his first multipurpose, utensil-laden pocketknife in 1891. See Forschner, 833 F. Supp. at 387. The manufacturer of any product would be happy to share the anecdotal history of these knives: a Victorinox knife is part of the Museum of Modern Art collection; Swiss Army knives are brought with astronauts on space missions; and they are a favored gift to guests at the White House. As the Court of Appeals noted, "the multi-function pocketknives made by Victorinox and Wenger are renowned for their quality and durability, and are the object of a mystique." Forschner, 30 F.3d at 350.
Identity of origin is not blurred by the dual manufacture of the Swiss-made "Swiss Army knife." Victorinox and Wenger are the only suppliers of knives to the Swiss Army. The Court of Appeals noted that the association between the consumer and these manufacturers is "buttressed" by the fact that the consumer associates the knives more with the Swiss Army that with Switzerland. Id. at 359. "Since Victorinox and Wenger are the only manufacturers who sell pocketknives to the Swiss Army, there is reason to associate the phrase Swiss Army knife with those two companies." 30 F.3d at 359-60. Dual origin, even dual origin as closely aligned historically and in the public consciousness as Wenger and Victorinox, with their combined 191 years of experience in manufacturing Swiss Army knives, may preclude the registration of this mark, but it does not preclude a finding of unfair competition. Like Victorinox and Wenger in Switzerland, Forschner and Precise have managed to coexist in this country for many years. Arrow cannot now enter the picture and unfairly compete with Forschner merely by pointing to Precise, or vice versa.
Arrow has challenged this association between product and manufacturer by arguing that the consuming public "has little or no awareness of Victorinox or Wenger as the source of origin of Swiss Army knives." Defendant's Memorandum of Law on Remand, at 5. An association of origin does not require the purchaser to be aware of the actual name or identity or location of the manufacturer -- but only that the purchaser perceives the goods as emanating from a single source. See Union Carbide, 531 F.2d at 380. A purchaser can associate a Mustang with a particular car manufacturer without knowing that the manufacturer is called "Ford" and is headquartered in Detroit, Michigan.
The absence of Precise, Wenger's distributor, in no way hinders Forschner's efforts to protect its own interests. Arrow's duty is owed to both. "Accordingly, Arrow must take 'every reasonable precaution' to distinguish its Swiss Army knife from the Swiss Army knives produced by Victorinox and Wenger." Forschner, 30 F.3d at 360, citing Kellogg, 305 U.S. at 122.
Thus I come to the conclusion that there is in the public mind a definite "association between the knives, on the one hand, and Victorinox and Wenger and their distinctive histories and prominent reputations, on the other." Forschner, 883 F. Supp. at 389. The Court of Appeals is in agreement on this point, having called the association "undeniable." Forschner, 30 F.3d at 350.
B. Likelihood of Confusion
I find it likely that consumers will confuse the Arrow Swiss Army knife with the Forschner Swiss Army knife.
The concept of "fairness" in this area of the law, as elsewhere, is double-edged. Fairness allows a competitor to make use of a generic term to describe its product; but fairness also requires such use to be reasonably distinguishable from that of the competitor who has already invested in that term and imbued it with secondary meaning. Forschner, through its own effort and expenditure and ingenuity, has done well to create a market in this country for Swiss Army knives. Arrow, however, cannot be enjoined from using its own effort, expense and ingenuity to enter this market and capitalize on the public appetite for this product. The Supreme Court made this clear in Kellogg. "Sharing in the goodwill of an article unprotected by patent or trademark is the exercise of a right possessed by all -- and in the free exercise of which the consuming public is deeply interested." Kellogg, 305 U.S. at 122. But Forschner can expect that Arrow will not be allowed to profit by so closely modeling its product after Forschner's that the public confuses the two, buying Arrow's product but expecting Forschner's. "The purchasing public is entitled to know the source of the article it desires to purchase." King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577, 581 (2d Cir. 1963).
Arrow repeatedly argues in its papers on remand that Forschner's remaining allegations and the decision on appeal leave me with only the slimmest of factual issues to reconsider. In Arrow's interpretation, the Court of Appeals' holding that it could not be enjoined under 15 U.S.C. § 1125(a)(1)(B) from using the phrase "Swiss Army knife" to describe an inexpensive Chinese-made knife somehow removes that phrase from the calculus of unfair competition, such that this court "must focus on what, if anything, Arrow has done other than and in addition to using the phrase 'Swiss Army knife' that might lead consumers to believe that the Arrow knife is made by Victorinox or Wenger." Defendant's Memorandum of Law on Remand, at 19 (original emphasis). Specifically, that additional behavior would consist only of "the licensing language on the package for Arrow's knife and the trade dress of the knife." Id. at 10. This argument is without support in the law and exaggerates the breadth of the decision on appeal. See Forschner, 30 F.3d at 358 ("Our determination that Arrow did not misrepresent the geographic origin or quality of its knife does not absolve Arrow of liability for other forms of misrepresentation or unfair competition, such as passing off.").
