“This trade dress infringement action concerns the
appearance of bins used to hold pistachios in grocery stores.” Paramount sued Keenan under §43(a) and
coordinate state law, and also brought a federal dilution claim. Keenan argued that the claimed dress was
functional, lacked secondary meaning, and was unlikely to be confused with Keenan’s
competing bins. The court initially
announced it was granting Keenan’s motion for summary judgment in toto, but in
the written opinion it only killed the dilution claim and preserved the
infringement claims.
Paramount claimed the following elements of its in-store
bins as protectable, though unregistered, trade dress, with a first use in
2007:
(1) the prominent use of a unique
bright green color; (2) the thin, sans serif font for the word
"pistachios" which is displayed in all capital letters; (3) the
vertical orientation of the word "pistachios," which is written from
bottom to top; (4) use of the color black, as trim or otherwise, drawing
contrast to the unique bright green color; and (5) images of pistachios.
Kennan began using new bins in 2011. These are the parties’ bins.
Kennan initially argued that the claim failed because
Paramount’s product line didn’t have a “consistent overall look.” But Paramount was only seeking protection for
the pistachio bins, which could have a protectable trade dress. This was true even if not every bin or ad
Paramount produced had the five elements of the claimed trade dress. (There’s a bit of a wiggle here: as we’ll see
below, the claimed secondary meaning for the bins comes from the presence of
some of these elements in ads.)
Keenan didn’t argue utilitarian functionality, but rather
the general “non-reputational disadvantage”/aesthetic kind of functionality,
since competitors need to use bright green against a dark background and images
of pistachios. But the functionality of
individual elements isn’t dispositive, and Keenan didn’t show that the
combination here, including the sans serif, thin font, and vertical orientation
of “pistachios” as well as the color and images, was functional. Thus Keenan failed in its burden on summary
judgment. (Since there’s no
registration, isn’t the burden on plaintiff to show nonfunctionality? Wouldn’t it have to come forward with some
evidence of nonfunctionality, such as the possibility of noninfringing bins
that used the functional elements like pictures of pistachios and the use of
green? Especially since it’s apparently
suing Walgreens over different
pistachio bins, this would seem to be important.)
Keenan also argued that the bins weren’t inherently
distinctive since all the claimed elements were in use before by pistachio
competitors, but the court found an issue of fact on whether the overall
combination was fanciful and therefore distinctive. “In the Court's view, the
stark contrast between two colors-black and bright green, the use of capitalized,
thin, sans serif print, and the vertical printing of ‘pistachios,’ together
create an overall impression of modern simplicity. By contrast, none of the
competitor's pistachio bins combined these same elements to create a comparable
impression. For example, the other brands predominantly used other color
combinations such as green and blue, green and yellow, or red and green.” Thus, this was more than a mere refinement of
existing trade dress.
There was also a triable issue on secondary meaning given
the circumstantial evidence. Evidence of
deliberate copying could also support an inference of secondary meaning, though
competitors may copy product features for a variety of reasons, including a
belief in their functionality. Paramount
showed evidence of extensive sales and advertising, including TV ads that “contain
elements to educate viewers” about the trade dress. At the end of each ad,
Paramount’s pistachio package emerges from a pistachio shell, in an image
identical to that found on its bin.
Paramount has used similar ads and coupons.
And there was circumstantial evidence of intentional
copying. Before 2007, none of Keenan’s
bins “remotely” resembled the allegedly infringing bin—in 2004, its bin was
dark green and red, with “Snack Zone” in military font. A 2005 bin used “pistachios” printed
vertically, the words were in thick serif and the rest of the bin was dark
green and yellow. The 2008 and 2009 bins
were predominantly green and yellow and again used a thick serif font. In 2011, though, Keenan used a monochrome bright
green background with "pistachios" in thin, sans serif font,
scrolling from the bottom up. This clear
similarity supported an inference of deliberate copying, especially because
there was only one other pistachio producer who uses in-store display
bins. (This would seem to interact with
functionality: if the use of in-store display bins is a useful sales technique,
then the form is functional. However,
that may also create an obligation on other users of that technique to stay
further away from the other, nonfunctional elements of Paramount’s trade
dress.) “Given that Defendant had many
options to choose from, the fact that it selected a trade dresses so similar to
Plaintiff's lends weight to the inference that it deliberately copied.”
