This document is a brief for defendants Laredo Specialty Products, Inc. and Lance Laredo in an appeal regarding a trademark infringement lawsuit brought by Riggs Houston over Laredo's miniature souvenir guitars. The brief argues that (1) the trade dress of Riggs' RIGGS ROCKER guitar is functional and lacks secondary meaning and thus is not entitled to trademark protection, and (2) Laredo's souvenir guitars are not counterfeits as they are not identical to or indistinguishable from the RIGGS ROCKER. The brief asserts that Laredo did not intend to deceive consumers and the souvenirs differ in size, style, and color from Riggs

1. Appeal No. 06-0620
In the
UNITED STATES COURT OF APPEALS
FOR THE TWELFTH CIRCUIT
RIGGS HOUSTON,
Plaintiff,
v.
LAREDO SPECIALTY PRODUCTS, INC.
and LANCE LAREDO,
Defendants.
On Appeal from the
United States District Court for the District of Utopia
BRIEF FOR DEFENDANTS
Team W-12-024
Attorneys for Defendants

2. i
QUESTIONS PRESENTED
I. The RIGGS ROCKER product design trade dress is not entitled to protection under the
Lanham Act since the functional features uniquely alter the tone of the guitar, do not create
a mental connection in potential consumers with a product source, and present no threat of a
likelihood of confusion among consumers with LSP’s miniature souvenir guitar.
II. Defendant LSP’s miniature souvenir guitars are not trademark counterfeits of the RIGGS
ROCKER because LSP did not intentionally create merchandise that was, nor could have
been, considered identical with or substantially indistinguishable from the RIGGS
ROCKER.

3. ii
TABLE OF CONTENTS
QUESTIONS PRESENTED............................................................................................................................. i
TABLE OF CONTENTS.................................................................................................................................ii
TABLE OF AUTHORITIES.......................................................................................................................... iv
STATEMENT OF THE CASE......................................................................................................................vii
A. Factual Background..................................................................................................................vii
B. Proceedings Below..................................................................................................................... x
C. Standard of Review ..................................................................................................................xii
INTRODUCTION ........................................................................................................................................xiii
SUMMARY OF THE ARGUMENT .............................................................................................................. 1
ARGUMENT................................................................................................................................................... 3
I. THE RIGGS ROCKER TRADE DRESS IS NOT ENTITLED TO PROTECTION UNDER THE
LANHAM ACT SINCE IT IS FUNCTIONAL, NON-DISTINCT, AND PRESENTS NO
THREAT OF A LIKELIHOOD OF CONFUSION WITH LSP’S MINIATURE SOUVENIR
GUITARS.......................................................................................................................................... 3
A. The RIGGS ROCKER Trade Dress Uniquely Alters The Sound Of The Guitar And Is
Therefore Functional.................................................................................................................. 4
B. The RIGGS ROCKER Trade Dress Should Not Be Protected Under The Lanham Act
Because It Is Product Packaging And Cannot Be Inherently Distinctive And Has Not
Acquired Secondary Meaning.................................................................................................... 6
1. The RIGGS ROCKER trade dress is product design intended to increase the product’s
appeal, not indicate a source, and therefore is not inherently distinctive. .......................... 7
2. The RIGGS ROCKER trade dress has not acquired secondary meaning because it does
not create a mental connection to consumers as to the product’s source............................ 9
C. There Is No Likelihood of Confusion Between Mr. Laredo’s Souvenir Guitars and Mr.
Houston’s Full Sized Instrument Guitar................................................................................... 10
II. DEFENDANT LSP’S MINIATURE SOUVENIR GUITARS ARE NOT TRADEMARK
COUNTERFEITS OF THE RIGGS ROCKER BECAUSE LSP DID NOT INTENTIONALLY
CREATE MERCHANDISE THAT WAS, NOT COULD HAVE BEEN, CONSIDERED
IDENTICAL WITH OR SUBSTANTIALLY INDISTINGUISHABLE FROM THE RIGGS
ROCKER......................................................................................................................................... 15
A. Though The Trademark Registrations For The RIGGS ROCKER Are Valid, Plaintiff Cannot
Prevail Under A Trademark Counterfeit Claim Since He Has Failed To Establish That
Defendants Intentionally Used A False Mark That Was Identical With Or Substantially
Indistinguishable From The RIGGS ROCKER. ...................................................................... 17
B. LSP’s Souvenir Guitars Are Not A Spurious Designation Of The RIGGS ROCKER, Nor Are
They Physically Or Visually Identical With Or Substantially Indistinguishable From Its Trade
Dress......................................................................................................................................... 18
1. LSP’s souvenir guitars are not a spurious designation of the RIGGS ROCKER because
Mr. Laredo did not have an intent to deceive consumers, nor did he have knowledge that
his conduct could amount to an alleged infringement. ..................................................... 19

4. iii
2. LSP’s souvenir guitars, which are miniature versions of full-sized guitars, are not
identical with nor substantially indistinguishable from the RIGGS ROCKER due to
obvious differences in size, style, and color. .................................................................... 22
C. Given The Lack Of Case Law Clarifying The Meaning Of “Identical With” Or “Substantially
Indistinguishable From” Within The Meaning Of The Lanham Act, This Court Can Look To
Patent Law’s Literal Infringement Doctrine And Find That LSP’s Souvenir Guitars Are Not A
Literal Infringement Of The RIGGS ROCKER....................................................................... 24
CONCLUSION.............................................................................................................................................. 26
TABLE OF APPENDICES .................................................................................................................... App. 1

5. iv
TABLE OF AUTHORITIES
United States Supreme Court Cases:
Qualitex Co. v. Jacobson Products Co., Inc.,
514 U.S. 159, 165 (1995)............................................................................................................ 4
TrafFix Devices, Inc. v. Mktg. Displays, Inc.,
532 U.S. 23, 20 (2001)............................................................................................................... 4
Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 766-773 (1992)……………………………………..……………………. passim
Wal-Mart Stores, Inc. v. Samara Bros.,
Inc., 529 U.S. 205, 215 (2000)........................................................................................ 3, 7, 8, 9
United States Circuit Court Cases:
Abercrombie & Fitch Co. v. Hunting World,
Inc., 537 F.2d 4, 9 (2d Cir. 1976) ............................................................................................... 7
Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc.,
280 F.3d 619, 629 (6th Cir. 2002). ..................................................................................... 4, 5, 6
Allied Mktg. Group, Inc. v. CDL Mktg., Inc.,
878 F.2d 806, 813 (5th Cir. 1989). ........................................................................................... 11
AMF Inc. v. Sleekcraft Boats,
599 F.2d 341, 349 (9th Cir. 1979). ........................................................................................... 13
Aromatique, Inc. v. Gold Seal, Inc.,
28 F.3d 863, 868 (8th Cir. 1994) ...................................................................................xii, xiii, 9
Babbit Elec., Inc. v. Dynascan Corp.,
38 F.3d 1161, 1181 (11th Cir.1994) ......................................................................................... 16
Hoxworth v. Blinder, Robinson & Co.,
903 F.2d 186, 198 (3d Cir.1990)..............................................................................................xiii
John H. Harland Co. v. Clarke Checks, Inc.,
711 F.2d 966, 980 (11th Cir. 1983) ........................................................................................... 3
Kelly-Brown v. Winfrey,
717 F.3d 295, 315 (2d Cir. 2013).............................................................................................. 23
Lane Capital Management, Inc. v. Lane Capital Management,

6. v
Inc., 192 F.3d 337, 345 (2d. Cir. 1999). .................................................................................. 17
Larami Corp. v. Amron,
91 F.3d 166 (Fed. Cir. 1996)..................................................................................................... 25
Lorillard Tobacco Co. v. Bisan Food Corp.,
377 F.3d 313, 319 (3d Cir. 2004).............................................................................................xiii
Nikon Inc. v. Ikon Corp.,
987 F.2d 91, 95 (2d Cir. 1993).................................................................................................. 14
Paddington Corp. v. Attiki Importers & Distributors, Inc.,
996 F.2d 577, 584-85 (2d Cir. 1993). ................................................................................xiii, 15
Polo Fashions, Inc. v. Craftex, Inc.,
816 F.2d 145, 148 (4th Cir. 1987). ........................................................................................... 20
Shire US Inc. v. Barr Laboratories, Inc.,
329 F.3d 348, 353 (3d Cir. 2003)............................................................................................... 9
Stuart Hall Co., Inc. v. Ampad Corp.,
51 F.3d 780, 786 (8th Cir. 1995). ............................................................................................... 7
Versa Products Co., Inc. v. Bifold Co. (Mfg.) Ltd.,
50 F.3d 189, 201 (3d Cir. 1995)...................................................................................... 9, 12, 14
Vuitton v. White,
945 F.2d, 569, 574 (3d Cir. 1991)............................................................................................xiii
Yamaha Intern. Corp. v. Hoshino Gakki Co.,
Ltd., 840 F.2d 1572, 1580 (Fed. Cir. 1988) .......................................................................... 7, 14
United States District Court Cases:
Chanel, Inc. v. Gordashevsky,
558 F. Supp. 2d 532, 538 (D.N.J. 2008)................................................................................... 19
Ford Motor Co. v. Heritage Mgmt. Grp.,
911 F. Supp. 2d 616, 622 (E.D. Tenn. 2012)...................................................................... 19, 20
GMA Accessories, Inc. v. BOP, LLC.,
765 F. Supp. 2d 457, 471 (S.D.N.Y. 2011). ........................................................... 17, 18, 22, 23
Goddard, Inc. v. Henry's Foods, Inc.,
291 F. Supp. 2d 1021, 1046 (D. Minn. 2003)........................................................................... 10

