The opinion of the court was delivered by: ILANA DIAMOND ROVNER
MEMORANDUM OPINION AND ORDER
This is an action brought by plaintiff Turtle Wax, Inc. ("Turtle Wax") against its competitor First Brands Corporation ("First Brands") for trade dress infringement pursuant to § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), the Illinois Deceptive Trade Practices Act, Ill. Rev. Stat. ch. 121 1/2, PP312 et seq., the Illinois Consumer Fraud and Deceptive Business Practices Act, Ill. Rev. Stat. ch. 121 1/2, PP261 et seq., and the Illinois common law of unfair competition and trademark infringement. At issue are the trade dresses
of two competing, super-premium automobile polishes, one manufactured and sold by Turtle Wax and the other by defendant First Brands. The gravamen of plaintiff's complaint is that defendant's trade dress for its "Simonize Ultimate" car wax infringes upon plaintiff's trade dress for its "Liquid Crystal" automobile polish.
In conjunction with its complaint, Turtle Wax also filed a motion for a preliminary injunction, requesting that defendant be restrained from utilizing the Simonize Ultimate trade dress or any other colorable imitation of plaintiff's Liquid Crystal trade dress prior to a resolution of the merits of plaintiff's complaint. The Court granted plaintiff's request for expedited discovery and referred the preliminary injunction motion to Magistrate-Judge Ronald A. Guzman for an evidentiary hearing and a report and recommendation. The Magistrate-Judge conducted such a hearing from December 17 through December 21, 1990, and he issued his Report and Recommendation (the "Report") on March 28, 1991.
In that Report, Magistrate-Judge Guzman recommended that the Court deny plaintiff's motion for a preliminary injunction because Turtle Wax had failed to establish a likelihood of success on the merits of its trade dress claims. Pending before the Court are plaintiff's extensive objections to the Report of the Magistrate-Judge. For the reasons enumerated below, the Court will overrule those objections, will adopt the Report of Magistrate-Judge Guzman, and will deny plaintiff's motion for a preliminary injunction.
This case involves the trade dress of a premium automobile polish manufactured and sold by Turtle Wax under the trade name Liquid Crystal. Plaintiff markets and sells the Liquid Crystal product in two forms -- as a polish, which is packaged in an upright "F-style" can, and as a cream or paste in a shorter, round can. (See Antweiler Physical Exhibit R, attached to this opinion as Appendix B.) Turtle Wax designed the Liquid Crystal trade dress with a glossy, black background, gold lettering, and red details. The front end of a gold Porshe is depicted on the package. Both the F-style and paste cans contain smoked, gray overcaps, housing terry cloth applicator sponges. Turtle Wax introduced this trade dress in the United States in August 1989 at the Automobile Parts and Accessories Association ("APAA") trade show. It was not officially introduced to the consuming public, however, until April 1990.
In December 1989 or January 1990, First Brands began to develop a premium automobile polish to compete with plaintiff's Liquid Crystal. When introduced to the market in the latter part of 1990 and early 1991, defendant's Simonize Ultimate Car Wax was packaged in metal cans bearing a substantial similarity to plaintiff's Liquid Crystal products. Defendant's product also is sold both in a liquid form in an upright, F-style can and in a paste form in the shorter, round can. (See PX 141, attached to this opinion as Appendix C.) The Simonize cans also are designed with a black background, primarily gold lettering, and red detailing, and they depict a flashy red sports car across the front of the can. The Simonize Ultimate products also contain overcaps with terry cloth applicator sponges, although those overcaps are black opaque in color, rather than a smoked gray.
The Report of Magistrate-Judge Guzman sets out in detail these and other facts relating to the products at issue in this case. The Report also provides pertinent information relating to the relevant automotive market. Turtle Wax has not objected to any of the Magistrate-Judge's factual findings. In fact, Turtle Wax describes those findings as "fair and accurate representation[s] of the evidence adduced during the preliminary injunction hearing." (Plaintiff's Objections at 2.) Plaintiff's objections instead focus on Magistrate-Judge Guzman's application of the relevant facts to the legal authorities controlling plaintiff's claims. According to Turtle Wax, the Magistrate-Judge, "having made the correct findings,. . . proceeded to misconstrue and misapply the applicable law to those findings." (Id.)
Because Magistrate-Judge Guzman made meticulous and detailed findings in his Report, and because the parties have not objected to any of those findings before this Court, the Court will adopt the factual findings of the Magistrate-Judge and will not reiterate those findings in this opinion. (See Report at 2-28.)
