The U.S. Court of Appeals for the Second Circuit recently dismissed an appeal from Zuru Inc., determining that the company’s Third-Generation figurines fell under a prior preliminary injunction against Lego’s Minifigure. The ruling highlights the nuanced application of trademark law, emphasizing the difficulty of establishing consumer confusion and the necessity of sustained oversight in intellectual property conflicts.
Lego’s legal action against Zuru originated in 2019, with the company asserting that Zuru’s First-Generation toys violated its copyrights and trademarks. A Connecticut district court issued a preliminary injunction, prohibiting Zuru from selling figurines deemed substantially similar to the Minifigure or likely to mislead consumers. This order was later affirmed by the U.S. Court of Appeals for the Federal Circuit.
Subsequent releases of Second- and Third-Generation figurines prompted renewed litigation. The district court concluded that the Third-Generation designs qualified under the injunction, citing both visual resemblance and the potential for consumer misunderstanding. The Second Circuit initially sent the case back, directing the district court to apply the “more discerning observer test” to evaluate similarity.
This test, which eliminates non-protectable design elements, requires courts to focus on the core attributes defining a trademark. The district court highlighted features such as the stud projection on the Minifigure’s head and the c-shaped hands as critical identifiers. Expert analysis confirmed Lego’s design was distinctive, while Zuru’s evaluation was deemed inadequate.
The Second Circuit upheld the district court’s determination that the Third-Generation figurines posed a likelihood of confusion, citing factors such as overlapping markets, the strength of Lego’s brand, and Zuru’s alleged intent to circumvent protections. Lego’s trademark, supported by over $200 million in advertising and 120 million sold figures, was deemed robust enough to warrant legal safeguards.
The court also noted that the injunction’s scope already encompassed the Third-Generation designs, rendering the appeal moot. By dismissing the case for lack of jurisdiction, the Second Circuit underscored the importance of proactive trademark monitoring. Businesses must ensure their products do not infringe on existing trademarks, as even minor design adjustments can lead to legal complications.
For entities managing trademark portfolios, this case illustrates the value of rigorous design scrutiny and continuous oversight. Confusability extends beyond legal thresholds, representing a tangible risk that requires strategic attention.
IP Defender offers real-time monitoring of national trademark databases, identifying potential conflicts and infringements across 50+ jurisdictions, including the EU, the U.S., and Australia. Its focus on persistent surveillance aligns with the growing need to safeguard intellectual property in an increasingly dynamic marketplace.