The opinion of the court was delivered by: Scheindlin, District Judge.
Jacqueline Brandwynne ("Brandwynne") and Brandwynne
Corporation, ("Bran.Corp.") (collectively "Brandwynne" or
"plaintiffs") sued Combe Incorporated ("Combe Inc."), Combe
International, Ltd. ("Combe Int'l"), a wholly-owned subsidiary of
Combe Inc., Chapin Nolen, the former President of Combe Inc., and
Thomas Smith, the former Vice President of Combe Int'l
(collectively "Combe" or "defendants") in April 1998, alleging
various claims of misappropriation of trade secrets, unfair
competition, fraud, breach of contract, unjust enrichment, breach
of fiduciary duty, common law trademark infringement and
violations of the Lanham Act, 15 U.S.C. § 1125(a). Jurisdiction
is based on the Lanham Act, 15 U.S.C. § 1051 et seq.,
28 U.S.C. § 1331 (federal question), 1332 (diversity of citizenship), 1338
(jurisdiction to adjudicate cases involving trademark
infringement and accompanying claims of unfair competition) and
1367(a) (supplemental jurisdiction).
This case arises out of Brandwynne's dashed hopes for a joint
venture with defendants to produce and market her concept for a
non-medicinal vaginal moisturizer. Brandwynne, a newcomer to the
feminine hygiene industry, lacked the capital to effectively
introduce her product into the national marketplace. Combe, by
contrast, the health and beauty aid giant, possessed the
financial capability and preexisting national distribution
network to establish a prominent name brand vaginal moisturizer.
Brandwynne alleges that after confidentially revealing her
concept for a "unique" niche product, defendants rejected her
joint venture proposal and, despite the parties' secrecy
agreement, misappropriated and successfully marketed plaintiffs'
concept. Defendants now move for summary judgment on all of
plaintiffs' claims.*fn1 Defendants argue that plaintiffs' claims
for misappropriation of certain ideas or breach of the secrecy
agreement are fatally flawed because plaintiffs' concept was
neither novel nor original and, therefore, already in the public
domain. Second, defendants contend that plaintiffs do not possess
protectable trademark or trade dress rights in the product,
thereby defeating any trademark and trade dress claims. Finally,
defendants note that plaintiffs' false advertising claims are
unsupported by any evidence. For the reasons that follow,
defendants motion for summary judgment is granted in its
Plaintiffs manufacture and market a vaginal moisturizer called
"Very Private Intimate Moisture".*fn2 See Plaintiffs' Local
Civil Rule 56.1 Statement of Undisputed Facts ("Pls.' 56.1") ¶
1.*fn3 Combe Inc. manufactures and markets a competing line of
feminine hygiene products sold under the registered VAGISIL ®
trademark. See Defendants' Local Civil Rule 56.1 Statement of
Undisputed Facts ("Defs.' 56.1") ¶ 4.
A. Brandwynne's Product Concept
Prior to September 1993, Brandwynne recognized that as many as
80 million American women between the ages of 37 and 79
experience vaginal dryness for a variety of physiological and
psychological reasons, such as menopause, chemotherapy,
lactation, stress, or poor self-image. See Pls.' 56.1 ¶¶ 8 & 9;
Amended Complaint ("Amended Compl.") ¶¶ 12 & 13. To tap this
enormous potential market, Brandwynne conceived a line of vaginal
moisturizer products to relive dryness and enhance sexual
pleasure. Brandwynne alleges that prior to her development of
this concept, other vaginal lubricants were marketed exclusively
as sexual lubricants or for medical purposes. See Amended
Compl. at ¶ 14. Although vaginal suppositories were available,
Brandwynne considered them awkward and unnatural. Id. ¶ 16.
According to plaintiffs, the product concept for an "intimate
moisturizer, so natural, it functions and feels like [a] woman's
own moisture" was unique at that time. See Pls.' 56.1 ¶¶ 10 &
? Gynecologist tested and approved.
? Leaves no residue, discreet, not visible.
? Hypo-allergenic, unscented.
? Compatible with condoms.
Report at 16. Brandwynne believed that the above features, as
well as the packaging and marketing of her product combined to
create a unique idea. See Pls.' 56.1 ¶ 11. Specifically,
Brandwynne's Report touted the following features relevant to
Report at 15 (emphasis in original). In the Spring of 1993,
Brandwynne filed an application for the registration of the
phrase "So Natural, Like a Woman's Own Moisture" with the United
States Patent and Trademark Office ("PTO").
at ¶ 22.
B. Brandwynne's Negotiations With Defendants
In April 1994, seven months after meeting with Combe,
Brandwynne began marketing and selling "Very Private Intimate
Moisture" in interstate commerce. The product is contained in a
white plastic bottle, designed to stand on its top with the
dispenser at the bottom, with a beige and white label with green
lettering. The brand name "Very Private" appears in enlarged
white capital letters within a green rectangle; the remainder of
the text, separated from the name, includes the words "intimate
moisture" in green lettering on a white and beige background. The
bottle is packaged in a box measuring 4-5/8" high by 1-7/8" wide
by 1-3/8" deep and featuring the identical lettering and color
motif of the bottle. See Defs.' 56.1, Exs. 74 & 75. The front
of the box features, in part, the following text:
Defs.'s 56.1, Ex. 75 (emphasis in original). The back of the box
states, in part:
Id. (emphasis in original). In 1997, the text on the box was
revised slightly. See Defs.'s 56.1, Ex. 76. On the Very Private
web site, <www.veryprivate.com>, plaintiffs use the terms
"intimate moisture" and
"intimate moisturizer" interchangeably. See Defs.' 56.1, Exs.
77-78 A-I ("A few drops of intimate moisturizer before and
after intimacy will do the trick"; "The first intimate moisture
to eliminate vaginal dryness instantly . . ."; "The first
intimate moisturizer that feels as natural as a woman's own
lubricating fluid"; "It is advisable to always use an intimate
moisturizer before intercourse to protect the tender tissue").
On September 10, 1997, Brandwynne filed an application with the
PTO to register the term "VERY PRIVATE INTIMATE MOISTURE" as a
trademark for "non-medicated personal hygiene preparations for
vaginal care; namely, washes, lubricants, moisturizers,
conditioners, lotions, cleansers, personal care preparations,
moisturizing lotions, body lotions and skin lotions." Pls.'
Application to PTO, Defs.' 56.1, Ex. 74. In that application,
Brandwynne disclaimed the exclusive right to use the word
"moisture" apart from the mark. Id.
Plaintiffs have only sold Very Private Intimate Moisture in
Colorado, California and Texas. Sales in 1998 were $100,000.
See Pls.' 56.1 ¶ 59. Brandwynne did not advertise until 1996.
