United States District Court, S.D. New York
OPINION & ORDER
KIMBA M. WOOD, District Judge.
Plaintiff KIND LLC ("Plaintiff" or "KIND") has moved pursuant to Rule 65 of the Federal Rules of Civil Procedure for a preliminary injunction against Defendant Clif Bar & Company ("Defendant" or "Clif Bar"). KIND seeks to prevent Clif Bar from using a new trade dress for its MOJO bars that KIND alleges infringes upon the distinctive trade dress of KIND bars. For the reasons set forth below, the Court DENIES Plaintiff's motion.
Both KIND, founded in 2004, and Clif Bar, found in 1992, produce healthy snack bars. (Lubetzky Decl. ¶ 2, 3 [Dkt. No. 11]); (Cleary Decl. ¶¶ 2, 15 [Dkt. No. 32]). KIND sells KIND bars, (Lubetzky ¶ 2), while Clif Bar sells an array of different bars, including the Clif MOJO bar, at issue here, (Cleary Decl. ¶ 2). KIND argues that Clif Bar's new trade dress for its MOJO bar mimics several key elements of the KIND trade dress, which it defines as:
(1) packaging with a transparent, rectangular front panel revealing a large portion of the bar itself; (2) a horizontal stripe bisecting the transparent front panel containing the flavor of the bar in text; (3) a text description of the product line (e.g. "Fruit & Nut, " "Plus, " or "Nuts & Spices") in line with the horizontal stripe bisecting the transparent front panel; (4) a vertical black band, offset to the side of the package, containing a bulleted list of many of the bar's key healthful attributes; (5) opaque vertical bands, or end caps, at either edge of the product package; and (6) a 40g size, in a slender shape.
(Lubetzky Decl. ¶ 20); (Mem. of Law in Supp. 2-3 [Dkt. No. 9]).
"The District Court may grant a preliminary injunction if the moving party establishes (a) irreparable harm and (b) either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary relief." Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 215 (2d Cir. 2012) (internal quotation marks omitted). In addition, the "court must consider the balance of hardships between the plaintiff and defendant and issue the injunction only if the balance of hardships tips in the plaintiff's favor" and "the court must ensure that the public interest would not be disserved by the issuance of a preliminary injunction." Salinger v. Colting, 607 F.3d 68, 80 (2d Cir. 2010) (internal quotation marks omitted).
The Court finds that Plaintiff has failed to establish a likelihood of success on the merits, or irreparable harm, or that the balance of hardships tips decidedly in its favor. The Court therefore DENIES Plaintiff's motion.
A. Likelihood of Success on the Merits
A product's trade dress is protected by section 43(a) of the Lanham Act, which provides a cause of action against any person who "in connection with any goods... uses in commerce any word, term, name, symbol, or device, or any combination thereof... which... is likely to cause confusion, or to cause mistake, or to deceive... as to the origin, sponsorship, or approval of his or her goods... by another person." 15 U.S.C. § 1125(a). A trade dress that is functional is not protected by the Lanham Act. Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 164 F.3d 736, 743 (2d Cir. 1998).
In order to succeed on a trade dress infringement claim, the plaintiff must show that (1) its trade dress is protectable due to the dress's (a) inherent distinctiveness or (b) acquisition of secondary meaning, and (2) likelihood of consumer confusion. Id. The Court finds that Plaintiff has failed to meet either test.
1. Inherent Distinctiveness or Secondary Meaning
A product's distinctiveness is evaluated using the test set out by Judge Friendly in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-10 (2d Cir. 1976). See Paddington Corp. v. Attiki Importers & Distributors, Inc., 996 F.2d 577, 583 (2d Cir. 1993) (adopting Abercrombie test to evaluate distinctiveness of a product's trade dress). Under this test, a trade dress is classified, in ascending order of strength, as (1) generic; (2) descriptive; (3) suggestive; or (4) arbitrary or fanciful. Id. A generic trade dress is never protectable. Id. A descriptive trade dress is protectable if the plaintiff establishes that it has acquired secondary meaning. Id. A suggestive or arbitrary or fanciful trade dress is always inherently distinctive. Id. "The Supreme Court has emphasized that an inherently distinctive trade dress is one whose intrinsic nature serves to identify a particular source of a product, although it may not yet have widespread identification among consumers." Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 1000 (2d Cir. 1997) (internal citation and quotation marks omitted).
