KIND sought a preliminary injunction against Clif Bar’s new
trade dress for its MOJO bars; the court denied the motion. KIND defines its trade dress 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.
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| KIND bar |
First, the court determined that the trade dress was neither
inherently distinctive nor generic.
Distinctiveness should be evaluated bearing in mind (1) the risk that
overextension of trade dress protection could undermine limits on copyright and
patent law, and (2) that trade dress doesn’t protect an idea, a concept, or a
generalized type of appearance. KIND
understandably cited the old Landscape
language that “the varieties of labels and packaging available to wholesalers
and manufacturers are virtually unlimited [so] a product’s trade dress
typically will be arbitrary or fanciful and meet the inherently distinctive
requirement for § 43(a) protection.” But
KIND’s own “very common packaging design” wasn’t inherently distinctive. Nor was it generic—the combination of the six
elements wasn’t a “singular custom in the industry.”
Running through the evidence, many food bars use one or more
of the six elements KIND sought to protect: transparent packaging, horizontal
banners with product/flavor descriptions, product attributes along one side of
front panel, 40 gram size, and opaque end caps.
Many of these were also common in the food industry in general. Most of these
elements also served functional purposes—the transparent window reveals the bar
within; the text description informs consumers of the bar’s ingredients,
etc.—and this also weighed against finding the trade dress protectable. These
elements, either individually or together, just didn’t identify source. The KIND logo wasn’t included in the claimed
trade dress. (And its two registrations
for its packaging differed from that claimed here, most notably by including
“KIND.”) All the elements it sought to
protect here instead described its product, particularly the most prominent
feature: the transparent, rectangular front panel. Likewise the text description and the 40g
size in a “slender shape”; the horizontal stripe bisecting the transparent
front panel contained the flavor, and the vertical black band contained “a
bulleted list of many of the bar’s key healthful attributes.” The opaque end caps might not seem
descriptive at first, but they sometimes reflected the bar’s flavor or featured
plus signs to show that the bar was part of KIND’s “Plus” line.
So, could KIND show secondary meaning? Relevant factors: (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 trade dress’s use. KIND failed to meet its heavy burden of
showing secondary meaning.
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| MOJO bar |
That wasn’t enough to show secondary meaning, though. Since launch, KIND had spent more than $100
million on marketing and advertising, had sold $600 million dollars’ worth of
KIND bars, had received extensive unsolicited media coverage, and all KIND bars
allegedly shared the six elements at issue.
However, KIND didn’t show that these sales/ads/etc. resulted in
consumers associating these six elements with KIND, in the absence of the
logo. Even four ads featuring KIND bars
without the logo displayed the logo elsewhere on the ad. Thus, the court
couldn’t determine whether secondary meaning existed in these elements, or the
logo, or the logo plus the six elements.
While “intentional copying constitutes persuasive evidence
of consumer recognition, conscious replication alone does not establish
secondary meaning.” (Otherwise competitors would hesitate to copy good,
descriptive ideas.)
Though it wasn’t necessary, the court ran through the
confusion factors as well.
Strength of the trade dress: the court found it to be
weak—descriptive, and without secondary meaning. The commercial context also mattered: many
food bars used the six elements, either individually or some in combination,
which additionally undercut the strength of the trade dress and “indicate[d]
that its claim is pitched at an improper level of generality.” KIND’s CEO even testifed that the Think Thin
Crunch bar “may arguably be infringing” as well, but most of the six elements at
issue didn’t appear on its trade dress—the only similarities were the transparent
window and the opaque end caps. This was
impermissibly seeking protection for “a generalized type of appearance.”
Similarity: Though the trade dresses shared some similar
elements, the overall impression differed significantly, weighing against KIND. KIND’s witness explained that packaging can
be divided into two types, one that emphasizes straight lines and minimizes
curvature, and the other that has or emphasizes curvature. Jargon ahoy: KIND’s
trade dress is best described as “minimalist,” “simple,” “clean,” “modern,” and
“sleek,” connecting with its brand concepts of integrity and simplicity. It uses straight lines. The MOJO trade dress has a different color
scheme, fonts, and number and placement of design elements; it’s embellished
rather than minimalist; and it uses curves in the large curved “J” of MOJO, the
cursive font used to describe the product-line, and the mountain displayed
along the bottom of the packaging. Its
movement/mountain imagery “connects with the core concepts” of the Clif
Bar/MOJO brands.
Also, the prominent use of MOJO and the Clif Bar mark, which
has 87% aided awareness, tended to dispel any confusion. See Bristol-Myers Squibb Co. v. McNeil-P.P.C.,
Inc., 973 F.2d 1033, 1046 (2d Cir. 1992) (house brands can prevent
confusion). KIND argued that the Bristol-Myers rule didn’t apply because
the Clif marks weren’t prominent enough and weren’t universally recognized, and
because the KIND trade dress was remembered better than the name. The court disagreed:
the marks didn’t have to be the most prominent part of the trade dress to
dispel confusion, and anyway MOJO was the second most prominent feature after
the transparent window. Also, the
evidence didn’t show general consumer recognition of KIND bars only through the
six claimed elements.
Competitive proximity favored KIND; there was no gap to
bridge.
