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May 7, 1999


The opinion of the court was delivered by: Sprizzo, District Judge.


In this action for trademark infringement, trade dress infringement, unfair competition and dilution, plaintiffs Conopco, Inc., d/b/a Calvin Klein Cosmetics Company, and Calvin Klein Cosmetic Corporation. (collectively "Conopco") seek preliminary injunction against Cosmair Inc., Polo Ralph Lauren Corporation, and PRL USA Holdings, Inc., (collectively "Cosmair"), from selling or advertising on of Cosmair's new products that Conopco claims, inter alia, infringes on its trade- mark and trade dress rights. For the reasons set forth below, the Court denies Conopco's motion for a preliminary injunction and Cosmair's cross-motion for attorney's fees.


Conopco is the licensee of Calvin Klein Industries responsible for manufacturing and marketing various cosmetics that bear the name "Calvin Klein." See Transcript of Hearing held on July 20-23, 29, August 17-19, September 17, 1998, ("Tr.") at 62-63. ETERNITY is one of ten brands Calvin Klein Cosmetics handled by Conopco. See id. at 66. The ETERNITY line products is sold in approximately 2,000 retail stores here in the United States and throughout the world. See id. at 83-84. The line includes an eau de parfum,*fn1 higher quality perfume product, and ancillary products such as soap and scented candles. See id. at 77-79.

Prices for the fragrance products range from $30 for a smaller-size, low-grade fragrance up to $180 for the one-ounce high quality perfume. See id. at 71, 78-79. The bottle and trade dress of the "premium," high-end ETERNITY perfume is the product at the heart of the instant litigation. Since 1988, ETERNITY sales in the United States of the higher quality perfume product have averaged about $500,000 a year — just less than two percent of the total ETERNITY fragrance business. See id. at 104, 178-79; Defendants' Exhibit ("DX") AQ-17; Plaintiffs' Exhibit ("PX") 12. The ETERNITY perfume bottle is described by Conopco as their "icon bottle;" it is supposed to be the image the consumers picture when they think of ETERNITY. See id. at 114-15, 793-94.

The high quality ETERNITY perfume is sold in a bottle that is a registered trademark*fn2 owned Conopco and held by plaintiff Calvin Klein Cosmetic Corporation. See id. at 65, 78. It is "elegantly dimensioned" and made of "high clarity flint glass." See PX-1. It has "bevelled edges, and heavy walled distribution." Id. The design "gives the illusion of a bottle within a bottle, with softly contoured sides, and the fragrance free floating in the inner bottle cavity." Id. The bottle's cap is a squared-off silver-colored stopper. See Tr. at 119-20.

On June 19, 1998, Conopco filied a complaint seeking injunctive relief to "prevent [Cosmair] from infringing — and eventually destroying" their "valuable, federally-registered trademark" — their "icon bottle."*fn3 See Plantiffs' Complaint ("Compl.") at 1. This followed a May 1st article in the trade publication Women's Wear Daily that led Conopco to believe that the defendant, Cosmair, a licensee of Ralph Lauren, see Tr. at 545, planned to launch a line of fragrance products that would directly compete with its ETERNITY products. See id. at 90-93. This new line of products would be sold under the name ROMANCE.*fn4 Cosmair hoped to have advertisements in September magazines and launch the new product on August 15th.*fn5 See id. at 577, 586.

Like ETERNITY, ROMANCE is a "prestige fragrance." Id. at 535. As such, it is sold in specialty stores or department stores and commands a fairly high price. See id. Cosmair also includes a photograph of the ROMANCE bottle, currently its highest quality perfume, in all advertising and related marketing displays for the entire ROMANCE line of products. See id. at 587-88. Cosmair planned to use this bottle to advertise the ROMANCE line and hoped the bottle would become its "icon bottle" over time. See id. at 588-89. It is this bottle which Conopco believes infringes on its trademark.