7. vi
Gucci Am., Inc. v. Duty Free Apparel, Ltd.
286 F. Supp. 2d 284, 287 (S.D.N.Y. 2003) .............................................................................. 20
ImOn, Inc. v. ImaginOn, Inc.,
90 F. Supp. 2d 345, 351 (S.D.N.Y. 2000) ................................................................................ 11
Nike, Inc. v. Top Brand Co.,
00 Civ. 8179(KMW), 2006 WL 2884437 (S.D.N.Y. Oct. 6, 2006)……………….…….21
Lifted Research Grp., Inc. v. Behdad, Inc.,
591 F. Supp. 2d 3, 7 (D.D.C. 2008).......................................................................................... 20
Louis Vuitton S.A.,
875 F.2d 584, 590 (7th Cir.1989) ....................................................................................... 21, 22
Philip Morris USA Inc. v. Jackson,
826 F. Supp. 2d 448, 452 (E.D.N.Y. 2011). ....................................................................... 17, 24
Wheel Specialties, Ltd. v. Starr Wheel Grp., Inc.,
918 F. Supp. 2d 688, 691 (N.D. Ohio 2013)............................................................................. 20
United States Court of Customs and Patent Appeals:
Application of Hehr Mfg. Co.,
279 F.2d 526, 528 (C.C.P.A. 1960) .......................................................................................... 10
Federal Statutes:
15 U.S.C. § 1052 (2006)................................................................................................... 7, 8, 9, 14
15 U.S.C. § 1065 (2010)..............................................................................................................xiii
15 U.S.C. § 1114 et seq. (2005)........................................................................................... x, xi, 16
15 U.S.C. § 1115 (2002)............................................................................................................... 17
15 U.S.C. § 1116 et seq. (2008).................................................................................. 16, 17, 18, 25
15 U.S.C. § 1125 (2012)................................................................................................... x, 3, 4, 11
28 U.S.C. § 1331 (1980)................................................................................................................ xi
28 U.S.C. § 1338 et seq. (2011)..................................................................................................... xi
28 U.S.C. §1391(2011).................................................................................................................. xi
Treatises:
4 McCarthy on Trademarks and Unfair Competition § 25:10 (4th ed.) ....................................... 22
Thomas McCarthy, McCarthy on Trademark § 25:10 (3d ed. 1997)......................... 16, 17, 19, 22
Restatements:
Restatement (Third) of Unfair Competition §17 (1995)............................................................. 4, 6

8. vii
STATEMENT OF THE CASE
A. Factual Background
Lance Laredo is the founder and Chief Executive Officer (“CEO”) of Laredo Specialty
Products, Inc. (“LSP”), a family-run business organized under the laws of Utopia with an office
in downtown Cottonwood and a manufacturing facility in Granger. Mr. Laredo is a citizen of
Utopia, maintains a residence in Cottonwood, and was born and raised in the small town of
Granger, which is about 200 miles west of Cottonwood. Throughout his youth, Mr. Laredo
demonstrated an ambition and aptitude for business and entrepreneurship. Record 13. At nine
years old, he started a small business of making and selling kindling bundles from tumbleweed
twigs he gathered on the ranch. He was a Utopia 4H Livestock Blue Ribbon Winner for five
years in a row for his award-winning longhorn steer. His work experience also included
wrangling rattlesnakes for neighboring ranches, digging fence posts, delivering newspapers, and
selling snacks and souvenirs at the local rodeo. Mr. Laredo’s business acumen earned him local
prestige and he was described in the Utopia Prairie Companion as a “silver-tongued salesman”
in 2011. Id.
After graduating high school, Mr. Laredo attended business school at the University of
Cottonwood and landed an externship with the local Travis Cottonwood Toy Factory, where he
learned how to manufacture and sell niche products. Id. at 14. After graduating from business
school, Mr. Laredo founded “LSP” (Laredo Specialty Products) with a $75,000 award from the
Cottonwood Chamber of Commerce. Id. at 15. LSP is a family owned and operated business
and the largest employer in Granger, employing over twenty percent of the population. Id. at 3.
Armed with his new business degree, Mr. Laredo decided to take advantage of and participate
in Cottonwood’s growing tourism industry. Id. at 15. As a result, his first products were a series

9. viii
of souvenirs with local themes – small wooden bronco, a rattlesnake keychain, and an oversized
pencil with the word “Cottonwood” printed down the side surrounded by images of local
wildlife. Id. Today, LSP specializes in making tourist souvenirs for local souvenir stalls and
airport gift shops. Id. at 3.
The RIGGS ROCKER, as shown in App. A, is a guitar created by country-western
music icon Riggs Houston, a current resident of Cottonwood, which incorporates several
features distinctive of the City of Cottonwood: a star-shaped sound hole identical to the star on
the Cottonwood flag and a cowhide covered surface. Id. at 4. Mr. Houston rose to fame in 2006
after he posted a music video of him singing an original song over clips of his childhood home
videos. Id. After the video went viral on several video sharing websites, Mr. Houston was
bombarded with invitations for performance gigs and television appearances. Id. at 5.
The RIGGS ROCKER was first seen on national television in 2007 on the show Next
U.S. Music Icon, in which Mr. Houston played a song from his first album. Id. at 6. The clip
received more than ten million hits on the internet by the following week, and was viewed by
Mr. Laredo. Id. After winning the Next U.S. Music Icon competition, and prior to a tour of U.S.
military installations, Mr. Houston added a replica of a U.S. flag to the pick guard on the front
of the guitar. Id. at 7. Due to the RIGGS ROCKER’s wide appeal, the leading guitar
manufacturer in Utopia, Gilroy Guitars, negotiated an agreement with Mr. Houston to
manufacture and sell RIGGS ROCKER guitars, which today are a popular commodity with over
one hundred thousand annual sales. Id. at 8. Mr. Houston is also in the process of developing a
line of specialty guitar accessories and merchandise featuring the RIGGS ROCKER design and
the American Flag, which includes guitar picks and neck straps. Id.
On April 25, 2012, “Guitars International” published an article on guitar acoustics

10. ix
which detailed how the star-shaped sound hole and the cowhide surface layer alter the acoustics
of the RIGGS ROCKER. Id. at 11. The article cites studies by Claire Langston, a Ph.D.
candidate in guitar acoustics, who engaged in a detailed analysis of the effect of the shape and
composition of hundreds of different guitars for her thesis. Id. at 10. The article also cited
laboratory tests confirming a direct correlation between the dimensions of a sound hole and the
sound waves produced by a guitar when played. Id. at 11. For example, a sound hole with
sharper edges or straight lines will produce a “distinctly twangy sound.” Id. The article also
noted that materials from which a guitar is made directly impact the sound it produces. Id.
In 2012, Mr. Laredo chose to manufacture miniature guitars, as shown in App. B, to be
sold at the 2013 COUNTRYWOOD Music Festival He sought to create a miniature guitar that
could serve as a souvenir of the lovely city of Cottonwood. Id. at 16. Mr. Laredo recalled local
country singer Mr. Houston’s RIGGS ROCKER guitar and remembered liking it for its unique
sound. Id. Mr. Laredo found that a miniature guitar that could serve as a souvenir of the lovely
city of Cottonwood – the home of both the COUNTRYWOOD music festival and Riggs
Houston – would be the perfect keepsake purchase for all the country music fans attending the
festival. Id.
Although LSP’s first miniature guitar was inspired by country music icon Riggs
Houston and the City of Cottonwood’s COUNTRYWOOD Music Festival, there were many
visual differences between the souvenir guitar and Mr. Houston’s RIGGS ROCKER. LSP’s
souvenir guitar was about five inches long, with a star-shaped sound hole slightly more
compressed with the points fatter and shorter, a surface painted to look like cowhide, and a
small sticker of a U.S. flag on the side of the guitar accompanied by the phrase “MADE IN
AMERICA.” Id. at 17. Moreover, the miniature guitar was too small to be played. Id. An

