials used to make “The Flat” do not create

a basis to conclude the design of “The Flat” is non-functional. Plaintiff devotes a significant

portion of its Complaint discussing that “The Flat” is “seamlessly manufactured from recycled

bottles using a proprietary 3D knitting process that significantly reduces waste.” (See, e.g.,

Compl. ¶ 9, 13, 14). However, this process creates the value sought to be gained from purchasing

the shoe, including being comfortable, lightweight, and breathable – all functional

characteristics. At bottom, these allegations fall into the trap identified in Rosetta Stone Ltd..,

676 F.3d at 161-62; namely that the 3D knit upper that embodies part of “The Flat” is “essential

to the use or purpose” of the shoe and directly affects its “cost and quality.” The manufacturing

process and its results are things not commonly known or understood by the consumer, and are

fundamentally functional. These allegations, therefore, are fatal to Plaintiff’s trade dress claims.

To avoid giving Plaintiff an undeserved monopoly over an entire industry based on a

general and wholly generic ballet shoe design, including how they are made using known 3D

knitting techniques, the Court should dismiss Counts IV and V of the Complaint.

C. Plaintiff Has Not Provided Plausible Facts Showing A Likelihood of Confusion

Similarity between an allegedly trade dress protectable product and the accused product is

only a single factor in the determination of whether the two designs are likely to be confused.

Specifically, “[t]he factors to be considered in assessing likelihood of confusion are (a) the strength

or distinctiveness of the mark; (b) the similarity of the two [trade dresses]; (c) the similarity of the

9
How the product is made is not subject to trade dress protection, but rather is the province of
utility patents or trade secrets. Rothy’s threw the “3D” aspect into its asserted trade dress in the
hopes of unfairly monopolizing the 3D knitting of shoe uppers. If the Court rightfully ignores
the “3D” aspect, Rothy’s is left with a shoe with a “seamless knitted upper,” hardly worthy of
exclusivity.

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goods/services the [dress] identif[ies]; (d) the similarity of the facilities the two parties use in their

businesses; (e) the similarity of the advertising used by the two parties; (f) the defendant’s intent;

and (g) actual confusion.” See, e.g., Philip Morris, Inc. v. MidWest Tobacco, Inc., 1988 U.S. Dist.

LEXIS 16787, at *17 (E.D. Va. 1988) (citing Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1529

(4th Cir. 1984)). “The greater the distinctiveness, either inherent or acquired, the greater the ambit

of protection of a trademark will be.” Id. at *18.

The heightened protection for a distinctive trade dress necessarily implies that a generic

trade dress does not carry a likelihood of confusion among consumers. A product’s trade dress

should be considered generic if it is “well-known,” “a mere refinement of a commonly-adopted

and well-known form of ornamentation,” or a “common basic shape or design,” even if it has

“not before been refined in precisely the same way.” Ale House Mgmt. v. Raiegh Ale House, 205

F.3d 137, 142 (4th Cir. 2000).

Here, not only does Plaintiff fail to articulate any tortious similarities between “The Flat”

and JKM’s “The Dream Flat,” but Plaintiff has also failed to show, inter alia, any strength in its

purported trade dress, similarities of “facilities” used by the parties, similarity in advertising,

actual confusion, etc. As already explained herein, Plaintiff’s alleged trade dress is essentially

the “common basic shape or design” of a ballet flat. Cf. Raleigh Ale House, 205 F.3d at 142.

Thus, there can be no likelihood of confusion between “The Flat” and JKM’s “The Dream Flat”

from a trade dress perspective because both shoes are common ballet flats, just like hundreds of

other ballet flats on the market. There is a reason the Plaintiff does not have registered

protection for this purported trade dress: the design is just not protectable or enforceable.

In any event, as shown in Plaintiff’s Complaint (Compl. ¶ 23-24), “The Dream Flat’s”

overall appearance is noticeably different from Rothy’s “The Flat.” Differences that lead to the

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overall difference in appearance of these two ballet flat shoes include, but are not limited to: (1)

“The Dream Flat’s” thick, uniform, unadorned outsole (as opposed to “The Flat’s” thinner wedge

sole with ornamental beveling on the outsole and heel elevation); (2) “The Dream Flat’s” very

spacious forefoot and toe area with an asymmetrical, foot-shaped toe box (as opposed to “The

Flat’s” more commonplace rounded toe shape); (3) “The Dream Flat’s” lack of large heel structure

