and all elements making up the total visual image by which the
product is presented to customers." Jeffrey Milstein. Inc. v.
Greger, Lawlor, Roth, Inc., 58 F.3d 27 (2d Cir. 1995); see also
1 McCarthy § 8:1 at 8-2. The definition of trade dress has now
been "stretched to include the shape and design of the product
itself." Id., § 8.5 at 8-14.
In order to receive trade dress protection, a product must be
either inherently distinctive or have acquired distinctiveness by
achieving a "secondary meaning" in the marketplace. See Two
Pesos, 505 U.S. at 769, 112 S.Ct. 2753. The inquiry into
distinctiveness turns on the total appearance of the product, not
on individual elements. When assessing distinctiveness of a
product design or configuration, courts in this Circuit ask
"whether the design [is] likely to be understood as an indicator
of the product's source." Landscape Forms, Inc. v. Columbia
Cascade Co., 113 F.3d 373, 378 (2d Cir. 1997) (citing Knitwaves,
Inc. v. Lollytogs Ltd., 71 F.3d 996, 1008 (2d Cir. 1995)). The
standard for determining the inherent distinctiveness of a
product's design is more rigorous than that for determining the
inherent distinctiveness of the product's packaging. See
Knitwaves, 71 F.3d at 1008-09.
In Knitwaves, the court held that a line of children's
sweaters featuring copyrighted leaf and squirrel designs was not
protectable trade dress because the designs were not likely to be
understood by consumers as an indication of the manufacturer of
the sweaters. See id. at 1006. In Landscape Forms, the Second
Circuit held that a manufacturer of a line of outdoor furniture
failed to indicate what "unique combination of features" made the
design inherently distinctive. Landscape Forms, 113 F.3d at 381.
After Landscape Forms and Knitwaves, there was doubt in the
Second Circuit as to whether a product's design could ever be
protectable trade dress.
In Samara Bros. v. Wal-Mart Stores, Inc., 49 U.S.P.Q. 1260,
165 F.3d 120 (2d Cir. 1998), however, the Second Circuit,
analyzing a line of children's clothing, resolved some of the
doubt presented by Landscape Forms and Knitwaves. Finding that
the high level of specificity of Samara's clothing line created
a recognizable "distinctive overall look," the court held that
the line possessed sufficiently distinctive trade dress
warranting protection under Section 43(a).*fn13 Id., at 126-27. In
Samara, the manufacturer had chosen to design its clothing line
using consistent design elements so that the look would be
identified with the company. The company had been producing the
same product for years, and the product line represented the core
of its business. See id. at 123-24. The court, departing from
Knitwaves's emphasis on the intent of the manufacturer,
considered both the manufacturer's subjective intent in designing
the line as well as an objective view of the line in finding
plaintiff's trade dress to be protectable under Section 43(a).
It is apparent that even under this more rigorous standard,
the product design of the Goldfish may be considered distinctive
if it is "likely to serve primarily as a designator of origin of
the product." Id. at 123. In determining whether the Goldfish is
a source identifier, subjective considerations of the
manufacturer's intent, an objective viewing of the product, and
the similarity of Goldfish to other products in the market are
all relevant. See 1 McCarthy § 8-13; see also Seabrook
Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344 (Cust.
& Pat.App. 1977).
Relying on these factors, I find that the Goldfish is likely
to be perceived as a designator of origin of the product. The
Goldfish shape, unlike the clothing in Samara, is an
uncomplicated design. The multitude of Pepperidge Farm
advertising samples provided to this Court reveals that this
simple goldfish shape is the element which Pepperidge Farm hopes
consumers readily identify and associate with its snack cracker
products. See advertisements provided in Index of Exhibits
Submitted in Support of Motion for Preliminary Injunction, Exs.
11-15. The Goldfish shape, the most salient feature of the
product design, dominates these advertisements. Pepperidge Farm
has produced Goldfish continuously for thirty-seven years. The
shape is extremely well known in the snack cracker trade.*fn14 In
addition, the abundance of unsolicited media attention garnered
by the Goldfish indicates that the public recognizes the shape of
the Goldfish as a source identifier. While in Samara the court
found distinctivenes in the many details of the line of clothing,
here distinctiveness arises from one overwhelming element of the
product — the simply designed, identically-shaped Goldfish.
Because the Goldfish are inherently distinctive, there is no
need to address whether the product design has acquired a
secondary meaning.*fn15 In order to obtain a preliminary injunction,
Pepperidge Farm must now satisfy the remaining requirements of a
dilution claim — a famous mark and either blurring or
tarnishment — or the requirements of a trademark infringement
claim by showing a likelihood of confusion.
