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May 7, 1993



The opinion of the court was delivered by: CHARLES S. HAIGHT, JR.

HAIGHT District Judge:

 Plaintiff Home Shopping Club, Inc., ("HSC") commenced this Lanham Act suit against defendant Charles of the Ritz Group, Ltd., ("CORGL") in the United States District Court for the Middle District of Florida. HSC alleged causes of action for federal trademark infringement under 15 U.S.C. § 1114; use of a false designation of origin under 15 U.S.C. § 1125(a); and, under principles of pendent jurisdiction, causes of action based upon the common law and statutes of the State of Florida. HSC sought injunctive relief and money damages.

 CORGL interposed an answer and then an amended answer, denying liability and objecting to the venue. HSC moved for a preliminary injunction, but before the district judge in Florida reached the merits of that motion, he transferred the action to this Court.


 HSC is a Delaware corporation with its principal place of business in St. Petersburg, Florida. HSC is a self-described national marketer of consumer goods through "interactive retail television," telephone marketing, and national catalogue, telephone and mail order sales.

 Among other goods, HSC sells a wide variety of cosmetic products to customers in every state of the Union. For purposes of the definitions contained in 15 U.S.C. § 1127, HSC is a related company to and under common ownership with Home Shopping Network, Inc.; HSC Cosmetics, Inc.; HSC Lifeway Products, Inc.; and HSC Mail Order, Inc., all Florida corporations.

 While HSC markets its products in various ways, its primary effort takes place on television. Television viewers who subscribe to a cable television service may obtain, as part of their cable package, the Home Shopping Club Channel. To purchase products advertised on the HSC channel, a consumer must become a member of the Home Shopping Club, but the criteria for membership are not onerous. A club member places an order by telephoning the number displayed on the television screen while the particular product is being touted by one or more members of the HSC sales staff, referred to on the program as "hosts."

 On August 5, 1986, Lindow, Ltd., a Connecticut corporation, obtained United States Registration No. 1,403,688 from the United States Patent and Trademark Office for the trademark ESSENCE OF TIME. The ESSENCE OF TIME trademark is described in the registration as being for "cosmetics, namely, skin emollient, in Class 3 (U.S.C. 51)." It is undisputed that in 1991 HSC acquired by assignment from Lindow all rights to the ESSENCE OF TIME trademark and federal registration thereof, as well as the good will associated therewith.

 ESSENCE OF TIME skin cream is sold in a 2-ounce jar. It is a light brown color, although that color disappears when the cream is applied to the skin and rubbed into it. According to HSC's televised presentations, the cream is brown because it contains peat, a substance which is said to hold moisture and consequently makes the skin cream a good moisturizer, thereby retarding or preventing the outward manifestations of age. The HSC "hosts" advise the television audience, usually in breathless tones, of the stranger-than-fiction but nonetheless true circumstances giving rise to the cream. Some years ago in England the body of a man was found in what the HSC presentations refer as the "Lindow Moss Peat Bog." At first it was thought that the man was a recent murder victim, but scientific tests demonstrated that he had died 2,500 years ago. His fingernails, skin and hair were remarkably well preserved for a specimen so ancient; and it is claimed that the man was preserved by the peat in the bog. Some entrepreneur, presumably the incorporator of Lindow, Ltd., decided to add what the television presentations refer to as "unblemished Lindow peat moss" to skin cream and market the cream on the theory, in substance, that if the peat could preserve the Lindow Moss Peat Bog Man for 2,500 years, think what it can do for you.

 While the HSC television presentations claim that men also find ESSENCE OF TIME beneficial, the product's primary market is women who watch television and have reached that level of maturity when they begin to be concerned by the appearance of aging. HSC markets a number of products under the trademark ESSENCE OF TIME. There is the skin cream which has been described thus far. It is referred to in HSC printed advertisements as a "Night Creme" [sic] and is described as follows:

Proven effective in helping skin maintain a nourished, radiant glow. Smooth on at bedtime and feel the softness and smoothness of your skin after just one application.

 HSC marketed the ESSENCE OF TIME skin cream and other products bearing that name at least from November 1991, throughout all of 1992, and continues to market them today.