"Although each element of a trade dress individually might not be inherently distinctive, it is the combination of elements that should be the focus of the distinctiveness inquiry." Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir. 1995). However, "the fact that a trade dress is composed exclusively of commonly used or functional elements might suggest that that dress should be regarded as unprotectable... to avoid tying up a product or marketing idea." Id. The Second Circuit has cautioned that in evaluating a trade dress' distinctiveness, courts should bear in mind two considerations: First, "overextension of trade dress protection can undermine restrictions in copyright and patent law that are designed to avoid monopolization of products and ideas." Id. Second, "just as copyright law does not protect ideas but only their concrete expression, neither does trade dress law protect an idea, a concept, or a generalized type of appearance." Id.
KIND argues that its trade dress is distinctive because the trade dress is "unique, arbitrary, and inherently distinctive." (Mem. of Law in Supp. 7). KIND relies on Second Circuit case law stating that, "the varieties of labels and packaging available to wholesalers and manufacturers are virtually unlimited. As a consequence, a product's trade dress typically will be arbitrary or fanciful and meet the inherently distinctive requirement for § 43(a) protection." Fun-Damental Too, Ltd., 111 F.3d at 1000. Clif Bar argues that KIND's trade dress is generic. (Mem. of Law in Opp. 11 [Dkt. No. 31]). The Court disagrees with both parties.
The Court finds that "despite the tendency for trade dresses to be inherently distinctive because the whole universe of materials and designs is available for packaging, " Plaintiff's very common packaging design is not inherently distinctive. Regal Jewelry Co., Inc. v. Kingsbridge Int'l, Inc., 999 F.Supp. 477, 489 (S.D.N.Y. 1998) (Newman, J.). Many food bars, in addition to KIND and MOJO bars, use one or more of the six elements that KIND seeks to protect here as its trade dress. See (DX 66 (food bars in transparent packaging)); (Grant Decl. ¶¶ 6, 8, 13, 17, 19, 20 (food bars using horizontal banners containing product and/or flavor descriptions), ¶¶ 8-9, 12, 14-17, 24, 29-31 (food bars declaring product attributes along one side of front panel); ¶¶ 6-8, 12, 15, 19-23, 25-27, 30 (food bars that are 40 grams in size) [Dkt. No. 34]); (Cleary Decl. ¶¶ 39-40 (use of transparent packaging in food industry in general and by other food bar packagers), ¶¶ 47-49 (use of opaque end caps in other Clif Bar products, common use of bullet points in consumer packaging, common practice of labeling products as "gluten free")); (Rosen Decl. ¶¶ 4-12 (use of transparent packaging in food industry in general and in Clif Bar products), ¶ 17 (use of transparent packaging by other manufacturers of food bars), ¶ 22 (use of opaque end caps in virtually all Clif Bar products and bars made by third-parties) [Dkt. No. 33]). Most of the six elements also serve functional purposes (e.g., the transparent window serves the purpose of revealing the bar within; the text description serves the purpose of informing the consumer of the bar's ingredients, etc.), which also militate against finding that the KIND trade dress is protectable. Jeffrey Milstein, Inc., 58 F.3d at 32. Moreover, the six elements, either individually or together, do not serve to identify the source of the bar. Fun-Damental Too, Ltd., 111 F.3d at 1000. Notably, the only element of KIND's packaging that indicates its source, the KIND logo, is not included in the trade dress KIND seeks to protect here.
The Court finds that KIND's packaging is also not generic. "An otherwise protectable trade dress can become generic within a particular market if the design becomes a standard or custom for the industry." Regal Jewelry Co., Inc., 999 F.Supp. at 489. The Court does not believe that the six elements combined have become "a singular custom in the industry." Id.
The Court finds that KIND's trade dress is more appropriately deemed descriptive; the elements KIND seeks to protect here all describe its product. See Med. Econ. Co., Inc. v. Prescribing Reference, Inc., 294 F.Supp.2d 456, 463 (S.D.N.Y. 2003) (Daniels, J.) ("Descriptive marks are marks that describe a product or its attributes."). The most prominent feature of the trade dress is the "transparent, rectangular front panel revealing a large portion of the bar itself. " (Lubetzky Decl. ¶ 20 (emphasis added)). Two other prominent elements that describe the product are the "text description of the product line... in line with the horizontal stripe bisecting the transparent front panel, " ( id. ), and the "40g size, in a slender shape, " ( id. ). The other features of the trade dress also describe the product in some way. The horizontal stripe bisecting the transparent front panel "contain[s] the flavor of the bar in text." ( Id. ). The vertical black band "contain[s] a bulleted list of many of the bar's key healthful attributes." ( Id. ). The only element that might not seem descriptive at first are the opaque end caps; however, the Court notes that the colors of KIND bars's opaque end caps sometimes reflect the flavor of the bar, or feature plus signs to reflect the bar's status as part of KIND's "Plus" line. See, e.g., (DX 91-L (blueberry vanilla & cashew KIND bar with blue end caps)); (DX 91-I (almond & apricot KIND bar with apricot-colored end caps)); (DX 25-A (peanut butter & strawberry KIND bar with lightbrown colored end caps)); (DX 91-E-G (KIND "Plus" bars with end caps featuring plus signs)).
