its introduction in 1993. Sales of NatraTaste for the eighteen
month period ending July 1998 showed no marked change.
All of the table-top products named above are sold in
rectangular cardboard boxes containing individually wrapped paper
packets. Except in plaintiff's false advertising claim, only the
outer appearance of the boxes is at issue.
Plaintiff's NatraTaste box is rectangular with an overall blue
coloring. A significant portion of the background uses lighter
blue tones. In the front and back panels, the product name,
"NatraTaste", appears in large font across the top portion of the
box. The name is spelled out in a cursive font with the "N" and
the "T" capitalized. The letters are green with white lining and
stand out against the blue background. There is a photograph of a
coffee cup and a saucer in the center right. Resting on the
saucer is a photograph of an individually wrapped paper packet
marked "NatraTaste". Another coffee cup to the lower left and
saucers to the upper left cast shadows in the background. In the
center right is a bright pink burst containing a comparative
advertisement stating "Same Sweetener AS EQUAL. . . . At A
Sweeter Price." The top and side panels also say "NatraTaste"
in the same style and color, but in slightly smaller font.
Defendant's NutraSweet box is also rectangular but has
dimensions differing considerably from those of plaintiff's
NatraTaste box. The NutraSweet box is not as wide along the
front, and the side panels are thinner. The box is light blue
overall, but there are less variations in the blue tones than on
the NatraTaste box. At the top of the front panel of the box is
the red and white NutraSweet swirl logo, which stands out against
the blue background. Below the logo is the trademark "NutraSweet"
in big, black block print. The bottom half of the front panel is
largely taken up by a picture of a coffee cup on a saucer. An
individual packet of NutraSweet is on the left side of the
saucer, tilted against the cup so that the NutraSweet swirl logo
and the NutraSweet trademark printed on the packet are visible.
The back panel is identical to the front panel. The two side
panels also display prominently the logo and NutraSweet
Plaintiff's Sweet'N Low box has a red musical staff slightly
undulating across the front panel and set off against a white
background. Superimposed on the staff is the Sweet'N Low name in
large, dark blue, block capital letters. In the background is a
photograph of a glass containing ice tea with lemon. Below is a
coffee cup. There is a photograph of a woman's fingers pouring
some Sweet'N Low from a pink packet into the coffee. The overall
coloring of the front and top panels is red with the exception of
a white rectangular space on the left side of the front and top
panels, each under an undulating musical staff.
Defendant's Sweetmate box is largely pink, except for the red
top one-fifth portion. On the front the name "Sweetmate" appears
in blue, cursive font and in thinner and appreciably smaller
print than the Sweet'N Low print on the Sweet'N Low box. Although
the background has a coffee cup and a glass of ice tea with
lemon, they are portrayed in a cartoonish drawing, not a
photograph. On the top portion of the front panel of the box is a
red, curving wave containing a comparative advertisement: on the
left is the statement "Compare'N Save" in white roman type, and
on the right is a bright yellow "sunshine burst" with the
statement "same sweetener as SWEET'N LOW at a SWEETER PRICE." At
the bottom of the right side panel is the statement in small
print "Sweet'N Low is a registered trademark of [defendant]."
Defendant previously sold a sweetener called Sweetmate (spelled
"SweetMate" from 1992-96 and "Sweetmate" from 1996-97) but it
used aspartame, not saccharin, as its main sweetening ingredient.
The product was repackaged a number of times between 1992, when
it was first introduced, and 1997, when the trade dress version
currently at issue began to be used. Plaintiff concedes that
Sweetmate's trade dress in 1996, which is not a subject of this
or any other suit, looked very similar to the 1997 version. But
plaintiff points out the following differences: (1) the present
Sweetmate packaging no longer advertises itself as a
and (2) whereas the comparative advertising section in the 1996
version spelled out the Sweet'N Low name in ordinary font, the
present version uses the Sweet'N Low trademark itself. Plaintiff
says that the Sweet'N Low name is now used in a more prominent
way and that this is likely to cause confusion among consumers as
to the source of Sweetmate.
