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June 25, 2004.

BLUE AIR, INC., Plaintiff,

The opinion of the court was delivered by: JOAN H. LEFKOW, District Judge


Plaintiff, BlueAir, Inc. ("BlueAir"), filed this action against defendants, Soleus Mobility, Inc. ("Soleus") and MJC America, Ltd. ("MJC"), for trade dress infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1125, and the Illinois Deceptive Trade Practices Act, 815 ILCS 510/1 et seq. Before the court is BlueAir's motion for a preliminary injunction. The court held a hearing on the motion on June 10, 2004. For the reasons stated below, the motion is denied.


  "Most air purifiers are plain ugly and by preference you would want to hide them somewhere." (Website for Allergy Buyers Club, Pl. Ex. 9, at 3.) In the 1980s, Bengt Rittri, the founder and President of BlueAir, set out to change this. Reversing the principle that form follows function, Rittri hired a New York designer to design a cabinet for an air purifier that was "pleasing in overall image and appearance." (Pl. Mot., at 3.) Only then did Rittri design "the layout of the internal working parts — which were then fitted into the cabinet differently for each model" of Blue Air purifier. (Id. at 2.) Since at least February, 1998, BlueAir has imported and sold the resulting "contemporary," "sleek," "distinctive" air purifiers in the United States under the BlueAir trademark. (Id. at 2, 3.) BlueAir markets its purifiers in such top stores as Sharper Image, Bed Bath and Beyond, Brookstone, Linens & Things, and others. BlueAir's 501 model costs around $600.

  Rittri's efforts have not gone unnoticed. BlueAir's purifiers, including the 501 model and its 301, 402, and 601 mates, have been lauded for their "distinctive design and appealing presentation." (Id. at 2.) In fact, the 402 model has received several European design awards and is featured in a permanent design exhibit at the National Museum in Stockholm, Sweden. (Id.) The hallmarks of BlueAir's "sleek, stylish, and contemporary look" are

1. Slightly outwardly curved, solid, rectangular front and rear panels;
2. Light, putty color of the front and rear panels;
3. Circular depression with centered clear bulb at the upper left of the front panel, with the "Blue Air" name beside it;
4. Horizontal detail line extending across most of the front panel;
5. Dark castors under the base; and,
6. Dark, planar edge panels joining the front and back panels at top and sides.
(Id.) None of the perhaps two dozen other air purifiers appearing in on-line U.S. catalogs has this combination of elements. Thus, it is not difficult to understand Rittri's dismay when he discovered that MJC*fn1 was preparing to market the Soleus Air SA-550 ("SA-550"), an air purifier that bears a remarkable resemblance to the BlueAir 501 purifier. Like the BlueAir 501, the SA-550 has slightly outwardly curved, solid, rectangular putty-colored front and rear panels, a horizontal detail line extending across the front panel, dark castors under the base, and dark, planar edges joining the front and back panels at the top and sides. MJC's Secretary, Jimmy Loh ("Loh"), admits that MJC copied certain aspects of the BlueAir 501's design. MJC's promotional material even touts the SA-550's "award-winning Swedish design."*fn2 (Pl. Ex. 8.) However, MJC insists that the SA-550 differs from the BlueAir 501 in several material respects, including
1. the SA-550 has a "soft-touch" control on top of the unit with a remote control, while the BlueAir 501 has a manual control on the right side of the unit;
2. the SA-550 has a circular depression with an infrared sensor at the upper left of the front panel, with the name "Soleus" next to the depression, while the BlueAir 501 has a circular depression with an "on" indicator lamp at the upper left of the front panel, with the name "BlueAir next to the depression;
3. the SA-550 has ultraviolet tubes, while the BlueAir 501 does not;
4. the SA-550 has a one-way airflow output, while the BlueAir 501 has a three-way air output;
5. the SA-550 has a five-way airflow input, while the BlueAir 501 has a three-way airflow input;
6. the dimensions of the models are not identical; 7. the SA-550 has a removable power cord on the right side, while BlueAir has a power cord on the bottom.
(Def. Resp., at 3.) The SA-550 has a retail price of approximately $400.

  At the hearing on the motion for preliminary injunction, Rittri testified to two other facts relevant here. First, Rittri testified that BlueAir has engaged in "co-branding" campaigns with other manufacturers and/or retailers of air purifiers, including Sharper Image, Aerus, Gesundheit, and Lux. Some of the air purifiers marketed as part of these co-branding campaigns did not bear the BlueAir trademark but were instead labeled with the mark of the co-branding partner. Others bore both the BlueAir trademark and the name of the co-branding partner. (Transcript at 42.) Second, Rittri testified that he had read studies indicating that buyers of air purifiers spend more time researching their potential purchase than buyers of almost any other product. (Transcript at 62, 89.)


  The party requesting a preliminary injunction in a trade dress or unfair competition case has the burden of demonstrating (1) a reasonable likelihood of success on the merits of the underlying claim; (2) no adequate remedy at law; and, (3) irreparable harm if the injunction is not granted. Jones v. InfoCure Corp., 310 F.3d 529, 534 (7th Cir. 2002). If an evaluation of these three points indicates that an injunction might be proper, the court then weighs the potential harms to the parties and takes into account whether the public interest will be disserved if the injunction issues. Id. "A preliminary injunction is an extraordinary remedy that should not be granted unless the movant, by a clear showing, carries the burden of persuasion." Chicago Dist. Council of Carpenters Pension Fund v. K & I Construction, Inc., 270 F.3d 1060, 1064 (7th Cir. 2001).

  A. Reasonable Likelihood of Success on the Merits

  Section 43(a) of the Lanham Act gives a producer of a product a cause of action for the use by any person of "any word, term, name, symbol, or device, or any combination thereof . . . which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods." 15 U.S.C. § 1125(a). The breadth of the confusion-producing elements recited as actionable under § 43(a) has been held to include not just word marks, such as "Nike," and symbol marks, such as Nike's "swoosh" symbol, but also "trade dress" — a category that originally included only the packaging, or "dressing," of a product, but has been expanded to encompass the design of a product. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 209 (2000); see also TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001); Eco Manufacturing LLC v. Honeywell International, Inc., 357 F.3d 649 (7th Cir. 2004). Trade dress refers to "the total image of a product, including size, shape, color combinations, graphics, packaging and label." Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145, 1151 (7th Cir. 1994).

  To prevail on a claim of trade dress infringement, a plaintiff first must show that 1) its trade dress is either inherently distinctive or has acquired a secondary meaning, and 2) that the similarity of the defendant's trade dress causes a likelihood of confusion on the part of consumers as to the source or affiliation of the products. Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 291 (7th Cir. 1998). If the plaintiff successfully establishes these elements, the defendant can still prevail if the defendant demonstrates that the plaintiff's trade dress is functional. Id. 1. Inherent Distinctiveness or Secondary Meaning

  BlueAir seeks trade dress protection for the overall product design of its air purifiers. The Supreme Court has held that product design is not inherently distinctive. Wal-Mart, 529 U.S. at 214 ("In the case of product design, as in the case of color, we think consumer predisposition to equate the feature with the source does not exist."). Thus, "product design cannot be protected under § 43(a) without a showing of secondary meaning." Id. "`[S]econdary meaning' is acquired when `in the minds of the public, the primary significance of the product feature . . . is to identify the source of the product rather than the product itself.'" Thomas & Betts, 138 F.3d at 291 (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995)). Secondary meaning can be ...

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