The opinion of the court was delivered by: Motley, District Judge.
This action involves claims of trademark infringement, false
designation of origin, and unfair competition under §§ 32(1) and
43(a)(1) of the Lanham Act and state common law. Plaintiffs
allege that defendant, through its sale of "Dentyne Ice" gum, is
unlawfully infringing on Nabisco's "Ice Breakers" gum trademark.
Nabisco is seeking injunctive relief, as well as damages, product
recall, and attorney's fees. The court has moved sua sponte to
reconsider its earlier denial of defendant's motion for summary
judgment. For the reasons listed below, the court now finds that
there are no genuine issues of material fact remaining, and
therefore, defendant's motion is granted.
I. FACTUAL AND PROCEDURAL BACKGROUND
The court finds and concludes that all material facts in this
case are undisputed, however, the parties are in disagreement
regarding their significance. This case boils down to two
sugarless gums sold by two competitors who both use "Ice" as part
of their identifying marks. At the heart of this dispute lies
plaintiffs' allegation that the "Ice" component of
Warner-Lambert's "Dentyne Ice" mark is likely to cause confusion
to the public as to the origin of "Dentyne Ice," in direct
violation of the Lanham Act. Thus, the salient issues to be
decided are: (1) whether "Ice Breakers" is a mark worthy of
trademark protection; (2) whether the "Ice Breakers" mark has
established secondary meaning; and (3) whether the sale of
"Dentyne Ice" in the United States is likely to cause confusion
to consumers as to the ownership or origin of the "Dentyne Ice."
The facts recounted below, as viewed in the light most favorable
to Nabisco, are statements that Nabisco has either stated,
admitted, or declined to rebut.
A. Nabisco and "Ice Breakers"
Nabisco Inc. (hereinafter "Nabisco"), a New Jersey corporation,
and sells a wide variety of food, candy, and gum products. These
products are sold throughout the United States under many
well-recognized brand names. Joint Pre-Trial Order (hereinafter
"JPTO"), p. 4, ¶ 1. One of these brands is "Ice Breakers" gum.
Plaintiffs began selling "Ice Breakers" gum throughout the United
States in December 1995. JPTO, p. 9, ¶ 7.
The "Ice Breakers" trademark, owned by Nabisco Brands Co., has
been registered at the United States Patent and Trademark Office
(hereinafter "USPTO") since September 3, 1996. JPTO, p. 5, ¶ 4.
Plaintiffs claim that the "Ice Breakers" trademark symbolizes
goodwill and a reputation for quality. Compl. at ¶ 12. Retail
sales of "Ice Breakers" gum amounted to approximately $111
million in the first two years after the product was launched.
JPTO, p. 9, ¶ 6. During this same time period, Nabisco spent
approximately $29 million advertising its "Ice Breakers" gum
product; $14 million in 1996 and $15 million in 1997. JPTO, p.
10, ¶ 10.
Plaintiffs contend that development efforts for its "Ice
Breakers" gum began in 1993 and were centered around the
production of a new intensively flavored mint gum. JPTO, p. 7,
¶ 1. However, in October 1994, one year before "Ice Breakers" was
introduced into the marketplace, the largest gum competitor,
Wrigley's, introduced a new gum called Winterfresh that used ice
imagery in its advertising and packaging. Tr. 9/10/98 at 9,
16-17. "Ice Breakers" is a sugarless stick gum that is sold in
three flavors: peppermint, spearmint, and cinnamon. The name "Ice
Breakers" was chosen in July 1994. "Ice Breakers" was meant to
convey to the consumer the idea of "cool, refreshing flavor" as
well as to suggest the colloquial meaning as a "tension-reliever
or conversation-starter." JPTO, p. 8, ¶ 3. "Ice Breakers" gum
comes in a holographic package with the mark "Ice Breakers" in
capital letters that take up most of the front and back of the
package. The brand name Breath Savers also appears above the "Ice
Breakers" logo, but in much smaller lettering. Nabisco's
marketing themes for "Ice Breakers" gum focus on the use of ice
imagery to communicate the cold refreshing taste of their "Ice
Breakers" gum. JPTO, p. 8, ¶ 4.
B. Warner-Lambert and "Dentyne Ice"
Warner-Lambert Co. (hereinafter "Warner-Lambert"), a New Jersey
corporation, is the second leading competitor in the gum market
in the United States, with a market share of 20%. Ranking second
to Wrigley's, whose market share is 40%, Warner-Lambert leads
third-ranked Nabisco, who retains 10% of the gum market. JPTO,
p. 26, ¶ 1. Warner-Lambert owns the "Dentyne" brand name, which
is a well-recognized, nearly one-hundred year-old brand for
chewing gum. JPTO, pp. 5,27 ¶¶ 8,5.
"Dentyne Ice" is a coated pellet chewing gum sold in a 12 piece
foil-sealed clear plastic blister package with a cardboard
overwrap. The name "Dentyne" appears across the top front
one-third of the package and the term "Ice" is italicized across
the middle third of the package. "Ice" also appears on each
blister package, and the "Dentyne Ice" logo appears numerous
times across the foil backing. "Dentyne Ice" comes in three
flavors: peppermint, spearmint, and cinnamon. JPTO, p. 6, ¶¶
The development of "Dentyne Ice" began in Canada in 1994 in
response to the success of Wrigley's EXCEL gum, which was also a
coated pellet gum sold in a blister pack with a cardboard
overwrap that was released for sale in Canada in 1991. JPTO, p.
