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

July 2, 1992

STORCK USA, L.P., and AUGUST STORCK K.G., Plaintiff,
v.
FARLEY CANDY COMPANY, INC., Defendant.


HOLDERMAN


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

JAMES F. HOLDERMAN, District Judge:

 Plaintiffs Storck USA, L.P. and August Storck K.G. ("Storck") have moved for a second preliminary injunction enjoining Farley Candy Co. ("Farley") from using any trade dress which is confusingly similar to the trade dress of the package and individual-piece wrapper of Storck's Werther's Original butter candy.

 FACTS

 Since 1980, Storck has continuously distributed Werther's Original packaged hard butter candy. From 1980 to 1988, the 8-ounce bag of Werther's Original had a dark brown background, a picture of a mound of unwrapped candy on the front and back panels, and a design in the lower right corner of the front panel of a village and an old-fashioned container pouring a white liquid. (Supp. Complaint, P6; Supp. Harshman Decl., Ex. A.)

 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 enlarging, relocating and modifying the village design by, inter alia, placing in the foreground two brown pitchers pouring white liquid into a merged stream. The village design is roughly oval in shape and has a bright blue sky behind a village scene of white, red and brown colored buildings. The village design is positioned in the left center portion of the front panel of the Werther's Original package. A picture of a mound of the unwrapped butter candy covers most of the lower third of the front panel. 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. (Supp. Complaint, P4; Pl. Ex. 1.) See Figure 1.

 Figure 1

 Storck's Werther's Original 7-ounce bag

 (front view)

 Defendant Farley presently markets its butter toffee candy in a bag (Pl. Ex. 275) which contains the same amount of candy by weight (7 ounces) and has the same shape (rectangular) as the bag used by Storck for its Werther's Original candy. The background color of Farley's bag is a muted yellow. A clear window in the lower right corner of the front panel displays the candy inside the bag, each piece of which is individually wrapped with gold-colored foil. A mound of unwrapped candy appears in the lower left portion of the front panel. Farley's package has an oval design located in the left center portion of the front panel. The Farley oval design is approximately the same size as the Werther's Original village design. The Farley oval design depicts a brown milk can and a lighter brown long-handled butter churn against a blue background. (Pl. Ex. 275.)

 Prior to this court's preliminary injunction of January 31, 1992, the oval design on the Farley's Butter Toffee bag, in addition to the elements described above, depicted a pair of containers, set against a green and blue background, pouring their white and off-white liquid contents into a merged stream onto the mound of unwrapped candy positioned in the lower left portion of the front panel. (Pl. Ex. 2.) See Figure 2.

 Figure 2

 Farley's Butter Toffee 7-ounce bag

 prior to January 31, 1992 Order

 (front view)

 After the court's January 31, 1992 preliminary injunction order, Farley altered its oval design by eliminating the pouring pitchers and the merged stream of creamy liquid. Farley also changed the background color of its oval design from green and blue to a solid bright blue color that is almost identical to the Werther's Original blue sky color of its village design. All other aspects of the Farley Butter Toffee bag remained the same after this court's January 31, 1992 Order. This modified bag is the trade dress of the Farley Butter Toffee candy at issue here. (Pl. Ex. 275.) See Figure 3.

 Figure 3

 Farley's Butter Toffee 7-ounce bag

 after January 31, 1992 Order

 (front view)

 Within the Storck's Werther's Original and Farley's Butter Toffee packages are individually wrapped pieces of candy. The Werther's Original wrapper, which has been used by Storck since 1980, is primarily a gold-colored foil with white printing *fn1" of a pitcher and flowers and the words "Werther's Original" and "Werther's Echte." *fn2" The twisted portions of the wrapper at either side of the gold foil portion are made of clear yellow plastic. (Pl. Mem. in Support, Ex. PX 17.) The wrapper used by Farley for individual pieces of its butter toffee is also a gold-colored foil with white printing *fn3" of the words "Farley's Butter Toffee." The twisted portions of the wrapper are the same gold-colored foil. Adding to the similarity between the Storck and Farley wrappers is the almost identical size and shape of the candy pieces which they encase. (Id.)

 This court's January 31, 1992 preliminary injunction order enjoined Farley from using any trade dress on its butter toffee candy package which is in any way similar to the pouring pitchers image in the oval village design used by Storck as trade dress for its Werther's Original candy. Following that order, Farley modified its butter toffee candy package by deleting the pouring pitchers and changing the background color in the oval design. On March 4, 1992, Storck filed a supplemental complaint asserting that Farley's modified package and individual candy wrapper infringe Storck's trade dress and trademark rights under the Lanham Act, 15 U.S.C. § 1051 et seq., and that the modified package violates the Copyright Act, 17 U.S.C. § 101 et seq. Storck claims in its supplemented complaint that the changes made by Farley to the oval design on its butter toffee package are not sufficient to eliminate the likelihood of confusion created by the Farley's Butter Toffee trade dress. On this second motion for a preliminary injunction, Storck seeks to enjoin Farley from using any trade dress which is confusingly similar to its Werther's Original package and individual piece wrapper.

 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; and less likely he is to win, the more need the balance of harms weigh in its favor to be awarded preliminary injunctive relief. Id. See National People's Action v. Village of Wilmette, 914 F.2d 1008, 1010-11 (7th Cir. 1990).

 I. LIKELIHOOD OF SUCCESS ON THE MERITS

 A. PACKAGE

 "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., Inc., 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, *fn4" (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. *fn5" Id.; Two Pesos, Inc. v. Taco Cabana, Inc., 52 S. Ct. Bull. (CCH) p. B3576-77 (June 26, 1992).

 
that is not the right way to take them. The eye sees the combination of words, typeface, and [illustration] as a unit. The perceptual gestalt may make one combination seem very like another -- or very different -- even though both have the same formal ...

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