discussion. Cigarettes are not inherently associated with cowboys or the West. Accordingly the trade dress is arbitrary or fanciful, and at the upper end of the strength scale. Furthermore, the duration and extent of the MARLBORO campaign and its commercial success are sufficient to establish a powerful secondary meaning, were that required.
This factor weighs in Philip Morris's favor.
2. Degree of Similarity Between the Two Trade Dresses
GUNSMOKE's trade dress is similar to that of MARLBORO in respect of the three key aspects discussed supra. One of the MARLBORO line of cigarettes displays a picture of a cowboy on the pack; so do the GUNSMOKE packs. GUNSMOKE ads feature the phrase "New Man in Town," a phrase evocative of the Marlboro Man. One GUNSMOKE ad welcomed the consumer to "Gunsmoke Country," equally evocative of "Marlboro Country." While that particular ad, appearing in a trade publication, has apparently not been repeated, counsel for Star declined at oral argument to foreswear using the "Gunsmoke Country" phase in the future.
In addition, GUNSMOKE cigarettes are sold in packs the predominant color of which is red, as are MARLBOROs. The typeface used for the word "GUNSMOKE" on the packs is similar to that used for the word "MARLBORO" on those packs.
Counsel for Star stress differences in the aspects of the cowboys. The MARLBORO cowboys, appearing in photographs, are clean-shaven, wholesome-appearing, and unarmed. The GUNSMOKE cowboy, appearing in an artist's sketch, is slit-eyed, messily unshaven, brandishes a rifle, and projects an air of menace. Star also says that it did not copy all the details of the MARLBORO pack and that other brands use packs or boxes that are predominantly red in color. These points may be conceded, but they do not materially detract from the overall similarity of the trade dresses. In that regard, I reject Star's contention that the advertising phrases "New Man in Town" and "Gunsmoke Country" proclaim to consumers with sufficient clarity that GUNSMOKE is an entirely different and competing product. A competitor may use another product's trade name for the purpose of comparative advertising, so long as the advertising claims are not false. See Castrol, Inc. v. Quaker State Corp., 977 F.2d 57 (2d Cir. 1992). Star's proclamation on vans making deliveries to distributors of GUNSMOKE's superiority over MARLBORO is a legitimate form of comparative advertising. But the packaging and print advertisements, directed at retail consumers, cannot be so characterized. They can readily be regarded as efforts to trade upon the consumers' subliminal awareness of MARLBORO.
The similarities between the trade dresses of MARLBORO and GUNSMOKE weigh in Philip Morris's favor.
3. Proximity of the products
The products are identical.
That is also a factor weighing in Philip Morris's favor on the likelihood of consumer confusion.
4. Bridging the Gap
This Polaroid factor seeks to protect the senior user's interest in being able to enter a related field at some future time. Lois Sportswear, Inc. v. Levi Strauss & Co., 799 F.2d 867, 874 (2d Cir. 1986). It is not a relevant consideration in the case at bar.
5. Actual Confusion
On this motion Philip Morris offers no evidence of actual confusion, either anecdotal or by consumers' surveys. The only evidence directly addressing the issue comes from Star, which produced two letters from consumers apparently reflecting an awareness that the products were different.
Nonetheless, in the circumstances of this case I decline to draw an inference against Philip Morris based on the lack of proof of actual confusion. Where, as in the instant case, the junior user's product has been on the market a relatively short time, lack of proof of actual confusion does not warrant an inference against the senior user on the issue of probable confusion. Hasbro, Inc. v. Lanard Toys, 858 F.2d 70, 78 (2d Cir. 1988); Jordache Enterprises, Inc. v. Levi Strauss & Co., 841 F. Supp. 506, 518 (S.D.N.Y. 1993).
In addition, there is sufficient evidence in the record from which to infer that Star intentionally copied Philip Morris's MARLBORO trade dress. That circumstance justifies a presumption of confusion, even in the absence of actual proof. Perfect Fit Industries, Inc. v. Acme Quilting, Inc., 618 F.2d 950, 954 (2d Cir. 1981). A "reasonable likelihood" of consumer confusion entitles the senior user to equitable relief, although there is no proof that particular purchasers were actually deceived. Mishakawa Rubber & Woolen Manufacturing Co v. S.S. Kresge Co., 316 U.S. at 204.