The purpose of preliminary injunctive relief is "to minimize the hardship to the parties pending the ultimate resolution of the lawsuit." Faheem-el v. Klincar, 841 F.2d 712, 717 (7th Cir. 1988). Before a plaintiff will be entitled to such relief, it must establish the following five elements:
1) no adequate remedy at law exists;
2) the moving party will suffer irreparable harm absent injunctive relief;
3) the irreparable harm suffered absent injunctive relief outweighs the irreparable harm the respondent will suffer if the injunction is granted;
4) the moving party has a reasonable likelihood of prevailing on the merits; and
§ %5) the injunction will not harm the public interest.
Somerset House, Inc. v. Turnock, 900 F.2d 1012, 1014-15 (7th Cir. 1990); see also Kellas v. Lane, 923 F.2d 492, 493 (7th Cir. 1991). Each element must be shown before an injunction will issue. Somerset House, 900 F.2d at 1015; see also Roland Machinery Co. v. Dresser Industries, Inc., 749 F.2d 380, 386-87 (7th Cir. 1984). In recommending that the Court deny plaintiff's motion for a preliminary injunction, the Magistrate-Judge examined only the likelihood that plaintiff would succeed on the merits of its claims.
After reviewing all the evidence and the applicable law, Magistrate-Judge Guzman concluded that plaintiff had failed to show a reasonable likelihood of prevailing on the merits. (Report at 47.) Thus, in accordance with the Seventh Circuit's decision in Ping v. National Education Association, 870 F.2d 1369, 1371 (7th Cir. 1989), the Magistrate-Judge declined to reach the other required elements for preliminary injunctive relief and recommended that plaintiff's motion be denied. (Id.)
Turtle Wax concedes that to establish a cause of action for trade dress infringement, it must prove both: (1) that the trade dress of its Liquid Crystal product is protectable -- that is, it is inherently distinctive or has acquired secondary meaning, and (2) that there is a likelihood of confusion with respect to the origin of defendant's Simonize Ultimate product. See Roulo v. Russ Berrie & Co., 886 F.2d 931, 935, 12 U.S.P.Q.2D (BNA) 1423 (7th Cir. 1989), cert. denied, 493 U.S. 1075, 110 S. Ct. 1124, 107 L. Ed. 2d 1030 (1990); Vaughan Manufacturing Co. v. Brikam International, Inc., 814 F.2d 346, 348, 1 U.S.P.Q.2D (BNA) 2067 (7th Cir. 1987). Moreover, even if plaintiff establishes both a protectable trade dress and a likelihood of confusion, it cannot prevail if defendant shows that plaintiff's trade dress is merely functional. Schwinn Bicycles Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 1183, 10 U.S.P.Q.2D (BNA) 1001 (7th Cir. 1989); see also Eldon Industries, Inc. v. Rubbermaid, Inc., 735 F.Supp. 786, 795, 17 U.S.P.Q.2D (BNA) 1280 (N.D. Ill. 1990) (Rovner, J.). Plaintiff contends that it has established each of the required elements and that the Magistrate-Judge erred when he concluded that neither a protectable trade dress nor a likelihood of confusion had been shown. The Court addresses each of plaintiff's objections in turn.
A. Inherent Distinctiveness.
Turtle Wax first contends that Magistrate-Judge Guzman erred when he found that the Liquid Crystal trade dress was not inherently distinctive. Plaintiff agrees with the Magistrate-Judge that two tests exist for analyzing the inherent distinctiveness of a trade dress -- that enunciated by the Second Circuit in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 U.S.P.Q. (BNA) 289 (C.C.P.A. 1977) (the "Seabrook test"), and the alternative test utilized by the Fifth Circuit in Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695, 212 U.S.P.Q. (BNA) 904 (5th Cir. 1981), cert. denied, 457 U.S. 1126, 102 S. Ct. 2947, 73 L. Ed. 2d 1342 (1982) (the "Chevron test"). (See Report at 30.)
Although the parties and the Magistrate-Judge agree that these are the appropriate tests for inherent distinctiveness, Turtle Wax maintains that the Magistrate-Judge erred when he found that plaintiff had failed to satisfy either test.
