The Scoop on What Van Leeuwen's $23.8 Million Case Means for Connecticut Businesses

Temperatures may be cooling down in Connecticut, but a recent case involving summer’s favorite treat—ice cream—should still be hot in intellectual property and business litigators’ minds.

The recent Eastern District of New York decision in Van Leeuwen Ice Cream LLC v. Rebel Creamery LLC, shows just how costly a trade dress dispute can become.  After finding that Rebel Creamery’s ice cream packaging infringed Van Leeuwen’s protected trade dress, the Court awarded, amongst other things, nearly $23.8 million to Van Leeuwen.  Although Van Leeuwen is not a Connecticut case, its lessons about trade dress, unfair competition, and the potential overlap with Connecticut Unfair Trade Practices Act (CUTPA) are highly relevant to Connecticut businesses.

How a Packaging Dispute Turned into a $23.8 Million Food Fight

Van Leeuwen Ice Cream started selling its “premium” ice cream Brooklyn in 2008 out of a pastel yellow truck.  The company grew and expanded to sell ice cream in grocery stores and has been sold in all fifty states since 2021.  Trial evidence showed that a successful design of Van Leeuwen’s packaging helped contribute to its success.

Rebel Creamery was founded in Utah in 2017 and sells ice cream to satisfy those on the ketogenic (“keto”) diet.  Its founders claimed they conceived of Rebel’s package design from December 2017 to early 2018, creating the design themselves using Adobe Illustrator software.  They testified that they had not seen Van Leeuwen’s packaging when designing the packaging for Rebel.

Van Leeuwen first encountered Rebel’s products in late 2018 or early 2019 and were “shocked” by the similarities between the packaging.  After seeing Rebel’s product gain a stronger foothold in the marketplace, Van Leewen decided to sue in April 2021.

Van Leeuwen did not claim that any one particular element of its branding made up the code of its commercial impression.  Rather, the asserted trade dress was a combination of elements: primarily pastel color palettes, monochromatic schemes from the lid through the pints, black script lettering, and an overall minimalist package design.  Van Leeuwen claimed that those elements, taken together, created a distinctive commercial impression.  The Court agreed, stating in no uncertain terms, “Van Leeuwen’s trade dress is strong.”

The Court found that Rebel employed all four of these elements in its packaging, “leaving a strikingly similar overall impression.”  The resulting findings were sweeping: Rebel Creamery was liable for trade dress infringement under the Lanham Act, trade dress infringement and unfair competition under New York common law, and trade dress dilution under New York statute.  Rebel was permanently enjoined from continuing to use the infringing packaging and required Rebel to redesign its products.  The Court also awarded Van Leeuwen a whopping $23.785 million in Rebel’s profits.

To be fair, Van Leeuwen had a lot going for it.  The Court found that, even though Rebel sold keto-friendly ice cream, both Rebel and Van Leeuwen appeal to the same mainstream customers—at least in part because consumers like to alternate between “better for you” brands like Rebel and “indulgent” brands like Van Leeuwen.  The products also ended up at the same grocery stores, often sitting on the same shelf.  And there was more than just a likelihood of confusion: there was strong evidence of actual confusion that was specifically cautioned by retailers.  But the real cherry on top? The Court did not mince words when it concluded, “[t]o be blunt, [Rebel’s] testimony concerning the development of Rebel’s packaging was clearly fabricated.”

In other words, once Van Leeuwen cleared the hurdle of defining its trade dress, the rest of the case was pretty close to a slam dunk.  The result was a jaw-dropping $23.8 million award and a stark warning to businesses thinking about how closely they can come to a competitor’s look without crossing the line.

Why This Matters to Connecticut Businesses

The implications of Van Leeuwen extend well beyond the freezer aisle. 

For businesses, the practical lesson is straightforward: when launching or redesigning a product, companies need to consider more than whether they have copied a competitor’s name or logo.  The overall look and feel of a product can matter, too.  Packaging, colors, fonts, layout, and other design elements may collectively create a distinctive commercial impression.  Even a design that was independently created can create litigation risk if it is sufficiently similar to a competitor’s protectable trade dress.

There is another reason Connecticut businesses should pay attention.  Connecticut courts have recognized that conduct constituting a Lanham Act violation may also support a claim under the Connecticut Unfair Trade Practices Act (CUTPA), a state law that protects consumers and businesses from deceptive or unfair business practices.  In other words, a trade dress dispute may not stop at federal trademark law.  Depending on the facts, the same conduct can potentially give rise to additional liability and remedies under Connecticut law, increasing the stakes of what might otherwise look like a straightforward packaging dispute.

While Van Leeuwen is not a Connecticut case, it offers a timely reminder that a company’s packaging, branding, and visual identity can be valuable business assets.  And when a competitor gets a little too close to that identity, the resulting dispute can be about much more than who has the prettier pint—it can become a significant intellectual property and business litigation.

Have a Case Like This? We’re Here to Help

HS&S litigates intellectual property and unfair competition matters for Connecticut businesses and commercial clients, including trademark enforcement, trade secret disputes, and business torts.  We help clients protect valuable intellectual property and business interests and defend against claims that threaten their products, brands, or competitive position.

Whether a dispute involves trade dress, marketplace confusion, or alleged unfair business practices under CUTPA, our attorneys work with clients to assess the risks, develop a litigation strategy, and pursue practical solutions.  If your business is facing an intellectual property or unfair competition dispute, HS&S can help you understand your options and protect what you have built.