(as opposed to the “The Flat,” which has no seam at the heel and an entire heel structure holding

the shoe together); (4) “The Dream Flat’s” prominently branded vertical seam on the heel (as

opposed to “The Flat’s” seamless rear heel structure and colored strip on top of the heel structure);

and (5) “The Dream Flat’s” long, indented treads of the shoe heel (as opposed to “The Flat’s” two

portion heel with curly Q shapes). Furthermore, the shoes are easily distinguished by prominent

branding on the insole and outsole, and on the heel seam (in the case of The Dream Flat). These

differences provide ample reason to conclude that there is no likelihood of confusion between the

shoes when the two shoes are viewed holistically, and Plaintiff has insufficiently pled otherwise.

D. Plaintiff Has Not Provided Plausible Facts Showing Its Shoe Product is
Inherently Distinctive or Has Acquired Secondary Meaning.

“[I]n an action for infringement of unregistered trade dress under § 43 of the Lanham Act,

a product’s design is distinctive, and therefore protectable, only upon a showing of secondary

meaning.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 216 (2000) (emphases

added). Therefore, Plaintiff’s allegations regarding “The Flat’s” alleged distinctiveness is

immaterial to its trade dress claim.10 Instead, Plaintiff must plausibly allege that its product has

10
While Plaintiff is required to show secondary meaning over and above any claim of inherent
distinctiveness, it is worth noting that, like its other trade dress allegations, Plaintiff’s allegation
for distinctiveness is yet another legal conclusion that should be ignored by the Court under
applicable legal standards. Namely, Plaintiff’s allegation consists effectively of: “Rothy’s The
Flat has a distinctive shape and design such that it is recognized by consumers of footwear.”
(Compl. ¶ 9-12 (emphasis added).) It offers no support for such a statement. Plaintiff could

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acquired secondary meaning. “To establish secondary meaning, a manufacturer must show that,

in the minds of the public, the primary significance of a product feature or term is to identify the

source of the product rather than the product itself.” Inwood Laboratories, Inc. v. Ives

Laboratories, Inc., 456 U.S. 844, 851 n. 11 (1982).

“It is extremely difficult for a seller to successfully prove that a product or package design

has achieved secondary meaning when the design is a common one put on the market by other

sellers.” Campbell Sales Group, Inc. v. Gramercy Park Design, LLC, 2010 U.S. Dist. LEXIS

107066, *22-23 (M.D.N.C. Oct. 6, 2010) (citing McCarthy on Trademarks, § 8:11.50)). In fact,

the burden of proving secondary meaning is even higher for product designs claimed as trade dress.

See Devan Designs, Inc. v. Palliser Furniture Corp., 1992 U.S. Dist. LEXIS 23117, at *18

(M.D.N.C. Sept. 10, 1992) (“[A] product’s design features are less likely to function as an

identification of origin than a product’s packaging”). This is because “[p]roduct design almost

invariably serves purposes other than source identification.” TrafFix Devices v. Mktg. Displays,

532 U.S. 23, 29 (2001) (emphasis added) (quoting Wal-Mart Stores, 529 U.S. at 213). Indeed, the

“sheer number of similar designs in the market weighs heavily against a finding of secondary

meaning.” Campbell Sales Group, 2010 U.S. Dist. LEXIS 107066, at *23.

In analyzing a claim for a product design trade dress, the Supreme Court has cautioned that

“[c]onsumers are aware of the reality that, almost invariably, even the most unusual of product

designs—such as a cocktail shaker shaped like a penguin—is intended not to identify the source,

but to render the product itself more useful or more appealing.” Wal-Mart Stores, 529 U.S. at 213.

Therefore, “[c]onsumers should not be deprived of the benefits of competition with regard to the

utilitarian and aesthetic purposes that product design ordinarily serves by a rule of law that

have, and should have, conducted consumer surveys before it filed its Complaint and made such
an allegation, but there is no evidence in the Complaint indicating that Plaintiff did so.

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facilitates plausible threats of suit against new entrants based upon alleged inherent

distinctiveness.” Id. Accordingly, the burden on Plaintiff to show secondary meaning is extremely

high because it is trying to claim trade dress of the product itself, not the packaging, and that

product happens to be a ballet flat shoe that is and has been so common in the industry as to be

practically omnipresent on women’s feet.