Subsequent advertising expenses were $11,336 in 1996, $52,875 in
1997 and $52,875 in 1998. See Pls.' Response to Defs.'s Third
Set of Interrogatories, Defs.' 56.1, Ex. 79.
D. Combe's Commercialization of "VAGISIL® Intimate
As early as 1973, Combe Inc. began manufacturing and marketing
a line of feminine hygiene products in the United States under
the registered trademark VAGISIL®, including VAGISIL® medicated
lotions, VAGISIL® medicated cremes, VAGISIL® cosmetic powder,
VAGISIL® cosmetic deodorant sprays and washes, VAGISIL® vaginal
suppositories and VAGISIL® lotions for feminine use. See Defs.'
56.1, Exs. 80-85. In May 1993, five months before Brandwynne
approached Combe with her concept, Cynthia D'Andrea-Herns,
Combe's feminine hygiene product expert, distributed to high
level management at Combe Inc. and Combe Int'l a memorandum which
included a comprehensive overview of the market for products that
alleviate vaginal dryness. See Memorandum, May 7, 1993, Pls.'
56.1, Ex. 6. D'Andrea-Herns' scientific and market research
indicated potential for future growth. While Johnson & Johnson
marketed K-Y Jelly first as an aid to medical professionals and
later as a sexual lubricant, two other manufacturers were
producing and marketing "breakthrough" moisturizers much like
Very Private. Id. at 1127-28. D'Andrea-Herns noted that
Warner-Lambert's REPLENS® and Schering-Plough's GYNE-MOISTRIN®
featured characteristics aimed at a new female market. Id. at
In July 1995, twenty-two months after Brandwynne's
presentation, Combe Inc. began to test market a vaginal
moisturizer called VAGISIL® intimate moisturizer. See Defs.'
56.1 ¶ 61. The product, a clear, non-medicated liquid designed
for digital application, was launched for national retail sales
in April 1996. See id. at ¶¶ 61 & 62. The product is contained
in a pearl-colored plastic bottle, designed to stand upright with
the dispenser at the top. The bottle contains blue and purple
lettering and a large stylized "V" in a blue box. The back of the
bottle contains the following text:
It's like your own natural moisture is back —
instantly. Unlike ordinary jelly, gels, creams and
lubricants, this light, clear lotion is a unique
blend of moisturizers specially created to feel
smooth as liquid silk. Never greasy or messy. Water
soluble, so it can't harm tampons or condoms. Gentle
too, to use as often as you like to relieve or
prevent vaginal dryness.
Defs.' 56.1, Ex. 87. Originally, the product was packaged in a
box measuring 4-3/8" high by 3-1/8" wide by 1" deep and labeled
"Vagisil Intimate Moisturizer". See id.
Subsequently, Combe dropped the "TM" symbol appearing after the
word "Moisturizer" on its bottles and boxes. Defs.' 56.1 ¶ 65 &
E. The Market for Vaginal Moisturizers/Lubricants Prior to
Plaintiffs argue that when Brandwynne brought her Very Private
concept to the attention of Combe, there were no other products
on the market similar to Very Private Intimate Moisture in its
totality. Nevertheless, plaintiffs acknowledge that prior to that
time, other vaginal moisturizers and lubricants were available to
consumers. See Pls.' 56.1 ¶ 22. Indeed, Brandwynne's own March
1993 Report contains a chart distinguishing Very Private from six
available competing products. See Report at 25 & 26.
Plaintiffs' chart is reproduced below in its entirety.
NAME POSITIONING CHARACTERISTICS MOISTURIZING/
KY Jelly, General lubricant. Old-fashioned tube and packaging OK for lubricating;
Johnson & (30 years old); used by gynecologists medicinal; not elegant;
Johnson and hospitals; not formulated
sticky; dries quickly; feels and to moisturize.
Ortho Personal Lubrication for Water solubl'e gel; messy; old OK for lubricating;
Lubricant, sexual intercourse fashioned tube and packaging; not formulated to
cant, Johnson or vaginal dryness. looks and smells unappealing; moisturize.
& Johnson sticky.
Replens, Colombia Vaginal moisturizer. Applied with syringe-like applicator; Moisturization good
Laboratories recommended by gynecologists; after extended use;
cumbersome and polymer adheres to
sometimes "clots"; white and vaginal wall.
greasy; very medicinal; requires
continued therapy; not
Today Personal General lubricant modern gel in a pump dispenser; OK for lubricating;
Lubricant, and sexual lubricant. transparent; sticky; not not formulated to
American gynecologist recommended. moisturize.
Lubrin Suppositories, Lubricant for Waxy suppository; very slippery Temporary moisturization
Upsher-Smith vaginal dryness. (no applicator); looks adequate; not
unappealing; cumbersome; not elegant.
Gynemoistrin, Medical Lubricant Water based lubricant with applicator, Good moisturization.
Schering-Plough companion similar to KY, in plastic
product to Gynelotromin tube and outer carton.
Very Private Vaginal moisturizer Cosmetic; modern moisturizer Moisturization excellent;
for improved and gel; transparent; good better slip;
intimacy and general slip; safe; elegant; performs smoother lubrication
comfort. well; non-sticky; non greasy, than competitors.
no residue. Sexual enhancement.
Report at 25.
Plaintiffs' chart is incomplete with respect to the
characteristics of GYNE-MOISTRIN®
and TODAY®. In fact, GYNE-MOISTRIN® was labeled for
either digital application or for use with an applicator. Prior
to 1993, GYNE-MOISTRIN® was marketed as "specifically developed
to soothe and relieve dryness by supplementing a woman's own
moisture. [It] provides natural feeling vaginal moisture and
lubrication. It is clear, colorless, odorless and proven to be
non-irritating. [It] is water-based, greaseless and non-staining.
. . ." Deposition of Nancy Miller-Rich, Vice President of
Business Development for Schering-Plough's Health Care Division,
April 23, 1999 ("Rich Dep."), Defs.' 56.1, Ex. 45 at 20-24 & Exs.
46-48. In addition, GYNE-MOISTRIN®, like Very Private, was
marketed as "long-lasting" and compatible with condoms. See
Defs.' 56.1, Exs. 47-48. Likewise, TODAY®'s packaging prior to
1993 indicated that it "[s]upplements natural moisture when
vaginal dryness, caused by normal changes in a woman's body,
causes discomfort . . . It is a natural feeling." Defs.' 56.1,
Exs. 58 & 59. In addition, TODAY® is "[r]ecommended by doctors
for use with condoms" and, like Very Private, is greaseless,
non-staining and fragrance-free. Id.
In addition to the products acknowledged by plaintiffs to have
been present in the market when Brandwynne disclosed her concept
to Combe, defendants note at least three other such products.
