Tootsie Roll Industries, Inc., 666 F. Supp. at 660. Because both Storck's and Farley's butter toffee candy products are likely to be sold in close physical proximity to each other in a retail store, it is likely that an appreciable number of customers will be misled, causing irreparable harm to Storck. Any loss of good will by Storck by its inability to control the quality of Farley's candy is difficult if not impossible to quantify in monetary terms. See id. Thus, the court concludes that Storck does not have an adequate remedy at law and that Storck will suffer irreparable harm if the injunction is not granted.
III. SLIDING SCALE
A. BALANCE OF THE HARMS TO THE PARTIES AND THE PUBLIC
According to Storck, the preliminary injunction will not cause Farley any undue hardship because Farley has not yet begun shipping its product to retail stores or marketing it to the public. Meanwhile, Storck has expended millions of dollars promoting its packages and trademarks in order to become the leader in its product category. In the past three years alone, Storck has expended $ 17,000,000 promoting and advertising their Werther's Original candy. (Harshman Declaration, para. 8.) Storck's sales of the candy in the past three years has been in excess of $ 100,000,000. (Id., para. 9.)
Farley has argued that it would suffer substantial hardship if the preliminary injunction were to issue because Farley has orders for its butter toffee candy that are scheduled and ready to be shipped immediately. Farley claims that its good will would suffer if it fails to fulfill these orders. Farley will lose the funds that it expended creating and manufacturing the infringing packaging and will incur costs to destroy the infringing packaging and to create new noninfringing packaging for its butter toffee.
The irreparable harms to Storck resulting from the denial of the preliminary injunction are far greater than the harms to be suffered by Farley from granting the preliminary injunction. Furthermore, the public interest in avoiding marketplace confusion, in protecting product good will, and in fostering open and fair competition will be served by granting the preliminary injunction.
B. ACTUAL LIKELIHOOD OF SUCCESS ON THE MERITS
For the reasons set forth in Part I above, the court believes that the actual likelihood of success on the merits is substantial.
The more likely the plaintiff is to succeed on the merits, the less heavily the balance of harms needs to weigh in the plaintiff's favor in order to obtain injunctive relief. Thornton, 890 F.2d at 1384. The court believes that the balance of the harms clearly weighs in favor of granting Storck's motion for a preliminary injunction. Given Storck's substantial likelihood of success on the merits, and upon weighing the harms to the parties and the public, the court firmly believes a preliminary injunction must issue.
After careful consideration of the facts in light of the factors relevant to the issuance of a preliminary injunction, the court concludes that Storck is entitled to a preliminary injunction. The court, however, is mindful that preliminary injunctive relief should be limited to what is necessary in order to redress defendant's specific wrongful conduct. See Mantek Division of NCH Corp. v. Share Corp., 780 F.2d 702, 711 (7th Cir. 1986).
Specifically, defendant Farley is preliminarily enjoined from using any trade dress on any Farley candy package which is in any way similar to the pouring pitchers image in the Village Design used by Storck as trade dress for its Werther's Original butter toffee candy.
JAMES F. HOLDERMAN
United States District Judge
DATED: January 31, 1992