 CORGL is a Delaware corporation with its principal place of business in New York City. The company and its predecessors have since at least 1940 used the trademark Charles of the Ritz in connection with a line of cosmetics products, including skin care products. In the fall of 1991, the Charles of the Ritz skin care line was comprised of about sixteen products. The company also marketed a separate CHARLES OF THE RITZ REVENESCENCE line of about thirteen skin care products.

 In 1991, executives of defendant CORGL began to consider restoring its long-established cosmetic line to its more traditional marketing positioning, following a relatively brief time when the line was being directed to younger customers at lower prices. CORGL decided to once again market more expensive products through department stores, where floor displays could be mounted and beauty advisors be available to consult with customers. One of the chains of department stores CORGL dealt with was J.C. Penney. In a Penney intra-company bulletin, a sales executive advised all 440 Penney stores that on June 5, 1992, Penney would institute a national and local television campaign for Charles of the Ritz products, and place them on sale in all Penney stores. CORGL also markets its products through other department stores and certain independent drug stores.

 One of the products which CORGL began to market in June 1992 is a skin cream called TIMELESS ESSENCE. TIMELESS ESSENCE is described as a "Night Recovery Cream." TIMELESS ESSENCE is a white skin cream sold in a box containing a glass jar which holds 1.7 ounces of cream. One of the box panels contains printed material which says in part:

For the first time, Charles of the Ritz introduces an exclusive cream that gives your skin a second chance. A second chance to act, feel, and look younger -- virtually free of visible fine dry lines. Firmer looking. More vibrant, beautifully alive.
What makes TIMELESS ESSENCE so effective is MPG Compound (Methoxypropyl Gluconamide), a new patented molecule that penetrates within the upper epidermal layer to minimize cell build-up, allowing younger cells to travel through the layers of the epidermis to rise to the surface.

 At about this time CORGL ran television and magazine advertisements in which the benefits of TIMELESS ESSENCE were touted by a well-known entertainment personality, Kathie Lee Gifford.

 When HSC learned of this CORGL product, it claimed trademark infringement and sent CORGL a cease and desist letter, which the latter disregarded. This action followed.


 The central issue in a trademark infringement case is whether the junior user's use of the name gives rise to the likelihood of confusion among consumers of the junior user's goods or services.

 In the case at bar, CORGL is the junior user of a name for skin cream which couples use of the word "Essence" with a temporal reference.

 Likelihood of confusion is the particular target of the governing federal statute, the Lanham Trade-mark Act, 15 U.S.C. § 1051 et. seq., which "protects against false designation of origin and false description or representation." Thompson Medical Company, Inc. v. Pfizer, Inc., 753 F.2d 208, 212 (2d Cir. 1985) (footnote omitted).

 CORGL does not suggest that the trademark ESSENCE OF TIME that Lindow, Ltd. obtained for its skin cream in 1986 is not a valid one, or that HSC is not entitled, as Lindow's assignee, to protect and enforce that trademark.

 That is the central inquiry in alleged violations of both sections 32 and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a), (1988), which prohibit trademark infringement and false designation of origin, respectively. Referring to both sections of the statute, the Second Circuit has said recently: "The key issue in these types of trademark cases is whether an appreciable number of consumers are likely to be misled or confused about the source of the product in question." Nikon, Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir. 1993) (citing Lang v. Retirement Living Pub. Co., 949 F.2d 576, 579-80 (2d Cir. 1991)). The Second Circuit went on to say in Nikon:

It is well settled that in cases involving a claim under the Lanham Act the trier of fact must consider and balance the factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820 (1961) to determine the "likelihood of confusion." The Polaroid test examines eight factors, including the strength of the senior user's mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the senior user will bridge the gap between the products, the sophistication of buyers, quality of defendant's product, actual confusion, and the defendant's bad faith in adopting the mark. Polaroid, supra, 287 F.2d at 495. This list, however, is not exhaustive, nor is any one factor determinative. Each factor must be balanced with the others to determine the likelihood of confusion. Lang, supra, 949 F.2d at 580.


 I will consider the eight Polaroid factors in turn.

