The opinion of the court was delivered by: Haight, District Judge:
MEMORANDUM OPINION AND ORDER
This action is before the Court on plaintiff's Order to Show
Cause for a temporary restraining order. Plaintiff, Wallace
International Silversmiths, Inc., manufactures and sells
silverware, including a line of ornamented silverware called
"Grande Baroque." Plaintiff seeks to enjoin defendant,
Godinger Silver Art Co., Inc., from showing its new line of
silverware called "20th Century Baroque" at the Annual New
York Tabletop and Accessories Show. Plaintiff brings this suit
under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
Wallace International has been manufacturing and selling the
line of silverware called "Grande Baroque" since 1941. As the
name indicates, the silverware is ornate, massive and flowery:
it has indented, flowery roots and scrolls and curls along the
side of the shaft, and flower arrangements along the front of
the shaft. In a word, it is "Baroque." The defendant is about
to begin marketing a similar line of silverware called "20th
Century Baroque." Defendant's product is substantially similar
to plaintiff's: it has all the same shapes, including the
indented root, the curls and the flowers. The dimensions of
the shapes are slightly different and the overall look of the
product is decidedly cheaper looking. However, defendant
admits that the products are substantially similar. In fact,
defendant admits that it was "aware of" and "inspired by"
In addition, both plaintiff's and defendant's products are
substantially similar to the products of other non-party
manufacturers of silverware. See Defendant's Exhibit G. Oneida
sells a "Michelangelo" line of silverware that resembles the
parties' "Baroque" style. Lunt sells an "Eloquence" line, and
Reed & Barton an "El Greco" line, that resemble the silverware
at issue in this case. Perhaps the best description of all of
these lines of silverware is in Reed & Barton's advertisement
for "El Greco": "designed expressly for those who like their
sterling silver massive, elegant, richly carved, and detailed."
The rule in the Second Circuit is that a preliminary
injunction may issue where a party establishes both possible
irreparable injury and either (1) a likelihood of success on
the merits or (2) sufficiently serious questions going to the
merits to make them a fair ground for litigation and a balance
of hardships tipping decidedly in the movant's favor.
LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 74 (2d Cir.
1985) (Lanham Act § 43(a) action). The same criteria apply to a
temporary restraining order.
Section 43(a) of the Lanham Act establishes a federal law of
unfair competition regardless of whether the protected party
has a federally registered trademark. The Act prohibits,
inter alia, the "use in connection with any goods or services
. . . [of] a false designation of origin . . ., including words
or other symbols tending falsely to describe or represent the
same . . ." 15 U.S.C. § 1125(a).
A trade dress is subject to protection under the Lanham Act
if it is nonfunctional and has acquired secondary meaning.
LeSportsac v. K Mart Corp., supra, at 75.
In Pagliero v. Wallace China Co., the plaintiff, Wallace
China Co., had acquired a reputation for manufacturing
chinaware of superior quality. 198 F.2d 339 (9th Cir. 1952).
Wallace produced four lines of chinaware with different
patterns covering the surface of the plates. These lines were
called "Tweed", "Hibiscus", "Shadowleaf", and "Magnolia".
Defendant began manufacturing and selling the same lines of
chinaware: same patterns, same dimensions, and same names. The
only difference in the products was on the underside of the
china where the manufacturer printed its name.
The Ninth Circuit ruled that the chinaware was not subject
to the protection of the Lanham Act because the designs were
"functional." The Court wrote:
[Defendant's] use of the designs in question
cannot be enjoined even though it be assumed that
Wallace can establish secondary meaning for them.
. . . [W]here the features are "functional" there
is normally no right to relief. "Functional" in
this sense might be said to connote other than a
trade-mark purpose. If the particular feature is
an important ingredient in the commercial success
of the product, the interest in free competition
permits its imitation in the absence of a patent
or copyright. On the other hand, where the
feature or, more aptly, design, is a mere
arbitrary embellishment, a form of dress for the
goods primarily adopted for purposes of
identification and individuality and, hence,
unrelated to basic consumer demands in connection
with the product, imitation may be forbidden
where the requisite showing of secondary meaning
is made. Under such circumstances, since
effective competition may be undertaken without
imitation, the law grants protection.
Pagliero, supra at 343 (footnotes omitted). On the basis of
this legal standard, the Court concluded that the china designs
were not protected because "these designs are not mere indicia
of source. . . . On the contrary, to imitate is to compete in
this type of situation." Id. at 344. The Court concluded: "the
design being a functional feature of the china, we find it
unnecessary to inquire into the adequacy of the showing made as
to secondary meaning of the designs." Id.
In Vuitton v. Young, 644 F.2d 769, 773 (9th Cir. 1981), the
Ninth Circuit refined its definition of "functional". The Court
essentially eliminated the focus on the importance of the
design to the commercial success
of the product, and instead emphasized that a design is
non-functional if it is "a mere arbitrary embellishment, a
form of dress for the goods primarily adopted for the purposes
of identification and individuality." In Vuitton, the Court
ultimately concluded that the "LV" and flower-like symbols on
the Vuitton luggage were intended to indicate the origin of the
product. Defendant argued that the "LV" symbol had become
aesthetically functional, i.e. that the design was an aesthetic
requirement in order to compete in the market. The Court
concluded, however, that the "LV" symbol was not "that aspect
of [Vuitton's] products which satisfies its consumers' tastes
for beauty." Id. at 774. Instead, the Court found that the
insignia was a fanciful embellishment used to designate the
In Rogers v. Keene, 778 F.2d 334, 343 (7th Cir. 1985), the
Seventh Circuit ruled that the term functional embraces the
aesthetic: "Beauty is ...