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CUMBERLAND PACKING CORP. v. MONSANTO CO.

March 27, 2001

CUMBERLAND PACKING CORP. AND STADT CORPORATION, PLAINTIFFS,
V.
MONSANTO COMPANY, THE NUTRASWEET COMPANY, THE NUTRASWEET KELCO COMPANY, AND OLYMPIA INDUSTRIES, INC., DEFENDANTS.



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

MEMORANDUM AND ORDER

Plaintiffs Cumberland Packing Corporation and Stadt Corporation (collectively "plaintiff") brought this action claiming trademark and trade dress infringement, trademark dilution, and false advertising against defendants Monsanto Company, The NutraSweet Company, The NutraSweet Kelco Company, and Olympia Industries, Inc. (collectively "defendant") pursuant to 15 U.S.C. ¶¶ 114, 1125(a), 1125(c), New York General Business Law ¶¶ 349-350, and the New York common law of unfair competition.

Plaintiff is the maker of Sweet'N Low and NatraTaste brand sweeteners and defendant is the maker of EQUAL, NutraSweet and Sweetmate brand sweeteners.

In January 1999, plaintiff moved for a preliminary injunction to prevent defendant from infringing the Sweet'N Low and NatraTaste trade dresses, in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); from infringing and diluting the Sweet'N Low trademark in violation of sections 32, 43(a), and 43(c) of the Lanham Act, 15 U.S.C. ¶¶ 1114, 1125(a), 1125(c); and from falsely advertising its NutraSweet brand sweetener in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Defendant moved to dismiss plaintiffs false advertising claim.

The court heard argument on the motions on October 28, 1998.

In a Memorandum and Order dated January 12, 1999 the court denied plaintiff's motion for a preliminary injunction and granted defendant's motion for summary judgment with respect to plaintiffs false advertisement claim (the "1999 decision").

Plaintiff subsequently dismissed all but three of their claims against the defendant. The remaining claims are all based on plaintiffs claim that the trade dress of defendant's NutraSweet brand sweetener is likely to be confused with plaintiffs NatraTaste brand sweetener. Defendant moves for summary judgment on these claims.

I

The facts of the case are set forth in the 1999 decision, familiarity with which is assumed. A brief review of the facts for present purposes follows.

A predecessor to the Monsanto Company, G.D. Searle Co. ("Searle"), developed aspartame in 1965 and obtained a patent for the substance in 1970. Searle named its brand of aspartame NutraSweet and created a red and white swirl logo to accompany the name. In 1982, Searle introduced Equal brand tabletop sweetener. All boxes of Equal displayed the NutraSweet brand name and swirl. Billions of packets bearing the NutraSweet name and swirl were distributed to consumers.

Monsanto introduced a value brand aspartame-based sweetener in 1997 and named the product NutraSweet in order to capitalize on the selling power and wide recognition enjoyed by the name. NutraSweet is priced to compete directly with NatraTaste.

Plaintiffs NatraTaste box is rectangular with an overall blue coloring using primarily lighter blue tones. The name "NatraTaste" in large script font appears on the upper part of both the front and back panels. The letters are in light green with white outlining. A photograph of a coffee cup atop a saucer occupies the foreground, slightly to the right. Other coffee cups and saucers to the left create shadows in the background. To the right of center, almost in the middle of the coffee cup, is a bright pink burst highlighting the advertisement stating "Same Sweetener as EQUAL . . . At A Sweeter Price." The top and side panels also display the NatraTaste name in the same style but slightly smaller.

Defendant's NutraSweet box is rectangular like the NatraTaste box but has thinner side panels and is not as wide along the front. The box is light blue overall with more subtle gradations in tone than the NatraTaste box. The NutraSweet name is displayed across the top third of the panel in thick, black block letters with the red and white swirl NutraSweet logo just above the name. The bottom half of the panel contains a picture of a coffee cup resting on a saucer. Balanced on the saucer is a tilted sweetener packet with the NutraSweet name and logo printed on it. The back panel is identical to the front and the side panels feature the NutraSweet name and logo.

