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.
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 appears that summary
judgment to Warner-Lambert is appropriate.
2. Fed.R.Civ.P. 56(e) Challenge to Authenticity of Defendant's
Plaintiffs challenge the sufficiency of Warner-Lambert's
documentary evidence, claiming that almost all of defendant's
evidence was unauthenticated. Specifically, Nabisco takes issue
with Exhibits 7 and 19 to Warner-Lambert's memorandum in support
of summary judgment, which consist of documents prepared by
Nabisco's advertising agency, a list of third-party uses of the
term "Ice," and certified copies of federal trademark
registration certificates, accompanied by photographs of the
products bearing the "Ice" mark. Pls.' Mem. Supp. Summ. J.
(hereinafter "Pls.' Br.") at 7-8.
Rule 56(e) requires that "[s]upporting and opposing affidavits
shall be made on personal knowledge, shall set forth such facts
as would be admissible in evidence, and shall show affirmatively
that the affiant is competent to testify" Fed.R.Civ.P. 56(e).
The court finds that the documents prepared by Nabisco and listed
as exhibits by Warner-Lambert are sufficiently reliable, and thus
authentic, given that Nabisco produced most of these documents
during discovery and included them on its proposed exhibit list
that is attached to the joint pre-trial order. There can be no
genuine issue over their authenticity given Nabisco's intention
to introduce such documents on its behalf at trial. The certified
copies of federal trademark registrations are also sufficiently
authenticated by virtue of their certified status. As for the
proffered photographs of products bearing the Ice mark, the court
finds that Warner-Lambert has cured any potential authenticity
problems by submitting additional affidavits of Michael F.
Ciociari, Judy H. Bello, and Janice Mitchell attesting to the
purchase of such products.
Given the resolution of this procedural challenge, the court
now turns its attention to the merits of Warner-Lambert's summary
B. Plaintiffs' Claims Under the Lanham Act
Plaintiffs bring federal law claims for trademark infringement
and false designation of origin under § 32(1) and § 43(a)(1) the
Lanham Act, 15 U.S.C. § 1114(1) and § 1125(a)(1), respectively.
In order to prove trademark infringement or false designation
under the Lanham Act, it is necessary to show a likelihood of
confusion by the consuming public as to the source or sponsorship
of the disputed product; in this case, "Dentyne Ice." See
Centaur Communications, Ltd. v. A/S/M Communications, Inc.
830 F.2d 1217, 1225 (2d Cir. 1987); Lois Sportswear, 799 F.2d at
The Lanham Act provides trademark protection for two categories
of marks, those that are federally registered and those that are
unregistered but still qualify for protection based on their
classification. Section 32(1) of the Lanham Act provides that
"[a]ny person who shall, without the consent of the
(a) use in commerce any reproduction, counterfeit,
copy or colorable imitation of a registered mark
in connection with the sale, offering for sale,
distribution, or advertising of any goods or
services on or in connection with which such use
is likely to cause confusion, or to cause
mistake, or to deceive;
(b) reproduce, counterfeit, copy or colorable imitate
a registered mark and apply such reproduction,
counterfeit, copy or colorable imitation to
labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used
in commerce upon or in connection with the sale,
offering for sale, distribution, or advertising
of goods or services on or in connection with
which such use is likely to cause
confusion, or to cause mistake, or to deceive,
shall be liable in a civil action by the registrant .
15 U.S.C. § 1114(1)(1994).