Whereas Forschner's allegation of false advertising under 15 U.S.C. § 1125(a)(1)(B) required this court to look at whether the phrase "Swiss Army knife" was geographically or qualitatively deceptive only as applied to the Arrow knife, its allegation of unfair competition under 15 U.S.C. § 1125(a)(1)(A), with its pivotal element of "likelihood of confusion," requires a comparative analysis of the phrase as applied to both the Arrow and the Forschner knives. This comparative analysis considers not simply of all "other" aspects of Arrow's packaging, promotion and design of its product, but of the disputed phrase itself. The section provides a cause of action against any person who "in connection with any goods . . . uses in commerce any word, term, name, symbol, or device, or any combination thereof.. . which is likely to cause confusion . . . ." 15 U.S.C. § 1125(a) (emphasis added). See Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc., 281 F.2d 755, 762 (2d Cir. 1960) (it is the general overall impression which counts"); Jean Patou, 201 F. Supp. at 862 ("a claim for unfair competition considers the total physical image given by the product and its name together . . . unfair competition exists if the total impression of package, size, shape, color, design and name upon the mind of the consumer will lead him to confuse the origin of the product"); see generally McCarthy, § 8-1.
A likelihood of confusion does not require a mirror image. It is predicated on a "multiplicity of similarities." Ritchie, 281 F.2d at 759. The use of the same mark on two different products, regardless of whether it is generic or not, is perhaps the most salient similarity that can confront and confuse a consumer. Of course, it cannot be the use of the generic mark that alone constitutes unfair competition, see Blinded Veterans Ass'n, 872 F.2d at 1043, but that redundant use certainly may contribute to a likelihood of consumer confusion. The non-exclusivity of any element of the latecomer's trade dress does not prevent that element from contributing to the confusion of the competing goods in the consumer's mind and therefore is not excused from a court's analysis of whether such confusion is likely.
It will not do for a subsequent maker of a product . . . to segregate the details of the earlier trade package and dress, and then, on the theory that the first user does not possess an exclusive right to them separately, appropriate them in whole or substantial part by piecemeal. . . . This ignores the first user's grouping of parts, of details, for the very purpose of denoting the origin of his product; it is through such distinctive characteristics, considered in a unitary way, that the first user and the public can be protected against confusion and deception as to his product.
O & W Thum Co. v. Dickinson, 245 F. 609, 619 (6th Cir. 1917), cert. denied, 246 U.S. 664, 62 L. Ed. 928, 38 S. Ct. 334.
Thus Arrow cannot avoid a finding of consumer confusion by arguing that (1) "Swiss Army knife" is generic, (2) the Arrow cross-and-shield insignia is, as I have found, distinguishable from Forschner's, Forschner, 833 F. Supp. at 387, and (3) Forschner has no trademark rights in the color red as applied to its multipurpose pocketknives.
Nevertheless, it should be stressed that my finding of likely confusion, although for purposes of clarity necessarily traced through a step-by-step analysis, is not based on dissecting the competing trade dress and enumerating discrete points of similarity, but on the total image created. See Merriam-Webster, Inc. v. Random House, Inc., 35 F.3d 65, 70-72 (2d Cir. 1994), cert. denied, 131 L. Ed. 2d 133, 115 S. Ct. 1252 (1995).
Whether there is a likelihood of confusion is a fact-specific inquiry. Because it is so difficult to acquire, there need not be evidence of actual consumer confusion. See Blinded Veterans Ass'n, 872 F.2d at 1047; Ritchie, 281 F.2d at 761. The standard applied is that of the ordinary or "average consumer," similar to the "reasonable person" standard in tort law. See RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1060 (2d Cir. 1979); Feathercombs, 306 F.2d at 257; McCarthy § 8:4, at 291-92. The Second Circuit has rejected the argument that the ordinary buyer must be a "careful" one. Am. Chicle Co. v. Topps Chewing Gum, Inc., 208 F.2d 560, 563 (2d Cir. 1953).
I will not consider for purposes of this comparison the packaging of the two knives, in light of the fact that Arrow primarily sells to its customers through mail order catalogs. See Forschner, 833 F. Supp. at 387. In the Arrow catalog introduced as evidence at trial, only the knives, and not their packaging, are displayed.
