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March 20, 1995


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

 HAIGHT, District Judge:

 In this Lanham Act case to which common and state law claims are appended, one manufacturer of cigarettes sues another for alleged infringement of trade dress and seeks a preliminary injunction.


 Plaintiff Philip Morris Incorporated ("Philip Morris") manufactures and sells cigarettes under the brand name MARLBORO. *fn1" In December 1955, Philip Morris changed the MARLBORO brand from unfiltered to filtered cigarettes. It devised a new advertising format featuring pictures of a cowboy, which during the next decade was one of several elements featured in the marketing of MARLBOROs.

 Since 1964, the brand has been marketed almost exclusively by advertising featuring cowboys and evoking the American West, with an emphasis upon the great outdoors. A typical early ad of this genre, attached as Exhibit A to the complaint, depicts a cowboy astride his horse in open country, lighting up a cigarette. The ad copy says: "Come to where the flavor is . . . Come to MARLBORO COUNTRY." A later ad, playing off a blessed season of the year, shows a cowboy riding a horse through falling snow, leading another horse encumbered with a Christmas tree; the copy reads: "Merry Christmas from Marlboro Country." Packs of MARLBORO cigarettes sometime, but not always, display a picture of a cowboy. The print advertisements for the brand invariably do. *fn2"

 Philip Morris's objective, one gathers, is to cause MARLBORO cigarettes to be equated in the public mind with vitality, virility, clean air, and good health. The MARLBORO COUNTRY campaign has achieved a smashing success, seemingly triumphing over the Surgeon General's health-related warnings tobacco companies are mandated to display on their products and in their advertising. In 1994, between 6 and 7 billion packs of MARLBORO cigarettes were sold in the United States. In 1974 MARLBORO became the world's best-selling cigarette brand. In 1974 it became the best-selling brand in the United States, a position it still maintains, currently with 28% of the domestic market. MARLBORO is aggressively marketed. During the past two decades MARLBORO domestic media advertising costs have exceeded $ 1.8 billion.

 Defendant Star Tobacco Corp. ("Star") also manufactures and sells cigarettes. Star was incorporated in 1990. Until 1994 its principal business consisted of contract manufacturing of cigarettes and little cigars for private label marketers and exporters. In 1993 Star began to consider entering the cigarette marketplace under its own brand name. The result was a cigarette called GUNSMOKE, which Star began to test market in California in July 1994 and wishes to continue marketing on an expanded basis.

 What Star actually did was to market GUNSMOKE cigarettes in packs featuring a drawing of a heavily armed cowboy, holding a rifle in his right hand and with his left hand resting upon a holstered pistol. The phrase "western blend" appears on the front of the pack. *fn3" Advertisements for GUNSMOKE cigarettes display, next to the cowboy figure, the phrase "New Man in Town." *fn4" One ad in a trade magazine, which Star says has not been repeated, said: "Welcome to Gunsmoke Country." Star contends that these marketing phrases were intended to tell the consumer that the GUNSMOKE man was a "new" man, hence not the MARLBORO man; and that the "GUNSMOKE Country" to which the consumer is welcomed is a place other than "MARLBORO Country." The Williams affidavit also says that Star made available to "certain of our distributors" vans displaying the GUNSMOKE man and GUNSMOKE woman graphics and including the phrase: "Gunsmoke vs. Marlboro - Taste the Difference." Id. at 17. A photograph of such a vehicle appears as Exhibit F to the Williams affidavit.

 Philip Morris does not regard Star's marketing strategies as a good-faith effort to educate cigarette consumers that GUNSMOKE is not associated in any way with MARLBORO. On the contrary: Philip Morris regards Star as engaging in bad-faith trade dress infringement and related acts of unfair competition. On November 4, 1994 counsel for Philip Morris wrote to Star to demand "that you cease selling GUNSMOKE cigarettes and cease using MARLBORO's western motif for the trade dress or advertising of any cigarette." Star refused to comply. Philip Morris commenced this action.

 The complaint pleads seven claims for relief. The first four are based upon § 43(a) of the Lanham Act, 15 U.S.C. § 1125 (Supp. 1994). Claims One and Two are for injunctive relief and money damages arising out of trade dress infringement in violation of § 43(a)(1)(A). Claims Three and Four are for injunctive relief and money damages arising out of false advertising in violation of § 43(a)(1)(B). Claims Five and Six allege common law palming off. Claim Seven alleges a violation of the New York Anti-Dilution statute, New York Business Law § 368-d.

 Philip Morris moves for a preliminary injunction, which Star opposes.


 While Philip Morris also asserts a Lanham Act false advertising claim, *fn5" it bases this motion for a preliminary injunction upon the Lanham Act trade dress infringement and New York Anti-Dilution Act claims.

