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CUMBERLAND PACKING CORP. v. MONSANTO CO.
January 12, 1999
CUMBERLAND PACKING CORP. AND STADT CORPORATION, PLAINTIFFS,
MONSANTO COMPANY, THE NUTRASWEET COMPANY, THE NUTRASWEET KELCO COMPANY, AND OLYMPIA INDUSTRIES, INC., DEFENDANTS.
The opinion of the court was delivered by: Nickerson, District Judge.
Plaintiffs Cumberland Packing Corporation and Stadt Corporation
(collectively "plaintiff") brought this action claiming trademark
and trade dress infringement, trademark dilution, and false
advertisement against defendants Monsanto Company, The NutraSweet
Company, The NutraSweet Kelco Company, and Olympia Industries,
Inc., (collectively "defendant"), pursuant to 15 U.S.C. § 1114,
1125(a), 1125(c), New York General Business Law §§ 349-350, and
the New York common law of unfair competition.
Plaintiff is the maker of the sweeteners Sweet'N Low and
NatraTaste. Defendant is the maker of the EQUAL, Sweetmate, and
NutraSweet brands of sweeteners.
The court has jurisdiction under 28 U.S.C. § 1338(a), giving
federal courts jurisdiction over, among other matters, trademark
cases, and 28 U.S.C. § 1338(b), providing jurisdiction over a
claim of unfair competition when joined with, among other claims,
a substantial and related trademark claim.
Plaintiff moved for a preliminary injunction prohibiting
defendant from infringing the Sweet'N Low and NatraTaste trade
dresses, in violation of section 43(a) of the Lanham Act,
15 U.S.C. § 1125(a); from infringing and diluting the Sweet'N Low
trademark, in violation of sections 32, 43(a) and 43(c) of the
Lanham Act, 15 U.S.C. § 1114, 1125(a), 1125(c); and from falsely
advertising its NutraSweet brand sweetener, in violation of
section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Defendant
moved to dismiss plaintiff's false advertising claim, or, in the
alternative, for summary judgment on the claim.
The court heard argument on the motions on October 28, 1998.
The record shows, in substance, the following. Plaintiff and
defendant are long-time competitors in the sweetener industry.
Currently the two most commonly used artificial sweetening
ingredients are saccharin and aspartame. In terms of sales,
plaintiff's Sweet'N Low is the leading saccharin brand sweetener,
and defendant's EQUAL the leading aspartame brand sweetener. In
the combined sweetener market, Sweet'N Low is the largest volume
seller and EQUAL the highest grossing sweetener.
Plaintiff first marketed Sweet'N Low in 1958 and has been
selling it at retail in boxes with the same trade dress since
1963. Since 1970 saccharin, a chemical compound about 300 times
sweeter than sugar, has been the sole sweetening ingredient in
Aspartame, discovered in 1965 by defendant's then parent
company, is a natural protein compound that can be metabolized.
It is about 200 times sweeter than sugar. Aspartame was patented
in 1972 and approved by the Food and Drug Administration
for use in or with foods in 1981 and in beverages in 1983.
Saccharin and aspartame have different tastes, aspartame
tasting more like sugar than does saccharin.
In the 1980s, defendant marketed aspartame primarily through a
so-called "branded ingredient strategy." Defendant 1) gave
aspartame the brand name of NutraSweet, 2) sold aspartame as an
ingredient to makers of foods and beverage and required them to
display prominently the NutraSweet name and logo, a red and white
swirl, and 3) heavily advertised the NutraSweet name and logo to
attempt to create a strong association between NutraSweet and
aspartame in the minds of consumers buying products containing
aspartame. As a result of defendant's promotion much of the
public came to recognize the NutraSweet brand name and logo. The
chief emphasis in defendant's advertising was that, whereas like
saccharin aspartame had no calories, it tasted more like sugar
than did saccharin.
In 1982, defendant began selling a so-called "table-top"
product containing aspartame as a sweetener. Defendant called
this product EQUAL. Table-top sales are made typically to
individual consumers, or to restaurants for patrons to add to
already prepared foods and beverages. From 1988 to 1996 all EQUAL
boxes and packets displayed the brand name NutraSweet and the
NutraSweet logo swirl.
Before the introduction of EQUAL, the table-top sweetener
market was comprised entirely of sweeteners containing saccharin
and sold about 5.1 billion packets per year. EQUAL was an
immediate success, selling over 2.09 billion packets in its first
full year of sales. But EQUAL sales did not significantly affect
sales trends in saccharin sweeteners. The industry soon
discovered that saccharin users continued to use saccharin.
EQUAL's new customers were mainly people who had previously not
used any artificial sweeteners. Because aspartame and saccharin
have, as noted, different tastes, the two markets continue to
have almost no overlap in customer-base.
With the expiration of defendant's patent on aspartame in
December 1992, a number of companies, including plaintiff, jumped
into the aspartame market. In 1993, plaintiff introduced its own
aspartame-based table-top sweetener called NatraTaste (a name
with some similarity to NutraSweet). NatraTaste sold for about
half the price of EQUAL. NatraTaste's retail distribution rate
has been growing "slowly but steadily" since 1993. As of the
beginning of 1998, it was sold in about 70 percent of
supermarkets in the United States. In 1997, about 891 million
NatraTaste packets were sold. Of the industry leader EQUAL, about
2.09 billion packets were sold.
In 1997 defendant introduced the present table-top sweeteners,
NutraSweet and Sweetmate. NutraSweet has aspartame as its
significant ingredient and is priced to compete directly against
NatraTaste. Sweetmate has saccharin as its sweetening ingredient
and is priced to compete with plaintiff's Sweet'N Low. Sweetmate
is a repackaged version of defendant's product SweetMate, first
sold in the market in 1992.
The market for the NutraSweet and Sweetmate products has
expanded rapidly since their introduction. As of July 1998,
Sweetmate's retailer authorization was 64 percent; NutraSweet's
was above 80 percent, which defendant says is equivalent to full
Sales have also soared. From January 1997 to January 1998, 6.3
million packets of Sweetmate were sold. But for the one year
period ending in July 1998, sales had increased to 36 million
packets. Similarly, during the year 1997 23.7 million packets of
NutraSweet were sold. For the six month period ending July 12,
1998, the sales increased to 168 million packets.
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]."
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. . . .
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 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 ...