Legal Battle: Trade Dress Dispute
Legal Battle: Trade Dress Dispute
Plaintiff, Pocket Plus, L.L.C., (“Plaintiff”) by and through counsel, for its Complaint
against Defendant Runners High, LLC d/b/a Running Buddy (“Defendant”), alleges, on
knowledge as to its own actions, and otherwise upon information and belief, as follows:
PRELIMINARY STATEMENT
1. This is an action for trade dress infringement, unfair competition and false designation of
origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and for substantial and related
3. This court has jurisdiction over this action pursuant to 15 U.S.C. § 1121, 28 U.S.C. §§
1331, and 1338(a) and (b), and pursuant to the principles of supplemental jurisdiction under 28
U.S.C. § 1367.
4. This Court has personal jurisdiction over Defendant because (a) Defendant has substantial
contacts in the State of Iowa related to the claims in this action, (b) Defendant engaged in the
wrongful acts alleged herein in the State of Iowa, and/or (c) Defendant purposely directed its
wrongful conduct at Pocket Plus in the State of Iowa, knowing that the resulting harm likely would
does business in this district and a substantial part of the events or omissions giving rise to the
PARTIES
6. Plaintiff is a limited liability company formed under the laws of the State of Iowa and does
7. Defendant is a limited liability company formed under the laws of the State of South
Carolina.
FACTS
8. Plaintiff has been marketing, offering, selling, and delivering portable pocket products
within the magnetic pouch industry, including The Pocket Plus through various channels since at
least 2008.
9. Plaintiff owns protectable trade dress comprising the distinctive “look and feel” of the
10. Plaintiff’s trade dress serves to identify Plaintiff as the source of high-quality portable
pocket products to the consuming public. Plaintiff has invested substantial time, effort, and
financial resources developing and promoting its trade dress in connection with the promotion and
delivery of its products and services. Plaintiff’s trade dress has become an asset of substantial
11. Plaintiff’s trade dress is inherently distinctive as applied to its products and services.
12. In the alternative, Plaintiff’s trade dress has acquired secondary meaning through
Plaintiff’s long-term, widespread, and continuous use of its trade dress in commerce.
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13. The distinctive and innovative “look and feel” of the Pocket Plus includes a portable pocket
worn externally on a person’s clothing, over the waist band on their hip, in a vertical profile and
having a small label less than a square inch along with an illustration and photograph emphasizing
the vertical profile and use on one’s hip, that together and in combination create an overall visual
14. Defendant markets, offers, and sells portable pocket products, including the Buddy Pouch
Mini Plus (the “Infringing Product”) through various channels, including through its website
15. Based upon information and belief, Defendant began marketing, offering, and selling a
portable pocket product (the Buddy Pouch) in the magnetic pouch industry in 2013 that had a
horizontal profile along with photographs and illustrations emphasizing the horizontal profile as
well as use on one’s waist band in front or in back. See Exhibits 4–5.
16. The Buddy Pouch introduced by Defendant in 2013 was similar to another competitor’s
product, the Roo Sport, that had been introduced in 2011 and that led to confusion as set forth in
a blog post on Roo Sports’ website. Exhibit 6. Below is a side-by-side comparison between the
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Roo Sport (Exhibit 7) Buddy Pouch (Exhibit 8)
17. On October 9, 2012, Defendant applied for a design patent for the ornamental design for a
carrying case which matured into U.S. Pat. No. D716,048 and D762,972. Exhibits 9–10. The
ornamental design protected in both patents, and as shown by the solid lines of the drawings (i.e.
the broken lines of Figs. 1–7 are included for purposes of illustrating portions of the carrying case
forming no part of the claimed design) basically clamed a pouch having a horizontal profile.