Actual confusion evidence was weak; its absence wouldn’t
weigh against KIND because the product was new to the market. This factor
weighed slightly in KIND’s favor: There were dueling surveys and some
anecdotal evidence.
KIND’s survey found 15% net confusion. This was “on the lower end of rates that
courts within this Circuit have found sufficient to show actual confusion.” True, in the bad old days some courts
accepted gross rates of 15% without control groups, but that was before courts
understood consumer survey evidence.
Plus, Clif Bars’ expert credibly testified that the KIND
survey was flawed because it only measured whether there was confusion, not
what caused it. When there is a
multi-element trade dress, it’s vital to understand what causes the
problem. But the control had none of the
elements. Thus, the survey may have
underestimated noise/overestimated confusion.
The survey respondents were asked: “Do you think this brand of [snack
bars] is or is not made by or made with the approval or sponsorship of the same
company that makes the [corresponding type of product] you saw in the earlier
photo?” Yes-sayers got follow-ups, and the verbatim responses to “What makes
you say that?” and “Anything else?” questions proved Clif Bars’ point. Some responses cited the similar packaging; other
responses cited the similar flavors of the KIND and MOJO bars (e.g., “They have
the same flavors, and are both healthy snack bars”; “Fruit and nut was on most
of the packaging with the exception of the chocolate bar I believe. Looks like
a higher quality of the same bars”; “They had the exact same titles for each of
the different bars”); others cited both packaging and flavors; and others just
completely whiffed (e.g., “These are very nice packages and I was looking for a
special Valentine gift along these lines anyway, so it is exciting to encounter
new products with better ingredients”; “I think this would be in every store and
people would love to buy them.”). Thus,
the court gave little weight to the survey.
The anecdotal evidence of confusion involved one customer
who thought the MOJO bar he’d selected was a KIND bar, but he had “no clue”
about the bar he selected, and told the interviewer he was looking for a KIND
bar because his daughter told him to buy it.
Since “the correct test is whether a consumer who is somewhat familiar
with the plaintiff’s [dress] would likely be confused when presented with
defendant’s [dress] alone,” this didn’t matter.
Another potential consumer who shared an apartment with a KIND employee,
selected a MOJO bar, believing it to be a KIND bar, from a bowl of snacks in
her apartment. But this confusion might have resulted from her expectation that
she’d find KIND bars in her home because of her roommate’s employment. That
wasn’t probative of the average consumer in marketplace conditions.
KIND also relied on social media post, but the court found
them “mostly unhelpful.” Comments on
Clif Bar’s Facebook posts noted similarities between the bars, e.g., “I love
all things Clif and I’m sure I’ll like these too, but don’t they kinda look
like Kind bars?” But assertions of
similarity don’t establish confusion.
One tweet said, “I was about to pick up one of those [MOJO bars] because
I thought it was a Kind Bar at the vitamin shop ....,” and that did suggest
actionable initial interest confusion.
(Argh! Confusion remedied before
the consumer even takes physical action should not count. That’s just initial attention. There are no
sunk costs making this like bait and switch.)
But the overall evidence of actual confusion was weak.
Bad faith: the evidence didn’t show an intent to deceive
consumers into believing that the MOJO bar was made or sponsored by KIND, and
thus this factor weighed in favor of Clif Bar.
Intent to compete by imitating is vastly different from an intent to
deceive. The prominent display of the
MOJO/Clif Bar marks and dissimilarity to KIND’s minimalist trade dress negated
any inference of intent to deceive.
Quality: no evidence; no one cares.
Buyer sophistication: About half of retail outlets sell KIND
bars in a “primarily impulse” setting, but over three-quarters of its sales
volume comes from frequent purchasers who eat a bar several times a week or
more. Some buyers are casual and some
careful. The court gave this factor little weight.
The court also identified other marketplace factors that
favored Clif Bar. Here, the “caddies” or
“inner cases” in which these products are often sold, and the point of sale
displays Clif Bar has provided retailers, all prominently bore the MOJO and
Clif marks, thus dispelling confusion.
In addition, many MOJO and Clif bars are sold through mass market and
grocery stores, where MOJO bars are often grouped with other Clif Bar products
and KIND bars are often grouped with other KIND products.
Balancing the factors, no confusion was likely. Thus there
was no irreparable harm.
Under the alternate standard for preliminary relief
(assuming it survives eBay), KIND
also failed. Clif Bar alleged sunk costs
for the new MOJO products of $13.9 million, including inventory ready to ship
and already shipped; “contracted ingredient and marketing commitments; R &
D development costs; the cost of sales kits, merchandising shippers, plan-o-grams
and reset work; and the forecasted loss of sales from Clif Bar products
discontinued to make room for new CLIF MOJO products on the shelf.” KIND’s proposal for a three-month sell-off
period would reduce losses only as to the first category. It would cost Clif Bar approximately $500,000
and take eight months to develop and manufacture new packaging, with a loss of
$10 million in revenue during that period, with consequent harm to brand
loyalty and reputation while it couldn’t fulfill its commitments. While KIND argued that ingredients could be
repurposed and that a new design would only take three months, KIND’s irreparable
harm was premised on KIND’s alleged loss of goodwill and market share through
confusion, which wasn’t sufficiently shown, so it couldn’t meet its burden of
showing that the balance of harms tipped decidedly in its favor.
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