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AVENT AMERICA, INC. v. PLAYTEX PRODUCTS

June 24, 1999

AVENT AMERICA, INC., AN ILLINOIS CORPORATION, AND CANNON RUBBER LIMITED, AN ENGLISH CORPORATION, PLAINTIFFS,
v.
PLAYTEX PRODUCTS, INC., A DELAWARE CORPORATION, DEFENDANT.



The opinion of the court was delivered by: Plunkett, Senior District Judge.

  MEMORANDUM OPINION AND ORDER

Before the Court is Magistrate Arlander Keys' Report and Recommendation ("Report") recommending that the Court grant Avent America, Inc. ("Avent") and Cannon Rubber Limited's ("Cannon") motion for a preliminary injunction to enjoin defendant from using the name "Avance" to sell baby feeding bottles. Defendant Playtex Products, Inc. ("Playtex") has filed timely objections to the Report and plaintiffs have filed a timely response to defendant's objections in accordance with Fed.R.Civ.P. 72. For the reasons provided in this Memorandum Opinion and Order, the Court finds Playtex's objections without merit and accepts the Report with some modification.

Facts

Cannon Avent Group PLC ("Cannon Avent Group") is a company that has several subsidiaries, including Avent America, Cannon Rubber, and Cannon Avent Singapore. (R. at 9.) Plaintiff Avent America sells Avent baby feeding products including but not limited to bottles, sterilizers, pacifiers, and a breast pump in the United States. (Id. at 13.) There are over seventy different types of products, or Stock Keeping Units (SKUs), sold under the Avent brand name. (Id. at 11.) Avent America distributes and sells fifty-five SKUs of Avent products in the United States. (Id. at 137.) Plaintiff Cannon Rubber, an English corporation, manufactures, markets, and distributes Avent baby feeding products and a line of automotive accessories. (Id. at 10.) Defendant Playtex, a Delaware corporation, sells consumer products including tampons, infant care, and sun care products. (Id. at 456.)

In 1982, Edward Atkin ("Atkin"), the managing director of Cannon Rubber, began developing a baby feeding system that more closely replicated the breast-feeding process by incorporating an anti-vacuum device into the nipple skirt. (Id. at 14-15.) The bottles in the Avent system are manufactured using the injection stretch blow molding process — a process which results in a smoother internal surface than the extrusion blow molding process. (Id. at 37-39.) The extrusion blow molding process, the process used to manufacture Playtex Avance bottles, results in bottles that are more difficult to clean thoroughly due to the intricate cavities on the inside of the bottle created during the manufacturing process. (Id. at 38-40, 96.)

Atkins testified that Avent relies very heavily on word-of-mouth referrals because people do not easily understand the technical benefit of the Avent bottle's anti-vacuum design. (Id. at 28.) After using the bottle, a purchaser of the Avent bottle appreciates the way a baby is less stressed due to an uninterrupted milk flow, and then passes on their recommendation to other potential purchasers. (Id.) Elizabeth Christie ("Christie"), managing director and CEO of Avent America, also testified on direct and cross examination that at least fifty percent of Avent's business is impacted by word-of-mouth referrals. (Id. at 145, 206.) In addition, Avent markets to health professionals because they heavily influence the buying decisions of new and expecting parents. (Id. at 141.) Christie testified that one hundred percent of the influence that is accomplished between health professionals and expectant parents is by word of mouth. (Id. at 142.)

In 1994, Avent had three million dollars in retail sales for its products in the United States. (R. at 144.) In 1995, retail sales jumped to five or six million dollars. (Id.) In 1996, retail sales reached ten million. (Id.) In 1997, retail sales soared to twenty million. (Id.) Thus, from 1994 to 1997, Avent doubled its retail sales each year. (Id. at 205.) Sales of Avent reusable bottles make up approximately forty percent of total retail sales and were also doubling in proportion to sales of the entire product line. (Id. at 145-46.) However, in 1998, the year in which Playtex began selling the Avance bottle, Avent retail sales grew sixty percent, which is significantly lower growth than in the preceding years. (Id. at 144-45, 205.) According to Christie, Avent America did not change its marketing for Avent products from 1994 through 1998. (Id. at 144-45.)