18. Recently, Defendant introduced a new Buddy Pouch Mini Plus that mimics the “look and
feel” of the Pocket Plus, utilizing strikingly and confusingly similar layouts and design elements,
including a vertical profile where emphasis is made regarding the placement on the waist band of
19. Without authorization, Defendant has mimicked and use the distinctive “look and feel” of
the Pocket Plus in its Buddy Pouch Mini Plus products, including the vertical profile and placement
20. Defendant’s misappropriation and use of the Pocket Plus trade dress is intended to cause
consumers to mistakenly believe that the products offered by Defendant are provided by or
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21. Defendant's acts are causing, and unless restrained, will continue to cause damage and
immediate irreparable harm to Plaintiff and to its valuable reputation and goodwill with the
22. Plaintiff reincorporates all preceding paragraphs as if fully set forth herein.
23. Defendant’s unauthorized use in commerce of the Infringing Product as alleged herein is
portable pocket products, and is likely to cause consumers to believe, contrary to fact, that
Defendant’s portable pocket products are sold, authorized, endorsed, or sponsored by Plaintiff, or
24. Defendant's unauthorized use in commerce of the Infringing Product as alleged herein
constitutes use of a false designation of origin and misleading description and representation of
fact.
25. Upon information and belief, Defendant’s conduct as alleged herein is willful and is
intended to and is likely to cause confusion, mistake, or deception as to the affiliation, connection,
26. Defendant’s conduct as alleged herein constitutes unfair competition in violation of Section
27. Defendant’s conduct as alleged herein is causing immediate and irreparable harm and
injury to Plaintiff, and to its goodwill and reputation, and will continue to both damage Plaintiff
and confuse the public unless enjoined by this court. Plaintiff has no adequate remedy at law.
28. Plaintiff is entitled to, among other relief, injunctive relief and an award of actual damages,
Defendant’s profits, enhanced damages and profits, reasonable attorneys' fees, and costs of the
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action under Sections 34 and 35 of the Lanham Act, 15 U.S.C. §§ 1116, 1117, together with
29. Plaintiff reincorporates all preceding paragraphs as if fully set forth herein.
30. Plaintiff has used the Pocket Plus’s distinctive trade dress since at least 2008 to indicate
32. Plaintiff’s customers and potential customers identify the trade dress with the portable
33. Defendant’s unauthorized use in commerce of the Infringing Product as alleged herein
constitutes use of a false designation of origin and misleading description and representation of
fact.
34. Defendant’s conduct as alleged herein constitutes trademark infringement under Iowa
common law.
subsidiaries, and assigns, and all of those in active concert and participation with any of
the foregoing persons and entities who receive actual notice of the Court's order by personal
third party to provide, sell, market, advertise or promote portable pocket products
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b. engaging in any activity that infringes Plaintiff's rights in its protectable
trade dress;
likely to lead the public or the trade to believe that (i) Defendant's portable pocket
Plaintiff's portable pocket products are in any manner approved, endorsed, licensed,
e. using or authorizing any third party to use [in connection with any business,
of origin, or any marks, names, words, symbols, devices, or trade dress that falsely
associate such business, goods and/or services with Plaintiff or tend to do so;
incorporating the Plaintiff’s Pocket Plus trade dress or any other mark that infringes
or is likely to be confused with Plaintiff's Pocket Plus trade dress, or any goods or
g. aiding, assisting, or abetting any other individual or entity in doing any act
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2. Granting such other and further relief as the Court may deem proper to prevent the public
and trade from deriving the false impression that any goods or services manufactured, sold,
marketing, advertising, promotion, sale, offer for sale and/or use of any and all packaging,
labels, shopping bags, containers, advertisements, signs, displays, and other materials that
feature or bear any designation or mark incorporating the Plaintiff’s Pocket Plus trade dress
or any other mark that is a counterfeit, copy, simulation, confusingly similar variation, or
colorable imitation of Plaintiff's Pocket Plus trade dress, and to immediately remove them
4. Directing that Defendant recalls and delivers up for destruction or other disposition all
and related materials incorporating or bearing the Plaintiff’s Pocket Plus trade dress or any
5. Directing, pursuant to Section 35(a) of the Lanham Act (15 U.S.C. § 1116(a)), Defendant
to file with the court and serve upon Plaintiff's counsel within thirty (30) days after service
on Defendant of an injunction in this action, or such extended period as the court may
direct, a report in writing under oath, setting forth in detail the manner and form in which
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6. Awarding Plaintiff an amount up to three times the amount of its actual damages, in
accordance with Section 35(a) of the Lanham Act (15 U.S.C. § 1117(a)).