VI. Pepperidge Farm's Dilution Claim
Pepperidge Farm seeks to preliminarily enjoin Nabisco from
using the goldfish shape on the ground that it would dilute the
Goldfish mark in violation of New York state law and Section
43(c) of the Lanham Act, 15 U.S.C. § 1125(c). The New York and
federal statutes are similar in many respects and may be analyzed
together. Both require that the mark have a "distinctive
quality." In addition, both statutes permit a claim for dilution
regardless of whether there is proof of consumer confusion.
A. New York General Business Law § 368-d
The New York General Business Law provides that:
[l]ikelihood of injury to business reputation or of
dilution of the distinctive quality of a mark or
trade name shall be a ground for injunctive relief
in cases of infringement of a mark registered or
not registered or in cases of unfair competition,
notwithstanding the absence of competition between
the parties or the absence of confusion as to the
source of the goods or services.
N Y Gen. Bus. Law § 368-d.
"In sum, the statute protects a trademark's `selling power.'"
Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026,
1030 (2d Cir. 1989) (quoting Sally Gee, Inc. v. Myra Hogan, Inc.,
699 F.2d 621, 624-25 (2d Cir. 1983)). In order to establish a
claim for dilution under New York law, two elements must be
shown: (1) ownership of a distinctive mark, and (2) a likelihood
of dilution. See Hormel, 73 F.3d at 506 (2d Cir. 1996); Sally
Gee, 699 F.2d at 625.
The second element may be established by a showing of either
tarnishment or blurring. Blurring involves an injury to the
mark's selling power, and occurs when there is a possibility that
the mark will lose its ability to serve as a unique identifier of
an owner's products, due to another party's use. "[B]lurring
sufficient to constitute dilution requires a case-by-case factual
inquiry." Mead Data, 875 F.2d at 1035 (Sweet, J., concurring).*fn16
In Mead Data, Judge Sweet articulated a six-step analysis for
considering the likelihood of dilution by blurring: 1) similarity
of the marks; 2) similarity of the products covered by the marks;
3) sophistication of consumers; 4) predatory intent; 5) renown of
the senior mark; and 6) renown of the junior mark. See id. These
factors are balanced to determine whether a likelihood of
dilution by blurring exists.*fn17
B. Federal Trademark Dilution Act of 1995
The Federal Trademark Dilution Act of 1995 (the "FTDA"),
15 U.S.C. § 125(c), establishes a federal cause of action against
persons who trade on the goodwill of famous marks to dilute their
distinctiveness. The FTDA protects famous marks and famous trade
dress even in the absence of a likelihood of confusion. See,
e.g.; I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 49
U.S.P.Q.2d 1225 (1st Cir. 1998); Clinique Laboratories, Inc. v.
Dep Corp., 945 F. Supp. 547 (S.D.N.Y. 1996); Sara Lee Corp. v.
American Leather Products, No. 97 C 4158, 1998 WL 433764
(N.D.Ill. July 29, 1998).
Section 43(c) of the Lanham Act states in pertinent part:
The owner of a famous mark shall be entitled,
subject to the principles of equity and upon such
terms as the court deems reasonable, to an
injunction against another person's commercial use
in commerce of a mark or trade name, if such use
begins after the mark has become famous and causes
dilution of the distinctive quality of the mark. .
15 U.S.C. § 1125(c). "Dilution" in the Act is defined as "the
lessening of the capacity of a famous mark to identify and
distinguish goods or services, regardless of the presence or
absence of — (1) competition between the owner of the famous
mark and other parties, or (2) likelihood of confusion, mistake,
or deception." 15 U.S.C. § 1127.
Because the FTDA was enacted just three years ago, precise
standards for interpreting the statute have not yet emerged.*fn18
The legislative history of the
Act indicates that its purpose is "to protect famous trademarks
from subsequent uses that blur the distinctiveness of the mark or
tarnish or disparage it, even in the absence of a likelihood of
confusion." H.R.Rep. No. 374, 104th Cong., 1st Sess. 3 (1995)
U.S.Code Cong. & Admin. News 1995 pp. 1029, 1030. The Act created
a federal cause of action to protect trademarks from unauthorized
users who "attempt to trade upon the goodwill and established
renown of such marks." Id.
The language of the FTDA requires that a mark be truly
"distinctive and famous," a higher standard than that required
for ordinary Lanham Act protection. 15 U.S.C. § 1125(c)(1).*fn19 The
statute provides a non-exclusive list of eight factors that
courts should consider in determining whether a mark is
"distinctive and famous." 15 U.S.C. § 1125(c)(1). The eight
factors are: (1) the degree of inherent or acquired
distinctiveness of the mark; (2) the duration and extent of use
of the mark in connection with the goods; (3) the duration and
extent of advertising and publicity of the mark; (4) the
geographical extent of the trading area in which the mark is
used; (5) the channels of trade for the goods or services with
which the mark is used; (6) the degree of recognition of the mark
in the trading areas and channels of trade used by the mark's
owner and the person against whom the injunction is sought; (7)
the nature and extent of the use of the same or similar marks by
third parties; and (8) whether the mark was registered under the
Act as of March 3, 1881, or the Act of February 20, 1905, or on
the principal register.
