in combination, do not speak audibly of the products' origin.
The size and shape of the products at issue are characteristic of the entire genre of hand-held makeup compacts. Certainly, it is difficult to imagine an "infinite variety" of meaningful alternatives that would not hamper the products' usefulness as portable makeup cases that fit in one hand. Cf. Essie Cosmetics, 808 F. Supp. at 958. In addition to the basic rectangular design of the compact as a whole, the arrangement of mirrors and makeup tins inside the compacts is equally nondistinctive. Plaintiff combines either a circular or rectangular mirror with a makeup tin of roughly the same shape. Nor do the colors or color combinations of plaintiff's compacts appear sufficiently unusual to produce a distinct association with Your Name Cosmetics in the minds of consumers. Finally, with respect to the color of the plastic cases, it strikes this Court as nonsensical to label the color black as arbitrary because many other options were available. Such a conclusion would be akin to according trade dress protection to a product's "plain brown wrapper," merely because it did not have to be brown.
The record also indicates that defendant does not design its own compacts or own its own design molds, but rather purchases the plastic cases for its compacts from independent manufacturers in the open market. Plaintiff directly acknowledges that "similar models of each of the components comprising the cosmetics packaging of Plaintiff can be purchased by other companies." Pl.'s Counter-Statement Under Rule 3(g), P 9. The structure of the market in which the parties operate reinforces the impression that Mana's makeup compacts incorporate a set of ordinary, widely available design elements that may be found in the products of numerous private label producers. Although it might be possible to achieve a distinctive combination of those components, plaintiff has not done so here.
b. Secondary Meaning
A product's trade dress has secondary meaning "when the purchasing public associates that dress with a single product or source, rather than only with the product itself." Essie Cosmetics, 808 F. Supp. at 958. It is not necessary for plaintiff to demonstrate that all purchasers associate the product with its producer; rather, plaintiff "need only show that a substantial segment of the relevant consumer group makes this connection." Coach Leatherware, 933 F.2d at 168 (citing Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1221 (2d Cir. 1987)). Factors relevant to the determination of secondary meaning include: (1) plaintiff's advertising expenditures; (2) consumer surveys linking the trade dress to a particular source; (3) sales success; (4) unsolicited media coverage; (5) attempts to plagiarize the trade dress; and (6) the length and exclusivity of the use. George Basch Co., Inc. v. Blue Coral, Inc., 968 F.2d 1532, 1536 (2d Cir.), cert. denied, 121 L. Ed. 2d 445, 113 S. Ct. 510 (1992).
There is no merit to defendant's initial objection that private label cosmetics products in general cannot acquire secondary meaning. Defendant argues that, because purchasers of such products affix their own brand labels before reselling them, individual retail consumers do not even know the names of the original producers. However, "it is not always the general public's understanding but -- depending upon the product -- often only a segment of consumers that need be examined." Centaur Communications, 830 F.2d at 1221. It is undisputed that plaintiff sells its products exclusively in the wholesale market to private label resellers. Cf. Essie, 808 F. Supp. at 959 (noting that class of consumers is narrower where private label producer does not compete with its own products in retail market). Accordingly, private label resellers who buy cosmetics products in the wholesale market comprise the relevant group of consumers in analyzing the secondary meaning of Your Name makeup compacts. See id. Plaintiff need only show that a "substantial segment" of that group "made the requisite association between the product and the producer." Centaur Communications, 830 F.2d at 1222.
As evidence of secondary meaning, plaintiff has submitted a single affidavit from a boutique owner who purchased private label cosmetics at trade shows in which both plaintiff and defendant participated. See Aff. of Jane Rosen, PP 1--2. The affidavit states that, while attending the Midwest Beauty Show in February, 1992, Rosen "passed by the Your Name booth and became very confused." Id. P 3. Rosen had extensive prior experience with Columbia's product line. See id. When she saw the Your Name Cosmetics booth, she "immediately thought that Your Name must be related to Columbia, for not only did the products seem the same, but were displayed in the same manner, as well." Id. Plaintiff also asserts in its complaint that Mana has spent over $ 3 million in advertising its products. See Compl. P 5. Plaintiff provides neither consumer surveys nor any information about the relative market share of the Your Name line, unsolicited media coverage, or the length of time that the Your Name compacts made exclusive use of the contested design.
This showing clearly fails to raise a genuine issue of material fact as to the existence of secondary meaning. Cf. Coach Leatherware, 933 F.2d at 169 (noting "vigorous evidentiary requirements" for proof of secondary meaning). Plaintiff's vague allegation about its gross advertising budget is minimally probative of secondary meaning. See McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1133 n.4 (2d Cir. 1979). Moreover, the Rosen affidavit actually undercuts plaintiff's claim. The affidavit indicates that Rosen's primary identification of plaintiff's products was with the Columbia name. Although this assertion may suggest some potential likelihood of confusion concerning the source of the parties' products, it does nothing to establish the secondary meaning of Your Name Cosmetics. Certainly, it is insufficient to show that a "substantial segment" of private label cosmetics purchasers associated plaintiff's products with their maker. See Centaur Communications, 830 F.2d at 1221.
