United States District Court, S.D. New York
OPINION AND ORDER
PAUL OETKEN, DISTRICT JUDGE:
a case about trade dress infringement. Plaintiff It's a
New 10, LLC (“New 10”) manufactures various
hair-care products, including a conditioner called It's a
10 Miracle Leave-In Plus Keratin (“the New 10
product”). Defendants Harmon Stores, Inc. and Bed Bath
& Beyond are large affiliated retailers that sell
hair-care products made by national brands- including the New
10 product-next to cheaper, store-brand products. Plaintiff
claims that one of these products, the Harmon Face Values
Instant Therapy Leave-In Conditioner with Keratin (“the
Harmon product”), infringes on New 10's trade dress
rights. New 10 moved for a preliminary injunction requiring
Defendants to refrain from using the trade dress. (Dkt. No.
6.) A hearing was held on July 5, 2017. For the reasons that
follow, the motion is denied.
manufactures many types of personal care products. Among them
is a line of keratin-containing shampoos, conditioners, and
hair sprays. (Dkt. No. 18 at 6.) These products are sold by
retailers nationwide. (Dkt. No. 7 at 3-4.) Bed Bath &
Beyond operates large retail stores under its own name, and
also owns Harmon Stores and Christmas Tree Shops.
Defendants' stores sell national brand products, but,
like many large retailers, they also sell cheaper store-brand
products under the "Harmon Face Values" brand.
(Dkt. No. 13-2 ¶ 3.) This includes the New 10 product
(pictured below on the left), which is sold alongside the
Harmon product (pictured below on the right). (See
Dkt. No. 8-1 at 3). The Harmon product was introduced
in 2015. (Dkt. No. 13 at 2-3.)
picture shows, the products have some features in common.
Both bottles have some form of blue color, though the parties
dispute whether the New 10 product is blue or purple. (Dkt.
No. 13 at 4; Dkt. No. 18 at 1.) Both bottles have an orange
cap and a prominent circle on the label. There are some
differences too, most significantly in the shape of the
bottles, their labeling, and their brand names. The front
bottom of the Harmon product reads: "Compare Ours to
it's a 10® miracle leave-in plus KERATIN*."
The asterisk leads to a note on the back of the container,
which reads: “*This product is not manufactured or
distributed by it's a 10® Inc.,
distributor of it's a 10 miracle leave-in plus
Keratin.” Though the exact price difference between the
two products is unclear, the Harmon product sells for less
than the New 10 product. (See Dkt. No. 13 at 23.)
Counsel for New 10 represented at oral argument that the
price difference is approximately ten dollars.
filed this suit on June 6, 2017. (Dkt. No. 4.) The complaint
alleges trade dress infringement, false advertisement, and
unjust enrichment under federal and state law. (Id.)
On June 10, 2017, New 10 moved for a preliminary injunction
to prohibit Defendants from infringing on their trade dress,
including a condition requiring Defendants to recall the
Harmon product from the shelves. (Dkt. No 6.)
preliminary injunction is an extraordinary remedy never
awarded as of right.” Winter v. Nat. Res. Def.
Council, Inc., 555 U.S. 7, 24 (2008). Under Second
Circuit law, a 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) (quoting UBS Fin.
Servs., Inc. v. W.Va. Univ. Hosps., Inc., 660 F.3d 643,
648 (2d Cir. 2011) (internal quotation marks omitted)).
Court notes that this longstanding Second Circuit standard
may be in conflict with the Supreme Court's more recent
formulation in Winter, which held that “[a]
plaintiff seeking a preliminary injunction must establish
that he is likely to succeed on the merits, that he is likely
to suffer irreparable harm in the absence of preliminary
relief, that the balance of equities tips in his favor, and
that an injunction is in the public interest.”
Winter, 555 U.S. at 20; see also N.Y. City
Triathlon, LLC v. NYC Triathlon Club, Inc., 704
F.Supp.2d 305, 313 (S.D.N.Y. 2010) (acknowledging this
conflict); DAG Jewish Directories, Inc. v. Y & R
Media, LLC, No. 09 Civ. 7802, 2010 WL 46016, at *1
(S.D.N.Y. Jan. 7, 2010) (same). In this case, however, the
outcome would be the same regardless of the standard used
because there is neither a “likelihood of success on
the merits, ” Winter, 555 U.S. at 20, nor
“sufficiently serious questions going to the merits to
make them a fair ground for litigation, ”
Louboutin, 696 F.3d at 215.
prevail on the merits in a trade-dress infringement case
under the Lanham Act, “plaintiff must first demonstrate
that its trade dress is either inherently
distinctive or that it has acquired distinctiveness
through a secondary meaning.” Fun-Damental Too,
Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2d Cir.
1997). “Second, plaintiff must demonstrate that there
is a likelihood of confusion between defendant's trade
dress and plaintiff's.” Id.
deciding whether a given trade dress creates a likelihood of
confusion, courts in the Second Circuit look to the eight
factors articulated in Polaroid Corp. v. Polarad
Electronics, Corp., 287 F.2d 492, 495 (2d Cir. 1961).
“These non-exclusive factors are: (1) the strength of
the plaintiff's trade dress, (2) the similarity between
the two trade dress[es], (3) the proximity of the products in
the marketplace, (4) the likelihood that the prior owner will
bridge the gap between the products, (5) evidence of actual
confusion, (6) the defendant's bad faith, (7) the quality
of defendant's product, and (8) the sophistication of the
relevant consumer group.” FunDamental Too, 111
F.3d at 1002-03. The ultimate question for likelihood of
confusion, after weighing all the factors, “is not
whether the products can be differentiated when [the
plaintiff's] trade dress and [the defendant's] trade
dress are subject to a side-by-side comparison. Instead, we
must ask whether they create the same general overall
impression such that a consumer who has seen [the
plaintiff's] trade dress would, upon later seeing [the
defendant's product] in its trade dress alone, be
confused.” Id. at 1004. The Court considers
each Polaroid factor in turn.
Strength of Plaintiff's Trade Dress
this factor, “the essence of the analysis is to
determine the strength of the trade dress in its commercial
context.” Id. at 1003. Courts must therefore
analyze “the tendency of the trade dress to identify
the goods sold as emanating from a particular source, even
when the source is unknown to the consumer.”
Id. (quoting Centaur Commc'ns, Ltd. v. A/S/M
Comms., Inc., 830 F.2d 1217, 1226 (2d Cir. 1987)
(internal quotation marks and alterations omitted)).
points to the brand recognition, sales numbers, and marketing
expenditures of New 10's product lines, arguing that this
created and reinforced a brand that is centered on a unique
trade dress. (Dkt. No. 7 at 4-5, 10-11.) However, very little
of New 10's evidence concerns the keratin conditioner
that is the subject of this case or even the keratin product
line that bears the blue-and-orange color scheme. Instead,
New 10 provides generalized evidence about the success of its
products, which is not directly relevant to the instant
dispute. (See, e.g., Dkt. No. 7 at 4-5.) For
example, to highlight its investment in brand recognition,
New 10 points to an advertisement that ran during the 2017
Super Bowl. (Id. at 11.) But the ad is not
for the blue-and-orange keratin line but for two different
products-one is blue and pink; one is dark gray and blue.
While overall brand strength ...