11. x
additional feature of the souvenir guitars is the embedded sound chip inside the guitar that plays
a recording of the sound of the RIGGS ROCKER guitar, with a touch of a button on the back
that activates the chip to emit a melodic fragment consisting of seven chords. Id. LSP later
produced an eleven-inch version of the souvenir guitar with a bigger “sound” that sold for four
times as much. Id.
The guitars were mass-produced for the music festival and were reportedly the best-
selling novelties of the 2013 COUNTRYWOOD Music Festival. Id. at 18. Mr. Houston is the
owner of United States Trademark Registrations on the Principal Register for the RIGGS
ROCKER, its trade dress, and its design mark. Id. at 12. All registrations are valid and
subsisting. Id. When Mr. Houston learned of the sales of these miniature guitars he filed an
action for trade dress infringement and unfair competition in the District Court of Cottonwood.
Id. at 19. Mr. Houston contends that the LSP “souvenir guitars” both infringe the registered
“Riggs Guitar Trade Dress” for guitars and constitute “counterfeits” of the same registered
mark. Id. at 20.
B. Proceedings Below
Upon learning of the sales of the miniature guitars, Mr. Houston filed an action for trade
dress infringement and unfair competition in the District Court of Cottonwood pursuant to 15
U.S.C. § 1114 (1), 15 U.S.C. § 1125 (a) and the common law of unfair competition against Mr.
Laredo and LSP. Record 19. Mr. Houston contended that the LSP “souvenir guitars” (to use Mr.
Laredo’s own terminology) both infringe the registered RIGGS ROCKER trade dress for guitars
and constitute “counterfeits” of the same registered mark. Id. at C. Mr. Houston then filed an
emergency motion for a temporary restraining order (“TRO”) prohibiting sales of the miniature
guitars, pending hearing of his motion for a preliminary injunction. Id. at 19. Jurisdiction arose

12. xi
under 28 U.S.C. §§ 1331 and 1338(a) - (b), and the venue was appropriate under 28 U.S.C. §
1391 (b)(1). Record A.
The District Court of Cottonwood, looking only at the motion for a temporary
restraining order, found that there was insufficient evidence in the record to establish that Mr.
Houston could succeed on the merits of his counterfeit claim. Id. at F. In regards to the trade
dress infringement claim, the District Court of Cottonwood found that Mr. Houston faced
immediate and irreparable harm in the sense that Mr. Houston was losing control over his
reputation and the goodwill associated with the RIGGS ROCKER trade dress. Id. at I.
Consequently, the court enjoined Mr. Laredo and LSP from making further use of the RIGGS
ROCKER trade dress for miniature guitars or any souvenir products. Id. at J.
The court determined whether there is a likelihood of confusion per § 1114(1)(a) by
looking at six factors: (1) the resemblance of the two marks in terms of sight, sound, and
meaning, (2) the relationship between the goods or services of the parties in terms of utility, use
and trade channels, (3) the strength, both inherent and acquired, of the Plaintiff’s mark, (4) any
evidence of actual confusion, or valid surveys indicative of such confusion, (5) an intent by the
newcomer to derive benefit from the original mark’s success, and (6) any other factor
recognized by this, or any other Utopian court, as probative of likelihood of confusion. Id. at H.
Regarding the first factor, the court found LSP’s miniature guitar to be visually similar
to the RIGGS ROCKER trade dress and that the sound emitted from the sound chip initially
resembles the sound of the RIGGS ROCKER. Id. at H(i). The court also noted that neither the
original mark nor the LSP miniature guitars have any significant meaning in and of themselves,
and the sum total of the latter facts weigh in favor of Plaintiff. Id.
Regarding the second factor, the court found that neither the original guitar nor the

13. xii
souvenir guitars have similar utilities, uses or trade channels, but that the Defendants sells
souvenirs emulating the original RIGGS ROCKER guitar. Id. at H(ii). Regarding the third
factor, the court found Plaintiff’s guitar to be inherently distinctive with very notable trade dress
and that “it is inconceivable on the basis of the record so far that the resemblance of the
Defendants’ souvenir guitars… is other than deliberate.” Id. at H(iii). However, regarding the
fourth factor, the court found that there was no evidence of actual confusion thus far. Id. at
H(iv). Regarding the fifth factor, the court makes an inference that Defendants sought to profit
from their imitation of Plaintiff’s mark. Id. at H(v). Regarding the sixth factor, the court cited no
other factors. Id. at H(vi).
Defendants, Mr. Laredo and LSP, made a speaking motion to cancel the registration of
the RIGGS ROCKER trade dress because it is functional because the features of the RIGGS
ROCKER trade dress affect the tone and sound of the guitar. Id. at J. The court made no
decision as to whether the RIGGS ROCKER trade dress was functional in regards to the quality
of the guitar’s sound, but held that functionality is not a defense in this case because the sound
generated from the souvenir guitars is by a sound chip, thereby denying defendants’
counterclaim to cancel the registration. Id.
C. Standard of Review
The question of whether a trade dress is distinctive, nonfunctional, or likely to be
confused with the alleged infringer’s products is a question of fact. Aromatique, Inc. v. Gold
Seal, Inc., 28 F.3d 863, 868 (8th Cir. 1994). If found to be clearly erroneous, the trial court’s
findings will be overturned. Id. With regard to a likelihood of confusion analysis, the Second
Circuit has stated that the determination of each individual factor is reviewed following a
clearly erroneous standard, however, the ultimate issue of likelihood of confusion is reviewed

14. xiii
de novo. Paddington Corp. v. Attiki Importers & Distributors, Inc., 996 F.2d 577, 584-85 (2d
Cir. 1993).
A lower court’s decision regarding a trademark counterfeit claim is reviewed in the
same manner as an order granting or denying a preliminary injunction: “[the courts] review …
if there has been (1) an abuse of discretion, (2) an error of law, or (3) a clear mistake of fact.”
Lorillard Tobacco Co. v. Bisan Food Corp., 377 F.3d 313, 319 (3d Cir. 2004). See Vuitton v.
White, 945 F.2d, 569, 574 (3d Cir. 1991) (quoting Hoxworth v. Blinder, Robinson & Co., 903
F.2d 186, 198 (3d Cir.1990)). When a plaintiff in a trademark counterfeit claim seeks an ex
parte order under the Trademark Counterfeiting Act directing a seizure of the allegedly
counterfeit goods from retailers, the reviewing court asks “whether the District Court abused its
discretion, or were its factual findings clearly erroneous?” Lorillard Tobacco Co., 377 F.3d at
319.
INTRODUCTION
Defendant Lance Laredo, CEO of Laredo Specialty Products (“LSP”), appeals the
District of Utopia’s findings that the RIGGS ROCKER, created by Plaintiff Riggs Houston, is
entitled to trade dress protection under the Lanham Act and that there is a likelihood of
confusion with LSP’s souvenir guitars. As a preliminary matter, it should be noted that the
RIGGS ROCKER trade dress is contestable because it has not been in continuous use for five
consecutive years. 15 U.S.C. § 1065. Additionally, Plaintiff Riggs Houston appeals the District
of Utopia’s findings that LSP’s souvenir guitars are not counterfeits of the RIGGS ROCKER
trade dress.

15. 1
SUMMARY OF THE ARGUMENT
This court should reverse the District Court’s decision that the RIGGS ROCKER is
entitled to trade dress protection and should affirm the District Courts finding that LSP’s
souvenir guitars are not trademark counterfeits.
The RIGGS ROCKER is not entitled to trade dress protection because the trade dress is
functional, and there is also no likelihood of consumer confusion. The RIGGS ROCKER trade
dress is functional since the unique sound that is produces is due to the design and make of the
guitar. Since the only way to produce this sound is through the star-shaped hole and cowhide
design, the trade dress is essential in creating the sound and is therefore functional. Allowing
protection of this trade dress would be to give Mr. Houston exclusive use to that sound, which
would place competitors at a significant disadvantage in the market place. For all of these
reasons, this court should find that the RIGGS ROCKER trade dress is functional.
Even if the RIGGS ROCKER trade dress is held to be non-functional, it is still not
entitled to trade dress protection. The RIGGS ROCKER and the LSP souvenir guitar present no
likelihood of consumer confusion since there are clear visual differences between the marks.
Also, following the same factors that the District Court used in its decision, there is still no
likelihood of confusion amongst consumers and therefore there should be no trade dress
protection.
In order to establish trademark counterfeiting, it must be shown that the trademark is
registered, and also that the defendant intentionally used a false mark, that is identical to, or
substantially indistinguishable from the registered mark. Although it is undisputed that the
RIGGS ROCKER is registered as a valid trademark, Mr. Houston has failed to establish that
Mr. Laredo intentionally used a false mark that was identical to, or substantially

16. 2
indistinguishable from, Mr. Houston’s genuine mark.
Several courts have found a defendants’ admission of intent to produce precise
trademark counterfeits on goods they sold to be determinative of trademark counterfeit.
However, on the facts of this case, Mr. Laredo made no such admission nor are the souvenir
guitars “precise” replicas of the RIGGS ROCKER. Neither was Mr. Laredo making an apparent
attempt to capitalize upon the popularity of the RIGGS ROCKER, but rather Mr. Laredo create
a charming souvenir indicative of the City of Cottonwood and its annual COUNTRYWOOD
Music Festival. Additionally, there is insufficient evidence to establish that Mr. Laredo had
knowledge of the RIGGS ROCKER trademarks that would have amounted to willful blindness
because Mr. Laredo’s decision to manufacture the souvenir guitars was not reckless.
The souvenir guitars are not identical with the RIGGS ROCKER given their appearance
as well as the manner in which they are enjoyed; as souvenirs, not as instruments. Furthermore,
no agency has made a determination that the souvenir guitars are trademark counterfeits of the
RIGGS ROCKER, and an outside agency’s determination is typically present where trademark
counterfeit has been found.
Lastly, given the dearth of case law on trademark counterfeiting, this court should adapt
patent law’s Literal Infringement Doctrine and find that the souvenir guitars are not literally
infringing on the RIGGS ROCKER trademark. This doctrine states that even one alteration
from the original design deems it not a literal infringement. The application of such a doctrine
to trademark law would further clarify the meaning of “identical with or substantially
indistinguishable from.” Given the latter, LSP’s souvenir guitars should not be considered
trademark counterfeits.

