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STORCK USA, L.P. v. FARLEY CANDY CO.

January 31, 1992

STORCK USA, L.P. and AUUST STORCK K.G., Plaintiffs,
v.
FARLEY CANDY COMPANY, INC., Defendant.


HOLDERMAN


The opinion of the court was delivered by: JAMES F. HOLDERMAN

MEMORANDUM OPINION AND ORDER

JAMES F. HOLDERMAN, District Judge:

 FACTS

 Since 1980, Storck has continuously distributed Werther's Original packaged hard butter toffee candy. From 1980 to 1988, the 8-ounce bag in which Werther's Original butter toffee candy was sold had a brown background, a picture of a mound of unwrapped candy on the front and back panels, and a design of an Alpine village and an old-fashioned container pouring a white liquid. (Harshman Declaration, Ex. 1.)

 In May 1988, Storck revised its Werther's Original package by using a 7-ounce bag, changing the background color of the bag to blond, and by revising and expanding the village design. The village design was changed from a picture of a single container pouring white liquid to a picture of two pitchers pouring white liquid into a merged stream. The Village Design *fn1" prominently shows in the foreground two brown and orange pitchers pouring their white liquid contents into a merged stream. In the background of the Village Design is a "pastoral" image of a blue sky, green grass, flowers, a mountain range, and an Alpine village. The entire design is roughly oval in shape and is positioned in the left center portion of the front panel. The lower third of the front panel is a picture of a mound of the unwrapped butter toffee candy. The mound of candy extends around to the back panel where it is interrupted by a clear window which reveals the candy pieces inside the package individually wrapped in gold-colored foil. (See PI. Ex. 1.)

 Defendant Farley's package for its butter toffee candy is a bag in the same size (7 ounces) and in the same shape (rectangular) as the bag for Storck's Werther's Original butter toffee candy. (Pl. Ex. 2.) A design on the left center portion of the front panel of Farley's butter toffee package depicts a pair of containers, one orange and one brown, pouring their creamy liquid contents into a merged stream onto a mound of unwrapped candy positioned on the lower left portion of the front panel. The pouring containers are set against a green and blue background. The design is oval in shape. The background of Farley's bag is light yellow. A clear window in the lower right-hand corner of the front panel of the package displays the candy inside the bag individually wrapped with gold-colored foil. *fn2" (See Pl. Ex. 2.)

 DISCUSSION

 Before a preliminary injunction will issue, the movant must show, as a threshold matter, that: (1) they have no adequate remedy at law; (2) they will suffer irreparable harm if the injunction is not granted; and (3) they have some likelihood of success on the merits in the sense that their chances are better than negligible. Thornton v. Barnes, 890 F.2d 1380, 1384 (7th Cir. 1989) (emphasis in original). If the movant can meet this threshold burden, the inquiry then becomes 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. In particular, and keeping in mind that the public interest may become important in a given case, the more likely the plaintiff is to win, the less heavily need the balance of harms weigh in his favor in order to get the injunction; the less likely he is to win, the more need it weigh in his favor. Id. See National People's Action v. Village of Wilmette, 914 F.2d 1008, 1010-11 (7th Cir. 1990).

 Storck has brought its allegations under several legal theories. Because the court finds that Storck has established some likelihood of success on the merits with respect to its Lanham Act claim, and is entitled to a preliminary injunction on that basis alone, the court need not and does not address in this opinion Storck's likelihood of success on its other claims.

 "Trade dress" refers to the total image of a product, including features such as size, shape, color or color combinations, texture, graphics, or other visual features. Roulo v. Russ Berrie & Co., 886 F.2d 931, 935-36 (7th Cir. 1989). An infringement of trade dress is proven if: (1) the plaintiff's trade dress is inherently distinctive or has acquired secondary meaning, (2) the plaintiff's trade dress is primarily non-functional, and (3) the defendant's trade dress is confusingly similar, engendering a likelihood of confusion in the marketplace. Id.

 The court is persuaded that Storck is likely to succeed in establishing that the Village Design, including the pouring pitchers scene, is distinctive and arbitrary. It is undisputed that the background Alpine scene is arbitrary. (Def. Mem. in Opp., p. 7.) While the image of cream may be considered descriptive of an ingredient in the candy, see A.J. Canfield Co. v. Vess Beverages, Inc., 796 F.2d 903, 906-07 (7th Cir. 1986) (indication of ingredients is merely descriptive), the embellished image of the cream pouring out of two old-fashioned pitchers into a merged stream serves no descriptive or otherwise functional purpose.

 Farley attempts to undermine the claims of distinctiveness of the pouring pitchers image within Storck's Village Design by providing several examples of other food products which display a liquid, usually milk or cream, being poured from a container. (Def. Ex. 7-10.) All the examples provided are obviously distinguishable from the scenes displayed on the packages of Storck's and Farley's butter toffee candy. One of the products shows an upright wooden bucket of milk. (Def. Ex. 9.) There is no image of pouring on this package whatsoever. The other packages introduced by Farley show only one container pouring a liquid, and not two containers pouring liquid into a common stream. (Def. Ex. 7, 8, 10.) ...


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