First developed in 1977, ASTROGLIDE® has been sold since at
least 1982 by Biofilm, Inc. See Deposition of Daniel X. Wray,
developer of ASTROGLIDE® and Founder of Biofilm, January 13, 1999
("Wray Dep."), Defs.' 56.1, Ex. 33 at 8-9. ASTROGLIDE® was
developed with a dual purpose. See Wray Dep. at 9 ("It was a
vaginal moisturizer and a sexual lubricant"). ASTROGLIDE® is
targeted to women experiencing vaginal dryness and to those who
use condoms during sex, is sold nationwide in stores such as
Safeway, WalGreen, Rite Aid, CVS, Wal-Mart, Target and K Mart.
See id. at 10-11. In 1993, ASTROGLIDE® changed its package
design, moving away from a "sexual connotation" to a more
"clinical look". Id. at 171-72. In about May of 1993, Biofilm
designed new packaging for ASTROGLIDE® which was placed on the
market in either September or October 1993. Id. at 57. The new
outer-packaging included the following text:
Second only to nature! Astroglide® is a water based
gel that has been found to aid in relieving vaginal
dryness and its complications. Its remarkable
lubricating and moisturizing properties can enhance
the pleasure of intimate activity. It can be used to
lubricate condoms, tampons, rectal thermometers and
enema and douche nozzles.
Defs.' 56.1, Ex. 39. The insert to the ASTROGLIDE® package
features a description of the product's three general purposes:
WHAT ARE THE USES FOR ASTROGLIDE®?
It is a mistaken belief that vaginal dryness is an
aging phenomenon. Actually, this condition can occur
with women of all ages and from a variety of causes.
Nursing mothers sometimes experience it. It sometimes
occurs in women using oral contraceptives and has
even been known to occur as a consequence of the
extreme physical conditioning associated with
competitive athletics. The common cause of vaginal
dryness, however, is menopause, either natural or
surgically induced. Many physicians prescribe
Astroglide® to provide additional moisturizing and
When used as a lubricant during intimate activity,
Astroglide® enhances the body's own lubricating
fluids. When applied to both surfaces of condoms,
Astroglide® eliminates the unnatural feeling and more
closely mimics the sensations
of natural sex. Astroglide® is compatible with all
types of condoms and diaphragms.
Diagnostic instruments used by physicians and
designed to be inserted into bodily orifices can be
lubricated with Astroglide®. The product has high
lubricity, is less messy than typical lubricating
jellies and is easily removed with water. It can also
be used to lubricate tampons, rectal thermometers as
well as enema and douche nozzles.
Defs.' 56.1, Ex. 40. Together, the outer packaging and insert
reveals that Astroglide® features some of the same
characteristics as Very Private,tm including: clear liquid;
applicator free; non-medicated; feels natural; "slip";
long-lasting; safe; physician tested; non-greasy; odorless;
flavorless; stainless; leaves no residue; and compatible with
condoms. Compare Defs.' 56.1, Exs. 39 & 40 with Report at 16,
Wet Formulas International has produced its COMFORT® personal
lubricant since 1991. See Deposition of Michael Trygstad,
President and CEO of Wet Formulas, January 14, 1999 ("Trygstad
Dep."), Defs.' 56.1, Ex. 41 at 8. COMFORT® was developed to
alleviate vaginal dryness and is distributed primarily through
Rite-Aid and independent pharmacies. See Trygstad Dep. at 9-12.
The packaging in which COMFORT® has been marketed since 1991
features several characteristics in common with Very Private;
clear liquid; applicator free; non-medicated; feels natural;
long-lasting; gynecologist approved; non-greasy; odorless;
stainless; and condom compatible. Compare Defs.' 56.1, Exs.
42-44 with Report at 16, 25.
3. SUMMER'S EVE®
Prior to 1993, C.B. Fleet Co., Inc. marketed a line of feminine
hygiene products under the trademark SUMMER'S EVE®. While these
products were not vaginal moisturizers or lubricants, they
feature the slogans "intimate cleanser", "intimate cleansing
cloths", "intimate absorbent powder" and "intimate cleansing
mist". Deposition of William Parsanko, Vice President of
Marketing of C.B. Fleet, April 28, 1999 ("Parsanko Dep."), Defs.'
56.1 Ex. 60 at 22-30, 39-41, 62-71; Exs. 63-66. C.B. Fleet
considers the term "intimate" to be synonymous with "vaginal" in
the industry.*fn6 See Parsanko Dep. at 28. C.B. Fleet has not
attempted to register these names as trademarks, nor does it
claim any trademark rights in the names. See id. at 71-74.
III. Legal Standard for Summary Judgment
A party is entitled to summary judgment when there is "no
genuine issue as to any material fact" and the undisputed facts
warrant judgment for the moving party as a matter of law. See
Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 106
S.Ct. 2548, 91 L.Ed.2d 265 (1986); Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The
burden of demonstrating the absence of a material factual dispute
rests on the moving party. See Nationwide Life Ins. Co. v.
Bankers Leasing Assoc., Inc., 182 F.3d 157 (2d Cir. 1999). Once
that burden is met, the non-moving party must present significant
probative supporting evidence that a factual dispute exists.
Fed.R.Civ.P. 56(e); Anderson, 477 U.S. at 249, 106 S.Ct. 2505.
This evidence must be more than mere speculation and conjecture.
Darnet Realty Assoc. v. 136 East 56th Street, 153 F.3d 21, 23
(2d Cir. 1998).
The Court's role is not to try issues of fact, but rather to
determine whether issues exist to be tried. See Rodriguez v.
City of New York, 72 F.3d 1051, 1060 (2d Cir. 1995). All
ambiguities must be resolved and all inferences drawn in favor of
the non-moving party. See Anderson, 477 U.S. at 255, 106 S.Ct.
2505. If there is any evidence in the record from which a
reasonable inference could be drawn in favor of the non-moving
party on a material issue of fact, summary judgment is improper.
See Catanzaro v. Weiden, 140 F.3d 91, 93 (2d Cir. 1998). But,
if the evidence presented by the non-moving party is "merely
colorable, or is not significantly probative, summary judgment
may be granted." Scotto v. Almenas, 143 F.3d 105, 114 (2d Cir.
1998) (quoting Liberty Lobby, 477 U.S. at 249-250, 106 S.Ct.
2505). The principles governing admissibility of evidence do not
change on a motion for summary judgment. Rule 56(e) provides that
affidavits in support of and against summary judgment "shall set
forth such facts as would be admissible in evidence."
Fed.R.Civ.P. 56(e). Therefore, only admissible evidence need be
considered by the trial court in ruling on a motion for summary
judgment. See Raskin v. Wyatt Co., 125 F.3d 55, 66 (2d Cir.