 A movant for a preliminary injunction must show both (1) irreparable harm in the absence of the requested relief and (2) either (a) a likelihood of success on the merits or (b) a sufficiently serious question going to the merits combined with a balance of hardships tipping decidedly in favor of the movant. See. e. g., Jackson Dairy Inc. v. H.P. Hood & Sons, Inc, 596 F.2d 70, 72 (2d Cir. 1979).

 (a) The Merits

 The Lanham Act, which governs plaintiff's federal claims, was intended to make "actionable the deceptive and misleading use of marks" and "to protect persons engaged in . . . commerce against unfair competition." § 45, 15 U.S.C. § 1127. § 43(a) of the statute provides in pertinent part:

Any person who, on or in connection with any goods. . .uses in commerce any word, term, name, symbol, or device, or any combination thereof, . . . which
(1) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.

 "Trade dress" is a form of mark protectible under § 43(a)(1). "The 'trade dress' of a product is essentially its total image and overall appearance." Blue-Bell Bio-Medical v. Cin-Bad, Inc., 864 F.2d 1253, 1256 (5th Cir. 1989), cited and quoted by the Supreme Court in Two Pesos, Inc. v. Taco Cabana, Inc., 120 L. Ed. 2d 615, 112 S. Ct. 2753 (1992) (hereinafter "Two Pesos"). See also LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 75 (2d Cir. 1985) (trade dress comprises "the total image of a product."). A product's image may be created by "words, symbols, collections of colors and designs, or advertising materials or techniques that the purchasing public has come to associate with a single source." Harlequin Enterprises Ltd. v. Gulf & Western Corp., 503 F. Supp. 647, 649 (S.D.N.Y. 1980), aff'd 644 F.2d 946 (2d Cir. 1981).

 Trade marks are often classified in categories of increasing distinctiveness. They may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. See Abercrombie & Fitch Co. v. Hunting World, Inc, 537 F.2d 4, 9 (2d Cir. 1976 (Friendly, J.) (cited in Two Pesos at 112 S. Ct. 2753). Trade dress is subject to those categories of classification. Two Pesos at 2757 (involving trade dress of a chain of fast-food restaurants serving Mexican food). "The latter three categories of marks, because their intrinsic nature serves to identify a particular source of a product, are deemed inherently distinctive and are entitled to protection" under § 43(a) of the Lanham Act. Id. To merit Protection, trade dress, like any mark, must be nonfunctional. "Only nonfunctional, distinctive trade dress is protected under § 43(a)." Two Pesos at 2760. Merely descriptive marks do not qualify for protection under the Act unless they have acquired secondary meaning of a sort to make them distinctive of a particular source in commerce. Two Pesos at 2757. But inherently distinctive trade dress is protectible under § 43(a) without proof that the trade dress has secondary meaning. That is the holding of Two Pesos. Id. at 2761. *fn6"

 In the case at bar, since 1973 Philip Morris by its packaging and advertising of MARLBORO cigarettes has created an image of the American West made up of geographical ("Marlboro Country") and individualized (the cowboy as the "Marlboro Man") components. This trade dress is inherently distinctive. Philip Morris says without contradiction that no cigarette manufacturer had evoked the image of the American West for the purpose of selling a particular brand until the Marlboro Man saddled up and rode into Marlboro Country. The juxtaposition of product and setting is entirely arbitrary, perhaps even fanciful. Accordingly the MARLBORO trade dress is protectible under § 43(a) of the Lanham Act, without (under the Two Pesos holding) any showing of secondary meaning.

 In evaluating the likelihood of consumer confusion, courts frequently apply those nonexclusive factors articulated by Judge Friendly in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), cert. denied, 368 U.S. 820, 7 L. Ed. 2d 25, 82 S. Ct. 36 (1961). Adapting the Polaroid factors to trade dress analysis, they are: (1) strength of the prior user's trade dress; (2) degree of similarity between the two trade dresses; (3) proximity of the products; (4) likelihood that the prior user will bridge the gap; (5) actual confusion; (6) defendant's good faith; (7) quality of defendant's product; and (8) sophistication of the consumers. I will consider these factors. However, to define the context for that consideration, I will first deal with the several kinds of confusion the Lanham Act seeks to prevent; and the scope of the trade dress protection Philip Morris claims.

 When similar products compete directly with each other in the retail marketplace, several potential forms of consumer confusion arise. First, consumers may mistake the product of the junior trademark or trade dress user for that of the senior user. Second, consumers may mistakenly believe that there is an association between the two products: in the case at bar, that GUNSMOKE is a price-discounted version of MARLBORO. Third, and most pertinent to this case, there is that kind of confusion "that is likely to work to plaintiff's detriment -- that is, defendant's ability to gain a foothold in plaintiff's market by exploiting subliminal or conscious association with plaintiff's well-known name." Playboy Enterprises, Inc. v. Chuckleberry ...

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