17. 3
ARGUMENT
Trade dress has been defined as the “total image of a product” including various
distinctive traits such as size, shape, color, color combinations, and texture. John H. Harland
Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983). A preliminary question when
assessing an alleged trade dress infringement is classifying the particular trade dress as product
design, product packaging, or a “tertium quid.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529
U.S. 205, 215 (2000). The Court in Wal-Mart acknowledged that the difference between
product design and product packaging may be confusing and clarified that the primary purpose
of product packaging is source identification, while product design is used to “render the
product itself more useful or more appealing.” Id. at 213. The standard for trade dress
infringement of a product on the Principal Register established by the Supreme Court and
clarified by Congress requires that the plaintiff establish three facts in order for a trade dress to
be protectable under the Lanham Act: first, that the design is nonfunctional; second, that the
design is inherently distinctive or has acquired secondary meaning; and third, that there is a
likelihood of confusion amongst consumers between the two products. 15 U.S.C. § 1125; Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 766-773 (1992).
I. THE RIGGS ROCKER TRADE DRESS IS NOT ENTITLED TO PROTECTION
UNDER THE LANHAM ACT SINCE IT IS FUNCTIONAL, NON-DISTINCT, AND
PRESENTS NO THREAT OF A LIKELIHOOD OF CONFUSION WITH LSP’S
MINIATURE SOUVENIR GUITARS.
In order to prevail in his trade dress infringement claim, Mr. Houston bears the burden of
demonstrating that the RIGGS ROCKER trade dress is nonfunctional; second, that it is
inherently distinctive or has acquired secondary meaning; and third, that there exists a likelihood
of confusion amongst consumers between his trade dress and Mr. Laredo’s souvenir guitars. Id.
The first two elements are the requirements for the RIGGS ROCKER trade dress to be protected,

18. 4
and the third element is the standard for evaluating infringement. Abercrombie & Fitch Stores,
Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 629 (6th Cir. 2002). Simply put, trade dress
infringement occurs only if there is a likelihood of confusion between a plaintiff and defendant’s
products. Two Pesos, Inc., 505 U.S. at 770. While trade dress may be protected, the Court has
explained that in many instances, there is no prohibition against copying goods and products and
that the overall purpose of protection is to promote competition. TrafFix Devices, Inc. v. Mktg.
Displays, Inc., 532 U.S. 23, 20 (2001).
A. The RIGGS ROCKER Trade Dress Uniquely Alters The Sound Of The Guitar And
Is Therefore Functional.
Under §43(a) of the Lanham Act, trade dress protection is only given if the features in
question are nonfunctional. Two Pesos, Inc., 505 U.S. at 769. The Supreme Court has defined a
product’s trade dress as functional if it is “essential to the use or purpose of the article or if it
affects the cost or quality of the article.” Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S.
159, 165 (1995). Additionally, the Restatement (Third) of Unfair Competition states that “a
design feature that substantially contributes to the aesthetic appeal of a product may qualify as
‘functional’.” Restatement (Third) of Unfair Competition §17 (1995). A finding of aesthetic
functionality is proper when objective evidence demonstrates the aesthetic value can’t be
duplicated with adequate alternative designs, because the particular design feature is the basis of
its appeal. Id. The Court has explained that this “functionality doctrine” prevents the inhibition
of legitimate competition by allowing a producer to control a useful product feature. Qualitex
Co., 514 U.S. at 164. If exclusive use of the particular trade dress would put competitors at a
significant, non-reputation-related disadvantage then it is functional. Id. at 165.
To establish whether exclusive use of a trade dress would put a competitor would be put
at a non-reputation-related disadvantage, a court must address whether or not there exist

19. 5
alternative features for competitors to use in the market, or if protection of a feature would
hinder the ability of a competitor to compete effectively in the market. Abercrombie & Fitch
Stores, 280 F.3d at 642. These analyses are known, respectively, as the “comparable
alternatives” and “effective competition” tests and were utilized in Abercrombie. In that case,
Abercrombie brought suit against American Eagle Outfitters, a competitor retailer, alleging
trade dress infringement of its clothing, in-store displays, and catalog. Using these tests, the
court found that Abercrombie’s trade dress designs for its clothing and in-store presentations
were not protectable. Although both distinct, the court found that the use of primary color
combinations, patterns, and all natural fabrics in clothing could not be protected because there
would exist no alternative features for competitors to use in the market, leaving them at a
significant non-reputation related disadvantage. Id.
The “comparable alternative” and “effective competition” tests may be effectively used
to demonstrate that the RIGGS ROCKER trade dress is functional and should not be protected,
since the design is what enables the guitar to have its distinctive sound. The article on guitar
acoustics in the May 2012 issue of Guitars International explains how there exists a direct
correlation between the dimensions of the sound hole and the sound of the instrument. Record
11. Laboratory studies also found that materials from which a guitar is made alter the sound
produced, and that the cowhide surface layer changes the acoustic range of the RIGGS
ROCKER. Record 11. Importantly, the District Court held that the RIGGS ROCKER trade
dress itself “may or may not” be functional with respect to the quality and tone of the guitar’s
sound. Record J.
The District Court erroneously held that because LSP’s souvenir guitars used a sound
chip, functionality of trade dress was not a valid defense, since the sound was not produced

20. 6
acoustically by the registered trade dress. The use of the sound chip, however, does not negate
LSP’s argument of functionality because the five and eleven inch guitars are too small to be
played like a full-sized guitar, cannot be covered in cowhide or make effective use of a sound
hole. Therefore, the only way for the souvenir guitar to mimic the unique sound of the RIGGS
ROCKER is through the use of a sound chip and no comparable alternatives, as defined in
Abercrombie, exist. Abercrombie & Fitch Stores., 280 F.3d at 642.
Not only does the trade dress affect the RIGGS ROCKER’s musicality, the features
contribute to its overall aesthetic appeal. LSP’s souvenir guitars, like its earlier bronco and
rattlesnake products, are a unique reflection on the City of Cottonwood and the country
lifestyle. The aesthetic value of the trade dress cannot be mimicked with alternative designs
because the star-shaped sound hole recalls the city’s flag and the cowhide covered surface is
emblematic of the city as well. These features are the basis of its appeal.
These factors demonstrate that the RIGGS ROCKER trade dress is functional,
aesthetically or musically, and there exist no comparable alternative features for manufacturers
to use to produce competitive products. To ban competitors from producing guitars with star-
shaped sound holes or a cowhide layer would prevent them from creating a “twangy” and
unique sound, appealing aesthetically, and would leave producers at a non-reputation related
disadvantage therefore hindering marketplace competition.
B. The RIGGS ROCKER Trade Dress Should Not Be Protected Under The Lanham
Act Because It Is Product Packaging And Cannot Be Inherently Distinctive And
Has Not Acquired Secondary Meaning.
Referencing the Restatement (Third) of Unfair Competition, the Supreme Court in Two
Pesos stated the general rule regarding distinctiveness: An identifying mark is distinctive and
capable of being protected only if it either (1) is inherently distinctive or (2) has acquired

21. 7
distinctiveness through secondary meaning, which occurs when the mark has come to indicate
the source of a product. Two Pesos, Inc., 505 U.S. at 769. Proof of secondary meaning is not
required if a product is inherently distinctive. Id. at 773.
1. The RIGGS ROCKER trade dress is product design intended to increase the
product’s appeal, not indicate a source, and therefore is not inherently
distinctive.
Under Section 2(f) of the Lanham Act, a trade dress may be registered even if it is not
inherently distinctive, only if it has acquired distinctiveness through secondary meaning. 15
U.S.C. § 1052. It has been held that trade dress registrations based on a claim of acquired
distinctiveness under the Lanham Act §2(f) are themselves not inherently distinct. Yamaha
Intern. Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 1580 (Fed. Cir. 1988). To determine if
a trade dress is inherently distinctive, it is analyzed under the following categories: (1) generic,
(2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. Abercrombie & Fitch Co. v.
Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). Suggestive, arbitrary, or fanciful marks are
said to identify the commercial source of a product and are therefore considered inherently
distinctive. Two Pesos, Inc., 505 U.S. at 768. These definitions focus on the relationship
between the product and the trade dress, not the trade dress and the consumer. Stuart Hall Co.,
Inc. v. Ampad Corp., 51 F.3d 780, 786 (8th Cir. 1995). If design trade dress is only “tenuously
connected to the nature of the product,” then it is inherently distinctive. Id.
While analyzing the distinctiveness of a product’s trade dress is critical to a trade dress
infringement case, the Supreme Court in Wal-Mart explicitly held that product design cannot be
inherently distinctive. 529 U.S. at 212. Although the Court in Two Pesos held that inherently
distinctive trade dress could be protected under the Lanham Act without proof of secondary
meaning, the Court narrowed this holding in Wal-Mart to distinguish between product design