II

Under Rule 56 of the Federal Rules of Civil Procedure, the moving party is entitled to summary judgment "if the pleadings, depositions, answers to interrogatories and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). Unsworn declarations, subscribed by the declarant in compliance with 28 U.S.C. § 1746, may be substituted for affidavits.

The substantive law governing the case will determine those facts that are material, and "only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). Summary judgment is warranted only if "the evidence is such that a reasonable jury could not return a verdict for the nonmoving party." Id.

Moreover, "the inferences to be drawn from the underlying facts . . . must be viewed in the light most favorable to the party opposing the motion." Matsushita Electric Industrial Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986).

Once the moving party has met its burden, the opposing party "must do more than simply show that there is some metaphysical doubt as to the material facts. . . . [T]he non-moving party must come forward with `specific facts showing that there is a genuine issue for trial.'" Id. at 586-87, 106 S.Ct. at 1356.

Summary judgment in a trade dress action is appropriate "where the undisputed evidence would lead only to one conclusion as to whether confusion is likely." Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 478 (2d Cir. 1996).

According to plaintiff, three facts remain in dispute, (i) the similarity between plaintiffs and defendant's trade dresses (ii) actual confusion and (iii) the defendant's bad faith in adopting its trade dress. Such determinations are often questions of fact, but "courts retain an important authority to monitor the outer limits of substantial similarity within which a jury is permitted to make the factual determination whether there is a likelihood of confusion as to source." Warner Bros., Inc. v. American Broadcasting Cos., 720 F.2d 231, 246 (2d Cir. 1983). If the court finds that there is no reasonably disputed factual issue, summary judgment is warranted.

III

To prove trade dress infringement plaintiff must show (1) that its trade dress is inherently distinctive or has acquired a secondary meaning and (2) there is a likelihood that consumers will be confused as to source or sponsorship between plaintiffs and defendant's product due to their trade dresses. A trade dress need not have widespread recognition among consumers to be distinctive. It need only serve to identify a product as emanating from a particular source. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773, 112 S.Ct. 2753, 2760, 120 L.Ed.2d 615 (1992).

In the 1999 decision the court found that the combination of the elements in plaintiffs trade dress creates a "suggestive" package capable of identifying the product with a particular source. Since distinctiveness has been established the court turns to whether there is a significant likelihood of confusion as to source or sponsorship between plaintiffs and defendant's trade dresses.

To determine whether there is the requisite likelihood of confusion as to source or sponsorship between the two trade dresses the court applies the factors described in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961). Those factors are: (1) the strength of the prior owner's mark; (2) the similarity between the marks; (3) the competitive proximity of the products; (4) the likelihood that the prior owner will bridge the gap; (5) actual confusion as to source or sponsorship; (6) the defendant's good faith; (7) the quality of defendant's product; and (8) the sophistication of the buyers. Although the Polaroid court developed these factors to apply to cases in trademark the same factors apply to determine likelihood of confusion as to source or sponsorship between trade dresses. See e.g., Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1043 (2d Cir. 1992).

In the 1999 decision the court determined that the third, fourth, and seventh Polaroid factors do not apply in this case. Moreover, as discussed above Plaintiff says that there are genuine issues of fact with regard to only three Polaroid factors (i) similarity of the trade dresses (ii) actual confusion and (iii) the defendant's bad faith. The court will address each in turn.

(i) similarity of the trade dresses

The court addressed the similarity of the trade dresses in its 1999 decision. The court found that it was "unlikely that a reasonable prudent purchaser would find the overall image of the two boxes confusingly similar." Both boxes displayed their product names on their respective boxes in different fonts and colors. The NutraSweet swirl figured prominently on the NutraSweet package.

The conspicuous use of a well-know logo and product name sufficiently distinguish defendant's trade dress from plaintiffs. Indeed, these differences alone may preclude a finding of similarity. See e.g., Merriam-Webster, Inc. v. Random House, Inc., 35 F.3d 65, 71 (2d Cir. 1994); Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1045-1046 (2d Cir. 1992).

The court also noted that the NatraTaste box is significantly wider and longer than the NutraSweet box and has a bright pink burst on the surface, which the NutraSweet box does not have.

