"Functionality is a traditional defense in the common law of unfair competition to a suit for trademark infringement." W.T. Rogers Co. v. Keene, 778 F.2d 334, 338 (7th Cir. 1985). It is also a defense to a suit under section 43(a) of the Lanham Act. Id.
A "product feature is functional if it is essential to the use or purpose of the article." Inwood Laboratories v. Ives Laboratories, 456 U.S. 844, 72 L. Ed. 2d 606, 102 S. Ct. 2182 (1982). The Seventh Circuit has stated, a feature is functional if it is one that "competitors would find necessary to incorporate into their product in order to compete effectively." Vaughan Mfg. Co. v. Brikam International, Inc., 814 F.2d 346, 349 (7th Cir. 1987).
In Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 1189 (7th Cir. 1989), the Seventh Circuit reiterated its reasoning in W.T. Rogers Co. v. Keene, 778 F.2d 334, 338 (7th Cir. 1985) that a feature is functional if it is one that is costly to design around or do without, rather than one that is costly to have, Schwinn, 870 F.2d at 1189.
The evidence in this case established that Plaintiff's "split-mat" platform design has been used by Plaintiff for sixty years. No other competitor but Defendant has found it necessary to incorporate the split-mat design like Plaintiff's in any scale to compete effectively. There is no showing that Plaintiff's competitors have found doing without the split-mat design costly. Likewise, there is no evidence that any manufacturer of professional weighing scales has incurred any cost resulting from having to design around Plaintiff's split-mat design.
An inference could be drawn that the reclining "J" profile may be costly to design around. Defendant argued that a non-flush cowl design such as those presented by Plaintiff at oral argument (Pl.Hg.Exs. 5C and 5D) as alternatives to Defendant's allegedly infringing cowl (Pl.Hr.Ex. 5B) would cost additional money beyond that which Defendant has expended for its current design. After examining the removable, allegedly infringing cowl (Pl.Hr.Ex. 5B), the court believes the cost would be minimal.
In attempting to defeat Plaintiff's Motion for Preliminary Injunction as to the "split-mat" trade dress, Defendant argued that the center stripe of Plaintiff's trade dress should be considered functional because it guides the user as to proper foot placement. The court finds that a particularly narrow longitudinal center division white stripe which separates the contrasting solid dark colored or black mats on the platform is not essential to accomplish such a "function". This finding is bolstered by the fact that no other competitor of Plaintiff finds such a fanciful form of guiding consumers' feet to be necessary or even desirable.
The scales in evidence are not complicated devices to use. A user of any such scale who stands on the platform facing the dial to read it automatically places his or her left foot on the left and right foot on the right of the platform. Even if some guidance of the scale's user's feet is helpful to the scale's user, Plaintiff's particular inherently distinctive trade dress is not necessary to the task. As mentioned earlier, other competitors certainly compete effectively either with no designs or with non-infringing designs on their scales' platforms; for example, the Sunbeam scales. (Pl.Hg.Ex. 3 and Df.Hg.Ex. 14) Plaintiff's split-mat trade dress has not been proven by Defendant to be functional.
4. Likelihood of Confusion
Once a trade dress is found to be nonfunctional and deserving of Lanham Act protection due to its inherent distinctiveness or secondary meaning, a party seeking such protection must establish that an alleged infringer's trade dress is sufficiently similar to create a likelihood of confusion as to source. Roulo v. Russ Berrie & Co., Inc., 886 F.2d 931, 937 (7th Cir. 1989). In assessing the likelihood of marketplace confusion, the factors to be considered include the following: (a) the similarity of the trade dress, (b) the similarity of the products to which those trade dresses are attached, (c) the area and manner of concurrent consumer use, (d) the degree of care likely to be exercised by consumers in making their purchasing decision, (e) the strength of plaintiff's trade dress, (f) actual confusion among consumers, and (g) the intent of the alleged infringer "to palm off his product as that of another." Smith Fiberglass Products, Inc. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993).
Considering each of these factors there is a strong likelihood of confusion as to source among purchasers in the market for an overhanging dial professional scale. The trade dress of Plaintiff and Defendant are highly similar. Their products are the same type: professional, overhanging big-dial, floor model weighing scales. The consumer use of the Plaintiff's and Defendant's scales is identical. The degree of care exercised by purchasers is certainly greater than that of the impulse purchasing of candy. See Storck USA, L.P. v. Farley Candy Co., 14 F.3d 311 (7th Cir. 1994). The degree of care is, however, substantially less than that which would be exercised in purchasing a more expensive item such as an automobile. See Westward Coach Manufacturing v. Ford Motor Co., 388 F.2d 627 (7th Cir. 1968). The care taken by consumers in purchasing these scales is not such that the likelihood of confusion is precluded or even minimized.
As for the strength of Plaintiff's split-mat trade dress, the court finds it quite strong considering all of the factors such as its inherent distinctiveness, length of use, advertising, and volume of sales. The reclining "J" profile the court finds to be less strong by comparison given the insubstantial amount of evidence of its distinctiveness and secondary meaning. Proof at this stage of the litigation regarding Defendant's intent to copy Plaintiff's trade dress is circumstantial and stems primarily from the similarity of the products' trade dress in dispute from which Defendant's copying is a reasonable inference.
Therefore, this court must conclude that Plaintiff's likelihood of success on the merits is substantial as to Plaintiff's split-mat trade dress but not much above "better than negligible" as to the reclining of "J" profile trade dress.