Plaintiffs' twelve claims are divisible into three categories.
First, claims one through seven and ten through twelve involve
defendants' alleged fraud and misappropriation of plaintiffs'
ideas and defendants' alleged breach of contract regarding those
ideas. Defendants are entitled to judgment as a matter of law on
these claims because Brandwynne cannot seek protection under any
tort or contract theory for ideas which were neither novel nor
original. Second, plaintiffs' ninth claim involves the wholly
separate allegation that: (1) defendants have infringed
plaintiffs' common law trademark rights by creating a likelihood
of confusion between plaintiffs' and defendants' products; and
(2) that defendants' product and packaging has infringed
plaintiffs' protectable trade dress. However, plaintiffs cannot
seek trademark protection for unprotectable marks or slogans. In
addition, a side-by-side comparison of the products reveals that
no reasonable jury could find a likelihood of confusion between
plaintiffs' and defendants' trade dress. Finally, plaintiffs
offer no evidentiary support for their eighth claim, alleging
A. Plaintiffs' Misappropriation, Breach of Contract and Fraud
1. The Threshold Requirement of "Novelty"
A plaintiff asserting misappropriation of her idea must
establish that her concept is sufficiently novel to be entitled
to legal protection under New York law.*fn7 "New York law
dictates that an idea, whether embodied in a product and called a
trade secret or otherwise reduced to concrete form, must
demonstrate novelty and originality to be protect[a]ble as a
property right under `[any] cause of action for [its]
unauthorized use.'" Hudson Hotels Corp. v. Choice Hotels Int'l,
995 F.2d 1173, 1178 (2d Cir. 1993) (holding that New York law
requires the same showing of "novelty" in trade secret claim as
in "submission of ideas" claim and quoting Murray v. Nat'l
Broadcasting Co. Inc., 844 F.2d 988, 994 (2d Cir. 1988)).
novelty, no cause of action exists pursuant to either tort or
contract theory. See, e.g., Lehman v. Dow Jones & Co., Inc.,
783 F.2d 285, 299-300 (2d Cir. 1986) (an action will not sound in
tort for misappropriation of an idea unless idea was novel);
Downey v. General Foods Corp., 31 N.Y.2d 56, 61, 334 N.Y.S.2d 874,
286 N.E.2d 257 (1972) ("An idea may be a property right. But
when one submits an idea to another, no promise to pay for its
use may be implied, and no asserted agreement enforced, if the
elements of novelty and originality are absent, since the
property right in an idea is based upon these two elements.").
Because non-novel ideas are not "property", "they cannot be
stolen". Murray, 844 F.2d at 993. Ideas which are not novel
"are in the public domain and may freely be used by anyone with
impunity." Ed Graham Productions, Inc. v. Nat'l Broadcasting
Co., 75 Misc.2d 334, 347 N.Y.S.2d 766, 769 (N.Y.Sup. 1973). In
fact, copying of ideas in the public domain is not only
permitted, it is encouraged. See 1 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, (4th ed. 1999)
(hereinafter "McCarthy") § 1:28 (citing American Safety Table
Co. v. Schreiber, 269 F.2d 255, 272 (2d Cir. 1959) ("imitation
is the life blood of competition. It is the unimpeded
availability of substantially equivalent units that permits the
normal operation of supply and demand to yield the fair price
society must pay for a given commodity.")).
"Whether an idea is novel is an issue of law which may properly
be decided on a motion for summary judgment." AEB & Assoc.
Design Group, Inc. v. Tonka Corp., 853 F. Supp. 724, 734
(S.D.N.Y. 1994). To establish novelty, an idea "need not reflect
the `flash of genius,' but it must show genuine novelty and
invention, and not a merely clever or useful adaptation of
existing knowledge." Educational Sales Programs, Inc. v. Dreyfus
Corp., 65 Misc.2d 412, 317 N.Y.S.2d 840, 844 (N.Y.Sup. 1970).
An idea is impalpable, intangible, incorporeal, yet
it may be a stolen gem of great value, or mere dross
of no value at all, depending on its novelty and
uniqueness. Its utility is not the test. An idea may
be regarded as useful, and worth putting into
execution, even though the imparting of it gives no
claim for recovery to its originator.
Id. at 843.
2. Plaintiffs' Claims Arising From Misappropriation Theory
Count Four concerns defendants' alleged misappropriation of
Brandwynne's trade secrets, namely, certain unpatented
proprietary information, such as Brandwynne's unpatented chemical
formulations,*fn8 related test results and data used in
connection with the development and marketing of Very Private
Intimate Moisture. See Amended Compl. ¶¶ 67-71. It is beyond
cavil that in order to state a claim for misappropriation of
trade secrets, a plaintiff must show that she "possessed a trade
secret". Hudson Hotels, 995 F.2d at 1176. Here, plaintiffs'
purported "trade secrets" are defeated by their lack of novelty
both at the time Brandwynne revealed them to defendants and
certainly by the time plaintiffs began to market their product.
a. Lack of "Novelty" Prior to Brandwynne's Disclosure to
Defendants have produced a mountain of evidence showing that
vaginal moisturizers and lubricants similar to Very Private had
been produced and marketed prior to Brandwynne's negotiations
with Combe. Like Very Private, several other brands were clear,
non-medicated, liquid and applicator-free (ASTROGLIDE®, COMFORT®,
TODAY®). At least four brands were promoted with similar slogans:
"similar to the body's own lubricating fluids" (ASTROGLIDE®);
"designed to supplement your natural moisture" (COMFORT®); "it
supplements a woman's own internal moisture", "At last a woman
has moisture that feels so much like her own", ". . . provides
moisture that feels so much like your own", "It's a light, fresh
gel that feels like your own natural moisture" (GYNE-MOISTRIN®);
and "Supplements natural moisture . . . is natural feeling"
(TODAY®). In addition, several brands: (1) provided "slip" for
intimacy (ASTROGLIDE®, COMFORT®, GYNE-MOISTRIN®, TODAY®); (2)
were safe and long-lasting (ASTROGLIDE®, COMFORT®,
GYNE-MOISTRIN®); (3) were recommended by doctors (ASTROGLIDE®,
TODAY®); (4) were non-sticky, non-greasy, odorless, tasteless and
stainless (ASTROGLIDE®, COMFORT®, GYNE-MOISTRIN®); (5) left no
residue (ASTROGLIDE®, COMFORT®); and (6) were compatible
with condoms (ASTROGLIDE®, COMFORT®, GYNE-MOISTRIN®, TODAY®).