In applying the Seabrook test of inherent distinctiveness, the Magistrate-Judge explained that he was required to determine whether plaintiff's trade dress "was a 'common' basic shape or design, whether it was unique or unusual in a particular field, or whether it was a mere refinement of commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods." (Report at 36.) Seabrook, 568 F.2d at 1344; see also AmBRIT, Inc. v. Kraft, 812 F.2d 1531, 1536 (11th Cir. 1987), cert. denied, 481 U.S. 1041, 107 S. Ct. 1983, 95 L. Ed. 2d 822 (1987); Wiley v. American Greetings Corp., 762 F.2d 139, 141, 226 U.S.P.Q. (BNA) 101 (1st Cir. 1985); Blue Coral, Inc. v. Turtle Wax, Inc., 664 F.Supp. 1153, 1161, 3 U.S.P.Q.2D (BNA) 1581 (N.D. Ill. 1987) (Aspen, J.). Magistrate-Judge Guzman concluded that the field or class of goods to which plaintiff's product belongs is that of "automotive appearance chemicals." (Id. at 37.)
See Blue Coral, 664 F.Supp. at 1161 (automobile wheel cleaner part of "automotive appearance chemicals" group or class of goods). Within this class, the Magistrate-Judge found that the "basic shape and design of the Liquid Crystal trade dress is common" and that the trade dress "is not unique in its field." (Id. at 38.) Instead, the Magistrate-Judge determined that plaintiff's trade dress is "a combination and refinement of elements already found in abundance in the field of automotive appearance products." (Id.) Accordingly, Magistrate-Judge Guzman concluded that plaintiff's trade dress is not inherently distinctive under the Seabrook analysis and recommended that the Court so find. (Id. at 39.)
Turtle Wax objects to this recommendation, contending that a finding of inherent distinctiveness was required by the Magistrate-Judge's conclusion that the combination of elements in the Liquid Crystal trade dress was distinct to the industry. For example, plaintiff points to the Magistrate-Judge's statement that "although there were at this time no substantially similar packages for 'premium' quality car waxes, it is also true that the elements of the Liquid Crystal packaging, taken separately, were not new." (Report at 6.) Moreover, Magistrate-Judge Guzman found that among the products introduced into evidence by First Brands to establish the functionality and common nature of the individual elements of plaintiff's trade dress, "not one single product possessed all of the elements in combination as contained on the entire Liquid Crystal package and trade dress." (Id. at 7-8; see also id. at 23.)
According to Turtle Wax, the Magistrate-Judge's conclusion that plaintiff's trade dress is common to its field is at odds with the evidence and his own finding that the combination of elements utilized in the Liquid Crystal trade dress was unique and the first of its kind in the industry. Thus, plaintiff contends that the Magistrate-Judge was "100% wrong" in concluding that the Liquid Crystal trade dress is not inherently distinctive under the Seabrook test. (See Plaintiff's Objections at 5.)
Turtle Wax relies upon the Seventh Circuit's decision in Roulo v. Russ Berrie & Co., supra, for the proposition that the distinctiveness of a product's trade dress should be considered as a whole and that it is improper to analyze the distinctiveness of elements of a trade dress individually. In Roulo, the Court of Appeals reviewed a jury's determination that the plaintiff's line of sentimental greeting cards was inherently distinctive. Like First Brands here, the defendant in Roulo emphasized that the plaintiff's greeting cards "incorporated several common features such as stripes, dots, handwriting and other common design elements which are indigenous to all greeting cards and do not represent a trade-dress element capable of protection." 886 F.2d at 936. The plaintiff, on the other hand, presented evidence that no competing line of greeting cards utilized the same combination of elements used in her line. Id. The Seventh Circuit, without addressing either the Seabrook or Chevron tests, found adequate evidence to support the jury's verdict of distinctiveness. Id. In particular, the Court held that
the fact that [the plaintiff's] cards incorporated common, indistinct elements such as lines and handwriting does not refute the fact that Roulo's combination of these elements was sufficiently unique to warrant trade-dress protection. Trade dress encompasses the overall appearance of a product, including its size, color or color combinations, texture, graphics, packaging or other visual features.
Id.; see also Hartford House, Ltd. v. Hallmark Cards, Inc., 846 F.2d 1268, 1271, 6 U.S.P.Q.2D (BNA) 2038 (10th Cir. 1988), cert. denied, 488 U.S. 908, 109 S. Ct. 260, 102 L. Ed. 2d 248 (1988); Spraying Systems Co. v. Delavan, Inc., 762 F.Supp. 772, 782, 19 U.S.P.Q.2D (BNA) 1121 (N.D. Ill. 1991) (Shadur, J.); Accurate Leather & Novelty Co. v. LTD Commodities, Inc., 1990 U.S. Dist. LEXIS 16706, 18 U.S.P.Q.2D (BNA) 1327, 1330 (N.D. Ill. 1990) (Duff, J.) ("The fact that common indistinct elements are combined does not undermine the fact that the combination of these items is distinctive."). Consistent with Roulo and comparable authorities, the Court agrees with Turtle Wax that the Liquid Crystal trade dress must be considered as a whole, rather than simply as the sum of its individual parts. The focus of any trade dress claim must be on the combined effect of all facets of the plaintiff's trade dress. However, that conclusion does not require the Court to reject the recommendation of the Magistrate-Judge. Even considering the Liquid Crystal trade dress as a whole, and in light of the Magistrate-Judge's finding that the combination of elements was unique to its field, the Court still finds that plaintiff's trade dress is not inherently distinctive under the Seabrook test.