C. Irreparable Harm and No Adequate Remedy at Law
In the preliminary injunction analysis of the Seventh Circuit, the two requirements--irreparable harm and no adequate remedy at law--often tend to merge. See Roland Machinery Co. v. Dresser Indus., Inc., 749 F.2d 380, 386 (7th Cir. 1984). To establish irreparable harm, a movant must show that an award of money damages will not be adequate. The question is whether the movant will be made whole if the movant prevails on the merits and is awarded money damages. This is not to say that the movant must show that an award of damages at the end of trial will be wholly ineffectual, just seriously deficient as a remedy for the harm suffered. Id.
Irreparable harm is generally presumed in trade dress and trademark infringement cases. Damages to a company's reputation is ordinarily considered irreparable harm. International Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1091-1092 (7th Cir. 1988). The loss of future sales, the loss of consumer confidence, and the loss of goodwill are all harms which can be considered irreparable because they are nearly impossible to quantify. Moreover, as the Seventh Circuit has said, "The most corrosive and irreparable harm attributable to trademark infringement is the inability of the victim to control the nature and quality of the defendant's goods," Process Plastic Company v. Warner Communications, 675 F.2d 852, 858 (7th Cir. 1982). This is certainly the situation here in light of Defendant's having to take back or stop shipping its Model T PRO 1000 scales due to some defect or malfunction of the product. (Dkt. No. 31.)
In this case the court finds that the evidence establishes that if a preliminary injunction is not granted and Defendant is allowed to manufacture and market its Model T PRO 1000 scale, Plaintiff is likely to suffer injuries which cannot be adequately rectified by money damages. Those irreparable damages include harm to Plaintiff's reputation and goodwill; Plaintiff's loss of current and future customers because of the likely confusion; and Plaintiff's inability to control the quality of Defendant's products. The consumer public may erroneously believe that Defendant's scales are actually Plaintiff's because of the confusingly similar trade dress. See Gateway Eastern Railway Co. v. Terminal Railroad Assoc. of St. Louis, 35 F.3d 1134, 1140 (7th Cir. 1994) (showing injury to goodwill can constitute irreparable harm that is not compensable by an award of money damages); Merrill Lynch, Pierce, Fenner & Smith v. Salvano, 999 F.2d 211, 215 (7th Cir. 1993) (evidence of possible loss of customers if injunction is not issued sufficiently supports the district court's finding of irreparable harm and the inadequacy of the movant's legal remedy).
D. Balancing the Harms on the "Sliding Scale"
Because Plaintiff has met its threshold burden for the issuance of a preliminary injunction, the inquiry now becomes the "sliding scale" analysis of the harm to the parties and the public from the grant or denial of the requested injunction and the actual likelihood of success on the merits. Storck USA, L.P. v. Farley Candy Co., 14 F.3d 311, 313-14 (7th Cir. 1994); Ping v. National Educ. Assoc., 870 F.2d 1369, 1371 (7th Cir. 1990).
Since Plaintiff's likelihood of success on the merits as to its split-mat platform design trade dress is substantial, that, together with the irreparable harm Plaintiff will suffer, if Plaintiff's requested preliminary injunction is not granted, far exceeds the harm which Defendant will suffer from the granting of the preliminary injunction as to that trade dress. Defendant's scale's platform mats are removable. As shown by Plaintiff's demonstration at oral argument, inserting a single mat design (Pl.Hg.Ex. 5A) for Defendant's two mats can be accomplished easily. The cost which would be incurred by Defendant to manufacture a non-infringing trade dress would be minimal compared to Plaintiff's irreparable harm. Of course, Defendant's changing the packaging and promotional material would be necessary, but that also would be minimal compared to the substantial irreparable harm caused to Plaintiff were Defendant allowed to continue to use the split-mat design on the platform mats of its Model T PRO 1000 scale. Defendant may additionally lose some goodwill but that also would be minimal especially since Defendant voluntarily removed its Model T PRO 1000 scale from the market in late 1994.
The "sliding scale" balance of harms as to the reclining "J" configuration tips in favor of denying Plaintiff's Motion for Preliminary Injunction. Plaintiff's counsel at oral argument proffered two alternative cowl designs (Pl.Hg.Exs. 5C and 5D) both of which fit Defendant's Model T PRO 1000 scale. Each alternative design had a groove or indentation at the top of the cowl between the platform and dial. Inserting either of these designed plastic molded grooved cowls for Defendant's current cowl (Pl.Hg.Ex. 5B) on its Model T PRO 1000 has some appeal. Yet, considering the relative merits of Plaintiff's claim as to its reclining "J" configuration when coupled with the harm to Plaintiff should a preliminary injunction on this point not be granted, the court cannot say that the harm to Defendant resulting from a granting a preliminary injunction on this point is outweighed under all the circumstances.
E. The Public's Interest
The public's interest is best served by the employment of non-confusing trade dresses on similar products put out by competing companies. The decision made here serves that end. Consequently, the court's decision in this case to grant the injunction as to the split-mat design and deny the injunction as to the reclining "J" configuration is compelled and not precluded by consideration of the public's interest.
For the reasons stated herein, Plaintiff's Motion for Preliminary Injunction is granted as to Plaintiff's narrow (less than two centimeters), longitudinal center division white stripe which separates the mats of contrasting color on the scale platform. Defendant, its affiliates, agents, employees, successors and assigns are preliminary enjoined from reproducing, copying or colorably imitating any trade dress confusingly similar to the above-described trade dress of Plaintiff pending final judgment in this case at trial or otherwise. In all other respects, Plaintiff's Motion for Preliminary Injunction is denied. The parties are strongly encouraged to discuss settlement. The issue of the preliminary injunction entered herein will be addressed at the status report set for March 6, 1995 at 10:00 a.m.
JAMES F. HOLDERMAN
United States District Judge
DATED: January 30, 1995