See Plaintiff's Exhibit no.1. I will also not consider, of course, similarities between the two knives -- such as size, shape, and weight, as well as the number and configuration of the various blades and utensils -- which are functionally necessary to a multipurpose pocketknife. See Coach Leatherware, 933 F.2d at 168 ("Even if the plaintiff establishes [identity of origin and likelihood of confusion], the defendant may still avoid liability by demonstrating that the imitated features are "functional" -- essential to the basic purpose the article is meant to serve."). Finally, I will not dwell on whether Arrow intended to dress its knife in such a way as to confuse it in the minds of purchasers with the Forschner knife, although the closeness of its dress (not to mention the choice of mark and color) and Arrow's awareness of the senior user suggest a deliberate effort to siphon off Forschner's good will.
See RJR Foods, 603 F.2d at 1060 ("conscious imitation also supports at least a presumption that the similarity will cause customer confusion"), citing Ritchie, 281 F.2d at 758-59; My-T-Fine Corp. v. Samuels, 69 F.2d 76, 77 (2d Cir. 1934). Even proof of intentional copying, while probative, is not dispositive on the issue of unfair competition -- for the reason that a vendor may have tried, but failed, to engender confusion. See Blinded Veterans Ass'n, 872 F.2d at 1045; Coach Leatherware, 933 F.2d at 169.
To begin, Arrow has embossed on the side of its knife the words "Swiss Army." The Forschner knife does not. Yet since this difference brings to the consumer's mind the very phrase that consumers have come to associate with Victorinox and Wenger, it invites confusion as much as avoids it.
The handle of the Arrow knife is a shade of red that is distinguishable from the red used by Forschner on most of its knives, and formerly used by Forschner on all of its knives. The distinction is clear in a side-by-side analysis, but side-by-side analysis is not the standard for determining likely consumer confusion. See RJR Foods. 603 F.2d at 1060; Ritchie, 281 F.2d at 762. The difference is less apparent when the Arrow knife is viewed in isolation. Color is "obviously an important element to consider in determining unfair competition," McCarthy, § 8.3, at 289, and it cannot be said to be a part of the functionality of the knife.
In addition, the handle of the Arrow knife, like the handle of the Forschner knife, is monochromatic except for its insignia.
Like Forschner, Arrow builds into its standard model both a toothpick and tweezers. Although most likely functional elements, Arrow has chosen to place them in exactly the same positions as the Forschner knife, together at one end of the knife, on opposite sides of the handle. Likewise, the Arrow knife has a key ring attached to a eyelet at one end of the knife, as does Forschner.
Although the Arrow cross-and-shield insignia is distinguishable from Forschner's, it is placed in exactly the same location on the handle of the knife: above center, close to one end. It also, like Forschner's, is monochromatic (Forschner's is silver, Arrow's is white) and appears only on one side of the knife. On both knives, the handles have a smooth, high-gloss finish.
At the base of the tang of the main blade of the Forschner knife, nearest to the handle and visible only when the blade is open, is inscribed the legend "VICTORINOX SWITZERLAND STAINLESS ROSTFREI." In the same place, the Arrow knife bears the legend "STAINLESS CHINA." These inscriptions are themselves quite distinct. The impact of this distinction is muted, however, by their placement on the knife. Unlike color, mark, insignia and mechanical features, inscriptions are hardly a selling point of the knives, and their placement makes them further unlikely to catch the attention of the potential buyer, particularly the purchaser ordering through a catalog (the legend is not visible on the knife pictured in the Arrow catalog). However dissimilar, the legends are not likely to diffuse consumer confusion.
Arrow argues that wide price differentials -- the Arrow knife typically sells at $ 6 to $ 10, and the Forschner knife at $ 45 to $ 60 -- can be a "significant factor" in preventing confusion. Defendant's Memorandum of Law on Remand, at 24. Arrow offers one case from this Circuit to support its argument, Speedry Prod., Inc. v. Dri Mark Prod., Inc., 271 F.2d 646 (2d Cir. 1959). In Speedry, affirming the denial of a preliminary injunction, cost was the last of several salient distinctions considered, including two distinct trade names ("Magic Marker" and "Dri Mark") and distinctly colored and lettered packaging. In addition, cost seems to me a dubious badge of distinction. If consumer confusion is going to occur, it would seem to occur most naturally when consumers find a product they desire at a lower cost than expected. If anything, the lower cost might disarm the consumer of his or her ordinary vigilance -- this is the lure that makes knock-offs attractive. See RJR Foods, 603 F.2d at 1061 (2d Cir. 1979) (affirming finding by Pierce, J., that "the products' modest cost was not conducive to the exercise of careful selectivity by purchasers") (citation omitted).