To obtain a preliminary injunction, a plaintiff must show (1)
likelihood of irreparable harm should the injunction be denied
and (2) either (a) likely success by plaintiff on the merits or
(b) sufficiently serious questions going to the merits and a
balance of hardship tipping decidedly in the plaintiff's favor.
Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72
(2d Cir. 1979). A preliminary injunction is an extraordinary
remedy and not granted routinely.
In a trademark or trade dress case, where there is a showing of
a 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" the court may find
irreparable injury. Tough Traveler, Ltd. v. Outbound Products,
60 F.3d 964, 967 (2d Cir. 1995) (citing cases discussing this
Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), provides,
in pertinent part, for a private cause of action against any
in connection with any goods . . . or any container
for goods, uses in commerce any word, term, name,
symbol, or device, or any combination thereof . . .
which . . . is likely to cause confusion, or to cause
mistake, or to deceive . . . as to the origin,
sponsorship, or approval of his or her goods . . . by
another person. . . .
15 U.S.C. § 1125(a).
The Lanham Act, enacted to protect both consumers and trademark
owners, is designed to ensure that consumers purchasing a product
may be confident of getting the brand they think they are
getting, and that when trademark owners expend resources
promoting their products to consumers their reputation and
goodwill will not be misappropriated by pirates. See Mana
Products, Inc. v. Columbia Cosmetics Mfg., Inc. 65 F.3d 1063,
1068 (2d Cir. 1995).
Section 43(a) applies equally to trademark and trade dress
claims. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763,
773, 112 S.Ct. 2753, 2760, 120 L.Ed.2d 615 (1992). A product's
trade dress is "its total image . . . includ[ing] features such
as size, shape, color or color combinations, texture, [or]
graphics." Paddington Corp. v. Attiki Importers & Distrib.,
Inc., 996 F.2d 577, 582 (2d Cir. 1993).
In order to prove trade dress infringement, plaintiff must show
first, that its dress is inherently distinctive or has acquired a
secondary meaning, and second, that the requisite likelihood of
confusion as to source or sponsorship exists between plaintiff's
dress and defendant's. A trade dress need not have widespread
recognition among consumers to be distinctive. It need only serve
to identify a product as emanating from a particular, although
possibly anonymous, source. See Two Pesos Inc., 505 U.S. at
773-76, 112 S.Ct. at 2760-62.
A trademark or dress is generally classified on a spectrum of
increasing distinctiveness as (1) generic, (2) descriptive, (3)
suggestive, and (4) arbitrary or fanciful. See Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).
A mark is generic if it refers merely to "the genus of which the
particular product is a species." Id. A descriptive mark
describes the nature of the product. A suggestive mark uses names
in a creative way to suggest the nature of the product. It
requires purchasers to use "imagination, thought and perception
to reach a conclusion as to the nature of the goods." Thompson
Medical Co. v. Pfizer, Inc., 753 F.2d 208, 213 (2d Cir. 1985).
Fanciful or arbitrary marks are those invented solely for
trademark usage. They are marks that do not describe or suggest
the nature or qualities of the product and are given the greatest
protection. See, e.g., Exxon Corp. v. Xoil Energy Resources,
Inc., 552 F. Supp.
1008, 1014 (S.D.N.Y. 1981) (holding that "Exxon" is an arbitrary
Trade dresses that are suggestive or arbitrary are inherently
distinctive. A descriptive trade dress may be distinctive if it
has acquired a "secondary meaning" giving it distinctiveness to
the consumer. See Two Pesos, 505 U.S. at 769, 112 S.Ct. at
2757-58. But a specific trade dress must be evaluated "to
determine whether it is so distinctive as to point to a single
source of origin and thereby be entitled to Lanham Act
protection." Fun-Damental Too, Ltd. v. Gemmy Indus. Corp.,
111 F.3d 993, 1000 (2d Cir. 1997). Finally, a generic trade dress is
ineligible for protection.