Despite the fact that similar products were targeted to relieve
the same problems as Very Private, featured the same elements and
were distributed in the same channels of trade as proposed by
Brandwynne, plaintiffs contend that Very Private's novelty exists
not in each individual element of the product, but rather in the
"entire product profile and positioning." Plaintiffs' Memorandum
of Law in Opposition to Defendants' Motion for Summary Judgment
("Pls.' Mem."), 2. In short, plaintiffs allege that the
combination of elements offered by Very Private was a
"breakthrough" offering a "more cosmetic, appealing image" than
other brands marketed in a racy or sexual manner. Affidavit of
Joel Gilman, Brandwynne advertising consultant, July 20, 1999
("Gilman Aff."), Pls.' 56.1, Ex. 3, ¶ 9.
Plaintiffs liken the information Brandwynne provided to Combe
to "a compilation of information used in one's business which
confers a competitive advantage over those in a similar
businesses who do not know it or use it." Lynch, Jones & Ryan,
Inc. v. Standard & Poor's, slip op. 117064/97, 1998 N.Y. Misc
LEXIS 334,*7, 1998 WL 574166, *___ (Sup.Ct. N.Y. Co. June 15,
1998) (denying motion to dismiss misappropriation of trade secret
claim for data compiled in weekly publication). The Restatement
of Torts lists several factors to be considered in evaluating
Brandwynne's claim of trade secrecy:
(1) the extent to which the information is known
outside of [her] business; (2) the extent to which it
is known by employees and others involved in [her]
business; (3) the extent of measures taken by
[Brandwynne] to guard the secrecy of the information;
(4) the value of the information to [Brandwynne] and
[her] competitors; (5) the amount of effort or money
expended by [Brandwynne] in developing the
information; (6) the ease or difficulty with which
the information could be properly acquired or
duplicated by others.
American Law Institute, Restatement of the Law of Torts (1st ed.
1939) § 757, cmt b at 6. As discussed more fully below,
consideration of the above factors, particularly numbers one and
six, results in the inescapable conclusion that plaintiffs'
concept is not entitled to trade secret protection under New York
Even assuming, arguendo, that plaintiffs provided a compilation
of elements never before offered to the public, plaintiffs' idea
nevertheless lacks novelty because a combination of pre-existing
elements is not considered "novel". For example, in Murray v.
Nat'l Broadcasting Co., supra, plaintiff sued a television
network for, inter alia, misappropriation, breach of an implied
contract and unjust enrichment,
for allegedly "stealing" his idea for a television sit-com
involving an African-American middle-class family which plaintiff
had pitched to the network four years before "The Cosby Show"
aired. Murray, 844 F.2d at 989. Plaintiff argued that the
novelty of his idea was confirmed by the media and the viewing
public's recognition of the "unique" and "revolutionary"
portrayal of an African-American family on "The Cosby Show."
Id. at 992-93. While the Second Circuit agreed that "The Cosby
Show" constituted a "breakthrough" for the television industry,
it nevertheless concluded that the idea for the show was not
"novel" as its essence was "nothing more than a variation on a
basic theme". Id. at 993. Plaintiff's proposal for the sit-com
"merely combined two ideas which had been circulating in the
industry for a number of years — namely, the family situation
comedy, which was a standard formula, and the casting of black
actors in non-stereotypical roles." Id. at 991 (quoting
district court opinion at 671 F. Supp. 236, 241 (S.D.N.Y. 1987)).
The fact that such a scenario had never before been televised
does not necessarily mean that the idea for the program was
novel. Id. at 992. Likewise, Brandwynne's combination does not
constitute a "novel idea" meriting protection under New York law.
Plaintiffs contend that defendants' advertising for VAGISIL®
concedes that the product concept is indeed novel. Press releases
announcing Combe's new product advertised: "A unique moisturizer
that relives vaginal dryness" (VAGISIL® Fact Sheet, June 1996);
"[Women] report that they are frustrated and dissatisfied with
many of the products currently available. This new product
addresses their needs. . . . This is not at all like existing
products, such as gels, creams or lubricants used for dryness,"
(VAGISIL® Press Release, April 28, 1996). Pls.' 56.1, Ex. 17.
Notwithstanding these self-serving statements regarding the
"uniqueness" of Combe's product, the concept was not "novel"
under New York law.
Educational Sales Programs, Inc. v. Dreyfus Corp., supra, is
directly on point. There, an organization engaged in sales
training revealed in confidence to defendant, one of the largest
mutual funds in the world, its idea to send cassette tapes
containing educational and promotional material to independent
mutual fund salesmen. The parties failed to negotiate a joint
venture. Nevertheless, defendant immediately proceeded with a
tape cassette program of its own. Plaintiff brought suit for
breach of confidentiality, unjust enrichment and
misappropriation. Finding plaintiff's idea lacking in novelty,
the court quickly dispelled any perceived inconsistency created
by defendant's advertising of its product as "new" and "unique".
Plaintiff makes much of defendant's own words
describing its program. Defendant advertised it to
the trade as `an exciting new development', and told
the subscribers they were participating in a `unique
program'. This is the traditional puffery of
advertising jargon. Just as the language of the
sailor is punctuated by pithy expletives, so the
language of the salesman is studded with superlatives
and hyperbole. But what is `unique' in advertising
need not be regarded as such in the law.
Educational Sales, 317 N.Y.S.2d at 845.
b. Defendants' Own Research and Development
Ironically, plaintiffs' submissions regarding Combe's product
development demonstrate further that Brandwynne's concept lacked
novelty. At least five months prior to Brandwynne's disclosure,
Combe's feminine hygiene product expert had already begun
research and development of a feminine moisturizer, much like
Very Private, to compete with Warner-Lambert's REPLENS® and
Schering-Plough's GYNE-MOISTRIN®. Thus, Brandwynne's concept was
neither novel to the industry in general, nor to Combe in
c. Marketing of Very Private Defeats "Novelty"
Assuming, arguendo, that Brandwynne's marketing concept and
product were novel, original and confidential at the time she
conceived them and disclosed them to Combe, they would have
certainly entered the public domain when the product was placed
on sale and disclosed to the public in a marketing campaign. Once
a trade secret is marketed and readily visible and ascertainable
upon inspection in the open market, it is no longer protected.
