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September 18, 1984

LESPORTSAC, INC., Plaintiff, against K MART CORPORATION, Defendant.

The opinion of the court was delivered by: MCLAUGHLIN


McLAUGHLIN, District Judge

Following a hearing in this action, the Court issued a memorandum on July 11, 1984 finding that defendant was infringing plaintiff's trademark and trade dress for lightweight nylon luggage; a preliminary injunction was entered on July 13, 1984. Defendant now moves for an order modifying the preliminary injunction to allow it to sell the luggage in question; and plaintiff cross-moves to broaden the injunction. *fn1" For the reasons developed below, defendant's motion is denied and plaintiff's cross-motion is granted.

 Defendant's Motion to Modify the Injunction

 Defendant requests that the preliminary injunction be modified to permit it to sell the enjoined bags if a hangtag is attached which states prominently:

 di paris sac



 Defendant contends that attaching this label would remove the likelihood of confusion that prompted the Court to issue the preliminary injunction.

 The Court has reviewed the proceedings to date in this action, the memorandum of July 11, the facsimile of the tag defendant proposes to use and the memoranda submitted with respect to this motion. Based upon that review, the motion is denied. K Mart's contention that adding a hangtag would eliminate the likelihood of confusion is not convincing, and the cases it relies upon for that argument are distinguishable.

 In Sears, Roebuck & Co. v. Stiffel Company, 376 U.S. 225, 11 L. Ed. 2d 661, 84 S. Ct. 784 (1964), the Supreme Court recognized, in dictum, that labeling or "other precautionary steps" may prevent consumer confusion as to the source of a product. Id. at 232. Sears, Roebuck, however, was a patent case, and as the Court recognized in Truck Equipment Service Co. v. Fruehauf Corp., 536 F.2d 1210 (8th Cir. 1976), "[t]he protection accorded by the law of trademark and unfair competition is greater than that accorded by the law of patents. . . ." Id. at 1215.

 LeSportsac, Inc. v. Dockside Research Inc., 478 F. Supp. 602 (S.D.N.Y. 1979), is similarly distinguishable. The presence of a hangtag in that case was just one of the factors leading to denial of a preliminary injunction. Id. at 609. Defendant's bag also had defendant's mark sewn prominently into the bag. In the instant case, however, K Mart's mark appears on the bag only in the repeating elliptical logo. I have previously indicated that K Mart's use of the repeating logo was a factor supporting the granting of the preliminary injunction. Accordingly, defendant's motion to modify the preliminary injunction is denied.

 Plaintiff's Motion to Broaden the Injunction

 Plaintiff cross-moves to broaden the injunction to prohibit defendant from selling its heavyweight nylon knapsack, Style No. 9995, which allegedly infringes plaintiff's knapsack, model 7192. *fn3" The Court has already enjoined defendant from selling a lightweight version of the same knapsack. While K Mart correctly points out that there are more dissimilarities between the two bags presently in question than between K Mart's lightweight knapsack and that of plaintiff, the Court nevertheless believes there is still a likelihood of confusion between the two bags.

 Defendant's heavyweight knapsack contains the same repeating elliptical logo present on the previously-enjoined bags, as well as the non-functional hollow rectangular zipper pulls that the Court has held are part of plaintiff's protectible trade dress. Additionally, the location of the repeating elliptical logo -- on the nylon trim just above a zipper -- is identical to that on plaintiff's bag. As the Second Circuit has repeatedly stated, "it is the 'combination of features as a whole rather than a difference in some of the details which must determine whether the competing product is likely to cause confusion in the mind of the public." Harlequin Enterprises, Ltd. v. Gulf & Western Corp., 644 F.2d 946, 949 (2d Cir. 1981) (quoting Perfect Fit Industries, Inc. v. Acme Quilting Co., 618 F.2d 950, 955 (2d Cir. 1980).

 Once again, comparison of the bags "creates a clear impression that defendant deliberately copied the distinctive features of plaintiff's bag." Memorandum and Order of July 11, 1984, at 7-8. The Second Circuit's position on this practice is clear: "Evidence of conscious imitation is pertinent because the law presumes that an intended similarity is likely to cause confusion. " Id. (citing Perfect Fit Industries, Inc. v. Acme Quilting Co., supra, 618 F.2d at 954; RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1060 (2d Cir. 1979); Harold Ritchie, Inc. v. Chesebrough-Pond's, Inc., 281 F.2d 755, 758-60 (2d Cir. 1960)).

 Accordingly, plaintiff's motion to broaden the preliminary injunction is granted. It is hereby ORDERED that:

 (1) the injunction issued July 13, 1984 is amended so that defendant is enjoined from selling its heavyweight knapsack, Style No. 9995; and

 (2) the bond in this action, previously set at $ 250,000, shall be increased to $ 400,000, to be posted not later than 5:00 p.m., September 21, 1984.

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