Focus group participants called the ROMANCE bottle "[p]ure, simple, modern," and "elegant." Id. at 562. Technically speaking, however, the container is a squat, rectangular, glass bottle with straight edges. See id. at 252-53, 550-51. It has a silver cap that is flat and square, unlike the curved "T"-shape cap of the ETERNITY perfume bottle. See DX-AD7. The name "RALPH LAUREN ROMANCE" appears on the collar of the cap.*fn6 See Tr. at 576-78, 781. Although the walls are slightly curved, they are "as thin and straight as technically possible." See id. at 550, 705-706.

Conopco claims that Cosmair's use of the ROMANCE perfume bottle and the trade dress chosen for the ROMANCE line are likely to cause confusion among consumers regarding the identity, origin, association or affiliation of each product. Accordingly, Conopco alleges that it is continuously and irreparably harmed so long as Cosmair is allowed to continue to use the ROMANCE perfume bottle,*fn7 in violation of the Lanham Act, New York's antidilution statute, and the New York common law of unfair competition.


A party seeking a preliminary injunction must establish: "1) that it is subject to irreparable harm; and 2) either a) that it will likely succeed on the merits or b) that there are sufficiently serious questions going to the merits of the case to make them a fair ground for litigation, and that a balancing of the hardships tips `decidedly' in favor of the moving party." Genesee Brewing Co. v., Stroh Brewing Co., 124 F.3d 137, 142 (2d Cir. 1997) (citing Warner-Lambert Co. v. Northside Dev. Corp., 86 F.3d 3, 6 (2d Cir. 1996)). "Moreover, the moving party must show that the likelihood of, irreparable injury is more than a mere "possibility." Rather the moving party must demonstrate that it is likely to suffer irreparable harm if equitable relief is denied. See Fun-Damental Too, Ltd., v. Gemmy Industries Corp., 111 F.3d 993, 999 (2d Cir. 1997). Where a plaintiff in an action for trademark or trade dress infringement seeks injunctive relief "the requirement of irreparable harm carries no independent weight," and "a showing of likelihood of confusion establishes irreparable harm." Genesee Brewing, 124 F.3d at 142 (citing Hasbro, Inc, v. Lanard Toys, Ltd., 858 F.2d 70, 73(2 Cir. 1988)). Finally, the issuance of a preliminary injunction is an extraordinary remedy that should not be granted unless the moving party has made a clear showing of entitlement to such relief. See Jayaraj v. Scappini, 66 F.3d 36, 38-39 (2d Cir. 1995). With this in mind, the Court turns to address Conopco's trademark and trade dress claims.


Plaintiff Conopco has brought causes of action under the Lanham Act for trademark and trade dress infringement 15 U.S.C. § 1114,*fn8 and false designation of origin, 15 U.S.C. § 1125(a).*fn9 To recover for trademark or trade dress infringement under Section 43(a), a plaintiff must prove two elements: "(1) that its trademark or dress is protectable because (a) it is inherently distinctive or (b) it has acquired distinctiveness by achieving `secondary meaning' in the marketplace; and (2) that there is a likelihood of confusion, between its product and the defendant's product." Samara Bros., Inc. v. Wal-Mart Stores, Inc., 165 F.3d 120, 124 (2d Cir. 1998) (citing Fun-Damental Too, 111 F.3d at 999). However, the distinctiveness inquiry is truncated when a validly registered federal trademark becomes "incontestable" after five years of continuous use subsequent to its registration. See Gruner Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1976-77 (2d Cir. 993). The Second Circuit has made it "clear that a decision by the USPTO to register a mark without proof of secondary meaning `affords a rebuttable presumption that the mark is more than, merely descriptive.'" Arrow Fastener Co. Inc. v. The Stanley Works, 59 F.3d 384, 393 n. 6 (2d Cir. 1995) (quoting McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1.132 (2d Cir, 1979)). In the instant action Cosmair concedes that Conopco's registration, of the ETERNITY bottle's trade dress is valid. See Tr. at 1177. Thus, the only question left for the Court to consider in deciding the issue of infringement is whether Cosmair's product is likely to cause confusion. See The Sports Authority, Inc. v. Prime Hospitality Corp., 89 F.3d 955, 960 (2d Cir. 1996); Arrow Fastener, 59 F.3d at 391.