In carefully applying the three-part inquiry required by Seabrook, Magistrate-Judge Guzman concluded first that the basic shape and design of the Liquid Crystal trade dress is common. (Report at 38.) That finding is amply supported by the evidence. The Magistrate-Judge found that "the basic shape and design of the trade dress is an F-style can with an overcap and the name of the product prominently displayed in bold lettering in the upper third of the can." (Id. at 37.)
The Magistrate-Judge concluded that such a shape and design have been utilized in the relevant market for years. For example, the Magistrate-Judge described in detail how F-style and round paste cans with overcaps have been used in the automotive appearance chemicals market for a number of years. (Report at 37-38; see also id. at 3-4). Certain products even utilized the same color components as plaintiff's Liquid Crystal. (Id. at 37 n.19.) Moreover, when plaintiff was developing its Liquid Crystal trade dress, there was already at least one high-end automobile polish on the market -- Liquid Glass -- which was packaged in an F-style can, depicted a red automobile on the front, and was designed with the colors black and gold, although the Liquid Glass package utilized a gold background and black lettering. (Report at 5, 7; DX 87.) Despite the fact that Turtle Wax may have created a unique combination of these basic elements in designing its Liquid Crystal trade dress, the above evidence amply supports the Magistrate-Judge's conclusion that the basic shape and design of plaintiff's trade dress were common in the relevant field. See Blue Coral, 664 F.Supp. at 1161-62.
Magistrate-Judge Guzman then considered the second and third Seabrook questions together, concluding that plaintiff's trade dress is not unique to its field, but is merely a "combination and refinement of elements already found in abundance in the field of automotive appearance products with which the consumer is confronted when he/she ventures into a store to shop for an automobile polish." (Report at 38.) That determination also finds support in the evidence detailed above. This Court finds itself in agreement with the Magistrate-Judge's conclusion that Turtle Wax simply has refined the basic elements of a trade dress which has been utilized extensively by other manufacturers in the industry. There is no single component of the Liquid Crystal trade dress that truly is unique to that product. For example, overcaps as well as F-style and round paste cans have been used in the industry for years. Turtle Wax simply refined its overcap by making it a smoked, gray color and by including in the cap a terry cloth applicator. Moreover, seemingly the most important refinement to plaintiff's F-style and paste cans in terms of making them distinctive relate to their color components -- the black background, gold lettering, and red details, and particularly the way in which each is utilized on the package. First, the Magistrate-Judge found that a black background is extremely common in the automotive appearance chemicals market, "as is the use of the color combination of gold, red and white on a black background." (Report at 38.) Turtle Wax has not challenged these findings, and this Court finds them amply supported by the evidence. Moreover, in light of Nutrasweet Co. v. Stadt Corp., 917 F.2d 1024, 16 U.S.P.Q.2D (BNA) 1959 (7th Cir. 1990), cert. denied, 113 L. Ed. 2d 735, U.S. , 111 S. Ct. 1640 (1991), in which the Court of Appeals reaffirmed that color alone cannot provide the basis for trade dress protection, the Court is understandably hesitant to base a finding of inherent distinctiveness solely upon the particular color combination of plaintiff's packaging. As the Magistrate-Judge correctly concluded, Turtle Wax cannot be accorded the exclusive right to use the most fashionable colors extant for achieving the premium look it seeks. (See Report at 34.) This Court, therefore, agrees with Magistrate-Judge Guzman that plaintiff's Liquid Crystal trade dress is merely a combination and refinement of elements already prevalent in the automotive appearance chemicals market.