28, ¶ 8. Nabisco has never rebutted, in either its papers or
during oral argument, Warner-Lambert's contention that "Dentyne
Ice" was developed in response to the success of Wrigley's EXCEL
gum. Tr. 9/10/98 at 10,25. Due to the popular sales of EXCEL in
Canada, Warner-Lambert asserts that it created a new gum with a
cool fresh taste and chose to name it "Dentyne Ice."
Warner-Lambert filed a trademark application for "Dentyne Ice" in
Canada in November 1994, thirteen months before Nabisco launched
its product in the United States, and on June 7, 1996, a
registration was issued for that application. JPTO, pp. 28-30,
¶¶ 8-12. "Dentyne Ice" was sold in Canada beginning in either
February or March 1996, two to three months
after Nabisco launched its "Ice Breakers" gum in the U.S. JPTO,
pp. 14,30, ¶¶ 25,14.
Upon the success of "Dentyne Ice" in Canada, Warner-Lambert put
together a team of employees (hereinafter "Tag Team") to
determine whether it was feasible to launch "Dentyne Ice" in the
United States. JPTO, pp. 13,31, ¶¶ 23,18. After a report was
issued by the Tag Team, which never refers to Nabisco's "Ice
Breakers" gum, and after Warner-Lambert's legal department gave
clearance on the "Dentyne Ice" mark, Warner-Lambert filed a
trademark application with the USPTO on June 4, 1996. JPTO, p.
6, ¶ 9. That application was opposed by Nabisco, and the
opposition proceeding has been suspended pending the outcome in
this case. In March 1997, Warner-Lambert launched its "Dentyne
Ice" sugarless gum for sale in the United States. Sales of
"Dentyne Ice" in the United States have exceeded $30 million.
JPTO, p. 32, ¶ 25.
This civil action was commenced on June 10, 1997. Presently
before the court is defendant's motion for summary judgment.
After a hearing on the motion on September 10, 1998, the court
denied summary judgment on the record. However, on October 5,
1998, the first day of the scheduled trial, the court sua
sponte moved to reconsider its earlier decision denying summary
judgment. After hearing oral argument on the motion to
reconsider, the court now finds and concludes that after a
careful review of the facts and law in this case, Warner-Lambert
has satisfied its burden in proving that there are no genuine
issues of material fact in dispute as to warrant a trial. The
court holds that any reasonable fact finder would find in favor
of Warner-Lambert, and thus, summary judgment is appropriate.
Therefore, for the reasons stated below, defendant's motion for
summary judgment is granted.
A. Standard for Summary Judgment
Fed.R.Civ.P. 56(c) states that summary judgment shall be
granted if "there is no genuine issue as to any material fact and
. . . the moving party is entitled to a judgment as a matter of
law." A dispute about a material fact is genuine "if the evidence
is such that a reasonable jury could return a verdict for the
non-moving party" Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
The moving party has the burden of establishing a prima facie
case demonstrating the lack of a genuine issue of material fact.
Once the moving party meets this burden, the non-moving party has
the burden of providing enough evidence to support a jury verdict
in its favor. See Anderson, 477 U.S. at 249, 106 S.Ct. 2505. In
considering a summary judgment motion, all of the facts must be
viewed in the most favorable manner for the non-moving party.
See Heilweil v. Mount Sinai Hosp., 32 F.3d 718, 721 (2d Cir.
The court must decide whether the evidence presents a "genuine
factual issue that properly can be resolved only by a finder of
fact because it may reasonably be resolved in favor of either
party" Anderson, 477 U.S. at 250, 106 S.Ct. 2505. The court may
only grant summary judgment when "no rational jury could find in
favor of the non-moving party" Gallo v. Prudential Residential
Services, Ltd., 22 F.3d 1219, 1224 (2d Cir. 1994).
In trademark infringement cases, the district court must apply
the undisputed facts to the balancing test outlined in Polaroid
Corp. v. Polarad Elecs., Corp., 287 F.2d 492, 495 (2d Cir.
1961), and may grant summary judgment where it finds, as a matter
of law, that there is no likelihood of confusion to the public.
See Lois Sportswear, USA, Inc. v. Levi Strauss & Co.,
799 F.2d 867 (2d Cir. 1986); Lang v. Retirement Living Publ'g Co.,
949 F.2d 576, 580 (2d Cir. 1991).
1. Standard for Reconsideration
"[B]ecause the denial of a motion for summary judgment is an
interlocutory order, the trial court is free to reconsider and
reverse its decision for any reason it deems sufficient, even in
the absence of new evidence or an intervening change in or
clarification of the substantive law" Lavespere v. Niagara
Machine & Tool Works, Inc., 910 F.2d 167, 185 (5th Cir. 1990),
920 F.2d 259 (5th Cir. 1990); see also, Tillman v. Mason (In
re Mason), 191 B.R. 50, 55 (Bankr.S.D.N.Y. 1996) (holding
bankruptcy court is free sua sponte to reconsider its denial of
party's summary judgment motion).
Therefore, the court exercises its discretion to reconsider its
earlier denial of defendant's motion for summary judgment and
hereby grants summary judgment on the basis that there are no
disputed issues of material fact, and it ...