As for likely confusion, the court also found a triable
issue. The bins were similar in color;
the use of “pistachios” in thin, all-capitalized, sans serif font, scrolling
from bottom to top; and images of outsize pistachios, creating a striking
similarity. In context, in some Wal-Mart
stores, the bins are immediately adjacent to each other, magnifying the
similarity. (In other circumstances, the
opportunity for side-by-side comparison makes confusion less likely; most
stores sell the generic cola next to the Coca-Cola, but that tends to make it
easier to tell the two apart despite the similar color schemes.) There were also differences between the bins,
including the Keenan logo at the top of the bin, different pistachio shapes,
and dark green versus black trim. “The
impact of these differences, however, is substantially reduced in light of
Plaintiff's evidence that the top of Defendant's bin is often cut off by
grocery stores, so that the Keenan Farm's logo, as well as the complementary dark
green, is entirely absent.” This factor
weighed “decisively” in favor of likely confusion, by which the court meant
Keenan had to lose its summary judgment motion.
Mark strength also weighed in Paramount’s favor because of
the evidence that the mark was either inherently distinctive or had seconary
meaning. (This simply can’t be true as stated; protectable doesn’t mean strong,
or else strength would always favor the plaintiff who had a minimally valid
mark.)
There was no evidence of actual confusion, but that wasn’t
necessary, especially because the use was so new. Proximity of the goods and marketing channels
favored confusion. The court also
rejected Keenan’s argument that pistachio consumers are generally college
educated and that pistachios are expensive as nuts go. “College graduates may be just as prone to
exercise less care when buying something as inexpensive as a bag of nuts.
Moreover, even if pistachios are expensive as far as nuts go, that does not
change the fact that nuts are a relatively low cost commodity.” In addition, only one other company uses
in-store display bins for its pistachios, so one might reasonably infer that
consumers aren’t accustomed to discriminating between pistachio bins, and thus
less likely to exercise care once they spot a bin they associate with a
particular producer (again see the interaction with functionality).
The court also reiterated its conclusions about the
possibility of finding intentional copying.
“It is difficult to imagine why Defendant would suddenly change its bins
to look less like its own packaging, and more like the bin and packaging of its
competitor. The reasonable inference is that Defendant was intentionally
copying Plaintiff's trade dress to take advantage of its reputation among
consumers.”
In balancing the factors, the court took note of the fact
that the actual packaging of Keenan pistachios was “readily distinguishable”
from Paramount’s. The use of different
names or distinctive logos can reduce the likelihood of confusion, and that
principle applied with greater force here, “since the packages are
distinguished not only by the presence of each party's name or logo, but also
by unique package designs.” There was
still a triable issue of fact, though—the question was properly left to the
jury. A reasonable consumer could
conclude that Paramount was endorsing Keenan’s pistachios, or even that
Paramount actually owned Keenan and was marketing them as a different product
line. (Ordinarily we don’t expect
side-by-side competitors, distinctively packaged—by concession—to come from the
same source; there’s
a case about this.) Given the
evidence of secondary meaning, it’s reasonable to infer that a consumer who
sees a bin that strongly resembles Paramount’s bin would associate the
pistachios in the bin with Paramount.
This is especially true given the lower level of care exercised with
respect to relatively inexpensive items and given that few competitors use bins
to display pistachios. “A reasonable
consumer who is unaccustomed to discriminating among several bins is more
likely to rely on heuristics at the point of sale.” And the evidence of intentional copying was
also relevant: a jury could find an intent to mislead.
Turning to dilution, the court preposterously found a
triable issue on federal fame, even though the evidence doesn’t come close to
showing that the claimed mark was “widely known among the general consuming
public” just because Paramount spent a lot of money on advertising elements of
this unregistered mark and made a lot of pistachio sales. The court seemed particularly impressed that
the brand has a Facebook page with almost 300,000 likes. However, Paramount offered no argument for
why Keenan’s use would cause blurring—why consumers who saw the Keenan trade
dress and then subsequently saw the Paramount trade dress would think of both
parties, or of Keenan alone. So summary
judgment was granted on dilution.
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