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