1. Ownership of a Famous Mark
a) the degree of inherent or acquired distinctiveness of the
Congress indicated that courts should be discriminating in
categorizing a mark as "famous." See House Rep. 104-374 (Nov. 30,
1995). The "distinctiveness" of the mark, as the term is used in
this context, is essentially synonymous for fame and not a term
of art.*fn20 Therefore, it is necessary for a mark to be more than
merely inherently distinctive (or to have acquired
distinctiveness through secondary meaning). The threshold finding
of distinctiveness discussed above is a necessary, but not
sufficient, element of fame. This factor requires consideration
of the strength and fame of the mark.
Pepperidge Farm has produced and sold Goldfish continuously
since 1962. When measured in sales dollars, Pepperidge Farm's
Goldfish are the number one ranking cheese snack cracker.*fn21 See
Callaghan Supp. Decl. at ¶ 3. Between 1995 and 1998, Pepperidge
Farm spent a total of more than $120 million marketing the
Goldfish line. The Goldfish brand, particularly its recent
marketing and success, have received extensive and unsolicited
media coverage. It is recognized among consumers, the media, and
the cracker and cookie industry as a famous brand.
A certain degree of third-party use of the mark may indicate
a weakened mark. See Lever Bros. Co. v. American Bakeries Co.,
693 F.2d 251, 256-57 (2d Cir. 1982). Nabisco argues that
Pepperidge Farm has lived in "peaceful coexistence" with numerous
third-party uses of aquatic-shaped animal crackers, such as
"Guppies" by Prepared Products Co., "Dolphins & Friends" by Austin
Quality Foods, Inc., "Whales" by the Stauffer Biscuit Company,
and "Nantucket Cheese Whales" by the Bachman Company. Compare
photographs attached to Pl. Opp'n. Mem., Exs. 3-6.
While whales, guppies, and dolphins are all sea creatures,
none of these crackers are goldfish-shaped. "The owner of a mark
is not required to police every conceivably related use thereby
needlessly reducing non-competing commercial activity and
encouraging litigation in order to protect a definable area of
primary importance." Playboy Enterprises, Inc. v. Chuckleberry
Publishing, Inc., 486 F. Supp. 414, 422-23 (S.D.N.Y. 1980), aff'd,
687 F.2d 563 (2d Cir. 1982).
Nabisco also argues that Pepperidge Farm tolerated Nabisco's
use of two animal-shaped crackers, which it marketed during the
past eight years. The first, Ritz Ark Animals, sold from 1995 to
1998, does not appear to contain any fish-shaped crackers
remotely resembling a goldfish. See photograph attached to Pl.
Opp'n. Mem., Ex. 8 The second, "Snorkels," which Nabisco produced
between 1992 and 1996, does indeed contain goldfish in a mix of
six different animal-shaped crackers.*fn22 See photograph attached
to Pl. Opp'n Mem., Ex. 7. Pepperidge Farm acknowledged at the
January 25 hearing that it had made a mistake in not challenging
"Snorkels" in 1992. See Tr. at 13-14. However, in the four years
Nabisco produced "Snorkels," its market share was very small,
holding, at its height, only .3% of the snack cracker market. See
Tr. at 10. This small third-party use of a goldfish-shaped
cracker did not diminish the strength of the Goldfish mark.
Despite very limited third-party use, the Goldfish
configuration mark is exceptionally strong. This factor, then,
weighs in favor of the Goldfish mark being "distinctive and
famous" under 15 U.S.C. § 1125(c)(1).
b) the duration and extent of use of the mark in connection
with the goods or services with which the mark is used
The relevant criteria used to assess this factor are similar
to those criteria used to show that a mark is strong or has
acquired secondary meaning in the context of finding
distinctiveness. See 3 McCarthy § 24:92 at 24-152.*fn23 As described
above, Goldfish crackers have been available since 1962. They are
ranked as the number one selling cheese snack cracker in sales
dollars and the number two selling cheese snack cracker in sales
volume. Between August 1997 and August 1998, Goldfish reached
over $234 million in total sales. See Callaghan Supp. Decl., Ex.
A at 2. This extended duration and high volume of use tend to
make the Goldfish mark distinct and famous.
c) the duration and extent of advertising and publicity of
This factor focuses on advertising. See 3 McCarthy § 24:92 at
24-152. Pepperidge Farm has spent over $120 million in