Given that conclusion, the Court cannot agree with Turtle Wax that a finding of inherent distinctiveness was required simply because no existing product utilized precisely the same combination of elements as plaintiff's Liquid Crystal trade dress. Although he found the individual elements of plaintiff's trade dress to be commonplace in the industry, the Magistrate-Judge did note that no product possessed those same elements in combination. (Report at 6, 8.) According to Turtle Wax, this finding compelled the conclusion that the Liquid Crystal trade dress was new and unique. However, such a rule essentially would extend trade dress protection to every new compilation of elements in a particular field and would run afoul of the Seabrook tenet that a trade dress is not unique and distinctive if it merely refines common forms of ornamentation utilized in a particular field of goods. Presumably, it could be said about the trade dress of any new product that no competitive product combines precisely the same elements in its trade dress. Essentially, that is all the Magistrate-Judge found in this case. However, that fact alone does not make the product's trade dress inherently distinctive. Any other rule essentially would require a finding of inherent distinctiveness whenever a new product enters the market. See Blue Coral, 664 F.Supp. at 1163.
Moreover, this finding is not inconsistent with the Seventh Circuit's decision in Roulo. In affirming a jury finding of distinctiveness in that case, the Court of Appeals emphasized that a trade dress must be considered as a whole and that the simple fact that the trade dress incorporated common, indistinct elements did not negate a finding of distinctiveness. 886 F.2d at 936. The greeting cards at issue in Roulo, however, were far different from plaintiff's products in the instant case. Roulo involved sentimental greeting cards which the jury determined were copied by defendant subsequent to the termination of an agreement under which the defendant had sold the plaintiff's greeting cards. Id. at 934. Although the plaintiff's greeting cards included such common elements as stripes, dots, lines, and handwriting, the Court of Appeals concluded that the plaintiff's combination of these elements created an overall look which was distinctive and protectable. Id. at 936. In short, in comparison to the greeting cards already on the market, the Court of Appeals found the overall look of the plaintiff's cards distinctive and not simply a refinement of existing cards. This Court has made a contrary finding in the instant case. The Court does not interpret the Seventh Circuit's decision in Roulo to mean that any seemingly unique combination of common elements is sufficient to create a protectable trade dress, particularly where the basic shape and design of the product is merely a refinement of existing forms of ornamentation. Thus, this Court cannot agree that the Seventh Circuit's decision in Roulo requires a finding of inherent distinctiveness in this case. Although plaintiff's trade dress may be different in degree from that of other automotive appearance products that had been on the market, it is not different in kind. Blue Coral, 664 F.Supp. at 1163. Under the Seabrook test, therefore, it is not entitled to trade dress protection.
The second test of inherent distinctiveness analyzed by the Magistrate-Judge was that set forth by the Fifth Circuit in Chevron Chemical Co. v. Voluntary Purchasing Groups, 659 F.2d 695, 702, 212 U.S.P.Q. (BNA) 904 (5th Cir. 1981), cert. denied, 457 U.S. 1126, 102 S. Ct. 2947, 73 L. Ed. 2d 1342 (1982).
In that case, the Fifth Circuit applied principles of trademark law to a claim of trade dress infringement. In so doing, the Fifth Circuit concluded that a trade dress may be protected even where a plaintiff is unable to establish secondary meaning if "the features of the trade dress sought to be protected are arbitrary and serve no function either to describe the product or assist in its effective packaging." Chevron, 659 F.2d at 702; see also Blue Coral, 664 F.Supp. at 1160. In applying this test to the instant case, the Magistrate-Judge concluded that the Liquid Crystal trade dress is not distinctive because the trade dress as a whole, as well as each of its individual components, "was carefully and intentionally chosen for its function in describing this product as a premium and expensive car polish." (Report at 31-32.) Similarly, the Magistrate-Judge also found that plaintiff's trade dress serves to assist in the effective packaging of the product. (Id. at 34.) Accordingly, because he found that "so many of the elements of the trade dress are nonarbitrary and functional," the Magistrate-Judge recommended a finding that the trade dress was not inherently distinctive under Chevron. (Id. at 35.)
First, Turtle Wax contends that the Magistrate-Judge erred when he focused on plaintiff's trade dress as descriptive of a high-end, premium car polish. According to Turtle Wax, a trade dress only serves a function in describing a product "where it describes some tangible aspect of the product or its characteristics." (Plaintiff's Objections at 6.) The Liquid Crystal trade dress purportedly did neither; instead, it only served to create for the product a premium image or appearance. (Id. at 7.) According to plaintiff, "the mere fact that the Liquid Crystal trade dress served to convey a 'meaning' or 'image' (which probably every trade dress is intended to do) does not make it [a] 'function to describe the product', and thus not distinctive." (Id.) The Court is unpersuaded by plaintiff's position.