22. 8
trade dress and product packaging trade dress. Id. at 215. The Court explained that product
packaging has the primary purpose of source identification which encourages consumers to
view product packaging trade dress symbols as an indication of the producer or brand. Id.
Conversely, product design does not persuade the consumer to identify the feature with a
source. Id. The Court notes that “even the most unusual of product designs…is intended not to
identify the source, but to render the product itself more useful or appealing.” Id.
The traits of the RIGGS ROCKER are product design and are not comparable to the
product packaging of restaurant décor, which was considered inherently distinctive in Two
Pesos. In that case, the trade dress of Taco Cabana, a Mexican restaurant chain, included dining
and patio areas decorated with artifacts, bright colors, paintings, and murals. Two Pesos, Inc.,
505 U.S. at 766. This “festive atmosphere” served to identify the restaurant to consumers as a
Taco Cabana establishment. Id. at 765. Conversely, the primary purpose of the star-shaped
sound hole, American Flag pick board, and cowhide covering is not source identification, but
rather, to make the guitar more useful and appealing. Additionally, the District Court’s
conclusion ordering Mr. Laredo to cease making souvenir products also specifically labels the
RIGGS ROCKER trade dress as product-design, and not product packaging. Record J.
Following Wal-Mart, because the RIGGS ROCKER is product packaging, it simply cannot be
inherently distinctive.
If there is confusion as to whether a trade dress is product-design or product packaging,
in order to benefit the consumer and encourage competition, courts should “err on the side of
caution” and require secondary meaning. Wal-Mart Stores, Inc., 529 U.S. at 215. Additionally,
the Riggs Guitar Trade Dress was registered under a claim of acquired distinctiveness, and
therefore secondary meaning must be shown. 15 U.S.C. § 1052. If the court cannot determine

23. 9
whether the RIGGS ROCKER trade dress is product design or product packaging, the court
should follow Wal-Mart and require a showing of secondary meaning. Wal-Mart Stores, Inc.,
529 U.S. at 215.
2. The RIGGS ROCKER trade dress has not acquired secondary meaning
because it does not create a mental connection to consumers as to the
product’s source.
When a trade dress, in the minds of the public, identifies a product's source rather than
the product itself, it has acquired secondary meaning. Wal-Mart Stores, Inc., 529 U.S. at 206.
For a plaintiff to establish secondary meaning he must show that by long and exclusive use in
the sale of the good, the trade dress has become so associated in the public mind with such
goods that the dress serves to identify the source of the goods. Aromatique, Inc. v. Gold Seal,
Inc., 28 F.3d 863, 870 (8th Cir. 1994). A product’s functional features are not eligible for trade
dress protection, therefore, only those “incidental, arbitrary or ornamental product features
which identify the product's source” may be protected. Shire US Inc. v. Barr Laboratories, Inc.,
329 F.3d 348, 353 (3d Cir. 2003). Product design, or product configurations, have been held to
be unreliable as source indicators, partly because functional configurations are not protected and
may be freely copied and inherently distinctive configurations are rare. Versa Products Co., Inc.
v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 201 (3d Cir. 1995).
Section 2(f) of the Lanham Act provides that “nothing in this chapter shall prevent the
registration of a mark used by the applicant which has become distinctive of the applicant's
goods in commerce.” 15 U.S.C. § 1052. The section does not specifically state what type of
proof is necessary to establish secondary meaning, however, the United States Court of
Customs and Patent Appeals has noted that “substantially exclusive use for a period of five
years immediately preceding filing of an application may be considered prima facie evidence”

24. 10
of secondary meaning. Application of Hehr Mfg. Co., 279 F.2d 526, 528 (C.C.P.A. 1960).
Other methods of demonstrating that potential buyers mentally associate a product with a
particular source include consumer surveys and anecdotal evidence showing consumer
identification of the trade dress with its source. Goddard, Inc. v. Henry's Foods, Inc., 291 F.
Supp. 2d 1021, 1046 (D. Minn. 2003).
There is no evidence of Mr. Houston utilizing surveys to discern if his trade dress had
acquired a secondary meaning. There is also no record of anecdotal evidence in which
consumers state that they identify the cowhide layer, star-shaped sound hole, or American flag
pick board with Mr. Houston. In fact, the record states definitively that there is no evidence of
actual confusion between the RIGGS ROCKER trade dress and LSP’s souvenir guitars. Record
H (iv). Also, because the trade dress serves to alter the sound of a guitar in a unique and
“twangy” way, these features are functional and not eligible for protection. There also can be no
prima facie evidence of secondary meaning because the United States Principal Trademark
Register lists the date of the trade dress’ first use as June 15, 2007 and an application date of
June 1, 2008. Record 12. This fails to meet the requirement of “substantially exclusive” use for
five years before filing an application. Application of Hehr Mfg. Co., 279 F.2d at 528.
Finally, if the Court finds the Riggs guitar trade dress to have secondary meaning, in
order for the defendant to be liable for trade dress infringement, likelihood of confusion
between the plaintiff and defendant’s products must be proven.
C. There Is No Likelihood Of Confusion Between Mr. Laredo’s Souvenir Guitars And
Mr. Houston’s Full Sized Instrument Guitar.
If a court determines that the trade dress is protected because it is non-functional, and it
is either distinctive or has acquired secondary meaning, the court must then determine whether
the trade dress has been infringed. Allied Mktg. Group, Inc. v. CDL Mktg., Inc., 878 F.2d 806,

25. 11
813 (5th Cir. 1989). Infringement can be shown by demonstrating that there is a substantial
similarity in trade dress between products which is likely to confuse consumers. Id. In order for
a defendant to be liable for trade dress infringement under § 43(a) of the Lanham Act, there
must be proof that there is a likelihood of consumer confusion between related goods. Two
Pesos, Inc., 505 U.S. at 769. To determine likelihood of confusion, the Twelfth Circuit has
taken several factors into account, such as: (1) resemblance of the marks in sight, sound, and
meaning, (2) relationship between goods in terms of utility, use, and trade channels, (3)
strength, both inherent and acquired, of plaintiff’s mark, (4) any evidence of actual confusion or
valid surveys indicative of such confusion, (5) intent to derive benefit from original mark’s
success, and (6) other recognized factors. Record H.
Mr. Houston’s trade dress was not infringed because there is no likelihood of confusion
between the Riggs guitar trade dress and Mr. Laredo’s souvenir guitar. Although the District
Court took the previously listed factors into consideration when determining a likelihood of
confusion, the analysis “is not a mechanical test in which whoever has the most factors in their
favor wins”. ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp. 2d 345, 351 (S.D.N.Y. 2000). A court
must ultimately focus on the question: “Are consumers likely to be confused?” Id. While the
factors help to resolve this question, it is important to note that they are only used to assist in the
determination and are not required to determine consumer confusion. Id. As long as it can be
shown that there is no likelihood of confusion amongst consumers, there can be no infringement
of a trade dress. The District Court erred in its analysis of the factors and closer review
demonstrates there is no likelihood of confusion.
Addressing the first factor, the “resemblance of the mark in terms of sight, sound, and
meaning,” the Third Circuit has held that in a product design, or configuration case, the

26. 12
similarity of designs does not alone allow a strong inference of likelihood of confusion. Versa
Products Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 209 (3d Cir. 1995). When reviewing
the products, it is evident two marks are very distinguishable in terms of sight, sound, and
meaning. The RIGGS ROCKER guitar has the standard six strings, while there are only four
strings on Mr. Laredo’s souvenir guitar. The printed design on Mr. Laredo’s souvenir guitar
also differs from the authentic cowhide that is on Mr. Houston’s guitar. Also, there is a
substantial distinction in the color scheme of the marks. The base on Mr. Laredo’s souvenir
guitar is primarily white with several brown spots, while Mr. Houston’s cowhide mark is
predominantly brown, with several white spots. Finally, Mr. Houston’s guitar trade dress
contains an American Flag pick board, while Mr. Laredo’s product does not have a pick board
at all. Moreover, the American flag is painted in a different location on Mr. Laredo’s souvenir
guitar from Mr. Houston’s authentic guitar. All of these stated differences create a substantial
dissimilarity in resemblance.
Although the District Court found that the resemblance was apparent, the two marks
display many more differences than commonalities in sight, sound, and meaning. At the very
least, the RIGGS ROCKER trade dress accompanies a real guitar that produces sounds from its
strings which can be strummed or plucked, while Mr. Laredo’s guitar is simply a small souvenir
not intended for actual use that uses a sound chip to produce the desired sound. Even the larger
version of Mr. Laredo’s mock guitar does not compare to Mr. Houston’s real guitar in terms of
size and use. In its decision, the District Court placed the most emphasis on the resemblance
factor when it analyzed the likelihood of confusion factors in descending order of importance,
with “resemblance” discussed first. Record H. If this court defers to the District Court’s
analysis, then an emphasis on the resemblance factor should support an opposite conclusion:

27. 13
that there is no likelihood of confusion between the two products due to the clear differences in
appearance.
The second factor in the likelihood of confusion analysis is the “relationship between
goods.” The District Court acknowledged that neither product has similar utilities, uses, or trade
channels. Record H (ii), Although the District Court stated that Mr. Laredo’s souvenir guitar
emulates Mr. Houston’s actual guitar, this is not the case since Mr. Houston’s trade dress is
functional and used to create a unique sound which can only be produced using the specific
trade dress elements. Mr. Laredo is not emulating Mr. Houston’s guitar specifically, but is
emulating a guitar that would produce that distinct sound. In its analysis of the relationship
between the goods, the District Court acknowledged that Mr. Houston owns the registration of
the RIGGS Guitar Design Mark for nine souvenir items of paraphernalia. Record H(ii). This
line of specialty accessories and merchandise are being developed with Gilroy Guitars and
would therefore likely also be sold by the leading guitar manufacturer in their retail outlets. It is
important to clarify that nothing in the record states that these accessories have actually been
manufactured or sold. Therefore, any analysis of likelihood of confusion should take into
account that consumers, at this point, have no reason to believe that the Riggs guitar trade dress
has expanded into the souvenir market or use the same trade channels.
When analyzing the third factor, “strength of the mark,” the District Court held that Mr.
Houston has an inherently distinctive trade dress. Record H (iii). The definition of a strong mark
is one that is inherently distinctive. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir.
1979). However, since the mark in question represents a trade dress design and not packaging, it
cannot be inherently distinctive. Two Pesos, Inc., 505 U.S. at 770. It has also been held that
trade dress registrations based on a claim of acquired distinctiveness under the Lanham Act

28. 14
§2(f), as the Riggs guitar trade dress was, are themselves not inherently distinct. Yamaha Intern.
Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 1580 (Fed. Cir. 1988).
With respect to the fourth factor, there is no evidence of “actual confusion, or valid
surveys indicative of such confusion” amongst consumers between the Riggs guitar trade dress
and LSP’s souvenir guitars. Although surveys providing evidence of actual confusion is not a
requirement to demonstrate likelihood of confusion, the Second Circuit has found that its
absence may be used against a plaintiff. Nikon Inc. v. Ikon Corp., 987 F.2d 91, 95 (2d Cir.
1993). In that case, while the court found in favor of Nikon, it ruled that the lower court’s
decision to hold this factor in favor of Nikon’s competitor, IPC, on the basis of absence of
surveys, was not clearly erroneous. Id. There is no evidence to show that one would be confused
by these two marks and Mr. Houston has a much higher burden to meet in order to show a
likelihood of confusion. As the District Court stated, Mr. Houston has not produced any
evidence of actual confusion, or valid surveys indicative of such, to establish a likelihood of
confusion. There is also no evidence that he attempted to undertake consumer surveys to show
actual confusion.
The fifth factor that the District Court reviewed was whether or not there was “intent to
derive benefit from original mark’s success.” In Versa, the Third Circuit held that for product
configuration, or design, cases, the defendant’s intent is not relevant to the likelihood of
confusion analysis unless there existed misleading labeling and marketing. Versa Products Co.,
Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 209 (3d Cir. 1995). Although the District Court has
held that Mr. Laredo had an inescapable intent to derive a benefit from Mr. Houston’s success,
there is nothing in the record that specifically states that Mr. Laredo intended to profit from the
RIGGS ROCKER’s fame. The record states that the purpose of Mr. Laredo’s guitars was to

29. 15
serve as a souvenir of the City of Cottonwood, and to provide a keepsake for music fans who
attended the Countrywood Music Festival. There is also no evidence of misleading labeling or
marketing of the souvenir guitar.
The District Court acknowledged that any other factor recognized by another Utopian
court would be pertinent in evaluating whether there is a likelihood of confusion. Record H.
Although the court ruled that it was unaware of any such factor, the Second Circuit includes a
review of the sophistication of consumers in its likelihood of confusion analysis. Applying this
factor to the case, there is again no likelihood of confusion between the RIGGS ROCKER trade
dress and that of Mr. Laredo’s souvenir guitars. First, any potential purchaser of a RIGGS
ROCKER would be familiar with the instrument as well as its trade dress, due to the price of a
guitar, or because they are strong devotees of Riggs Houston. Such trained consumers would
not likely be confused by the souvenir guitar and believe it to be a Riggs Houston or Gilroy
Guitars product.
Although courts have used these factors to assist the court in deciding likelihood of
confusion, again, these factors are not mechanical and are only used to aid in answering the
bigger picture of consumer confusion. Paddington Corp. v. Attiki Importers & Distributors,
Inc., 996 F.2d 577, 584 (2d Cir. 1993). Even if the trade dress is deemed non-functional and
considered to have secondary meaning, the guitars are vastly distinctive from one another in
design, use, and are sold in significantly different trade channels. As a result there is no
likelihood of consumer confusion. Therefore, Mr. Houston has failed to meet his burden of
establishing a likelihood of confusion.
II. DEFENDANT LSP’S MINIATURE SOUVENIR GUITARS WERE NOT
TRADEMARK COUNTERFEITS OF THE RIGGS ROCKER BECAUSE LSP DID
NOT INTENTIONALLY CREATE MERCHANDISE THAT WAS, NOR COULD

30. 16
HAVE BEEN, CONSIDERED IDENTICAL WITH OR SUBSTANTIALLY
INDISTINGUISHABLE FROM THE RIGGS ROCKER.
Trademark counterfeiting is “the act of producing, or selling a product or service with a
sham trademark that is an intentional and calculated reproduction of the genuine mark.” Thomas
McCarthy, McCarthy on Trademark § 25:10 (3d ed. 1997). In order to prevail on a trademark
counterfeiting claim, the plaintiff must show that defendant’s counterfeit mark (1) infringed a
registered and protected trademark in violation of 15 U.S.C. 1114 (1)(a) and (2) that defendant
“intentionally used a mark, knowing such mark is a counterfeit mark.” Babbit Elec., Inc. v.
Dynascan Corp., 38 F.3d 1161, 1181 (11th Cir.1994). A counterfeit mark is a “false mark that is
identical with, or substantially indistinguishable from, the genuine mark.” Thomas McCarthy,
McCarthy on Trademark § 25:10 (3d ed. 1997). Congress adopted this language when drafting
the Lanham Act to define a “counterfeit mark” as meaning “a counterfeit of a mark that is
registered on the principal register in the United States Patent and Trademark Office” 15 U.S.C.
§ 1116(d)(1)(b)(i) and “a spurious designation that is identical with, or substantially
indistinguishable from[the genuine mark]” 15 U.S.C. § 1116(d)(1)(B)(ii).
Counterfeiting differs from traditional trademark infringement in its narrow scope of
application. A counterfeit claim can only apply to marks that are made to look identical to the
actual mark, whereas trademark infringement encompasses any marks that are “likely to cause
confusion, to cause mistake, or to deceive.” A claim for general trademark infringement often
involves imitation or knock-off products whose coloring, shape, or labels are not identical to
other trademarks, but are close enough to cause confusion. Thomas McCarthy, McCarthy on
Trademark § 25:10 (3d ed. 1997). Counterfeit merchandise, on the other hand, is made so
closely as to imitate a well-known product in all details of construction and appearance so as to
deceive customers into thinking they are purchasing genuine merchandise. Id. Accordingly, as