ii. Secondary Meaning
"When trade dress is descriptive, it must have obtained secondary meaning with consumers at the time of the alleged infringement in order to be protectable." Regal Jewelry Co., Inc., 999 F.Supp. at 490 (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992)). "The trade dress of a product attains secondary meaning when the purchasing public associates' its design with a single producer or source rather than simply with the product itself." Coach Leatherware Co., Inc. v. AnnTaylor, Inc., 933 F.2d 162, 168 (2d Cir. 1991). "[P]roof of secondary meaning entails vigorous evidentiary requirements." Id. at 169. "[A] party seeking to prove secondary meaning has a heavy burden...." 20th Century Wear, Inc. v. Sanmark-Stardust, Inc., 815 F.2d 8, 10 (2d Cir. 1987) (internal quotation marks omitted). Factors that are relevant in determining secondary meaning include "(1) advertising expenditures, (2) consumer studies linking the dress to the source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the dress, and (6) length and exclusivity of the [dress]'s use." L. & J.G. Stickley, Inc. v. Canal Dover Furniture Co., Inc., 79 F.3d 258, 263 (2d Cir. 1996) (internal quotation marks omitted). No single factor is determinative and not all factors need to be proven. Id. The Court finds that KIND has failed to meet its heavy burden of establishing that its trade dress has acquired secondary meaning.
It appears from Clif Bar's internal documents during the MOJO redesign period that Clif Bar deliberately copied elements of the KIND trade dress for its new MOJO trade dress and therefore the "attempts to plagiarize the dress" factor weighs in favor of KIND. See, e.g., (Baxter Decl. Ex. A (email recapping a MOJO redesign meeting stating that, "[e]veryone also agreed that Kind is a best in class packaging that we should learn from for MOJO" and listing the following "learnings": (1) "[l]arge product visual with clear window"; (2) "[g]ood branding (KIND);" (3) "[c]laims on front panel (not wrapped); and (4) "[g]ood flavor communication claim"); Ex. B (internal Clif Bar PowerPoint finding that KIND has an "advantage" in packaging because of its "large clear window" and because its "claims are clearly indicated on the front wrapper"); Ex. C (email instructing a team member to "[b]ring multiple KIND bars" to a MOJO redesign meeting); Ex. E (Mojo 2013 Refresh Packaging Brief listing as "[c]onsiderations" that packaging should "[i]nclude a large clear window so that ingredients can be visible" and "[c]laims... should be on the front of the wrapper"); Ex. F (excerpt from a PowerPoint presentation titled "Mojo Packaging Refresh, " listing as a "packaging objective" to "[c]ompete head-to-head with Kind" by incorporating a "[l]arger window to showcase bar with whole pieces of fruits & nuts" and "[s]imilar window shape & coloring to Kind"); Ex. G (email from Kim Dao, Brand Manager, with the subject "Mojo Creative Weekly 7/9 RECAP, " stating that the MOJO packaging is "now too close to KIND") [Dkt. No. 45]).
KIND argues that the following factors also weigh in favor of finding that its trade dress has acquired secondary meaning: since the product's launch, KIND (1) has spent more than $100 million on marketing and advertising, (Lubetzky ¶ 13); (2) has sold $600 million dollars' worth of KIND bars, ( id. ¶ 16); (3) has received extensive unsolicited media coverage, ( id. ¶ 17); and (4) all KIND bars have shared the six elements KIND seeks to protect here, ( id. ¶ 3). However, KIND fails to establish that its sales, marketing and advertising expenditures, and unsolicited media coverage have resulted in consumers associating the six elements it seeks to protect as its trade dress with KIND. Cf. Coach Leatherware Co., Inc. v. AnnTaylor, Inc., 933 F.2d at 168. The trade dress KIND seeks to protect here excludes its logo, and KIND has not shown that its packaging, without the logo, has acquired secondary meaning. The Court notes that even the four advertisements KIND submitted that featured KIND bars without the KIND logo, PX 200-03, displayed the KIND logo elsewhere on the advertisement. Cf. Conopco, Inc. v. Cosmair, Inc., 49 F.Supp.2d 242, 249 (S.D.N.Y. 1999) (Sprizzo, J.) (finding that perfume bottle had not acquired secondary meaning partly because there was no evidence of "what percentage of magazine ads contained the... perfume bottle or what ...