An element of a product's trade dress is merely descriptive of the product, and accordingly not arbitrary, where "it specifically describes a characteristic or an ingredient" of the product. A.J. Canfield Co. v. Vess Beverages, Inc., 796 F.2d 903, 906-07, 230 U.S.P.Q. (BNA) 441 (7th Cir. 1986); Blue Coral, 664 F.Supp. at 1160 n.10. A trade dress utilized to convey a particular image - -here, the image of the high-end, premium nature of plaintiff's automobile polish -- clearly is descriptive of a characteristic of the product. Magistrate-Judge Guzman exhaustively detailed the evidence to the effect that plaintiff's trade dress was chosen to advance the image of a premium and expensive car polish. (Report at 31-34.) It is nonsensical for plaintiff then to suggest that its trade dress is arbitrary and devoid of any meaning. The Court agrees with Magistrate-Judge Guzman that elements of a trade dress which are chosen to convey the image of an upscale, premium product are descriptive and nonarbitrary. See Blue Coral, 664 F.Supp. at 1160 (trade dress designed to promote "high tech look" of a product is descriptive and nonarbitrary).
Having concluded that Turtle Wax failed to establish the inherent distinctiveness of its Liquid Crystal trade dress, the Magistrate-Judge proceeded to consider whether that trade dress had acquired secondary meaning. The term "secondary meaning," as stated by Magistrate-Judge Guzman, "denotes an association in the mind of the consumer between the trade dress of a product and a particular producer." (Report at 39 n.22 (citing A.J. Canfield, 796 F.2d at 907).) See also Blue Coral, 664 F.Supp. at 1163. As this Court explained in Eldon, the determination of whether a "trade dress has acquired a secondary meaning is a question of fact." 735 F.Supp. at 795; see also Vaughan Manufacturing, 814 F.2d at 349. As noted by the Magistrate-Judge, the following factors are to be considered in determining whether a trade dress has acquired secondary meaning: "(a) consumer testimony; (b) consumer surveys; (c) exclusivity, length, and manner of use; (d) amount and manner of advertising; (e) amount of sales and number of customers; (f) established place in the market; and (g) proof of intentional copying." (See Report at 39 (citing Echo Travel, Inc. v. Travel Associates, Inc., 870 F.2d 1264, 1267, 10 U.S.P.Q.2D (BNA) 1368 (7th Cir. 1989).)
Magistrate-Judge Guzman concluded that Turtle Wax had presented no direct evidence of secondary meaning. (Report at 39.) In fact, the Magistrate-Judge found that the only factor weighing in plaintiff's favor was the "very strong" proof that defendant had intentionally copied the Liquid Crystal trade dress. Aside from intentional copying, the Magistrate-Judge concluded that "there is no other evidence which even remotely suggests the existence of secondary meaning and there is . . . much evidence to the contrary." (Id. at 42.) In particular, the Magistrate-Judge noted the relatively short period of time in which the Liquid Crystal trade dress has been utilized by plaintiff. The exact trade dress has been utilized by plaintiff. The exact trade dress which Turtle Wax seeks to protect here has only been in existence since August 1989 and was only introduced to the consuming public in April 1990. (Id. at 40.) In addition, the Magistrate-Judge emphasized that plaintiff had only conducted a limited amount of advertising and that none of that advertising focused specifically upon the product's trade dress. (Id.) He also found that no direct evidence of consumer confusion had been presented because Turtle Wax had not requested that its expert conduct a consumer survey. (Id.) Finally, the Magistrate-Judge also emphasized that Turtle Wax does not sell Liquid Crystal under its own name, but utilizes an entirely new name, Plastone Co., which is virtually unknown to the consuming public. Magistrate-Judge Guzman noted that although a plaintiff need not show that consumers are aware of the ultimate producer of a product, secondary meaning is more easily shown if consumers are aware that a product is produced and sold by a well-known company such as Turtle Wax. (Id.) Therefore, based upon his analysis of the relevant factors, the Magistrate-Judge concluded that "the evidence does not reach that level necessary to establish even a more than negligible likelihood of success in establishing secondary meaning." (Id. at 42.)
Plaintiff raises a number of objections to the Magistrate-Judge's analysis. First, Turtle Wax suggests that the Magistrate-Judge accorded too little weight to the evidence of intentional copying. The Magistrate-Judge stated that he had no doubt that First Brands "intentionally copied and emulated many of the design components, e.g., color combination and graphics of the Turtle Wax product."
However, he also correctly held that, in this circuit, proof of intentional copying alone is insufficient to establish secondary meaning. (Id. at 41-42.) As this Court explained in Eldon, although evidence of intentional copying is probative of the issue of secondary meaning, it does not create a presumption that secondary meaning exists. 735 F.Supp. at 796; see also Vaughan, 814 F.2d at 349; Keystone Camera, 667 F.Supp. at 1231.