See Hudson, 995 F.2d at 1177 (collecting cases). Plaintiffs
admit that the Very Private package reflected the purported trade
secrets provided to Combe. See Pls.' Mem. at 20. The packaging
reflects Brandwynne's alleged proprietary ideas, including the
product's ingredients and the descriptive text used to market the
product. Thus, at the very latest, plaintiffs' idea entered the
public domain in April 1994 when Brandwynne began marketing and
selling Very Private Intimate Moisture. Because defendants did
not test market and sell their competing product until July 1995,
one year and two months after Brandwynne placed her product on
the market, defendants could not have misappropriated any
d. Conclusion Regarding Plaintiffs' Misappropriation Claims
In response to the overwhelming evidence submitted by
defendants on the question of novelty, plaintiffs merely raise
the allegations and denials in their pleadings that the
combination of elements comprising Brandwynne's concept was "new"
and "unique" to the industry. These conclusory statements do not
create a dispute about a material fact. Given the one-sidedness
of the evidence, no reasonable trier of fact could find other
than for the defendants regarding the protectability of
plaintiffs' concept. Failure to meet this threshold test of
novelty defeats plaintiffs' fourth claim for misappropriation of
3. Plaintiffs' Claims Arising From Various Contract Theories
a. Lack of Property Rights Defeats Plaintiffs' Contract
Because Brandwynne's ideas were neither novel nor original,
they have no value as property. "Nothing is bestowed if the facts
of a `secret' imparted in confidence are already the subject of
general knowledge. . . . Under those circumstances the promise of
compensation or confidentiality, even though undoubtedly made, is
without consideration." Educational Sales, 317 N.Y.S.2d at 843.
Therefore, no consideration was given for Combe's promise to keep
Brandwynne's ideas in confidence.
b. Claims Arising Under the Secrecy Agreement
Count Three alleges that Combe Int'l misappropriated ideas
under various breach of contract theories. In Count Twelve,
plaintiffs allege that defendants have been unjustly enriched
because Combe has reaped a financial benefit from plaintiffs'
provision of materials and services. See Amended Compl. ¶¶
106-109. Because no property rights were imparted pursuant to the
Secrecy Agreement, there has not been, nor could there have been,
a breach of the Secrecy Agreement.*fn9 Nor could defendants have
breached their fiduciary obligations and duty of loyalty pursuant
to the Secrecy Agreement (Count Seven). See Amended Compl. ¶¶
82-85. The Secrecy Agreement expressly excluded from its
obligation of confidentiality any information which "at the time
of disclosure is in the public domain" or disclosed
to third parties through no fault of Combe. Defs.' 56.1, Ex. 31.
Even assuming, arguendo, that plaintiffs possessed a property
right in the ideas disclosed to Combe, plaintiffs' rights
regarding those ideas would be governed exclusively by the
Secrecy Agreement. Although Combe Int'l did not accept the terms
of the Confidentiality Agreement proposed by Brandwynne,
plaintiffs nevertheless allege that defendants accepted
Brandwynne's Report and materials subject to the terms contained
in the Report and then breached those terms. See Amended Compl.
¶¶ 63-66. However, the Secrecy Agreement explicitly merged and
superceded any and all prior agreements relating to any
contemplated transaction regarding Brandwynne's proposed product.
See Defs.' 56.1 Ex. 31 ¶ 8.
Plaintiffs allege in Count Five that defendants have engaged in
unfair competition by marketing and selling, for defendants' own
benefit and consequently at plaintiffs' expense, products that
were derived from plaintiff's expenditure of labor, skill and
money. See Amended Compl. ¶¶ 72-74. Brandwynne alleges that
defendants diverted the profits and goodwill that otherwise would
have accrued to Brandwynne, thereby affecting Brandwynne's
strength in the industry. Plaintiffs have offered no evidence
that defendants derived their product concept from Brandwynne.
Not only was the concept already in the public domain, but Combe
was well on its way to developing its own concept for VAGISIL®
five months prior to Brandwynne's disclosure. Because the concept
was in the public domain, anyone, including defendants, was free
to develop and market the product. In addition, there is no
evidence that plaintiffs were deprived of the opportunity of
promoting the idea with another company.
c. Claims Asserting Breach of Implied Contracts
In Count One, Brandwynne alleges that Combe Int'l breached an
"implied-in-fact" contract between the parties by furnishing
Combe Inc. with Brandwynne's Report and materials for the purpose
of misappropriating her concept for the benefit of Combe Inc. and
Combe Int'l. See Amended Compl. ¶¶ 46-52. An implied-in-fact
contract arises in the absence of an express agreement, and is
based on the conduct of the parties from which a fact-finder may
infer the existence and terms of a contract. See, e.g., AEB &
Assoc., 853 F. Supp. at 731. "[T]he prerequisite for such a
contract is that there be no express agreement dealing with the
same subject matter." Radio Today, Inc. v. Westwood One, Inc.,
684 F. Supp. 68, 71 (S.D.N.Y. 1988); see also Julien J. Studley,
Inc. v.. New York News, Inc., 70 N.Y.2d 628, 629-30,
518 N.Y.S.2d 779, 512 N.E.2d 300 (1987). Because the Secrecy
Agreement exclusively governs the rights and obligations of the
parties with respect to Combe's use of Brandwynne's ideas, no
contract regarding the subject matter covered by the Secrecy
Agreement may be implied-in-fact.
4. Plaintiffs' Claims Arising From Defendants' Alleged Fraud
Brandwynne's sixth claim alleges that between September 1993
and the summer of 1994, defendants failed to disclose that Combe
Int'l and Combe Inc. were in the process of creating a vaginal
moisturizing product. Rather, defendants made certain
misrepresentations which caused plaintiffs to presume that
defendants were not independently pursuing such a product. See
Amended Compl. ¶¶ 75-81. Had Brandwynne known of defendants'
plans, she asserts she never would have shared her information
with them. Brandwynne's tenth claim alleges that defendants
fraudulently represented that they would be interested in
pursuing a joint venture, when they never intended to enter into
such an arrangement, but only sought to induce Brandwynne to
share her research and development. See Amended Compl. ¶¶
96-102. In furtherance
of this scheme, defendants allegedly substituted their Secrecy
Agreement for plaintiffs' Confidentiality Agreement intending the
Secrecy Agreement to permit their use of plaintiffs' materials
For the reasons explained above, plaintiffs' fraud claim also
fails because a plaintiff "cannot be defrauded of property that
[s]he does not own." Murray, 844 F.2d at 994. A fraud claim
requires a showing of injury as the proximate result of the
alleged fraudulent conduct. See id. Because plaintiffs' idea
was in the public domain when defendants allegedly used it,
plaintiffs suffered no injury and the fraud claim must be
B. Plaintiffs' Claims for Common Law Trademark and Trade Dress
Brandwynne asserts two common law trademark claims. First, she
alleges that defendants' use of particular slogans in association
with its product is likely to cause consumer confusion with the
line of products manufactured by plaintiffs. See Amended Compl.
¶¶ 91-95. Second, plaintiffs contend that their product packaging
constitutes legally protectable trade dress which defendants have
1. Common Law Trademark Infringement
a. Is Plaintiffs' Mark Entitled to Protection?
