unique shape that identifies their product from all others.
Finally, it is uncontested that prior to Fluid-Quip's copying Dorr-Oliver's machine, everyone in the industry identified the clamshell shape with the Dorr-Oliver unit. Dr. Bates, former vice president of American Maize
and Dorr-Oliver's corn wet milling expert, testified that "the main thing that jumps out at you" when you see a Dorr-Oliver clamshell is an "inner-tube type" shape which makes the unit a Dorr-Oliver clamshell.
After weighing all of the evidence presented, the court therefore concludes that the Dorr-Oliver clamshell design is inherently distinctive.
B. Secondary Meaning
Some of the evidence that has convinced the court that Dorr-Oliver's clamshell design is inherently distinctive also goes to prove that the design had acquired secondary meaning. The Seventh Circuit has held that the factors that may be used to determine secondary meaning include: (1) direct testimony of consumers; (2) exclusivity; (3) length and manner of use; (4) amount and manner of advertising; (5) amount of sales and number of customers; (6) established place in the market; and (7) proof of intentional copying. Echo Travel, Inc. v. Travel Associates, Inc., 870 F.2d 1264, 1267 (7th Cir. 1989). The court finds that Dorr-Oliver has met its burden of establishing that its clamshell design had secondary meaning prior to the date on which Fluid-Quip began marketing its clamshell.
As mentioned above, the customers whose testimony was offered have clearly stated that they identified the clamshell design with Dorr-Oliver prior to Fluid-Quip's entry into the market. It is uncontested that Dorr-Oliver was the exclusive manufacturer of this machine for decades prior to Fluid-Quip's entry, and had marketed the machine extensively in the wet corn milling industry. Dorr-Oliver established its place in this market by selling its clamshell units to literally every customer in the industry. Indeed, Dorr-Oliver revolutionized the entire industry with the introduction of its centrifugal hydrocyclone machines, including the clamshell. Finally, as mentioned above, it is uncontested that Fluid-Quip intentionally copied Dorr-Oliver's machine, thinking that it had a right to do so because of its customers' demands for interchangeability.
Thus, even if the court had concluded that Dorr-Oliver's clamshell design was not inherently distinctive, Dorr-Oliver would be entitled to trade dress protection because it is abundantly clear that the design had acquired secondary meaning prior to Fluid-Quip's entry into the market.
C. Likelihood of Confusion
In light of the court's earlier finding, and the parties' subsequent stipulation, that there was no actual confusion at the point of sale as to the source of Fluid-Quip's clamshell, the issue of likelihood of confusion posed the greatest challenge to Dorr-Oliver's trade dress infringement case. In Smith Fiberglass Products, Inc. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993), the Seventh Circuit identified the following factors be considered in determining whether there is a likelihood of confusion: (1) the similarity of the trade dress; (2) the similarity of the products to which those trade dresses are attached; (3) the area and manner of current consumer use; (4) the degree of care likely to be exercised by consumers in making their purchasing decision; (5) the strength of Dorr-Oliver's trade dress; (6) actual confusion among customers; and (7) the intent of the alleged infringer "to palm off his product as that of another."
The thrust of defendants' argument is that there is no likelihood of confusion because of the time taken and the expertise employed by the customers at the point of sale of the clamshell. The Seventh Circuit recognizes, however, that the Lanham Act applies to the likelihood of post-sale confusion of "prospective" or "potential" purchasers, not only point-of-sale purchasers. Forum Corp. of Northern America v. Forum Ltd., 903 F.2d 434, 442 (7th Cir. 1990); International Kennel Club, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1081 (7th Cir. 1988). The court agrees with our brethren in this district that "the Lanham Act is not limited to preventing confusion at the time of sale, but also to preventing confusion that occurs after the sale. Storck USA, L.P. v. Farley Candy Co., 797 F. Supp. 1399, 1410 (N.D.Ill. 1992) (Judge Holderman); see also, Eldon Industries, Inc. v. Rubbermaid, Inc., 735 F. Supp. 786, 821 (N.D.Ill. 1990) (Judge Rovner).
In the instant case, Fluid-Quip demonstrated that the purchase of a clamshell can take months or even years to consummate, during which time potential buyers and sellers participate in numerous technical discussions and presentations. This is why there is no possibility of confusion by the purchaser at or near the point of sale. The court finds, however, that there is a likelihood of confusion by potential purchasers resulting from the near identical appearance of Fluid-Quip's and Dorr-Oliver's clamshells.
First, Dorr-Oliver demonstrated that it is a common practice in the corn wet milling industry to conduct tours of potential customers, plant managers and engineers through the plants to view the milling process, including the starch washing process. It is highly probable that many of these people, including potential customers from Asia and other foreign countries, would be unable to distinguish Fluid-Quip's clamshells from Dorr-Oliver's when viewing a starch washing line. Fluid-Quip's name was cast into each of the eight parts of the outer housing; Dorr-Oliver's name appeared on only the largest part on each side. Both manufacturers affixed small name plates to the central core of their units. However, these names would not be readable at any distance, and one of the photographs introduced by Dorr-Oliver showed a grouping of clamshells many of which were covered by corn starch dust, making the names even harder to discern.
Moreover, as parts of the outer housings of the units are interchanged, it would become impossible to identify the source of any particular machine without close inspection to see whose name, if any, was embossed on the parts. For example, it is likely that one would expect to find a clamshell with one of the two halves Fluid-Quip's and the other Dorr-Oliver's, or a unit with one or both Dorr-Oliver outer housings on a Fluid-Quip core. If such a customer were to view the latter unit experiencing mechanical problems, that customer might attribute those problems to Dorr-Oliver, when the fault might well lie with Fluid-Quip's product. Because Fluid-Quip's clamshell is practically identical to Dorr-Oliver's in outward appearance, confusion as to source is a near certainty.
The root of the Lanham Act is to prohibit unfair competition. It is inherently unfair for a competitor to enter the market on the back of the originator of a design. Both Seventh Circuit and Illinois state law impose a duty of care on newcomers to a market to take affirmative steps to choose trade dress that avoids confusion. Pride Communications v. WCKG, Inc., 851 F. Supp. 895, 30 U.S.P.Q.2D (BNA) 1185, 1191 (N.D.Ill. 1994), citing Forum Corp., 903 F.2d at 443; Thompson v. Spring-Green Lawn Care Corp., 126 Ill. App. 3d 99, 111, 466 N.E.2d 1004, 1014, 81 Ill. Dec. 202 (1st Dist. 1984). See also, James Burrough, Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 274-276 (7th Cir. 1976) (a trademark owner has the "right" to maintain control of his reputation regardless of source confusion).
The court finds the Second Circuit's opinion in Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867 (2nd Cir. 1986), highly persuasive. In Lois Sportswear, the appellant copied Levi's stitching design on its jeans. The appellee argued that there was no likelihood of confusion because the jeans were clearly labeled (some permanent labels, some temporary), and when customers came into the store to buy the jeans they knew whose product they were purchasing. The court held:
It is equally clear that post-sale confusion as to source is actionable under the Lanham Act. . . In the instant case, this post-sale confusion would involve consumers seeing appellant's jeans outside of the retail store, perhaps being worn by a passer-by. The confusion the Act seeks to prevent in this context is that a consumer seeing the familiar stitching pattern will associate the jeans with appellee and that association will influence his buying decisions.