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October 29, 1998

HENRI BENDEL, INC., Plaintiff, against SEARS, ROEBUCK AND CO. and CIRCLE OF BEAUTY, INC., Defendants.

The opinion of the court was delivered by: CHIN



 In this case, plaintiff Henri Bendel, Inc. ("Bendel's") alleges that its brown and white striped trade dress was infringed by the sale of green and white striped cosmetic bags by defendants Sears, Roebuck and Co. ("Sears") and Circle of Beauty, Inc. ("Circle of Beauty"). Defendants move for summary judgment dismissing the complaint on the ground that Bendel's purported trade dress is not protectable or, alternatively, that at best Bendel's can claim proprietary rights only to a specific brown and white striped pattern and not to a general design of a cosmetic bag with striped fabric, plastic coating, and gold zipper pull. For the reasons that follow, defendants' motion is granted and the amended complaint is dismissed with prejudice.


 A. The Facts

 Bendel's is a retailer of "upscale" women's clothes and accessories, including cosmetic bags (the "Bendel Bags"). Bendel's "signature" mark is its distinctive brown and white striped pattern that it has used for many years on the Bendel Bags as well as on shopping bags, wallets, packaging for fragrances and lipsticks, gift boxes, hat boxes, umbrellas, tissue paper, awnings, store signs, and promotional items. (See Burstell Tr. at 50-53; Goldner Tr. at 36; Jones Tr. at 48-49; Monaghan Tr. at 22, 30-31; Burstell Aff. PP 4, 8; Mitchell Aff. Exs. 13, 14, 15; Mitchell Aff. Ex. 16 (Press Release states that in 1911, "Henri Bendel created a distinctive brown and white stripe pattern as his store's hallmark, integrating it into both packaging and store design . . . .")).

 The Bendel Bags, which were first introduced in 1936 according to Bendel's, have the following common design elements: (1) brown and white stripes on fabric; (2) plastic coating; and (3) shiny, gold, rectangular zipper pulls with the registered trademark HENRI BENDEL in raised lettering. (Pl. Opp. at 1; Burstell Aff. PP 5, 7). The Bendel Bags are sold in a variety of shapes and sizes. For the fiscal years 1990 through 1997, the Bendel Bags generated total sales of approximately $ 16 million dollars. (Marlow Aff. P 4). In-store advertising to promote the Bendel Bags for the same time period cost approximately $ 50,000 a year. In addition, of the $ 1 million dollars spent annually by Bendel's on outside advertising, approximately $ 25,000 is devoted to promoting the Bendel Bags. (Id. PP 5-7).

 Numerous articles have appeared about the Bendel Bags in the fashion media. All of these articles focus on the brown and white stripe motif of the bags, rather than on any other design element. In fact, nowhere do these articles highlight gold zipper pulls or clear plastic coating. (See, Wilson Aff. Ex. 11 (containing dozens of articles about the Bendel Bags with titles such as: "Henri Bendel Signature Brown and White Stripe Travel Accessories"; "Everybody wants those bags with the brown stripes"; and "Brown-striped handbags create industry fashion rage")). Bendel's own promotional literature on the Bendel Bags also focuses on the brown and white stripes without mentioning the other elements of the purported trade dress design. (See Wilson Aff. Ex. 12.A ("The Henri Bendel Brown & White Bag Collection"); Ex. 12.B ("The Henri Bendel Brown & White Bag"); Ex. 12.D (Bendel's advertisement displaying striped hat box); Ex. 12.F (Henri Bendel striped advertisement page; striped signature perfume bottle; striped gift boxes, striped lipsticks); Mitchell Aff. Ex. 15 (B00523 Internal Marketing Plan states "Market brown/white stripes (as a premiere brand) wherever appropriate.")).

 Defendants sell seven cosmetic bags that contain several of the same features as the Bendel Bags (the "Sears Bags"). For instance, the Sears Bags have vertical stripes, clear plastic coating, and gold zipper pulls. Unlike the Bendel Bags, however, the Sears Bags have green and white stripes and their gold zipper pulls are round. (Adamko Aff. Ex. 5). Moreover, the gold zipper pulls have Circle of Beauty's own mark on them in raised lettering. (Id.).

 The features that comprise Bendel's purported trade dress, with the exception of the mark HENRI BENDEL, are commonly found in the cosmetic bags industry. Defendants identify at least twelve retailers and/or manufacturers of cosmetic bags that use some if not all of the same elements as the Bendel Bags. (See Calhoun Aff. Exs. 1-2; Adamko Aff. Exs. 3-4; Robinson Aff. Exs. 6-7; Mitchell Aff. Exs. 8, 18, 22 (including pictures of similar cosmetic bags by Trina, Christian Dior, Designs on Travel, Lancome, Victoria's Secret, La Costa Spa, Graham Webb International, Saks Fifth Avenue, Samsonite, Designs on Travel, Fendi, Giorgio of Beverly Hills).

 B. Prior Proceedings

 Alleging that the "overall look and appearance of the Sears Bags['] size, shape, color, and composition was strikingly similar" to the Bendel Bags, Bendel's commenced this suit against defendants on July 12, 1996 alleging violation of federal and state trademark law and asserting other common law claims.

 Bendel's alleges that the following features comprise its trade dress: "(1) natural and brown vertical signature stripes on fabric, which stripes are also used by Henri Bendel on items other than the Bags, such as, Henri Bendel's signature fragrance, shopping bags, hat boxes, and accessory items such as, umbrellas and wallets; (2) easy-to-clean clear, plastic coating; (3) shiny, gold zipper pulls; and (4) the HENRI BENDEL registered trademark and service mark . . . [that] appears on the zipper pulls." (Am. Cmplt. P 12).

 Bendel's filed an amended complaint on July 16, 1996. Thereafter, defendants answered and the parties conducted ...

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