done so in the last ten years. (Tr. 175-176) When shown Armor All's protectant and Turtle Wax's protectant (DXs 13, 14) products for comparison, he stated that he considered the trade dress similar and that there existed a potential for likelihood of confusion in these products as well. However, in order to determine whether there would be a likelihood of confusion, he said, he would need to conduct a survey. (Tr. 180)
Turtle Wax contends that First Brands' improperly appropriated its Liquid Crystal trade dress under section 43(a) of the Lanham Act, 15 U.S.C. 1125(a) (1982); Ill. Rev. Stat. Ch. 121 1/2, para. 312 (Illinois Deceptive Trade Practice Act) and para. 261 et seq. (Consumer Fraud and Deceptive Business Practices Act), and Illinois common law of unfair competition and trademark infringement. Therefore, Turtle Wax seeks a preliminary injunction to prohibit First Brands from using its current trade dress for its Simoniz Ultimate Car Wax.
The purpose of a preliminary injunction 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) To support the issuance of a preliminary injunction Turtle Wax must demonstrate the following: (1) A reasonable likelihood of success on the merits; (2) the inadequacy of a remedy at law; (3) the existence of irreparable harm without the injunction; (4) that the threat of harm to the plaintiff outweighs any harm to the defendant if the injunction were issued; (5) that the public interest would not be disserved if the litigation were granted. Somerset House, Inc. v. Turnock, 900 F.2d 1012, 1014-15 (7th Cir. 1990) Though "the plaintiff must satisfy each of these elements to prevail," Id., at 1015, his threshold burden is to show the first three factors. Ping v. Nat'l Edu. Ass'n, 870 F.2d 1369, 1371 (7th Cir. 1989). "Only once this burden is met does the inquiry become a 'sliding scale' analysis of the harm to the parties and the public from the grant or denial of the injunction, and the actual likelihood of success on the merits". Id.
LIKELIHOOD OF SUCCESS ON THE MERITS
If a seller adopts a trade dress confusingly similar to a competitor's protected trade dress, this is considered unfair competition and is actionable under section 43(a) of the Lanham Act. Blau Plumbing, Inc. v. Brikam International, 814 F.2d 346, 348, 1 U.S.P.Q.2D (BNA) 2067 (7th Cir. 1987) However, before a manufacturer can sue for trade dress infringement, its trade dress must be protectable. Therefore, for Turtle Wax to be successful on the merits of its injunction case, it must establish that it's trade dress is protectable. To do this Turtle Wax must establish (1) that its Liquid Crystal trade dress is "inherently distinctive" or has acquired a "secondary meaning" to consumers, Vaughan Manufacturing Co. v. Brikam International, 814 F.2d 346, 348, 1 U.S.P.Q.2D (BNA) 2067 (7th Cir. 1987); Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 608, 228 U.S.P.Q. (BNA) 519 (7th Cir. 1986); and (2) that the First Brands Simoniz Ultimate Car Wax trade dress creates a likelihood of confusion on the part of consumers as to the source of that product. Blue Coral, Inc. v. Turtle Wax, Inc., 664 F.Supp. 1153, 1160, 3 U.S.P.Q.2D (BNA) 1581 (N.D. IL, 1987).
A. LIQUID CRYSTAL'S INHERENTLY DISTINCTIVENESS
Two different tests have generally been adopted in analyzing the issue of inherent distinctiveness. The first test is the Chevron Test as set out in Chevron Chemical Co. v. Voluntary Purchasing Groups, 659 F.2d 695, 212 U.S.P.Q. (BNA) 904, (5th Cir. 1981). The second test is the Seabrook Test from Seabrook Foods Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344, 196 U.S.P.Q. (BNA) 289 (C.C.P.A. 1977). Each of the two tests have been applied to the facts in the case at bar. My conclusions with respect to the application of these two tests are as follows:
The Chevron Test
The principal rule of protectability of inherently distinctive trade dresses in the absence of secondary meaning was established in Chevron Chemical Co. v. Voluntary Purchasing Groups, 659 F.2d 695, 702, 212 U.S.P.Q. (BNA) 904 (5th Cir. 1981), (cited with approval by the Seventh Circuit in Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 608, 228 U.S.P.Q. (BNA) 519 (7th Cir. 1986). In Chevron, the plaintiff was unable to prove secondary meaning for a particular trade dress despite the fact that the product had been on the market in the dress trade for over five years. The court there held that the trade dress of Chevron's product was a common law trademark, and found that the colors of the trade dress presented in Chevron's particular geometric pattern created a distinctive visual impression. Id. at 703. The court then concluded that a trade dress which was "arbitrary and served no function either to describe the product or assist in its effective packaging," Id. at 702, would be protectable even in the absence of a finding of secondary meaning.