Plaintiff says that the NatraTaste and Sweet'N Low trade
dresses are arbitrary or, at the least, suggestive, and
therefore, distinctive. A product's distinctiveness is based on
the way the trade dress appears to the observer when viewed as a
whole. Individual aspects of the dress may be generic, but as
long as the overall combination of the design is likely to
identify the particular source of a product, its total impression
is inherently distinctive. Jeffrey Milstein, Inc. v. Greger,
Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir. 1995).
Both the NatraTaste and the Sweet'N Low boxes have elements
that are generic when viewed in isolation. Sweeteners commonly
feature on their boxes images of a coffee cup, glass of ice tea,
or individually wrapped paper packets. Viewed as discrete
elements, these do not help distinguish plaintiff's products.
Furthermore, in this industry consumers associate the color blue
with aspartame sweeteners and the color pink or red with
saccharin sweeteners. Thus, the dominant coloring of the boxes
serve a functional purpose and does not differentiate them from
other products. See Qualitex Co. v. Jacobson Products Co.,
514 U.S. 159, 164-65, 115 S.Ct. 1300, 1303-04, 131 L.Ed.2d 248
(1995); Forschner Group Inc. v. Arrow Trading Co.,
124 F.3d 402, 407 (2d Cir. 1997).
But the combination of the elements in plaintiff's trade
dresses creates a "suggestive" package capable of identifying
each product with a particular source. The presence of the
NatraTaste and Sweet'N Low trademarks prominently displayed as an
integral part of the respective trade dresses is a significant
indication of their distinctiveness.
The existence of the requisite likelihood of confusion as to
source or sponsorship between two trade marks is determined by
applying the factors described in Polaroid Corp. v. Polarad
Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961). Those
factors are: (1) the strength of the prior owner's mark; (2) the
similarity between the marks; (3) the competitive proximity of
the products; (4) the likelihood that the prior user will bridge
the gap; (5) actual confusion as to source or sponsorship; (6)
the defendant's good faith; (7) the quality of defendant's
product; and (8) the sophistication of the buyers. These factors
are not exclusive and the test makes no single factor
dispositive. The court "weigh[s] each factor in the context of
the others to determine if, on balance, a likelihood of confusion
exists." W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567,
570-71 (2d Cir. 1993). The same considerations are applied to
determine likelihood of confusion as to source or sponsorship
between trade dresses. See, e.g., Bristol-Myers Squibb Co. v.
McNeil-P.P.C., Inc., 973 F.2d 1033, 1043 (2d Cir. 1992)
(applying Polaroid factors to assess likelihood of confusion in
a trade dress case).
In this case where the products are in direct competition with
each other, the third Polaroid factor, proximity of the
products, is obvious. The fourth, likelihood that the gap will be
bridged, is not relevant. See Bristol-Myers Squibb, 973 F.2d at
1044. The seventh factor, the quality of defendant's product, is
not in issue. Plaintiff does not say defendant's products are of
inferior quality. Plaintiff has not submitted evidence as to the
eighth factor, the sophistication of the buyers. But the nature
and low price of the products suggest that consumers typically
will not spend an extraordinary amount of time evaluating them
before making a purchase. The court analyzes the remaining
factors in turn.
(i) The strength of plaintiff's NatraTaste and Sweet'N Low
A trade dress's strength is measured by both its conceptual and
commercial strength. See W.W.W. Pharm. Co., 984 F.2d at 572.
The conceptual strength is determined by the degree to which a
trade dress is distinctive. Id. NatraTaste and Sweet'N Low have
"suggestive" trade dresses and, as noted above, they are
The commercial strength of a trade dress is measured by the
degree to which it is distinctive in the marketplace. The
commercial success of a product reinforces the dress's strength.
See Charles of the Ritz Group Ltd. v. Quality King Distributors,
Inc., 832 F.2d 1317, 1321 (2d Cir. 1987).
