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BRANDWYNNE v. COMBE INTERN.

United States District Court, Southern District of New York


October 19, 1999

JACQUELINE BRANDWYNNE, AND BRANDWYNNE CORPORATION, PLAINTIFFS,
v.
COMBE INTERNATIONAL, LTD. COMBE INCORPORATED, THOMAS SMITH AND CHAPIN NOLEN, DEFENDANTS.

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

OPINION AND ORDER

TABLE OF CONTENTS

    I. Introduction .......................................................................... 366
   II. Background ............................................................................ 367
       A. Brandwynne's Product Concept ....................................................... 367
       B. Brandwynne's Negotiations With Defendants .......................................... 368
       C. Brandwynne's Commercialization of "Very Private Intimate Moisture" ................. 369
       D. Combe's Commercialization of "VAGISIL® Intimate Moisturizer" ....................... 370
       E. The Market for Vaginal Moisturizers/Lubricants Prior to September 1993 ............. 371
          1. ASTROGLIDE® ..................................................................... 372
          2. COMFORT® ........................................................................ 373
          3. SUMMER'S EVE® ................................................................... 373
  III. Legal Standard for Summary Judgment ................................................... 373
   IV. Discussion ............................................................................ 374
       A.  Plaintiffs' Misappropriation, Breach of Contract and Fraud Claims ................. 374
           1. The Threshold Requirement of "Novelty" ......................................... 374
           2. Plaintiffs' Claims Arising From Misappropriation Theory ........................ 375
              a.  Lack of "Novelty" Prior to Brandwynne's Disclosure to Defendants ........... 375
              b.  Defendants' Own Research and Development ................................... 377
              c.  Marketing of Very Private Defeats "Novelty" ................................ 378
              d.  Conclusion Regarding Plaintiffs' Misappropriation Claims ................... 378
           3. Plaintiffs' Claims Arising From Various Contract Theories ...................... 378
              a. Lack of Property Rights Defeats Plaintiffs' Contract Claims ................. 378
              b. Claim Arising Under the Secrecy Agreement ................................... 378
              c. Claims Asserting Breach of Implied Contracts ................................ 379
           4. Plaintiffs' Claims Arising From Defendants' Alleged Fraud ...................... 379
        B. Plaintiffs' Claims for Common Law Trademark and Trade Dress Infringement .......... 380
           1. Common Law Trademark Infringement .............................................. 380
              a. Is Plaintiffs' Mark Entitled to Protection? ................................. 380
                  i.  The Term "Intimate" Is Generic and Not Entitled to Protection .......... 381
                 ii.  Plaintiffs Cannot Establish Secondary Meaning .......................... 382
           2. Trade Dress Infringement ....................................................... 383
        C. Plaintiffs' Claims for False Advertising Under the Lanham Act and New York General
           Business Law ...................................................................... 383
    V.  Conclusion ........................................................................... 384

I. Introduction

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 entirety.

II. Background

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 & 11.

Brandwynne shared her idea with defendants in the form of a Report and presentation.*fn4 See Report, March 1993, attached to Defs.' 56.1, Ex. 3. The Report, which was designed for presentation to "a limited number of parties who may be interested in pursuing a transaction with [Brandwynne]," id. at 3, contained descriptions of three target market segments, the essential features and benefits of the product, proposed advertising, a proposed commercial price structure and proposed channels of distribution. See Report. The Report, over forty pages in length, detailed the key benefits of Brandwynne's product:

  ? Clear, clean and natural, feels and functions like
    a woman's own moisture.

  ? Provides lubrication, desirable "slip" for
    intimacy.

? Safe, long lasting lubrication and comfort.

  ? All ingredients in formulation safe, (inactive,
    cosmetic classification) in market use for many
    years.

? Gynecologist tested and approved.

  ? Thinner than existing lubricants, better slip,
    better moisturization.

  ? Non-sticky, non-greasy, odorless, tasteless,
    stainless.

? 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 "product uniqueness":

  ? Very Private is positioned as a quality bodycare
    product, not a medical or quasi-medical gel like KY
    or Ortho Lubricant.

  ? Very Private is the first intimate moisturizer that
    feels and functions like a woman's own moisture. It
    was formulated specifically to moisturize
    instantly and enhance sexual intimacy.

  ? Very Private is totally clear. No fragrance, no
    taste, no visible residue or "crusting" like
    current vaginal products.

  ? Very Private can be used during the day, every day,
    to ease dryness and the symptoms of dryness in the
    intimate area, to make a woman feel more
    comfortable all day long.

  ? Very Private can also be used before intimacy, to
    relive dryness instantly and enhance intimacy.

  ? Very Private has the look and presentation of an
    elegant, cosmetic product and is gynecologist
    tested and approved, unlike current quasi-medical
    lubricants that are presented in a functional,
    low-cost way.

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").
*fn5 Amended Compl. at ¶ 22.

