catalogs, are among manufacturers' largest annual promotional
expenditures. Smith states that its merchandise never appears in
a catalog where it is not featured on a dedicated page,
prominently featuring its company name and trademarks as well as
pictures of the product being sold. Bretford does not dispute
Smith's statement, but claims that manufacturers do not have
control over the advertisements created by dealers. Bretford's
CONNECTIONS table has appeared in dealer catalogs without the
Bretford or CONNECTIONS marks or logos.
In a typical sales transaction, an end-user, such as a school,
first formulates a bid specification, setting forth the
requirements of the equipment the end user seeks to purchase.
This is typically done with the assistance of a dealer or
manufacturer's sales representative, using the manufacturer's
specification sheet, catalogs and promotional materials as a
guide.*fn4 In the educational furniture market, dealers make
suggestions as to the language of the bid request. A bid may
specifically identify a manufacturer, or it may simply describe
a particular item. Bid requests regularly specify that
"equivalents" may be bid.
Once the end-user completes its bid specification it typically
sends the specification out to several dealers. The dealers
contact manufacturers, like Bretford or Smith, and the
manufacturers quote prices to the dealers. The dealers determine
their mark-up on each item, then complete and submit the bid
sheet to the end-user. Bid sheets typically disclose the name of
the manufacturer and the model number of the furniture.*fn5
When a bid is successful, a purchase order issues from the
end-user to the successful dealer, usually specifying the
manufacturer and model numbers of the products being purchased.
The manufacturer's name and model are repeated in the invoice
and shipping list sent to the end-user.
When a purchaser orders either Bretford's or Smith's
furniture, the furniture is delivered in boxes that display the
name of the manufacturer. Bretford marks its computer table
shipping containers with a label approximately 12 inches long
and four inches high. The label states Bretford's name, the
model number of the contents, and a brief description of the
product. In addition to the computer table, the shipping
container contains an assembly instruction sheet with the
BRETFORD name on it. Likewise, Smith ships its FLEXLINE tables
in boxes prominently featuring a 12 inch by three inch SMITH
SYSTEM company name and logo, and a packing list attached to the
box contains in its heading the SMITH SYSTEM company name,
address, and telephone and fax numbers, as well as a description
of the contents.
Events Precipitating This Lawsuit
In late 1996 or early 1997, the Dallas, Texas Independent
School District issued a request for proposals to supply 300
computer work centers. The bid request specified Bretford tables
as the reference product but allowed that substitutes could be
bid. Various dealers bid on the contract, providing the school
district with samples. In April, 1997 the Dallas Independent
School District awarded the contract to J & S Equipment, a Texas
dealer, which agreed to provide Smith FLEXLINE computer tables
to meet the specifications.
The Pending Actions
In January, 1998 Bretford filed this suit alleging that Smith
had engaged in trade dress infringement, unfair
competition/false advertising, and reverse passing off in
violation of Section 43(a) of the United States Trademark Act of
1946, 15 U.S.C. § 1125(a) and under the common
law. The complaint also alleged unfair and deceptive business
practices and deceptive trade practices in violation of the
Illinois Consumer Fraud and Deceptive Business Practices Act,
815 ILCS §§ 505/1-12, as well as similar claims under the Texas
Deceptive Trade Practices Act, Tex. Bus. & Com.Code § 17.46-.50
and the Washington Consumer Practices Act, RCW § 19.100.190.
We determined at a Rule 16 conference on July 21, 1998 that
"there is a very substantial issue as to likelihood of
confusion," at least with respect to the trade dress
infringement claims. After a year of discovery, the parties
filed the cross-motions for summary judgment on the issue of
likelihood of confusion that are before us now.
To establish trade dress infringement, a plaintiff must
demonstrate that "1) its trade dress is inherently distinctive
or has acquired secondary meaning, and 2) that the similarity of
the defendant's trade dress causes a likelihood of confusion on
the part of customers as to the source or affiliation of the
products." Syndicate Sales, Inc. v. Hampshire Paper Corp.,
192 F.3d 633, 636 (7th Cir. 1999) (citing Thomas & Betts Corp. v.
Panduit Corp., 138 F.3d 277, 291 (7th Cir.), cert. denied,
516 U.S. 1159, 116 S.Ct. 1044, 134 L.Ed.2d 191, (1996)).*fn6
The Seventh Circuit examines the following factors when
determining whether likelihood of confusion exists between
competing trade dresses:
1) the similarity of the trade dresses;
2) the area and manner of concurrent use;
3) the degree of care likely to be used by
4) the strength of the plaintiffs trade dress;
5) instances of actual confusion.
6) intent of the defendant to pass off its product
as that of plaintiff;
[N]one of these factors considered alone is
dispositive, and the weight to be accorded each
varies from case to case. When making its inquiry,
the court must compare the trade dresses in "light of
what happens in the marketplace, not merely by
looking at the two . . . side-by-side."
Id., (citations omitted). We will examine each factor,
beginning with the strength of plaintiffs trade dress.