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April 26, 1990


The opinion of the court was delivered by: Haight, District Judge:


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" plaintiff's product.

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."

At the hearing on the Order to Show Cause, plaintiff's counsel argued that the "Grande Baroque" line is the first or second best seller in the world and that the "Grande Baroque" design has come to be associated with the name "Wallace." Plaintiff seeks the protection of the trademark laws claiming that the defendant is infringing its unregistered trade dress.*fn1 Defendant concedes that the "20th Century Baroque" design is substantially similar to plaintiff's trade dress, in fact, defendant concedes that it was inspired by plaintiff's design; however, defendant contends that the "Baroque" style is not protected by the trademark laws because it is aesthetically functional. Defendant also argues that plaintiff will not prevail on secondary meaning and that there is no likelihood of confusion because it prominently displays its name in all its marketing.

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 Rogers v. Keene, 778 F.2d 334, 343 (7th Cir. 1985), the Seventh Circuit ruled that the term functional embraces the aesthetic: "Beauty is ...

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