From 1994 through 1998, Avent America spent four million dollars in marketing, promotion, and advertising to promote its products, including advertisements for the Avent Isis Breast Pump, reusable bottle, disposable bottle, sterilizer, pacifiers, storage set, and weaning system. (Id. at 150; see Pls.' Ex. 1, Media Advertising Paid for by Avent America.) In 1998 alone, Playtex spent one million dollars in advertising solely the Avance bottle. (R. at 542.)

Avent distributes and sells its products to specialty stores and several mass market chain stores, such as Toys `R Us, Babies `R Us, Target, Burlington Coat Factory, and Wal-Mart. (Id. at 138-39.) Playtex has a much broader distribution for the Avance bottle and sells to national mass market chain stores. (Id. at 485.) Although Avent and Playtex products are presented side by side on a number of store's shelves, there are hundreds of stores in which Playtex is selling its reusable bottle that Avent is not. (Id. at 203.) Despite Avent and Playtex's different distribution strategies, Christie testified that Avent and Playtex are marketing to the same customer by pricing and merchandising their products very similarly and by distributing their product to some of the same retailers. (Id. at 156.) Christie testified that despite Avent's relatively low distribution level, Avent has a good level of awareness, i.e., fifty percent, among consumers. (Id. at 628.) Even Richard Powers, president of Personal Products Division of Playtex Products, Inc., acknowledged that a Playtex survey regarding the awareness of various bottles in the industry showed that forty-nine percent of mothers had heard of Avent. (Id. at 520.)

Toward the end of 1996, Atkins received an unsolicited letter from Michael Goss, Executive Vice President and Chief Financial Officer of Playtex, in which Playtex stated its interest in purchasing Cannon Rubber, the manufacturer of Avent baby feeding products and a line of motorcar accessories. (Id. at 10, 47; Pls.' Ex. 27, Playtex Letter of 12/4/96, at D01863.) Atkins responded that he was uninterested in selling Cannon Rubber. (R. at 52-53.) Goss, however, insisted that Atkin meet with him and the CEO of Playtex, Mr. Gallaher, when they visited London. (Id.)

In January 1997, Goss and Gallaher made a presentation of Playtex to Atkin and stated that Playtex wished to acquire the Avent bottle so that it could become Playtex's premium reusable anti-vacuum bottle. (Id. at 54.) Atkin again proclaimed his disinterest in selling Cannon Rubber. (Id.) Three or four months later, Playtex selected "Avance" as the name for a new anti-vacuum bottle. (Id. at 536.)

Playtex began selling its Avance bottle, an angled bottle with an anti-vacuum device built into the bottom, in Target stores in mid to late December 1997. (Id. at 466-67, 485.) In January 1998, the customer service representatives at Avent began receiving calls about an angled bottle, a type of bottle which Avent does not sell. (Id. at 153.) In February 1998, those customer calls and concerns were brought to the attention of the managing director and CEO of Avent America, Elizabeth Christie ("Christie"). (Id. at 160.) After Christie saw an ad for the Playtex Avance bottle and saw the actual product, she sent a cease-and-desist letter to Playtex. (Id.) Over one month later, on April 7, 1998, Playtex responded to Christie's letter and denied that there was any similarity in looks, sound, and connotation. (Id. at 161-62; Pls.' Ex. 15.) On April 30, 1998, Avent and Cannon Rubber brought the instant suit against Playtex. (Compl. at 1.)

Discussion

This matter was referred to Magistrate Judge Keys pursuant to Rule 72(b) of the Federal Rules of Civil Procedure. This Court is required to "make a de novo determination . . . of any portion of the magistrate judge's disposition to which specific written objection has been made." Fed.R.Civ.P. 72(b). "The district judge may accept, reject, or modify the recommended decision, receive further evidence, or recommit the matter to the magistrate judge with instructions." Id.