The NatraTaste brand is relatively new, and plaintiff has not
submitted any evidence indicating how much recognition the
product commands in the market. According to defendant,
NatraTaste has low brand recognition. But the NatraTaste mark,
while somewhat similar in looks and sound to the older NutraSweet
mark, is distinctive and the product has enjoyed considerable
commercial success since its introduction in 1993. In terms of
aspartame table-top sales volume, it is second only to the
industry leader, EQUAL. Among value-brand aspartame sweeteners
NatraTaste is the current leader. Its dress has considerable
Sweet'N Low has been marketed in the same trade dress since
1963 and is the top saccharin sweetener in terms of sales.
Because of extensive advertising over the past years, it has
achieved national brand recognition. The commercial strength of
Sweet'N Low's trade dress is strong.
(ii) Comparison of the trade dresses of NatraTaste and
The count considers whether the similarities in the NatraTaste
and NutraSweet trade dresses are likely to confuse an appreciable
number of ordinarily prudent purchasers as to the source of the
Plaintiff says that the (1) blue lighting and the "pronounced
shadowing and gradation of the blue shades" make the NatraTaste
and NutraSweet boxes look "strikingly" similar; (2) both boxes
show a cup of black coffee (although NutraSweet's coffee is a
dark brown); (3) both have a packet resting on a saucer; and (4)
both have a cup and saucer "resting on an undefined surface."
The relevant inquiry is not how many details the two boxes
share. It is whether the similarities create the same general,
overall impression such as to make likely the requisite confusion
among the appropriate purchasers.
It seems unlikely that a reasonably prudent purchaser would
find the overall image of the two boxes confusingly similar. They
both display their different product names prominently in front
of the box. The largest print on the NatraTaste box is its name,
"NatraTaste." It is on the top portion of the box in large, light
blue or green print with white-lining. The curvy-lettering jumps
out because of the color contrasts.
The NutraSweet box also has its product name in large print on
the front of the box. The thick, block letters are in black and
give off a very different impression from NatraTaste's curvy,
light-colored letters. The NutraSweet box conspicuously features
the NutraSweet logo, the red and white swirl. The NutraSweet name
and logo have a high recognition rate among consumers and are
powerful source identifiers. The combination of the NutraSweet
name, presented in this particular color and font, coupled with
the red and white swirl logo, has appeared since the early 1980s
on numerous products using NutraSweet as an ingredient. The
NatraTaste box displays no similar looking logo.
The conspicuous use of a well-known logo and product name
sufficiently differentiates defendant's trade dress from
NatraTaste's. See Merriam-Webster, Inc. v. Random House, Inc.,
35 F.3d 65, 71 (2d Cir. 1994) ("the impressions conveyed by the
combinations of angular and curving logos, and by quite different
names and some different colors [used in the respective
letterings of the trade names] . . . preclude a finding of
similarity."); Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc.,
973 F.2d 1033, 1045-46
(2d Cir. 1992) (the district court's finding that the two trade
dresses are similar was clearly erroneous because "the prominence
of the trade names on the two packages weighs heavily against a
finding of consumer confusion resulting from the overall look of
The other noticeable distinctions between the two boxes are
that the NatraTaste box is significantly wider and longer than
the NutraSweet box and has a bright pink burst on the surface,
something the NutraSweet box does not have.
The court finds that the total images of the NatraTaste and
NutraSweet trade dresses are so different that there is no
significant likelihood prudent purchasers will be confused as to
source by similarities in their trade dresses.
(iii) Comparison of the trade dresses of Sweet'N Low and
The court concludes also that it is highly unlikely that
consumers will confuse Sweet'N Low and Sweetmate due to a
similarity in their trade dresses. Plaintiff points out various
individual features that the two dresses share in common. But
their overall image is not at all similar. First, each box
prominently displays the names of the products. Sweet'N Low and
Sweetmate, although they both contain the word "sweet," sound and
look different. The Sweet'N Low box is largely red on its front
and top panels. The Sweet'N Low mark uses block lettering with
sharp edges, and is in all capital letters, while defendant's
Sweetmate capitalizes only the letter "S" and uses cursive
lettering that is significantly thinner.