A likelihood of consumer confusion, which looks through the eyes of the prospective purchaser, can conversely be thought of as the affirmative duty of the junior user to name and dress his goods so as to distinguish them from his competitor's goods and identify itself as their source. See Kellogg, 305 U.S. at 120 (Kellogg was free to use the generic mark "shredded wheat," "subject only to the obligation to identify its product lest it be mistaken for that of the plaintiff"); Ritchie, 281 F.2d at 758 ("In this circuit and others, numerous decisions have recognized that the second comer has a duty to so name and dress his product as to avoid all likelihood of consumers confusing it with the product of the first comer."). This obligation was defined by the Supreme Court in Kellogg, 305 U.S. at 122 (Kellogg was not guilty of passing off because it had "taken every reasonable precaution to prevent confusion or the practice of deception in the sale of its product") (emphasis added), and reiterated in Blinded Veterans Ass'n, 872 F.2d at 1043 ("a court may require the competitor to take whatever steps are necessary to distinguish itself or its product from the first organization or product") (emphasis added). Arrow has not met this obligation. In combination, its use of the phrase "Swiss Army knife," for so long exclusively associated with Victorinox and Wenger, and its use of several approximated features of Forschner's trade dress add up to an actionable "cumulative absence of differentiation." Ritchie, 281 F.2d at 759.
Arrow has taken more than the law allows. A junior competitor cannot be enjoined from taking advantage of general good will built up in the public for a particular product. But legitimate entrepreneurial endeavor ends where passing off begins. See, e.g., Kellogg, 305 U.S. at 122; Am. Footwear, 609 F.2d at 662. I cannot find that Arrow has given the consumer "fair notice" that it is the source of its Swiss Army knife. Blinded Veterans Ass'n, 872 F.2d at 1045 n.22. On the contrary, it is "specific actions by [Arrow] that increase the risk of confusion." Id. at 1046. A comparative analysis of the total physical images of the two knives indicates a strong likelihood that the effect of Arrow's actions is to induce the public to think that Arrow is Forschner.
In failing to identify itself and give the consumer fair notice that it, and not Forschner, is the producer of its knife, Arrow defies the central purposes of the laws of trademark and unfair competition, all of which are predicated on the "source-distinguishing ability of a mark." Qualitex Co. v. Jacobson Prod. Co., Inc., 131 L. Ed. 2d 248, 115 S. Ct. 1300, 1304 (1995). These purposes include: (1) reducing the time and cost of shopping and purchasing decisions by assuring the consumer of consistent quality from the goods whose mark is already recognized; (2) rewarding the producer who has invested time, money and effort in developing his mark; (3) discouraging producers of inferior products from profiting by consumer confusion; (4) fostering competition; and (5) maintaining product quality and producer accountability. See Park ' N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198, 83 L. Ed. 2d 582, 105 S. Ct. 658 (1985); Qualitex, 115 S. Ct. at 1303-04 (citations omitted).
C. Consumer Perception Survey Evidence
Arrow argues that the consumer perception survey commissioned by Forschner ("Forschner survey"), and designed to demonstrate at trial the qualitative and geographic descriptiveness of "Swiss Army knife," cannot be used on remand to demonstrate a likelihood of consumer confusion. Forschner in response has submitted an affidavit from Dr. Joel Cohen, the expert who originally prepared and interpolated the survey data. See Affidavit of Joel B. Cohen (November 7, 1994) ("Cohen Affidavit"). Dr. Cohen "re-coded" the results of the first survey, finding that the answers given by consumers to the survey questions also indicated a strong likelihood of confusion, i.e., mistaking the Arrow Swiss Army knife for the Forschner Swiss Army knife. Arrow counters that the Dr. Cohen has impermissably "reinvented" the Forschner survey by manipulating the data in order to sustain Forschner's remaining claims. See Defendant's Memorandum of Law on Remand, at 20. Arrow requested that it be allowed to cross-examine Dr. Cohen in the event that I were to rely on his affidavit in reaching my decision. After accepting submission of the affidavit, however, I chose not to rely on it in deciding the efficacy of the survey on the issue of consumer confusion.
Even without the Cohen Affidavit, I find that the Forschner survey does in fact demonstrate consumer confusion. In so finding, I rely on the results of the survey, both directly and as they were presented by Dr. Cohen's testimony and written report. See Plaintiff's Ex. 34, Consumer Perception of a Multi-Function Knife ("Cohen Report"). After trial, I found "a likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused as to the geographic origin and quality of the [Arrow] knife." Forschner, 833 F. Supp. at 391 (citation omitted). Today, I find that a likelihood of confusion as to origin is also demonstrated by the survey.