31. 17
McCarthy emphasizes, counterfeiting is one type of “hard core” or “first degree” trademark
infringement that is the most blatant and egregious form of “passing off.” Id. As such, courts
require that at the very least, the degree of similarity is closer than the traditional standard for
infringement. GMA Accessories, Inc. v. BOP, LLC., 765 F. Supp. 2d 457, 471 (S.D.N.Y. 2011).
A. Though The Trademark Registrations For The RIGGS ROCKER Are Valid,
Plaintiff Cannot Prevail Under A Trademark Counterfeit Claim Since He Has
Failed To Establish That Defendants Intentionally Used A False Mark That Was
Identical With Or Substantially Indistinguishable From The RIGGS ROCKER.
To establish liability in a counterfeit claim, the plaintiff must demonstrate that defendant
has infringed a registered trademark that is recorded on the principal register. 15 U.S.C. § 1116
(d)(1)(B)(i). A plaintiff’s certificates of registration with the United States Patent & Trademark
Office (USPTO) serve as prima facie evidence that the registrant owns the mark and has the
exclusive right to its use in commerce. Philip Morris USA Inc. v. Jackson, 826 F. Supp. 2d 448,
452 (E.D.N.Y. 2011). Therefore, when a plaintiff sues for infringement of its registered mark,
the defendant bears the burden to rebut the presumption of the mark’s protectibility by a
preponderance of the evidence. Lane Capital Management, Inc. v. Lane Capital Management,
Inc., 192 F.3d 337, 345 (2d Cir. 1999).
The first component of plaintiff’s counterfeit claim, that plaintiff’s mark is registered on
the principal register and thus protected under the Lanham Act, is undisputed in this case. The
defendants will concede that plaintiff Riggs Houston’s RIGGS ROCKER trademark
registrations are admissible and prima facie evidence of the validity, ownership, registration and
exclusive right to use the marks in commerce for the goods for which they are registered, since
they are registered with the USPTO. 15 U.S.C. § 1115 (a). LSP will not dispute that Riggs
Guitar Trade Dress and Riggs Guitar Design trademark registrations fall within the protection of
the Lanham Act. Rather, LSP contends that the plaintiff cannot demonstrate that defendant (2)

32. 18
intentionally used a false mark that was identical to, or substantially indistinguishable from,
plaintiff’s genuine mark.
This court must address both components of the Lanham Act’s definition of “counterfeit
mark” because to ignore the second component would be to apply circular reasoning. The term
counterfeit mark is defined as “a counterfeit of a mark that is registered on the principal register
…” (Emphasis added) 15 U.S.C. § 1116 (d)(1)(B)(i). Such circular language presupposes the
court’s defining LSP’s souvenir guitars as counterfeit marks, for nowhere in the language of the
first component is there an elaboration on the meaning of counterfeit. Rather the definition of a
counterfeit mark is laid out in the second component of the definition; a counterfeit mark is a
spurious designation that is identical with or substantially indistinguishable from the trademark
in question. 15 U.S.C. § 1116 (d)(1)(B)(ii). Therefore a proper reading of what appears to be
two components separated by an “or” is actually one test separated by an “and” Thus, this court
must determine whether LSP’s souvenir guitars were a spurious designation, identical with or
substantially indistinguishable from the registered RIGGS ROCKER trademarks.
B. LSP’s Souvenir Guitars Are Not A Spurious Designation Of The RIGGS ROCKER,
Nor Are They Physically Or Visually Identical With Or Substantially
Indistinguishable From Its Trade Dress.
The requirement that a defendant “intentionally used a false mark that was identical to,
or substantially indistinguishable from, a plaintiff’s genuine mark,” can be further divided into
two components: (1) intentional use of a “spurious” mark, (2) that is identical to, or
substantially indistinguishable from, the plaintiff’s genuine mark. Due to a dearth of case law
defining the word “spurious,” courts rely on the definition of spurious from Black’s Law
Dictionary; “deceptively suggesting an erroneous origin; fake.” GMA Accessories, Inc., 765 F.
Supp. 2d at 472. Similarly, Thomas McCarthy uses the phrase “sham trademark that is an

33. 19
intentional and calculated reproduction of the genuine mark.” Thomas McCarthy, McCarthy on
Trademark § 25:10 (3d ed. 1997). Both definitions address an intent that is required in order to
satisfy the phrase “spurious mark” and thus succeed on a counterfeit claim.
Other classifications of “counterfeit” allude to the inclusion of knowledge as a
requirement. The court in Ford Motor Co. v. Heritage Mgmt. Grp., Inc. held “if a plaintiff
alleges trademark counterfeiting, he must also show that the defendant intentionally used the
mark knowing it was a counterfeit.” 911 F. Supp. 2d 616, 622 (E.D. Tenn. 2012). The latter
refining of “spurious” indicates that this court determine whether LSP manufactured the
souvenir guitars with (1) intent to counterfeit, or (2) knowledge that such action would result in
counterfeit. The presence of intent or knowledge is what distinguishes trademark infringement
from trademark counterfeit and must be established for a trademark counterfeit claim to
succeed.
1. LSP’s souvenir guitars are not a spurious designation of the RIGGS ROCKER
because Mr. Laredo did not have an intent to deceive consumers nor did he
have knowledge that his conduct could amount to an alleged infringement.
There is insufficient evidence to establish that LSP’s owner, Mr. Laredo, manufactured
the “souvenir guitars” with an intent to counterfeit a registered mark, or with knowledge that he
had infringed a registered mark. In Ford Motor Co., the plaintiff’s counterfeit claim was
established through defendants’ admission of intentionally producing precise trademark
counterfeits on goods they sold, as well as, intentionally creating nearly identical labels bearing
Ford’s registered mark. Ford Motor Co., 911 F. Supp. at 622. Several other courts have similarly
found defendants’ admission of intent to be determinative of trademark counterfeit. See Chanel,
Inc. v. Gordashevsky, 558 F. Supp. 2d 532, 538 (D.N.J. 2008) (“Defendant … [admitted] … that
he acted willfully and had knowledge of Chanel's ownership of the marks”), Lifted Research

34. 20
Grp., Inc. v. Behdad, Inc., 591 F. Supp. 2d 3, 7 (D.D.C. 2008) (“Defendant admits that it
intentionally used the Marks knowing they were counterfeit”), Wheel Specialties, Ltd. v. Starr
Wheel Grp., Inc., 918 F. Supp. 2d 688, 691 (N.D. Ohio 2013). (“[Defendant] admittedly sold
wheels bearing Custom Wheels' marks to customers at a lower rate than authentic Custom
Wheels' wheels”). As the court stated in Gucci Am., Inc. v. Duty Free Apparel, Ltd., “counterfeits
by their very nature cause confusion; indeed, confusing the customer is the whole purpose of
creating counterfeit goods.” 286 F. Supp. 2d 284, 287 (S.D.N.Y. 2003).
Where a court finds that a defendant intended to confuse a consumer as to the origin of
their counterfeit goods, counterfeiting is established. Ford Motor Co., 911 F. Supp. at 622.
Nowhere in the record does Mr. Laredo admit to intentionally manufacturing counterfeit goods,
and thus the facts of this case are distinguishable from the cases where trademark counterfeit was
established through a blatant admission by the defendant. Mr. Laredo had not intended to cause
confusion because the merchandise itself was called a “souvenir” and meant to be a keepsake of
the City of Cottonwood. Confusing the customer is the purpose of creating counterfeit goods, for
“one produces counterfeit goods in an apparent attempt to capitalize upon the popularity of, and
demand for, another’s product.” Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir.
1987). A designation of the product as “souvenir” would make it clear to any reasonable
consumer that the miniature guitar was only meant to be a symbol of something more – in this
case, the City of Cottonwood and its longstanding celebration of music via the annual
Countrywood Music Festival.
Mr. Laredo was not making an apparent attempt to capitalize upon the popularity of, and
demand for, the RIGGS ROCKER because Mr. Laredo’s only intention in manufacturing the
souvenir guitars was to create a popular trinket for Cottonwood’s COUNTRYWOOD Music

35. 21
Festival. Record 16. The star-shaped sound hole is a copy of the star on the Cottonwood flag,
and Riggs Houston is from Cottonwood. Id. at 4. It would be more accurate to say that Mr.
Houston was capitalizing upon the popularity of, and demand for, the imagery of the City of
Cottonwood in the same way that LSP did, in the sense that both the RIGGS ROCKER and the
souvenir guitars were inspired by the City of Cottonwood. The fact that Mr. Laredo chose to
make a miniature guitar is understandable given it was to be a trinket for a music festival,
particularly one that featured country music. Country music is a genre in which an acoustic
guitar is either the most prominently featured instrument or the only featured instrument in the
musical composition.
Furthermore, there is insufficient evidence to establish that Mr. Laredo had knowledge
that he was manufacturing merchandise that was a counterfeit of a registered trademark because
he was not being willfully blind. The court in Louis Vuitton S.A. found that “willful blindness is
knowledge itself.” 875 F.2d 584, 590 (7th Cir.1989). See Nike, Inc. v. Top Brand Co., 00 Civ.
8179(KMW), 2006 WL 2884437 (S.D.N.Y. Oct. 6, 2006) (“[t]he standard for willfulness is
whether the defendant had knowledge that [his] conduct represented infringement or perhaps
recklessly disregarded the possibility”). Louis Vuitton S.A. involved merchants who resold
counterfeit luggage, which they had cheaply obtained from a street peddler who had a history of
selling counterfeit luggage. The court found on the latter facts that the merchant’s willful
blindness had amounted to knowledge. Louis Vuitton, 875 F.2d at 590.
Unlike the actions of the merchants in Louis Vuitton S.A., Mr. Laredo’s good faith
decision to manufacture his souvenir guitars cannot be considered an equivalent form of willful
blindness amounting to knowledge. The merchants in Louis Vuitton S.A. knew that they were
buying from a street vendor with a history of selling counterfeit goods. It was willful blindness

