the market. (Dr. Lavidge selected "Prism" for his control group which shared the characteristic with the tested products of not displaying the maker's name anywhere on the front label and like FINISH 2001 was a relatively new product in the market.)
Dr. Lavidge also criticized Dr. Whitcup for testing for reverse confusion. The proper procedure is to show the senior product (NU FINISH) and ask the consumer to chose another product made by the same manufacturer. Dr. Whitcup did the reverse -- showing FINISH 2001 and asking the interviewee to choose other products by the makers of FINISH 2001. While we are unable to quantify what precise difference this made, the procedure causes us to lose confidence in the conclusions of Dr. Whitcup's study. The whole theory of Plaintiff's confusion argument is that NU FINISH buyers mistakenly selected FINISH 2001. Yet its survey didn't really test for proof of that proposition. The particular order is important because the survey attempts to focus on what actually occurs in the marketplace. Worthington Foods, Inc. v. Kellogg Co., 732 F. Supp. 1417, 1444 n.82 (S.D. Ohio 1990).
We also believe that Dr. Lavidge was a more convincing witness. His extensive work with marketing surveys for the business community, together with his inclusion of questioning those who experienced confusion, lead us to accept Dr. Lavidge's testimony and reject that of Dr. Whitcup, whose background is predominantly academic.
Reed Union also contends that its significant loss of sales after the introduction of FINISH 2001 also demonstrates confusion. The crux of the argument is that the car polish market is stagnant, and FINISH 2001's dramatic growth came at a time when NU FINISH sales declined. While this argument has a superficial appeal, it does not survive in the face of the evidence. At the time of FINISH 2001's climb in the market (1990-1991) several things were occurring. First, colored waxes had been introduced and immediately became popular. Although these new products expanded the car polish market to some extent, we also find these new products were responsible for some of the loss in sales by NU FINISH. Secondly, Reed Union got into an argument with one of its retailers (Pep Boys -- a large chain of automobile aftercare products) and NU FINISH was removed from Pep Boys shelves for the 1991 selling season. At the same time, Turtle Wax, which had long been conscious of relationships with the retailers (and had spent millions to improve them), launched several campaigns with the mass retailers to secure more shelf space and end caps. (End caps are free-standing displays at the end of counters which display only one product, often at a sales price). End caps attract buyers who otherwise might not be coming to the store with the express purpose of purchasing such a product. Those efforts were successful and FINISH 2001 sales at K-Mart mushroomed. NU FINISH did not cultivate retailer relationships and more importantly did not pay the additional premiums for end caps displays. Turtle Wax also stepped up its allowances to the retailers for co-op advertising. NU FINISH devoted little to such advertising. When we examine the Defendant's exhibits showing sales of NU FINISH and FINISH 2001 at the thirteen largest retailers (accounting for over fifty percent of all the sales of both products), we find no common thread tying NU FINISH's lost sales to FINISH 2001's gains. We are convinced that NU FINISH's decline in sales after FINISH 2001's introduction cannot be traced to confusion among consumers seeking to buy NU FINISH and winding up with FINISH 2001. Thus, at the end of this analysis we do not find the existence of actual confusion causing NU FINISH customers to purchase FINISH 2001, believing they are buying a NU FINISH or Reed Union product. It is proper to infer from the absence of any credible evidence of actual confusion that there is no likelihood of confusion. Ohio Art Co. v. Lewis Galoob Toys, Inc., 799 F. Supp. 870, 884 (N.D. Ill. 1992); Hanig & Co. v. Fisher, 1994 U.S. Dist. LEXIS 19440, 1994 WL 97738.
VI. Turtle Wax's Intent to Palm Off Its Product As That of Reed Union
Evidence of wrongful intent is not required to establish likelihood of confusion, Wesley-Jessen Div. of Schering Corp. v. Bausch & Lomb, Inc., 698 F.2d 862, 867 (7th Cir. 1983) but when it exists, it is an important factor in the likelihood-of-confusion analysis. Computer Care v. Service Sys. Enter., Inc., 982 F.2d 1063, 1070 (7th Cir. 1992). Further, intent can be inferred when the defendant, with knowledge of plaintiff's trade dress, adopts a similar trade dress. Roulo v. Russ Berrie & Co., 886 F.2d 931, 937-38 (7th Cir. 1989).
Here, several facts are clear. Turtle Wax designers and marketing people knew of the NU FINISH mark and trade dress. In 1989 and even before they studied NU FINISH's new-found success, Turtle Wax had decided to fight NU FINISH's success. After the failure of Turtle Wax Super Hard Shell Finish to cut into the NU FINISH market share, Turtle Wax decided to create a new brand designed to win back what was directly affecting its market share. So far so good. Knowledge of another's product and an intent to compete with it is not equivalent to an intent to mislead the consumer. Henri's Food Prod. Co. v. Kraft, Inc., 717 F.2d 352 (7th Cir. 1983).