B. Brandwynne's Negotiations With Defendants

In September 1993, Brandwynne and Smith agreed to discuss Brandwynne's Very Private brand. Approximately three weeks prior to their first meeting, Brandwynne sent Combe, Inc. a copy of her Report, the first sentence of which states "the information contained herein shall be kept confidential." Pls.' 56.1 ¶ 18; Report at 3. Also prior to the first meeting, Brandwynne sent Smith a proposed "Confidentiality Agreement". Pls.' 56.1 ¶ 16. Defendants declined to sign the "Confidentiality Agreement" and instead sent Brandwynne their standard "Secrecy Agreement" which she executed. Pls.' 56.1 ¶ 20. That Secrecy Agreement provides in pertinent part:

  COMBE agrees to retain in confidence and not to
  disclose to third parties any CONFIDENTIAL
  INFORMATION received from [Brandwynne] in accordance
  with the terms of this agreement. . . . The foregoing
  obligation of confidentiality shall not apply to any
  portion of the disclosed CONFIDENTIAL INFORMATION
  which:

    (a) at the time of disclosure is in the public
  domain;

    (b) after disclosure is disclosed to third parties
  without obligations of confidentiality, or is
  published, or otherwise becomes part of the public
  domain, through no fault or action of COMBE;

    6. The parties understand and agree that nothing
  herein shall obligate [Brandwynne] to sell, nor COMBE
  to purchase, the subject PRODUCT. Nor shall the
  parties be obligated in any way to enter into any
  further agreements. The parties recognize and agree
  that the disclosure being made hereunder is for
  purposes of COMBE'S evaluation only.

    8. This agreement contains the entire understanding
  of the parties and supersedes all prior agreements
  and understandings relative to the transactions
  contemplated herein, whether written, oral, expressed
  or implied, and the provisions of this agreement may
  not be altered, modified, amended or waived except by
  a writing which is executed by both parties.

Secrecy Agreement, September 10, 1993, attached to Defs.' 56.1, Ex. 31. After executing the Secrecy Agreement, Brandwynne made her presentation to Nolan on September 29, 1993. Pls.' 56.1 ¶ 20. In the ensuing several months, Combe did not contact Brandwynne to express an interest in pursuing a joint venture. In the meantime, Brandwynne launched her product without Combe's assistance.

  C. Brandwynne's Commercialization of "Very Private Intimate
    Moisture"

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:

Relieves intimate dryness Instantly, enhances intimacy

Gynecologist tested and approved

Defs.'s 56.1, Ex. 75 (emphasis in original). The back of the box states, in part:

  Very Private Intimate Moisture feels and functions
  like a woman's own moisture to relieve vaginal
  dryness instantly and enhance intimacy. . . . Very
  Private is a thin, clear liquid providing excellent
  slip. Unlike sticky, greasy gels and lubricants, it
  leaves no residue. Odorless, flavorless and
  hypo-allergenic, it is gynecologist tested and
  approved.

  Directions: . . . apply a few drops of Very Private
  daily. . . . Repeat before intimacy for instant
  lubrication. Very Private is not a contraceptive.
  Does not harm condoms.

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
    Moisturizer"

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 1129.

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 & Ex. 88.

  E. The Market for Vaginal Moisturizers/Lubricants Prior to
    September 1993

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.

                                           COMPETITIVE PRODUCTS
  ----------------------------------------------------------------------------------------------------------------------
  NAME                    POSITIONING                 CHARACTERISTICS                          MOISTURIZING/
                                                                                               LUBRICATION
  ----------------------------------------------------------------------------------------------------------------------
  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.
                                                      looks tacky.
  ----------------------------------------------------------------------------------------------------------------------
  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
                                                      spontaneous.
  ----------------------------------------------------------------------------------------------------------------------
  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.
  Home
  Products
  ----------------------------------------------------------------------------------------------------------------------
  Lubrin Suppositories,   Lubricant for               Waxy suppository; very slippery          Temporary moisturization
  Upsher-Smith            vaginal dryness.            (no applicator); looks                   adequate; not
                                                      unappealing; cumbersome; not             elegant.
                                                      spontaneous.
  ----------------------------------------------------------------------------------------------------------------------
  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.
                          yeast infection
                          product.
  ----------------------------------------------------------------------------------------------------------------------
  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.

1. ASTROGLIDE®

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®?

VAGINAL MOISTURIZER

    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
  lubrication.

PERSONAL LUBRICANT

    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.

PATIENT LUBRICANT

    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, 25.

2. COMFORT®

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. See 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. 1997).

IV. Discussion

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 false advertising.

  A. Plaintiffs' Misappropriation, Breach of Contract and Fraud
    Claims

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)). Indeed, without 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

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 law.

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 particular.

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 protected idea.

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 trade secrets.

3. Plaintiffs' Claims Arising From Various Contract Theories

  a. Lack of Property Rights Defeats Plaintiffs' Contract
    Claims

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 "obligation-free".*fn10

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 dismissed.

  B. Plaintiffs' Claims for Common Law Trademark and Trade Dress
    Infringement

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 infringed.

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., Grunerâ–¨ 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
    Protection

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 ed. 1963)).

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 terms have 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 marks.

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 Drug Co., 964 F.2d 1338 (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 infringement claim.

  C. Plaintiffs' Claims for False Advertising Under the Lanham
    Act and New York General Business Law

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 the product was "developed with women
    gynecologists";

  ? that Combe Inc. owns the trademark "intimate
    moisturizer";

? that the product formula is "unique";

  ? that it created the concept of non-greasy and
    natural vaginal moisturizer; and

  ? that the product is "not like ordinary jelly, gels,
    and lubricants".

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.

V. Conclusion

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.


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