Strength of the Mark

The "strength of the mark" analysis refers to the mark's ability "to identify the goods sold under the mark as emanating from a particular, although anonymous source." McGregor-Doniger, 599 F.2d at 1131. This analysis turns on a variety of factors, including the classification of the trademark or dress on the Abercrombie continuum as either generic, descriptive, suggestive, or arbitrary, see Arrow Fastener, 59 F.3d at 391, the presence or absence of secondary meaning, id., and the overall effect of the packaging." Fun-Damental Too, 111 F.3d at 1003. Ultimately, however "the essence of the analysis is to determine the strength of the [trademark] or trade dress in the commercial context." Id.

Conopco argues that its trade dress*fn10 is inherently distinctive because they hold an incontestable trademark in the bottle at issue and because of the "virtually unlimited choices" available to fragrance bottle designers. See Plaintiffs' Post-Hearing Memorandum in Further Support of Motion for Preliminary Injunction ("Pls.' Mem.") at 11. Conopco notes that fragrance bottles come in "myriad sizes, color combinations, and shapes" see PX-43A through PX-43TT, and that bottle caps also come in a variety of colors and shapes. See id. In response, Cosmair concedes the validity of Conopco's trademark, but contends that Conopco's trademark is entitled to a limited scone of protection because "it consists of a' combination of design elements used frequently throughout the fragrance industry." Defendants' Post-Hearing Brief in Opposition to Plaintiffs' Motion for Preliminary Injunction ("Defs.' Mem.") at 2-4.

The Court concludes that Conopco's trade dress for its ETERNITY perfume bottle is inherently distinctive because it is an incontestably registered trademark, and therefore is entitled to protection. This, however, does not end the inquiry because a finding of inherent distinctiveness "does not guarantee that the mark is a strong one." Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 744 (2nd Cir. 1998) (quoting W.W.W. Pharmaceutical Co., 984 F.2d at 572); Lever Bros. v. American Bakeries Co., 693 F.2d 251, 256-57 (2nd Cir. 1982) (holding that even an arbitrary trademark can be a weak indicator of the origin or source of a product). In the case at bar, the Court finds that the ETERNITY perfume bottle's trade dress is weak because, considered as a whole, it is quite similar to perfume bottles used by past and present fragrance designers, and is therefore not particularly distinct. See Tr. at 234-37; PX-42, 43L, 43O, 43U, 43X; DX-B2, Dl, D3, D4. Moreover, Conopco's own fact witness, Sheila Cutner, testified that the ETERNITY bottle contains many elements that are common in the industry including the hourglass bottle, see Tr. a 253-59, the beveled edges, see id. at 253 282-83, the absence of a designer name or product label, see id. at 248-52, 551-52 and a bottle top that contains a collar or ring. See id. at 259. In addition to being weak because it is similar to other trade dresses in the marketplace, the ETERNITY perfume bottle's trade dress is weak for another reason: Conopco has failed to prove that its trade dress possesses secondary meaning.

To establish the existence of secondary meaning, a plaintiff must show
that "in the minds of the public, the primary significance of a product
feature or term to identify the source of the product rather than the
product itself." Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc.,
973 F.2d 1033, 1041 (2d Cir. 1992). In making this assessment, certain
factors guide the Court. They include, but are not limit to, "(1)
advertising expenditures, (2) consumer studies linking the mark to
source, (3) unsolicited media coverage the product, (4) sales success,
(5) attempts to plagiarize the mark, and (6) length and exclusivity of
the mark's use." Centaur Communications, Ltd. v. A/S/M Communications,
Inc.,  830 F.2d 1217, 1222 (2d Cir. 1987). At issue here is whether and
to what extent the Court should credit the ...

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