Because Brandwynne asserts only common law trademark rights,
she bears the burden of establishing valid trademark status. See
Reese Pub. Co., Inc. v. Hampton Int'l Communications, Inc.,
620 F.2d 7, 11 (2d Cir. 1980). The term "trademark" includes "any
word, name, symbol, or device, or any combination thereof" used
by any person "to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold by
others and to indicate the source of the goods, even if that
source is unknown." 15 U.S.C. § 1127. Marks are often classified
in categories of generally increasing distinctiveness: generic,
descriptive, suggestive, arbitrary, or fanciful. See Abercrombie
& Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.
1976). The latter three categories of marks are deemed
"inherently distinctive" and are entitled to protection. In
contrast, generic marks — those that "refer to the genus of
which the particular product is a species," Park `N Fly, Inc. v.
Dollar Park and Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83
L.Ed.2d 582 (1985), are ineligible for trademark protection.
A term that literally describes a product or a term that
describes a product's qualities, characteristics, purpose or
utility is "descriptive". See, e.g., Gruner▨ USA Publishing
v. Meredith Corp., 991 F.2d 1072, 1076 (2d Cir. 1993);
Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033,
1040 (2d Cir. 1992). Marks which are merely descriptive of a
product are not inherently distinctive and hence cannot be
protected. See Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 769, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). However,
descriptive marks may acquire distinctiveness allowing them to be
protected. This acquired distinctiveness is generally called
"secondary meaning." See Two Pesos, 505 U.S. at 769, 112 S.Ct.
2753. A term has secondary meaning when, through its owner's use,
it "has become distinctive of the applicant's goods in commerce."
Id. (quoting 15 U.S.C. § 1052(e) & (f)).
i. The Term "Intimate" Is Generic and Not Entitled to
Plaintiffs allege that defendants' use of particular slogans is
likely to cause consumer confusion. Specifically, these slogans
are: "Intimate Moisture"; "duplicates a woman's own moisture";
"feels as natural as a woman's own moisture"; "so natural its
like a woman's own moisture"; "the closest thing to your own
natural moisture".*fn11 As Brandwynne has already disclaimed any
trademark rights in the word "moisture", the Court must focus on
the protectability of the terms "intimate" and "intimate
moisture". Types of evidence to consider in determining
genericness include: (1) generic use of the term by competitors
which plaintiff has not challenged; (2) plaintiff's own generic
use which may have an estoppel effect; (3) dictionary definitions
which, while not determinative, may be relevant if not
persuasive; (4) generic usage in trade journals or newspapers;
(5) testimony of persons in the trade; and (6) consumer surveys.
See 2 McCarthy § 12:13.
To date, plaintiffs have not challenged any third-party usage
of the term "intimate" as applied to products involving the
vaginal area. Yet, the feminine hygiene industry is replete with
uses of the word "intimate" on products such as SUMMER'S EVE®,
BIDETTE®, FDS®, and Vespré. See Defs.' 56.1, Exs. 63-73.
Moreover, there is significant third party use of similar
slogans: "similar to that of the body's own lubricating fluids. .
. . Second only to nature" (ASTROGLIDE®); "designed to supplement
your natural moisture" (COMFORT®); "supplementing a woman's own
moisture . . . provides natural feeling vaginal moisture . . .
supplements a woman's own internal moisture" (GYNE-MOISTRIN®);
"supplements natural moisture . . . natural feeling" (TODAY®).
Defs.' 56.1, Exs. 38-40, 42-44, 46-59. Plaintiffs themselves use
the words "intimate", "intimate moisture" and "intimate
moisturizer" interchangeably in their Amended Complaint and
advertising to refer to the vaginal area and vaginal moisturizer.
See Amended Complaint ¶¶ 12, 14, 15, 16, 19, 20, 23, 43; Defs.'
Exs. 77 & 78. This demonstrates plaintiffs' own opinion that the
terms are appropriate common names for the product. See, e.g.,
In re Bausch & Lomb, Inc., 206 U.S.P.Q. 534, 538, 1979 WL 24802
(T.T.A.B. 1979) (where trademark applicant used term in own
literature as common noun for goods, "no amount of evidence could
result in recognizable trademark rights"). Furthermore, Webster's
Dictionary offers several alternative definitions of intimate,
including, "of a very personal or private nature" (Webster's
Dictionary 634 (9th ed. 1985)) and "befitting deeply personal (as
. . . sexual) matters . . . usu[ally] kept private or discreet .
. . marked by sexual relations" (Webster's Dictionary 1184 (3d
In addition, persons in the trade have indicated that they
associate the word "intimate" with "vaginal" and the vaginal
area. See Rich Dep. at 50 (word "intimate" in context of
feminine hygiene products relates to a woman's vagina); Parsanko
Dep. at 28, 38, 40-41 ("intimate" in this context means "vaginal
area"). Moreover, when combined with "moisture" or "moisturizer",
the term "intimate" indicates a category of products.*fn12 Such
generally been held to be generic. See, e.g., Johnson & Johnson
v. Carter-Wallace, Inc., 487 F. Supp. 740, 744 (S.D.N Y
1979) ("Baby Oil" generic term for mineral oil); rev'd on other
grounds, 631 F.2d 186 (2d Cir. 1980); Miller Brewing Co. v. G.
Heileman Brewing Co., Inc., 561 F.2d 75, 80 (7th Cir.
1977) ("Light Beer" or "Lite Beer" generic names for type of beer
light in body or taste). Finally, the combination of two generic
terms, such as "intimate" and "moisture" or "moisturizer", into
one term does not alter its generic character. See, e.g., Turtle
Wax Inc. v. Blue Coral Inc., 2 U.S.P.Q.2d 1534, 1536, 1987 WL
123820 (T.T.A.B. 1987) (combination of generic terms "wash" and
"wax" in "WASH-WAX" does not alter character of individual
components or commercial impression engendered by mark).
The evidence on this issue compels the conclusion that the
terms "intimate" and "intimate moisture" would not be understood
by potential customers as words indicating source or origin.
Rather, the words are either understood as the generic name for a
category of products or, they are understood as words describing
the character of the products. Because the line between
descriptive terms and generic names is often "fuzzy", 2
McCarthy § 12:20 at 12-50.1, I will also address the question
of whether the terms are entitled to protection as descriptive
ii. Plaintiffs Cannot Establish Secondary Meaning
If the term "intimate moisture" is descriptive rather than
generic, plaintiffs must prove secondary meaning in order to
establish protectable trademark rights.
Secondary meaning is an issue of fact. If plaintiff
has the burden of proving secondary meaning in a
mark, and defendant moves for summary judgment
pointing to evidence that tends to show the lack of
secondary meaning, summary judgment will be granted
unless plaintiff comes forward to show an issue of
fact on secondary meaning.
