At the bottom are endorsements, in small gold lettering, from
policemen and Autotech Magazine.
The back of the package includes written instructions and
diagrams on how to use the device, along with an explanation of
the guarantee. Additionally there is a sketch of the device, with
its various features listed with arrows pointing to their
location on the device. Over the sketch it says "The Club," "The
Original . . .," and below it says "Ask For The Club By Name",
"Fully Guaranteed, Details Inside." The keys to the device are
visible on the back enclosed in clear plastic. At the very bottom
in small print appears "Winner International Corp."
Plaintiff sells The Club in color combinations other than red
and black, but ninety-percent of its sales are in the red and
black product. It is this color combination of red and black that
is chiefly at issue.
Defendants sell the Global America steering wheel lock
primarily to Strauss Auto Discount Stores and in flea markets
with total revenues of about $162,500 and an advertising
investment of about $1200. In Strauss Auto Discount Stores it
lists for $19 but is usually sold at a sales price of $10. The
Club sells at Strauss for a price of $39.99.
The general manager of Strauss says that The Club products are
sold together in their own "planogram," apparently a separate
display structure, and not grouped together with Global America
or other competing products.
Defendants' device, as displayed in its package, consists of a
metal rod covered in vinyl, red in color, about one foot, seven
inches long but adjustable in length, with a u-shaped prong
centered at the top of the device and a hook — in the shape of a
partial "u" jutting off to the right side of the middle of the
rod. Above the middle hook is a black lock mechanism. In black
letters on the red rod facing the front of the package, is the
name "Global America." On the bottom is a black plastic grip with
raised bumps. The name "Global America" is etched onto the grip,
facing the front of the package.
The packaging of Global America consists of an outer clear
plastic package, a cardboard insert, and a hole at the top to
hang the product on display. The cardboard is completely black.
The name "Global America," in dim gold, appears twice on the top
of the cardboard insert and in one and a-quarter inch lettering
sideways to the left of the device. There is a picture of a car
towards the top of the insert, with the following list of
features underneath, in English only:
• Easy to Use
• High Visibility
• Maximum Protection
• 3(4) Way Keys for High Security
• Tough Hardened
• Vinyl Coated to protect against damage to car.
There is a dimly lit picture of the device on a vehicle's
steering wheel, and the keys are visible from the front of the
package enclosed in clear plastic.
The back of the package has instructions for use, in English
and French, with two small black-and-white photographs, one
showing the device fully on the steering wheel and one showing it
either half-on or half-off. The name "Global America" appears
twice at the top and twice at the bottom. "Omori Enterprises
Inc." appears in small print at the bottom.
Defendants also sell their device in color combinations other
than red and black, but admit that "they don't sell," meaning
that consumers do not prefer the product in other colors.
II. Legal Criteria
To obtain a preliminary injunction, a plaintiff must show (1)
likelihood of irreparable harm should the injunction be denied
and (2) either (a) likely success by plaintiff on the merits or
(b) sufficiently serious questions going to the merits and a
balance of hardship tipping decidedly in the plaintiff's favor.
Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72
(2d Cir. 1979). A preliminary injunction is an extraordinary
remedy and not granted routinely.
Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), provides,
in pertinent part, for a private cause of action against any
in connection with any goods . . . or any container
for goods, uses in commerce any word, term, name,
symbol, or device, or any combination thereof . . .
which . . . is likely to cause confusion, or to cause
mistake, or to deceive . . . as to the origin,
sponsorship, or approval of his or her goods . . . by
another person. . . .
15 U.S.C. § 1125(a).