Moreover, the Sweet'N Low name is superimposed on an undulating
musical staff, and is set off against a white background. This
combination — the name Sweet'N Low in dark blue and in bold font
superimposed along a musical staff — is the well-known Sweet'N
Low trademark. Plaintiff's trademark registration indicates that
the mark was first used in commerce in 1958, and according to
plaintiff, has since gained national recognition due to sustained
advertising and numerous promotional efforts.
The Sweetmate box is largely pink and has little resemblance to
the overall impression created by the Sweet'N Low trademark and
dress. The Sweetmate name is spelled out along a curved but not
undulating line and there is no musical staff. In addition, the
name "Sweetmate" appears under a comparative advertisement
reading, "Compare `N Save!". This is a phrase commonly found
among value brands or less established private labels to invite
comparison to the leading brand. Of course, Sweet'N Low, the
leading brand, has no such comparative advertisement on its box.
Significantly, whereas the coffee cup, the pink packet, and
glass of ice-tea in the Sweet'N Low box is represented by a
stark-looking photograph, the Sweetmate box has cartoon-like
drawings of these items. The drawings are tilted at "playful
angles" to create a "fun and whimsical" effect. The scattering of
leaves and berries adds to this effect. The coffee in the
Sweetmate box has a brown hue, in contrast to the Sweet'N Low
black coffee. The contrast in the overall image of plaintiff's
and defendant's products is striking.
Additional differences distinguishing the general appearance of
the boxes are that the Sweet'N Low box is somewhat less than
twice as thick as the Sweetmate box, and about a third of the
Sweet'N Low box is white, whereas the Sweetmate box is mostly
pink with some red on the front.
In sum, the overall images of the two boxes are so different
that it is highly unlikely that any individual similarities they
share will cause confusion among an appreciable number of
(iv) alleged actual confusion
To establish likelihood of consumer confusion, plaintiff relies
on the opinions of its expert, Dr. Michael Rappeport,
interpreting three consumer surveys he designed. To be probative
on the issue of confusion, a survey must "have been fairly
prepared and its results directed to the relevant issues."
Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 741 (2d Cir.
1994). In Toys "R" Us, Inc. v. Canarsie Kiddie Shop, Inc.,
559 F. Supp. 1189 (E.D.N.Y. 1983), Judge I. Leo Glasser
listed seven standards that surveys should meet to be
trustworthy. They are that (1) the "universe" or product market
is properly defined; (2) a representative sample of that universe
is selected; (3) the questions to be asked of the interviewees
are framed in a clear, precise and non-leading manner; (4) sound
interview procedures are followed by competent interviewers with
no knowledge of the litigation or the purpose for which the
survey was conducted; (5) the data gathered is accurately
reported; (6) the data is analyzed in accordance with accepted
statistical principles; and (7) the objectivity of the entire
process is assured.
Dr. Rappeport conducted three consumer surveys in January 1998
to test for consumer confusion arising from similarities in the
NatraTaste and NutraSweet trade dresses, and the Sweet'N Low and
Sweetmate trade dresses. He claimed to have found a high
likelihood of confusion as to source in both comparisons.
The three studies were:
1) NatraTaste-NutraSweet "Two Room, Array
Methodology" Study: Respondents were shown a box of
NatraTaste in one room and then escorted into a
second room in which five other boxes of sweeteners,
including NutraSweet, were displayed in a row on a
table. Respondents were then asked,
Q1. Do you think any of these sugar substitutes are
made by the same company as the first box you
Those who answered "yes" were asked,
Q2. Which one or more of the sugar substitutes do
you think are made by the same company as the
first box you saw?
Finally, respondents were asked to explain their
Q3. Why do you say that?