The opinion of the court was delivered by: Sprizzo, District Judge.
MEMORANDUM OPINION AND ORDER
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.
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."
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.
Courts in this Circuit, in considering whether a junior user's mark is
likely to cause confusion, weigh the eight factors outlined by Judge
Friendly in Polaroid Corp. v. Polard Electronics Corp., 287 F.2d 492, 495
(2d Cir.). cert. denied., 368 U.S. 820,
82 S.Ct. 36, 7 L.Ed.2d 25 (1961). The "Polaroid" factors
include: (1) the strength of the plaintiff's mark; (2) the degree of
similarity between the two marks; (3) the proximity of the products; (4)
the likelihood that the prior owner will "bridge the gap"; (5) actual
confusion; (6) the defendant's good faith in adopting its mark; (7) the
quality of the defendants' product; and (8) the sophistication of the
buyers. See id. The above-referenced factors are not an exclusive list,
nor is any single factor determinative, rather "the proper approach is to
weigh each factor in the context of the others to determine if, on
balance, a likelihood of confusion exists." W.W.W. Pharmaceutical Co.,
Inc. v. The Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993). An
examination of the above-factors leads the Court to conclude that Conopco
has failed to establish a likelihood that consumers will be confused into
believing that the ROMANCE bottle is somehow sponsored by and/or
associated with ETERNITY.
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."
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
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 ...