products. However, Dr. Barak also directed the parties' attention to the studies of Michael Ray, a Stanford University researcher who is a recognized leader in the subject of low involvement theory and who recently published an article pointing out that analgesics are a prime example of "low involvement" products.
In assessing Dr. Barak's testimony, the Magistrate Judge credited the plaintiff's theory that analgesics taken for a headache entail low-involvement purchasing (RR at p.30). However, the Magistrate Judge went on to note that "it is questionable whether a purchaser of an analgesic with a sleep aid involves the same low involvement thought processes," and concluded that Dr. Barak's testimony did not sufficiently support the latter argument (RR at p.30).
The Court is aware that there is no "bright line" rule in cases such as these. The legal effect of labeling a product with its manufacturer's name "depends or may depend on both the prominence of the label and the type of product" ( Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1446 [Fed. Cir. 1984]). "A party is not necessarily or automatically immunized by affixing its own name or trademark to the product" (id. at 1147).
Purchases such as microwave ovens (id.), electric ranges ( Tappan Co. v. General Motors Corp., 380 F.2d 888 [6th Cir. 1967]), and hi-fi loudspeakers (Bose Corp. v. Linear Design Labs, Inc.), 467 F.2d 304 [2d Cir. 1972]), are expensive items and ordinary consumers exercise much more discriminating care before buying. Consumers who spend $ 100 an ounce on perfume exercise care before parting with their money ( Charles of the Ritz Group v. Quality King Distrib., supra, 832 F.2d at p. 1323).
On the other hand, consumers buying sour cream or cookies often take little notice of a maker's name which is plainly evident to the purchaser's eye ( Kraft General Foods, Inc. v. Friendship Dairies, 19 U.S.P.Q.2d 1691, 1991 WL 149755 [S.D.N.Y. June 26, 1991] [Conboy, J.]; Venn v. Goedert, 319 F.2d 812, 816 [8th Cir. 1963]). "Common sense dictates that price is the crucial factor in ascertaining the depth of attention the ordinary purchaser is likely to apply to a given purchase" ( Brown v. Quiniou, 744 F. Supp. 463, 473 [S.D.N.Y. 1990]; see Hasbro Inc. v. Lanard Toys, Ltd., supra, 858 F.2d at p. 79). The products sold by both the plaintiff and defendant are inexpensive OTC analgesics with a sleep aid, which are not major expenditures for most purchasers when buying the 24-caplet or tablet size (see Toys R Us, Inc. v. Canarsie Kiddie Shop, Inc., supra, 559 F. Supp. at p. 1200). Where a product costs less than $ 5, purchasers have been characterized as casual buyers, likely to devote less time and attention to making a decision to purchase the item (see RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1060 [2d Cir. 1979]; Shen Mfg. Co., Inc. v. Suncrest Mills, Inc., 673 F. Supp. 1199, 1205 [S.D.N.Y. 1987]).
The Court finds that an OTC analgesic with sleep aid is more of a "grab-off-the-shelf" product, although with an admitted increase in the degree of care exercised by the general consuming public. Although far from overwhelming, the Court finds the evidence of"sophistication of the buyer" as support for a finding of likelihood of confusion to favor Bristol-Myers.
V. ASSESSMENT OF THE "POLAROID" FACTORS
The determination of whether a likelihood of confusion has been established is a complex one, for there clearly are factors cutting both ways (see, for example, Toys R Us, Inc. v. Canarsie Kiddie Shop, Inc., supra, 559 F. Supp. at p. 1200). The Bristol-Myers' evidence of actual confusion was less than persuasive. However, the evidence, taken cumulatively, "does allow an inference that there is some actual confusion as to source in the marketplace caused by the similarity of the rival trade dresses," and the Court draws such an inference ( Kraft General Foods, Inc. v. Friendship Dairies, 19 U.S.P.Q.2d 1691, 1991 WL 149755 [S.D.N.Y. June 26, 1991] [Conboy, J.]).
The Court finds, after considering all of the Polaroid factors, that the defendant's use of the TYLENOL PM trade dress does create a likelihood of confusion for an appreciable number of consumers. In reaching this decision, the Court places primary importance on the strength of the EXCEDRIN PM trade dress, the similarity of the two trade dresses, the directly competitive nature of the products offered, the established fact of intentional copying by McNeil, and the lack of "deliberate and measured product selection by consumers" in a supermarket or pharmacy environment (see Polaroid Corp. v. Polarad Electronics Corp., supra, 287 F.2d 492 [2d Cir.], cert. denied, 368 U.S. 820 ; Kraft General Foods, Inc. v. Friendship Dairies, supra). Accordingly, the Court grants the plaintiff's motion for a preliminary injunction based upon the foregoing violations of the Lanham Act.