Here, Plaintiff has entirely failed to provide any evidence that the alleged trade dress has

acquired secondary meaning. This is not surprising because the facts do not exist. The shoe was

launched less than three years ago which is far too short an amount of time to acquire any

secondary meaning. See, e.g., In re Ennco Display Sys., 56 U.S.P.Q.2d (BNA) 1279, at *4

(Apr. 6, 2000) (continuous use of seven to 17 years not found enough to establish secondary

meaning); Bank of Tex. v. Commerce Sw., Inc., 741 F.2d 785, 788 (5th Cir. 1984) (no secondary

meaning on mark used continuously for nine years). Also, the generic design in question of a

rounded toe and pointed vamp is but one of only a few available options to manufacturers of ballet

flats; in short, the toe and the vamp can only be rounded or angled/pointed. The extremely limited

combinations of these designs pre-date the formation of Plaintiff’s company by over half a century,

which is why no facet of Plaintiff’s generic methodology—both in manufacturing nor resultant

appearance—is a design novelty in an industry with roots established in the 1940s.

To support its claim, Plaintiff states in conclusory fashion that “[t]he shape and/or

ornamental design of The Flat product as described above is nonfunctional and has achieved

secondary meaning in that it has come to be associated with Rothy’s in the minds of consumers.”

(Compl. ¶ 12.) Plaintiff does not support this sweeping assertion with any surveys, additional

allegations, or evidence. The Court should disregard such a bald legal conclusion. See Twombly,

550 U.S. at 570. While Plaintiff provides a series of articles that discuss the functional and

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practical benefits and features of “The Flat” (Compl. ¶ 14), none of these articles establish that

consumers are able to distinguish “The Flat” from any other ballet shoe. Rather, these articles

speak to the “functional advantages” of “The Flat.”11 Without more, Plaintiff cannot survive

dismissal of its trade dress claims.

IV. COUNT V SHOULD BE DISMISSED FOR THE SAME REASONS AS

COUNT IV.

Plaintiff’s claim for unfair competition and false designation under the federal Lanham Act

is summarily pled and is based on the same allegations as Count IV for trade dress infringement.

Thus, it fails for the reasons discussed above.

CONCLUSION

Plaintiff’s claims against Dr. Kerrigan are wholly deficient and should be dismissed.

Likewise, Counts IV and V of Plaintiff’s Complaint fail to satisfy the elements of a trade dress

infringement claim and unfair competition and false designation claims, and therefore fail to paint

plausible claims as a whole. Defendants’ motion to dismiss should be granted.

Dated Sept. 14, 2018

Respectfully Submitted,

JKM TECHOLOGIES, LLC and

DR. CASEY KERRIGAN

By: “/s/ Nathan A. Evans”

11
Connie Chen, Women in New York City and San Francisco are obsessed with these
comfortable flats made from recycled water bottles — here's what they feel like, Business Insider
(July 1, 2018), http://amp.businessinsider.com/rothys-comfortable-work-flat-review-2018-6.

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Nathan A. Evans (VSB No. 46840)
WOODS ROGERS PLC
123 East Main St.
Fifth Floor
Charlottesville, VA 22902
Phone: 434-220-6829
Fax: 540-983-7711
[email protected]

Francis H. Casola (VSB No. 29108)

Charles J. Dickenson (VSB No. 92889)
WOODS ROGERS PLC
10 S. Jefferson Street, Suite 1400
Roanoke, VA 24011
[email protected]
[email protected]

Counsel for Defendants JKM Technologies, LLC and Dr. Casey Kerrigan

{2352326-1, 106065-00002-03} 22
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 CERTIFICATE OF SERVICE

The undersigned certifies that a true and correct copy of the foregoing was sent via
CM/ECF this 14th day of September, 2018, to the following participants:

Dana J. Finberg (VSB No. 34977)

Arent Fox LLP
55 Second Street, 21st Floor
San Francisco, CA 94105
(415)757-5897
[email protected]

Michelle Mancino Marsh (Pro Hac Vice)

Paul C. Maier (Pro Hac Vice)
Arent Fox LLP
1301 Avenue of the Americas, 42nd Floor
New York, NY 10019
(212)484-3900
[email protected]
[email protected]

Brian J. Stevens (Pro Hac Vice)

Arent Fox LLP
1717 K. Street, NW
Washington, DC 20006-5344
(202)857-6000
[email protected]

“/s/ Nathan A. Evans”

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