6. Star's Good Faith
The junior user's good faith in selecting a trade name, mark or dress is a significant factor because the granting or withholding of injunctive relief turns upon principles of equity.
"Evidence of intentional copying by a junior user may be indicative of an intent to create a confusing similarity between the products." Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1044 (2d Cir. 1992).
In his affidavit Williams, Star's president, describes his desire to take advantage of the current commercial popularity of all things Western. Williams concedes his familiarity with MARLBORO cigarettes and that brand's western motif, but says he intends GUNSMOKE cigarettes to compete with MARLBORO not to imitate them. He describes the manner in which he came up with the name "GUNSMOKE" for a cigarette; a word inspired by a personal hunting incident, and also reminiscent in William's mind of the popular television program of some years ago (starring James Arness as Marshal Matt Dillon). Williams describes the steps leading up to the artistic creation of the cowboy drawing used as part of GUNSMOKE trade dress.
These protestations of good faith are all very well as far as they go. But they do not go very far. They fall well short of explaining why Star chose to associate a cigarette with a cowboy, and to embark upon an advertising campaign whose slogans closely resemble Philip Morris's.
The present record contains evidence from which a factfinder could without difficulty draw the inference that Star acted with "an intent to create a confusing similarity between the products." Thus this Polaroid factor also weighs in Philip Morris's favor.
7. Quality of Defendant's Product
There is no evidence in the record concerning the precise blends, mixes or characteristics of the tobaccos used in these two brands of cigarettes. Philip Morris has not attempted to show that the GUNSMOKE brand is a distinctly inferior product. Presumably Star would not concede that to be the case. Assuming arguendo that the quality of GUNSMOKE cigarettes is as good as that of MARLBOROs, there is authority for the proposition that the good quality of the alleged infringer's product actually may increase the likelihood of confusion as to source. Lois Sportswear U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d Cir. 1986). I think that proposition applies to the case at bar, and accordingly conclude that this factor favors Philip Morris.
8. Sophistication of Buyers
It is generally held that unsophicated consumers in the relevant market "aggravate the likelihood of confusion." Hasbro v. Lanard Toys, Ltd., 858 F.2d 70, 78 (2d Cir. 1988). Nevertheless, it is also recognized that the sophistication of consumers, while usually militating against a finding of a likelihood of confusion, "might on occasion increase the likelihood of confusion, depending upon the circumstances of the market and the products." Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1228 (2d Cir. 1987).
In the case at bar, the relevant consumers are purchasers of cigarettes at retail. That is to say, we are not dealing with distributors of cigarettes, who presumably know from whom they purchase their inventories.
One does not immediately think of cigarette buyers as particularly sophisticated as a group. But the remarkable commercial success of Philip Morris's MARLBORO brand indicates that a very large number of regular consumers view the MARLBORO trade dress -- the cowboy transformed into the "Marlboro Man" inhabiting "Marlboro Country" -- with sufficient approval to influence their purchasing decisions. And if one characterizes that sort of consumer decision making as "sophisticated", then it is a form of sophistication that actually increases the likelihood that these consumers would be confused by GUNSMOKE's similar trade dress. Compare Lois Sportswear U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d at 875 ("We believe that it is a sophicated jeans consumer who is most likely to assume that the presence of appellee's trademark stitching pattering on appellant's jeans indicates some sort of association between the two manufacturers. Presumably it is these sophicated jeans buyers who pay the most attention to backpocket stitching patterns and their 'meanings.'") I find that in the circumstances of the case, this factors favors Philip Morris.
* * * * *
I conclude that Philip Morris has demonstrated the likelihood of succeeding on its Lanham Act claim that the trade dress designed by Star for GUNSMOKE cigarettes infringes upon the trade dress of MARLBORO cigarette. I base that conclusion upon the likelihood that the similarities in trade dress will give Star an unfair advantage in the market place through consumers' confusion, perhaps subliminal, between the two brands; and consumer's association, again perhaps subliminal, of Star's brand with that of Philip Morris.