7. Directing that Defendant accounts to and pays over to Plaintiff all profits realized by its
wrongful acts in accordance with Section 35(a) of the Lanham Act (15 U.S.C. § 1117(a)),
8. Awarding Plaintiff punitive and exemplary damages as the court finds appropriate to deter
9. Declaring that this is an exceptional case pursuant to Section 35(a) of the Lanham Act and
awarding Plaintiff its costs and reasonable attorneys' fees thereunder (15 U.S.C. § 1117(a)).
10. Awarding Plaintiff interest, including prejudgment and post-judgment interest, on the
foregoing sums.
11. Awarding such other and further relief as the Court deems just and proper.
JURY DEMAND
Plaintiff hereby demands trial by jury of all issues so triable encompassed by all Counts of
the Complaint.
Respectfully submitted,
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CERTIFICATE OF SERVICE
I hereby certify that the foregoing was filed electronically with the Clerk of Court by using
the CM/ECF system on March 29, 2021, a copy of which will be served upon all counsel of record
via email.
/s/John Gilbertson
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AN HO N E ST RE V I EW O F T HE RU NNIN G BU D DY
In this quick review of The Running Buddy, The RooSport was introduced into the
marketplace in September of 2011. The RooSport was sold at Race Expos and on the
internet with great success. About a year and a half later in 2013, the Running
Buddy/Buddy Pouch hit the market. Because the two products look almost identical
online, including the R in our logos, this has created a lot of brand confusion and the
purpose of this article is to clarify those differences.
Size and Weight Differences of The Running Buddy and The RooSport
1. The original RooSport was black in color, with a mesh backing. It is a 6” x 4” pocket
with 2 strong magnets that run horizontally and is designed to attach to any waistband. It
is made out of a lightweight nylon and weighs 1.4 ounces.
2. The Running Buddy/Buddy Pouch was also black in color with a mesh front. It also
measures 6” x 4”. It has 4 magnets running vertically. It is made out of a heavier/bulkier
material and weighs 3 oz. (Twice the weight).
3. The RooSport is worn inside of the waistband. It is made out of the same fabric as
running shorts and is designed to become a part of the short. Wearing it inside prevents
bouncing, rubbing and chafing.
4. The Running Buddy/Buddy Pouch, is worn on the outside of the waistband with a 6’ x
4’ stiffer flap on the inside of your shorts.
5. The RooSport has an open pocket to make accessing your items easy, and a zippered
pocket inside to secure cash or cards.
6. The Running Buddy/Buddy Pouch also has 2 pockets on the outside that have to be
accessed through a velcro’d flap. One of the other inside pockets is also closed by
Velcro making it difficult to access when wearing.
Another Plus is that The RooSport is machine washable. The Running Buddy/Buddy
Pouch is not.
The RooSport’s lighter weight is another big factor. The weight of the Running
Buddy/Buddy Pouch, especially when items are added, can become too heavy for the
waistband and fall off.
With its sleek design the RooSport is great for traveling. With a layer of clothes you
cannot see it due to the fact that it is only ½” thick folded over your waistband. The new
2.0 design has an inside pocket that zips closed and is specifically designed to secure
Case 1:21-cv-00004-CJW-MAR Document 5-6 Filed 03/29/21 Page 2 of 3
https://shop.theroosport.com/blogs/news/an-honest-review-of-the-running-buddy-the-roosport-vs-the-running-buddy-pouch 2/3
3/29/2021 An Honest Review of The Running Buddy – The RooSport vs. The Running B – TheRooSport
your Passport. Also the RooSport offers a larger pocket, The RooSport Plus for the
larger phones.