Finally, it should be noted that the deficiencies of plaintiff's showing as to secondary meaning clearly distinguish this case from Essie Cosmetics. In Essie Cosmetics, the court granted a preliminary injunction prohibiting the defendant from marketing simple, unadorned fingernail polish bottles virtually identical to Essie's. See 808 F. Supp. at 959--60. The court concluded that, despite the absence of ornament in the bottles' design, their very simplicity could "speak of origin without explicit attribution." Id. at 957. In contrast to the present case, however, Essie submitted compelling evidence of the secondary meaning of the company's "'square, labelless little bottle.'" Id. at 955 (quoting "How to Polish Your Act," Mademoiselle, March 1991, at 78). Thus, the question in Essie Cosmetics was not whether the plaintiff's bottles were inherently distinctive, but rather the validity of the defendant's functionality defense. The court found only that Essie's bottles were not so functional as to exclude them from protection under the Lanham Act. See id. at 958.
Here, it is unnecessary to address defendant's alternative defense of functionality, because plaintiff has failed to raise a genuine issue on the threshold question of the compacts' inherent distinctiveness or their acquisition of secondary meaning in the marketplace. Similarly, since plaintiff's compacts are not entitled to trade dress protection under the distinctiveness prong of § 43(a), the Court need not consider whether any likelihood of confusion exists between plaintiff's and defendant's products. Having failed to satisfy an essential prerequisite for trade dress protection under § 43(a), summary judgment must be granted in favor of defendant on plaintiff's Lanham Act claim.
B. State Law Claims
1. Common Law Unfair Competition
Plaintiff also seeks damages and injunctive relief pursuant to the New York common law of unfair competition. New York law recognizes a claim of unfair competition for "palming off" goods as those of another. Kraft Gen. Foods. Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 135 (S.D.N.Y. 1993). "'The essence of unfair competition under New York common law is "the bad faith misappropriation of the labors and expenditures of another, likely to cause confusion or to deceive purchasers as to the origin of the goods."'" Id. (quoting Rosenfeld v. W.B. Saunders, a Div. of Harcourt Brace Jovanovich, Inc., 728 F. Supp. 236, 249--50 (S.D.N.Y.), aff'd, 923 F.2d 845 (2d Cir. 1990). A showing of secondary meaning is not required when a likelihood of confusion is shown to result from practices, such as "palming off, actual deception, [and] appropriation of another's property," which are "imbued with an odor of bad faith." Laureyssens v. Idea Group, Inc., 964 F.2d 131, 138 (2d Cir. 1992). Thus, New York law gives "true innovators . . . adequate recourse against free-riders." Id. at 139.
Plaintiff has failed to raise a genuine issue of confusion resulting from bad faith, at least on the record presented here. The Rosen affidavit suggests that a single buyer may have been confused about the source of Your Name products, but her primary familiarity with defendant's goods militates against any inference of palming off or intentional deception. The unusual dearth of evidence of secondary meaning in this case further undermines plaintiff's allegations of bad faith. The physical similarity of the parties' makeup compacts alone does not constitute sufficient evidence to withstand defendant's motion for summary judgment. The motion must therefore be granted with respect to plaintiff's common law unfair competition claim.
2. The New York Anti-Dilution Statute
Finally, plaintiff requests injunctive relief under the New York "anti-dilution" statute, New York Gen. Bus. Law § 368-d (McKinney 1984). That statute states:
Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark registered or not registered or in cases of unfair competition, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.
New York Gen. Bus. Law § 368-d. Neither competition between the parties nor a likelihood of confusion about the source of products is necessary to state a claim for dilution. See Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 624 (2d Cir. 1983).
It is well-established, however, that "'only those trade names which are truly of distinctive quality or which have acquired a secondary meaning in the mind of the public should be entitled to protection under the anti-dilution statute.'" Bristol-Myers Squibb, 973 F.2d at 1049 (quoting Allied Maintenance Corp. v. Allied Mechanical Trades, Inc., 42 N.Y.2d 538, 546, 369 N.E.2d 1162, 1166, 399 N.Y.S.2d 628, 633 (1977)). Thus, section 368-d "protects only extremely strong marks." Sally Gee, 699 F.2d at 625. In light of the above discussion, it is evident that summary judgment must also be granted in defendant's favor on plaintiff's claim under section 368-d.
For the reasons discussed above, defendant's motion for summary judgment is hereby granted in its entirety. Defendant's perfunctory request for sanctions pursuant to Fed. R. Civ. P. 11 is denied.
Dated: Brooklyn, New York
July 29, 1994
Carol Bagley Amon
United States District Judge
JUDGMENT - August 3, 1994, Filed
A memorandum and order of Honorable Carol Bagley Amon, United States District Judge, having been filed on July 29, 1994, granting defendant's motion for summary judgment pursuant to Fed. R. Civ. P. 56(c), it is
ORDERED and ADJUDGED that plaintiff take nothing of the defendant; and, that defendant's motion for summary judgment is granted.
Dated: Brooklyn, New York
August 2, 1994