in the same publications. Weighing all of these considerations, the proximity of the products is sufficiently close to create some likelihood of confusion.
iv. Bridging the Gap
Simply stated, "the issue here is whether the two companies are likely to compete directly in the same market." Charles of the Ritz, 832 F.2d at 1322. Trademark law protects "the senior user's interest in being able to enter a related field at some later time." Scarves by Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167, 1172 (2d Cir. 1976). This factor encompasses plaintiff's actual intentions to enter defendant's field, as well as consumers' possible assumptions that plaintiff has entered defendant's field despite plaintiff's lack of intent to do so. Id. ; see also Karmikel, 658 F. Supp. 1361, 1374. Considering the evidence of cross-shopping and advertising, the "mass" and "class" markets are not truly distinct, and no gap is left to be bridged.
v. Good Faith of the Junior User
This factor addresses "whether the defendant adopted its mark with the intention of capitalizing on [the] plaintiff's reputation and goodwill and any confusion between his and the senior user's product." Lang, 949 F.2d at 583 (citation omitted). The second comer has a duty to name and dress its product so as to avoid likelihood of confusion with the senior user's product. Perfect Fit Industries, Inc. v. Acme Quilting Co., 618 F.2d 950, 953 (2d Cir. 1980), cert. denied, 459 U.S. 832, 74 L. Ed. 2d 71, 103 S. Ct. 73 (1982). The Court of Appeals has held that evidence of intentional copying raises a presumption that the second comer intended to create a confusing similarity. Paddington, 996 F.2d at 586-87; Mobil Oil, 818 F.2d at 258.
Here, the evidence compels the conclusion that Dep intended to copy Clinique's mark and dress.
See Attached Exhibits B & C (Picture of Packaging). The overall appearance of the two lines of products is too similar even to entertain the idea that Dep did not mimic Clinique's mark and dress. Dep's President admitted both that Dep tried to give the consumer the Clinique department store image, Tr. at 284 (Berglass), and that Dep could have chosen packaging that looked completely different, while continuing to manufacture the same products in the same containers. Tr. at 291 (Berglass). Finally, Dep has not presented a single argument in support of its own good faith. See Defendant's Post-Hearing Memorandum in Opposition to Plaintiff's Motion for a Preliminary Injunction ("Def.'s Mem."). This factor weighs heavily in favor of a likelihood of confusion.
vi. Actual Confusion
The Lanham Act does not require evidence of actual confusion as a prerequisite to recovery. Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1227 (2d Cir. 1987). Clinique has not presented evidence of actual confusion. Notably, Dep has not released Basique products nationally, and has conducted limited test marketing in only six states for about one month. Although Dep argues that this month presented Clinique with an opportunity to gather evidence of actual confusion, courts have found this factor insignificant when products have been competing for longer periods. See id. (finding lack of evidence of actual confusion unimportant considering that products competed for only four months before trial). This factor, therefore, carries no weight.
vii. Quality of the Products
Although Clinique has not presented evidence of the Basique products' inferior quality, courts in this Circuit have held that a "lack of marked difference in quality between goods supports the inference that they emanate from the same source." Centaur Communications, 830 F.2d at 1228; Lois Sportswear, 799 F.2d at 875. At the same time, however, the quality factor protects the senior user's "good reputation associated with [its] mark from the possibility of being tarnished by inferior merchandise." Scarves by Vera, 544 F.2d at 1172; see also Cadbury Beverages, 73 F.3d at 483 (citing Scarves by Vera). These two doctrines seem to conflict: goods of either equivalent or inferior quality can lead to a likelihood of confusion with the senior user's product. While the former interpretation more directly addresses the likelihood of consumer confusion, the latter emphasizes precisely why a likelihood of confusion is damaging to the senior user. Considering that Dep currently represents that Basique is as good as Clinique,
and mindful of the fact that Clinique cannot control the quality of Basique so that its reputation could be damaged if Basique products turn out to be inferior, I conclude that this factor weighs in favor of a likelihood of confusion.
viii. Sophistication of Consumers
The evidence shows that most consumers of skin care products are women (and the products at issue are marketed to women), who take care in deciding what products to use on their skin, particularly the skin on their faces. Tr. at 193-94 (Goodstein). While Clinique's products are not extravagantly priced, they are sold in high quality department stores. Under these circumstances, sophistication of consumers usually militates against a finding of likelihood of confusion. See, e.g., Revlon, 713 F. Supp. at 99; Plus Products, 722 F.2d at 1007.
However, "even sophisticated buyers are not always careful buyers, and their very awareness of status brand names and designs may make them more vulnerable to confusion." Krueger Int'l v. Nightingale, Inc., 915 F. Supp. 595, 611 (S.D.N.Y. 1996). In addition, if the products and marks are very similar or identical, the sophistication of buyers is less likely to prevent confusion. See McGregor-Doniger, 599 F.2d at 1137. Here, the CLINIQUE & C mark is very similar to the "basique simplified skin care" mark used with the single letter designation "b," and the trade dress is nearly identical. Moreover, sophistication of consumers is to be viewed in light of the conditions under which the product is purchased. Id.
Balancing these elements, Clinique's consumers are relatively sophisticated, but the circumstances under which they shop may diminish the effect of their sophistication. This element therefore weighs slightly in Dep's favor.
As noted above, the list of Polaroid factors is nonexclusive. See Mobil Oil, 818 F.2d at 256. An additional factor in this case is defendant's use of comparative advertising and disclaimers on its point of sale materials. Dep alleges that these devices will dispel consumer confusion.
At the outset, it should be noted that Dep bears a heavy burden to show that its disclaimer or comparative advertisement will significantly reduce a likelihood of confusion. See Home Box Office, 832 F.2d at 1315-16; Charles of the Ritz, 832 F.2d at 1324. In Home Box Office, the Court of Appeals considered and rejected the claim that disclaimers are favored methods of dispelling consumer confusion. 832 F.2d at 1315. The court held that the infringer has an affirmative duty to come forward with "evidence sufficient to demonstrate that any proposed material would significantly reduce the likelihood of consumer confusion." Id. at 1316. The court also cited with approval the recommendation that "whenever disclaimers are considered, empirical studies should be used to evaluate their likely impact." Id.
Dep's advertisement has a large image of three Basique products -- a soap, balancing toner, and hydrating lotion -- sitting in water. See Attached Exhibit D (Reproduction of Advertisement). Reflected in the water are the corresponding Clinique products, each aligned with its Basique counterpart. In the upper left corner, in large type, the copy says, "Beautiful skin care shouldn't be a luxury." In much smaller type, below the visual image, the copy reads:
Compare new Basique to Clinique. It does just what Clinique does -- cleanses, tones and moisturizes. Only without the lavish prices. And Basique is allergy tested and fragrance free. So there's really only one choice. Smart. Simple. Basique!