 (1) Strength of HSC's Mark

 To gauge the inherent distinctiveness of a mark, courts have used four categories: generic, descriptive, suggestive, and arbitrary or fanciful. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) (Friendly, J.). The second Circuit recently summarized these categories in W.W.W. Pharmaceutical Co., Inc. v. Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993):

A generic mark is generally a common description of goods and is ineligible for trademark protection . . . . A descriptive mark describes a product's features, qualities or ingredients in ordinary language, and may be protected only if secondary meaning is established. McGregor-Doniger Inc., 599 F.2d at 1131. A suggestive mark employs terms which do not describe but merely suggest the features of the product, requiring the purchaser to use "imagination, thought and perception to reach a conclusion as to the nature of goods. . ." Thompson Medical Co. v. Pfizer Inc., 753 F.2d 208, 213 (2d Cir. 1985) (quoting Stix Prods. Inc. v. United Merchants & Mfgrs., Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1986)). Fanciful or arbitrary marks are eligible for protection without proof of secondary meaning and "with ease of establishing infringement." Abercrombie & Fitch Co., 537 F.2d at 11.

 Judge Friendly considered the distinctions between suggestive terms on the one hand and fanciful or arbitrary terms on the other in Abercrombie & Fitch, 537 F.2d at 11 n. 12:

As terms of art, the distinctions between suggestive terms and fanciful or arbitrary terms may seem needlessly artificial. Of course, a common word may be used in a fanciful sense; indeed one might say that only a common word can be so used, since a coined word cannot first be put to a bizarre use. Nevertheless, the term "fanciful", as a classifying concept, is usually applied to words invented solely for their use as trademarks. When the same legal consequences attach to a common word, i.e., when it is applied in an unfamiliar way, the use is called "arbitrary."

 "Although a suggestive mark is entitled to registration without evidence of secondary meaning, suggestiveness is not necessarily dispositive of the issue of the strength of the mark." Lang, supra at 949 F.2d 581. Expanding further on that concept, the Second Circuit said in Gillette at 572:

In evaluating a mark's strength, a court is permitted to consider the mark's secondary meaning, that is, the extent to which the public has come to identify the mark with a particular product. Id.; McGregor-Doniger, 599 F.2d at 1132. However, lack of secondary meaning does not preclude a court from finding that an otherwise distinctive mark is strong. Id. at 1132. Cf. Two Pesos, Inc. v. Taco Cabana, Inc., U.S. , , 112 S. Ct. 2753, 2761, 120 L. Ed. 2d 615 (1992) (inherently distinctive trade dress may be protected from its inception).

 In the case at bar, the trademark ESSENCE OF TIME for a skin cream is not so inherently distinct or unusual as to be fanciful or arbitrary; nor does it sufficiently evoke the characteristics of the product to be descriptive. The mark is accordingly suggestive, and was entitled to the registration which it received without proof of secondary meaning.

 I think that this particular trademark for a skin cream is only moderately strong. According to DX 150, during the period November 19, 1991 through November 19, 1992 HSC shipped only 112,068 units of ESSENCE OF TIME skin cream, of which 3,132 were returned. These seem to me rather modest sales for a nation-wide marketing effort.

 Furthermore, I note from previous cases in this field that the word ESSENCE frequently appears in registered trademarks, for a wide variety of goods. See Hutchinson v. Essence Communications. Inc., 769 F. Supp. 541, 548 (S.D.N.Y. 1991) and cases cited.

 In Gillette the Second Circuit held that evidence of modest sales and extensive third-party use of one or more of the key words *fn1" supported a finding that the trademark in question had only moderate strength, deserving of trademark protection, but not entitled to the fullest protection available under the law. 984 F.2d at 573.

 I reach that conclusion with respect to HSC's trademark ESSENCE OF TIME for its skin cream.

 (2) Similarity Between the Marks

 The HSC mark is displayed primarily on the television programs by which HSC products are marketed. In a typical television offering, the phrase ESSENCE OF TIME SKIN CREME appears at the top of the picture. An open jar of the cream takes up the middle part of the picture; from time to time disembodied hands are observed dipping into the cream and rubbing it into the skin of the hands and wrists. To the left of the screen and in smaller letters, the distinctive HSC logo appears: those three letters set in the stylized rendition of a house or "home."

 CORGL markets its TIMELESS ESSENCE skin cream in a silver box with a black border. The box contains on one panel the words TIMELESS ESSENCE, printed in block capital letters. Directly below those two words, the phrase "Night Recovery Cream" appears, also in block capitals but of smaller size lettering. There is then a space, followed by the phrase in script and with initial capital letters only: "Charles of the Ritz." Along the ...

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