VI. THE REMAINING STATUTORY CLAIMS
A. The Illinois "Anti-Dilution" Statute
In light of the fact that "Illinois courts have consistently held that the protections of the Anti-Dilution Statute are unavailable to competitors" ( EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 746 F.2d 375, 380 [7th Cir. 1984]), the Court confirms the Magistrate Judge's finding that Bristol-Myers cannot claim protection under the Illinois Anti-Dilution statute (Ill. Rev. Stat. ch. 140 para. 22 [Smith-Hurd 1989]; RR at p. 83).
B. The New York "Anti-Dilution" Statute
The plaintiff also asserts a cause of action under New York Gen. Bus. Law § 368-d (McKinney 1984). This "anti-dilution" statute provides for injunctive relief for infringement of registered or unregistered marks or in cases of unfair competition, where there is likelihood of injury to business reputation or of dilution of the "distinctive" quality of a mark or trade name. Entitlement to section 368-d protection is predicated upon a showing of: (1) the existence of a mark or name "truly of distinctive quality" or which has attained a secondary meaning; (2) likelihood of dilution of that mark; and, (3) predatory intent of the defendant (see Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 624-26 [2d Cir. 1983] [citations omitted; emphasis in original]). To establish an anti-dilution claim, the plaintiff's mark "must be a mark of sufficient distinction to warrant the statute's special protection" ( Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231, 248 [2d Cir. 1983]). This Court has previously applied § 368-d to a trade dress infringement (see Tripledge Products, Inc. v. Whitney Resources, Ltd., supra, 735 F. Supp. 1154, 1165 [E.D.N.Y. 1990]).
It is interesting to note that the New York General Business Law which encompasses these various unfair competition or deceptive practices statutes is being fashioned in the federal courts where such causes of action are pendent to claims brought under the Lanham Act.
While there is varied authority in the federal district courts for the Southern and Eastern Districts of New York with respect to the applicability of § 368-d in cases of direct competition (see, e.g., Aris Isotoner Gloves, Inc. v. Fownes Bros. & Co., 594 F. Supp. 15 [S.D.N.Y. 1983]; Playboy Enterprises, Inc. v. Chuckleberry Pub., 486 F. Supp. 414 [S.D.N.Y. 1980]; Ives Laboratories, Inc. v. Darby Drug Co., 455 F. Supp. 939 [E.D.N.Y. 1978], aff'd on other grounds, 601 F.2d 631 [2d Cir. 1979]; but see L.P. Lehmann Co. v. Polk's Modelcraft Hobbies, Inc., 770 F. Supp. 202 [S.D.N.Y. 1991]; LeSportsac, Inc. v. K Mart Corp., 607 F. Supp. 183 [E.D.N.Y. 1984], aff'd on other grounds, 754 F.2d 71 [2d Cir. 1985]; Vitabiotics, Ltd. v. Krupka, 606 F. Supp. 779 [E.D.N.Y. 1984]), the Second Circuit has not squarely addressed the question.
In Mead Data Cent., Inc. v. Toyota Motor Sales, 875 F.2d 1026, 1030 (2d Cir. 1989), the Second Circuit stated that "as section 368-d expressly states, a plaintiff need not show either competition between its product . . . and that of defendant . . . or a likelihood of confusion as to the source of the goods . . ." This language does not appear to imply that § 368-d is inapplicable where there is direct competition. However, the Court finds the following language of Mead Data instructive:
"the brief legislative history accompanying section 368-d describes the purpose of the statute as preventing 'the whittling away of an established trade-mark's selling power and value through "its" unauthorized use by others upon dissimilar products '" (1954 N.Y. Legis. Ann. 49) (emphasis supplied).
The legislative history, therefore, implies that § 368-d does not apply to products that are similar or competing.
The Court also looks to the New York State Court of Appeals decision in Allied Maintenance v. Allied Mechanical, 42 N.Y.2d 538, 399 N.Y.S.2d 628, 632, 369 N.E.2d 1162 (1977), where, in dictum, the Court stated:
"The evil which the Legislature sought to remedy was not public confusion caused by similar products or services sold by competitors, but a cancer-like growth of dissimilar products or services which feeds upon the business reputation of an established distinctive trademark or name."