Judge Tosses Sol de Janeiro Trade Dress Claim Against MCoBeauty, With Leave to Amend

Judge Edgardo Ramos of the United States District Court for the Southern District of New York issued the Sept. 30 ruling, finding that Sol de Janeiro had not adequately explained in its complaint why the packaging elements it sought to protect were nonfunctional — that is, not essential to how the products work and not offering a practical advantage.

The decision marks one step in a legal battle that began nearly two years ago over allegations that MCoBeauty copied the appearance of Sol de Janeiro's products. The court has allowed Sol de Janeiro until Oct. 20 to amend its complaint and revive the trade dress claim.

According to the ruling, the dismissal highlights the heavier burden brands face when trying to protect product appearance, even in cases where a court concludes they have sufficiently alleged a likelihood of consumer confusion.

Sarah Rosenberg, an intellectual property and brand protection attorney at Arnold & Porter, said she did not view the outcome as a win for MCoBeauty, describing it instead as the court permitting Sol de Janeiro to move forward.

Diana Palchik, a trademark lawyer and principal at Beauty Mark trademark consulting, agreed, calling the ruling "mostly a win for Sol de Janeiro." She noted that MCoBeauty had sought to have the lawsuit dismissed and that the dispute so far concerns only whether the case can proceed, not whether infringement or false advertising actually occurred.