Under this holding then, the elements which must be established are: 1) that the trade dress is "arbitrary," and 2) that the trade dress serves no function to either describe the product, or assist in its effective packaging. Applying these legal principles to the facts I find that the Liquid Crystal trade dress is not inherently distinctive within the meaning of the law as delineated in the Chevron case. The testimony, as spelled out in the factual findings above, is overwhelming that the trade dress of Liquid Crystal overall, and element by element, is meant to be functional either in describing the product or in effectively packaging it. A term or feature is descriptive if it specifically describes a characteristic or an ingredient of a product. A.J. Canfield Co. v. Vess Beverages, 796 F.2d 903, 906-07, 230 U.S.P.Q. (BNA) 441 (7th Cir. 1986). The finding that the Liquid Crystal can, color combination, gold chimes and smoked black overcap are descriptive and not arbitrary is based upon the representation that Liquid Crystal is, and is being sold as, a premium priced, high quality polish. Indeed much of the testimony given on behalf of the plaintiff in this case was to establish that their product is unique in that it is the very first entry into the premium polish market by a major company in the automotive appearance industry. That being the case, those aspects of the trade dress which tend to establish high quality and premium price are functional in that they serve to describe the product.
From the testimony of the Turtle Wax officers and employees themselves, I find that almost each and every element of the Liquid Crystal trade dress was carefully and intentionally chosen for its function in describing this product as a premium and expensive car polish. Turtle Wax could, for example, have chosen to market its polish as a high tech formula, as opposed to emphasizing its "premium" quality. If that were the case, the trade dress could be seen as purely arbitrary since there is nothing in the colors or symbols or even the type of can used (an arguably old fashioned, solid metal can) which would denote the high tech character of the product. Such was not the case here. Turtle Wax's own testimony was that this style packaging was sought because it conveyed an image of an expensive, upscale or premium product. The weight of the can and the substantial material (metal as opposed to something lighter or flimsier) were thought by Turtle Wax officers and planners to convey this image to the consumer and therefore be of value in selling the product. This is not an arbitrary symbol devoid of any meaning. The depiction of an automobile on the front of the Liquid Crystal can is also, of course, descriptive of the function of the product. Even in this, Turtle Wax sought to convey its "premium product" meaning when it decided to change the automobile on the label from a red Camaro to a gold-colored Porsche on the U.S. package. This was intended to give Liquid Crystal a more upscale, high quality image which corresponded better with its positioning in the market.
The problem from Turtle Wax's point of view, however, is that it can not claim the premium automobile polish market as its own. Its competitors have a perfect right to position their products in this manner as well, and to the extent that plaintiff's trade dress is descriptive of this particular quality of its product, the competition is entitled utilize these same elements of color and style to describe the premium nature of their products as well. One particular portion of the voluminous testimony sticks out in this respect. The deposition of Alberta Antweiler, plaintiff's marketing manager on new automotive products, has the following testimony by Ms. Antweiler:
"Q Which leads to my next question: How and when did you decide on the color scheme and the graphics of the Liquid Crystal product?
A I had just come back from a trip to Europe that spring, and black, gold and red were the real hot colors in fashion and home decorating. And at the same time I was redoing my house, and I have redone my house in those colors also. And I thought those would be appropriate and almost necessary to use for a new product introduction of this kind. . . those were the hot colors, and they communicated a very high-end look which was what I was trying to achieve with this product." (Tr. 196-197).