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PLAYTEX PRODS. v. FIRST QUALITY HYGIENIC

December 31, 1996

PLAYTEX PRODUCTS, INC., Plaintiff, against FIRST QUALITY HYGIENIC, INC., Defendant.


The opinion of the court was delivered by: PLATT

 Platt, District Judge.

 Plaintiff Playtex Products, Inc. ("Playtex"), by Order to Show Cause filed 22 November 1996, seeks a preliminary injunction enjoining defendant First Quality Hygienic, Inc. ("First Quality") from selling tampons competitive with those sold by Playtex. Specifically, First Quality has announced publicly its intention to sell, and has begun advertising, tampons under the trade name "Gentle Touch." Playtex asserts that use of "Gentle Touch" will cause consumers to confuse First Quality's tampons with Playtex's "Gentle Glide" tampons, will constitute use of false designations of origin, will dilute the distinctive quality of the "Gentle Glide" mark, all in violation of the Lanham Act, and will violate the common law prohibition against unfair competition. Playtex asserts that it is entitled to a preliminary injunction because it is likely to succeed on the merits and First Quality's intended use will cause it immediate and irreparable injury.

 BACKGROUND

 Playtex is the second largest tampon manufacturer in the United States. Its best selling products are sold under its "Gentle Glide" trademark. Playtex coined that mark in 1973 for use with its dome-tipped applicator products. Playtex has used the mark continuously since that time and has sold billions of dollars worth of products under the mark. Playtex registered the "Gentle Glide" mark for "tampon applicators sold as a unit with tampons" on 6 May 1975 and renewed that registration on 29 August 1995. (Ex. 2 to Dores Decl.) Current packaging indicates that Playtex's dome-tipped tampons and their applicators have come to be associated with the "Gentle Glide" mark.

 Playtex has expended the following sums to promote public awareness of the "Gentle Glide" mark and the tampon products associated with the mark: for 1990 through 1995, over twenty-five million dollars in advertising; for 1995 alone, over five million dollars; and projected for 1996, over eleven million dollars. (Dores Decl. at P 14.) Playtex has derived over two billion dollars in sales of tampons under the mark. (Dores Decl. at P 15.)

 First Quality, which manufactures and sells Femtex branded tampons, plans to introduce rounded-tip paper applicator tampons under the "Gentle Touch" mark. (Damaghi Decl. at P 2.) A trademark search First Quality ordered prior to adopting the "Gentle Touch" mark revealed a number of registrations for "Gentle Touch" for a variety of goods other than tampons--from hair care products to furniture--as well as a number of registrations using the word "Touch" alone or in conjunction with another word. (See Ex. A to Damaghi Decl.) On 15 October 1996, First Quality filed an application with the United States Patent and Trademark Office to register the "Gentle Touch" mark for use with tampon paper applicators.

 DISCUSSION

 Preliminary injunctive relief is warranted when the moving party can establish both irreparable harm and either a likelihood of success on the merits or sufficient questions on the merits to "make them a fair ground for litigation and a balance of hardships tipping decidedly" in the movant's favor. Warner Lambert Co. v. Northside Dev. Corp., 86 F.3d 3, 6 (2d Cir. 1996) (citation omitted).

 The Lanham Act provides that an action for trademark infringement will lie where a person intends to use in commerce a colorable imitation of the registered mark of another without their consent and "such use is likely to cause confusion." 15 U.S.C. § 1114(1)(b). Thus, the critical issue in any trademark action is "whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." Universal City Studios, Inc. v. Nintendo Co., Ltd., 746 F.2d 112, 115 (2d Cir. 1984) (quoting Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978)).

 Though likelihood of confusion has been found as a matter of law where there is great similarity of marks and close proximity of products, the propriety of injunctive relief may not turn on these factors alone. Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 966 (2d Cir. 1981). Rather, even where marks are similar and products proximate, each of a number of additional factors must be analyzed to determine likelihood of confusion. Those factors, which have come to be known as the Polaroid factors, are as follows: (1) strength of the senior mark; (2) degree of similarity between the two marks; (3) proximity of the products; (4) likelihood of bridging the gap; (5) actual confusion; (6) defendant's good faith in adopting its mark; (7) quality of defendant's product; and (8) buyer sophistication. Polaroid Corp. v. Polarad Elecs Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820 (1961). No factor is dispositive, "nor can the presence or absence of one determine . . . the outcome of an infringement suit." Lever Bros. Co. v. American Bakeries Co., 693 F.2d 251, 253 (2d Cir. 1982).

 I. Strength of the Mark

 A trademark's "strength" is assessed based upon its "tendency to identify the goods sold under the mark as emanating from a particular . . . source." Lever Bros., 693 F.2d at 256 (citation omitted). Courts utilize several terms of art to define the spectrum of trademark strength: "arbitrary" marks, which employ common words in unfamiliar ways, are entitled to the greatest protection, Lever Bros., 693 F.2d at 256; "suggestive" marks, which "require[] imagination, thought and perception to reach a conclusion as to the nature of the goods," Id. at 256 n.7, are next on the spectrum; "descriptive" marks, which convey an "immediate idea" of the nature of the product, Id., are next; and "generic" marks, which have come to define an entire product category, Id., fall a distant last on the strength spectrum. Though "an amorphous ...


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