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October 6, 1994

ROCK-A-BYE BABY, INC., Plaintiff,
DEX PRODUCTS, INC., Defendant.


The opinion of the court was delivered by: JOHN A. NORDBERG

Rock-A-Bye Baby, Inc. ("RABB") sued Dex Products, Inc. ("DEX") in an eight count complaint, alleging trademark infringement, unfair competition, false advertisement, commercial disparagement, deceptive trade practices, dilution of Plaintiff's protected marks, and consumer fraud. Plaintiff relies on federal law, state statutory law, and common law. DEX has moved for summary judgment on RABB's entire complaint.


 RABB manufactures and sells, in interstate commerce, several products relating to infant care. Among RABB's products is the Rock-A-Bye Bear, which is a stuffed bear containing a computer microchip which emits intrauterine sounds. The Rock-A-Bye Bear is designed to soothe babies with the presumably familiar sounds of the womb. Rock-A-Bye Bear is a registered trademark belonging to RABB. *fn1" RABB also maintains a registered trademark on the phrase "Rock-A-Bye" for "stuffed toys containing an intrauterine sound of a new born baby recorded on an integrated circuit chip." *fn2" RABB has sold and advertised the Rock-A-Bye Bear and other products under the "Rock-A-Bye" trademark since 1979.

 DEX also sells, in interstate commerce, a stuffed bear which emits "recorded sounds of the womb," called the "Mommy Bear." In addition, DEX sells an infant support pillow called "Prop-A-Bye Baby." DEX's trademark application for Prop-A-Bye Baby was approved December 3, 1993, but a registration had yet to issue at the time this suit was filed. *fn3" DEX's introduction of the Mommy Bear and its use of the phrase Prop-A-Bye Baby were subsequent to the presence of Rock-A-Bye Bear on the market and RABB's use of Rock-A-Bye as a trademark.

 RABB alleges that Mommy Bear is confusingly similar in name and appearance to RABB's Rock-A-Bye Bear in violation of federal and Illinois law and that DEX's Prop-A-Bye Baby mark is confusingly similar to RABB's Rock-A-Bye mark and RABB's other marks which include the term Rock-A-Bye. *fn4" DEX now moves for summary judgment. The Court will refer to additional facts as they become relevant to its discussion of the issues presented.


 A. Standard

 Summary judgment is appropriate against a party who fails to make a sufficient showing to establish the existence of an essential element to its case on which that party will bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986). The moving party bears the initial burden of identifying the portions of the record which it believes demonstrate the absence of a genuine issue of material fact. Id. at 323; Adickes v. S.H. Kress and Co., 398 U.S. 144, 157, 26 L. Ed. 2d 142, 90 S. Ct. 1598 (1970). All the evidence submitted must be viewed in the light most favorable to the non-moving party. Adickes, 398 U.S. at 157.

 Once a properly supported motion for summary judgment has been filed, the non-moving party must set forth specific facts showing there is a genuine issue for trial. Anderson v. Liberty Lobby, 477 U.S. 242, 248, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986) (quoting First National Bank of Arizona v. Cities Service Co., 391 U.S. 253, 20 L. Ed. 2d 569, 88 S. Ct. 1575 (1968)). An issue of fact is genuine only if a jury could reasonably return a verdict for the non-moving party. Id. at 248. Only facts that might affect the outcome of the case are material. Id. Therefore, if the evidence provided by the non-moving party is merely colorable or is not significantly probative, summary judgment may be granted. Id. at 249-50.

 B. Trade Dress Infringement

 RABB alleges that DEX's Mommy Bear and its trade dress are similar enough to the Rock-A-Bye Bear and its trade dress to cause confusion among the public in violation of common law and the Lanham Act, 15 U.S.C. § 1125(a). That section provides:

(a)(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which-
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents to nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,
shall be liable in a civil action by any person who believes he or she is likely to be damaged by such an act.

 15 U.S.C. § 1125(a). It is well settled in our circuit that, in order to prevail on a claim of trade dress infringement, the plaintiff must prove that its trade dress is protectible and that its trade dress was infringed. Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145, 1151 (7th Cir. 1994).

 Trade dress refers to the total image of a product, including size, shape, color combinations, graphics, packaging and label. Id. Trade dress is protectible if it is inherently distinctive or that it has acquired a secondary meaning. Two Pesos, Inc. v. Taco Cabana, Inc., 120 L. Ed. 2d 615, U.S. , 112 S. Ct. 2753, 2758 (1992). A district court in the Seventh Circuit will not reach the question of likelihood of confusion, until it is satisfied that the claimed trade dress is sufficiently distinctive to be protectible. Spraying Systems Co. v. Delavan, Inc., 975 F.2d 387, 392 (7th Cir. 1992) (quoting Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 610 (7th Cir. 1986).

 Neither party discusses whether Rock-A-Bye Bear's trade dress is distinctive or has secondary meaning. DEX bases its argument for summary judgment exclusively on its argument that no confusion between the Rock-A-Bye Bear and Mommy Bear trade dress is possible, "even assuming that Rock-A-Bye Bear's overall trade dress is distinctive and has acquired strong secondary meaning." (Mem. in Supp. of Def.'s Mot. for Summ. J., p.8.) Because the Court has received no argument on this issue, the Court will assume, for the purposes of this motion only, that Rock-A-Bye Bear's trade dress is protectible.

 Trade dress is infringed if the similarity of the trade dress of the defendant to that of the plaintiff is likely to cause confusion on the part of consumers as to the source of the goods. Badger Meter, Inc., 13 F.3d at 1151. Courts evaluate the likelihood of confusion in trademark infringement claims by considering the following seven factors:

(1) the similarity between the trade dress in appearance and suggestion;
(2) similarity of the products;
(3) area and manner of concurrent use;
(4) degree of care likely to be exercised by consumers;
(5) strength of complainant's trade dress;
(6) actual confusion; and
(7) intent of defendant "to palm off his product as that of another."

 Badger Meter, Inc., 13 F.3d at 1152. The question of the likelihood of confusion is one of fact. Id. at 616. "Accordingly, a motion for summary judgment in a trademark infringement ...

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