Although it found that the phrase Swiss Army knife was neither geographically nor qualitatively descriptive, the Court of Appeals did not impeach Forschner's survey in the process. Factual findings at trial aside, the Court decided as a matter of law that the phrase was incapable of geographic descriptiveness and, therefore, of qualitative descriptiveness. See Forschner, 30 F.3d at 354-55. In so doing, it separated the issue of descriptiveness from the issue of consumer confusion:
in applying the 'likelihood of confusion' test, a court may rely upon its own observations and other evidence, including survey evidence, as may be required. But the distinct issue of whether or not a phrase lends itself to being construed as a statement of geographic origin can be determined without reference to evidence of consumer confusion or lack thereof.
Id. at 354 (citations omitted).
In finding a lack of geographic descriptiveness, therefore, the Court of Appeals did not rule on consumer confusion.
Contrary to Arrow's allegations, the Forschner survey is competently addresses consumer confusion. To be probative, a survey must be fairly prepared, directed to relevant issues and not suggestive of any particular response. See Sterling Drug, Inc. v. Bayer, AG, 14 F.3d 733, 741 (2d Cir. 1995); Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 118 (2d Cir. 1984). Arrow does not argue that the survey was unfair or suggestive and, although specifically directed to the issues of geographic and qualitative descriptiveness, a crucial part of the survey was more generally directed to the broader issue of consumer confusion as well. In this respect, our facts are distinguishable from those in the cases cited by Arrow. In these cases, the design of the survey was clearly incompatible with its subsequent attempted use. Plaintiffs there were attempting to use a more general survey design for the precise and particular task of placing a contested mark somewhere on the spectrum of distinctiveness. See Zatarains, Inc., 698 F.2d 786 at 793 n.4 (survey designed to explore likelihood of confusion not probative as to whether trademark is suggestive or descriptive); In re Minnetonka, Inc., 212 U.S.P.Q. 772, 778 n.9 (T.T.A.B. 1981) (survey relevant to test secondary meaning not probative on issue of genericness); Donald F. Duncan, Inc. v. Royal Tops Mfg. Co., 343 F.2d 655, 665-66 (7th Cir. 1965) (survey designed to show public awareness of company name not probative on issue of genericness).
The Forschner survey elicited consumer responses to a series of questions relating to a color photograph of the Arrow knife accompanied by a catalog-styled heading that read "11-Function Swiss Army knife" and was followed by a description of the knife.
Of the 380 people who completed the survey, 333 indicated some familiarity with the name "Swiss Army knife." See Forschner Survey question 7. These people fell into three categories: (1) persons who had bought or use(d) a Swiss Army knife (190); (2) persons who had examined a Swiss Army knife or discussed Swiss Army knives with someone (87); and (3) persons who had heard of Swiss Army knives (54). See Cohen Report, at 6. All participants were screened as potential purchasers of a multi-function pocketknife.
When asked if there was anything about the Arrow Swiss Army knife that "leads you to believe it is manufactured to be of high quality?", 301 of the 380 answered affirmatively. See Forschner Survey question 2. Those who answered affirmatively were asked two "follow-up open-ended" questions designed to elicit why this association had been made. See Cohen Report, at 7. The questions were, "What is there about this multi-function knife that leads you to believe it is manufactured to be of high quality?" and "Is there anything else about this multi-function knife that leads you to believe it is manufactured to be of high quality?" See Forschner Survey, questions 3 & 3a. It is in these open-ended questions, which do not direct the consumer to any particular aspect of the product but rather simply ask why the consumer has just answered as he or she did, that confusion as to origin is apparent.
Dr. Cohen organized answers to the two follow-up questions into seven categories. The first three include answers which: (1) make specific reference to Swiss Army as a brand name or to the cross-and-shield logo; (2) refer to the reputation of an unnamed but well-known manufacturer; and (3) describe the knife pictured as similar to one owned or used currently or in the past. Dr. Cohen analyzed the combined responses of these three groups in a "summary response category," also called "the familiar knife" category. See Cohen Report at 9. Even in his original report, Dr. Cohen found this summary category provided "an additional way of thinking about the essence of the first three responses, " in particular for "judging the potential for consumer confusion in responding to a catalog presentation of such a knife. " Id. at 9-10 (emphasis added).
Answers from the summary category -- indicating reliance on personal knowledge, reputation, or name recognition -- include the following:
007 "No I had a knife similar to it when I was in the service myself and they were pretty good knives I get them off the base."