Defendant’s directly competing product was allegedly
confusingly similar in coloring and layout:
It changed the bottle and represented that it would no
longer use the old trade dress:
Defendant moved for summary judgment on the infringement,
dilution, and related common-law claims (federal dilution! Where is Rule 11
when you need it?).
The court first ruled that the infringement claim didn’t
require a showing of actual damages, because a prevailing plaintiff can recover
the defendant’s profits and the costs of the action. (The defendant’s admission that it sold old
bottles was enough evidence that there’d been recoverable profits to
proceed.) There was sufficient evidence
to create an issue of fact on confusion with the old bottle. But the court granted summary judgment as to
the new bottle, given the dissimilarity in marks.
The “It’s a 10” mark was suggestive, while the “Miracle
Leave In Products” mark was weaker, tending towards descriptive—it described
product characteristics, and common self-laudatory epithets don’t tend towards
strength. But given that the two marks
appeared prominently and in tandem, “Miracle Leave in Products” was also
sufficiently distinctive to warrant protection.
(What? If anything, a descriptive
term appearing in tandem with an inherently distinctive mark is probably more likely to be ignored as an
indicator of source, since it’s not enhancing distinctiveness.) With respect to the old bottle, similarity
weighed in favor of confusion.
Defendant’s “10 PL US” and “Miracle Leave In Treatment” marks on the old
bottle were very similar to plaintiff’s marks. The connotations were similar,
and they shared similar orientations “on similarly colored, irregularly shaped
bottles,” using approximately the same color schemes. Product relatedness also favored confusion.
Defendant argued that it sold to the mass market, including
large retailers such as Target, while plaintiff sold to the premium market in
salons only. Plaintiff offered evidence
that its products were also for sale by large retailers, including Target. This made similarity of sales channels a
disputed issue.
On intent, the striking similarity of the old bottle to
plaintiff’s product suggested intentional copying, as did an invoice from a
design firm indicating that defendant retained the firm for a project
containing “It’s a Ten” in the project title. This was circumstantial evidence of intent to
capitalize on the plaintiff’s goodwill.
Taken together, the evidence precluded summary judgment for defendant as
to the old bottle.
The new bottle was a different matter. The color scheme changed to conform with
defendant’s other product lines; the word “Miracle” was gone; and the
orientation and placement of “10 PL US” changed. The change made the bottles sufficiently
dissimilar; for the same reasons, there was no reason to infer an intent to
copy as opposed to an intent to differentiate.
The plaintiff didn’t provide any evidence of actual confusion. In total, no reasonable jury could find
likely confusion.
This reasoning on the old and new bottles also applied to
the overall trade dress claim, where the plaintiff provided evidence of
acquired distinctiveness—“substantial efforts and resources in developing its
brand and trade dress, and cultivating consumer recognition of its trade
dress,” plus defendant’s apparently intentional imitation.
The court granted summary judgment on the dilution claims in
full. Of course the plaintiff’s mark
wasn’t famous. “The threshold for a showing of fame … is exceptionally high…. In
other words, [a] party claiming dilution must establish that its mark is
practically a household name, of the likes of such giants of branding as Exxon,
Kodak, and Coca-Cola.” The plaintiff’s assertions that it had spent millions on
ads over the past few years, that its product was one of the “nation’s
top-selling leave-in conditioners,” that it has received numerous industry
awards, and that its sales top $50 million per year were insufficient. This showed “laudable recent successes” within
its industry. But it didn’t come close
to showing “the cultural heft to transform them from mere trademarks—even
strong ones—to a household name that is instantly recognizable among the general
public of the United States.”
In an interesting wrinkle, the defendant argued that it
didn’t “use” the old bottle in Florida and thus state law didn’t apply. The plaintiff argued that shipment of samples
to a handful of Florida distributors was sufficient. “Use” under Florida law required that a mark
be placed on goods sold or transported in Florida in the ordinary course of
trade. Sending samples to potential clients was sufficient, at least to avoid
summary judgment.
The plaintiff also alleged counterfeiting under 15 USC §
1114. Counterfeits are marks “identical
with, or substantially indistinguishable from, a registered mark.” Although “substantially indistinguishable” is
ill-defined by the cases, the test is more rigorous than the confusion test,
and no reasonable jury could find the marks here “substantially
indistinguishable.” While potentially
confusingly similar, “It’s a 10” and “Miracle Leave In Products” had different
words, different colors, and different fonts than “10 PL US” and “Miracle Leave
In Treatment.” These differences were
not trivial, so summary judgment was awarded to the defendant on this count.
However, the defendant didn’t establish with absolute
clarity that all infringement ceased—there was some evidence showing sales of
products referred to as “Miracle Leave In Treatm[ent]” even after defendant
said it wasn’t using the old bottle.
(This might be recordkeeping trouble, since the new bottle was
apparently the same product, but it was enough to keep injunctive relief
alive.)
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