Instead, plaintiff was required to present other evidence in addition to that of intentional copying which would tend to show that the Liquid Crystal trade dress had acquired secondary meaning. The Magistrate-Judge found that Turtle Wax had failed to do so, and therefore, he properly concluded that no secondary meaning had been shown. Accordingly, the question before this Court on its review of the Magistrate-Judge's recommendation is whether any of plaintiff's evidence in addition to that of intentional copying was sufficient to establish secondary meaning.
Turtle Wax submits that secondary meaning was shown by evidence of its advertising and promotional activities and the "unparalleled commercial success" of the Liquid Crystal product. (Plaintiff's Objections at 14.) The Court agrees that such evidence may be relevant to the question of whether a trade dress has acquired secondary meaning. See First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383, 1 U.S.P.Q.2D (BNA) 1779 (9th Cir. 1987). However, the Court also agrees with the Magistrate-Judge's analysis that such evidence is entitled to lesser weight where the product has been on the market for such a relatively short period of time and the advertising and promotional activities at issue emphasize only the product itself, rather than the trade dress plaintiff seeks to protect. See Keystone Camera, 667 F.Supp. at 1231. Even where a party has engaged in extensive advertising and promotional efforts, those efforts do not necessarily indicate that consumers would associate plaintiff's trade dress with a particular source if the advertising does not itself emphasize the trade dress. See First Brands, 809 F.2d at 1383. Thus, the Court is unpersuaded by plaintiff's suggestion that it can establish secondary meaning simply by means of an advertising and promotional campaign which only displays but does not emphasize the trade dress of its product. If that were true, the trade dress of virtually every advertised product would acquire secondary meaning.
The Magistrate-Judge appropriately considered the extent and nature of plaintiff's advertising and promotional efforts in considering whether the Liquid Crystal trade dress had acquired secondary meaning.
Finally, Turtle Wax attacks the Magistrate-Judge's reliance on the relatively short life of the Liquid Crystal trade dress as a factor negating secondary meaning. According to Turtle Wax, there is no requirement that a trade dress be used for a particular length of time before it can acquire secondary meaning. (Plaintiff's Objections at 16.) Generally, the Court is in agreement with that proposition. See Echo Travel, 870 F.2d at 1269 (no particular period of use is required to establish secondary meaning). However, Turtle Wax simply is wrong if it intends to suggest that Magistrate-Judge Guzman drew a definitive and arbitrary line and then determined that plaintiff had utilized its trade dress for an insufficient period of time to cross that line. To the contrary, the Magistrate-Judge simply noted that plaintiff's trade dress was only introduced to consumers in April 1990 and that in conjunction with all of the other relevant factors, this was a relatively short period of time in which to acquire secondary meaning. (Report at 40.) That finding is in accord with the Seventh Circuit's instruction in Echo Travel that although a relatively short period of use does not preclude a demonstration of secondary meaning, it clearly does not weigh in plaintiff's favor. 870 F.2d at 1264; see also Laureyssens v. Idea Group, Inc., 768 F.Supp. 1036, 1048, 20 U.S.P.Q.2D (BNA) 1821 (S.D.N.Y. 1991); Keystone Camera, 667 F.Supp. at 1231.
The Court concludes that the Magistrate-Judge appropriately considered the short life of the Liquid Crystal trade dress in rejecting plaintiff's claim of secondary meaning.
The Court, having considered and rejected each of plaintiff's objections to the Magistrate-Judge's recommendation regarding secondary meaning, hereby adopts that recommendation.
C. Likelihood of Confusion.
Having concluded that Turtle Wax failed to establish a protectable trade dress either by showing inherent distinctiveness or secondary meaning, the Magistrate-Judge noted that he need not consider whether there was a likelihood of consumer confusion. For the sake of completeness, however, Magistrate-Judge Guzman considered that issue and determined that no such likelihood existed here. (Report at 44-47.) Because Turtle Wax also has objected to this recommendation, the Court will address the issue in order to complete its analysis.
the similarity of the trade dresses, the products to which the trade dresses are attached, the area and manner of concurrent use, the degree of care likely to be exercised by consumers, the strength of the plaintiff's trade dress, and the actual confusion and intent on the part of the alleged infringer to pass off the infringer's goods as those of the plaintiff.
886 F.2d at 937; see also Schwinn, 870 F.2d at 1185. The Court of Appeals has stated that "'none of these factors by itself is dispositive of the likelihood of confusion question, and different factors will weigh more heavily from case to case depending on the particular facts and circumstances involved.'" International Kennel Club v. Mighty Star, Inc., 846 F.2d 1079, 1087, 6 U.S.P.Q.2D (BNA) 1977 (7th Cir. 1988) (quoting Marathon Manufacturing Co. v. Enerlite Products Corp., 767 F.2d 214, 218, 226 U.S.P.Q. (BNA) 836 (5th Cir. 1985)).
