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January 26, 1999


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.


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"

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, ¶¶ 10-12.

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.

C. Procedural History

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. 1994).

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), reh'g denied, 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 ...

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