The total images of the NatraTaste and NutraSweet trade dresses are so different that as a matter of law there is no substantial similarity that would create a likelihood of consumer confusion as to source.

(ii) actual confusion

Plaintiff has submitted new evidence bearing on the question of alleged actual confusion, the fourth Polaroid factor. In their motion for a preliminary injunction plaintiff sought to prove a likelihood of consumer confusion by relying on four surveys performed by Dr. Michael Rappeport. The court analyzed the surveys and their results according to the seven standards enumerated by Judge I. Leo Glasser in Toys "R" Us, Inc. v. Canarsie Kiddie Shop, Inc., 559 F. Supp. 1189 (E.D.N.Y. 1983). The standards are that (1) the "universe" or product market is properly defined; (2) a representative sample of that universe is selected; (3) the questions to be asked of the interviewees are framed in a clear, precise and non-leading manner; (4) sound interview procedures are followed by competent interviewers with no knowledge of the litigation or the purpose for which the survey was conducted; (5) the data gathered is accurately reported; (6) the data is analyzed in accordance with accepted statistical principles; and (7) the objectivity of the entire process is assured.

The court determined that the results of the surveys were unreliable because of serious flaws in the protocol and methodology. As a threshold matter the universe was over-inclusive in that it contained "users or buyers of sugar substitutes within the past six months." The relevant universe would have been people with a current interest in purchasing an aspartame-based sugar substitute.

The controls in two of the surveys were inappropriate because they did not net out consumer confusion based on legally irrelevant factors — namely the overall blue coloring and the similarity of the products' names. Given the inadequacy of the controls, Dr. Rappeport should have sought to directly approximate the background noise by analyzing the reasons people gave for their confusion. He did not.

The court also found that the two-room array methodology did not accurately simulate the market conditions under which consumers typically make their decisions. This method prevented consumers from viewing the products next to one another so that they could "eye the two products more or less simultaneously" as they would when purchasing the products.

After the court's 1999 decision, plaintiff conducted a new survey (the "revised survey") designed to correct the flaws found by the court in the surveys submitted in support of plaintiffs motion for preliminary injunction. Like the other surveys, the revised survey was to provide evidence of actual confusion.

The Revised Survey

In the revised survey, Dr. Rappeport changed the universe to consist of individuals who have either purchased a box of aspartame-based sugar substitute in the past six months or expect to purchase a box of aspartame-based sugar substitute in the next six months. People who meet either of these criteria can be considered to have a current interest in purchasing an aspartame-based sugar sweetener. The universe in the revised survey is properly defined.

Dr. Rappeport acknowledged the court's concern about respondent guessing. After asking if the respondent thought any of the sugar substitutes in the second room were made by the same company as NatraTaste he included an implicit instruction not to guess, telling the participants "if you don't know, please say so."

But despite the court's suggestion that the two-room array did not represent true market conditions the revised survey adhered to the two-room method. When asked why he did not change the protocol to a one-room array as suggested by the court, Dr. Rappeport stated that he believes that the court's suggestion was merely a question of "substituting one correct method for another."

Dr. Rappeport maintains that both methods are correct because confusion can occur in two ways: (1) when a consumer sees one of the two products outside the store and then sees the other product in the store and/or (2) when a consumer sees one of the two products out of the store context in an advertisement or in use and then sees the product in the market where they can eye the products simultaneously. Dr. Rappeport says he prefers the two-room array because it addresses circumstances where only one of the products is sold by a store and where the consumer may only be able to see one of the two products at a time due to store placement of the products.

To address the problem of unreliable controls Dr. Rappeport created four variations of the original NutraSweet box (the "new controls") to act as control stimuli. He believed the modifications he made in the boxes would account for factors legally irrelevant to confusion and "tease out" the causes of confusion. In addition to the new controls, the survey included the original Four Brands controls used in the previous surveys (Equal, Sweet Servings, Sweet Thing, and Sweet One).

The survey respondents were divided into five sub-groups. Each respondent entered the first room where they viewed a box of NatraTaste and then entered a ...


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