36. 22
to overlook the fact that a cheaply priced, poor quality bag from that same vendor would have
also been a counterfeit good. It cannot be said that Mr. Laredo acted with the same level of
reckless disregard as the Louis Vuitton merchants did. Mr. Laredo saw the guitar in 2007 on
Next U.S. Music Icon before it had been registered as a trademark in 2008. Record 6. Aside
from the fact that the souvenir guitars incorporate a feature already in the public domain - the
star prominently featured on the Cottonwood flag - Mr. Laredo had no reason to believe that the
mark was registered given that it was like any other guitar.
2. LSP’s souvenir guitars, which are miniature versions of full-sized guitars, are
not identical with nor substantially indistinguishable from the RIGGS
ROCKER due to obvious differences in size, style, and color.
A counterfeit mark is a “false mark that is identical with or substantially
indistinguishable from the genuine mark.” Thomas McCarthy, McCarthy on Trademark § 25:10
(3d ed. 1997). Counterfeiting is further distinguishable from trademark infringement in that it is
narrower in scope and applies only to marks made to look identical to the actual mark. Id. This
distinction is elaborated upon in GMA Accessories, Inc. v. BOP, LLC, which noted that a
counterfeit mark requires a closer degree of similarity than is required for traditional trademark
infringement – it must at the very least be closer than the traditional standard for infringement
“colorable imitation.” 765 F. Supp. 2d 457, 471-472 (2011). The Lanham Act defines a
“colorable imitation,” as any mark which so resembles a registered mark “as to be likely to
cause confusion or mistake or to deceive.” 4 McCarthy on Trademarks and Unfair Competition
§ 25:10 (4th ed.) Following a likelihood of confusion analysis, this court should then further
inquire as to whether LSP’s “souvenir guitars” look identical to the RIGGS ROCKER.
The term “identical” means just that, for in regards to word marks, “it cannot be enough
that one word in the allegedly offending mark is the same with no reference to font, color,

37. 23
typeface, or context.” GMA Accessories, Inc. v. BOP, LLC, 765 F. Supp. 2d 457, 471-472
(2011) In GMA, the plaintiff and owner of a word mark, argued that one word of a multi-word
mark was enough to establish trademark counterfeit. The court however disagreed and further
found that the word marks were intended for entirely dissimilar purposes. Id. Therefore,
“identical with” not only implies a similarity of the marks appearance, but a similarity in its use
as well.
Similarly, in Kelly-Brown v. Winfrey, the court held that the font, color, and
capitalization of Kelly-Brown’s mark “Own Your Power” differed from the offending uses
made by defendants in a magazine cover, website, and at an event and did not constitute
trademark counterfeiting. 717 F.3d 295, 315 (2d Cir. 2013). After comparing Kelly-Brown’s
service mark with the logo at defendant’s event and the headline on the cover of the magazine,
the court concluded that the font “Own Your Power” was visibly different from the stylized
powder-blue letters that Kelly-Brown registered as a part of her mark. Id. at 314. While the
court recognized that Kelly-Brown’s counterfeit claim would carry more weight if the audience
solely encountered the mark aurally, the featured logos and backdrops displayed at the event
provided obvious visual differences, eliminating any possibility of identicalness.
Just as in GMA Accessories and Kelly-Brown, there are obvious visual differences
between the RIGGS ROCKER and the souvenir guitars. First, LSP’s souvenir guitars are
different in shape and size, since they are five inches and eleven inches, and therefore not
identical with the RIGGS ROCKER which is a full size guitar. Furthermore, the dimensions of
the star sound hole is more compressed with points that are fatter and shorter than the RIGGS
ROCKER. Record 17. Second, the souvenir guitars are different from the RIGGS ROCKER in
style, the sticker of an American flag on the side of the guitar is a nod to the fact that the

38. 24
souvenir was “made in America” and fundamentally different from the RIGGS Guitar American
guitar pick board. Id. Third, the souvenir guitars serve a different purpose than the RIGGS
ROCKER, which is an actual musical instrument, a full size guitar. The souvenir guitars are not
playable guitars and meant to be simple trinkets to commemorate the Countrywood Music
Festival and the City of Cottonwood’s longstanding country music tradition.
Lastly, the souvenir guitars have a different feel than the RIGGS ROCKER because the
souvenir guitars have a painted version of a cowhide design, whereas the RIGGS ROCKER has
actual cowhide on it. Id. at 4, 17. Moreover, the color scheme of the brown cowhide design on
the RIGGS ROCKER greatly differs from the white paint coating on the souvenir guitars. See
App. B. The RIGGS ROCKER employs a more heavily brown cowhide, whereas the souvenir
guitars have a prominent white paint coating. See App. A.
Additionally, the determination of whether a mark is a counterfeit of a registered
trademark is supported by evidence from an outside agency whose sole purpose is to identify
counterfeit goods; in this case, no such agency has determined that LSP’s souvenir guitars are
counterfeit of the RIGGS ROCKER. In Phillip Morris USA v. Jackson, a tribal smoke shop sold
counterfeit cigarettes which infringed on the manufacturer’s MARBORO LIGHTS trademark,
and the counterfeit determination was made by the Brand Integrity Department of Altria Client
Services. 826 F. Supp. 2d 448, 452 (E.D.N.Y. 2011). LSP’s souvenir guitars were inspected by
no such agency, and therefore there is insufficient evidence to show that LSP’s “souvenir
guitars were a spurious designation that is identical with or substantially indistinguishable from
the registered mark.
C. Given The Lack Of Case Law Clarifying The Meaning Of “Identical With” Or
“Substantially Indistinguishable From” Within The Lanham Act, This Court Can
Look To Patent Law’s Literal Infringement Doctrine And Find That LSP’s
Souvenir Guitars Are Not A Literal Infringement Of The RIGGS ROCKER.

39. 25
In order for there to be a patent infringement under patent law’s Literal Infringement
Doctrine there must be a literal infringement. If even one element of a patent’s claim is missing
from the accused product then there can be no infringement as a matter of law. Larami Corp. v.
Amron, 91 F.3d 166 (Fed. Cir. 1996). In Larami Corp., a toy water gun made by Larami was
identical to a toy water gun made by Amron’s in all aspects but one; the Larami gun had its
water chamber outside the gun, whereas the Amron water gun had its water chamber inside the
gun. The court found that Larami did not infringe on Amron’s patent because placement of the
water chamber outside the gun was an improvement on Amron’s patent and not a literal
infringement. Id.
This court may defer to Patent Law’s Literal Infringement Doctrine in a trademark
counterfeit context because for trademark counterfeit it must already be established that a
counterfeit mark be “identical with or substantially indistinguishable from the [genuine mark].”
15 U.S.C. § 1116(d)(1)(B)(ii). The application of the Literal Infringement Doctrine would
clarify the meaning of “identical with or substantially indistinguishable from” and remedy the
lack of case and statutory law surrounding trademark counterfeit.
LSP’s souvenir guitars are not a literal infringement on the RIGGS ROCKER because
more than one element of the RIGGS ROCKER is substantially distinguishable from the design
of the souvenir guitars. First, the souvenir guitars have no American flag on the pick board;
rather, the flag is painted on the face of the guitar. See App. B. Second, the souvenir guitars
have a music box attached, which have a unique mechanical design irrespective of the RIGGS
ROCKER. Record 17. Third, the souvenir guitars are five inches and eleven inches long as
opposed to the standard length of a full size guitar like the RIGGS ROCKER. Id.

40. 26
CONCLUSION
This Court should reverse the District Court finding that the RIGGS ROCKER was
entitled to trade dress protection because its trade dress is functional, and protection would
hinder marketplace competition. The trade dress is also not distinct because the RIGGS
ROCKER has not acquired secondary meaning and in the minds of the public does not identify
Mr. Houston or his goods in commerce as the source. There is also no trade dress protection
since there is no likelihood of confusion due to no evidence of actual confusion and a vast
difference between the two marks.
Furthermore, this Court should affirm the District Court’s finding that LSP’s souvenir
guitars are not trademark counterfeits because they were not spuriously manufactured to be
identical replicas of the RIGGS ROCKER. Instead, LSP’s souvenir guitars commemorate the
COUNTRYWOOD Music Festival and the City of Cottonwood’s longstanding country music
tradition.
Respectfully submitted,
TEAM W-12-024
ATTORNEYS FOR DEFENDANTS
SUBMITTED JANUARY 3, 2014

41. App. 1
TABLE OF APPENDICES
Appendix A: Exhibit A RIGGS ROCKER guitar App. 2
Appendix B: Exhibit B Laredo Specialty Products (LSP) Toy Guitar App. 3

42. App. 2
APPENDIX A

43. App. 3
APPENDIX B