In analyzing the relevant factors, Magistrate-Judge Guzman found the similarity of the two trade dresses "undisputed." (Report at 44.) In fact, after listing their similarities, he noted that "this is a significant list of common elements for two products which . . . are meant to compete head-to-head in a somewhat crowded marketplace." (Id.) Despite the basic similarities, however, the Magistrate-Judge also noted a number of important differences. First, the Magistrate-Judge found it significant that defendant's product prominently displays the company name "Simoniz" across the top in white lettering. No comparable depiction appears on the Liquid Crystal trade dress. (Id.) The Magistrate-Judge thought this distinction particularly significant because of the prominence of the name "Simonize" in the automotive appearance chemicals market. (Id. at 45.) According to the Magistrate-Judge, it is unlikely that consumers will be confused by the products when one displays the well-known name "Simonize" so prominently. (Id.) Magistrate-Judge Guzman also emphasized that defendant's trade dress reveals that it is a "car wax," as opposed to a polish. This is a significant difference to users of premium automotive appearance products, who, the Magistrate-Judge found, are attentive consumers who are likely to read labels carefully. (Id.) Thus, despite the fact that the Magistrate-Judge found the trade dresses to be similar, he also found that there were significant distinguishing factors which would minimize the likelihood of any consumer confusion. (Id. at 46-47.)
Beyond the similarity factor, the Magistrate-Judge did not consider each digit of confusion in isolation in conducting his likelihood of confusion analysis.
Based upon its review of Magistrate-Judge Guzman's findings, as well as its own review of the relevant factors, however, the Court concludes that the clear weight of those factors supports the conclusion of the Magistrate-Judge. The fact that the trade dresses are similar favors Turtle Wax, as does the similarity of the areas and stores in which the products are sold. However, the Court agrees with the Magistrate-Judge that the difference in the products themselves -- that is, between a car wax and a car polish -- is significant to a consumer purchasing a premium automotive appearance product. (See Report at 45.) Moreover, the Magistrate-Judge found that the consumers of such products ("car buffs" as he called them) exercise a high degree of care in purchasing automotive appearance products and that they are not likely to be confused by the similarities in the trade dresses. (Id.)
Moreover, the Magistrate-Judge concluded, and this Court reached the same conclusion above, that Turtle Wax has not established a protectable trade dress. Thus, "the strength of the plaintiff's trade dress" is a significant factor which clearly favors First Brands. As to evidence of actual confusion, Turtle Wax showed none. Instead, its expert only testified that there was a potential for such confusion. As a result, that factor also does not weigh in plaintiff's favor. Finally, although the Magistrate-Judge found strong evidence of intentional copying, he did not find that First Brands intended to pass off its product as that of the plaintiff.
Instead, the Magistrate-Judge focused on the substantial price differential between the products,
concluding that this price difference evidenced an intent to differentiate the products, rather than to confuse them. (Report at 46.) Considering these findings as a whole, the Court agrees with the Magistrate-Judge that no likelihood of confusion has been shown. See Schwinn, 870 F.2d at 1187.
Plaintiff's objections to the Magistrate-Judge's recommendation simply highlight those factors which would favor its position, essentially ignoring the factors which would favor defendant. The Magistrate-Judge considered the totality of the circumstances in concluding that Turtle Wax had failed to show that defendant's trade dress was likely to create confusion in the mind of the typical consumer of a premium, automotive appearance product. (Report at 46-47.) The Court agrees with the Magistrate-Judge's conclusion and adopts his reasoning.
Because the Court agrees that plaintiff's Liquid Crystal trade dress is not inherently distinctive, that it has not acquired secondary meaning, and that it is unlikely that the typical consumer would be confused as to the origin of defendant's product, the Court also agrees with the Magistrate-Judge that plaintiff has a less than negligible likelihood that it will succeed on the merits of its claims.
Given that conclusion, the Court does not reach the other elements required for the issuance of preliminary injunctive relief. See Ping v. National Education Association, 870 F.2d 1369 (7th Cir. 1989).
ILANA DIAMOND ROVNER, UNITED STATES DISTRICT JUDGE
TO: HONORABLE ILANA D. ROVNER, JUDGE UNITED STATES DISTRICT COURT
REPORT AND RECOMMENDATION of Magistrate Judge ...