There are several factors that a court must weigh when considering a motion for preliminary injunction. Meridian Mut. Ins. Co. v. Meridian Ins. Group, Inc., 128 F.3d 1111, 1114 (7th Cir. 1997). "First, it must determine whether the moving party has demonstrated . . . some likelihood of prevailing on the merits, . . . an inadequate remedy at law and irreparable harm if the injunction does not issue." Id. "If the party has done so, the court must next consider . . . the irreparable harm the nonmovant will suffer if the injunction is granted balanced against the irreparable harm to the movant if the relief is denied, and the effect granting or denying the injunction will have on nonparties." Id.

1. Likelihood of Prevailing on the Merits

"In the preliminary injunction context, a `likelihood of success' exists if the party seeking injunctive relief shows that it has a `better than negligible' chance of succeeding on the merits." Id. (quoting International Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1084 (7th Cir. 1988)). In a trademark infringement case, "the movant shows a likelihood of success by establishing that . . . (1) he has a protectable mark, and . . . (2) that a "likelihood of confusion" exists between the marks or products of the parties." Id. at 1115.

The first prong has been satisfied because it is undisputed that Avent has a protectable mark. The record shows that Avent registered its trademark in the United States in 1986. (R. at 17.) As the magistrate judge noted, registration of the mark "constitutes prima facie evidence of the ownership and validity of the mark. . . ." Brach Van Houten Holding, Inc. v. Save Brach's Coalition for Chicago, 856 F. Supp. 472, 475 (N.D.Ill. 1994). Therefore, the Court need only address the likelihood of confusion prong to determine whether Avent has a likelihood of success on the merits.

In this circuit, a court considers several factors to determine whether a likelihood of confusion exists in trademark cases: (1) degree of similarity between the marks in appearance and suggestion; (2) similarity of the products for which the name is used; (3) area and manner of concurrent use; (4) degree of care likely to be exercised by consumers; (5) strength of complainant's mark; (6) actual confusion; and, (7) intent of defendant to palm off his product as those of another. Helene Curtis Indus., Inc. v. Church & Dwight Co., Inc., 560 F.2d 1325, 1330 (7th Cir. 1977). "None of these factors by itself is dispositive of the likelihood of confusion question, and different factors will weigh more heavily from case to case depending on the particular facts and circumstances involved." International Kennel, 846 F.2d at 1087. Playtex, in essence, attacks the magistrate's findings on each factor.

A. Similarity of Marks

Playtex argues that the magistrate judge erred as a matter of law in limiting its similarity analysis to the aural similarity of the words "Avent" and "Avance." Playtex's strongly worded objection avers that the magistrate judge's justification for emphasizing the aural similarity is based on "pure speculation." (Def.'s Objections at 10.) The Court finds Playtex's objection without merit.

In determining similarity, "the marks must be compared in light of what occurs in the marketplace, not in the courtroom." James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 275 (7th Cir. 1976). "Side by side comparison is not the test. . . . The consuming public is unlikely ever to be presented with the opportunity for such comparison." International Kennel, 846 F.2d at 1088.

The Court notes that the parties' marks and packaging are visually dissimilar. "Avent" is displayed in a multi-color sans serif typeface on its bottle, packaging, and print advertising while "Avance" is displayed in a red serif typeface on the packaging and print advertising and is embossed into the bottle. (Compare Pls.' Exs. 1, 9, 10 with Def's Exs. 11, 12, 13, 14.) Playtex appears above the "Avance" mark on both its bottle and packaging. (Pls.' Ex. 9.) The "Avent" mark is displayed with the tagline "naturally" in script typeface on its bottle, and in print advertising, the "Avent" mark is displayed either with the tagline or by itself. (Pls.' Ex. 10.)

The dissimilarity between the appearance of the marks and packaging alone, however, cannot carry the day for Playtex. For the record shows, and Playtex readily admits, that there are hundreds of stores in which the Avance bottle is sold in which the Avent bottle is not. (R. at 203.) Thus, in a great number of stores in which the Avance bottle is available, it would be impossible for the public to examine both bottles and notice differences between the marks and their appearance on packaging. Further, there is evidence that, with ...


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