5 McCarthy § 32:119 at 32-175; see also Bernard v. Commerce
(2d Cir. 1992) (summary judgment
appropriate where plaintiff produced no evidence that a
descriptive word has achieved a secondary meaning). Our Court of
Appeals considers several factors in determining secondary
meaning, including: (1) advertising expenditures, (2) consumer
studies linking the mark to a source, (3) unsolicited media
coverage of the product, (4) sales success, (5) attempts to
plagiarize the mark, and, (6) length and exclusivity of the
mark's use. See Genesee Brewing Co., Inc. v. Stroh Brewing Co.,
124 F.3d 137, 143 n. 4 (2d Cir. 1997).
Here, Brandwynne has used the term "intimate moisture" for only
five years and her use has not been exclusive. Total advertising
expenses for the past three years are $120,000. Plaintiffs sell
in only three states, achieving a total of $100,000 in sales in
1998. There is no evidence that Very Private has come to the
attention of the press or public other than by its own efforts.
As a result, it is extremely unlikely that a reasonable jury
would find that Brandwynne has established "secondary meaning" in
the term "intimate moisture".*fn13 Even if plaintiffs could
establish secondary meaning, summary judgment on plaintiffs'
trademark infringement claim is warranted because plaintiffs have
failed to offer, as they must, any evidence whatsoever that
defendants' use of the term is likely to confuse "an appreciable
number of ordinarily prudent purchasers." Lang v. Retirement
Living Pub. Co., Inc., 949 F.2d 576, 578-80 (2d Cir. 1991)
("[w]hether a trademark owner
receives judicial protection depends on whether there is any
likelihood that an appreciable number of ordinarily prudent
purchasers are likely to be misled, or indeed simply confused, as
to the source of the goods in question.").*fn14
The Second Circuit has expressly stated that summary judgment
is appropriate in trademark actions where plaintiffs have failed
to elicit evidence to support their claims. See, e.g., Lois
Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867,
876 (2d Cir. 1986) (application of undisputed facts to issue of
likelihood of confusion is legal issue appropriately decided on
motion for summary judgment); Universal City Studios, Inc. v.
Nintendo Co., Ltd., 746 F.2d 112, 115 (2d Cir. 1984) (affirming
district court's grant of summary judgment against plaintiff with
respect to trademark infringement claim, explaining that
plaintiff "failed to raise a question of fact on the issue of the
likelihood of consumer confusion"). On the record before me, and
drawing all reasonable inferences against the moving party, I
conclude that no reasonable jury could return a verdict for
plaintiffs on their common law trademark infringement claim.
2. Trade Dress Infringement
The trade dress of a product "involves the total image of a
product and may include features such as size, shape, color or
color combinations, texture, [or] graphics." LeSportsac, Inc. v.
K Mart Corp., 754 F.2d 71, 75 (2d Cir. 1985) (citations
omitted). In examining trade dress, "the focus is on the entire
look of the product or packaging." Bristol-Myers Squibb Co.,
973 F.2d at 1042. A side-by-side comparison of plaintiffs' and
defendants' product and packaging reveals virtually no
similarities. Very Private Intimate Moisture is sold in a white
bottle and box with a beige and white label and green lettering.
VAGISIL® is sold in a pearl-colored bottle and a white and light
blue box containing blue and purple lettering. The VAGISIL® box
is twice as wide as the Very Private box. The VAGISIL® dispenser
appears at the top of the bottle while the Very Private dispenser
is at the bottom. The salient feature of each product is its
highly distinguishable brand name: "Very Private" appears in
enlarged white capital letters within a dark green rectangle;
VAGISIL® appears in large purple lower case letters with a large
stylized purple and blue "V" in a blue box. Compare Defs.'
56.1, Exs. 74, 75 with Ex. 87. When a defendant prominently
displays its own brand name in conjunction with a similar mark,
the likelihood of confusion is reduced. See W.W.W. Pharm. Co.,
Inc. v. Gillette Co., 984 F.2d 567, 573 (2d Cir. 1993). The
record of this case establishes, as a matter of law, that Combe's
product and packaging could not cause either actual confusion or
the likelihood of confusion in the mind of the consumer.
Therefore, summary judgment is granted on plaintiffs' trade dress
Brandwynne asserts that Combe Inc. misleads customers and
causes consumer confusion by falsely describing its product and
by misrepresenting the origin of its product. See Amended
Compl. ¶¶ 86-90. Specifically, plaintiffs claim that the
following assertions made by defendants in their advertising and
product labeling are false:
? that it created the concept of non-greasy and
natural vaginal moisturizer; and
? that the product is "not like ordinary jelly, gels,
Id. at ¶ 89. These allegations also provide the basis for Count
Eleven — that defendants' false advertising violates New York
General Business Law (the "G.B.L.") § 349(a). See Amended
Compl. ¶¶ 103-105.
The heart of plaintiffs' proof that defendants have
misrepresented that their product was "developed with women
gynecologists" is a letter from Cynthia D'Andrea-Herns to Dr.
Elizabeth Connell, Combe's "on-call" gynecologist, requesting her
opinion of the products under development. See Letter from
D'Andrea-Herns to Dr. Connell, March 28, 1995, Pls.' 56.1, Ex.
32. In the letter, D'Andrea-Herns explains that the enclosed
"Vagisil moisturizer prototype formula" was tested among over 900
women. Plaintiffs suggest that this letter shows that defendants
did not submit their product to women gynecologists until after
the product had already been developed. Plaintiffs'
interpretation of this letter is erroneous on its face. The
letter, in fact, shows that Combe enlisted the assistance of Dr.
Connell in developing its "prototype".
In addition, plaintiffs allege that contrary to the assertion
on the VAGISIL® package, the product is not "safe" or
non-irritating because Combe used an untested polymer that had
previously been used in shampoos and had never been used
internally.*fn15 Plaintiffs' "evidence" is really just a series
of unconfirmed assumptions which are rebutted by defendants'
submissions. For example, defendants' toxicological in vitro
tests and clinical studies conducted under the supervision of a
board certified gynecologist before the product was test marketed
revealed that the product was safe. See Vagisil Moisturizer RD
2503 Safety Testing, August 24, 1995, Defs.' 56.1, Ex. 99. In
addition, between July 1995 and March 1999, Combe received only
34 "Irritation Reports" from total sales of well over 3 million
units of its product (an irritation incidence of only 0.001%).
See Affidavit of Carrie J. Barsuhn, Combe Int'l Director of
Consumer Affairs, July 30, 1999, Defs.' 56.1, Ex. 101 at ¶ 2.
Plaintiffs' allegations of false advertising are simply not
supported by any evidence. Therefore, defendants' motion for
summary judgment on claims eight and eleven is granted.
For the foregoing reasons, defendants' motion for summary
judgment is granted in its entirety. The Clerk of the Court is
directed to close this case.