The Running Buddy/ Buddy Pouch also holds a passport but is bulkier and 1” thick when
folded over your waistband.
The RooSport has been named by Runner’s World Magazine as one of its top 30
accessories on their Gift List three years in a row for 2013, 2014, and 2015!!! Go here to
order your RooSport now!
I hope that this review of The Running Buddy has helped you to see some of the
important differences between The RooSport and The Running Buddy.
Search Returns
(12) United
Bradfield
States Design Patent (10) Patent No.: US D716,048 S
(45) Date of Patent: Oct. 28, 2014
(54) CARRYING CASE WITH MAGNETIC Primary Examiner — Deanna L. Pratt
SECURING FILAP Assistant Examiner — leisha Price
(74) Attorney, Agent, or Firm — Grady K. Bergen, Griggs
(71) Applicant: Julie Bradfield, Dallas, TX (US) Bergen LLP
(72) Inventor: Julie Bradfield, Dallas, TX (US)
(57) CLAM
(**) Term: 14 Years The ornamental design for a carrying case with a magnetic
securing flap, as shown and described.
(21) Appl. No.: 29/434,009
(22) Filed: Oct. 9, 2012 DESCRIPTION
(51) LOC (10) Cl. ................................................ 03-01 FIG. 1 is a front perspective view of a carrying case with
(52) U.S. C. magnetic securing flap, shown with a front closure flap and a
USPC ........................................................... D3A303
rear securing flap in extended open positions;
(58) Field of Classification Search
FIG. 2 is a front elevational view of the carrying case with
USPC .......... D3/226, 227, 230, 231, 232, 233,234, magnetic securing flap of FIG. 1, shown with the front closure
D3/237,238,239, 240, 243, 244, 245, 246, flap in a folded closed position:
D3/303, 318, 323; 206/37, 37 R, 38, 38 R, FIG. 3 is a rear elevational view of the carrying case with
206/39, 349, 351, 352,457; 224/42.11, magnetic securing flap of FIG. 1, shown with the rear secur
224/264, 609, 610:383/13, 38, 117,907 ing flap in a folded closed position;
See application file for complete search history. FIG. 4 is a right side elevational of the carrying case with
magnetic securing flap of FIG. 1, shown with the front closure
(56) References Cited
flap and the rear securing flap in folded closed positions;
U.S. PATENT DOCUMENTS FIG. 5 is a left side elevational of the carrying case with
magnetic securing flap of FIG. 1, shown with the front closure
D8,049 S * 2, 1875 Hacker .......................... D3/243 flap and the rear securing flap in folded closed positions;
1,084, 101 A * 1/1914 Nover ... 150,101 FIG. 6 is a front elevational view of the carrying case with
D248,058 S * 5/1978 Siegel ... ... D3,243 magnetic securing flap of FIG. 1, shown with the front closure
D250,794 S * 1/1979 Siegel ... ... D3,243 flap and the rear securing flap in extended open positions;
D260,053 S * 8/1981 Siegel ... ... D3,243
D266,202 S * 9/1982 Berman ... ... D3 230 and,
D268,304 S * 3/1983 Schimmel ... D3/233 FIG. 7 is a rear elevational view of the carrying case with
D323,744 S * 2/1992 Casale ........................... D3/230 magnetic securing flap of FIG. 1, shown with the rear secur
(Continued) ing flap in an extended open position.
OTHER PUBLICATIONS
The broken lines in the drawings illustrate portions of the
carrying case with magnetic securing flap which form no part
Photos of Amphipod device. of the claimed design.
(Continued) 1 Claim, 5 Drawing Sheets
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US D716,048 S
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U.S. Patent Aug. 9, 2016 Sheet 1 of 5 US D762.972 S
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