I further conclude that consideration of the Polaroid factors increases the likelihood of confusion, and hence the likelihood that Philip Morris will succeed on its Lanham Act claim.
(b) Irreparable Harm
Philip Morris has demonstrated the likelihood of success on the merits of its Lanham Act Claim. Accordingly I need not reach the second prong of the standard governing the issuance of a preliminary injunction. However, I must consider whether Philip Morris has demonstrated irreparable harm, since that is a requisite element for obtaining a preliminary injunction under either prong of the standard.
It is well settled that "in the preliminary injunction context, a showing of likelihood of confusion as to source or sponsorship establishes the requisite likelihood of success on the merits as well as risk of irreparable harm." Standard & Poor's Corp. v. Commodity Exchange, Inc., 683 F.2d 704, 708 (2d Cir. 1982). Such circumstances give rise to a logical presumption that the senior user will be harmed in the market place. Because the value of the harm resulting from consumer confusion is difficult to quantify, "irreparable injury will almost always be found when there is a high probability of confusion." Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc., 486 F. Supp. at 429. See also LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 79 (2d Cir. 1985) ("Likelihood of confusion is itself strong evidence that in the absence of an injunction [plaintiff] might face irreparable harm.").
An infringement plaintiff's significant delay in applying for injunctive relief "tends to neutralize any presumption that infringement alone will cause irreparable harm pending trial, and such delay alone may justify denial of a preliminary injunction." Citibank, N.A. v. Citytrust, 756 F.2d 273, 276 (2d Cir. 1985).
Applying these principles to the case at bar I conclude that Philip Morris has made the requisite showing of irreparable harm.
I further conclude that Philip Morris sought a preliminary injunction with reasonable dispatch after becoming aware of the scope and nature of Star's marketing strategies. Accordingly there is no basis for rebutting the presumption that Philip Morris will suffer irreparable harm as a result of Star's infringing trade dress.
The State Law Anti-Dilution Claim
Philip Morris also asserts a claim under New York General Business Law § 368-d. The statute entitles a party to injunctive relief where there is a "likelihood of dilution of the distinctive quality of a mark or a trade name... notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services."
To sustain a claim under the statute, the senior user must show that: (1) its trademark, trade name or trade dress is either distinctive or has acquired secondary meaning; (2) the similarity between its mark and the junior user's mark results in a "whittling down" of the identity or reputation of the senior user's mark or dress; and (3) the junior user acted with "predatory intent." McDonald's Corp. v. McBagel, Inc., 649 F. Supp. 1268, 1280 (S.D.N.Y. 1986 (citing cases); Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 625-26 (2d Cir. 1983).
My findings and conclusions with respect to Philip Morris's Lanham Act claim also serve to demonstrate its entitlement to a preliminary injunction under the New York statute. An injunction will issue on the basis of that statute as well.
Rule 65(c), Fed.R.Civ.P., provides that no preliminary injunction shall issue except upon the giving of security by the movant, "in such sum as the court deems proper for the payment of such costs and damages as may be incurred or suffered by any party who is found to be wrongfully enjoined or restrained."
It is clear that the issuance of a preliminary injunction, bringing to a halt the present forms and expressions of Star's efforts to market GUNSMOKE cigarettes, will have an adverse economic impact upon Star. The parties were entirely unable to agree on the appropriate amount of security. The record does not contain hard economic evidence on the issue. Having considered the supplemental written submissions of the parties, I will require Philip Morris to post a bond in the amount of $ 5 million.
For the foregoing reasons, plaintiff's motion for a preliminary injunction is granted.
Counsel for plaintiff are directed to settle an order of preliminary injunction consistent with this opinion on seven (7) days' notice. In addition to the amount of security referred to above, the injunction must also provide for a stay of its effect for ten (10) days. Application by the defendant for any further stay must be made to the court of appeals.
The foregoing is SO ORDERED.
Dated: New York, New York
March 20, 1995
CHARLES S. HAIGHT, JR.
UNITED STATES DISTRICT JUDGE