When Turtle Wax set about the business of designing a new product it considered a myriad of names. The evidence shows there was no effort to copy NU FINISH's name. The final name was chosen because, like the word FINISH in NU FINISH, it described the product. After working with its advertising firm it came up with the number 2001, perhaps drawn from the motion picture 2001, A Space Odyssey. Turtle Wax's interest as testified to by several of its witnesses was to create a product that appeared futuristic. To that end it chose the futuristic fluorescent green bottle with a modern shape. We credit that testimony and find no intent to copy or palm off its product by copying or using the NU FINISH name or mark.
The most difficult question comes from Turtle Wax's selection of a fluorescent orange-red label with black lettering and a list of claims. Why did Turtle Wax's marketing vice president select orange-red and black on a brand that was designed to compete with a product with an orange and black trade dress? Was it just another effort to create a futuristic appearing product? If so, there are other colors that surely could do just as well. Mr. Cusack denied an intent to copy. Apparently no one at Turtle Wax discussed the possibility of confusion when the color scheme was selected and the label was designed. Yet, Turtle Wax designed the product to compete with NU FINISH, which used the color scheme.
We have carefully weighed the credibility of the Turtle Wax executives most of whom were called by Reed Union. We reviewed the myriad of documents pertaining to the creation of FINISH 2001. Turtle Wax had already selected a florescent green bottle, larger and quite different from that used by NU FINISH. The label included several entries absent from NU FINISH, such as "Urethane Enriched Formula" prominently displayed, and a graph at the bottom with a chartreuse insert. Although the intent of Turtle Wax's employees and agents, like other issues in this case, is close, we conclude that Turtle Wax did not intend to copy or palm off. Rather, it intended to come close without stepping over the line. We conclude it did so, although just barely. Thus, while there was no bad faith by Turtle Wax, its intent to come close is probative on the likelihood of confusion issue. John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983).
So Is There a Likelihood of Confusion?
Turtle Wax's FINISH 2001 and Reed Union's NU FINISH are the same product -- car polish. They are both market leaders and compete for the same consumers in the same stores, often on the same shelf. The marks and trade dress have far more differences than similarities, but there are two important similarities (orange and black labels and the word "FINISH"). Consumers exercise some modest care in selecting these low-priced car polishes. There is no credible evidence of actual confusion, but Turtle Wax did go to the very edge of what the law allows in designing its trade dress. Thus, four factors (similarity of product, area of competition, a weak mark and dress with a secondary meaning, and only modest care by the consumer) favor Reed-Union. Two factors (no actual confusion and no intent to palm off) favor Turtle Wax. One remaining factor (similarity of name and dress) tend to favor Turtle Wax slightly.
Three of these factors in the likelihood of confusion analysis are generally considered the most important -- the intent of the alleged infringer, evidence of actual confusion, and similarity of trade dress. Eldon Indus., Inc. v. Rubbermaid, Inc., 735 F. Supp. 786, 816 (N.D. Ill. 1990), citing Ziebart Int'l Corp. v. After Market Assoc., Inc., 802 F.2d 220, 226 (7th Cir. 1986). In these areas Turtle Wax clearly has the better of the argument. The trade dress and marks have more differences than similarities, and the overall futuristic presentation of FINISH 2001 is markedly different from the drab orange and black dress of the NU FINISH package (which has been unchanged for fifteen years). The Court is unable to credit any of the testimony (expert or otherwise) purportedly showing actual confusion. Turtle Wax was not in our view trying to steal Reed Union's customers by marketing a confusingly similar product. As articulated by the Seventh Circuit, "the weight and totality of the most important factors in each case will ultimately be determinative of the likelihood of confusion, not whether the majority of the factors tilt the scale in favor of one side or the other." AHP Subsidiary Holding Corp. v. Stuart Hale Co., 1 F.3d 611, 615 (7th Cir. 1993). The case is a close one. Recognizing as we must that any doubt on the issue of confusion should be resolved against Turtle Wax ( McGraw Edison Co. v. Walt Disney Productions, 787 F.2d 1163, 1172-73 (7th Cir. 1988)), we nevertheless conclude there is no doubt. Reed Union has failed to prove by a preponderance of the evidence that there is a likelihood of confusion between its NU FINISH and Turtle Wax's FINISH 2001.
Accordingly, judgment is entered in favor of Defendant Turtle Wax and against Plaintiff Reed Union on all remaining charges contained in the Complaint.
This a final an appealable order under Fed. R. Civ. P. 54(b).
Paul E. Plunkett
UNITED STATES DISTRICT JUDGE
DATED: November 14, 1994
JUDGMENT IN A CIVIL CASE
Decision by Court. This action came to trial or hearing before the Court. The issues have been tried or heard and a decision has been rendered.
IT IS ORDERED AND ADJUDGED that judgment is entered in favor of Defendant, Turtle Wax, Inc. and against Plaintiff, Reed-Union Corporation on all remaining charges contained in the complaint. This is a final and appealable order under Fed.R.Civ.P. 54(b).
Date November 14, 1994